Stopinc Aktiengesellschaft v. J.W. Hicks, Inc.
Filing
54
OPINION AND ORDER: GRANTING 35 MOTION for Summary Judgment Defendant's Motion for Summary Judgment by Defendant JW Hicks Inc, but DENYING it's request for attorney fees. DENYING 39 RULE 56 MOTION to Strike 37 Response to Motion (Moti on to Strike Willi Luchs' Declaration) by Defendant JW Hicks Inc. Judgment should be entered in favor of the defendant and against the plaintiff, terminating this matter. In light of this ruling, all other pending motions are DENIED AS MOOT. Signed by Chief Judge Philip P Simon on 9/17/2015. (lhc)
UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF INDIANA
HAMMOND DIVISION
STOPINC AKTIENGESELLSCHAFT,
)
)
)
)
)
)
)
)
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Plaintiff,
v.
J.W. HICKS, INC.,
Defendant.
Cause No. 2:14-CV-238-PPS-JEM
OPINION AND ORDER
This is a patent infringement case dealing with equipment used in processing
molten metal. The invention at issue is a slide gate on a container that holds molten
metal. Basically, the slide gate is the part of a large metal container that opens and
dispenses the liquid metal inside into whatever other containers are being used.
Plaintiff Stopinc Aktiengesellschaft is a Swiss company that, among other things,
manufactures these slide gates. Stopinc patented this invention in 2002 and now claims
that Defendant J.W. Hicks, Inc. is infringing by producing essentially the same type of
slide gate. I say “essentially” because the parties agree that there are differences
between the Stopinc and J.W. Hicks slide gates. The fact that there are differences
between the products is not, however, in and of itself necessarily problematic because
Stopinc’s legal theory is under the doctrine of equivalents. So Stopinc can sue J.W.
Hicks for infringement even if the products are not 100% the same. J.W. Hicks contends
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that the doctrine of equivalents is unavailable to Stopinc. To this effect, J.W. Hicks has
filed a Motion for Summary Judgment (DE 35) claiming that during the prosecution of
Stopinc’s patent, it affirmatively represented to the Patent Office that its invention did
not include the feature that allegedly makes J.W. Hicks’ slide gate similar to Stopinc’s,
so the doctrine of equivalents can’t apply. That’s the primary motion before me today.
Since the doctrine of equivalents is the only theory of infringement that Stopinc relies
upon, this motion is potentially case dispositive.
This matter has been fully briefed, including some supplemental filings received
from the parties (DE’s 51-52) and I have also heard oral argument (DE 50). After
reviewing all of those materials, and for the reasons discussed below, I agree with J.W.
Hicks that the doctrine of equivalents isn’t available to Stopinc. I will therefore GRANT
the motion (DE 35) regarding its request for summary judgment. I will, however,
DENY J.W. Hicks’s request for attorneys fees. Also before me is J.W. Hicks’ Motion to
Strike (DE 39) regarding a declaration Stopinc attached to its response brief. I will
DENY this motion, as well.
Background
The Invention
As I mentioned above, this case deals with slide gates on molten metal
containers. Readers looking for a more in-depth discussion of the technology are
directed to the parties’ briefing (DE’s 35-38, 51-52) and Stopinc’s patent (United States
Patent No. 6,422,435). But I’ll briefly go through the ins and outs of what I understand
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this invention entails.
A slide gate is essentially a small door on the bottom of a container (also
commonly referred to as a “ladle”) holding molten metal that either holds the metal in
or lets the metal pour out, depending on circumstances. (See generally Wikipedia,
“Ladle (foundry),” https://en.wikipedia.org/wiki/Ladle_(foundry) (last visited
September 16, 2015); U.S. Patent No. 6,422,435 Background.) In large metallurgy
facilities and other facilities using molten metal, these giant containers typically move
down an assembly line, dispensing the liquid metal into other vessels as they go. Id.
The slide gate opens when the container is ready to pour the liquid metal, closes once
it’s finished and then the ladle moves on to the next vessel. Id. One problem Stopinc
sought to remedy with its slide gate is that these gates used to have to be mounted onto
the ladle using a large framing system that was costly to produce. (See U.S. Patent No.
6,422,435, 1:24-27.) Stopinc, however, simplified its slide gate, making it smaller and
allowing it to be directly mounted to the ladle without using a frame. (Id. at 1:30-55.) It
patented this invention in U.S. Patent No. 6,422,435 (the ‘435 Patent) on July 23, 2002.
