Opinion
No. C98-2106 MJM
June 11, 2001
OPINION and ORDER
Currently before the court is a motion by Donaldson Company, Inc. ("Donaldson"), requesting this court reconsider one aspect of its Order of March 27, 2001, or alternatively certify the issue for immediate interlocutory appeal pursuant to 28 U.S.C. § 1292(b). In its Order, the court, in conjunction with the parties' cross-summary judgment motions, construed the disputed terms within U.S. Patent No. 4,445,456 ("the `456 patent"), owned by Engineered Products Company (EPC). (Doc. no. 121). With this motion, Donaldson argues that recent federal circuit case law mandates a different construction of one element — the "reset means" — within the patent.
The claimed invention, an "air filter restriction indicating device," gives a progressive reading from a clean air filter condition to a dirty filter condition and automatically locks into the highest of various indicating positions corresponding to the clogged air flow condition (that is, dirty filter condition) experienced during engine operation so that it may be read after shutdown and may also be monitored during engine operation. In the underlying action, EPC asserts infringement of the `456 patent by Donaldson in relation to Donaldson's manufacture and sale of competing air filter indicators.
1. Reconsideration of claim construction
In its Markman ruling, the court construed the reset means in accordance with established case law as well as a February 2001 federal circuit opinion, Wenger Manufacturing, Inc. v. Coating Machinery Systems, Inc., 239 F.3d 1225. The court concluded that the only disclosed structure essential to the disengaging function was the button labeled #114 in the patent drawings. In essence, the court agreed with EPC's argument that the button receives and transfers forces which overcome a counter-spring to move the locking member away from its engaged position so that a second coiled compression spring can then push the diaphragm back to its infold position. See Order of March 27, 2001, at pp. 92-96. Donaldson argues that this construction improperly interpreted and applied recent federal circuit case law, thereby too broadly construing the reset means.
Donaldson relies predominantly on Globetrotter Software, Inc. v. Elan Computer Group, Inc., 236 F.3d 1363 (Fed. Cir.), published on January 18, 2001, for its argument that construction of the reset means must include not only the button disclosed in the patent drawing but also the locking member, # 96), the enlarged hole (# 50), the flange (# 104), and the bottom of the housing (# 42), and equivalents. The court notes preliminarily that Donaldson first drew this court's attention to Globetrotter Software on February 2, 2001, nearly two months prior to issuance of the court's Markman ruling. The court reviewed the case then and subsequent review confirms that Globetrotter Software is entirely consistent with the court's analysis and conclusion in the case at bar. Globetrotter Software is simply a recent application of the well-established precedent that only those structural components which are essential to performance of the claimed function are to be included within the court's construction of a means-plus-function element. Thus, Globetrotter Software does not change this court's analysis and the critical determination remains which structural components disclosed in the specification and drawings are essential to performing the claimed function, in this case "selectively disengaging" the interengageable notches of the locking member and the tubular member.
Globetrotter Software involved a patent for a license management system for controlling the number of concurrent copies of a program in use on a computer network. 236 F.3d at 1364-65. At issue on appeal was the construction of a "license file means . . . for storing at least one and up to a selectable authorized number of said licenses." Id. at 1365. The appellants challenged the district court's determination that the unique identification ("UID") disclosed in the specification was necessary structure required to perform the claimed function. Id. The federal circuit rejected appellants' argument that the "license file means" only recited the function of storing a license, and that a UID is not necessary to perform that function. See id. at 1367-68. Rather, the court agreed with the district court's analysis that "[b]ecause a UID is assigned to each license file regardless of whether that license file contains any Licenses . . ., the UID assigned to and contained within the license file properly is considered to be a defining characteristic rather than merely a potential content of the license file." Id. at 1368.
