Opinion
Case No. 1:00-CV-322.
August 8, 2001
OPINION
This matter is presently before the Court on Defendant/Counter-Plaintiff Transportation Seating, Inc.'s Motion for Partial Summary Judgment on Plaintiff/Counter-Defendant American Seating Company's allegation of infringement of U.S. Patent No. 5,888,038 by Defendant. The Court will grant Defendant/Counter-Plaintiff's Motion.
I. Background
Plaintiff/Counter-Defendant American Seating Company ("American") designs, manufacturers, and sells seats and seat components used in the mass transit industry. Defendant/Counter-Plaintiff Transportation Seating, Inc. ("TSI") is also engaged in the business of designing, manufacturing, and selling seats and seat components used in the mass transit industry.
Third-Party Plaintiff Richard Craft ("Craft") is president of TSI. On May 8, 2000, American filed suit alleging that TSI breached a "Settlement Agreement and License" ("Agreement"), and TSI is infringing on American's patent, U.S. Patent No. 5,888,038 ("Patent '038"), for a wheelchair restraint system.
On July 3, 2001, TSI and Craft filed a Third Amended Answer, Counterclaims and Third Party Claims, and Counterclaims and added Craft as a Third-Party Plaintiff. Count I of TSI and Craft's Counterclaims is for Declaratory Judgment pursuant to 28 U.S.C. § 2201. TSI and Craft's Counterclaims/Third-Party Claims also contain the following counts: Count II is for monopolization or attempted monopolization; Count III is for infringement of U.S. Patent No. 6,113,325 ("Patent '325"); Count IV is for breach of good faith and fair dealing; Count V is for fraud; and Count VI is for breach of contract with fraudulent intentions. TSI obtained Patent '325 on September 5, 2000. Patent '325 is entitled "Wheelchair Restraint System for a Transportation Vehicle," and like American's Patent '038, is a wheelchair restraint system. Patent '325's system contains an anchor member with an attachment belt, the anchor member extending from its stored position in a bulkhead/box/enclosure, to its deployed/operational position. TSI markets a device based on Patent '325 called the "Model 5800" system.
The patent in dispute for purposes of this Motion, Patent '038, was issued on March 30, 1999. The invention covered by this patent, entitled "Tie-Down for Wheelchairs," is a wheelchair restraint system for use in vehicles. The system described in the claims can accommodate up to two wheelchairs. The system utilizes a fixed member attached to the vehicle, and up to two moveable securing elements which are locked to the vehicle when in their operational positions, but can be stored in an unobtrusive location on the vehicle when not in use. The moveable securing element has a housing which contains a tension producing device that attaches to the wheelchair and can apply tension to the wheelchair in order to hold the wheelchair steady during transit of the vehicle. The housing on the moveable element also provides storage for the tension producing device so that the device does not create an impediment to other vehicle users and need not be removed after each use.
II. Claim Construction of Patent '038
The portion of claim 1 of Patent '038 in dispute reads as follows:
1. In combination,
(a) a vehicle having an area for receiving a wheelchair, and
(b) means for securing a wheelchair in said area to said vehicle wherein said means for securing is permanently attached to said vehicle and comprises:
(i) means for engaging a portion of said wheelchair under tension, said means for engaging being locked to said vehicle at a predetermined location, and
(ii) a moveable securing element having mounted thereon a housing and a flexible strap, said flexible strap having one end adjustably received in said housing and an opposite end adapted to engage a portion of said wheelchair in said area under tension, said movable securing element being movable with respect to said vehicle between an operating position wherein said housing is locked to said vehicle at a further location for cooperation with said means for engaging to secure said wheelchair and a storage position wherein said housing is remote from said further location.
The patent also included a specification that contained a description of the preferred embodiment of the locking mechanism used to lock the moveable element to the vehicle in the operational position. The summary of the invention states while the means of locking the moveable element to the vehicle may be any of several designs, there is a preferred embodiment. The preferred embodiment is described as a vertically-moveable locking pin with a corresponding floor plate that allows the moveable element to be locked to the vehicle at the operational position.
