United States District Court, M.D. Pennsylvania
REPORT AND RECOMMENDATION
KAROLINE MEHALCHICK, UNITED STATES MAGISTRATE JUDGE
the Court are two motions for summary judgment: the first
filed by pro se Plaintiff, Kevin Eugene Swartz
(hereinafter "Swartz"), seeking partial summary
judgment (Doc. 58); and the second filed by SPX Corporation
("SPX"), seeking summary judgment. (Doc. 60).
Swartz moves for partial summary judgment on the grounds that
he is the sole and exclusive owner of the patent at issue,
United State Patent No. 7, 434, 679 (the "'679
Patent"). SPX moves for summary judgment on the grounds
that their accused product does not infringe the '679
following reasons, the Court will GRANT
SPX's Motion for Summary Judgment, and
DENY Swartz's Motion for Partial Summary
Background and Procedural
preliminary matter, the Court recognizes that Swartz has
failed to provide a concise statement of facts in support of
his motion for partial summary judgment (Doc. 58) and in
opposition to SPX's motion for summary judgment. (Doc.
63). Both constitute a violation of Local Rule 56.1, which
provides in pertinent part:
56.1 Motions for Summary Judgment.
A motion for summary judgment filed pursuant
to Fed.R.Civ.P.56, shall be accompanied by a
separate, short and concise statement of the material
facts, in numbered paragraphs, as to which the
moving party contends there is no genuine issue to be tried.
The papers opposing a motion for summary judgment
shall include a separate, short and concise statement of the
material facts, responding to the numbered
paragraphs set forth in the statement required in the
foregoing paragraph, as to which it is contended that there
exists a genuine issue to be tried.
Statements of material facts in support of, or in
opposition to, a motion shall include references to the parts
of the record that support the statements.
All material facts set forth in the statement
required to be served by the moving party will be deemed to
be admitted unless controverted by the statement required
to be served by the opposing party.
Local Rule 56.1 (emphasis added).
such, the factual background is largely taken from SPX's
Answer to Swartz's Statement of Facts (Doc. 65) and
SPX's Statement of Material and Undisputed Facts in
support of its Motion for Summary Judgment. (Doc. 62).
Further, to the extent Swartz has denied any facts in his
Brief in Opposition to SPX's Motion for Summary Judgment
(Doc. 63) and provided supporting citations to the
evidentiary record, those objections are noted. Otherwise, in
accordance with Local Rule 56.1, the Court has deemed the
facts in SPX's statement of material facts (Doc. 62) as
admitted by Swartz. Such facts have been taken in the light
most favorable to Swartz as the non-moving party, with all
reasonable inferences drawn in his favor.
instant infringement claim stems from the '679 Patent
filed by Swartz with the United Stated Patent and Trademark
Office on September 1, 2006. (Doc. 65, at 4). The '679
Patent describes a vertical conveyor, which carries "a
stream of closely spaced articles along a conveyor path"
by utilizing at least one pair of roller chain assemblies.
(Doc. 27-1, at 4). The allegedly infringing product is a
conveyor that was sold by the Thermal Product Solutions
division of SPX to Southern Graphic Systems, Inc.
("SGSI") on or about January 24, 2012. (Doc. 62, at
2, ¶2). The conveyor sold to SGSI bore the model number
MM45VD106M (the "SGSI Conveyor"), and had an
overall length of about 167.990 inches. (Doc. 62, at 2,
¶2). The SGSI Conveyor was custom made, and SPX did not
manufacture any other conveyors with the same design. (Doc.
62, at 2, ¶3). Besides the SGSI Conveyor, Swartz does
not allege any other products of SPX infringed on the
'679 Patent. (Doc. 62, at 1-2, ¶1).
who was an employee of SPX when the SGSI Conveyor was
manufactured and sold, further avers that he maintains sole
and exclusive ownership over the rights to the '679
Patent. (Doc. 27, at 6, ¶17; Doc. 38, at 5, ¶17;
Doc. 58, at 3, ¶2). However, in connection with his
employment contract with SPX, Swartz signed a Confidentiality
Agreement on August 17, 2006. (Doc. 65, at 4). The
Confidentiality Agreement contained the following assignment
"...I hereby assign, and agree to assign to SPX during
my employment and thereafter, all my rights to and evidence
of such rights to the Developments, whether or not patent
applications are filed thereon. I agree, whenever requested
to do so by SPX during my employment or thereafter...to grant
SPX or its nominee my entire interest in any or all such
Developments by executing, acknowledging, and delivering all
documents...in support of a particular invention, which SPX
may deem necessary or proper for that purpose and for the
purpose of perfecting in SPX title to patents..."
