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JOHNSON ELEC. N. AMERICA v. MABUCHI MOTOR AMERICA

December 10, 1999

JOHNSON ELECTRIC NORTH AMERICA INC. AND JOHNSON ELECTRIC INDUSTRIAL MANUFACTORY, LTD., PLAINTIFFS AND COUNTERCLAIM DEFENDANTS,
v.
MABUCHI MOTOR AMERICA CORP. AND MABUCHI MOTOR CO., LTD., DEFENDANTS AND COUNTERCLAIM PLAINTIFFS.



The opinion of the court was delivered by: Sprizzo, District Judge.

  MEMORANDUM OPINION AND ORDER

Plaintiffs and counterclaim-defendants, Johnson Electric North America, Inc. ("JENA") and Johnson Electric Manufactory, Inc., Ltd. ("JEI") (collectively "Johnson") bring the instant action seeking, inter alia, a declaratory judgment that defendants' United States Patent No. 4, 574, 215 ("the '215") is unenforceable as the result of inequitable conduct. Defendants and counterclaim-plaintiffs, Mabuchi Motor America Corp. ("Mabuchi America") and Mabuchi Motor Co., Ltd. ("MMC") (collectively "Mabuchi Motor"), bring a counterclaim for a declaration of infringement by Johnson of the '215 patent, permanent injunctive relief, and damages. On Mabuchi Motor's motion, a Markman hearing was held to construe the scope of the claims 10 and 11 of the '215 patent. The Court also heard at the same time Johnson's claim of inequitable conduct by Mabuchi Motor in the prosecution of the '215 patent. During the course of the hearing and in its post-hearing submissions, Johnson has focused almost exclusively upon its claim of inequitable conduct and has largely ignored the issues of claim construction raised by Mabuchi Motor. Nonetheless, Johnson has not conceded the correctness of Mabuchi Motor's construction of the claims in suit, requiring the Court to address by the instant Memorandum Opinion and Order both the claim construction issues and Mabuchi Motor's alleged inequitable conduct. The following constitutes the Court's findings of fact and conclusions of law on the construction of the patent claims in suit and Johnson's claim of inequitable conduct.

BACKGROUND

The Parties

JEI, a Hong Kong corporation, and JENA, a Connecticut corporation, are in the business of making small motors for a wide variety of products. See Amended Complaint ("Am.Compl.") ¶ 1,4. MMC and Mabuchi America also produce small motors and together are one of Johnson's most important competitors. See Amended Answer and Counterclaims in Response to Amended Complaint ("Am. Ans.") ¶ 4. Mr. Takachi Mabuchi is the president of MMC, a Japanese joint-stock company, and Mabuchi America, a New York corporation. See Transcript of Markman Hearing, dated July, 8, 9, 14, 1997 ("Tr.") 10.

The '215 Patent

Mr. Mabuchi was the inventor of the '215 patent that is the subject of this litigation. See id. at 11. On March 4, 1986, the '215 patent was duly issued to MMC as assignee of Mr. Mabuchi. See Complaint ("Compl.") ¶ 32. The invention claimed in the '215 patent relates to fractional horse power permanent magnet direct current ("D.C.") motors. A typical D.C. motor contains, among other parts, a rotating interior cylinder, or commutator, located between magnets and connected to three coils. See Mabuchi's Memorandum of Law in Support of Application Requesting a Markman Hearing, dated June 20, 1997 ("Mab.Memo") 4. Two carbon brushes touch the commutator as it rotates to pass electricity to and create magnetic fields around the coils. Id. Each brush is mounted on a piece of metal or "terminal strip" that extends at some angle to a point outside of the motor casing, where it is attached to a wire or other means for delivery of electric power.*fn1 Id. If the brush fails to deliver electricity to or to make continuous contact with the rotating commutator, the motor fails. See Tr. 31

The particular invention contained in the '215 patent addressed a problem occurring in Mabuchi Motor's Flat Case ("FC") motors. See Tr. 25-26. These FC motors were initially used primarily in toy applications but were later sold for use in automobile accessories, including power door locks and mirrors. See id. Prior to the invention disclosed in the '215 patent, the FC motors contained a one-piece brushgear mechanism. See id. at 25. The one-piece brushgear consisted of a terminal strip of rigid metal and a carbon brush attached at the end. See id. at 30. The terminal strip's rigidity created problems, as the terminals often broke under mechanical pressure. See id.

After receiving complaints from customers in the automobile industry, Mr. Mabuchi directed his design team to address the problem. See Tr. 26. When the Mabuchi Motor research and development department was unable to derive a satisfactory solution, Mr. Mabuchi personally became involved in the design process. See id. at 28. His efforts produced the invention claimed in the '215 patent. See id. at 29.

The '215 patent teaches the use of a two-piece brushgear composed of a terminal strip and a separate commutator contactor strip upon which the carbon brush is mounted. See Tr. 29. The terminal and commutator contactor strips are each made with a different material appropriate for their function — flexible material for the terminal strip and resilient material for the commutator contactor strip. See id. As described in the specification, the two pieces are then joined together by means of parallel projections contained on the terminal strip.*fn2 See id. at 35, 54. The parallel projections are bent and crimped onto the edges of the commutator contractor strip to secure the two pieces together. See id. The brushgear is bent into an L-shape at the joint and fit in to a corresponding L-shaped slot in the brush holder on the case cover. See id. at 35. With the brushgear attached to the brush holder, its terminal strip extends laterally through the motor case. See id. at 104.