During American's prosecution of Patent '038, the U.S. Patent Office rejected American's application due to prior art. On June 30, 1998, the Patent Office examiner for Patent '038 issued an Office Action Summary rejecting then claim 8 (now claim 1) pursuant to 35 U.S.C. § 102(b) due to anticipation by U.S. Patent No. 5,431,524 ("Antal"). On October 30, 1998, in a response to the rejection pursuant to 37 C.F.R. § 1.115, American argued that Antal did not teach a moveable securing element that locked to the vehicle at an operating position. The patent examiner amended his prior rejection on December 3, 1998, accepting claim 8 (now claim 1).
In a previous ruling regarding the claim construction of Patent '038 pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), this Court held that Patent '038 does contain a locking limitation, but that this limitation does not prescribe the type of mechanism used to lock the moveable securing element to the vehicle, nor where that mechanism is located. The Court held that Patent '038 requires the moveable securing element must be locked to the vehicle.
III. Summary Judgment
Although normally a factual inquiry, summary judgment regarding an infringement claim maybe appropriate in patent cases. General Electric Company v. Nintendo Company, Ltd., 179 F.3d 1350, 1353 (Fed. Cir. 1999); Barmag Barmer Maschineenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 835 (Fed. Cir. 1984). Federal Rule of Civil Procedure Rule 56(c) provides that summary judgment is appropriate "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 a judgment as a matter of law." Fed.R.Civ.P. 56(c). A genuine issue of material fact does not exist "where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). The movant has the initial burden of showing that no genuine issue of material fact exists. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
If the movant meets the initial burden, the non-movant "must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). These specific facts must constitute "sufficient evidence favoring the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986). "The mere scintilla of evidence in support of the [nonmovant's] position will be insufficient . . . ." Anderson, 477 U.S. at 252. The evidence, and all reasonable inferences drawn from it, are viewed in the light most favorable to the party opposing the motion. Matsushita, 475 U.S. at 587; see also Wright Medical Technology, Inc. v. Osteonics Corp., 122 F.3d 1440, 1443 (Fed. Cir. 1997).
IV. Infringement
TSI argues that its Model 5800 system, as described in Patent `325, does not infringe, either literally or under the doctrine of equivalents, on American's '038 because Model 5800's anchor member is not "locked" to the vehicle in the operational position; an essential aspect of American's Patent '038. TSI places much emphasis on its interpretation of Patent '038 as requiring a "lock" with interlocking parts that lock the moveable element to the floor of the vehicle. TSI cites to Festo Corporation v. Shoketsu Kinzoko Kogyo Kabushiki, 234 F.3d 588 (Fed. Cir. 2000) for the proposition that the doctrine of equivalents is inapplicable in this case.
American counters that first, it is not Patent `325 that is at issue, but whether Model 5800 as marketed and sold infringes on Patent '038, and second, that the anchor element of Model 5800 is "locked" to the vehicle, thereby infringing on Patent '038. As interpreted and argued by American, Patent '038 does not require that the moveable securing element be locked to the floor of the bus, but simply locked to the vehicle in some fashion. American does not argue for application of the doctrine of equivalents, and therefore the Court will only consider whether Model 5800 literally infringes on Patent '038.
In its own Motion for Summary Judgment, American only alleges literal infringement.
To prove infringement, a patentee must demonstrate that the accused device contains each and every limitation of the claim or an equivalent of each limitation. Dolly, Inc. v. Spalding Evenflo Companies, Inc., 16 F.3d 394, 397 (Fed. Cir. 1994). "A patent infringement analysis involves two steps: claim construction and application of the properly construed claim to the accused device." KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351,1355 (Fed. Cir. 2000). In the first step the Court construes the asserted claim to determine its meaning and scope. Desper Products, Inc. v. Qsounds Labs, Inc., 157 F.3d 1325, 1332 (Fed. Cir. 1998). Claim construction is a matter of law for the court to determine. KCJ Corp, 223 F.3d at 1355.
