Componex Corporation v. Electronics For Imaging, Inc.
Filing
152
OPINION & ORDER granting 36 Componex's Motion for Summary Judgment dismissing the inequitable conduct claim and denying the motion for infringement; granting 41 EFI's Motion for Summary Judgment of invalidity and no willful infringement; denying 88 Componex's Motion to Strike; denying 116 Componex's Motion to Strike. Signed by District Judge William M. Conley on 10/21/14. (jat)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
COMPONEX CORPORATION,
Plaintiff,
OPINION & ORDER
v.
13-cv-384-wmc
ELECTRONICS FOR IMAGING, INC.,
Defendant.
Plaintiff Componex Corporation alleges that defendant Electronics For Imaging,
Inc. (“EFI”), infringes two of its patents for printing technology. This opinion is limited
to claims relating to the U.S. Patent No. 6,685,076 (“the ‘076 patent”). As is common
in patent cases, the parties have filed cross-motions for summary judgment. Componex
seeks summary judgment of infringement. EFI seeks summary judgment of noninfringement and invalidity. As part of these motions, the parties also ask the court to
construe various terms expressed in the claims of the ‘076 patent. While largely adopting
Componex’s construction of the disputed terms,1 the court finds the patent itself is
invalid on obviousness grounds given the Buysch patent teaches everything but welding
“as a means for fixing” when welding was one of the few means for fixing, as evidenced by
both common sense and prior art in the field at the time.
The named inventor, Cal Couillard, assigned the ‘076 patent to a company called Engineered
Metals Corporation, which then assigned it to Componex. While Componex was not, therefore,
the original patentee, it will be referred to as “patentee” for the sake of simplicity.
1
FACTS2
I. Background
Plaintiff Componex, located in Edgerton, Wisconsin, manufactures printing
rollers, also known as “idler rollers.” The President of Componex, Cal Couillard, is the
sole named inventor of the ‘076 patent.
Couillard assigned the ‘076 patent to
Engineered Metals Corporation, which in turn assigned it to Componex.
Defendant EFI is a publicly-traded company that sells digital printers and printing
technology, including software. (Declaration of Peter Benoit (“Benoit Decl.”) (dkt.# 51)
¶ 3.)
Among the products EFI offers are several different models of its VUTEk
Superwide-format printers. (Id.) VUTEk printers are used by specialty print shops to
create high-quality, large-format banners, posters and displays. The VUTEk family of
printers integrate computerized solutions that optimize print production. The printers
typically consist of more than 3,000 parts. (Id.)
II. Printing Roller Technology
Printing rollers are routinely used for what is known as “web handling,” which is
the transportation, shaping, and/or storage of thin materials in a continuous and flexible
form, such as paper, foil, or rolled metal. (Declaration of Tim Walker (“Walker Decl.”)
(dkt.#56) ¶ 5.) An idler roller is a roller that rotates by traction, typically created by the
moving web as it is pulled or pushed under the roller itself. (Id. ¶ 6d.) Among other
things, idler rollers can be employed in web handling to change web direction, prevent
2
Except as noted, the following facts are undisputed for purposes of summary judgment.
2
droop or flutter, monitor average web tension and provide an applied force to bend the
web for guiding.
Rollers can be balanced or unbalanced.
Typically, rollers are balanced only in
applications requiring high printing speeds. (Id. ¶ 15.) When balancing is needed, it can
be done either by the addition of mass to the rotor, by the removal of material, or in
some cases by relocating the shaft axis (known as “mass centering”). Removal of mass
can be accomplished by, among other things, drilling, milling or grinding. (Id. ¶ 20.)
Although the use of solid rollers is well established, hollow structures are
increasingly used in order to decrease the mass of the roller itself. (Id. ¶ 21.) Where a
roller is not solid, it is usually necessary to connect the various components of the hollow
structure so that it moves together. (Id. ¶ 22.) Typically, this is accomplished by using
two concentric tubes connected by spokes in much the same manner as a bicycle wheel
has a hub and rim connected by spokes, except that a single “spoke” is substantially
thicker in height and width and can, and sometimes does, run almost the entire length of
the tube itself. (Id.) Such hollow structures may be manufactured in various ways. (Id. ¶
24.) The entire roller can be formed as a single unit (known as an “extruded tube”) or it
can be created by joining several pieces of the hollow structure together (e.g., through
bolts, screws or welding). (Id.)
Roller bending is a common problem that occurs in web handling. (Id. ¶ 7.) Like
any material subject to pressure, how a roller bends will depend on how it is supported
and the location and amount of the load, as well as other factors like the location, length
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and number of spokes attaching the inner and outer tube. (Id. ¶¶ 8-10.) Differences in
design can thus alter the way in which these variables result in bending. (Id.)
III. Claims of the ‘076 Patent
The ‘076 patent claims a roller and a method of making a roller for use in
commercial machinery. (‘076 patent 1:11-12.) The ‘076 patent is directed to “nipped”
rollers. (Id. at 1:1.) In commercial applications, materials such as paper, plastic or tissue
are processed by looping material through two rollers assembled to form a small gap, or
“a nip” between the rollers that exerts pressure on the material. (Id. at 1:44-50.)3
The specification of the ‘076 patent states that it is desirable to have uniform
pressure across the two rollers. (Id. at 1:48-50.)
Figure 1: An Embodiment of Invention from the ‘076 patent: first and second welds (50),
Radial Gap (54) inner elongate tubing (14) and outer elongate tubing (30)
As illustrated above, the ‘076 patent teaches a welded tubing design with an outer
tubing connected to inner tubing. (Id. at 2:8-35, and Fig. 1-3.) The ‘076 patent asserts
“Nipping” or “nipped processes” refer to the use of two rollers through which the web passes to
shape or otherwise modify the web, most commonly by pinching it or by pressing two webs
together (a lamination process is a good example). (Id. ¶ 6f.)
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advantages of the invention which “substantially reduces the need for crowning rollers
used in nipped application.” 4 (Id. at 2:8-10.)
The application that matured into the ‘076 patent was filed on March 5, 2002,
and, after prosecution, contained three independent claims. The independent apparatus
claims (claims 1 & 2) recite a roller created by joining two concentric tubes such that
there is a space between the larger tube’s inner diameter and the smaller tube’s outer
diameter. (Id. claims 1, 2.) These tubes are joined using a “means for fixing” that is a
weld at positions some distance from the outer shell’s ends.
(Id.) The independent
method claim (claim 3) includes welding and pivoting limitations. (Id. claim 3.)
Componex asserts infringement of all three, independent claims of the ‘076
patent. (Pl.’s Br. for Summ. J. (dkt.# 37) 20-22.) These claims are set forth below with
specific claim terms in dispute bolded.
Claim 1 of the patented invention states:
[A] A roller comprising:
[B] an inner elongate tubing having an outer diameter;
[C] an outer elongate tubing having an inner diameter which is larger
than the outer diameter of the inner tubing, the outer tubing being
disposed about the inner tubing;
[D] means for fixing the outer tubing relative to the inner tubing, wherein
the means for fixing comprises a first weld between the inner tubing and
the outer tubing, the first weld being positioned a distance inward from one
Ordinarily, the “crown” and “crowning” takes “the form of a gradual increase in diameter of the
roller toward the midpoint of the roller. When a crowned roller is combined with a straight roller
or another crowned roller, and the ends of the opposed rollers are brought together, a uniform
pressure can be produced along the entire length of the rollers as the rollers deflect under the
applied load. In many machines and systems, many different crowns are needed for various sized
rollers. The process of crowning a roller requires extensive, precision machining, thereby resulting
in substantial sums associated with labor and manufacturing costs.” (‘076 patent, at 1:52-64.)
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end of the inner tubing and the outer tubing, and a second weld between
the inner tubing and the outer tubing, the second weld being positioned a
distance inward from an opposite end of the inner tubing and the outer
tubing;
[E] wherein the outer elongate tubing can pivot about the first and second
welds, such that the outer elongate tubing can bow outward.
(‘076 patent, at 6:25-43 (emphasis added).)
