Sandvik Intellectual Property AB v. Kennametal Inc.
Filing
280
MEMORANDUM ORDER granting in part and denying in part 242 Motion for Partial Summary Judgment filed by Kennametal. See Memorandum Order for details.Signed by Judge Terrence F. McVerry on 09/13/2012. (bsc)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
SANDVIK INTELLECTUAL PROPERTY AB
)
)
)
)
)
)
v.
KENNAMETAL, INC.
2: 10-cv-00654
MEMORANDUM ORDER OF COURT
Presently before the Court for disposition is the MOTION FOR PARTIAL SUMMARY
JUDGMENT, with brief in support (Document Nos. 242 and 243) filed by Kennametal Inc.
(“Kennametal”), the BRIEF IN OPPOSITION (Document No. 254) filed by Sandvik Intellectual
Property AB (“SIPAB”), and the REPLY MEMORANDUM filed by Kennametal (Document
No. 260). For the reasons that follow, the Motion will be granted be in part and denied in part.
Background
On February 16, 2012, Special Master Frederick H. Colen filed his Report and
Recommendation as to Claim Construction in which he recommended that the Court hold that
the patent at issue in this case U.S. Patent 5,847,625 (“the ‘625 Patent”) is invalid for
indefiniteness under 35 U.S.C. § 112, ¶ 2. (Document No. 240). Based on the findings contained
in the Report and Recommendation, Kennametal filed the instant Motion for Partial Summary
Judgment in which it requests entry of partial summary judgment on the following claims: (1)
SIPAB’s claims of infringement of the ‘625 Patent (including its claim for willful infringement);
(2) Kennametal’s Third Affirmative Defense of invalidity (contained in its First Amended
Answer, Affirmative Defenses and Counterclaim); (3) Count I of Kennametal’s Counterclaim in
which Kennametal seeks a declaratory judgment on non-infringement; and (4) Count II of
Kennametal’s Counterclaim in which Kennametal seeks a declaratory judgment of invalidity.
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SIPAB opposed Kennametal’s motion for partial summary judgment primarily on the
grounds it was premature as the Court had not yet adopted the Special Master’s finding that the
‘625 patent was indefinite, and if the Court did not adopt that finding the motion must be denied.
SIPAB also objected to the entry of summary judgment on SIPAB’s claim that Kennametal
infringed the ‘625 patent and on Kennametal’s claim for declaratory judgment on noninfringement. SIPAB argues that “should the Court hold that the ‘625 patent is indefinite and
therefore invalid, the only way it could properly dispose of the other claims and defenses is by
dismissing them without prejudice as moot.” Br. at 4, n. 2.
By Memorandum Opinion and Order of Court of July 24, 2012, the Court adopted, in its
entirety, the Report and Recommendation issued by Special Master Colen. Therefore, the
motion for partial summary judgment is now ripe for disposition.
Discussion
As stated supra, the Court has found that the ‘625 Patent is invalid for indefiniteness
under 35 U.S.C. § 112, ¶ 2. Accordingly, Kennametal is entitled to summary judgment on its
Third Affirmative Defense of invalidity and on Count II of its Counterclaim which seeks a
declaratory judgment of invalidity.
However, for the following reasons, the Court finds that summary judgment on the
infringement claims is not appropriate. Well established United States Supreme Court and
Federal Circuit precedents provide that patent infringement is a separate and distinct issue from
validity and is to be determined separately. Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S.
83, 96 (1993) (“a party seeking a declaratory judgment of invalidity presents a claim independent
of the patentee’s charge of infringement.”); Honeywell Intern., Inc. v. International Trade
Com’n, 341 F.3d 1332, 1342 (Fed. Cir. 2003); Medtronic, Inc. v. Cardiac Pacemakers, 721 F.2d
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1563, 1583 (Fed. Cir. 1983) (“Though an invalid claim cannot give rise to liability for
infringement, whether it is infringed is an entirely separate question capable of determination
without regard to its validity.”). In this case, while the Court addressed the issue of validity, it
has never addressed the issue of infringement, but that analysis need not be now determined.
With the patent having been found invalid, the issue of infringement has been rendered moot.
An appropriate Order follows.
McVerry, J.
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IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
SANDVIK INTELLECTUAL PROPERTY AB
)
)
)
)
)
)
v.
KENNAMETAL, INC.
2: 10-cv-00654
ORDER OF COURT
AND NOW, this 13th day of September, 2012, in accordance with the foregoing
Memorandum Opinion, it is hereby ORDERED, ADJUDGED AND DECREED that the
Motion for Partial Summary Judgment is GRANTED IN PART and DENIED IN PART as
follows:
1.
The Motion for Partial Summary Judgment is GRANTED as to Kennametal’s
Third Affirmative Defense of invalidity and as to Count II of Kennametal’s Counterclaim which
seeks a declaratory judgment of invalidity.
2.
The Motion for Partial Summary Judgment is DENIED as to Plaintiff’s claims of
infringement of the ‘625 Patent and Count I of Kennametal’s Counterclaim which seeks a
declaratory judgment of non-infringement.
By virtue of the finding of invalidity of the ‘625 Patent, the issue of infringement has
been rendered moot.
This Order leaves for future resolution Kennametal’s affirmative defenses and
counterclaims of unenforceability due to unclean hands (Kennametal’s Eighth Affirmative
Defense and Count III of Kennametal’s Counterclaim), as well as Kennametal’s contention that
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this is an exceptional case under 35 U.S.C. § 285 so as to entitle Kennametal to recovery of its
attorney’s fees and costs.
BY THE COURT:
s/ Terrence F. McVerry
United States District Court Judge
cc:
Jeffrey G. Killian, Esquire
Morgan Lewis & Bockius
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Ronald L. Grudziecki, Esquire
Drinker Biddle & Reath
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John V. Gorman, Esquire
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Cohen & Grace, LLC
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