The second step requires the Court to compare the accused product to the properly construed claim. Desper Products, Inc., 157 F.3d at 1332. "Whether a product . . . infringes the properly construed claims of a patent, literally or under the doctrine of equivalents, is a question of fact." Id. An infringement claim can be decided on summary judgment, however, when "the composition of the allegedly infringing . . . product is undisputed." Id. "In such a case, literal infringement collapses into claim construction-a matter of law-amenable to summary judgment." Id. at 1332-33.
As described in a previous section of this Opinion, the Court construed the Patent '038 to contain a "locked" limitation that requires the moveable securing element described in Patent '038 be "locked" to the vehicle in the operational position. The "locked" limitation does not require a specific type of locking mechanism, nor require a specific location for the locking mechanism on the moveable securing element. The parties do not dispute the components of Model 5800, but do dispute whether the components of Model 5800 comprise a mechanism that locks the moveable slide arm to the vehicle at the operational position.
A. Model 5800
TSI's Model 5800 is a wheelchair restraint system for vehicles. Model 5800 is based on Patent `325. Model 5800 is comprised of the following relevant pieces: (1) a box or enclosure; (2) a bracket and housing with a strap attached directly to the box/enclosure (3) a moveable slide arm or moveable securing element with bracket; (4) a guide element inside the box/enclosure; (5) a housing containing a retractable strap; (6) a door for the box. The box/enclosure is bolted to the floor of the vehicle. The door is opened in the operational position and lies flat on the floor surface of the vehicle; the door is not locked to the vehicle, nor locked to the moveable slide arm, but hinged to the box/enclosure. On the inside surface of the door are three bars. Two bars run parallel to one another and form a channel for the moveable slide arm. The third bar is at the top of the door, runs perpendicular to the moveable slide arm and the other two bars, and acts as a stop for the moveable slide arm in the extended, operational position. There is a space between each of the parallel bars and the end bar. This space allows the bracket on the moveable slide arm, to which a housing and strap are attached, to rotate towards the floor when the angle between the strap and the door is less than 20 degrees.
Plaintiff asserts the 20 degree figure in its Motion, and Defendant has not countered in its Response.
In order for Model 5800 to function, the door of the box must be in the open position. The moveable slide arm is then extended outward from the box. A portion of the moveable slide arm remains in the guide element contained in the box. The extended portion of the moveable slide arm moves in the channel created by the two parallel bars on the inside surface of the door. The third bar stops the outward travel of the moveable slide arm. The straps from the housing attached to the box and the moveable slide arm are then attached to the wheelchair. The tension produced by the strap from the housing on the moveable slide arm then causes the slide arm to cantilever against the guide in the box when the strap is tightened, and the resulting friction holds the moveable slide arm in place. Without a wheelchair, the moveable slide arm is not held in place because there is no tension present between the strap and the wheelchair that causes the moveable slide arm to cantilever against the guide element causing friction. If the wheelchair is wider than the width of box and moveable slide arm in its extended position, the stop-bar on the door prevents further travel of the arm. The only portion of Model 5800 in a fixed, immoveable position in relationship to the vehicle is the box/enclosure; it is bolted to the vehicle.
B. Not "Locked" to Said Vehicle
The issue of whether Model 5800 infringes on Patent '038 is distillable down to the question of whether the moveable slide arm of Model 5800 is "locked" to the vehicle when in the operational position. The Court finds that it is not.
American makes several arguments for the proposition that Model 5800 has a moveable securing element that is locked to a vehicle in the operational position, thus infringing Patent '038, and that at a minimum there is a genuine issue of material fact of whether Model 5800 contains mechanisms that lock Model 5800's moveable slide arm to the vehicle. First, as American correctly points out, claim 1 of Patent '038 does not require the moveable securing element be locked to the floor of the vehicle. Yet, the correctness of this observation does not defeat TSI's Motion.
