The opinion of the court was delivered by: A. Richard Caputo United States District Judge
Presently before the Court are three (3) of Defendant Bridgeport Fittings, Inc.'s ("Bridgeport") motions for summary judgment. (Docs. 110, 112, 113.) On January 14, 2008, Defendant Bridgeport filed four (4) motions for summary judgment, three (3) of which concern the '831 Patent. In these motions, Defendant requested summary judgment as to non-infringement of the '831 Patent and the '050 Patent (Doc. 110), summary judgment as to non-willfulness as to the '831 Patent and the '050 Patent (Doc. 112), and summary judgment regarding damages as to the '831 Patent and the '050 Patent. (Doc. 113.) On June 27, 2008, the Court ordered a stay of proceedings on the '831 Patent pending a final determination by the U.S. Patent and Trademark Office ("PTO") regarding its inter partes reexamination of the '831 Patent. (Doc. 257.) On September 18, 2008, the Court entered a Memorandum and Order granting Bridgeport's motions for summary judgment (Docs. 110, 112, 113) as they pertained to the '050 Patent. (Doc. 307.) As per the stay ordered on June 27, 2008, the Court considered only those arguments pertaining to the '050 Patent and did not consider or discuss the '831 Patent in its September 18, 2008 Memorandum and Order. (Id.) Subsequently, on September 29, 2008, Bridgeport filed a Motion to Lift Stay, requesting that the Court either enter summary judgment on the '831 Patent or direct entry of a final judgment pursuant to Federal Rule of Civil Procedure 54(b). (Doc. 309.) On February 12, 2009, the Court entered a Memorandum and Order vacating its June 27, 2008 Order and lifting the stay on the '831 Patent. (Doc. 325.) The parties provided various briefs in support, opposition, and reply at the time Bridgeport initially filed the current motions, and they readdressed many of the relevant issues in their briefs supporting and opposing Bridgeport's motion to lift the stay. Accordingly, the Court finds that these motions have been completely briefed and are currently ripe for disposition.
Because Plaintiff cannot prove infringement either literally or through the Doctrine of Equivalents, Defendant's motion for summary judgment on non-infringement of the '831 Patent will be granted. As the summary judgment motion for non-infringement will be granted, Defendant's motion for summary judgment on the grounds of non-willfulness and damages as to the '831 Patent will also be granted.
The Court has jurisdiction over this matter pursuant to 28 U.S.C. § 1331 ("federal question").
Briefly, Plaintiff Arlington and Defendant Bridgeport are competitors in the field of electrical connectors. (Def.'s Statement of Material Facts in Support of Mot. For Summ. J. ¶ 49, Doc. 114; Pl.'s Res. To Pl.'s Statement of Material Facts ¶ 49, Doc. 154.) This litigation involves the patents of two (2) of these electrical connectors. The second of these patents, and the patent currently at issue in the summary judgment motions, is U.S. Patent No. 6,521,831 ("the '831 Patent"), which was issued to Mr. Thomas A. Gretz on February 18, 2003. (Doc. 114 ¶ 2; Doc. 154 ¶ 2.) The '831 Patent is entitled "Duplex Electrical Connector with Spring Steel Cable Retainer." (Second Am. Compl. Ex. A, Doc. 102.) The '831 Patent is for an invention which relates to cable terminations and more particularly to duplex or two-wire cable terminations that snap into place and include snap-on cable retainers, neither of which requires twisting for locking. (Id.) Plaintiff Arlington alleges that Defendant Bridgeport has infringed Claim 1 of the '831 Patent. (Doc. 114 ¶ 3; Doc. 154 ¶ 3.) Claim 1 provides:
A duplex electrical connector comprising: a housing having a cylindrical outbound end, a generally oval inbound end, and an interior channel linking said inbound and said outbound end; a pair of parallel opening in said inbound end; a tubular spring steel cable retainer secured in each of said openings in said inbound end for accepting separate cables, said retainers including a set of inwardly extending tangs to receive and engage said separate cables inserted from said inbound end and guide said separate cables toward said cylindrical outbound end in a manner that said separate cables are advanced to said outbound end, said inwardly extending tangs restricting removal of said separate cables by force applied on said separate cables from said inbound end; and a tubular spring steel adapter secured to said cylindrical outbound end of said housing, said adapter having outwardly extending tangs. (Second Am. Compl. Ex. A, Doc. 102.) There are numerous features involved in the patent, but one of the main features at issue are the use of a style of connector known as a "duplex connector". (Doc. 114 ¶ 4; Doc. 154 ¶ 4.)
