Opinion
Case Nos. 1:97-CV-138; 1:97-CV-139
Date January 5, 2000
ORDER and JUDGMENT
In accordance with the opinion entered this date,
IT IS HEREBY ORDERED that Defendants Jolliffe, Micro, Artco, and Black Magic's Motion for Summary Judgment (Docket #50) is GRANTED.
IT IS FURTHER ORDERED that JUDGMENT is entered in FAVOR of the DEFENDANTS and the case is DISMISSED in its entirety.
OPINION
In this patent infringement suit, Plaintiff Lencco Racing Co., Inc. (Lencco) contends that the Defendants, James Jolliffe ("Jolliffe"), Micro Belmont Engineering (Micro), Artco, Inc. (Artco), and Black Magic Motorsports, Inc. (Black Magic), infringed Lencco's United States patent No. 5,538,120 (the '120 patent) for cam follower plates for snowmobiles.
The '120 patent discloses a follower plate for use in the clutch mechanism of a continuous variable transmission. Snowmobiles often employ such transmissions. The follower plate is mounted opposite a drive plate. The drive plate includes a cam on the edge of which are mounted three teeth that project in a direction parallel to the plate's axis of rotation. The teeth are equally spaced around the edge of the cam. Each tooth has one edge that is vertical and one edge that is inclined. The torque of the cam rotates the teeth so that the inclined edges lead. The '120 patent discloses two prior art follower plates as well as the preferred embodiment of the claimed follower plate. Each of the follower plates has three apertures that are positioned opposite the teeth of the drive plate to allow the teeth to project through the follower plate. When the cam rotates, the inclined edges of the teeth are pushed against the rims of the apertures. Because of the inclined angle of the leading edges of the teeth, a designated portion of the torque becomes a force pushing the follower plate away from the drive plate. The prior art plates identified in the '120 patent use plastic buttons or rollers on the follower plate at the ends of the three apertures to interact with the inclined edges of the teeth. According to the specification, the buttons on the prior art plates would wear out and had to be replaced frequently. The specification also asserts that some prior art devices used rollers in place of buttons. Using those devices, however, required expensive modification in the overall design of the clutch assembly, because the rollers were mounted above the surface of the follower plate on lugs extending from the follower plate surface toward the drive plate. The preferred embodiment described in the '120 patent employs rollers to interact with the inclined edges of the teeth, but the rollers are mounted within the apertures in the surface of the follower plate so that only the upper half of each roller extends above the surface of the plate. The preferred embodiment also includes grooves in which the rollers, axles are placed so that the rollers, axes of rotation are in the plane of the follower plate surface that faces the driving plate. Pins with widened heads are driven into the surface next to the axles to cover the axles and hold them in their grooves.
The facts are taken from the Court of Appeals for the Federal Circuit decision. Lencco Racing Co., Inc. v. Jolliffe, ___ F.3d ___ (Table), 1999 WL 506857 (Fed. Cir. June 29, 1999).
After Lencco filed suit charging the Defendants with infringement, the Defendants moved for summary judgment alleging that the asserted claims of the '120 patent are invalid. The Defendants' motion was based, in part, on the Berger plate, a follower plate that had previously been used in a snowmobile clutch. The Berger plate uses rollers to interact with the inclined edges of the teeth on a driving plate. The axles on which the rollers are mounted in the Berger plate are located above the plate surface and are secured by lugs or pillow blocks that extend from the surface. The Defendants, invalidity argument with respect to claims 6 and 10-12 was also predicated on the Tillotson carburetor, a prior art snowmobile carburetor in which axles are mounted in grooves and secured with pin heads.
Following a hearing, the Court granted the Defendants' motion for summary judgment, holding that the asserted claims of the '120 patent, claims 1-4 and 6-12, are invalid under 35 U.S.C. § 102-103. The Court based its § 102 determination on the Berger plate and its § 103 determination on the Berger plate in combination with the Tillotson carburetor. Lencco thereafter appealed to the Federal Circuit. The Federal Circuit affirmed-in-part, vacated-in-part and remanded the case. The Federal Circuit left undisturbed this Court's decision that the 1, 3, 4, 7, and 8 claims were anticipated by prior art and invalid pursuant to § 102. However, the Federal Circuit concluded that this Court had not construed the claim limitation contained in claims 2 and 9-12 of "approximately coplanar" with respect to the prior art of the Berger plate nor had determined whether a person of ordinary skill in the art would have found an approximately coplanar placement of the axes and the confronting surfaces to be obvious in view of the placement of these respective components of the Berger plate. The Federal Circuit therefore reversed the order of summary judgment of invalidity as to claims 2 and 9-12 and remanded. This Court thereafter requested that the parties submit supplemental briefs on the following issues: (1) how the claim limitation in claims 2 and 9-12 that the roller axes lie in a plane "approximately coplanar" with the confronting surface of the plate should be construed; (2) whether this limitation encompasses the Berger plate; and (3) whether a person of ordinary skill in the art in the context of the other claim limitations would have found an approximately coplanar placement of the axes and the confronting surface to be obvious pursuant to 35 U.S.C. § 103. The Court, having reviewed the parties supplemental briefs, is now prepared to address the Defendants' motion for summary judgment as to claims 2 and 9-12 in light of the Federal Circuit's opinion.
In patent cases, as in other cases, summary judgment may be granted "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." F.R.CIV.P. 56(c).
