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March 30, 2001


The opinion of the court was delivered by: David G. Larimer, Chief Judge United States District Court.


Plaintiff The Gleason Works ("Gleason") brought this patent infringement action against defendants Klingelnberg-Oerlikon Geartec Vertriebs-GmbH ("Klingelnberg")*fn1, Oerlikon Geartec, AG ("Oerlikon") and Liebherr-America, Inc. ("Liebherr"). Gleason alleges that it is the holder of United States Patent No. 4,981,402 ("the 402 patent"), which was issued on January 1, 1991 and is entitled, "Multi-Axis Bevel and Hypoid Gear Generating Machine." Gleason's complaint alleges that Klingelnberg, a German corporation, and Oerlikon, a Swiss corporation, manufacture gear-making machines that infringe the 402 patent, and that Liebherr, a Virginia corporation, sells the infringing products on behalf of Klingelnberg and Oerlikon in the United States. Gleason seeks damages, injunctive relief, declaratory relief, attorneys' fees and costs.

In their answers to the complaint, Oerlikon and Liebherr ("defendants") each denied infringing on the 402 patent, and asserted counterclaims alleging interference with business relations ("Count III"), unfair competition under the Lanham Act, 15 U.S.C. § 1125(a) ("Count IV"), and common law unfair competition ("Count V").*fn2

Gleason now moves for partial summary judgment on defendants' counterclaims contained within Counts III, IV, and V.


The relevant facts are largely undisputed. Oerlikon manufactures the allegedly infringing gear-cutting machine, which is known as Model C-28. In the United States, all of Oerlikon's machines are sold exclusively through Liebherr, an independent distributor.

One particular machine led to this litigation. In October 1997, Oerlikon sent a C-28 machine to Liebherr, which accepted it on consignment for sale. The arrangement between Oerlikon and Liebherr was that if the machine were sold, Liebherr would purchase it from Oerlikon and then sell it to the customer. Liebherr displayed the machine at a trade show in Michigan in October 1997. Representatives of Oerlikon attended the show to operate the machine and answer questions.

After the show ended, the machine was placed at Liebherr's facilities in Saline, Michigan, where it was used as a demonstration machine for customers. In December 1997, Liebherr received a request to place the machine in a Buffalo, New York facility of American Axle & Manufacturing, Inc. ("AAM") for demonstration and testing. The machine was sent there in March 1998, and remained there for at least several months, during which time AAM compared it against a Gleason machine that had been sent by Gleason to AAM, also for testing purposes. The next significant event occurred on June 23, 1998, when Gary Kimmet, Gleason's vice-president of regional operations for the Americas wrote a letter to Robert Greene ("Greene"), the manufacturing engineering supervisor at AAM's Plant 1 in Detroit, advising him of the commencement of this patent action against Oerlikon. He stated that Gleason's machine "is being unfairly attacked by a competitor." Ex. 9, Dkt. #59. The letter continued:

we have taken steps to protect our investment in multi-axis machines by filing a patent infringement suit in the United States against Klingelnberg-Oerlikon Geartec Vertriebs-GmbH, Oerlikon Geartec, AG, and Liebherr-America, Inc. . . . [W]e have requested the court to hold that the Oerlikon C22 and C28 machines infringe our patent on multi-axis bevel gear cutting machines, and to grant us a permanent injunction against the sale and use of the Oerlikon C22 and C 28, or similar machines, in the United States.

Included with the letter was a Gleason press release announcing the commencement of the instant action.

Oerlikon's president, U. Koller, and vice-president of engineering and technology, A. Rutschke, responded in a letter dated July 1, 1998 to AAM's executive vice-president of manufacturing, Joel Robinson ("Robinson"). Koller told Robinson that he considered the charges brought against Oerlikon's products to be "completely unfounded" and that he regarded the 402 patent as invalid.


I General Standards

Summary judgment is appropriate where "there is no genuine issue as to any material fact and . . . the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). However, the burden of demonstrating the absence of any genuine issue of material fact rests on the moving party, Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986), and, in ruling on a motion for summary judgment, the Court "must view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in its favor." McKelvie v. Cooper, 190 F.3d 58, 61 (2d Cir. 1999).

To defeat summary judgment, the non-moving party must go beyond the pleadings and designate "specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). A genuine issue of material fact exists only if the record, taken as a whole, could lead a reasonable trier of fact to find in favor of the non-movant. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). On a motion for summary judgment, "a court's responsibility is to assess whether there are any factual issues to be tried." Coach Leatherware Co. v. ...

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