On December 4, 2007, the Court issued its claim construction ruling, construing certain terms at issue in the '050 Patent and the '831 Patent. (Doc. 114 ¶ 5; Doc. 154 ¶ 5; Mem. & Order, Dec. 4, 2007, Doc. 98.) One of the terms at issue in Claim 8 of the '050 Patent was a "spring metal adaptor." (Doc. 114 ¶ 6; Doc. 154 ¶ 6.) The Court construed this term to mean "a split ring or split spring metal adaptor so as to allow the diameter to easily change." (Doc. 114 ¶ 7; Doc. 98 at 32.) The Court also concluded that the limitation of "spring steel adaptor" in Claim 1 of the '831 Patent is subject to the same analysis as the "spring metal adaptor" in the '050 Patent. (Doc. 114 ¶ 11; Doc. 98 at 30.)
Defendant Bridgeport states that its products are not split, as per the expert report of J. Brian P. Williamson.(Doc. 119 Ex. 2 ¶ 32.) Bridgeport further states that the adaptors formed of a continuous piece of metal with no gap that would permit the diameter of the adaptor to easily change. (Doc. 114 ¶ 8.) Bridgeport also states that its products do not have an opening in their circumference that passes through them from side to side. (Id.) Plaintiff Arlington disputes Bridgeport's characterization of its products and Bridgeport's characterization of the Court's construction of the patent. (Doc. 154 ¶ 8.) Plaintiff Arlington states that Bridgeport's adaptors are split. (Id.) Plaintiff states that the adaptors are split in eight (8) places. (Id.) Specifically, Plaintiff references th testimony of Mr. Kenneth Kiely, Bridgeport's Engineering Manager, for the proposition that the products are indeed split in order to permit the diameter to easily change. (Id.)
Defendant Bridgeport further states that Plaintiff Arlington's expert, Dr. Christopher D. Rahn admitted that Bridgeport's products do not have a split, and "at the very front of the accused product, if you take a cross-section there, there will be a ring that has no gaps in it." (Doc. 114 ¶ 9; Doc. 119 Ex. 3 at 210; Doc. 119 Ex. 4 at 92.) Defendant further states that Dr. Rahn conceded that if the "spring metal adaptor" required a split, Bridgeport's products would not infringe. (Doc. 114 ¶ 9.) Plaintiff Arlington disputes this characterization of Dr. Rahn's testimony. (Doc. 154 ¶ 9.) Specifically, Arlington points to Dr. Rahn's expert report, which states that the "adaptor is split along the entire length of the adaptor that surrounds the leading end of the connector . . . Upon insertion the ring contracts at the split." (Doc. 154 ¶ 9; Doc. 119 Ex. 4 at 18-19.) Thus, the parties disagree over whether the construction requires a complete split in the ring. Defendant Bridgeport also states that because they have a non-split adaptor ring, its products do not achieve springiness by opening and closing an opening in their circumference. (Doc. 114 ¶ 10.) Plaintiff also disputes this statement, and notes that Mr. Auray, Bridgeport's Rule 30(b)(6) witness, as well as Arlington's expert witness, Dr. Rahn, testified that there was springiness in the adaptor ring. (Doc. 154 ¶ 110.)