Claim 2 of the patented invention states:
[A] A member suitable for a roller, comprising:
[B] a double-walled tube, wherein the tube comprises an outer elongate
tubing having a first outside surface and a first inside surface; an inner
elongate tubing having a second outside surface and a second inside
surface, wherein the inner elongate tubing is concentrically disposed
within the outer elongate tubing;
[C] means for fixing the outer tubing relative to the inner tubing, wherein
the means for fixing comprises a first weld between the second outside
surface of the inner elongate tubing and the first inside surface of the outer
elongate tubing, the first weld being positioned a distance inward from one
end of the inner elongate tubing and the outer elongate tubing, and a
second weld between the second outside surface of the inner elongate
tubing and the first inside surface of the outer elongate tubing, the second
weld being positioned a distance inward from an opposite end of the inner
elongate tubing and the outer elongate tubing; and
[D] wherein the outer elongate tubing can pivot about the first and second
welds, such that the outer elongate tubing can bow outward.
(‘076 patent, at 44-64 (emphasis added).)
Claim 3 of the patented invention states:
[A] A method of assembling a roller, comprising:
[B] positioning an outer elongate tubing having opposed ends around an
inner elongate tubing having opposed ends;
[C] drilling a plurality of holes in the outer elongate tubing, the holes
being positioned inward from the ends of the outer elongate tubing;
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[D] filling the holes with welding material;
[E] welding the welding material to securely fasten the outer tubing to the
inner tubing, such that the outer elongate tubing can pivot about the first
and second welds, and such that the outer elongate tubing can bow
outward.
(‘076 patent, at 7:1-7 (emphasis added).)
OPINION
Analysis of patent infringement is a two-step process: “first, the scope of the
claims are determined as a matter of law, and second, the properly construed claims are
compared to the allegedly infringing device to determine, as a matter of fact, whether all
of the limitations of at least one claim are present, either literally or by a substantial
equivalent, in the accused device.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313,
1323 (Fed. Cir. 2002); Split Pivot, Inc. v. Trek Bicycle Corp., 12-CV-639-WMC, 2013 WL
6564640, at *2-3 (W.D. Wis. Dec. 13, 2013).
I.
Claim Construction
Claim terms “are examined through the viewing glass of a person skilled in the
art.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). This provides an
objective baseline from which to begin the claim analysis. Innova Pure Water, Inc. v. Safari
Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). Moreover, the analysis
is performed based on information and understanding at the time of the invention, with
the words of a claim “generally given their ordinary and customary meaning.” Phillips,
415 F.3d at 1313.
Because an “ordinary and customary” meaning may not be readily apparent, and
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because “patentees frequently use terms idiosyncratically,” courts generally look to the
patent specification, the prosecution history, and pertinent extrinsic evidence to construe
disputed terms. Id. at 1314. Indeed, the specification is typically considered the “best
source for discerning the proper context of the claims.” Phillips, 415 F.3d at 1315; see also
United States v. Adams, 383 U.S. 39, 49 (1966) (it is “fundamental that claims are to be
construed in the light of the specification”); Bass Pro Trademarks, L.L.C. v. Cabela's, Inc.,
485 F.3d 1364, 1369 (Fed. Cir. 2007) (the goal of claim construction is “to implement
the invention described in the specification and prosecution history, within the confines
of the prior art”); V-Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1310 (Fed. Cir.
2005) (the intrinsic record “usually provides the technological and temporal context to
enable the court to ascertain the meaning of the claim to one of ordinary skill in the art
at the time of the invention”).
EFI initially requested that the court construe two terms in the ‘076 Patent:
(1) the meaning of “an inner/outer elongate tubing”; and (2) the meaning of “disposed
about,” “disposed within,” or “position[ed] ... around” with reference to the outer tubes
orientation with the inner tube. Initially, Componex also sought construction of the
terms “between”5 and “means for fixing.” The latter term is defined in claim 1 itself,
with the first weld and the second weld providing the means by which the inner tubing
and the outer tubing is connected. (‘076 patent, at 6:33-40.) EFI expressed no objection
to either definition in its responsive brief. As the case proceeded, however, it became
apparent that the parties also disputed the meaning of the terms “a first weld” and “a
Componex defined the term “between” as: “across the space separating two objects.” (Pl.’s Br.
for Summ. J. (dkt.# 37) 19.)
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second weld.” These terms will be addressed, along with the phrase “bow outward” -- a
phrase that, contrary to EFI’s position, is capable of construction and satisfies the
requirements stated in 35 U.S.C. § 112, ¶ 2.
A. “An” inner elongate tube/outer elongate tube
Claim 1 requires “an inner elongate tubing” and “an outer elongate tubing.”
EFI contends that this language limits the patent to a two-tube invention. Componex
counters by contending that the patent can be defined as a multi-tube invention because
the word “a” or “an” (following the word “comprising”) is ordinarily interpreted to
include one or more. The law and facts here favor Componex’s construction.
The Federal Circuit has repeatedly emphasized that an indefinite article “a” or
“an” in “patent parlance carries the meaning of ‘one or more’ in open-ended claims
containing the transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223
F.3d 1351, 1356 (Fed. Cir. 2000).
In KCJ Corp., the Federal Circuit held that “[u]nless
the claim is specific as to the number of elements, the article “a” receives a singular
interpretation only in rare circumstances when the patentee evinces a clear intent so to
limit the article.” Id. at 1356; see Scanner Techs. Corp. v. ICOS Vision Sys. Corp., 365 F.3d
1299, 1304 (Fed. Cir. 2004).
On first blush, it is difficult to see how EFI could dislodge application of this default rule.
In an attempt to do so, EFI points to repeated figures in the ‘076 patent to demonstrate
that the patent was confined to a two-tube invention.
Upon review of those
embodiments, one of which is depicted in Figure 1, there is no doubt that they support
EFI’s proposed construction.
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But this construction relies on just one piece of evidence in a larger puzzle that
ultimately places claim language -- not the specification -- at the top of the analytical
hierarchy for the purposes of construing the claims. See Digital Biometrics, Inc. v. Identix,
Inc., 149 F.3d 1335, 1344 (Fed. Cir. 1998).
While such embodiments are useful in
better understanding the invention, they cannot be read into the claims without some
clear disavowal of the claim’s scope.
To adopt EFI’s position would mean that if
everything in the specification were read into the claims, an applicant would be unable to
claim more broadly than their disclosed embodiments (regardless of the prior art). See
3M Innovative Properties Co. v. Tredegar Corp., 725 F.3d 1315 (Fed. Cir. 2013). Indeed,
EFI’s argument runs counter to the long-standing maxim that “limitations discussed in the
specification may not be read into the claims” themselves. Id. at 1321. Accordingly,
EFI’s construction must be rejected. See Innova/Pure Water, 381 F.3d at 1117 (district
court improperly read limitations from the specification into the claims); Renishaw PLC v.
Marposs Societa' Per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998) (same); SRI Int’l v.
Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985).6
Still, EFI claims several Federal Circuit cases are inconsistent with a multi-tube
claim construction. See Abtox, Inc. v. Exitron, Corp., 122 F.3d 1019, 1023-27 (Fed. Cir.
Claim construction requires a scalpel, not a sledgehammer. There is a thin line between
interpreting the claims in view of the specification and improperly reading limitations from the
specification into the claims. Innova/Pure Water, 381 F.3d at 1117 (considering the contrasting
nature of these axioms to be a “longstanding difficulty”). The court already considered the
context and the underlying purpose drawn from the specification with respect to the ‘059 patent.
See Componex Corp. v. Electronics for Imaging, Inc., 13-CV-384-WMC, 2014 WL 3556064, at *4
(W.D. Wis. July 18, 2014). In that instance, the court found conformity between what was
stated in the specification and what was stated in the prosecution history, and suggested by the
extrinsic evidence. In particular, it was readily apparent that prior art required that the claims be
cabined in a functional way. Indeed, the specification itself was cross-referenced in the
prosecution history to distance the claims from the prior art and allow for issuance of the patent.
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1997) (construing “a metallic gas-confining chamber” as a single such chamber);
Insituform Techs., Inc. v. Cat Contracting, Inc., 99 F.3d 1098, 1106 (Fed. Cir. 1996)
(construing “a vacuum cup” as “a single vacuum cup”). See generally TiVo, Inc. v. EchoStar
Commc’ns Corp., 516 F.3d 1290, 1303 (Fed. Cir. 2008). The problem with EFI’s reliance
on these cases is that they are all distinguishable. Most importantly, in each case, there
was a clear intent by the patentee to limit the claim consistent with the patent’s
specification. The Tivo and Insituform cases are illustrative. In Tivo, the case involved an
audio stream and visual stream that were separated. These streams were then brought
back into a single stream (an MPEG stream) once processed. This contrasted with the
prior art that had proposed multiple MPEG streams after processing. Not surprisingly,
the Federal Circuit found a clear intent for singular meaning based on a combination of
the specification and the prosecution history, trumping the default rule. TiVo, 516 F.3d
at 1303. Similarly, in Insituform, the Federal Circuit restricted the claim to singular form
because “adding elements eliminated an inherent feature” of the invention: “In light of
the language found in the claims, specification and file history, we conclude the only correct
interpretation of claim 1 limits the scope of that claim to a process using only one vacuum
cup which inherently creates a discontinuous vacuum.” Insituform 99 F.3d at 1105–06
(emphasis added).
