Helifix Ltd. v. Blok-Lok, Ltd. (26 F. Supp. 2d 294, 1998)

Opinion

KEETON, District Judge.

I.

Pending for decision is Defendants’ Renewed Motion for Summary Judgment (Docket No. 49, filed September 25, 1998) together with Memorandum in Support (Docket No. 51, filed September 25, 1998). Plaintiff filed a Memorandum in Opposition (Docket No. 59, filed October 9, 1998). Defendants filed a Reply Memorandum (Docket No. 60, filed October 21,1998). Plaintiff filed a Sur-Rebuttal to Defendants’ Reply to Plaintiffs Response to Defendants’ Renewed Motion for Summary Judgment (Docket No. 63, filed October 28,1998).

II.Procedural Background

This ease involves Plaintiffs claim against Defendants for patent infringement (Count I of the Verified Complaint, Docket No. 1, filed June 4, 1998) and Defendants’ counterclaim for declaratory judgment that Plaintiffs patent is invalid (Count I of the Amended Counterclaims, Docket No. 19, filed July 9, 1998). The court held a hearing on September 15, 1998, the first part of which was a Markman hearing, in which the parties presented evidence and argument as to the scope of the patent. In the second part of the hearing, the parties also proffered evidence and made argument regarding the possible invalidity of the patent at issue due to the anticipation bar or the on-sale bar of 35 U.S.C. § 102(b) or the inventor’s alleged fraud upon the Patent and Trademark Office (“PTO”). The Defendants renewed their motion for summary judgment as to the patent infringement claim and the declaratory judgment counterclaim on these grounds.

III.The Factual Background Relevant to Defendants’ Motion for Summary Judgment

Beginning in 1992, Defendants, Blok-Lok, Ltd. and its president, William Scott Burns (collectively “Blok-Lok”), began serving as distributor of the products of Plaintiff (“Heli-fix”), designed for reinforcing the exterior walls of buildings with helical ties in order to prevent the bricks or masonry from becoming detached from the building frame and falling off. In March, 1997, Helifix terminated the arrangement and the parties are currently competitors.

The products relevant to this case involve the tools and equipment necessary to practice one method of tying multiple layers (“wythes”) of a building’s wall together. Helifix filed for a patent on this method, along with certain of the tools and equipment necessary to practice it, in February, 1994, in the patent application 08/204,465 (the “ ’465 Application”). After several steps of prosecution, the PTO eventually granted to Helifix United States Patent No. 5,687,801 (the “ ’801 Patent”), which covers the method at issue, requiring Helifix to patent the other inventions, particularly the tie-insertion tool, separately.

More than one year before Helifix filed the ’465 Application, in January, 1993, Helifix and Blok-Lok attended the World of Concrete Trade Show, at which they distributed and displayed a brochure (the “ ’93 Brochure”) that describes a method of reinforcing multi-wythed buildings by means of a “tie,” using no chemical resin (Def. Ex. 519, the “DryFix” method)(Sweeney Dep. p. 103-4; Paterson Dep. p. 61).

Helifix filed this action against Blok-Lok on June 4, 1998, alleging, among other claims, that Blok-Lok was infringing Heli-fix’s ’801 patent by selling products designed to be used in a way that would infringe Helifix’s patented method and instructing Blok-Lok’s customers in Helifix’s method, intending that those customers would use and thus infringe Helifix’s patented method.

IY. Issues Presented by the Pending Motion

A. Fairness of the Procedures

Helifix complains that the hearing on September 15, 1998 was unfair, that Helifix expected a trial, instead was “sandbagged” into a Markman hearing, and then was further “sandbagged” by the cross examination of Robert Paterson that exceeded the scope of the direct examination. (Plaintiffs Sur-Re-buttal pp. 2, 14). Further, Helifix accuses Blok-Lok of having engaged in an “ex parte gambit, frolic and detour and improper hearing on its ex parte examination directed to the renewed motions for a summary judgment.” (Plaintiffs Sur-Rebuttal p. 14).

Helifix has either forgotten or misunderstood the course of events at the September hearing. The court learned on the day before the trial that jurors would not be available; that was not Blok-Lok’s fault and the court could do nothing to remedy the situation. Because the scope of the patent was a critical issue and time had been set aside on the court’s calendar to hear the case on September 15, and the parties were present and prepared, the court determined that a Markman hearing would be a valuable use of the time and informed the parties on September 14 that it intended to proceed in this fashion. Helifix, if it was not prepared to address the Markman issue, has only itself to blame.

