AIR VENT, INC. v. OWENS CORNING CORPORATION

Filing 99

MEMORANDUM OPINION AND ORDER denying without prejudice 64 Defendant's Motion for Summary Judgment on non-infringement of U.S. Patent Nos. 6,299,528 and 6,482,084.Signed by Judge Terrence F. McVerry on 02/13/2012. (bsc)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
AIR VENT, INC.,
Plaintiff,
v.
OWENS CORNING CORPORATION,
Defendant.

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02: 10-cv-01699

MEMORANDUM OPINION AND ORDER
Pending before the Court is the MOTION FOR SUMMARY JUDGMENT ON NONINFRINGEMENT OF U.S. PATENT NOS. 6,299,528 AND 6,482,084 filed by Defendant,
Owens Corning Corporation (“Owens Corning”) (Document No. 64). The motion has been
thoroughly brief by both Owens Corning and Plaintiff, Air Vent, Inc. (Document Nos. 65, 72, 80,
83, 87, and 92). The parties have fully stated their respective positions regarding the Concise
Statement of Material Facts and have submitted numerous exhibits (Document Nos. 66, 67, 73,
74, and 75). The motion is ripe for disposition.

Factual and Procedural Background
Air Vent is the owner by assignment of United States Patent Nos. 6,299,528 (“the ‘528
Patent”), entitled “End-Ventilating Adjustable Pitch Arcuate Roof Ventilator”; 6,482,084 (“the
‘084 Patent”), entitled “End-Ventilating Adjustable Pitch Arcuate Roof Ventilator”; and
6,793,574 (“the ‘574 Patent), entitled “Vent With Presecured Mechanical Fasteners”
(collectively referred to as the “Patents-in-Suit.”)

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Air Vent manufactures and sells roof ridge ventilators (“ridge vents”) under the
trademark “SingleVent® II,” which is covered by and marked with the numbers of the ‘528
Patent and the ‘084 Patent.
According to the Amended Complaint, from 2000 through 2008, Air Vent manufactured
for and sold to Owens Corning a four foot version of a ridge vent product under the name
“VentSure Rigid Strip” that was substantially the same structurally and functionally as the
SingleVent® II. In late January 2009, Owens Corning notified Plaintiff that it was terminating
its contractual relationship with Air Vent for the purchase of ridge vent products that Air Vent
had been selling to Owens Corning. Owens Corning received its last units of Air Vent’s ridge
vent product in March 2009. The Court is not familiar with the specific facts that led to the
termination of the contractual relationship and Air Vent does not assert any impropriety with
respect to the termination of that agreement.
Owens Corning alleges that it developed a new and improved ridge vent product - the
“VentSure 4 Foot Strip Heat and Moisture Ridge Vent” (hereinafter referred to as the “VentSure
Product”). Air Vent alleges that it first became aware of the Owens Corning’s new VentSure
Product in June 2010. According to the Amended Complaint, the VentSure Product incorporates
the same ventilation technology disclosed and claimed in the Patents-in-Suit.
Owens Corning moves for summary judgment on Air Vent’s claims of infringement of
claims 1 and 2 of the ‘528 Patent and claims 1, 2, 5, and 6 of the ‘084 Patent (hereinafter “the
Asserted Claims”). Specifically, Owens Corning argues that each of the Asserted Claims
contain limitations directed to a “top wall,” “side walls including a plurality of apertures
therethrough,” and “upturned edge members” and that these claim limitations are “completely
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absent” from the accused VentSure Product. Owens Corning contends that the Court can decide
as a matter of law that the accused VentSure Product does not directly infringe either the ‘528
and/or the ‘084 Patents. Air Vent responds that summary judgment is not appropriate as
infringement is a question of fact.
Standard of Review
Summary judgment is appropriate “if the pleadings, the discovery and disclosure
materials on file, and any affidavits show that there is no genuine issue as to any material fact
and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). The Court
must construe all facts and reasonable inferences therefrom in the light most favorable to the
nonmoving party. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587
(1986). But, summary judgment should be granted “against a party who fails to make a showing
sufficient to establish the existence of an element essential to the party’s case, and on which that
party will bear the burden of proof at trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322 ( 986).
“The mere existence of a scintilla of evidence in support of plaintiff’s position will be
insufficient [to overcome a motion for summary judgment]; there must be evidence upon which
the jury could reasonably find for the plaintiff.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
252 (1986).
Discussion
Infringement generally exists if any one of a patent’s claims covers the alleged infringer’s
product or process. Markman v. Westview Instruments, Inc., 517 U.S. 370, 374 (1966). See also
SmithKline Diagnostics v. Helena Labs. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988). A
determination of infringement, or non-infringement, is a two-step process: (1) it is necessary, as
a matter of law, to determine the scope and meaning of the patent claims asserted and (2) after
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the words of a claim are interpreted, it is necessary to determine, as a matter of fact, if the claim
covers the alleged infringer’s product or process. Apex Inc. v. Raritan Computer, Inc., 325 F.3d
1364, 1370 (Fed. Cir. 2003). For infringement to exist, all of the claim’s elements must be
found, either literally or by a substantial equivalent, in the accused product or process. Dynacore
Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1273 (Fed. Cir. 2004). If all of the claim’s
elements are found literally, then there usually is literal infringement. See generally PC
Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1364 (Fed. Cir. 2005). If one or
more of the claim’s elements are found equivalently and the rest (if any) are found literally, then
there usually is infringement under the doctrine of equivalents. See generally Ethicon EndoSurgery Inc. v. United States Surgical Corp., 149 F.3d 1309, 1315-20 (Fed. Cir. 1998).
“Summary judgment on the issue of [direct] infringement is proper when no reasonable jury
could find that every limitation recited in a properly construed claim either is or is not found in
the accused device either literally or under the doctrine of equivalents.” PC Connector Solutions
LLC, 406 F.3d at 1364.
In cases in which the parties dispute the meaning of a term, claim construction is
necessary to determine the meaning of the disputed term. Trading Techs. Int’l, Inc. v. eSpeed,
Inc., 595 F.3d 1340, 1351 (Fed. Cir. 2010) (“In sum, claim construction involves many technical,
scientific, and timing issues that require full examination of the evidence and factual resolution
of any disputes before setting the meaning of the disputed terms.”)
Both the SingleVent® II product and the accused VentSure Product are a molded onepiece flexible plastic device having a predetermined length and width and top and bottom
surfaces. The predetermined length extends from end to end and the predetermined width

