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November 7, 1995

HYDRAFLOW, Plaintiff and Counterclaim-Defendant,
ENIDINE INCORPORATED, Defendant and Counterclaim-Plaintiff.

The opinion of the court was delivered by: SKRETNY


 Before this Court are the parties' cross-motions for partial summary judgment pursuant to Federal Rule of Civil Procedure 56. Plaintiff filed this action on October 13, 1988, alleging that defendant has infringed its patent for "snubbers" in violation of 35 U.S.C. § 271, and engaged in unfair competition. Plaintiff seeks a permanent injunction and damages. Defendant has asserted counterclaims for a declaratory judgment of invalidity and non-infringement, libel and/or slander per se, and tortious interference with contract. This Court has jurisdiction of the subject matter of this action under 28 U.S.C. §§ 1331, 1332, and 1338.

 Defendant moves for summary judgment dismissing plaintiff's patent infringement claim on the ground that defendant has not infringed plaintiff's patent, either literally or by equivalents, as a matter of law. *fn1" Plaintiff has filed two separate summary judgment motions. It seeks summary judgment in the first motion dismissing defendant's second and third counterclaims. *fn2" In the second motion plaintiff seeks summary adjudication that the claim at issue in plaintiff's patent does not exclude certain structures from its coverage. *fn3" Oral argument was heard January 25, 1995.

 For the reasons set forth below, this Court will (1) grant defendant's motion for summary judgment; (2) grant plaintiff's motion for summary judgment dismissing defendant's second and third counterclaims; and (3) deny plaintiff's motion for summary judgment with respect to coverage of the claim at issue in its patent.


 This is a patent infringement action. Plaintiff, Hydraflow, a California corporation ("Hydraflow"), alleges that defendant, Enidine Incorporated, a New York corporation ("Enidine"), infringed its patent for "snubber" rate control devices. Hydraflow and Enidine both produce snubbers. A snubber is a small hydraulic device installed in commercial aircraft overhead storage bins to control the rate at which the bin doors open and close. As the background in the patent in issue explains, "the use of a snubber . . . on an overhead storage bin door in an aircraft passenger compartment insures that the bin door will open at a controlled rate and will not unexpectedly drop on a passenger's head." (Ralabate Aff. P 2, exh. 1; P2. Facts, exh. E.)

 The patent in issue is United State Patent No. 3,999,745 ("'745 patent" or "Mahoff '745"), which Hydraflow owns. The patent issued on December 28, 1976, and expired on December 28, 1993. (Ralabate Aff. P 2, exh. 1; P2. Facts, exh. E.) The '745 patent concerns a seal assembly for snubber devices. Hydraflow charges that the seal assembly in Enidine's snubber infringes this patent.

 A. Events Giving Rise to this Action

 From approximately 1976 to 1986, Hydraflow supplied snubbers to The Boeing Co. ("Boeing") for installation in airplanes Boeing manufactured. (P2. Facts, exh. F.) Hydraflow learned on August 4, 1986, that Boeing had awarded a contract for snubbers to Enidine, not Hydraflow. (Perlma *fn2" Aff. P 2, exh. 1, p. 170; P2. Facts, exh. F.) In March 1987, a Boeing engineer told the president of Hydraflow, L.E. Ullrich, that the Enidine snubber had the same seal design to prevent leaking as the Hydraflow snubber. (Perlma *fn2" Aff. P 2, exh. 1, p. 146.) The '745 patent's background explains the problem of leakage in snubbers:

Previously, considerable difficulty had been encountered in sealing snubber devices in which silicone fluid was used. Leakage of snubber devices in passenger compartments of aircraft resulted in irreversibly staining clothing, luggage, and other personal articles . . . . These and other difficulties of the prior art have been overcome according to the present invention wherein a seal assembly is provided in which a simple, efficient, compact, lightweight, and reliable seal assembly effectively provides for the sealing of a snubber in both active and inactive operating conditions.

 (Ralabate Aff. P 2, exh. 1, Col. 1, lines 41-64; P2. Facts, exh. E., Col. 1, lines 41-64. ) Boeing engineers showed Ullrich large-scale drawings of the Enidine device, pointing out its seal assembly. (P2. Facts, exh. G, pp. 165-66.) Ullrich sent Boeing a letter dated April 8, 1987, stating that Enidine's "product is a direct infringement of our patent 3,999,745 . . . . We notified Enidine . . . to cease manufacturing . . . ." (P2. Facts, exh. F.) By letter dated June 5, 1987, Enidine's general counsel informed Hydraflow that "Enidine's product in no way infringes upon your client's U.S. Patent No. 3,999,745." Enidine had received an opinion letter dated April 22, 1987, from its patent counsel stating that "patent 3,999,745 is not infringed by the Enidine actuator/rate control device." (P2. Facts, exh. H.) The June 5th letter expressed "very serious" concern that Hydraflow told Boeing in the April 8th letter that there "appears to be an infringement." (P2. Facts, exh. H.)

