Walhonde Tools, Inc. v. Wilson Works, Inc. et al
Filing
281
MEMORANDUM OPINION AND ORDER. DENIES IN PART FWZ, NAES, Minnotte, and Wilson Works motions for summary judgment as to non-infringement and GRANTS IN PART their motions as to Walhondes conspiracy claim dkt. nos. 205 , 207 , 209 , 211 . GRANTS [213 ] Walhondes motion for summary judgment as to Minnottes counterclaims of inequitable conduct and false marking, which Minnotte concedes it cannot sustain. DENIES 215 Walhondes motion for summary judgment as to infringement. DENIES 217 Walhondes motion for summary judgment as to invalidity. Signed by District Judge Irene M. Keeley on 5/31/2012. (Copy counsel of record via CM/ECF) (jmm)
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF WEST VIRGINIA
WALHONDE TOOLS, INC.,
Plaintiff,
v.
//
CIVIL ACTION NO. 1:09CV48
(Judge Keeley)
WILSON WORKS, INC.,
NORTHCO CORP.,
NAES POWER
CONTRACTORS, INC.,
MINNOTTE CONTRACTING
CORPORATION, and
FOSTER WHEELER ZACK, INC.,
Defendants,
MEMORANDUM OPINION AND ORDER
Pending before the Court are the parties’ motions for summary
judgment. For the reasons discussed below, the Court DENIES the
plaintiff’s motions for summary judgment as to infringement and
invalidity, DENIES IN PART the defendants’ motions for summary
judgment as to infringement, GRANTS IN PART the defendants’ motions
for summary judgment as to the plaintiff’s conspiracy claim, and
GRANTS the plaintiff’s motion for summary judgment as to Minnotte
Contracting Corporation’s inequitable conduct and false marking
counterclaims.
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
I.
A.
On
April
(“Walhonde”),
8,
2009,
filed
the
this
plaintiff,
action
for
Walhonde
patent
Tools,
infringement
Inc.
and
conspiracy against Wilson Works, Inc. (“Wilson”), Northco Corp,1
NAES Power Contractors, Inc. (“NAES”), Minnotte Contracting Corp.
(“Minnotte”), and Foster Wheeler Zack, Inc. (“FWZ”), as well as
common law claims for tortious interference against Wilson and
Northco.
Walhonde
alleges
that
Wilson
manufactured
a
copycat
version of a patented boiler maker tool (“Wilson’s tool”) and then
sold the infringing tool to the other defendants, all of whom used
it in their businesses as power plant repair contractors.
Wilson, Minnotte, and FWZ filed counterclaims for declaratory
judgment as to non-infringement, invalidity due to obviousness, and
a finding that the case is exceptional under 35 U.S.C. § 285.
Minnotte filed additional counterclaims for inequitable conduct and
tortious interference but does not object to Walhonde’s motion for
summary judgment as to those counterclaims.2
1
Northco Corp. has not appeared in this case to date.
2
In Minnotte’s response to Walhonde’s motion for summary
judgment, it concedes that, in light of recent changes in the law,
it cannot sustain its counterclaims for inequitable conduct or
false marking and withdraws those claims. (Dkt. No. 221 at 2).
2
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
B.
Walhonde manufactures tools used in the construction and
repair of steam boilers for power plants, including the “Bolt-Type
Boiler Wall Tube Tool” that is the subject of this case. Boilers of
this type consist of series of pipes, or “boiler tubes,” that pass
through a large vessel containing a heat source. As water passes
through the heated boiler tubes, it converts to steam, which is
then expanded to drive power-generating turbines. When a boiler
design calls for tubes longer than commonly available pipes,
individual pipe sections must be welded together, end to end,
creating a single continuous pipe. Because boiler tubes typically
are arranged parallel to each other as a “wall” or bank of pipes,
boilermakers frequently encounter the challenge of welding large
walls of boiler tubes together while working in the confined
interior space of a boiler.