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extends from the distal end of one side to the distal end of the opposite side. Both are intended
to be installed on steep sloped roofs and are able to be bent to fit the exact slope of the roof.
According to Owens Corning, its non-infringement arguments “are based on a straight
forward comparison of the claim language and the structure identified in the specifications of the
‘528 and ‘084 Patents to the structure identified by Air Vent in its claim charts and annotated
photographs of the accused VentSure Product.” Def’s Memo. at 5, n. 4. Each of the Asserted
Claims contain limitations directed to a “top wall,” “side walls including a plurality of
apertures,” and “upturned edge members”:
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“an elongate top wall having a predetermined length and width and top and
bottom surfaces;”
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“a pair of outer side walls . . . depending from a respective bottom surface of said
top wall . . . each of said side walls including a plurality of apertures extending therethrough;”
and
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“a pair of upturned edge members . . . extending from a respective distal end of
said outer wall opposite said top wall . . . said upturned edge members extending toward said top
wall . . .”
Ex. A, ‘528 Patent, claims 1 and 2; Ex. B., ‘084 Patent, claims 1, 2, 5 and 6.
According to Owens Corning, the VentSure Product does not infringe either the ‘528
Patent or the ‘084 Patent because it lacks the following four underlined claim elements: side
walls including a plurality of apertures; upturned edge members “extending from a respective
distal end of said outside wall opposite said top wall;” and upturned edge members “extending
toward said top wall.”
The parties dispute the definition of the terms “top wall,” “side walls” and “upturned
edge members.” As the Initial Patent Scheduling Order indicates, the Court and Special Master
will conduct a hearing on the issue of Claim Construction in June 2012 on a date to be
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determined. See Initial Patent Scheduling Order, Document 95 at ¶ 11. Accordingly, claim
construction is necessary, and summary judgment at this early stage is not proper.
Therefore, Defendant’s Motion for Summary Judgment On Non-Infringement Of U.S.
Patent Nos. 6,299528 And 6,482,084 will be denied without prejudice to Defendant refiling
same after the completion of the claims construction hearing and ruling.
Conclusion
For the hereinabove reasons, the claims at issue in this case present a number of material
factual issues that the Court cannot resolve at this stage. Claim construction is therefore
appropriate, and Defendant’s motion for summary judgment will be denied without prejudice.
An appropriate Order follows.

McVerry, J.

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IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
AIR VENT, INC.,
Plaintiff,
v.
OWENS CORNING CORPORATION,
Defendant.

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)
)
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)

02: 10-cv-01699

ORDER OF COURT
AND NOW, this 13th day of February, 2012, in accordance with the foregoing
Memorandum Opinion, it is hereby ORDERED, ADJUDGED and DECREED that the
Defendant’s Motion For Summary Judgment on Non-Infringement of U.S. Patent Nos. 6,299,528
and 6,484,084 is DENIED without prejudice.
BY THE COURT:
s/Terrence F. McVerry
United States District Judge

cc:

Dariush Keyhani , Esquire
Lippes Mathias Wexler Friedman LLP
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Katherine E. Koop, Esquire
Tucker Arensberg
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Meredith & Keyhani, PLLC
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Eric G. Soller, Esquire
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Georgia E. Yanchar, Esquire
Calfee, Halter & Griswold LLP
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