In light of the above, the court adopts Componex’s preferred
construction that the inner/outer tubing encompasses a multi-tube invention.
B. “A first weld” and “a second weld…”
The legal issue relating to these terms is much the same. See KCJ Corp., 223 F.3d
at 1356. In this context, EFI’s primary position is that patentee’s use of the language
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“first” and “second” should cabin the welds to one and only one “first weld” and one and
only one “second weld.” This language, EFI contends, bars any argument that the claimed
invention extends to inner and outer tubes connected by a third weld or fourth weld (or
more). For the reasons that follow, the court again finds no basis to depart from the
default rule.
First, EFI cites no case law for the proposition that the patentee had limited its the
claims to a two-weld invention merely by numbering its welds “first” and “second.”
Instead, during oral argument, EFI argued that if the words “first” and “second” meant
more than one, it would do “violence” to the terms and distort claim meaning. (Hr’g Tr.
(dkt. # 122) at 55-56.) The problem with this argument is that it takes the use of the
words “first” and “second” out of their claim context.
Tellingly, the claim language
“first/second” is here wedged between the indefinite article “a” and the noun “weld.”
When read in this context, the use of an indefinite article would ordinarily trigger the
default rule, something readily appreciated by the skilled addressee. See KCJ Corp., 223
F.3d at 1356.
Even if one could read in a limit of no more than one “first weld” or one “second
weld,” EFI is effectively inviting the court to carve out a new exception to the default rule
in doing so -- i.e., that when numbering notation is used by a patentee (such as first and
second), claim language must be singular, not plural. The creation of such a sweeping
exception is no small step, and the court declines to create a new exception here absent
some further direction from the Federal Circuit.
Second, the case law that does exist suggests that a numbering notation, like that
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stated in claims of the ‘076 patent, has no bearing on the default rule. See Hyperphrase
Techs., LLC v. Google, Inc., 260 F. App’x 274, 279 (Fed. Cir. 2007) (non-precedential);
Lodsys, LLC v. Brother Int'l Corp., 2:11-CV-00090-JRG, 2013 WL 2949959 (E.D. Tex.
June 14, 2013) (same). In Hyperphrase, the relevant part of the claim stated: “a computer
system comprising . . . means for parsing said first data record to identify a reference to a
second data record.” 260 F. App’x at 279-80. The district court construed this language
narrowly (i.e., to the singular) despite the existence of an indefinite article prefaced with
the transitional language. On appeal, the Federal Circuit found this constituted error,
holding instead that the default rule is difficult to dislodge when there is little (if any)
express language to suggest otherwise.
The following passage from the Hyperphrase
decision is instructive:
The district court's error . . . was in going beyond this explicit definition to hold
that a data reference may only refer to one and only one possible record. We first
reject the district court's reading of the language of the asserted claims, which the
court held supported its narrow construction . . . Neither the phrase “one and only
one” nor any equivalent language appears in the claim. Although the claim recites “a”
second record instead of “one or more” records, we have held that the use of the
singular form “a” in conjunction with “comprising” and without narrowing
language, such as “one and only one,” typically encompasses both singular and
plural possibilities . . . Claim language such as “references to the first record,” and
“the referenced record,” similarly do not support the district court's narrow claim
construction.
Id. (citations omitted) (emphasis added).
As did the alleged infringer in Hyperphrase, EFI seeks to read into the claims the
phrase one and only one when no such language exists.
As Hyperphrase holds, claim
language that references “a” first and “a” second does not by itself lead to a narrow
singular construction.
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Third and finally, EFI points out that the specification only speaks of a two-weld
invention. In turning to the specification itself, however, the court finds no evidence of a
clear intent to support a narrower construction.
For example, even where the
specification refers to a first and second weld (without a third or fourth), there is no
indication that the patentee intended to limit the claims to the singular for the first and
second welds.
See Phillips, 415 F.3d at 1312 (“It is a bedrock principle of claim
construction . . . that the claims of a patent define the invention to which the patentee is
entitled the right to exclude”).
At most, the specification is inconclusive as to whether the invention claims a twoweld versus a multi-weld device. In particular, Figure 3 of the ‘076 patent appears to
contemplate a three-weld embodiment of the invention when compared to Figures 1 and
2. (See ‘076 patent, at 4:39.) (“FIG. 3 depicts yet another roller 10.”) Admittedly, since
Figure 3 is accompanied by no other description and contains no numbering system to
indicate the precise location of the purported welds as does Figure 1, even one skilled in
the art may have trouble discerning multiple welds. On the other hand, these depictions
do nothing to limit the claim to no more than two welds, leaving the default rule as
controlling.
Given that the claim language and specifications both lead the skilled addressee to
a claim for a multi-weld invention, and that EFI has done nothing to dislodge application
of the default rule, Componex’s preferred construction of one or more welds is adopted.
See Free Motion Fitness, Inc. v. Cybex Int'l, Inc., 423 F.3d 1343, 1350 (Fed. Cir. 2005);
Abtox, 122 F.3d at 1024 (“[w]here an open “comprising” claim includes the article “a” or
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“an,” and the specification is at best inconclusive on the patentee's intent to limit that
article to a single element or step, we do not find a “clear intent” to so limit the claims”);
City of Aurora v. PS Sys., Inc., No. 07-CV-02371-PAB-BNB, 2010 WL 2232352 (D. Colo.
June 2, 2010).
C. Disposed “about,” “within” or “around”
Each claim requires the outer tubing to be “disposed about,” “disposed within,” or
“position[ed] ... around” the inner tubing. The meaning of these terms was not heavily
contested at oral argument.7 Nevertheless, in briefing, EFI contends that even if the
court concludes (as it has) that the ‘076 patent includes rollers with more than one inner
tube or more than one outer tube, the meaning of the terms “disposed about,” “disposed
within,” or “position[ed] . . . around” still requires that the tubes be wholly disposed about
or within each other.
The court finds that there is nothing in the patent to support EFI’s construction.
Certainly, no such limitation exists in the intrinsic or extrinsic evidence.
Moreover,
because the claims have been construed to mean one or more, a broader construction of
these other terms is also warranted: (1) that “disposed about” means one or more outer
tubes encircle one or more inner tubes; (2) “disposed within” means one or more inner
elongate tubes are disposed within one or more outer elongate tubes such that the inner
tube(s) and the outer tube(s) share the same center; and (3) “position[ed] . . . around”
means positioning one or more outer elongate tubes so as to encircle one or more inner
EFI made little mention of these claim terms in oral argument. The main battle lines were
drawn over: (1) multiple tubing; (2) multiple welds; and (3) outward bowing.
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elongate tubes.
D. “Bow Outward”
A final term in dispute centers on the meaning of “bow outward.” Componex
contends that the court should simply afford this term its plain and ordinary meaning -“away from the center of the axis” -- while EFI contends that the term cannot be
construed with any reasonable certainty by the skilled addressee. In Nautilus, Inc. v.
Biosig Instruments, Inc., ––– U.S. ––––, 134 S.Ct. 2120, 2129, (2014), the Supreme Court
considered a claim of indefiniteness as an invalidity challenge, but the decision bears on
claim construction as well, because courts have been instructed to construe claims, if
possible, to avoid invalidity. See Tate Access Floors, Inc. v. Interface Architectural Res., Inc.,
279 F.3d 1357, 1367 (Fed. Cir. 2002); Rhine v. Casio, Inc., 183 F.3d 1342, 1345, 51
USPQ2d 1377, 1379 (Fed. Cir. 1999) (“[I]f the only claim construction that is
consistent with the claim's language and the written description renders the claim invalid,
then the axiom does not apply and the claim is simply invalid.”). Indefiniteness must
also be proven by clear and convincing evidence. See Microsoft Corp. v. i4i Ltd. P’ship, 131
S. Ct. 2238, 2242 (2011); Teva Pharms. USA, Inc. v. Sandoz, Inc., 723 F.3d 1363, 1368
(Fed. Cir. 2013).