Below is a drawing of the invention from the face of the ‘435 Patent, and I’ve added a
circle around one of the two slide gates.
3
In this image, molten metal flows out of the opening labeled No. 12. The
opening is closed off at various points by the refractory plates, labeled Nos. 22 and 23.
4
The slide gate operates so that rollers (No. 27) roll along a track (No. 36), such
that in this image, the slider unit (No. 30) would roll on a track towards you or away
from you. This action either opens or closes the refractory valve plates, allowing liquid
metal to flow out of the opening (No. 12) or keeping it inside of the container,
depending on whether the plate is opened or closed.
Only Claim 1 of the ‘435 is asserted in this litigation. It states:
A sliding gate valve to be mounted to a container for containing molten
metal, comprising:
a housing portion to be secured to the container;
a slider unit mounted to said housing portion and having guide tracks;
a first refractory valve plate and a second refractory valve plate inserted
between said housing portion and said slider unit and operable to
open and close the sliding gate valve; and
a plurality of mounting components aligned perpendicular to said slider
unit so as to mount said slider unit to said housing portion such
that said slider unit is slidable with respect to said housing portion,
each of said mounting components having:
a first end secured to said housing portion;
a spring element for pressing said first refractory valve plate and
said second refractory valve plate against each other;
a second end opposite said first end; and
a guide element on said second end for riding on a respective one
of said guide tracks of said slider unit, said mounting components
being arranged such that two guide elements are positioned on
each of two opposite sides of said refractory valve plates;
wherein said slider unit is operable to be moved so as to position
said guide elements at a location whereat a height of said guide
tracks is lower than a height of a remaining portion of said guide
tracks so as to relax said spring elements to allow release of said
slider unit from said housing portion.
(‘435 Patent, Claim 1.)
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That’s a lot to unpack, but for the purposes of J.W. Hicks’ motion, the
most important thing to understand is that the guide tracks are on the slider unit
and the “guide elements” (e.g. rollers, wheels, or balls that slide on the tracks) are
on the mounting components which are in turn connected to the housing unit.
The Prosecution of the ‘435 Patent
The prosecution of the ‘435 Patent was fairly straight-forward. Stopinc
submitted fourteen claims, which were rejected by the PTO Examiner based
primarily on three prior art references. (DE 36-8, ‘435 Pros. at 00110-11.) Stopinc
filed an amendment cancelling the fourteen claims and submitting new claims
15-40. (Id. at 00128.) The Examiner allowed those claims and the patent issued.
J.W. Hicks claims that during this process, Stopinc sacrificed the claim elements
that make its product similar to Stopinc’s.
When Stopinc filed its original patent application in July 1999, Claim 1
read:
Sliding gate valve for a container containing molten metal
including a housing portion, which is securable to the latter, and a
slider unit, which is longitudinally movable with respect to it, in
which respective refractory valve plates are insertable, which may
be pressed against one another by means of spring elements and
serve to open and close the sliding gate valve, characterized in
that the slider unit is longitudinally movably mounted on the
housing portion by a plurality of mounting means aligned
perpendicular to it, these mounting means being secured either to the
housing portion or the slider unit and oppositely having guide means
which slides on a respective guide track constructed on the slider unit or
on the housing portion.
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(DE 36-8 ‘435 Pros. at 00023 (emphasis added).)
As the italicized language indicates, in the original application, the guide
tracks and mounting means could be located either on “the housing portion or
the slider unit.” Id. For example, the guide tracks could be on the housing
portion and the mounting means on the slider unit, or, vice versa, the guide
tracks could be on the slider unit and the mounting means on the housing
portion.
The Examiner rejected all fourteen claims. (DE 36-8 ‘435 Pros. at 00107111.) Although the Examiner rejected the claims on multiple grounds, most
relevant to the issue I’ve been asked to resolve is this statement:
Claims 1-14 are rejected under 35 U.S.C. § 102(b) as being
anticipated by any of Holtermann et al, Kleebatt and Plattner et al.
Each of Holtermann et al., Kleebatt and Plattner et al. teach a
sliding gate valve for a molten metal container including the
housing portion, a slider unit longitudinally moveable with
respect to the housing portion, where the slider unit is connected
to the housing portion by a plurality of mounting means secured
to either of the housing portion or the slider unit and guide means
on either of the slider unit or housing portion, thereby showing all
aspects of the above claims . . . .
(Id.) In other words, the Examiner found that the prior art already disclosed slide
gates where the mounting means could be attached to either the housing portion
or slider unit, and guide means that could be attached to whichever one the
mounting means wasn’t.