Walhonde
manufactures
the
“Walhonde
Wallbanger”
as
the
exclusive licensee of a patented tool, U.S. Patent 4,936,500 (“‘500
Patent”
or
“patent-in-suit”),
that
addresses
this
problem
by
allowing a boilermaker to temporarily clamp tube wall sections
together, end to end, ensuring proper alignment of each pipe
section. With the clamp in place, the boilermaker can temporarily
tack-weld the abutting ends of each pipe section and then remove
the device to permit final welding.
3
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
The ‘500 Patent discloses two tool embodiments, one of which
is the subject of this case. Claims 1-3 and 10 describe a tool
designed to clamp and align four segments to form two adjacent
boiler
tube
walls.
This
tool
consists
of
two
clamp
members
connected by a centrally located bolt.3 One clamp member is placed
on either side of the juncture of the four segments so that it
straddles the narrow gap between their abutting ends. A threaded
bolt passes through an unthreaded bore in the center of the outer
clamp member and engages the threads of an internally threaded bore
in the inner clamp member to tighten the clamp around the tube
walls, holding them in alignment. Recesses along the side of the
clamps provide access to the tube junctures for tack-welding.
Claims 7 and 8 are directed to the combination of this tool and the
boiler wall tube.4
Wilson’s allegedly infringing tool aligns segments of boiler
tube walls through the means of two clamps connected by three
vertically aligned bolts, one of which is centrally located.5
3
Although the patent-in-suit calls for “exactly one bolt located
in the center of the clamp,” the Court concluded during claims
construction that “[t]his does not mean, however, that other bolts might
not appear in various locations on the device.” (Dkt. No. 167 at 14).
4
Walhonde is not asserting claims 4-6, 9, and 11, which are
directed to the second tool embodiment, designed to clamp and align two
segments to form a single boiler tube wall.
5
Because the Court concluded during claims construction that other
bolts may appear elsewhere on the device, only the center bore is
relevant to the infringement analysis. See (Dkt. No. 167 at 14).
4
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
Instead of a threaded bore through the inner clamp member, however,
Wilson’s tool features a smooth bore with a threaded nut tackwelded inside of the bore. The bolt engages the threads of this
“captive nut,” rather than threads machined directly into the bore
itself.
II.
Walhonde and each defendant have moved for summary judgment on
the issue of infringement. Of the eleven claims that describe the
‘500 Patent, Walhonde alleges Wilson’s tool infringes Claims 1-3,
7, 8, and 10, both literally and under the doctrine of equivalents.
A.
Determination of a claim of patent infringement involves a
two-step inquiry. First, the Court must construe the asserted
patent claims as a matter of law. Second, it must determine whether
the
accused
device
contains
each
limitation
of
the
properly
construed claims. Advanced Cardiovascular Sys., Inc. v. Scimed Life
Sys., Inc., 261 F.3d 1329, 1336 (Fed. Cir. 2001). To prevail, the
plaintiff must establish by a preponderance of the evidence that
the accused device infringes one or more of the claims of the
patent either literally or under the doctrine of equivalents. Id.
To find literal infringement, each claim limitation must be
present in the accused device. “Any deviation from the claim
precludes such a finding.” Telemac Cellular Corp. v. Topp Telecom,
5
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
Inc., 247 F.3d 1316, 1330 (Fed. Cir. 2001). In the absence of
literal infringement, “[t]he doctrine of equivalents allows the
patentee to claim those insubstantial alterations that were not
captured in drafting the original patent claim but which could be
created through trivial changes.” Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., 535 U.S. 722, 733 (2002).
Because claims construction is a question of law for the Court
to decide, disputes over the proper meaning of claim terms do not
alone raise genuine issues of material fact sufficient to preclude
the grant of summary judgment. See Laitram Corp. v. Morehouse
Indus., Inc., 143 F.3d 1456, 1461 (Fed. Cir. 1998) (“Because the
parties did not dispute the structure of the accused devices . . .
once the issue of claim construction is settled, [the] summary
judgment motion for noninfringement did not implicate any issues of
fact.”).
“Summary
judgment
on
the
issue
of
infringement
[or
noninfringement] 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 v. SmartDisk
Corp., 406 F.3d 1359, 1364 (Fed. Cir. 2005).
B.