(Doc. 59-5, at 3).
the assignment clause, Swartz avers that the '679 Patent
does not contain new matter from his previous United States
patent application 10/974, 058 (the '"058
Application") filed on October 27, 2004. (Doc. 58, at 3,
5-7). Specifically, Swartz claims that the '679 Patent
was based off of the '058 Application, which was filed
before the Confidentiality Agreement with SPX was executed.
(Doc. 58, at 3). SPX counters, however, that new matter was
indeed added to the application that actually led to the
'679 patent-U.S. Patent No. 11/469, 494 (the
'"494 Application"). (Doc. 65, at 6).
February 24, 2015, Swartz filed the instant patent
infringement action pursuant to 35 U.S.C. § 101. (Doc.
1). After a lengthy procedural history, Swartz filed an
amended complaint against SPX on February 12, 2016. (Doc.
27). In the amended complaint, Swartz alleged that the SGSI
Conveyor infringed on independent claims 12 ("Claim
12") and 25 ("Claim 25") of the '679
Patent, and their dependent claims13-21 and 26-27. (Doc. 27, at
8, ¶22; Doc. 62, at 3, ¶¶6-7). Alternatively,
Swartz argued that the SGSI Conveyor infringed the '679
Patent under the doctrine of equivalents. (Doc. 27, at 8,
¶22). On July 20, 2016, SPX moved to dismiss the amended
complaint for failure to effect timely service under Federal
Rule of Civil Procedure 4(m). (Doc. 32). On December 8, 2016,
the undersigned Federal United States Magistrate Judge issued
a Report and Recommendation allowing Swartz to correct
service on SPX. (Doc. 35). The District Court adopted the
Report and Recommendation on January 13, 2017 (Doc. 37), and
SPX filed an answer to Swartz's amended complaint on
January 26, 2017. (Doc. 38). Therein, SPX asserted a number
of counterclaims against Swartz, including a declaration of
non-infringement of Claims 12 and 25, a declaration of
invalidity of the '697 Patent, and specific performance
for the assignment of the '679 Patent under the terms of
the Confidentiality Agreement. (Doc. 38, at 17-21,
¶¶14-35). Swartz filed an answer to SPX's
counterclaims on February 6, 2017 (Doc. 44), and moved for
partial summary judgment on June 26, 2017. (Doc. 58). In his
motion for partial summary judgment, Swartz argues that he
retained sole and exclusive ownership over the '679
Patent, in apparent response to SPX's counterclaim. (Doc.
38; Doc. 58). SPX filed a brief in opposition to Swartz's
motion on July 17, 2017 (Doc. 64), and Swartz filed a reply
brief on July 25, 2017. (Doc. 67).
29, 2017, SPX filed a Motion for Summary Judgment on the
grounds of noninfringement of the '679 Patent. (Doc. 60).
SPX filed a brief in support of the Motion for Summary
Judgment on the same day (Doc. 61), as well as a statement of
undisputed material facts. (Doc. 62). Swartz filed a brief in
opposition to SPX's Motion for Summary Judgment on July
7, 2017 (Doc. 63), and SPX submitted their reply brief on
July 19, 2017. (Doc. 66).
been fully briefed, the matter is now ripe for disposition.
Standard of Review
Rule 56 of the Federal Rules of Civil Procedure, summary
judgment should be granted only if "there is no genuine
dispute as to any material fact and the movant is entitled to
judgment as a matter of law." Fed.R.Civ.P. 56(a). A fact
is "material" only if it might affect the outcome
of the case. Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 248 (1986). A dispute of material fact is
"genuine" only if the evidence "is such that a
reasonable jury could return a verdict for the non-moving
party." Anderson, 477 U.S. at 248. In deciding
a summary judgment motion, all inferences "should be
drawn in the light most favorable to the non-moving party,
and where the non-moving party's evidence contradicts the
movant's, then the non-movant's must be taken as
true." Pastore v. Bell Tel. Co. of Pa., 24 F.3d
508, 512 (3d Cir. 1994). However, the Court need not accept
mere conclusory allegations. Lujan v. Nat'l Wildlife
Fed'n, 497 U.S. 871, 888(1990).
summary judgment stage, the Court's function is not to
make credibility determinations, weigh evidence, or draw
inferences from the facts. Anderson, 477 U.S. at
249. Rather, the court must simply "determine whether
there is a genuine issue for trial." Anderson,
477 U.S. at 249. The party seeking summary judgment
"bears the initial responsibility of informing the
district court of the basis for its motion, " and
demonstrating the absence of a genuine dispute of material
fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986). If the movant makes such a showing, the non-movant
must set forth specific facts, supported by the record,
demonstrating that "the evidence presents a sufficient
disagreement to require submission to the jury."