 Hydraflow prepared a test report of the Enidine seal assembly dated October 9, 1987. (P2. Facts, exh. I.) The test report "presents the results of a test conducted on an elastomeric seal and a seal actuating element that were removed from an Enidine, Inc. actuator." (P2. Facts, exh. I, p. 1A.) The report, according to Hydraflow, supports the claim that the Enidine snubber infringed the '745 patent (P2. Facts, p. 5), a result Enidine disputes (Perlma *fn2" Aff. P 10). In January or February 1988, Bruce A. Jagger, Hydraflow's patent counsel, met with Ullrich and James Hamley, Boeing's patent counsel. Jagger told Hamley that he thought the Enidine device infringed the '745 patent, and gave him a copy of the test results. (Perlma *fn2" Aff. P 11, exh. 2, pp. 11-14; P2. Facts, exh. J, pp. 11-14.)

 Enidine's general counsel sent Hydraflow's counsel a letter dated April 22, 1988, expressing concern that Hydraflow had again alleged to Boeing that Enidine was infringing Hydraflow's patent. Enidine's counsel enclosed a second opinion from its patent counsel that the Enidine snubber did not infringe the '745 patent. (P2. Facts, exh. K.) Hamley sent Hydraflow's counsel a letter dated April 27, 1988, stating that "after a careful review with Boeing Engineering it was our conclusion that the submitted data was inconclusive on the issue of infringement." (P2. Facts, exh. M.) Hydraflow filed the instant action for patent infringement against Enidine in October 1988.

 B. The '745 Patent and the Enidine Snubber Device

 The '745 patent includes four claims. Hydraflow charges that the seal assembly in the Enidine snubber infringed only Claim 1 of the patent. (D. Memo, p. 12; P2. Memo, p. 5.) A description in some detail of the '745 patent and accused Enidine device follows.

 A snubber, as already explained, is a hydraulic device installed primarily in commercial aircraft overhead storage bins to control the rate at which the bin doors open and close. Figure 1 of the '745 patent shows

a snubber indicated generally at 10 which includes a cylinder adapted to contain an hydraulic fluid and to receive axially for axial movement a cylindrical rod 14 [see Figure 2]. Cylinder 12 is provided with an eye 16 which is adapted for attachment to an adjacent structure. Rod 14 [see Figure 2] is provided with an eye 18 which is likewise adapted for attachment to an adjacent structure. The cylinder 12 is adapted to contain an hydraulic fluid. The hydraulic fluid is retained within the cylinder 12 by means of a seal assembly 20. A variable orifice valve 22 is attached to and moves with rod 14 [see Figure 2]. The valve produces a snubbing (retarding) force by restricting the flow of fluid through its orifice. The size of the orifice varies in an inverse proportion to the load applied, maintaining thereby a relatively constant time cycle for a wide range of applied loads.

 (Ralabate Aff. P 2, exh. 1, Col. 3, lines 1-17; P2. Facts, exh. E, Col. 3, lines 1-17.)

 Figure 2 of the '745 patent provides a sectional view of the seal assembly. The background of the patent explains that

the present invention provides a seal assembly in which a single, integral, annular wedging element applies radial loads to the inner and outer lips of a seal in such a way that the loads applied to the respective sealing lips are applied uniformly around the circumference of the individual lips, but as between the two lips the loads are proportioned so that the inner lip on the dynamic side of the seal receives a greater load than the outer lip on the stationary side of the seal.

 (Ralabate Aff. P 2, exh. 1, Col. 2, lines 45-53; P2. Facts, exh. E, Col. 2, lines 45-53.) Figure 2 illustrates the wedge 42 ; the inner sealing lip 60, adjacent to the cylindrical rod 14 ; and the outer sealing lip 64, adjacent to the wall of the cylinder 12. As the background also explains, "the radial loads are applied to the seal through the action of a separate annular integral wedging element which projects in wedging relationship between the sealing lips. The wedging element is urged into contact with the seal by a helical compression spring." (Ralabate Aff. P 2, exh. 1, Col. 2, lines 29-33; P2. Facts, exh. E, Col. 2, lines 29-33.) Figure 2 illustrates the annular wedge in contact with both the inner and outer sealing lips.

 2. The Accused Device

 The accused device is the seal assembly of the Enidine snubber. The Enidine snubber is also a hydraulic device useful to control the rate at which commercial aircraft overhead storage bin doors open and close. Enidine describes its device as "a normally retracted, self-contained, hydraulically damped, spring actuator." (D. Memo, p. 6.) At issue is its seal assembly. "The assembly includes an annular elastomeric seal, a wedge, a coil spring, and a bearing retainer. The seal has an outer lip in sealing contact with the bearing retainer and an inner lip in sealing contact with the piston rod." (D. Memo, pp. 7-8.) Figure A, which Hydraflow has provided as an exhibit, depicts the Enidine seal assembly. It shows a wedging element 1 ; an inner sealing lip 3, adjacent to a piston rod 2 ; and an outer sealing lip 4, adjacent to the wall of a cylinder 5.

