The opinion of the court was delivered by: Judge Conner
This is a consolidated patent infringement suit. Bridgeport Fittings, Incorporated ("Bridgeport") requests a judgment declaring that fifteen of its products do not infringe claim 8 of United States Patent Number 5,266,050 (the "'050 patent"), held by Arlington Industries, Incorporated ("Arlington"). Arlington counterclaims and endeavors to hold Bridgeport liable for literally infringing the '050 patent. Presently before the court are the parties' cross-motions for summary judgment of patent infringement. (Docs. 382, 385.) Additionally, Bridgeport moves for summary judgment (1) absolving it of breaching the terms of a settlement agreement entered into by the parties in March 2004, (2) of non-willful infringement, and (3) to limit the damages period for its potential patent infringement liability. (Docs. 386, 387.) For the reasons that follow, Arlington's motion (Doc. 382) will be denied, and Bridgeport's motions (Docs. 385, 386, 387) will be denied with one exception.
I. Statement of Facts*fn1
Arlington and Bridgeport manufacture and design metallic and non-metallic electrical conduit fittings. (See Doc. 305, Ex. F at 118); http://www.aifittings.com/history.htm (last visited January 29, 2009). Electrical conduit fittings are used to connect electrical wiring and cable. (See Doc. 305, Ex. F at 118.) In 1992, Arlington developed and manufactured a new type of fitting, intended to replace previous units whose installation required the use of two hands to screw the device into an electrical junction box.*fn2 (See Doc. 384, Ex. A.) This new connector featured a circular spring metal adaptor, to which at least two outwardly sprung members were attached at the trailing end. (See id. at col. 10.) When the adaptor was inserted into the knock-out hole of an electrical junction box, its outwardly sprung members locked the adaptor into place. (See id.) Thus, Arlington's connector allowed a user to quickly connect the device to a junction box using one hand instead of two, thereby reducing the time and effort required during installation. (See id. at col. 1.)
On December 15, 1992, Arlington was awarded United States Patent Number 5,171,164 (the "'164 patent"), which covered the design of the above-described device. (Doc. 404 ¶ 2; Doc. 432 ¶ 2.) Arlington acquired the '050 patent the following year. (Doc. 383 ¶ 1.) The '050 patent is a "continuation patent," meaning that it shares a common specification with the '164 patent, but includes different claims. (Doc. 404 ¶ 2; Doc. 432 ¶ 2.) The '050 patent encompasses eight claims, only one of which is the focus of the instant litigation. The claim at issue-claim 8-reads as follows:
A quick connect fitting for an electrical junction box comprising: a hollow electrical connector through which an electrical conductor may be inserted having a leading end thereof for insertion in a hole in an electrical junction box; a circular spring metal adaptor surrounding said leading end of said electrical connector which has a leading end, a trailing end, and an intermediate body; at least two outwardly sprung members carried by said metal adaptor near said trailing end of said adaptor which engage the side walls of the hole in the junction box into which said adaptor is inserted; at least two spring locking members carried by said metal adaptor that spring inward to a retracted position to permit said adaptor and locking members to be inserted in a hole in an electrical junction box and spring outward to lock said electrical connector from being withdrawn through the hole; and an arrangement on said connector for limiting the distance said connector can be inserted into the hole in the junction box.
(Doc. 384, Ex. A col. 10.)
In 1999, Bridgeport introduced its own product line of quick-connect fittings called the "Snap-In Fitting." (See Doc. 170 at 7-10.) The "Snap-In Fittings" were designed with characteristics nearly identical to those featured in Arlington's patented products. (See Doc. 310 ¶ 2.5.) Arlington filed suit in March 2001, alleging that the "Snap-In Fittings" infringed both the '164 and the '050 patents. (See Doc. 1; Doc. 404 ¶ 1; Doc. 432 ¶ 3.) The parties litigated the dispute for over three years before entering into a settlement agreement (the "Settlement Agreement") resolving the matter on March 28, 2004.*fn3 (Doc. 404 ¶ 5; Doc. 432 ¶ 4.) The Settlement Agreement required Bridgeport to discontinue permanently its manufacture and sale of the "Snap-In Fittings," as well as "any colorable imitation" thereof.*fn4 (See Doc. 310; Doc. 404 ¶ 5; see also Doc. 383 ¶ 3; Doc. 432 ¶ 4; Doc. 439 ¶ 3.)