Stopinc responded by cancelling all fourteen claims and submitting new
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claims 15-40. In so doing, Stopinc stated:
The Examiner rejected claims 1-14 as being anticipated by any one of
the Holtermann reference (USP 5,421,563), the Kleebatt reference
(USP 5,141,139), and the Plattner reference (USP 5,836,485).
However, as indicated above, the original claims have been
cancelled and replaced with new claims 15-40, including new
independent claims 15 and 29. Although the new independent
claims generally correspond to original independent claim 1, the new
independent claims have been drafted to clarify the scope of the original
claims and, more specifically, to clarify the arrangement of the mounting
components and the slider unit. Thus, for the reasons discussed below,
it is respectfully submitted that new claims 15-40 are clearly patentable
over the prior art of record.
(Id. at 00135-36 (emphasis added).)
Stopinc also distinguished each prior art reference with the following
explanations:
•
“However, the Holtermann reference does not disclose or suggest
mounting components each having a spring element and a guide
element, and being arranged as recited in independent claims 15 and 29.”
(Id. at 00136.)
•
“However, the Kleeblatt reference does not disclose or suggest mounting
components for mounting a slider unit to a housing portion, in which
each of the mounting components has a spring element and a guide
element, and in which the mounting components are arranged as recited
in Independent claims 15 and 29.” (Id. at 00136-37.)
•
“However, the Plattner reference does not disclose or suggest mounting
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components arranged as recited in independent claims 15 and 29.” (Id. at
00137.)
•
“As discussed above, the Holtermann reference, the Kleebatt reference,
and the Plattner reference do not disclose or suggest a plurality of
mounting components arranged as recited in claims 15-40. Therefore,
one of skill in the art would not be motivated to modify or combine the
references in a manner that would result in claims 15-40. Accordingly, it
is respectfully submitted that new independent claims 15 and 29, and the
claims that depend from therefrom [sic], are clearly patentable over the
prior art of record.” (Id.)
In essence, the arrangement of the mounting components and the slider
unit (including the guide tracks) distinguished the amended claims from the
prior art. And in new Claim 15 (which eventually issued as Claim 1), the
mounting components included the “guide elements” (e.g. rollers, balls, wheels,
etc.) and were attached to the housing portion, and the guide tracks were
specifically located on the slider unit. This is in contrast to original application
Claim 1 which stated that the mounting means (which contain the guide
elements) could be attached to either the housing portion or the slider unit, and
then the guide tracks would be located on whichever component didn’t have the
mounting means.
In response to Stopinc’s amendment, the Examiner allowed the new
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claims 15-40 (DE 36-8 ‘435 Pros. at 00143), and those claims now appear as
claims 1-26 of the ‘435 Patent.
This Litigation
Stopinc filed this patent infringement suit in July 2014. The only
independent claim asserted is Claim 1, so that is the only claim I need to concern
myself with. See e.g. Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546,
1552 n. 9 (Fed.Cir.1989). The parties agree that Stopinc’s only theory of
infringement is on the basis of the doctrine of equivalents and not any literal
infringement. (See DE 36-6 at 8.) That’s because J.W. Hicks’ slide gate differs
from the Stopinc slide gate in at least one key way: in J.W. Hicks’ slide gate, the
guide tracks are located on the mounting components (which in turn is attached
to the housing portion), and the guide elements (here, rollers) are located on the
slider unit. (DE 36 at 7-8; DE 36-6 at 8.) In other words, the guide tracks and
guide elements have the opposite orientation of Claim 1 of Stopinc’s patent.
J.W. Hicks argues that this orientation is of particular significance. This is
because when Stopinc amended its original application Claim 1, and required
one orientation of the mounting components instead of allowing the mounting
components (containing the guide elements) to be attached to either the housing
unit or the slider unit, Stopinc sacrificed the other orientation. And since that
“other” orientation is how J.W. Hicks’ product is set up, the doctrine of
prosecution history estoppel prevents Stopinc from reclaiming that “other”
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orientation. In other words, J.W. Hicks argues that because Stopinc told the
PTO that its slide gate was set up one way, it gave up the ability to sue someone
whose slide gate is set up the other way. So the precise issue I’m asked to
resolve is: did Stopinc give up its ability to assert an infringement claim under
the doctrine of equivalents where the mounting components and guide tracks
are located on the housing portion and the guide elements are located on the
slider unit? Since Stopinc asserts infringement under only the doctrine of
equivalents (i.e. it has asserted no claim of literal or direct infringement), the
answer to that question is potentially case dispositive. So at bottom, if I find
that Stopinc can proceed under the doctrine of equivalents, the case goes
forward as usual. But if I find that the doctrine of equivalents is not available to
Stopinc, then I must dismiss this matter since Stopinc would no longer have any
theory of infringement. (See e.g. DE 36-6 at 8, Infringement Contentions,
(Stopinc: “Claim 1, 7 and 11 are not literally infringed . . . . The known
equivalence of reversal of parts supports infringement under the doctrine of
equivalents.”).