In evaluating a motion for summary judgment, the Court must look beyond the pleadings and assess the proof to determine whether there is a genuine need for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). If Defendant carries its burden of showing there is insufficient evidence to support a claim, then Plaintiff must show that a genuine issue of material fact exists. Celotex Corp. v. Catrett, 477 U.S. 317, 324-25 (1986). Inferences to be drawn from the underlying facts must be viewed in the light most favorable to the party opposing the motion. Matsushita Elec. Indus. Co., 475 U.S. at 587. Plaintiff must do more than simply show that there is some metaphysical doubt as to the material facts. Id. at 586. A mere scintilla of evidence is not sufficient to create a genuine issue of material fact. Anderson v. Liberty Lobby Inc., 477 U.S. 242, 252 (1986). The proper inquiry is whether the evidence is such that a reasonable jury could return a verdict for Plaintiff. Street v. J.C. Bradford Co., 886 F.2d 1472, 1478 (6th Cir. 1989).
The Defendants, argue that Plaintiff's patent is invalid because claims 2 and 9-12, were obvious in light of prior art pursuant to 35 U.S.C. § 103. In addition, Artco alleges that Plaintiffs' patent is invalid pursuant to § 112 because the term "approximately coplanar" in claims 2 and 9-12 is so vague and indefinite that it fails to apprise whether an invention infringes these claims.
Section 103(a) provides in relevant part: "A patent may not be obtained though the invention is not identically disclosed or described as set forth in § 102 . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
"The statutory requirement of [§ 112 of] particularity and distinctness in claims is met only when they clearly distinguish what is claimed from what went before in the [prior] art. . . ." United Carbon Co. v. Binney Smith Co., 317 U.S. 228, 236 (1942). "The standard of definiteness is one of reasonableness under the circumstances. . . . [T]he Supreme Court has . . . consistently maintained that the primary purpose of claim language is to give fair notice of what will constitute infringement. United Carbon Co. v. Binney Smith Co., 317 U.S. 228 (1942)." Antonious v. ProGroup, Inc., 699 F.2d 337, 340 (6th Cir. 1983) (citations omitted).
A patent is presumed valid, 35 U.S.C. § 5 282, and the burden of establishing invalidity rests with the party asserting such invalidity. The burden is one of "clear and convincing" evidence. Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 872 (Fed. Cir. 1985); American Hoist Derrick Co. v. Sowa Sons, Inc., 725 F.2d 1350, 1358-60 (Fed. Cir. 1984), cert. denied, 469 U.S. 821 (1984).
This Court examined and compared the Berger clutch plate, the prior art disclosed in the patent application, and the '120 patent design. This Court previously had concluded that claims 1, 3, 4, 7 and 8 were invalid because the mounting arrangement and the use of rollers were anticipated by prior art. The use of rollers rather than pucks as cam followers was well established. The concomitant design of a cam follower plate with rollers as a replacement part for the original equipment was obvious in light of the prior art.
As noted by the Federal Circuit, claims 2 and 9-12 all contain a limitation requiring that the surface of the follower plate facing the drive plate be "approximately coplanar" with the plane formed by the rotation axes of the three rollers. The term is undefined. It is undisputed that the Berger plate's axis of rotation of the rollers is positioned .124 of an inch off of the follower plate surface that would face the confronting surface. The Plaintiff avers that the term should be construed as meaning coplanar within the limits of machine tolerances. See Potter Dep. at 215. The Defendants contend that the claim limitation is indefinite such that one could not determine what falls within and what avoids the claim limitation. They concede, however, that "[t]o the extent that one of ordinary skill would interpret this claim, it would be interpreted as being limited to the roller axes of rotation being in the same plane as the face of the driven member plate within a relatively small tolerance corresponding to the machine tolerances of a few thousandths or tens thousandsth of an inch." The Court agrees. The Defendants do not contest that this definition of the term "approximately coplanar," which the Court adopts, does not encompass a difference of this amount exhibited in the Berger plate.
Defendants Micro and Black Magic's Supplemental Mem. on Claim Interpretation and Invalidity under § 103 at 2 (Dkt #98).
Id. at 3.
This however does not conclude the analysis. The Plaintiff argues that the determination of whether a person of ordinary skill would have found coplanarity obvious is a matter for the trier of fact. The Court is unpersuaded.
Even though a single prior art reference may not include all of the elements of a patent claim, a patent may still be invalid as obvious under § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the claimed subject matter pertains. Kwik-Site Corp. v. Clear View Mfg. Co., Inc., 758 F.2d 167, 173 (6th Cir. 1985). The ultimate issue of obviousness is one of law determined by underlying facts. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988). Obviousness is a question of law based upon factual determination of: (1) scope and content of the prior art; (2) the differences between the prior art and the claimed invention; (3) a level of ordinary skill in the pertinent art; and (4) other secondary considerations which may serve as indicia of nonobviousness. Litton Industrial Products, Inc. v. Solid State Systems Corp., 755 F.2d 158, 163 (Fed. Cir. 1985).
The Defendants argue that in the context of the other claim limitations approximately coplanar placement of the axes and the confronting is obvious. The Defendants offer as support unrebutted affidavits from two previously disclosed experts, Herman Christopherson and Olav Aaen, to that effect. According to these experts, given pin and groove mounting arrangements had been used in prior art, as had the roller axles of the Berger plate, it would have been obvious to the person of ordinary skill in the art to mount the roller axis to be approximately coplanar with the clutch plate surface to maintain a line of contact to the cam plate teeth at approximately the same relative height at the prior art's plastic button type followers. Aaen Affidavit ¶¶ 10, 15-16; Christopherson Affidavit ¶¶ 6-7, 10-11.
The Court concludes that locating the axes of the roller in a plane "approximately coplanar" with the plate surface is an obvious matter of design choice to one of ordinary skill in the art and thus claims 2 and 9-12 are invalid pursuant to § 103.
An order and judgment consistent with this opinion shall be entered.