The opinion of the court was delivered by: Sprizzo, District Judge.
MEMORANDUM OPINION AND ORDER
Plaintiffs and counterclaim-defendants, Johnson Electric North
("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.
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.
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
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.
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 ...