After thoroughly reviewing the parties' briefs and case law cited therein, the court stands by its earlier ruling for the reasons discussed therein. The fact that the button affects other discrete structures to achieve the result of disengaging the notches does not make all of those structures with which it interacts essential to performance of the function or a "defining characteristic" of the element. As observed by EPC, given that mechanical devices are composed of a series of components that interact, cooperate and act on one another, Donaldson's theory would leave no logical basis for deciding which structures are truly necessary for performing a particular claimed function and which structures are not. Thus, guided by Wenger and other federal circuit case law, the court maintains its earlier conclusion that in this case the essential disengaging function is performed entirely by the button.
2. Certification for Interlocutory Appeal
Having denied Donaldson's motion to reconsider, the court turns briefly to Donaldson's alternative motion for certification for interlocutory appeal pursuant to 28 U.S.C. § 1292(b). That provision permits district courts to certify an order for interlocutory appeal "in exceptional cases where a decision on appeal may avoid protracted and expensive litigation." White v. Nix, 43 F.3d 374, 376 (8th Cir. 1994) (quoting S.Rep. No. 2434, 85th Cong., 2d Sess. (1958), reprinted in 1958 U.S.C.C.A.N. 5255, 5260); accord In re San Juan Dupont Plaza Hotel Fire Litig., 859 F.2d 1007, 1010 n. 1 (1st Cir. 1988). It states, in relevant part:
When a district judge, in making in a civil action an order not otherwise appealable under this section, shall be of the opinion that such order involves a controlling question of law as to which there is substantial ground for difference of opinion and that an immediate appeal from the order may materially advance the ultimate termination of the litigation, he shall so state in writing in such order. The Court of Appeals which would have jurisdiction of an appeal of such action may thereupon, in its discretion, permit an appeal to be taken from such order, if application is made to it . . .28 U.S.C. § 1292(b).
Three criteria must be met for a district court to certify an order for immediate appeal under § 1292(b). The district court must be "of the opinion that' (1) the order `involves a controlling question of law'; (2) `there is substantial ground for difference of opinion'; and (3) certification will `materially advance the ultimate termination of the litigation.'" White, 43 F.3d at 377 (quoting Paschall v. Kansas City Star Co., 605 F.2d 403, 406 (8th Cir. 1979), cert. denied, 469 U.S. 872 (1984)). A question of law is considered controlling if "resolution of the issue on appeal could materially affect the outcome of litigation in the district court." Arizona v. Ideal Basic Indus. (In re Cement Antitrust Litigation), 673 F.2d 1020, 1026 (9th Cir. 1981), quoted in Baker Getty Fin. Servs., Inc. v. National Union Fire Ins. Co., 954 F.2d 1169, 1172 (6th Cir. 1992); see also Aktiebolag v. Waukesha Cutting Tools, Inc., 640 F. Supp. 1139, 1141 (E.D.Wis. 1986).
Certification for interlocutory appeal is inappropriate in this case because the discrete claim construction ruling at issue does not involve a controlling issue of law and certification will not materially advance the ultimate termination of the litigation. The Order at issue addressed not only claim construction but also cross-motions on infringement and various affirmative defenses. The court denied the parties' cross-motions for summary judgment on infringement, concluding that genuine issues of material fact remained as to whether either party could prove or disprove infringement literally or under the doctrine of equivalents. Donaldson's certification request concerns only one of the many disputed elements within claim 1 of the `456 patent that informed the court's infringement analysis. In conjunction with Its request, however, Donaldson has not conceded the presence of the other elements in its device nor has EPC conceded non-infringement under Donaldson's proposed construction. See, e.g., Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (taking interlocutory appeal following the plaintiff's concession of noninfringement after an adverse claim construction decision by the district court). Thus, any disposition of this issue by an appellate court would not materially affect the outcome of the litigation in this case. Moreover, Donaldson's assertion of affirmative defenses including estoppel, laches and patent invalidity further weigh against certification. The parties' cross-motions for summary judgment on these defenses were denied and they remain viable issues for trial. Accordingly, issues other than claim construction may ultimately control this case.
ORDER
In accordance with the opinion filed herewith, it is ORDERED:
Donaldson's motion for reconsideration or, in the alternative, for certification for interlocutory appeal (Doc. no. 123) is DENIED in full.
Done and so ordered.