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Southco, Inc. v. Fivetech Technology, Inc.

United States District Court, E.D. Pennsylvania

May 15, 2017

SOUTHCO, INC., Plaintiff/Counterclaim Defendant,
v.
FIVETECH TECHNOLOGY, INC., Defendant/Counterclaimant.

          MEMORANDUM OPINION

         This 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 judgment.

         I. FACTUAL & PROCEDURAL BACKGROUND[1]

         “A 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.”).

         Southco 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.

         The 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 Patent.

         Because 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 Federal Circuit.

         On 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 trademarks.

         However, 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. Id.

         This 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).

         Thereafter, 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.

         II. LEGAL STANDARD

         A party 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).

         An 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.

         III.ANALYSIS

         A. Fivetech's Motion for Summary Judgment - Invalidity of the ‘012 Patent[2]

         In 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).

         Fivetech 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.)

         In 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.

         Section 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.[3]

         The 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.”).

         1. Written Description

         “The 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).

         “To 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).

         “Whether 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).

         Fivetech 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 ...


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