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
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
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.
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. ...