Opinion
98 C 2361
August 6, 2003
OPINION
Jacob Krippelz, Sr. sued the Ford Motor Company for infringing claim 2 of United States Patent No. 5,017,903 ("the `903 patent"). The `903 patent's subject matter is a lighting device that includes a housing, typically a side view mirror housing, mounted on a vehicle. Ford sells vehicles having similar lighting devices, which Krippelz claims infringe his patent. In response to my May 13, 2003 order denying Ford's motion for reconsideration of my February 23, 2003 order denying Krippelz's motion for summary judgment and granting Krippelz's motion to strike certain of Ford's affirmative defenses, see Krippelz v. Ford Motor Company, No. 98 C 2361, order of May 13, 2003, Ford has moved to reconsider my ruling regarding the construction of the claim term "a conical beam of light" and to clarify the "translation of the Korean reference" excluded by the order.
Regarding the reconsideration request, Ford argues that my differentiation between "beam" and "non-beam" light is unworkable and unsupported by intrinsic evidence and that the claim term "beam of light" should mean "all light from the source of light that passes through the housing opening." As to the charge that the distinction between "beam" and "non-beam" light is unsupported by intrinsic evidence, I disagree. As discussed in the May 13, 2003 order, the distinction between "beam" and "non-beam" light is well supported by the express language of the claim and by intrinsic evidence. The claim clearly requires the presence of a "beam of light" and does not preclude the presence of light other than a beam of light, e.g., non-beam light. As to the charge that this construction is unworkable, I again disagree. Determining the existence of a beam, its shape, and other characteristics is a matter of examining the device and making appropriate measurements and calculations.
Regarding the clarification request, one issue in this case is whether Krippelz's invention is invalid in view of a two-part Korean language patent application filed by Kim more than a year before Krippelz filed his patent application. The first part is the Original Application, the second is the Amended Application. Ford gave Krippelz its English language translation of both the Original and Amended Applications. When Krippelz filed his request for reexamination in the Patent Office, he included his own translation of the Amended Application but did not supply any translation of the Original Application. Because Krippelz failed to give the Patent Office a translation (or even a copy in Korean) of the Original Application, Ford asserted an affirmative defense of inequitable conduct. In the May 13, 2003 order, I excluded the "translation of the Korean reference" as a basis for Ford's inequitable conduct charge on the ground that an applicant has no "duty to call to the attention of the Patent Office good faith differences of opinion between the applicant and the other as to the technical or legal correctness of interpretations of matters bearing upon the application." Dow Chem. Co. v. Halliburton Co., 631 F. Supp. 666, 706 (N.D.Miss. 1985), aff'd, 790 F.2d 93 (Fed. Cir. 1986) (emphasis added).
Ford now seeks clarification that the "translation" excluded is not its translation of the Original Kim Application but only the translation of the amended Kim application. Ford argues that because Krippelz did not give the Patent Office any translation of the Original Application, its translation of the Original Application does not constitute a good faith difference of opinion under Dow Chem. Co. and need not be excluded. Among other arguments, Krippelz argues in response it did not believe that Ford's translation of the Original Application was any more relevant or materially different than its translation of the Amended Application, and because Krippelz had submitted a translation of the Amended Application, he thus had no obligation to submit any additional litigation-created material, such as Ford's translation of the Original Application. Unfortunately for Krippelz, his conclusion that Ford's translation of the Original Application was not more relevant than and not materially different from its translation of the Amended Application does not constitute a good faith difference of opinion as to the technical or legal correctness of the interpretation of the Application. Rather, his conclusion constitutes a substantive determination that the two applications do not differ much from each other, but such a conclusion does not mandate exclusion of Ford's translation of the Original Application pursuant to Dow Chem. Co. Accordingly, I am excluding Ford's inequitable conduct defense insofar as it is based on Ford's translation of the Amended Application, but I am not excluding Ford's inequitable conduct defense insofar as it is based on Ford's translation of the Original Application.
For the reasons above, Ford's Motion for Reconsideration of the Court's May 13, 2003 Order Regarding Construction of the Claim Term "A Conical Beam of Light" is DENIED but its Motion for Clarification of the Court's May 13, 2003 Order Striking Reliance on the Translation of the Korean Reference as a Basis for Inequitable Conduct is GRANTED.