United States District Court, E.D. Pennsylvania
patent infringement case is currently on remand from the
United States Court of Appeals for the Federal Circuit.
Plaintiff, Southco, Inc. (“Southco”), has alleged
that Defendant, Fivetech Technology, Inc.
(“Fivetech”) infringed U.S. Patent No.
6'468'012 (“the ‘012 Patent”),
which pertains to “captive screws.” Presently
before me is (1) Fivetech's motion for summary judgment
of invalidity; (2) Southco's motion for partial summary
judgment of infringement; (3) Fivetech's cross motion for
summary judgment of noninfringement; and (4) Southco's
motion to strike Fivetech's untimely cross motion for
summary judgment. For the reasons that follow: I will deny
Fivetech's motion for summary judgment of invalidity; I
will deny Southco's motion for partial summary judgment
of infringement; and, I will grant Southco's motion to
strike Fivetech's untimely cross motion for summary
FACTUAL & PROCEDURAL
captive screw is a particular type of fastener for attaching
two parts, ” typically two panels of sheet metal.
Southco, Inc. v. Fivetech Tech. Inc., 611
F.App'x 681, 682 (Fed. Cir. 2015). The captive screws at
issue in this case “contain, among other things, a
hollow piece, called a ferrule, a screw within the ferrule,
and a knob secured to the head of the screw. The ferrule is
configured to attach to the first part and is configured so
that the screw does not fall out of the captive screw
assembly while the captive screw is used to join the two
parts.” Id. at 682; see also Southco, Inc.
v. Fivetech Tech. Inc., 2012 WL 246253, at *1 (E.D. Pa.
Jan. 25, 2012), aff'd, 611 F.App'x 681 (Fed.
Cir. 2015) (“A captive screw, or captive fastener, is a
device which holds a screw in place while the screw is used
to connect two panels. A cylindrical ferrule holds the screw
[i.e., ‘threaded shaft'] and a knob can be placed
over the screw head.”).
brought this lawsuit alleging that Fivetech infringed
multiple patents and trademarks that Southco had registered
with the U.S. Patent and Trademark Office
(“PTO”). Fivetech filed several counterclaims in
response. After a period of discovery, Fivetech sought
summary judgment of noninfringement with respect to the three
patents and two trademarks it was accused of infringing.
Honorable Mary A. McLaughlin (ret.) granted Fivetech's
motions for summary judgment of noninfringement with respect
to U.S. Patent Nos. 5, 851, 095 (‘095 Patent); 6, 280,
131 (‘131 Patent); and, the patent currently at issue
before me, 6, 468, 012 (‘012 Patent). Judge McLaughlin
further granted Fivetech's motion for summary judgment on
U.S. Trademark Nos. 2, 478, 685 and 3, 678, 153. See
Southco, Inc. v. Fivetech Tech. Inc., 2012 WL 246253
(E.D. Pa. Jan. 25, 2012) (granting Fivetech's motion for
partial summary judgment of the ‘095 and ‘131
Patents); Southco, Inc. v. Fivetech Tech. Inc., 2012
WL 987495 (E.D. Pa. Mar. 23, 2012) (granting Fivetech's
motion for partial summary judgment on claims 16 and 17 of
the ‘095 Patent); Southco, Inc. v. Fivetech Tech.
Inc., 2013 WL 5298576 (E.D. Pa. Sept. 20, 2013)
(granting Fivetech's motion for summary judgment of
noninfringement of all claims of the ‘012 Patent);
Southco, Inc. v. Fivetech Tech. Inc., 982 F.Supp.2d
507, 509 (E.D. Pa. 2013) (granting Fivetech's motion for
partial summary judgment of noninfringement of U.S.
Trademarks 2, 478, 685 and 3, 678, 153). The ‘012 and
‘131 Patents are continuations of the ‘095
Fivetech prevailed on the issue of noninfringement with
respect to all of the patents and trademarks involved in the
case, it voluntarily withdrew its counterclaims for certain
state law torts (without prejudice). Judge McLaughlin then
certified her rulings as final judgments pursuant to Federal
Rule of Civil Procedure 54(b), and Southco appealed those
judgments to the United States Court of Appeals for the
April 10, 2015, the Federal Circuit affirmed-in-part,
reversed-in-part, vacated-in-part, and remanded the case for
further proceedings. Southco, Inc. v. Fivetech Tech.