Discussion
Summary judgment is proper “if the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the affidavits, if any, show
that there is no genuine issue of material fact and the moving party is entitled to
a judgment as a matter of law.” Fed. R. Civ. P. 56(c). A genuine dispute about a
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material fact exists only if the evidence is such that a reasonable jury could
return a verdict for the non-moving party. Celotex Corp. v. Catrett, 477 U.S. 317,
323-24 (1986).
Generally speaking, a product infringes a patent only if it meets every
element of the asserted claim(s) – in essence, only if it’s the same as what is
described in the claims. BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1380
(Fed.Cir.2007) (citing Warner–Jenkinson Co., Inc. v. Hilton Davis Corp., 520 U.S. 17,
40 (1997)), overruled on other grounds, Akamai Techs., Inc. v. Limelight Networks,
Inc., 692 F.3d 1301, 1306 (Fed.Cir.2012) (en banc). That’s known as direct or
literal infringement. A product that does not literally or directly infringe a
claim, however, may still infringe under the doctrine of equivalents if each
limitation of the claim is met in the accused product either literally or
equivalently. See Warner-Jenkinson Co., 520 U.S. at 40. So if the accused product
is essentially the same as – but not identical to -- the patented product, it may
still infringe.
But there are limits as to whether a plaintiff can claim infringement via
the doctrine of equivalents. For example, and of particular relevance to this case,
prosecution history estoppel prevents a patentee from recapturing through the
doctrine of equivalents the subject matter that the applicant surrendered during
prosecution. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 734
(2002). It presumptively applies when the applicant makes a narrowing claim
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amendment related to patentability. Id. at 736-37. What all this adds up to is
that a plaintiff can’t tell the PTO that its product does not do or contain a certain
thing in order to overcome some prior art, and then turn around and claim that
a product that does or contains that very thing infringes the patent. To hold
otherwise would allow the patentee to have his cake and eat it still.
A patentee bears the burden to rebut the presumptive application of
prosecution history estoppel by establishing one of three exceptions by a
preponderance of the evidence. Festo, 535 U.S. at 740-41; Integrated Tech. Corp. v.
Rudolph Tech., Inc., 734 F.3d 1352, 1356 (Fed. Cir. 2013). Whether a patentee has
rebutted the presumption is a question of law, making it well-suited for
summary judgment. Chimie v. PPG Indus. Inc., 402 F.3d 1371, 1376 (Fed.Cir.
2005). The parties agree that only one of the three exceptions is at issue here:
“the rationale underlying the amendment may bear no more than a tangential
relation to the equivalent in question.” Festo, 535 U.S. at 734; DE 37 at 16.1 In
other words, if the patentee narrowed its claim to get around some prior art for
Because Stopinc claims that this case falls under this second exception to prosecution
history estoppel, it appears to also admit that its amendment narrowed this claim, since the
presumption applies to only a narrowing amendment. And in any event, I find that this
amendment is narrowing because a claim allowing only one orientation of components is
certainly more narrow than one that allows two separate orientations. See Integrated Tech., 734
F.3d at 1357-58. Stopinc makes some arguments about how it didn’t really sacrifice the other
orientation because it kept the alternate orientation in a separate claim, which kind of sounds
like it’s arguing that it didn’t narrow the claims, but that doesn’t matter for evaluating Claim 1.
All that matters is what is claimed or not claimed in Claim 1 – the only asserted claim – because
“infringement and validity analysis must be performed on a claim-by-claim basis.”
Amazon.com, Inc. v. Barnesandnoble.com, 239 F.3d 1343, 1351 (Fed. Cir. 2001).
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a purpose that wasn’t really related to the equivalent it now claims is infringing,
courts won’t find that the patentee gave up that claim scope.
The parties also agree that claim construction is unnecessary to decide
this issue. (See DE 36 at 1; DE 45 at 1) When the movant and nonmovant agree
on the meaning of the relevant term, a court need not formally construe the
claims to decide a motion for summary judgment of noninfringement. See Vivid
Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed.Cir.1999) (the only
claim terms a court need to construe are those “in controversy, and only to the
extent necessary to resolve the controversy.”). Therefore the timing of this
motion is appropriate.