At the end of the Markman hearing, the court was inclined to grant Blok-Lok’s motion for summary judgment which it had earlier denied through an interlocutory order. Because the earlier denial was interlocutory, it was within the court’s prerogative to reverse its ruling. Blok-Lok did not bamboozle the court through any “ex parte” impropriety into reconsidering the motion for summary judgment. Rather, proceedings were of record (not “ex parte”), and it had become clear to the court that the on-sale bar and the anticipation bar (discussed below) were potential bars to the validity of Helifix’s ’801 patent. The court gave Helifix the opportunity to address these issues, and Helifix’s attorney said he was pleased (“splendid,” Hearing Transcript p. 116). The court also allowed the filing of post-hearing submissions. The court rejects the contention that the procedures did not adequately give Helifix the opportunity to present its opposition to Blok-Lok’s motion for summary judgment.

B. Claim Construction

1. The Prescribed Approach

In Markman, the Supreme Court established that the determination of the scope of a patent is “exclusively within the province of the court.” Markman v. Westview Instru ments, Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).

In discharging this responsibility, a court looks first to the words of the claim itself. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). Generally, the words of the claim are given their “ordinary and customary” meaning, but a patentee may define them in a different way. If some assertion is made that the words have a meaning other than their plain meaning, the court may look to the patent specification or prosecution history to see whether the patentee has in one of those places stated a clear definition. See id. Thus, “a technical term used in a patent document is interpreted as having the meaning that it would be given by persons experienced in the field of the invention, unless it is apparent from the patent and the prosecution history that the inventor used the term with a different meaning.” Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578 (Fed.Cir.1996).

Although a court may look to the specifications to resolve an ambiguous term or to find that the patentee has defined some term in a manner other than the ordinary meaning, see Vitronics, 90 F.3d at 1582, it is not appropriate to give effect to a patentee’s attempt to impose upon the claim, through the specification, some limit that is not included in the claim itself. See Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed.Cir.1994)(“elaims are not to be interpreted by adding limitations appearing only in the specification”); In re Van Germs, 988 F.2d 1181, 1184 (Fed.Cir.1993)(“limitations are not to be read into the claims from the specification”).

2. The Elements of Claim One

The recitation immediately below breaks Claim One into its various parts for convenience of analysis. Numbers that do not appear in the original text of the patent claim are added to facilitate references:

What is claimed is:

A method of securing (1) two or more wythes in a building structure (;2) utilizing a helical tie member (3) having longitudi-

nal helical flutes if) terminating at a cutting end at one end and terminating at a remote end opposite the cutting end comprising the steps of:

(5) drilling a first wythe to a diameter less than than (sic) a diameter of the flutes on the tie to be inserted.

(6) drilling a pilot hole in a second wythe to a predetermined depth.

(7) inserting the remote end of the tie into a tool which (8) impactingly drives the tie and (9) rotatably permits the same to rotate as a helical bed is developed in the first wythe due to penetration by the tie.

(10) passing the flutes into the second wythe and continuing to impactingly drive the tie to a base of the pilot hole.

(11) removing the driving tool from the remote end of the tie.

and thereafter (12) refinishing the remote end of the tie in accordance with mandates of the site.

3. The Meaning of “Tool”

The central dispute in this case is whether the scope of the ’801 patent includes, from the patent specification, a limitation based upon the tie-insertion tool. For the sake of perspective, I note that this matter will be important when we consider whether the ’93 Brochure “anticipated” the ’801 patented method (i.e. whether the ’93 Brochure would have enabled a person of ordinary skill in the art to figure out and practice Helifix’s patented method). Helifix’s assertion is that the ’93 Brochure cannot have enabled a person to have practiced the method because the brochure did not tell the reader how to build the tool that would allow him or her to have practiced the method. Blok-Lok argues that the patent is not limited by the tool. That is, because the ’801 patent does not have to be practiced by any particular type of tool, the failure of the ’93 Brochure to teach how to build the Helifix insertion tool does not preclude that brochure from anticipating the patent.

The ’801 patent specification explains and portrays the tool that Helifix had created to practice the patented method. The specification states, “It is necessary to appreciate that the power source is a hammer drilling machine fitted with an SDS chuck.” (Plaint. Ex. 1, col. 5, lines 4