The opinion of the court was delivered by: Terrence F. McVerry United States District Court Judge
MEMORANDUM OPINION AND ORDER
Presently pending before the Court for disposition are the following motions:
(1) MOTION FOR PARTIAL SUMMARY OF INFRINGEMENT, with brief in support, filed by Plaintiff, Air Vent, Inc. (Document Nos. 56 and 57), the BRIEF IN OPPOSITION filed by Defendant, Vent Right Corporation (Document No. 73), and the REPLY BRIEF filed by Plaintiff, Air Vent, Inc. (Document No. 81); and (2) MOTION FOR SUMMARY JUDGMENT ON INVALIDITY OF THE PATENTS-IN-SUIT filed by Defendant Vent Right Corporation, with brief in support (Document Nos. 58 and 60), the BRIEF IN OPPOSITION filed by Plaintiff, Air Vent, Inc. (Document No. 70), the SUPPLEMENT - TABLE OF CITATIONS filed by Plaintiff, Air Vent, Inc. (Document No. 77), and the REPLY BRIEF filed by Defendant Vent Right Corporation (Document No. 82).
The issues have been fully briefed and the factual record has also been thoroughly developed via PLAINTIFF'S APPENDIX IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY (Document No. 56), PLAINTIFF'S CONCISE STATEMENT OF MATERIAL FACTS IN SUPPORT OF ITS MOTION FOR PARTIAL SUMMARY JUDGMENT (Document No. 62), THE DECLARATION OF JORGE HERNANDEZ (Sealed Document No. 78), DEFENDANT'S RESPONSIVE CONCISE STATEMENT OF MATERIAL FACTS (Document No. 74), DEFENDANT'S APPENDIX IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT (Document No. 60), DEFENDANT'S CONCISE STATEMENT OF MATERIAL FACT IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT ON INVALIDITY (Document No. 59), and PLAINTIFF'S COUNTER-STATEMENT OF MATERIAL FACTS with appendix (Document Nos. 71 and 76).
After a careful consideration of the motions, the filings in support and opposition thereto, the memoranda of the parties, the relevant case law, and the record as a whole, the Plaintiff's motion for partial summary judgment on infringement will be granted. However, the Court finds that there are genuine issues of material fact which remain surrounding the issue of whether the Patents in suit are invalid. Accordingly, Defendant's motion for summary on invalidity of the patents-in-suit judgment will be denied.
Plaintiff, Air Vent, Inc. ("Air Vent"), is a Delaware corporation with its principal place of business in Dallas, Texas. Air Vent is in the business, inter alia, of manufacturing and selling building construction products, including roof ridge ventilators ("ridge vents"), certain of which are sold under the name and trademark "Shinglevent® II." Air Vent is the owner by assignment of two patents: (i) United States Patent No. 6,149,517 ("the '517 Patent"), entitled "End-Ventilating Adjustable Pitch Arcuate Roof Ventilator," issued November 21, 2000, and (ii) United States Patent No. 6,793,574 ("the '574 Patent"), entitled "Vent with Presecured Mechanical Fasteners," issued September 21, 2004 (collectively "the Patents-in-Suit"). The Shinglevent® II product is covered by and marked with the number of the '517 Patent.
Defendant, Vent Right Corporation ("Vent Right"), is an Ohio corporation with its principal place of business in Wickliffe, Ohio. Vent Right offers for sale and sells a roof ridge ventilation product under the mark "BreaseventTM. " Air Vent alleges that the Breasevent product infringes claims 1-3 of the '517 Patent and claims 1-3, 13, 18, and 20 of the '574 Patent. Vent Right "admits that assuming the '574 Patent is valid, which is specifically denied" the Breasevent product literally infringes claims 1-3, 13, 18, and 20 of the '574 Patent.
The accused Breasevent product is made in China and imported into the United States by Shandex, Industrial, Inc. ("Shandex"), a New Jersey corporation, which is an importer, distributor and seller of building construction products. After the filing of the instant lawsuit, Air Vent filed a patent infringement action against Shandex in the United States District Court for the District of New Jersey (the "New Jersey litigation."). The parties in the New Jersey litigation agreed upon a compromise and settlement of the litigation and a Consent Judgment was entered by the court, which incorporated by reference the settlement agreement between Air Vent and Shandex. The Settlement Agreement provides that "Shandex agrees that the '517 Patent and the '574 Patent (collectively "Plaintiff's Patents) are valid and the claims of the Plaintiff's Patents cover Shandex's accused ridge vent product . . . ."