A patent’s specification must “conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the applicant regards as
[the] invention.” 35 U.S.C. § 112, ¶ 2. The Federal Circuit previously interpreted this
requirement to mean that claims are indefinite when they are “not amenable to
construction or insolubly ambiguous.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d
16
1342, 1347 (Fed. Cir. 2005).
In Nautilus, however, the Supreme Court announced a new test, stating that “a
patent's claims, viewed in light of the specification and prosecution history, [need only]
inform those skilled in the art about the scope of the invention with reasonable certainty.”
134 S.Ct. at 2129 (emphasis added). The Supreme Court explained that indefiniteness
requires a “delicate” balance:
On the one hand, the definiteness requirement must take into account the
inherent limitations of language and that [s]ome modicum of uncertainty is
the price of ensuring the appropriate incentives for innovation. At the
same time, a patent must be precise enough to afford clear notice of what is
claimed, thereby ‘appris[ing] the public of what is still open to [invent].’
Accordingly, the definiteness requirement mandates clarity, while
recognizing that absolute precision is unattainable.
Id. at 2128–29. Moreover, § 112, ¶ 2 requires a reasonable certainty to inform those
skilled in the art about the scope of the invention. Id. at 2129. One skilled in the art is
assumed to be “a person of ordinary creativity” and “common sense,” familiar with the
prior art and capable of researching accessible resources. KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007); see also In re Nilssen, 847 F.2d 841, 1988 WL 32917, at *2 (Fed.
Cir. Apr. 14, 1988) (unpublished) (the skilled addressee is a person presumed to know
the relevant prior art and also knows how to “find information in the art by researching
accessible source, including patent literature”); In re GPAC Inc., 57 F.3d 1573, 1579
(Fed. Cir. 1995).
To determine whether the words “bow outward” are indefinite, the court first
turns to the specification, which states simply that:
According to the principles of the present invention, in a nipped
application, the outer tubing is designed to pivot about the weldments. In
17
this way, as the ends of opposing rollers are brought together, the portion
of the outer tubing between the weldments will tend to bow outward,
thereby minimizing the need for crowning the roller.
“076 patent, at 4:28-34. One skilled in the art would readily appreciate that the rollers
are “brought together” in nipped applications. (‘076 patent, at 4:28-34.) When this
occurs, one skilled in the art would also understand that the outer elongate tubes may
“bow outward” between the weldments based on physical forces.
For this reason,
Componex persuasively argues, the skilled addressee would appreciate that the term “bow
outward” means, in the context of the claim, “away from the center.” (Dkt. #67 at 37.)
In rebuttal, EFI contends that this construction creates uncertainty because there
is no frame of reference to which the definition is tethered. More specifically, EFI argues
that the ‘076 patent does not inform the skilled addressee what the term means because
“outward” provides no information about what direction the tube is supposed to bow.
EFI further contends that when there is outward bowing on one part of the tube, there is
necessarily inward bowing of the outer elongated tube, which leaves the skilled addressee
uncertain as to whether outward bowing has occurred overall.
In the § 112, ¶ 2 context, however, EFI must provide clear and convincing
evidence that the claims do not provide reasonable certainty as to the scope of the
patent. Microsoft Corp., 131 S. Ct. at 2242. That threshold has not been satisfied here,
particularly in light of what is stated in the specification and by Componex’s own expert.
By using commonsense, the skilled addressee would understand that the direction of the
bowing is outward “away from the axis” (dkt. #67 at 37) for the simple reason that
rollers rotate on an axis and bowing is intended to provide the benefit of crowning.
18
This is also how Componex framed the definition at oral argument, where the
court had an opportunity to handle three-dimensional, cutaway demonstratives from
rollers. Having handled these demonstratives, and using the lens of the skilled addressee,
the court finds that the definition proffered by Componex is sensible both for its
simplicity and ordinary meaning, as well as its consistency with the invention’s stated
purpose of providing crowning without the cost or inconvenience of having to add
material to the outside of the outer tube. This is sufficient both to inform the skilled
addressee with reasonable certainty of the scope of the patent and preserve its validity.
See Tate Access Floors, 279 F.3d at 1367.
The court also finds other extrinsic evidence useful in understanding the ordinary
meaning of the term “pivot about” and its relationship to the term “bow outward.” The
New Oxford American Dictionary (3d ed. 2010) defines the word “pivot” as “the central
point, pin or shaft on which a mechanism turns or oscillates . . . [for e.g.] a sail pivots
around the axis of a virtually static mask.”
Id. at 1335. The court finds this plain
dictionary meaning is consistent with the claims themselves.
See Terlep v. Brinkmann
Corp., 418 F.3d 1379, 1382 (Fed. Cir. 2005) (dictionaries are useful, “provided the court
‘attach[es] the appropriate weight’”). Contrary to EFI’s reading, this definition does not
imply, much less limit or require, a claim to movement of the tubing on both sides of the
weld.8
8
In turning to a dictionary definition, the court is mindful of the Federal Circuit’s admonition
about the use of dictionaries in Phillips, 415 F.3d at 1322. Even so, Phillips does not preclude the
use of dictionaries altogether; rather “[d]ictionaries . . . are often useful to assist in understanding
the commonly understood meaning of words.” Id. at 1322 (quoting Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996)). Of course, one must ensure that such meaning
19
EFI raises two more arguments that at least deserve mention. First, it argues the
claims are indefinite because Mr. Couillard, the inventor, misunderstood what was meant
by “bow outward” at his deposition years after the invention and patent issued. While
EFI placed heavy emphasis on this point, the Federal Circuit has long recognized that an
inventor, represented by counsel during the application process, may not understand the
precise claims in a patent as issued:
[C]ommonly the claims are drafted by the inventor's patent solicitor and they may
even be drafted by the patent examiner in an examiner's amendment (subject to
the approval of the inventor's solicitor). While presumably the inventor has
approved any changes to the claim scope that have occurred via amendment
during the prosecution process, it is not unusual for there to be a significant
difference between what an inventor thinks his patented invention is and what the
ultimate scope of the claims is after allowance by the PTO.
Markman v. Westview Instruments, Inc., 52 F.3d 967, 985–86 (Fed. Cir. 1995); see also
Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1380 (Fed. Cir. 2000). This proposition
has as much application here as it did in Markman (and similar cases).
Second, EFI argues that “the bowing ‘outward’ is supposed to occur between the first
and second welds.” (Def.’s Br. for Summ. J. (dkt.# 42) 25.) Specifically, EFI argues that
to make sense of the term “pivot about” (a term that is in close proximity to the related
term “bow outward”), the so-called bowing of the outer tube can only occur “between”
the weldments. The court rejects this unnecessary narrowing of the claims.
As an initial matter, EFI’s argument that the outer tube must bow between the
welds is not what the claims themselves say.
Indeed, the word “between” appears
nowhere in the claim language. For example, integer [D] in claim 1 states: “wherein the
accords with the intrinsic evidence itself, but this principle applies to all extrinsic evidence
irrespective of its source. Id. at 1314.
20
outer elongate tubing can pivot about the first and second welds, such that the outer
elongate tubing can bow outward.” (‘076 patent, at 4:28-34.)
If the patentee had
sought to narrow the claim as EFI contends by using the word “between,” the patentee
would have said as much in the claim itself. The absence of that word leads to a plain
reading of the claim beyond what EFI suggests.
EFI next relies on the specification to show that the term “pivot about” requires
“outward bowing” between the “first” and “second” weldments.
EFI points to the
following passage from the ‘076 patent in support:
According to the principles of the present invention, in a nipped application, the
outer tubing is designed to pivot about the weldments. In this way, as the ends of
opposing rollers are brought together, the portion of the outer tubing between the
weldments will tend to bow outward, thereby minimizing the need for crowning
the roller.
(‘076 patent, at 4:28-34 (emphasis added).) This passage is also of no support to EFI’s
position: it simply provides that the “outer tubing between the weldments will tend to
bow outward.” Id. (emphasis added). At least in a nipping situation, when two tubes
come together to compress the web, this tendency may be supposed, at least at the point
of greatest pressure, but this does not mean the tendency of one or more tubes to bow
outward did not have the intended effect on the web. More importantly, there is nothing
in the specification to suggest that outward bowing cannot occur elsewhere in the outer
tubing.
The absence of this cannot be used to limit the claims because it would
improperly import a limitation from the specification into the claims themselves. See
Innova/Pure Water, 381 F.3d at 1117; Renishaw, 158 F.3d at 1248.