NAES argues that the Wilson tool does not infringe the ‘500
Patent because it features a bolt that engages the threads of a
6
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
captive nut rather than engaging the threads of an internally
threaded bore. In its view, under the doctrine of prosecution
history estoppel, Walhonde is estopped from claiming that a captive
nut arrangement infringes the ‘500 Patent because the inventor
expressly disclaimed that concept during patent prosecution. When
the patentee originally filed his application, the United States
Patent and Trademark Office (“PTO”) rejected certain claims as
being unpatentable over prior art. NAES contends that, in order to
make the device patentable, the inventor informed the PTO that he
was no longer including the concept of a captive nut and replaced
the rejected claims with language imposing the limitation of a
threaded bore.
Prosecution
history
estoppel
precludes
a
patentee
from
asserting infringement claims against subject matter he gave up
during prosecution to obtain a patent. Festo, 535 U.S. at 733.
“When the patentee originally claimed the subject matter alleged to
infringe but then narrowed the claim in response to a rejection, he
may not argue that the surrendered territory comprised an unforseen
equivalent.” Id. at syll. (b).
In this case, the PTO rejected, in pertinent part, original
claims 1 and 2 as being unpatentable over GB 2 189 177 (the
“British Patent”) and SU 690743 (the “Russian Patent”). Original
claim 1 described a clamp used to keep pipes aligned, and original
7
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
dependent claim 2 added the limitation of a threaded bore. The PTO
concluded that these claims, by themselves, were not patentable
over the prior art:
[The British Patent] discloses a tube alignment clamp
comprising clamp halves which are drawn together with a
bolt and captive nut arrangement. Although the clamp is
hinged, the use of two bolts replacing the hinge would
have been obvious at the time applicant’s invention was
made to a person having ordinary skill in the art because
the clamp requires more room during installation in a
hinged configuration than in an all bolt installation.
The use of alignment clamps in combination with tube
walls is well known as disclosed in [the Russian Patent.]
The use of any well known tube alignment clamp for use
with a tube wall would have been obvious . . . because
the alignment clamps are equivalent.
(Dkt. No. 218-3 at 152) (emphasis added). Notably, although the PTO
did reject original claims 1 and 2 as unpatentable, its reasons had
nothing to do with the captive nut arrangement, but rather focused
on “the use of two bolts replacing the hinge” in the British
Patent. Id.
The PTO also concluded that original dependent claim 3, which
required at least one center bolt, would be patentable if rewritten
in
independent
canceling
form.
original
Id.
claims
at
1
153.
and
2
The
patentee
and
rewriting
responded
claim
3
by
in
independent form, which emerged as final claim 1 of the ‘500
Patent. The patentee also added two new claims, 13 and 14 - which
became claims 10 and 11 in the ‘500 Patent - that describe the
combination of the clamp and boiler tube wall and also incorporate
8
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
the center bolt. Explaining this addition, the patentee informed
the PTO of the following:
New claims 13 and 14 have been added at this time to
afford substantially the same scope of patent protection
as the allowable claims except that the concept of the
captive nut or threaded bore in one of the clamp members
is no longer included in these two claims since this
feature was not considered a patentable feature in claim
2. Other than eliminating the specific recitation of a
threaded bore receiving a threaded bolt, the new claims
13 and 14 correspond with allowable claims directed to
the two forms of the invention and are believed to be
allowable for the same reasons as dependent claims 3-8.
Id. at 165-66 (emphasis added).
NAES
argues
that
this
statement
expressly
disclaims
the
captive nut arrangement. That argument, however, fails to consider
the complete prosecution history. As discussed above, it is the
central location of the bolt, as described in original claim 3,
that made this invention patentable. The PTO rejected original
claims 1 and 2 because they lacked this limitation, and not because
they required either a threaded bore or a captive nut. Because
mention of either a threaded bore or captive nut was unnecessary to
achieve novelty and, thus, not needed to obtain the patent, the
inventor removed the language altogether. By electing not to
reference either configuration, the patentee actually broadened the
scope of the ‘500 Patent.
9
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
Accordingly, the patentee did not disclaim the concept of a
captive
nut
arrangement,
and
Walhonde
is
not
estopped
from
asserting that such an arrangement infringes the ‘500 Patent.