The '517 patent was issued on November 21, 2000 from U.S. Patent Application
No. 09/447,666. Jeffery E. Hansen is the named inventor. The '517 patent has three (3) claims, one of which is "independent," and the other two (2) claims are "dependent" and depend on independent Claim 1. Air Vent asserts that all three claims are infringed by the Vent Right product. These claims read as follows:
1. A roofing ridge ventilator for venting a roof for air passage between the interior of a roof and the outside ambient through sides of the ventilator and through ends of the ventilator; the ventilator being adapted to be installed longitudinally overlying an open ridge of a roof; the ventilator being sufficiently flexible to be arcuately bent to accommodate a variety of different roof pitches; the ventilator comprising:
(a) an elongate top wall having a predetermined length and width and top and bottom surfaces;
(b) a pair of outer side walls, each one integrally formed along the longitudinal length of and depending from a respective bottom surface of said top wall and at a predetermined angle with respect to said top wall, with each of said side walls including a plurality of apertures extending therethrough for air passage therethrough;
(c) a pair of upturned edge members, each one integrally formed with and extending from a respective distal end of said outer side wall opposite said top wall and extending along the longitudinal length of, and at a predetermined angle with respect to, a said side wall, said upturned edge members extending toward said top wall a predetermined distance to effectively shield at least a portion of said apertures;
(d) a plurality of brace members positioned at predetermined intervals along the length of said bottom surface of said top wall, for engagement with a roof surface;
(e) a pair of transverse end walls, one each integrally formed along opposite ends of the ventilator, with each end wall being discontinuous at a center section thereof and comprised in said center section of a plurality of tabs depending from the bottom surface of the top wall and disposed in a first transverse row, with said tabs in said first transverse row at each end wall being transversely spaced apart from each other to define first gaps for air passage therebetween when the ventilator is installed on a roof;
(f) with tabs in said first row being generally V-shaped, with the apex of the V-shape facing outwardly of the ventilator in the longitudinal direction;
(g) a second transverse row of tabs at each end of the ventilator, depending from and integrally formed with the bottom surface of the top wall and longitudinally spaced apart from the paths in said first row to define second gaps for air passage between said first and second rows of tabs when the ventilator is installed on a roof, with said tabs in said second transverse row being spaced apart from each other to define third gaps for air passage therebetween when the ventilator is installed on a roof;
(h) with tabs in said second row being generally V-shaped, with the apex of the V-shape facing inwardly of the ventilator in the longitudinal direction;
(i) whereby said first, second and third gaps cooperatively comprise means providing circuitous paths for air passage between the interior of a roof and the outside ambient, across ventilator end walls, when the ventilator is installed on a roof; and
(j) whereby said first and third gaps permit arcuate bending of the ventilator without providing end wall resistance to arcuate bending resulting from end wall continuity.
2. The ventilator of claim 1, wherein the apex of each of the tabs in each said second row is longitudinally aligned with a said first gap in said first row.
3. The ventilator of claim 1, wherein a sheet of filter material is carried by the ventilator, underlying said rows of tabs, underlying portions of said brace members and underlying a center section of the ventilator and extending longitudinally of said ventilator.
See '517 Patent. The claims of the '517 patent were construed by the Court in its Claim Construction Order of May 15, 2009. As reflected in that Order, the Court found that Claim 1 of the '517 Patent required no construction. Accordingly, the claim terms of the '517 Patent will be given their ordinary and customary meaning in the art at the time of the invention.
The '574 patent was issued on September 21, 2004 from U.S. Patent Application No. 10/600,397. Larry Dwight Robinson is the named inventor.
The '574 Patent includes twenty-two (22) claims, one of which is "independent." The other twenty-one (21) claims are "dependent" and depend on independent Claim 1. Air Vent alleges that independent claim 1 and dependent claims 2, 3, 13, 18 and 20 are infringed by Vent Right's product. Those claims read as follows:
1. A vent which is attachable, but not attached to a structure comprising a body having openings for passage of air therethrough while resisting undesired entry of foreign matter, said body having a plurality of tubular passageways for receipt of fasteners, said passageways having an entry end and an exit end, and fasteners extending into at least some of said passageways for retention therein prior to attachment of said vent to said structure.
2. The vent of Claim 1 including said fasteners being nails,
3. The vent of Claim 2 including said nails having a length greater than the length of said passsageway into which it extends.
13. The vent of Claim 3 including said vent being a panel for an elongated roof ridge ventilator.
18. The vent of Claim 3 including said nails having a total length substantially greater than the axial ...