Regardless of the direction of bowing at different parts of the tube, EFI’s argument
21
concedes there is “outward bowing” in the sense of intended bowing away from the
center between the welds. Because of this, among other reasons, § 112 is satisfied. As it
turns out, the issue is not whether the claims can be meaningfully construed by one
skilled in the art, but whether EFI’s alleged infringing rollers fall within the scope of those
claims. That issue is addressed in the context of infringement below.
II.
Infringement of the ‘076 Patent
Componex bears the burden of proving infringement by a preponderance of the
evidence. Laitram Corp. v. Rexnord Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991). As a
moving party, EFI may put Componex to its proof of infringement, but will only be
granted summary judgment when no disputed issues of material fact remain and when
the movant is clearly entitled to prevail as a matter of law. Fed. R. Civ. P. 56; Celotex
Corp. v. Catrett, 477 U.S. 317, 322–23 (1986).
Material facts are those under the
applicable substantive law that “might affect the outcome of the suit.” Anderson, 477
U.S. at 248.
Certainly, Componex faces an uphill battle in proving infringement, particularly
with respect to whether EFI’s multi-weld design “bows outward.” EFI’s expert opines
plausibly that EFI’s accused device does not “bow outward” because its multiple welds
constrain such movement. (Declaration of John Moskwa (“Moskwa Decl.”) (dkt.#54)
¶¶ 28, 32.)
However, Componex’s expert disagrees, opining just as plausibly that
additional welds do not prevent outward bowing; they just reduce it. (Initial Expert
22
Report Jerald Brown (“Initial Brown Report”) (dkt.#46-5) 32-33).9
Given the divergent views expressed by the parties’ experts, the court finds
disputed issues of material fact.
Componex’s motion for summary judgment for
infringement will, therefore, be denied, as is EFI’s cross-motion for non-infringement,
with respect to claims 1 through 3 of the ‘076 patent.
III.
Validity of the ‘076 Patent
EFI bears the burden of proving that the ‘076 patent is invalid. Because issued
patents are presumed valid, EFI “must submit such clear and convincing evidence of facts
underlying invalidity that no reasonable jury could find otherwise.” TriMed, Inc. v. Stryker
Corp., 608 F.3d 1333, 1340 (Fed. Cir. 2010); see also Cent. Admixture Pharmacy Servs., Inc.
v. Advanced Cardiac Solutions, P.C., 482 F.3d 1347, 1357–58 (Fed. Cir. 2007). “Although
not susceptible to precise definition, ‘clear and convincing’ evidence has been described
as evidence which produces in the mind of the trier of fact an abiding conviction that the
truth of the factual contentions are highly probable.” Id.
In moving for summary judgment on invalidity, EFI contends that the patent lacks
novelty and is obvious in light of the prior art. It also seeks to invalidate the patent
based on a theory of prior sales. Since patents are presumed valid, “the burden of
persuasion to the contrary” remains with EFI on each of these asserted grounds.
More specifically, Brown opines that the degree of “flexing” in the outer tube will be reduced
when additional sets of welds are placed between the first weld and the second weld. (Initial
Brown Report (dkt. #46-5) at 32-33.) By the term “flexing,” the court understands Brown to
mean “outward bow[ing]” because his report indicates elsewhere that crowning (a claimed byproduct of the weldments) will be reduced when additional welds are included in the roller itself.
(Id.) This conclusion, however subject it may be to dispute, is enough in the context of summary
judgment to create a material issue of disputed fact.
9
23
PowerOasis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299, 1303 (Fed. Cir. 2008).
A. Novelty
“A patent is invalid for anticipation if a single prior art reference discloses each
and every limitation of the claimed invention.” Schering Corp. v. Geneva Pharm., 339 F.3d
1373, 1377 (Fed. Cir. 2003). While “the teaching in the prior reference need not be
ipsissimis verbis” or identically worded, Structural Rubber Prods. Co. v. Park Rubber Co., 749
F.2d 707, 716 (Fed. Cir. 1984), “[t]he elements must be arranged or combined in the
same way as [stated] in the claim.” Whitserve, LLC v. Comp. Packages, Inc., 694 F.3d 10, 21
(Fed. Cir. 2012) (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)).
EFI contends that all three claims have been anticipated by U.S. Patent No.
3,389,448 (“Buysch”). EFI’s expert identified the teachings in the Buysch patent as a
roller comprised of an outer shell connected to a concentric inner base cylinder. (Expert
Report of Tim Walker (“Walker Report”) (dkt. #68) 48.) More specifically, he opines
that the Buysch patent discloses “(1) a roller created by joining two concentric tubes such
that there is a space between the larger tube’s inner diameter and the smaller tube’s outer
diameter; (2) two tubes joined in position some distance from the outer shell’s ends; and
(3) a roller with deflection different from an end-support beam, either minimizing the
total deflection or allowing bowing in the opposite direction from an end-support roller.”
(Id.) The following figure is an embodiment of the Buysch patent:
24
Threaded bolt
Threaded bore hole
Roller shell
Hollow roller core
Weld seam between
bolt and roller shell
Blind bore hole
Figure 2: An embodiment of U.S. Patent No. 3,389,448 (“Buysch”): hollow roller core
(1); roller shell (4); threaded bore hole (5); threaded bolt (6); blind bore hole (8); weld
seam between bolt and roller shell (9).
There is no dispute that many of the limitations found in the ‘076 patent are also
found in the teachings of Buysch. What is in dispute is the claim element that requires
welding as a “means for fixing the outer tubing relative to the inner tubing.” (‘076 patent
6:33-34). Componex contends that the main point of difference between the ‘076 patent
and Buysch is that Buysch does not teach the welding together of the outer tube to the
inner tube. With respect to claims 1 and 2, the court is inclined to agree. EFI cannot
succeed in challenging ‘076 patent for lack of novelty. While the teachings in the Buysch
25
patent need not be literally the same as the claimed invention, “[t]he elements must be
arranged or combined in the same way.” Whitserve, 694 F.3d at 21. It is undisputed that
the combination of the bolt and the weld is arranged in a different way to claims 1 and 2
in the ‘076 patent: Buysch requires threaded bolts to join the inner tube to the outer
tube, and once machined in place, the end surface of the bolt is then welded so it sits
“flush with the service of the roller shell” itself. (‘448 at 4:13-14). Because of this small
(yet not insubstantial) difference, the court must deny EFI’s motion on novelty grounds
as applied to claims 1 and 2.
EFI’s novelty challenge fares no better with respect to claim 3. Although the claim
represents a method claim, the method applied to make the roller requires a “welding
material to securely fasten the outer tubing to the inner tubing.” (‘076 patent at 4:1115.) In effect, weldments are applied to join the tubing instead of securing bolts (which
are then welded flush with the outer tube). As with the apparatus claims, the court finds
that claim 3 is not anticipated in light of Buysch. See Schering Corp., 339 F.3d at 1377.
EFI also relies on several further references for the purposes of its § 102 challenge.
But contrary to EFI’s position, the Frankland (U.S. Patent No. 5,567,448), Shraud (DE
1400941) and Tuomaala (U.S. Patent No. 3,941,435) references do not invalidate the
‘076 patent. Although EFI makes reference to each, the analysis is bare-boned. The court
finds that none of these patents anticipate the ‘076 patent for much the same reason as
the Buysch patent:
none teach welds between the inner tube and outer tube.
Reinforcing this view is that by the time EFI’s reply had been filed, it was treating the
Buysch patent as its primary reference for novelty purposes (as well as obviousness).
26
Because of this, the court infers that the Frankland, Shraud and Tuomaala references do
not advance EFI’s novelty challenge any further than Buysch.
B. Obviousness
For the very reason that EFI’s novelty argument tips against it, its obviousness
argument falls in its favor: the obviousness analysis permits the skilled addressee to use
one or more sources to assess whether a patent is obvious. Indeed, in this context -- and
ever mindful of hindsight bias -- the skilled addressee is permitted to play a more creative
role and apply common sense when assessing whether a patent is invalid under 35 USC §
103(a). See KSR, 550 U.S. at 417-18; see also Perfect Web Technologies, Inc. v. InfoUSA, Inc.,
587 F.3d 1324, 1329 (Fed. Cir. 2009) (the “use of common sense does not require a
specific hint or suggestion in a particular reference, only a reasoned explanation that
avoids conclusory generalizations”).