 3. Difference Between the Seal Assemblies

 The difference between the Enidine seal assembly and what the '745 patent claims is, of course, what the parties dispute. Without preempting any legal issues, what distinguishes the Enidine seal assembly from the drawings, specifications, and, as Enidine argues, the plain language of Claim 1 of the '745 patent, is that the Enidine wedging element only contacts the outer sealing lip. The specifications and drawings in the '745 patent (and according to Enidine the language of Claim 1) calls for a wedge that contacts both the inner and outer sealing lips. The background of the '745 patent describes a wedge that "applies radial loads to the inner and outer lips of a seal." In the Enidine seal assembly, "all of the radial load on the inner sealing lip is imposed by the stress within the inner lip itself." (P2. Memo, pp. 13-14.)


 The first issue before this Court is whether any triable issues exist with respect to patent infringement. Both Enidine's summary judgment motion and Hydraflow's summary judgment motion regarding claim infringement address this issue and will be considered together. Hydraflow also has filed a summary judgment motion on Enidine's defamation and tortious interference counterclaims. Before resolving whether the counterclaims raise any triable issues, this Court will address the motions for summary judgment on patent infringement.

 A. Summary Judgment Standards

 Federal Rule of Civil Procedure 56(c) provides that summary judgment is warranted where the "pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits 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." A "genuine issue" exists "if the evidence is such that a reasonable jury could return a verdict for the non-moving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 2510, 91 L. Ed. 2d 202 (1986). A fact is "material" if it "might affect the outcome of the suit under governing law." Id. at 248, 106 S. Ct. at 2510.

 Under Rule 56, a party moving for summary judgment can meet its burden either by producing evidence showing the absence of a genuine issue of material fact or by pointing out to the court that there is an absence of evidence supporting one or more essential elements of the non-moving party's case. Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S. Ct. 2548, 2554, 91 L. Ed. 2d 265 (1986). Furthermore, Rule 56(e) provides:

When a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denials of the adverse party's pleading, but the adverse party's response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If the adverse party does not so respond, summary judgment, if appropriate, shall be entered against the adverse party.

 In deciding a motion for summary judgment, the evidence and the inferences drawn from the evidence must be "viewed in the light most favorable to the party opposing the motion." Adickes v. S.H. Kress and Co., 398 U.S. 144, 158-159, 90 S. Ct. 1598, 1609, 26 L. Ed. 2d 142 (1970). "Only when reasonable minds could not differ as to the import of evidence is summary judgment proper." Bryant v. Maffucci, 923 F.2d 979, 982 (2d Cir.), cert. denied, 502 U.S. 849, 112 S. Ct. 152, 116 L. Ed. 2d 117 (1991). The function of the court is not to weigh the evidence and determine the truth of the matter, but rather to determine whether there is a genuine issue for trial. A summary judgment motion will not be defeated, however, merely on the basis of a "metaphysical doubt" about the facts, Matsushita Elec. Indus. Co. v. Zenith Radio Corp. 475 U.S. 574, 586, 106 S. Ct. 1348, 1356, 89 L. Ed. 2d 538 (1986), "or on the basis of conjecture or surmise," Bryant, 923 F.2d at 982. The nonmoving party must come forward with significant probative evidence in support of its complaint. See Capital Imaging v. Mohawk Valley Medical Association, 996 F.2d 537, 542 (2d Cir.), cert. denied, U.S. , 114 S. Ct. 388, 126 L. Ed. 2d 337 (1993).

 Summary judgment is appropriate in patent cases, as in other cases, where no genuine issue of material fact exists and the movant is entitled to judgment as a matter of law. See Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831 (Fed. Cir. 1984); Townsend Engineering Co. v. HiTec Co., 829 F.2d 1086, 1089 (Fed. Cir. 1987). "The motion of an accused infringer for judgment on the ground of non-infringement of a patent may be granted where the patentee's proof is deficient in meeting an essential part of the legal standard for infringement." Johnston v. IVAC Corp., 885 F.2d 1574, 1578 (Fed. Cir. 1989) (citations omitted). An accused infringer "is entitled to summary judgment, on the ground of non-infringement, by pointing out that the patentee failed to put forth evidence to support a finding that a limitation of the asserted claim was met by the structure in the accused devices." Id. at 1578.

 Used properly, Rule 56 is a "vital procedural tool to avoid wasteful trials," 996 F.2d at 541, and "to isolate and dispose of factually unsupported claims." ...

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