The tangential relation exception is “very narrow.” Cross Med. Prods., Inc.
v. Medtronic Sofamor Danek, Inc., 480 F.3d 1335, 1342 (Fed.Cir.2007). The key
question is “whether the reason for the narrowing amendment was peripheral,
or not directly relevant, to the alleged equivalent.” Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1369 (Fed.Cir.2003) (en banc). “[A]n
amendment made to avoid prior art that contains the equivalent in question is
not tangential.” Chimie, 402 F.3d at 1383 (quoting Festo, 344 F.3d at 1369).
The tangential relation inquiry “focuses on the patentee's objectively
apparent reason for the narrowing amendment,” which “should be discernible
from the prosecution history record.” Festo, 344 F.3d at 1369 (internal citations
omitted). And where the prosecution history record is ambiguous, the
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presumption is not rebutted. EMD Millipore Corp. v. Allpure Tech., Inc., 768 F3d
1196, 1204 (Fed. Cir. 2014) citing Warner-Jenkinson, 520 U.S. at 33. Here, Stopinc
has not successfully rebutted the presumption that prosecution history estoppel
applies. As is clear from the prosecution history discussed at length above,
Stopinc narrowed original application Claim 1 to avoid prior art that contained
the alleged equivalent.
Original application Claim 1 allowed two different arrangements for the
mounting components/guide elements and the guide tracks – they could be
attached to either the housing portion or the slider unit. The Examiner then
rejected that claim because the prior art already disclosed “a slider unit
longitudinally moveable with respect to the housing portion, where the slider
unit is connected to the housing portion by a plurality of mounting means
secured to either of the housing portion or the slider unit and guide means on
either of the slider unit or housing portion, thereby showing all aspects of the
above claims . . . .” (DE 36-8, ‘435 Pros. at 00107-00111.) In response, Stopinc
amended its claim, requiring that the mounting components (containing the
guide elements) be mounted to the housing portion, and that the guide tracks be
located on the slider unit. (DE 36-8 at 00129; DE 36-1, ‘435 Patent Claim 1.) In so
doing, Stopinc could not have been clearer in affirmatively stating that it
amended its claim “to clarify the arrangement of the mounting components and
the slider unit.” (DE 36-8, ‘435 Pros. at 00135-00136.) And in distinguishing the
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specific prior art cited by the Examiner, Stopinc repeatedly argued that the new
claim was “clearly patentable over the prior art of record” because of the
arrangement of the mounting components and guide elements. (Id. at 00136-37.)
That arrangement of the mounting components and guide elements is the
exact equivalent in question. The patent requires that the guide elements be on
the mounting components and the guide tracks be on the slider unit. The J.W.
Hicks’ product instead has the guide elements on the slider unit and the guide
tracks on the mounting component, and Stopinc has deemed that an equivalent
arrangement. Since “an amendment made to avoid prior art that contains the
equivalent in question is not tangential” (Chimie, 402 F.3d at 1383 (quoting Festo,
344 F.3d at 1369)), Stopinc has failed to rebut the presumption that prosecutorial
history estoppel applies.
Stopinc’s express representations that the amendment to the arrangement
of the mounting components and guide elements was made to overcome the
prior art torpedoes its case. Nothing in Insitutform Technologies v. CAT
Contracting, Inc. — one of only a handful of Federal Circuit cases finding an
amendment to be merely tangential — mandates a different result. There, the
court found significant that there was “no indication in the prosecution history
of any relationship between the narrowing amendment and . . . the alleged
equivalent in this case.” 385 F.3d 1360, 1370 (Fed. Cir. 2004). And therein lies
the rub – here, Stopinc expressly stated that the prior art did not disclose the
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arrangement it had chosen for the mounting components and guide elements,
along with the spring element. That admission is dispositive. Lucent
Technologies, Inc. v. Gateway, Inc., 525 F.3d 1200, 1218 (Fed. Cir. 2008) (“The
applicant argued that the claimed invention was distinguishable from the prior
art based on the performance of both pitch calculation and pitch removal during
each pulse-forming iterations. Thus, the purpose for the amendment is not
unrelated to the alleged equivalent.”) And even if Stopinc could point to some
ambiguity or debate about what “arrangement” it was talking about, an
ambiguous statement isn’t enough to overcome the presumption. EMD
Millipore Corp., 768 F.3d at 1204.