Turning to the language of the statute, a claim is deemed obvious “if the
differences between the claimed invention and the prior art are such that the subject
matter as a whole would have been obvious before the effective filing date to a person
having ordinary skill in the art.” 35 U.S.C. § 103(a).
Specifically, obviousness is a
question of law that is predicated on several factual inquires, which include: (1) the level
of ordinary skill in the art; (2) the scope and content of the prior art; (3) the differences
between the claimed subject matter and the prior art; and (4) secondary considerations of
27
non-obviousness, such as commercial success, long-felt need, and unexpected results. See
Graham v. John Deere Co., 383 U.S. 1, 17–18, 86 (1966); see also Sciele Pharma Inc. v. Lupin
Ltd., 684 F.3d 1253, 1259 (Fed. Cir. 2012).
The obviousness analysis entails “an expansive and flexible approach” assessed by
the skilled addressee. Graham, 383 U.S. at 418. To this end, there need not be “precise
teachings [in the art] directed to the specific subject matter of the challenged claim, for a
court can take account of the inferences and creative steps that a person of ordinary skill
in the art would employ.” Id. at 418. For situations “when the question is whether a
patent claiming the combination of elements of prior art is obvious,” the Supreme Court
has distilled certain “principles” as “instructive,” id. at 417:
When a work is available in one field of endeavor, design incentives and other
market forces can prompt variations of it, either in the same field or a different
one. If a person of ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that
it would improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.... [A] court must ask
whether the improvement is more than the predictable use of prior art elements
according to their established functions.
Id. at 417.
In light of this directive, it is necessary for a court to look to interrelated teachings
of multiple patents; the effects of demands known to the design community or in the
marketplace; and the background knowledge possessed by a person having ordinary skill
in the art. Id.
All of these so-called “Graham factors” impact whether there was an
apparent reason to combine the known elements in the fashion claimed by the patent at
issue. Id. To assist in this process, a court may look to whether the prior art teaches
28
toward or away from the claimed invention. See United States v. Adams, 383 U.S. 39, 52
(1966) (addressing factors that would deter any investigation into combining the prior
art); In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (a reference teaches away
“when a person of ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant”); In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994) (same); W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983)
(same).
Finally, in placing obviousness in the context of summary judgment, the court
must first determine whether the record raises any genuine disputed 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), see also Walhonde Tools, Inc. v. Wilson Works, Inc., 1:09CV48, 2012 WL
1965628, at *7 (N.D. W. Va. May 31, 2012); B & G Plastics, Inc. v. E. Creative Indus.,
Inc., 269 F. Supp. 2d 450, 460 (S.D.N.Y. 2003). Summary judgment on the basis of
obviousness may be granted to invalidate patent claims when the subject matter of the
invention and the prior art are so readily understandable as to eliminate any genuine
issue of fact. See Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1573 (Fed. Cir.
1984).
In answering this question, the court will turn first to the level of ordinary skill in
the art and then assess (1) the scope of the prior art, and (2) the differences between the
29
claimed subject matter and the prior art. Because there is substantial overlap between
the latter two factors, and Buysch covers all but one of the limitations in claims 1
through 3 of the ‘076 patent, the court will address those two factors together. With
respect to secondary considerations of non-obviousness, Componex does not put this
factor squarely before the court in the context of EFI’s motion for summary judgment,
and so there is little (if any) reference to these considerations by this court as well.
i.
The Level Of Ordinary Skill In The Art
This Graham factor is not in dispute. EFI characterizes the skilled addressee at the
time of the invention as “someone with either an undergraduate engineering degree, two
years of technical college training or equivalent years of applied experience in lieu of
formal education.” (Walker Report (dkt.# 68) 12.) In addition, EFI’s expert opines that
the skilled addressed would have “at least five years of applying their technical aptitudes
to web-handling processes.” Id.
This characterization of the skilled addressee seems sensible.
Nothing in
Componex’s materials would alter this viewpoint and, relevantly, the characterization is
consistent with the field of the art applicable to the invention, as previously addressed.
ii.
The Scope And Content Of The Prior Art And The Differences
Between The Claimed Subject Matter And The Prior Art
EFI pinpoints the key difference between the claimed invention and EFI’s primary
reference for the purposes of obviousness as follows: even if Buysch did not teach using
welds between the tubes instead of bolts welded at the top, it would have been obvious to
skilled addressee to use welds instead of bolts as a means for fixing the multiple tubes
30
together. This assertion has much to commend it.
As an initial matter, the Buysch reference contains all but one limitation in the
‘076 patent -- i.e., welding between the tubes. More to the point, EFI contends that this
missing limitation is found in any one of the following references: Komuro (U.S. Patent
No. 5,7323,19), Frankland (U.S. Patent No. 5567448), Krippelz (U.S. Patent No.
6280371), Smith (U.S. Patent No. 1648626), and Hackman (U.S. Patent No.
2829238).
(Walker Report (dkt.# 68) 50-51.)
Before assessing whether Buysch
combined with any of these references invalidate the ‘076 patent, the court will address
the scope and relevant teachings of two of the more pertinent ones to which EFI
expressly refers: Komuro and Frankland.
Turning first to Komuro, EFI’s expert reads this reference as disclosing a roller
design comprised of an inner solid metal shaft and outer hollow cylinder, connected at
either of two points spaced inward from the cylinder end to create a substantially
uniform deflection load of nipping to another roller of standard end support design. (Id.
at 50.) The patent expressly states: “The backup roller 22B employs a solid metal shaft
52 having a central large-diameter portion 52a. The central large-diameter portion 52a
of the solid metal shaft 52 is fixed to a hollow cylinder 24 by welding, for example.”
(‘319 patent at 6:10-14.) The specification further states that “[t]he fixing of the largediameter portion 52a to the hollow cylinder 24 may be effected by any other methods
such as screwing or pinning like the first preferred embodiment, instead of welding.” (Id.
at 6:14-17).
An embodiment of the Komuro reference is depicted below:
31
Figure 3: An Embodiment of Invention from U.S. Patent No. 5732319 (“Komuro”).
Componex’s expert opines that the weld in Komuro differs from the type of weld
that is featured in the ‘076 patent. (Brown Expert Report., dkt.# 67 at 33).
In
particular, Brown opines that there is “nothing to indicate [in Komuro] that the weld
penetrates from the exterior of the outer shell to the inner core.” (Id. at 32.) Brown
states that this would be relevant to claim 3 of the ‘076 patent, which requires “drilling a
plurality of holes in the outer elongate tubing.”10
(Id.)
But given that the skilled
addressee may take into account creative steps, and even if the weld does not penetrate
all the way through11 -- the drilling of a hole from the exterior to the inner core is fairly
basic -- and the court rejects Componex’s notion that there are any reasonably disputed
facts with respect to Komuro, let alone gaps in the prior art relative to the claimed
subject matter of the ‘076 patent. Indeed, Buysch itself teaches the drilling of holes from
10
It is not entirely clear, however, whether this same analysis is relevant to claims 1-2.
Contrary to Brown’s opinion, there is also nothing in the specification to indicate that the welds
do not penetrate from the exterior of the outer shell to the inner core. Given that Buysh teaches
holes all the way through, and it was an earlier technology than Komoro, there would seem no
reason why Komuro would not also have adopted these aspects of the Buysch invention. In any
event, as the court indicates above, the drilling of such holes are in Buysch and would have been
assimilated into the consciousness of the skilled addressee well before the filing date of the ‘076
patent, thereby making this aspect of invention common general knowledge. See generally KSR.,
550 U.S. at 417-18.
11
32
the exterior to the inner core, albeit filling the bored holes with screws rather than
welding material. This, too, would be fairly rudimentary for the skilled addressee, who
has an undergraduate degree in engineering, coupled with five years in the web handling
process. (Walker Report (dkt.# 68) 12.)
Thus, both Buysch and the common general
knowledge of the skilled addressee serve to minimize any arguable differences between
the scope of the patent and the prior art.
The next reference, Frankland, also describes the use of welding instead of screws.
The following passage is instructive:
As can also be seen in FIGS. 5 and 6, inner shell members (44) are preferably
welded to the center segment (26) and corresponding intermediate segments (28)
by welds (45). However, cylindrical shell members 44 may be attached by a
myriad of other known mechanical fastener, such as for example, appropriately
sized countersunk screws provided that a hermetic seal can be established and
maintained between the shell members 44 and the center segment 26.
‘448 at 5:15-25.
An embodiment of the Frankland reference is depicted below:
Figure 4: An Embodiment of Invention from U.S. Patent No. 5567448 (“Frankland”).