In its December 4, 2007 Memorandum and Order, the Court also construed the language regarding the "spring steel adaptor." (Doc. 114 ¶ 11; Doc 98 at 34.) The Court construed the disputed language to mean that "[t]he adaptor is spring steel which is a split ring which in turn permits the diameter of the adaptor to be easily changed." (Doc. 98 at 34.)
In distinguishing the connectors, Bridgeport cites the prosecution history of the parent to the '050 Patent, the '164 Patent. (Doc. 114 ¶ 22.) Specifically, Bridgeport states that Arlington narrowed the term "spring metal adaptor" to require a split ring to distinguish it from prior art. (Id.) Bridgeport cites to the prosecution of Arlington's parent '164 Patent, and claims that the PTO examiner rejected the claims in light of U.S. Patent No. 1,725,883 ("the Recker Patent"). (Doc. 114 ¶ 23.) Bridgeport states that Arlington distinguished the '050 Patent from the Recker Patent on the basis that the Recker Patent required a "complete undivided circle so that there can be no springing apart of the periphery of the tube." (Id.) Arlington, however, argues that these statements mischaracterize the prosecution history, and that each Claim of each patent has its own prosecution history. (Doc. 154 ¶ 22.) Arlington states that Claim 2 of the '050 Patent, dealing with the split, was not amended over the Recker Patent. (Id.)
Mr. Gretz asserts that Arlington manufactures and distributes three commercial embodiments of the invention recited in Claim 1 of the '831 Patent. (Doc. 114 ¶ 42; Doc. 154 ¶ 42.) Gretz further states that these Duplex Products contain every limitation found in Claim 1 of the '831 Patent. (Doc. 114 ¶ 43; Doc. 154 ¶ 43.) Arlington's expert also detailed how these products practice the '831 Patent and meet each of its limitations (Doc. 114 ¶ 44; Doc. 154 ¶ 44) and conclude that Claim 1 of the '831 Patent covers both connectors both with and without inserts (Doc. 114 ¶ 45; Doc. 154 ¶ 45).
Arlington and Bridgeport were previously involved in litigation regarding the '164 Patent and the '050 Patent, in which Arlington alleged that Bridgeport connectors infringed Arlington's patents. (Doc. 114 ¶ 50; Doc. 154 ¶ 50.) This litigation settled prior to March 2004. (Doc. 114 ¶ 50; Doc. 154 ¶ 50.) On or about March 2004, Bridgeport began developing a frustro-conical adaptor for its die cast connectors. (Doc. 114 ¶ 51; Doc. 154 ¶ 51.) On September 13, 2004, Bridgeport filed a patent application based upon the development of this adaptor. (Doc. 114 ¶ 53; Doc. 154 ¶ 53.) On July 12, 2005, the PTO issued U.S. Patent No. 6,916,988 titled "Electrical Connector With Frustro Conical Snap Fit Retaining Ring" ("the '988 Patent") based upon this adaptor. (Doc. 114 ¶ 54; Doc. 154 ¶ 54.) On June 6, 2006 and December 19, 2006, the PTO issued U.S. Patent Nos. 7,057,107 ("the '107 Patent") and 7,151,223 ("the '223 Patent"), which cites the '050 Patent as a reference.
(Doc. 114 ¶ 55; Doc. 154 ¶ 55.)
Arlington did not mark its products with either the '050 Patent number or the '831 Patent number. (Doc. 114 ¶ 56; Doc. 154 ¶ 56.) On December 6, 2005, Arlington notified Bridgeport that the Bridgeport connectors infringed the '050 Patent. (Doc. 114 ¶ 58; Doc. 154 ¶ 58.)
Arlington brought this action on May 31, 2006, alleging that certain of Bridgeport's electrical connectors infringe two (2) of Arlington's patents: Claim 1 of U.S. Patent No. 6,521,831 ("the '831 Patent"), and Claim 8 of U.S. Patent No. 5,266,050 ("the '050 Patent"). On April 13, 2007, the PTO granted a request for inter ...