Inc., 611 F. App'x 681 (Fed. Cir. 2015). The Federal
Circuit affirmed Judge McLaughlin's grant of summary
judgment of noninfringement with respect to U.S. Patent Nos.
5, 851, 095 and 6, 280, 131, as well as both of the asserted
with respect to the ‘012 Patent, the Federal Circuit
concluded that the district court “improperly granted
summary judgment of noninfringement … because Southco
presented evidence raising a genuine question of material
fact as to noninfringement, [and] improperly construed the
terms ‘rigidly secure' and ‘material from
said knob flows into said chamfer[.]'” Id.
at 693. Thus, the Federal Circuit vacated the grant of
summary judgment as to claims 1-6 and 8- 12 of the ‘012
Patent because the terms “rigidly secure” and
“material from said knob flows into said chamfer”
were improperly construed. The Federal Circuit also reversed
the grant of summary judgment as to claims 7, 13, and 14 of
the ‘012 Patent, concluding that Southco presented
evidence raising a genuine dispute of material fact.
matter was reassigned to my docket while Fivetech's
Petition for Writ of Certiorari before the United States
Supreme Court was pending. On December 7, 2015, the Supreme
Court denied Fivetech's Petition. See Fivetech Tech.
Inc. v. Southco, Inc., 136 S.Ct. 587 (2015).
I held a status conference and ordered the parties to file
“any relevant motions” in accordance with the
Federal Circuit's decision as it related to the
‘012 Patent. (Doc. No. 293.) Fivetech filed its current
motion for summary judgment arguing invalidity. Southco filed
its current motion for partial summary judgment of
infringement with respect to Claim 7 of the ‘012
Patent. Fivetech then filed a cross motion for summary
judgment of noninfringement, but did so approximately one
month beyond the deadline established by my scheduling order.
In response, Southco filed a motion to strike Fivetech's
untimely cross motion. All four motions have been fully
briefed, and are ripe for consideration.
moving for summary judgment bears the initial burden of
demonstrating that there are no genuine issues of material
fact in dispute, and that judgment is appropriate as a matter
of law. Fed.R.Civ.P. 56(a); Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986). Once a properly
supported motion for summary judgment has been made, the
burden shifts to the non-moving party, who must set forth
specific facts showing that there is a genuine issue of
material fact for trial. Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 250 (1986).
issue is “genuine” if a reasonable jury could
rule in favor of the non-moving party based on the evidence
presented. Kaucher v. Cnty. of Bucks, 455 F.3d 418,
423 (3d Cir. 2006). A factual dispute is
“material” if it might affect the outcome of the
suit under the appropriate governing law. Id. at
423. The non-moving party cannot avert summary judgment with
speculation or conclusory allegations, but rather must cite
to the record. Ridgewood Bd. of Educ. v. N.E. for
M.E., 172 F.3d 238, 252 (3d Cir. 1999); Fed.R.Civ.P.
56(c). On a motion for summary judgment, the court considers
the evidence in the light most favorable to the non-moving
party. Anderson, 477 U.S. at 256.
Fivetech's Motion for Summary Judgment - Invalidity
of the ‘012 Patent
assessing summary judgment, the evidence is viewed through
the prism of the evidentiary standard of proof that would
apply at a trial on the merits. TriMed, Inc. v. Stryker
Corp., 608 F.3d 1333, 1339-40 (Fed. Cir. 2010)
(quotations and citations omitted). “Because patents
are presumed valid, a moving party seeking to invalidate a
patent at summary judgment must submit such clear and
convincing evidence of facts underlying invalidity that no
reasonable jury could find otherwise.” Id.
(quotations and citations omitted).
insists that the Federal Circuit's claim constructions on
appeal presented new invalidity issues on remand, and as
result, these issues are ripe for consideration.
Specifically, Fivetech argues that the ‘012 Patent is
invalid as a matter of law for violation of the
“written description” and
“enablement” requirements set forth in 35 U.S.C.
§ 112, first paragraph. (Def.'s Mot. Summ. J. 6-7,
17-26.) While Fivetech recognizes that the ‘012 Patent
is presumed valid, and that it must point to clear and
convincing evidence to support a finding of invalidity,
Fivetech stresses that the “evidence is overwhelming
that the claims … far exceed the scope [of] what was
described as the invention and what was enabled [such that
no] reasonable juror could find otherwise.”
(Id. at 17.)
Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576
F.3d 1348 (Fed. Cir. 2009), the Federal Circuit recognized
that its broader claim constructions on appeal could
potentially result in the defendant raising “directly
related new issues” on remand, such as whether the
“now-asserted scope of the claims is supported by the
specification” (i.e., the written description and
enablement requirements); see also Liebel-Flarsheim Co.
v. Medrad, Inc., 481 F.3d 1371, 1380 (Fed. Cir. 2007)
(recognizing that the court's broader claim construction
on appeal could result in a subsequent finding of invalidity
based on lack of enablement). Here, Fivetech included
invalidity based upon 35 U.S.C. § 112 as an affirmative
defense in its Answer. (Def.'s Answer ¶ 47.)
Therefore, I will address Fivetech's arguments. However,
I note that Fivetech never sought leave to conduct additional
discovery on these issues following remand.
35 U.S.C. § 112, first paragraph, states:
The specification shall contain a written description of the
invention, and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains, or
with which it is most nearly connected, to make and use the
same, and shall set forth the best mode contemplated by the
inventor of carrying out his invention.
United States Court of Appeals for the Federal Circuit has
interpreted this language as setting forth both a written
description requirement and an enablement requirement which
are independent of one another. See Ariad Pharm., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir.
2010). While these requirements “often rise or fall
together, ” they must be evaluated separately.
Id. at 1352 (“[R]equiring a written
description of the invention plays a vital role in curtailing
claims that do not require undue experimentation to make and
use, and thus satisfy enablement, but that have not been
invented, and thus cannot be described.”).
essence of the written description requirement is that a
patent applicant, as part of the bargain with the public,
must describe his or her invention so that the public will
know what it is and that he or she has truly made the claimed
invention.” AbbVie Deutschland GmbH & Co., KG
v. Janssen Biotech, Inc., 759 F.3d 1285, 1298 (Fed. Cir.
2014). Put another way, “[t]he purpose of the written
description requirement is to prevent an applicant from later
asserting that he invented that which he did not.”
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
1313, 1330 (Fed. Cir. 2003).
satisfy the written description requirement, the applicant
must convey with reasonable clarity to those skilled in the
art that, as of the filing date sought, he or she was in
possession of the invention, and demonstrate that by
disclosure in the specification of the patent.”
Centocor Ortho Biotech, Inc. v. Abbott Labs., 636
F.3d 1341, 1348 (Fed. Cir. 2011) (internal quotations and
citations omitted). “Assessing such ‘possession
as shown in the disclosure' requires ‘an objective
inquiry into the four corners of the
specification.'” Id. at 1348.
“Ultimately, the specification must describe an
invention understandable to [a person of ordinary skill in
the art] and show that the inventor actually invented the
invention claimed.” Id. at 1348 (quotations
omitted); see also Ariad Pharm., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
a specification satisfies the written description requirement
is a question of fact.” Johns Hopkins Univ. v. 454
Life Scis. Corp., 183 F.Supp.3d 563, 568 (D. Del. 2016)
(citing GlaxoSmithKline LLC v. Banner Pharmacaps,
Inc., 744 F.3d 725, 729 (Fed. Cir. 2014)). The Federal
Circuit has thus recognized that “determining whether a
patent complies with the written description requirement will
necessarily vary depending on the context.” Ariad
Pharm., Inc., 598 F.3d at 1351. As such, “the
level of detail required to satisfy the written description
requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the
relevant technology.” Id. at 1351. However,
the issue can be “amenable to summary judgment in cases
where no reasonable fact finder could return a verdict for
the non- moving party.” PowerOasis, Inc. v.
T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir.
2008). To meet this burden, a “defendant must provide
clear and convincing evidence that persons skilled in the art
would not recognize in the disclosure a description of the
claimed invention.” Amgen Inc. v. Sanofi, 2017
WL 27253, at *6 (D. Del. Jan. 3, 2017).
argues that the invention described in the ‘012 Patent
is “essentially an improved press-fit that employs a
chamfer on the lower edge of the screw to receive displaced
knob material during a bottom-up press-fit.” (Fivetech
Mot. Summ. J. 23.) Thus, Fivetech insists that the disclosed
invention is really a process for manufacturing
captive screws (i.e., a bottom-up press-fit method of
attaching a screw head into a knob). See id at 4
(“Southco described in its patent a new way of
press-fitting a screw head into a knob from the bottom of the
knob, as opposed to the prior art press-fits wherein the
screw head was inserted from the top into the knob.”)
Fivetech stresses that it uses an injection-molding process
to manufacture its captive screws (the accused ...