EFI’s expert states that the Frankland reference teaches the interchangeability of
welds with screws, opining that this would be a predictable variation. (Walker Report
33
(dkt. #68) 51.)
Unsurprisingly, Componex’s expert disagrees.
He questions again
whether the weld in Frankland is the same type as that in the ‘076 patent. (Brown
Expert Report (dkt.# 67) 33.) Brown’s focus is on claim 3, but he notes that the other
claims would be immune from a § 103 challenge in light of the prior art. (Id.)
For the same reason as Komuro, Brown also seeks to create a disputed fact in the
case of Frankland, when none exists. In particular, Brown offers no credible basis for a
trier of fact to find that the type of weld used would preclude one skilled in the art from
making the obvious connection of fixing the inner and outer tubes by use of welds, rather
than by use of screws.
With respect to both pieces of prior art, Brown’s efforts to
identify some difference in the welds falls well short of that necessary to find a material
factual difference. See Anderson, 477 U.S. at 248 (material facts are those under the
applicable substantive law that “might affect the outcome of the suit”); see also Rockwell,
147 F.3d at 1362.
iii.
Secondary Considerations
Rebuttal evidence may include evidence of “secondary considerations,” such as
“commercial success, long felt but unsolved needs, [and] failure of others.” Graham, 383
U.S. at 17.
As discussed earlier, Componex did not put any of these considerations
squarely before the court in the context of EFI’s motion for summary judgment.
Accordingly, while the court might surmise the possible importance here, this factor has
no bearing on EFI’s motion for invalidity.
iv.
Reasons for Combining References
34
Even with the essentially undisputed issues of material fact with respect to the
Graham factors discussed above, the question remains whether obviousness can be
concluded as a matter of law. This requires the court to assess whether there is enough in
the hypothetical skilled addressee’s background knowledge and understanding of the
references as a whole to allow the court to conclude that the ‘076 patent is invalid as
matter of law. See KSR, 550 U.S. at 418–19 (“whether there [is] an apparent reason to
combine known elements in the fashion claimed by the patent at issue,” there need not
be “precise teachings [in the art] directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”).
The Supreme Court’s directive in KSR did much to loosen the rigidity of the
traditional teaching, suggestion or motivation test (“TSM”).
At the same time, the
Federal Circuit has subsequently stated:
While the KSR Court rejected a rigid application of the teaching,
suggestion, or motivation test in an obviousness inquiry, the Court
acknowledged the importance of identifying a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does in an obviousness
determination.
Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1356–57 (Fed. Cir.
2007); see also In re Kahn, 441 F. 3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”).
Here, EFI placed a heavy emphasis on Buysch as its primary reference for the §
35
103 challenge. When combined with secondary references (such as Komuro), and with
the background knowledge of the person of ordinary skill in the art, EFI contends that
this would lead any reasonable trier of fact to the conclusion that the claimed invention
is obvious. Componex counters, arguing that there are teachings that cut against the
combination being made or, at minimum, there are disputed questions of fact to preclude
summary judgment.
Considering initially the reasons that favor a combination, the court first looks to
the fact that the Buysch reference uses welds to secure the bolts between the inner and
outer tubes. While welding is not used between the tubes (as in the ‘076 patent), welds
are used in the threaded bore holes of Buysch to fix the bolts flush with the outer shell.
Given that the purpose of using welds in bore holds is not too dissimilar to the use of
welds between the inner and outer tubing of the ‘076 patent (i.e., to fix the tubes in place
permanently), it is not far-fetched for the skilled addressee to combine the Buysch
reference with the Komuro reference -- the latter of which provides welding between two
tubes. See, e.g., Miles Lab., Inc. v. Shandon, Inc., 997 F.2d 870, 878, 27 U.S.P.Q.2d 1123,
1128–29 (Fed. Cir. 1993) (“The differences between the prior art and [the patent claim]
were minor and achievable by simple modification.”).
Second, even if the Komuro reference does not teach the precise weld that the ‘076
patent exhibits, it does teach at a more general level the use of welds in roller technology.
When Komuro is viewed in this light, combining the Komuro reference with Buysch
seems obvious -- especially when there are only a finite number of options to choose from
to secure the inner and outer tubing of the ‘076 patent (e.g, screws, bolts, welds).
36
Compare KSR, 550 U.S. at 421 (where there are "finite number of identified predictable
solutions, a person of ordinary skill has good reason to pursue the known options"), with
Takeda Chem., 492 F.3d 1350 (Fed Cir. 2007) (rejecting argument that selecting
“compound b” and altering it to arrive at the claimed invention were obvious steps when
compound b was one of hundreds of millions of compounds disclosed in the art).
Notwithstanding the cogent reasons in favor of combination, and to be fair, there
are arguably reasons that point the other way. For example, Componex’s expert opines
that welds and screws are not interchangeable.
He states: “To be clear, welding and
screwing are not equivalent means for fixation . . . [because] welds are a permanent
means for fixing parts together. Screws or bolts are a temporary, reversible means for
fixing parts together. In situations where access is required (say, for repairing or replacing
a part) screws or bolts are preferred as compared to permanent welds.” (Brown Expert
Report (dkt. #67) 31.) Given that welding is used in the Buysch reference to secure
screws permanently as well, this distinction seems theoretical at best. Put simply, he
does not contextualize his opinion at 31 in light of the patent or the Buysch reference.
Brown’s second distinction has a little more substance: “welding requires high
heat, which may cause unwanted and detrimental annealing of the metal surrounding the
weld itself.” (Id.) Brown points out that the “use of a screw or bolt does not bring with
it the possibility of annealing the surrounding metal” and because of this he concludes that
“screws and welds are not interchangeable means for fixing.” (Id.) But again, Brown’s
opinion does not squarely relate this issue to the patent in suit.
12
12
On balance,
Brown also makes no reference to the annealing problem with respect to the Buysch, Komuro
37
Componex’s arguments are more predicated on speculation than fact. This, combined
with the experts’ lack of detail explaining why the references would not have been
combined, is telling. More compelling is the fact that the experts do not counter EFI’s
experts suggesting that there are only a finite number of options to secure the inner and
outer tubing. Because of this, and because the purpose of using a weld serves much the
same purpose as a screw, the court has little hesitation in finding that the skilled
addressee would find the ‘076 patent obvious. Accordingly, since the subject matter of
the invention and the prior art are so readily understandable as to eliminate any genuine
issue of fact, the court grants summary judgment on obviousness in favor of EFI. See
Union Carbide, 724 F.2d at 1573.13
C. Prior Sales14
EFI also moves for summary judgment of invalidity under the “on-sale bar.”
Pursuant to that provision, “A person shall be entitled to a patent unless . . . (b) the
invention was . . . on sale in this country, more than one year prior to the date of the
application for patent in the United States.” 35 U.S.C. § 102(b). In Pfaff v. Wells Elecs.,
525 U.S. 55 (1998), the Supreme Court established a two-pronged test for its application
of the on-sale bar. First, the invention “must be the subject of a commercial offer for
and Frankland patents. Had annealing been a problem in the art, or deterred the skilled
addressee from using welds in the construction of rollers, why didn’t Brown make reference to this
relative to other patents that are relevant to the obviousness analysis.
What reinforces a finding of invalidity is the fact that the court must take into account the
“inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550
U.S. at 418. The Supreme Court’s emphasis on these aspects regarding obviousness would seem
to help EFI’s position because it loosened the rigidity of the TSM test.
14
While in theory the court need not address the merits of the EFI’s remaining defenses,
exposition of prior sales and inequitable conduct are addressed for completeness.
13
38
sale” before the critical date (i.e., more than one year before the filing date of the patentin-suit). Id. at 67. Second, “the invention must be ready for patenting.” Id.
The ‘076 patent claims priority to a patent application that was filed on March 5,
2001. Accordingly, the critical date of the ‘076 patent is March 5, 2000. EFI contends
that the first prong of Pfaff is met because prior to this critical date, Componex offered to
sell to VUTEk (now EFI) a cantilever roll embodying the claims of the ‘076 Patent.
(Declaration of Dan Smith (“Smith Decl.”) (dkt. #53) ¶¶ 4-8 & Ex. A.).15
More
specifically, EFI contends that Cal Couillard (president of Componex) made an offer of
sale to VUTEk when he engaged in conversations with Dan Smith (a former VUTEk
employee) between 1999 and 2000.