C.
FWZ challenges the Court’s construction of the ‘500 Patent and
argues that, under its proposed construction, the Wilson tool does
not infringe the patent in suit. Although the Markman hearing in
this case has concluded, the Court may engage in “rolling claim
construction,
in
which
the
court
revisits
and
alters
its
interpretation of the claim terms as its understanding of the
technology evolves.” Jack Guttman, Inc. v. Kopykake Enters., Inc.,
302 F.3d 1352, 1361 (Fed. Cir. 2002).6
1.
FWZ first argues that the phrase, “means moving the clamp
members towards each other for secure clamping,” which appears in
claims 7 and 10, should be construed as a “means plus function.” So
construed,
the
“means”
called
for
in
claims
7
and
10
would
correspond to the threaded bolt and internally threaded bore
described in the specification.
6
To the extent Walhonde argues the Court should not revisit its
claims construction under the law of the case doctrine, that argument is
without merit. See Sofamor Danek Group, Inc. v. DePuy-Motech, Inc., 74
F.3d 1216, 1221 (Fed. Cir. 1996) (“Markman does not obligate the trial
judge to conclusively interpret claims at an early stage in a case.”).
10
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
The use of the word “means” in a claim gives rise to a
presumption that the term is stated as a means plus function under
35 U.S.C. § 112, ¶ 6, which provides:
An element in a claim for a combination may be expressed
as a means or step for performing a specified function
without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
This presumption is only rebutted where a preponderance of the
evidence shows that the claim element recites sufficiently definite
structure or materials to perform the claimed function. Altiris,
Inc. v. Symantec Corp., 318 F.3d 1363, 1375-76 (Fed. Cir. 2003).
Here, claims 7 and 10 describe the combination of the clamping
device with a boiler tube wall and call for “means moving the clamp
members towards each other for secure clamping.” The use of the
word “means” triggers a presumption that it states a means plus
function, describing the corresponding threaded bolt and internally
threaded bore described in the specification. § 112, ¶ 6. Moreover,
there is no evidence to rebut that presumption. Although claims 7
and 10 describe this means as “bolt means,” they do not otherwise
recite “sufficiently definite structure or materials” to perform
the specified function of drawing the clamps together. See Altiris,
318 F.3d at 1375-76. Without a more definite description, the word
“means” is presumed to state a means plus function.
11
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
As such, the term “means moving the clamp members towards each
other for secure clamping” is a means plus function, corresponding
to the combination of a threaded bolt and internally threaded bore
described in the specification.
2.
FWZ next argues that the Court should revise its construction
of the phrase, “one of said clamp members having a threaded bore
extending therethrough,” in claims 1-3 and 8 to find that it
requires a bore that is threaded throughout its entire length,
rather than a bore of which “at least a portion is threaded.”
See (Dkt. No. 167 at 12). Under this construction, FWZ contends the
Wilson tool’s captive nut arrangement would fail to satisfy the
“threaded bore” requirement expressed in claims 1-3 and 8 and
referenced in the means plus function in claims 7 and 10.
The defendants proposed this construction during the Markman
hearing, arguing that the plain meaning of the word “therethrough”
not only required the bore to pass completely through the clamp
member but also that it be threaded throughout its entire length.
The Court expressly rejected those arguments, stating:
The parties dispute whether this language, specifically
“therethrough,” means that the bore for receiving the
bolt must extend all the way through the clamp member, or
merely into it, and whether the entirety of the bore must
be threaded. The prior art (including the UK patent with
an integral nut to receive the bolt) supports Wilson’s
contention that this claim requires the bore to pass all
the way through the clamp member, and is consistent with
12
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
the plain meaning of the admittedly archaic word
“therethrough.” As with the threaded bolt, however, it is
not strictly necessary that a “threaded bore” be threaded
entirely. Thus the Court construes this term to mean “a
bore extending through the entirety of one clamp member,
of which bore at least a portion is threaded.”
(Dkt. No. 167 at 12) (emphasis added).