In September 2005, Bridgeport designed a new quick-connect electrical fitting, which it called the "Whipper-Snap."*fn5 (Doc. 404 ¶ 14; Doc. 432 ¶ 14.) The Whipper-Snap is similar to the '050 patent, in that it features a circular spring metal adaptor that is affixed atop a hollow connector body. (See Doc. 383 ¶ 9(a); Doc. 438 at 1; Doc. 439 ¶ 9(a)). Attached to the leading end of the adaptor are a total of four tensioning tangs and two anchoring tabs. (See Doc. 383 ¶ 11(d)-(e); Doc. 394, Ex. A ¶ 34; Doc. 404 ¶¶ 43-44.) The tensioning tangs' purpose is twofold: (1) to lock the adaptor securely in position when the fitting is inserted into a knock-out hole, and (2) to thereafter "maintain good electrical continuity, or ground, between the electrical connector, the junction box and the electrical source leading to the box." (See Doc. 384, Ex. K ¶¶ 17, 20; Doc. 394, Ex. A ¶¶ 36, 44; Doc. 401 at 16-18; Doc. 425, Ex. M at 85-88; Doc. 439 ¶ 11(d)). The purpose of the anchoring tabs is to fasten the spring metal adaptor durably to the hollow connector body. (See Doc. 394, Ex. A ¶ 38.)
Bridgeport introduced a total of fifteen separate electrical fittings utilizing the "Whipper-Snap" design.*fn6 (Doc. 404 ¶ 15; Doc. 432 ¶ 14.) Arlington contends that each of these fifteen products (collectively, the "accused products") literally infringe claim 8 of the '050 patent.*fn7 (See, e.g., Doc. 396 at 1.) Bridgeport rejects this notion and asserts that its products are covered by the claims of United States Patent Number 6,916,988 (the "'988 patent), which it owns.*fn8 After years of litigation, the scope of the parties' dispute has narrowed significantly. In fact, with one exception, the parties agree that the accused products meet each of the limitations identified in claim 8 of the '050 patent. (See Doc. 438 at 1; Doc. 453 at 1.)
The crux of this dispute concerns claim 8's limitation requiring that the quick connect fitting feature "at least two outwardly sprung members" attached to its spring metal adaptor. (See Doc. 384, Ex. A at col. 10.) On February 25, 2008, the court issued a Markman ruling construing "outwardly sprung members" to mean "members bent outward at an angle relative to the normal plane of the adaptor."*fn9
(Doc. 376 at 18.) The central question presented by the motions sub judice is whether the accused products' tensioning tangs constitute members "bent outward at an angle relative to the normal plane of the adaptor."
Bridgeport contends that the accused products' tensioning tangs are coconical with, and lie in the normal plane of, the adaptor. (Doc. 404 ¶¶ 44-47; Doc. 439 ¶ 11(e)). The trailing end of the adaptor possesses a diameter greater than that of the adaptor's leading end. (Doc. 383 ¶ 13(a); Doc. 404 ¶ 29; Doc. 432 ¶ 29; 439 ¶ 13(a)). Thus, the adaptor's diameter increases along its axial length from the leading to the trailing end, yielding what Bridgeport characterizes as the adaptor's "frustro-conical shape." (See Doc. 404 ¶¶ 44-47.) The leading end's smaller diameter allows a user to slide the adaptor into a knock-out hole with ease. (See Doc. 432 ¶ 44; Doc. 433, Ex. C ¶ 5.) As the connector is inserted further into the hole, the trailing end's larger diameter presses against the junction box walls, forcing the tensioning tangs to compress and spring inward. (See Doc. 432 ¶ 29; Doc. 439 ¶ 11(d)). Bridgeport claims that the fully inserted tangs maintain this inward flex, furnishing the tension that locks the adaptor into place against the walls of the junction box. (See Doc. 439 ¶ 11(d)).
Arlington agrees that the trailing end of the accused products' adaptor is larger than its leading end, (see Doc. 383 ¶ 13(a); Doc. 432 ¶ 29), but disputes the notion that the tensioning tangs lie in the normal plane of the adaptor, (see, e.g., Doc. 432 ¶¶ 43-46). Arlington underscores the importance of two raised sections-referred to by the parties as the "raised S areas"-that run along opposite sides of the connector's outbound end.*fn10 (See Doc. 383 ¶ 11(f)). When the accused products' spring metal adaptor is affixed to the outbound end of the connector, each of the four tensioning tangs rest atop the raised S areas. (Doc. 383 ¶ 11(f); Doc. 383, Ex. D at 87.) This positioning allegedly pushes the tangs permanently away from the adaptor plane. (See id. ¶ 11(f); Doc. 432 ¶ 45.) According to Arlington, the raised S areas bend the tangs "outward at an angle relative to the normal plane of the adaptor." (See Doc. 383 ¶ 11(d)-(f); Doc. 432 ¶ 45(d)-(f)).