Not so fast says Stopinc. Stopinc argues that its amendment was
tangential to the equivalent because the real reason it amended its claims was to
add a spring element to the mounting components. (DE 53, Hearing Transcript
at 31:21-25.) Stopinc further claims that choosing one of the arrangements from
its original “either/or” claim wasn’t related to patentability because the
Examiner had already said that both arrangements were found in the prior art.
(DE 37 at 16.) In other words, choosing one orientation or the other wouldn’t
have been enough to overcome the prior art, so the real focus of the amendment
was adding in the spring element, making anything relating to the
mounting/guide components merely tangential.
Although this argument has some intuitive appeal, it has been flatly
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rejected by authority from the Federal Circuit on very similar facts. In
Integrated Technology Corporation v. Rudolph Technologies, the Federal Circuit
rejected just this argument where the patentee amended its claim to add a
limitation that was not necessary to overcome the prior art. 734 F.3d 1352 (Fed.
Cir. 2013). There, the patentee added a two limitations to its amended claim –
one that was necessary to overcome the prior art and one that wasn’t. Id. at
1357. The Federal Circuit rejected the patentee’s argument that because the
second addition was not necessary to overcome the prior art, it was “merely
tangential” and therefore the claim scope allegedly sacrificed could be asserted
as an equivalent. Id. at 1358. Specifically, the court found that although the
patentee may not have needed to have surrendered the equivalent at issue in
order to overcome the prior art, “[t]he dispositive fact is that [it] chose to.” Id.
So, too, did Stopinc. Although Stopinc did not necessarily need to choose an
orientation from its original “either/or” claim, it chose to do so at the same time
it added the spring element to the mounting components. Stopinc is stuck with
that decision. See also Felix v. American Honda Motor Co., 562 F.3d 1167, 1184
(Fed. Cir. 2009) (amendment not tangential where although patentee could have
amended the claim to recite only the non-tangential limitation to overcome the
prior art, it instead chose to recite both, making both non-tangential); Lucent, 525
F.3d at 1218 (“It is not relevant to the determination of the scope of the
surrender that the applicant did not need to amend the claims to require
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performance of steps 1-4 during each pulse-forming iteration in order to
overcome the prior art.”).
In sum, I find that Stopinc is estopped from proceeding on its
infringement claim under the doctrine of equivalents.
J.W. Hicks’ Claim for an Exceptional Case
Although I ultimately disagree with Stopinc’s position, I do not find this
to be an exceptional case under 35 U.S.C. § 285 warranting an award of
attorneys fees to J.W. Hicks. Stopinc presented thoughtful, reasonable
arguments for why it should be allowed to proceed under the doctrine of
equivalents. The case was close enough that I ordered oral argument from the
parties. (DE 47.) And although I am confident that I have reached the correct
result, the answer was not so immediately clear as to “stand[] out from others
with respect to the substantive strength of a party’s litigating position.” Octane
Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014). J.W.
Hick’s request for attorneys fees will therefore be denied.
J.W. Hicks’ Motion to Strike Luchs’ Affidavit
I am denying J.W. Hicks’ motion to strike the Luchs’ affidavit. (DE 39.) I
don’t think it presents the type of material that is so inappropriate as to warrant
striking. Instead, J.W. Hicks’ arguments go more to the weight as opposed to
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the propriety of the affidavit. I will say, however, that I have not given the
affidavit any weight because “only the public record of the patent prosecution,
the prosecution history, can be a basis” for determining the reason for a claim
amendment, and therefore courts “do not consider [a] declaration in
determining the reason for the amendment to the claim.” Pioneer Magnetics, Inc.
v. Micro Linear Corp., 330 F.3d 1352, 1356 (Fed. Cir. 2003). And in any event, the
prosecution history is clear enough in this case that I don’t need any further
explanation of it. So although I don’t think the affidavit rises to the level of
striking, I don’t ultimately find it helpful or persuasive, either.
Conclusion
For the above reasons, J.W. Hicks’ motion for summary judgment is
GRANTED, but it’s request for attorneys fees is DENIED. (DE 35.) The Motion
to Strike is also DENIED. (DE 39.) Therefore, judgment should be entered in
favor of the defendant and against the plaintiff, terminating this matter. In light
of this ruling, all other pending motions are DENIED AS MOOT.
SO ORDERED.
ENTERED: September 17, 2015
s/Philip P. Simon
CHIEF JUDGE
UNITED STATES DISTRICT COURT
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