FWZ now advances a new argument, that the Court’s construction
is in error because a device with a partially threaded bore would
not function. In its view, the only way to manufacture a partially
threaded bore is to first drill a smooth bore and then machine
threads into a portion of the smooth bore. Under such an assembly,
the wider diameter of the threads would require a bolt too wide to
pass through the unthreaded portion, and the device would not work.
This is not the only way to create a partially threaded bore,
however, and nothing in the patent requires that it be manufactured
in the manner FWZ proposes. The patent simply describes a “threaded
bore extending therethrough,” which conceivably could include a
threaded portion that opens into a larger recess, or, as Walhonde
contends, a threaded nut embedded into a smooth bore. A bore
manufactured in these ways would function because the bolt could
engage the bore’s threads and still pass through the unthreaded
portion. Although a jury ultimately should determine whether, in
this case, a captive nut satisfies the element of a partially
threaded bore, there is no reason to preclude the possibility of
such a finding by narrowly construing the patent to require a fully
13
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
threaded bore where neither the patent itself nor its prosecution
history supports such a construction.
Importantly, the ‘500 Patent does not describe the specific
features of the bore other than to require a “threaded bore
extending therethrough for treadably [sic] receiving the threaded
portion of the bolt” to draw the clamp members together. This
scarcity of detail reflects the relative insignificance of the bore
itself, which is not the heart of the invention. Rather, the bore
and bolt’s central location in the clamp is the feature that
achieved novelty by addressing the specific challenge boilermakers
face when repairing large boiler tube walls in confined spaces.
This
prosecution
conclusion
history,
is
bolstered
which
the
further
Court
may
by
also
the
patent’s
consider
when
determining the meaning of a claim term. AstraZeneca LP v. Apotex,
Inc., 633 F.3d 1042, 1052-53 (Fed. Cir. 2010). As discussed above,
the PTO rejected original claim 2, which described bolt means
connecting
clamp
members
via
a
“threaded
bore
extending
therethrough” because it lacked novelty unless combined with the
central location of the bolt and bore, as described in original
claim 3. The PTO explained that holding two clamps together with a
bolt passing through a threaded bore was unpatentable over the
British Patent, which “discloses a tube alignment clamp comprising
clamp halves which are drawn together with a bolt and captive nut
14
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
arrangement.” (Dkt. No. 218-3 at 152). That original claim 2
described a threaded bore and the British Patent called for a
captive nut was immaterial to the PTO’s conclusions because the
novelty of the invention depended on the central location of the
bolt and bore, not the specific features of the bore itself.
Therefore, as understood by a person of ordinary skill in the
art within the context of the entire patent, a “threaded bore
extending therethrough” need not be narrowly construed to mean only
a bore threaded throughout its entire length. See Phillips v. AWH
Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). Were the Court to
construe
“threaded
bore”
as
narrowly
as
FWZ
suggests,
such
construction would improperly assign greater significance to the
specific characteristics of the bore than either the patentee or
PTO afforded it at the time of invention. Accordingly, the Court
will not revise its construction of the phrase, “one of said clamp
members having a threaded bore extending therethrough,” which it
construes to mean “a bore extending through the entirety of one
clamp member, of which bore at least a portion is threaded.”
D.
In light of these conclusions, the Court finds there are
genuine issues of material fact that preclude a grant of summary
judgment as to infringement. At bottom, a jury must decide whether
the captive nut arrangement in Wilson’s tool either literally
15
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
satisfies or is equivalent to the element of the partially threaded
bore described in claims 1-3 and 8 and referenced in the means plus
function in claims 7 and 10.
Reasonable jurors could disagree as to whether inserting a
threaded nut into a smooth bore literally constitutes a partially
threaded bore or whether it “performs substantially the same
purpose in substantially the same way to obtain the same result.”
AquaTex Indus. Inc. V. Techniche Solutions, 419 F.3d 1374, 1382
(Fed. Cir. 2005). For example, the record reflects conflicting
evidence as to whether the use of a captive nut, as an element
separate from the clamp member, redistributes loading on the device
and whether that affects its function. (Dkt. No. 216-3 at 11-12).