On November 18, 2005, Bridgeport's counsel was contacted by counsel for Arlington, who expressed concerns about the design of the accused products. (Doc. 303 ¶ 1; Doc. 404 ¶ 16; Doc. 432 ¶ 16.) A meeting was arranged for December 6, 2005, at which time Arlington suggested that the accused products infringed claim 8 of the '050 patent. (Doc. 404 ¶ 17; Doc. 432 ¶ 17.) Furthermore, Arlington's counsel accused Bridgeport of manufacturing a "colorable imitation" of its Snap-In Fitting, and of thereby violating the terms of the Settlement Agreement. (See Doc. 404 ¶ 18; Doc. 432 ¶ 18.) Thirteen days later, Bridgeport filed a complaint for declaratory judgment, initiating the instant matter. (Civil Action No. 3:05-CV-2622, Doc. 1.)
Bridgeport's complaint seeks a judgment declaring that the accused products do not infringe the '050 patent, either literally or under the doctrine of equivalents.*fn11
(See id. ¶¶ 20-21.) On February 2, 2006, Arlington filed counterclaims to Bridgeport's complaint for declaratory judgment, alleging: (1) the accused products infringe the '050 patent, and (2) Bridgeport's manufacture, use, and sale of the accused products constitutes a breach of the Settlement Agreement.*fn12 *fn13 (See Civil Action No. 3:05-CV-2622, Doc. 18 ¶¶ 7-11, 18-23.) After extensive discovery, the court held a Markman hearing and construed the disputed claims of the '050 patent. (Doc. 376.)
On May 1, 2008, the parties filed cross-motions for summary judgment. (Docs. 382, 385, 386, 387.) Arlington requests a judgment pronouncing that the accused Bridgeport products literally infringe claim 8 of the '050 patent. (See Doc. 382.) Bridgeport seeks summary judgment that (1) the accused products do not infringe claim 8 literally or under the doctrine of equivalents; (2) the manufacture and sale of the accused products does not constitute a breach of the Settlement Agreement; and (3) Bridgeport is not liable for willful infringement of claim 8, nor any infringement damages prior to December 6, 2005. (See Docs. 385, 386, 387.) The cross-motions have been fully briefed and are ripe for disposition.
Through summary adjudication the court may dispose of those claims that do not present a "genuine issue as to any material fact" and for which a jury trial would be an empty and unnecessary formality. See FED. R. CIV. P. 56(c). The burden of proof is upon the non-moving party to come forth with "affirmative evidence, beyond the allegations of the pleadings," in support of its right to relief. Pappas v. City of Lebanon, 331 F. Supp. 2d 311, 315 (M.D. Pa. 2004); FED. R. CIV. P. 56(e); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). This evidence must be adequate, as a matter of law, to sustain a judgment in favor of the non-moving party on the claims. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250- 57 (1986); Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587-89 (1986); see also FED. R. CIV. P. 56(c), (e). Only if this threshold is met may the cause of action proceed. Pappas, 331 F. Supp. 2d at 315.
In the instant matter, the parties have filed cross-motions for summary judgment of infringement. According to the Third Circuit:
Cross-motions are no more than a claim by each side that it alone is entitled to summary judgment, and the making of such inherently contradictory claims does not constitute an agreement that if one is rejected the other is necessarily justified or that the losing party waives judicial consideration and determination whether genuine issues of material fact exist.
Lawrence v. City of Phila., 527 F.3d 299, 310 (3d Cir. 2008) (quoting Rains v. Cascade Indus., Inc., 402 F.2d 241, 245 (3d Cir. 1968)). Each movant must show that no genuine issue of material fact exists; if both parties fail to carry their respective burdens, the court must deny the motions. See Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1023 (3d Cir. 2008).
A party who "without authority makes, uses, offers to sell, or sells any patented invention" may be held liable to the patent owner for patent infringement. 35 U.S.C. § 271(a); see also 35 U.S.C. § 281 ("A patentee shall have remedy by civil action for infringement of a patent."). "Victory in an infringement suit requires a finding that the patent claim covers the alleged infringer's product or process, which in turn necessitates a determination of what the words in the claim mean." Markman v. Westview Instruments, Inc., 517 U.S. 370, 374 (1996) (quoting H. SCHWARTZ, PATENT LAW AND PRACTICE 1, 80 (2d ed. 1995)). Thus, determining whether an accused device infringes a patented invention requires a two-step analysis. Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., 308 F.3d 1167, 1176-77 (Fed. Cir. 2002). First, the court must ascertain the proper construction of the patent's claims; this is a question of law. Markman, 517 U.S. at 384; Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed. Cir. 1998). In the second step, the trier of fact must compare the allegedly infringing device with the properly construed patent claim. Research Plastics, Inc. v. Fed. Packaging Corp., 421 F.3d 1290, 1295 (Fed. Cir. 2005); ...