American next argues that there is a genuine issue of material fact as to whether the Model 5800 moveable slide arm is "locked" to the vehicle. American makes this argument based on six things. First, American contends that the Declaration of Keith A. McDowell, Registered Structural Engineer and American's Vice President for Engineering, shows that Model 5800's components interact to "lock" the moveable slide arm in the operational position. Interestingly, the Declaration never uses the word "locked" to describe the condition of the slide arm in its operational position. The Declaration does state that the moveable slide arm, the guide, the door, and the three tubes do interact to restrict the movement of the moveable slide arm. The Declaration does not state, however, and the Court does not read the Declaration as describing the moveable slide arm as being "locked" to the vehicle in the operational position.
In its own Motion for Summary Judgment, Plaintiff includes a Second Declaration by Keith A. McDowell, reiterating almost the same things, but in which he does use the term locked.
Second and third, American maintains that the Model 5800's moveable slide arm is locked to the vehicle in the operational position by virtue of the fact that the box/enclosure is bolted to the floor of the vehicle, the door is attached to the box/enclosure, and the door, with guide bars, restricts the movement of moveable slide arm in relationship to the vehicle. What American is proposing is that because the box/enclosure is bolted to the vehicle and the moveable slide arm is restricted to certain movements due to the box/enclosure, that Model 5800's moveable slide arm is therefore "locked" to the vehicle in the operational position.
This argument defies the common understanding of the term "locked," and does not accurately describe the interaction between the box/enclosure, the moveable slide arm, and the vehicle. Simply because the box/enclosure is bolted to the vehicle, and the door and slide arm are attached to the box/enclosure in some fashion, does not mean that the slide arm is locked to the vehicle in the operational position. Regardless of the position of the slide arm, either extended in the operational position or not, the position of the box/enclosure remains the same because it is bolted to the vehicle.
The language of Patent '038 requires that the moveable element and housing be "locked to said vehicle at a further location," implying that the moveable element can also be in an unlocked state for movement to the storage position. According to American's analysis of the state of the box/enclosure, Model 5800's slide arm is never capable of being in an unlocked state because the box/enclosure is always bolted to the vehicle floor, i.e. the slide arm is always and continuously "locked" to the vehicle. This is obviously an inaccurate description of how the box/enclosure and the slide arm interact, and it shows the fallacy of American's argument because if it were true, then Model 5800 could not infringe Patent '038 because the slide arm would never be capable of being locked and unlocked in the operational position with respect to the vehicle. The slide arm would always be in a "locked" state, regardless of its position and the presence or absence of a wheelchair, as would every other piece of moveable equipment on the vehicle; i. e. the steering wheel, the tires, the gas pedal, and the windshield wipers. In reality, it is the moveable slide arm and the guide element of Model 5800 that are "locked" together by friction, not the moveable slide arm and the vehicle.
Fourth, American argues that because the bracket on the Model 5800's moveable slide arm can fit into the space between the parallel bar and the stop bar when the angle between the bracket and the door is less than twenty degrees, the moveable slide arm is "locked" to the vehicle. Yet, in its argument about this interaction between the bracket and the bars, American fails to indicate that the slide bar is rendered immobile because the space occupied by the bracket is not enclosed. The bracket is still capable of moving up and down, and it is only the tension between the strap and the wheelchair that keeps the bracket in this space. As such, the slide arm is not "locked" to the vehicle. In addition, American acknowledges that this interaction between the bracket and bars at angles less than 20 degrees does not typically occur. The typical angle for use of the Model 5800 is forty-five to sixty degrees, angles which do not cause the bracket to locate in the space between the guide bars and stop bar. Patent '038requires the moveable securing element be "locked" to the vehicle every time it is in the operational position. Because this is not the case with Model 5800's moveable slide arm with angles in excess of 20 degrees, and even when an angle of less than 20 degrees does occur, the slide arm is not rendered immobile by the interaction between the bracket and the guide bars, Model 5800's slide arm is not "locked" to the vehicle in the operational position as required by Patent '038.