Likewise, the evidence suggests that a captive nut is more easily
replaced than an entire clamp, but it is unclear whether that
changes
the
overall
utility
of
the
clamp
in
a
manner
that
substantially alters its purpose. (Dkt. No. 216-4 at 3-4).
Because the partially threaded bore either appears as an
element or is referenced by a means plus function in each of the
contested claims, whether a captive nut satisfies that element
presents a genuine issue of fact that must be resolved prior to a
finding of infringement or non-infringement.
16
WALHONDE TOOLS V. WILSON WORKS
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MEMORANDUM OPINION AND ORDER
III.
The defendants also argue that the ‘500 Patent is invalid as
obvious under the prior art. Although Walhonde has moved for
summary judgment on the issue of invalidity, the defendants assert
that genuine issues of material fact preclude such a finding.
A.
Issued patents carry a presumption of validity, 35 U.S.C.
§ 282, and this presumption may only be overcome by clear and
convincing evidence to the contrary. Bristol-Myers-Squibb Co. v.
Ben Venue Labs, Inc., 246 F.3d 1368, 1374 (Fed. Cir. 2001). Under
35 U.S.C. § 103(a), a patent is invalid for obviousness where
the differences between the subject matter sought to be
patented and the prior art are such that the subject
matter as a whole would have been obvious at the time of
the invention was made to a person having ordinary skill
in the art to which said subject matter pertains.
The ultimate determination of invalidity based on obviousness
is a legal conclusion based on subsidiary factual issues, including
(1) the scope and content of the prior art, (2) differences between
the prior art and claims being challenged, (3) the level of
ordinary skill in the art, and (4) “secondary considerations” such
as commercial success, long-felt need, and the failure of others.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Where, as here,
the question is whether a patent claiming the combination of
elements of prior art is obvious, “a court must ask whether the
17
WALHONDE TOOLS V. WILSON WORKS
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MEMORANDUM OPINION AND ORDER
improvement is more than the predictable use of prior art elements
according
to
their
established
functions.”
KSR
Int’l
Co.
v.
Teleflex, Inc., 550 U.S. 398, 418 (2007). “[A] patent composed of
several elements is not proved obvious merely by demonstrating that
each of its elements was independently known in the prior art.” Id.
Where the patentee seeks a judgment that its patent claims are
not invalid, it must show that the nonmoving party “failed to
produce clear and convincing evidence on an essential element of a
defense upon which a reasonable jury could invalidate the patent.”
Eli Lilly & Co. v. Barr Labs, Inc., 251 F.3d 955, 962 (Fed. Cir.
2001). The Court must first determine whether the record raises any
genuine issues of fact as to the Graham factors and then weigh the
materiality of the dispute, “i.e., whether resolution of the
dispute one way or the other makes a difference to the final
determination of obviousness.” Rockwell Int’l Corp. v. United
States, 147 F.3d 1358, 1362 (Fed. Cir. 1998). “[T]he evidence must
be viewed favorably to the nonmovant, with doubts resolved and
reasonable inferences drawn in the nonmovant’s favor.” Id. at 1366.
B.
Here, there are genuine issues of material fact that preclude
granting summary judgment as to invalidity. First, the scope of the
relevant prior art is in dispute. “A patent reference qualifies as
prior art for an obviousness determination under § 103 only when it
18
WALHONDE TOOLS V. WILSON WORKS
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MEMORANDUM OPINION AND ORDER
is analogous to the claimed invention,” as defined by one of two
tests:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the
reference is not within in the field of the inventor’s
endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). Here, FWZ asserts
that eleven patent references define the prior art, but Walhonde
argues that four of those references are neither within the ‘500
Patent’s field of endeavor nor pertinent to the particular problem
involved.7 Walhonde’s contention that these references concern a
problem that is not directly analogous to those facing the inventor
of the patent in suit raises a factual question that cannot be
resolved on summary judgment. See Commonwealth Scientific and
Indus. Research Organisation v. Buffalo Tech. (USA), Inc., 542 F.3d
1363, 1375 (holding that expert opinions that conflict as to the
scope of the relevant art create a genuine issue of disputed fact).