Prosecution History of the Patent

On August 16, 1983, Mr. Mabuchi filed an application for a United States patent relating to his design for a two-piece brushgear. See Am. Ans. ¶ 62. In April 1984, the patent examiner denied Mr. Mabuchi's application. See Plaintiffs' Post Markman Hearing Memorandum ("P. Post Markman"), Ex. 4. The examiner rejected the originally filed claim 1 as obvious in view of Mabuchi's earlier United States Patent No. 4, 195, 242 ("the '242") and United States Patent 4, 155, 023 ("Hagenlocher"). See id. Mabuchi '242 teaches a one-piece, L-shaped brushgear consisting of a terminal and contactor portion. See id. The terminal portion is supported by grooves in a brush support, and extends axially from the motor case. See id. The examiner explained that although the '242 does not show separate terminal and contactor portions, such a two-piece brushgear design is taught by Hagenlocher. See id. Hagenlocher teaches a contactor portion with a brush mounted upon it and a separate terminal portion. See id. Each portion extends into a groove of the support means. See id. Given the L-shape of the '242 and the two-piece design of Hagenlocher, the examiner found that these two references considered together made Mr. Mabuchi's originally filed claim 1 obvious. See id.

In order to avoid rejection, Mr. Mabuchi amended his application for the '215 patent. Since neither the '242 nor Hagenlocher taught projections, Mr. Mabuchi inserted into every claim a limitation claiming the use of projections to join the terminal and commutator contactor strips. As a result of these amendments, the PTO issued the '215 patent in March 1986. See Compl. at 14 ¶ 32.*fn3

Alleged Infringement by Johnson

Mabuchi Motor alleges, inter alia, that Johnson infringed the '215 patent in violation of 35 U.S.C. § 271, 281, 283 and 284. See Am. Ans. ¶ 61. Mabuchi Motor asserts that Johnson encountered similar problems with breakage of one-piece brushgears. After being unable to solve the problem independently, Mabuchi Motor alleges that Johnson's engineers copied Mabuchi Motor's new, two-piece brushgear design. See Mab. Memo 6.

According to Mabuchi Motor, the first infringing brushgear Johnson created infringed upon the '215 patent because it consisted of a terminal strip with four parallel projections that were bent and crimped around corresponding edges of the commutator contactor strip. See Am. Ans. ¶ 72. Mabuchi Motor objected to Johnson's alleged infringement, and Johnson subsequently redesigned its brushgear. Id. at ¶ 72-73. Mabuchi Motor alleges, however, that the changes made to Johnson's first design were merely cosmetic and that Johnson's second design also infringed the '215 patent. Id. at ¶ 73. Again Mabuchi Motor objected to Johnson's design as infringing, and again Johnson altered its design. Mab. Memo 7. Mabuchi Motor concedes that the third Johnson design does not infringe upon the '215 patent. Id. Therefore, Mabuchi Motor's claims of infringement are limited to Johnson's first two designs. Mabuchi Motor alleges Johnson's first brushgear infringes claims 10*fn4 and 11*fn5 of the '215 patent and that Johnson's second design infringes claim 11. Id. at 12-14.

Johnson's Claim of Inequitable Conduct

Johnson asserts that the Mabuchi '215 patent is unenforceable because Mabuchi Motor committed inequitable conduct during the prosecution of the '215 patent by withholding from the Patent and Trademark Office ("PTO") material prior art. The undisclosed prior art is an unpatented Mabuchi motor design called the "RS-360." Mr. Mabuchi invented the RS-360 motor before the brushgear claimed by the '215 patent but never sought a patent for its design.

Like the '215 patent, the RS-360 contains a two-piece brushgear design. Unlike the '215 brushgear, however, the RS-360 does not use lateral projections to join the terminal strip and the commutator contactor strip. See Tr. 104. Rather, an opening is cut in the middle of the terminal strip and the pieces cut out of the terminal strip are then bent around the commutator contactor strip. See id. at 56-57, 104. As a result of this process, the two pieces are aligned perpendicularly. See id. After the two pieces are joined, the brushgear is attached to a plastic column on the motor case cover by means of a screw. See id. at 54, 104. Once mounted, the brushgear's terminal strip extends axially through the case cover. See id. at 104-105.

At the time he applied for the '215 patent, Mr. Mabuchi was obviously aware of his own design for the RS-360 motor's brushgear. See Tr. 48-49. In the course of his application that culminated in the '215 patent, however, Mr. Mabuchi disclosed to the PTO only the old FC-type motor design employing a one-piece brushgear, as well as another motor type with a similar brushgear design. See id. at 49. At the Markman hearing, Mr. Mabuchi testified that he disclosed the FC-motor design because he believed that there was a very close relationship between the brushholders in the FC-type motors and the design taught in the '215 patent. See id. at 49-50. Mr. Mabuchi further stated that he did not disclose the RS-360 brushgear design because he considered it totally unrelated to the FC-type motors and the '215 patent in its manner of assembly and installation. See id. at 53-54.

DISCUSSION

Claim Construction

Because the language of a patent's claims determine the scope of the monopoly granted to the patent holder, the first step in any patent litigation is for the Court to determine the proper construction of the claims in suit. Claim construction is a question of law to be decided by the Court. See Markman v. Westview Instruments, Inc., 517 U.S. 370 388-89, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). To interpret the claims of a patent, the Court considers the language of the claims in light of the patent's specification, the prosecution history, and, in appropriate cases, extrinsic evidence. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979-81 (Fed.Cir. 1995) (en banc). A court will ascribe to the language of a claim the meaning that one skilled in the art would ordinarily ascribe unless the inventor sets forth a specific alternative meaning in the specification. See Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed.Cir. 1992); Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1571 (Fed.Cir. 1983).

Mabuchi Motor requested a Markman hearing in order to construe the scope of claims 10 and 11 of the '215 patent. Mabuchi Motor also sought to adduce additional testimony ...


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