Anderson, 477 U.S. at 251-52.
evaluating a motion for summary judgment, the Court must
first determine if the moving party has made a prima facie
showing that it is entitled to summary judgment. See
Fed. R. Civ. P. 56(a); Celotex, 477 U.S. at 331.
Once that prima facie showing has been made, the burden
shifts to the nonmoving party to demonstrate the existence of
a genuine dispute of material fact. See Fed. R. Civ.
P. 56(a); Celotex, 477 U.S. at 331. With respect to
cross-motions for summary judgment, "[e]ach movant must
demonstrate that no genuine issue of material fact exists; if
both parties fail to carry their respective burdens, the
court must deny [both] motions. Quarks v.
Palakovich, 736 F.Supp.2d 941, 946 (M.D. Pa. 2010)
(citing Facenda v. N.F.L. Films, Inc., 542 F.3d
1007, 1023 (3d Cir. 2008)). However, a federal court should
grant summary judgment "if the pleadings, depositions,
answers to interrogatories, and admissions on file, together
with the affidavits, if any, show that there is no genuine
issue as to any material fact and that the moving party is
entitled to a judgment as a matter of law." Farrell
v. Planters Lifesavers Co., 206 F.3d 271, 278 (3d Cir.
SPX's Motion for Summary Judgment Against Swartz
moves for summary judgment on the grounds that the accused
product has not infringed claims 12-21 or 25-27 of the
'679 Patent. (Doc. 61, at 8-21). Specifically, SPX argues
that the SGSI Conveyor neither satisfies the elements of (1)
an "elongate rail" on which the "first and
second sprockets are rotatably mounted" nor (2) a rail
that is "surrounded" by the roller chain. (Doc. 61,
at 8-21; Doc. 62, at 12, ¶¶27-28). SPX further
argues that the SGSI Conveyor does not infringe under the
doctrine of equivalents, as the result achieved by Claims 12
and 25 is vitiated by the accused conveyor's
configuration. (Doc. 61, at 21-23; Doc. 62, at 20, ¶46).
Non-infringement of the'679 Patent
35 U.S.C. § 271, a patent is infringed when a party,
"without authority, makes, uses, offers to sell, sells,
within the United States or imports into the United States
any patented invention during the term of the patent."
In a motion for summary judgment, determination of patent
infringement (or, non-infringement) requires the Court to
engage in a two-part inquiry. See Markman v. Westview
Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995).
First, the Court must interpret the claims at issue to
determine their meaning and scope. Markman, 52 F.3d
at 976. Second, the Court must compare the construed
claim's terms to the accused product. Markman,
52 F.3d at 976. For there to be direct infringement, the
accused invention must "perform each and every step or
element of a claimed method or product." Paymentech,
LP, 498 F.3d 1373, 1378 (Fed. Cir. 2007). Thus, although
the question of infringement is usually one for a jury, a
Court may grant summary judgment of noninfringement "if
no reasonable jury could determine that every limitation
recited in the properly construed claim either is not, or is,
found in the accused device...." See Karlin Tech.,
Inc. v. Surgical Dynamics, Inc., Ill. F.3d 968, 974-75
(Fed. Cir. 1999).
inventor may only assert ownership "over those designs
encompassed within the claims section of the patent."
See 35 U.S.C. § 112; Pfaff v. Wells Elecs.,
Inc., 525 U.S. 55, 63, 119 S.Ct. 304, 142L.Ed.2d261
(1998); Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005). As such, the first step in a
non-infringement analysis is for the Court to properly
construe the claims at issue, thereby ascertaining their
meaning and scope. Markman, 52 F.3d at 976. This
determination, referred to as "claim construction,
" is a question of law solely within the purview the
Court. See CyborCorp. v. FAS Techs., 138 F.3d 1448,
1454 (Fed. Cir. 1998). Further, to engage in proper
construction, the Court must "determine the
'ordinary and customary meaning' of the claim terms
as they would be understood by a 'person of ordinary
skill in the art ("POSITA").'" Rhino
Assocs., LP. v. Berg Mfg. & Sales Corp., 482
F.Supp.2d 537, 544-45 (M.D. Pa. 2007) (citing
Phillips, 415 F.3d at 1312-13).
interpreting the disputed claim, the Court may properly rely
on a number of evidentiary sources for guidance. First, the
Court must look to the "intrinsic evidence" of the
record, which includes the language of the claim, the
patent's specification, and prosecution history where
available. Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996). Thereafter, "if needed
to assist in determining the meaning or scope of technical
terms in the claims, " the Court may consult the
extrinsic evidence of the record. Vitronics Corp.,
90 F.3d at 1583 (citing Pall Corp. v. Micron Separations,
Inc.,66 F.3d 1211, 1216 (Fed. Cir. 1995)). Such
extrinsic evidence may include "all ...