Second, the parties dispute the differences between the ‘500
Patent and the prior art, and whether it would have been obvious to
7
Although Walhonde argues that FWZ’s expert, Dr. Pond,
conceded during his deposition that none of the four contested
patents fall within the applicable field of endeavor or concern the
particular problem involved, Dr. Pond’s responses actually reflect
a difference of opinion as to the scope of analogous prior art.
See (Dkt. No. 216-5 at 42-53).
19
WALHONDE TOOLS V. WILSON WORKS
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MEMORANDUM OPINION AND ORDER
a person having ordinary skill in the art to combine elements in
those references in the manner that constitutes the patent in suit.
FWZ’s expert, Dr. Robert B. Pond (“Dr. Pond”), described in his
report the elements disclosed in the prior art, which included,
inter alia, alignment of tube sections for welding, the use of
threaded bores and captive nuts for drawing clamps together, and
arrangements for repairing single or multiple pipes or tubes. (Dkt.
No. 218-3 at 24-25). He then explained where these elements were
incorporated into the ‘500 Patent and opined:
It would have been obvious to provide two clamp members
connected by a pair of threaded bolts and a threaded
bore, to provide recesses in each clamp member to receive
a pair of tubes, and to provide an opening or aperture in
the clamp members for welding access to the joint formed
by the opposed tube ends.
Id.
Although
Walhonde
contends
that
Dr.
Pond’s
analysis
of
individual elements fails to explain why a person of ordinary skill
would have been motivated to combine them, its argument underscores
the factual nature of the dispute that is at the core of the
obviousness issue presented in this case. See Buffalo Tech., 542
F.3d at 1375-76. Because the problems addressed by the prior art
are sufficiently similar to the challenge of boiler tube wall
repair addressed by the ‘500 Patent, there is a factual question
whether a person of skill in the art would have looked to the
teaching of those references and been motivated to combine their
elements.
20
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
Finally, to the extent that the Walhonde Wallbanger satisfied
a long-felt industry need and has enjoyed commercial success, such
evidence
of
secondary
considerations
does
not
control
the
obviousness determination. Rockwell, 147 F.3d at 1366. Even where
this evidence may be the most probative of obviousness, where, as
here, there are genuine issues of material fact relating to the
other
Graham
factors,
secondary
considerations
alone
are
not
sufficient to support a grant of summary judgment.
Accordingly, because genuine issues of fact exist as to the
Graham factors, it cannot be said that FWZ has failed to produce
clear and convincing evidence on any element of its invalidity
defense, and a grant of summary judgment is not warranted.
IV.
The defendants also assert that Walhonde’s conspiracy claim is
preempted by federal patent law. The plaintiff failed to respond to
the defendants’ motion for summary judgment as to this issue, and,
in any event, “conspiracy to infringe a patent” is “a theory which
has no basis in law.” Int’l Rectifier Corp. v. Samsung Elecs., Co.,
361 F.3d 1355, 1361 (Fed. Cir. 2004). Accordingly, Walhonde’s
conspiracy claim is preempted.
21
WALHONDE TOOLS V. WILSON WORKS
1:09CV48
MEMORANDUM OPINION AND ORDER
V.
For the reasons discussed, the Court:
1.
DENIES Walhonde’s motion for summary judgment as to invalidity
(dkt. no. 217);
2.
DENIES
Walhonde’s
motion
for
summary
judgment
as
to
infringement (dkt. no. 215);
3.
DENIES IN PART FWZ, NAES, Minnotte, and Wilson Works’ motions
for summary judgment as to non-infringement and GRANTS IN PART
their motions as to Walhonde’s conspiracy claim (dkt. nos.
205, 207, 209, 211); and
4.
GRANTS Walhonde’s motion for summary judgment as to Minnotte’s
counterclaims of inequitable conduct and false marking, which
Minnotte concedes it cannot sustain (dkt. no 213).
It is so ORDERED.
The Court directs the Clerk to transmit copies of this Order
to counsel of record.
DATED: May 31, 2012
/s/ Irene M. Keeley
IRENE M. KEELEY
UNITED STATES DISTRICT JUDGE
22
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