During those conversations it is alleged that
Couillard suggested to Smith that he could manufacture a cantilever roller design that
would meet Smith’s needs. (Id.) Sketches were purportedly produced. Smith avers that
he dated one of these sketches on February 21, 2000 -- approximately two weeks before
Componex begins its opposition to the on-sale defense by a variety of technical defects in
motions to strike, which are almost wholly meritless. While the patent has been held invalid on
obviousness grounds, disposition of the motions goes to costs. And should this case proceed to
trial on the ‘059 patent, the court trusts that going forward, counsel for Componex will dispense
with any more “gotcha” motions absent some real demonstration of prejudice. Specifically,
Componex has filed two motions: (1) a Motion to Strike Declaration of Daniel Smith Under Rule
37(c) (dkt. #88); and (2) a Motion to Strike EFI’s Opposition to Plaintiff’s Motion to Strike the
Declaration of Daniel Smith (dkt. #116). With respect to the first, Componex seeks to strike the
declaration because Daniel Smith was not named as a witness in EFI’s initial Rule 26(a)
disclosures. Having been named in Componex’s initial disclosures as a possible witness, and
incorporated by reference in EFI’s supplemental disclosures without objection, the court is at a
loss as to a basis for excluding Smith’s declaration. With respect to the second, Componex seeks
to strike EFI’s opposition to its motion to strike Daniel Smith’s declaration, because its
opposition was filed three days late. While EFI is living on the edge in filing any document after
a deadline without motion for leave and showing cause, particularly if some prejudice could be
demonstrated, that is not the case here. On the contrary, there is no prejudice and a few days
difference in briefing is immaterial, particularly since Componex had no right to a reply.
Componex’s second motion (dkt. #116) is, therefore, denied as well.
15
39
the critical date, March 5, 2000. (Id. & Ex. A.)
To determine whether this first prong is satisfied, the court must assess whether
there is a “communication or [a] series of communications” that rise to the level of a
commercial offer for sale. Grp. One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1046
(Fed. Cir. 2001). Here, notwithstanding the conversations between Smith and Couillard,
there is limited evidence (if any) of the price or quantity at which Componex was offering
the rollers at issue to VUTEk, nor is there evidence of an offered delivery date. This
apparent absence of important indicia of a viable commercial offer raises, at minimum, a
disputed issue of fact as to the existence of such an offer.
Had this patent gone to trial,
testimony from Smith would have been required to confirm not only the nature and
terms of the offer, but whether an actual offer was made that pre-dates the critical date of
March 5, 2000. On this incomplete factual record, EFI’s motion for summary judgment
fails to satisfy the first prong.
To satisfy the second prong, an invention is “ready for patenting” when evidence
shows that the invention was (a) reduced to practice; or (b) described in a written
description sufficient to permit one of ordinary skill in the art to practice the invention
without undue experimentation. See Pfaff, Inc., 525 U.S. 55, 67-68 (1998). EFI places
emphasis on the latter, arguing that a skilled addressee could practice the invention based
on the Componex sketch dated February 21, 2000. However, EFI fares no better under
the second prong than it does the first.
In briefing, EFI states that the relevant sketch “shows all the limitations of the
claims of the ‘076 Patent, except for a means for fixing the tubes together.” (Def.’s Br. for
40
Summ. J. (dkt.# 42) 24.)
The court finds that the italicized concession creates an
evidentiary gap for EFI (at least in the form of direct evidence), if not a fundamental
defect in EFI’s attempt to rely on this sketch. EFI’s motion as to this ground of invalidity
is denied.
D. Inequitable Conduct
“Inequitable conduct is an equitable defense to patent infringement that, if
proved, bars enforcement of a patent.” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d
1276, 1285 (Fed. Cir. 2011). The Federal Circuit recently “tighten[ed] the standard for
finding [inequitable conduct] in order to redirect a doctrine that has been overused to the
detriment of the public.” Id. at 1290. Indeed, the Federal Circuit noted that “[t]he habit
of charging inequitable conduct . . . has become an absolute plague on [the patent
system].” Id. at 1289.
As a result, an accused infringer now faces a very high bar in proving a defense for
inequitable conduct.
To prevail, the accused infringer must prove by clear and
convincing evidence that the applicant: (1) misrepresented or omitted material
information; and (2) did so with the specific intent to deceive the PTO. Id. at 1287,
1290; see also Star Scientific Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed.
Cir. 2008). If the accused infringer meets its burden, then the court must weigh the
equities to determine whether the applicant's conduct before the PTO warrants rendering
the entire patent unenforceable. Id. at 1287.
i.
Material Misrepresentation
41
EFI alleges that Componex made a misrepresentation to the Patent Office when it
applied for the ‘076 patent.
In particular, EFI’s expert asserts that Componex
misrepresented that the Buysh reference does not anticipate claims 1 or 2 of the ‘076
patent because it does not disclose “weldments”.
EFI further asserts that this
misrepresentation to the Patent Office was material because it led to the grant of the
‘076 patent.
In fact, EFI’s characterization of what was said at the Patent Office is inaccurate.
Below is complete passage of what was actually said to the Patent Office:
The Buysch reference is directed towards a hollow core roller wherein an outer
shell surrounds a roller core, where the shell is connected to the core by screwed
bolts which are fed through threaded bore holes in the outer roller core. The
Buysch reference contains no disclosure of the outer shell being connected to the
inner shell by use of weldments.
(Declaration of Joseph T. Leone (“Leone Decl.”) Ex. 4 (dkt. #46-4) ECF 21.)
In this passage, Componex did not argue that the Buysch reference did not include
any weldments, as EFI’s expert says.
Rather, Componex argued that the Buysch
reference does not describe a roller in which the outer shell is connected to the inner core via
weldments. (Id. (emphasis added).) This is not a misrepresentation. If it were, it has the
possibility to open the floodgates to all sorts of nuanced claims against patentees. As
such, the court is unprepared to find that Componex’s interpretation of the Buysch
reference rises to the level of an inequitable conduct claim under the first prong,
particularly after Therasense.
ii.
Intent to Deceive
As previously discussed, the Federal Circuit also sets a heavy burden to prove
42
knowledge and intent. “Because direct evidence of deceptive intent is rare, a district
court may infer intent from indirect and circumstantial evidence.” Therasence, 649 F.3d
at 1290 (citing Larson Mfg. Co. of S.D., Inc. v. Aluminart Prods. Ltd., 559 F.3d 1317, 1340
(Fed. Cir. 2009)). The court need not make any inferences with regard to this second
prong, since it has found that EFI’s argument is predicated on the flawed assumption that
EFI mischaracterized the Buysh reference. Even if that prong had been met, the court
finds that EFI has wholly failed to come forward with any evidence, circumstantial or
otherwise, that EFI’s purported misrepresentation of the Buysch reference was intended
to deceive the Patent Office.16
ORDER
IT IS ORDERED that:
1. Plaintiff Componex’s construction of the disputed terms, as described in
this opinion, is adopted by the court.
2. Defendant EFI’s motion for summary judgment of invalidity and no
willful infringement (dkt. #41) is GRANTED.
16
Having found that EFI’s obviousness defense was not only reasonable, but meritorious as a
matter of law, Componex obviously cannot “show by clear and convincing evidence that the [EFI]
acted despite an objectively high likelihood that its actions constituted infringement of a valid
patent.” In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). EFI also argued in
briefing that damages (if any) should be reduced because Componex has not adequately complied
with the notice requirements under 35 U.S.C. § 287(a). Although it need not reach this issue, the
court is not convinced that Componex gave actual notice on December 26, 2007. The email
Componex sent to EFI on this date is hardly the kind that would trigger the notice requirements
of the statute. Certainly it cannot be said that it reflects an “affirmative communication of a
specific charge of infringement by a specific accused product or device.” Amsted Indus., Inc. v.
Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994); see also Minks v. Polaris Industries, Inc.,
546 F.3d 1364, 1376 (Fed. Cir. 2008).
43
3. Componex’s motion for summary judgment for infringement (dkt. #36)
is DENIED.
4. Componex’s motion for summary judgment dismissing the inequitable
conduct claim (dkt. #36) is GRANTED.
5. Componex’s Motion to Strike (dkt. #88) is DENIED and reasonable
costs incurred in responding are awarded to EFI.
6. Componex’s Motion to Strike (dkt. #116) is DENIED.
Entered this 21st day of October, 2014.
BY THE COURT:
/s/
________________________
WILLIAM M. CONLEY
District Judge
44
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