Fifth, American argues that the interaction between the slide arm and the guide in the box/enclosure which produces enough friction to hold the slide arm in place when extended is a lock for purposes of Patent '038. While the Court recognizes that the presence of friction between two objects can cause them to be "locked" together, the Court declines to hold that Model 5800's moveable slide arm is "locked" to the vehicle in the fashion required by claim 1(b)(ii) in Patent '038.
"lock . . . to make fast or rigid by the engaging of parts or the action of a restraint esp. friction . . . ." Webster's Third International Dictionary (Unabridged) 1328 (3d. ed. 1986).
The language of claim 1(b)(ii) requires that there be a moveable securing element, the moveable securing element have a housing attached to it, and the housing contain a strap capable of being attached to a wheelchair. In addition, claim 1(b)(ii) requires that the moveable securing element be "locked" to the vehicle in the operation position. Most important, though, is that the language of claim 1(b)(ii) mandates that the moveable securing element being "locked" to the vehicle without the presence of a wheelchair: "said movable securing element being movable with respect to said vehicle between an operating position wherein said housing is locked to said vehicle at a further location for cooperation with said means for engaging to secure said wheelchair . . . ." Were this not the case, Patent '038 could not have overcome Antal, because Antal's hook element would also be considered "locked" to the vehicle in the operational position by the hooks' attachment to a wheelchair.
In Model 5800 it is not the presence of the guide and moveable slide bar alone that causes the necessary friction to hold the moveable slide arm in place, but the addition of the wheelchair and the tension of the strap attached to the wheelchair and the bracket on the slide arm that produces the requisite friction that holds the moveable slide bar in place. Thus, unlike the requirement in claim 1(b)(ii) of Patent '038 that the moveable securing element be "locked" to the vehicle without the presence of the wheelchair in order to later secure the wheelchair in the vehicle, Model 5800 requires the presence of a wheelchair before the moveable slide arm is held to the guide element in place by friction between these two components. Therefore, because the moveable slide arm in Model 5800 cannot be held in place without the presence of a wheelchair, the moveable slide arm is not locked to the vehicle in order subsequently to secure the wheelchair, and Model 5800 does not literally infringe on Patent '038.
Finally, American argues that because Craft, the inventor, took the position before the patent examiner for Patent `325 that Patent `325 contained a lock, TSI cannot now argue that Model 5800, based on Patent '325, has no such device. Yet, American cites to no law in support of this apparent reverse prosecution history estoppel style argument. In addition, as Defendant rightly points out, these attempts to get a "lock" device into Patent '325 were for the purposes of setting up an "interference," and ultimately, the examiner rejected these attempts and interpreted Patent '325 to have nothing that locked the moveable slide arm to the vehicle in an operating position. Since the examiner found nothing locked the moveable slide arm to the vehicle, Craft did not amend his claim to include such a requirement, and American's reverse prosecution history estoppel argument fails.
II. Conclusion
As described by the Court, Model 5800 does not literally infringe on Patent '038 because the moveable slide arm of Model 5800 is not "locked" to the vehicle at a further location in order to later secure a wheelchair as required by Patent '038. There is no issue of material fact, so summary judgment on this issue is proper, and an order will issue granting TSI's Motion.
ORDER
In accordance with the Opinion issued this date,
IT IS HEREBY ORDERED that TSI's Motion for Partial Summary Judgment (Dkt. No. 33) pursuant to Federal
Rule of Civil Procedure 56(c) is GRANTED.
IT IS FURTHER ORDERED that American's Motion for Partial Summary Judgment (Dkt. No. 69) is DENIED as moot.