United States District Court, W.D. New York
April 13, 2005.
PRO-TECH WELDING AND FABRICATION, INC., Plaintiff,
THOMAS P. LAJUETT, both individually and doing business as R.C.S. SNO-PRO, et al., Defendants.
The opinion of the court was delivered by: DAVID LARIMER, Chief Judge, District
DECISION AND ORDER
Plaintiff, Pro-Tech Welding and Fabrication, Inc. ("Pro-Tech"),
commenced this action against three of its former employees and
four corporations, alleging claims based on patent infringement,
misappropriation of trade secrets, breach of contract, and other
theories. Five of the defendants Thomas P. LaJuett (both
individually and d/b/a R.C.S. Sno-Pro), Gerald S. LaJuett, Steven
Sepaniak, RCS Manufacturing and Development, LLC, and Rochester
Custom Steel, Inc. (collectively "the moving defendants") have
moved for summary judgment dismissing all of plaintiff's claims
against them, and granting judgment in favor of the moving
defendants on their counterclaims against Pro-Tech. Pro-Tech has
cross-moved for summary judgment dismissing the moving
defendants' counterclaims. BACKGROUND
Pro-Tech is a New York corporation engaged in the manufacture
and sale of a variety of types of metal equipment for application
in various uses. One of its products is a snow removal device
which has the trade name "Sno Pusher." The Sno Pusher is similar
to a conventional snowplow, except that it is designed to push
snow forward rather than off to one side. This type of device
(sometimes referred to generically as a "snow pusher" or "box
plow") has certain advantages over conventional plows in certain
applications, such as removing snow from parking lots, where the
presence of "side spill" from a conventional plow would required
the snowplow operator to make more passes than would be required
with a snow pusher.
Pro-Tech is also the owner of United States Patent No.
5,724,755 ("the '755 patent"), which claims a "snow pusher [that]
includes a blade with horizontal and vertical reinforcing
channels, a reversible and removable rubber edge fastened to the
blade and extending below its bottom edge, and a side plate
extending forward from each end of the blade." Pro-Tech alleges
that defendants have infringed upon that patent by selling a snow
pusher that incorporates all of the claimed elements of
plaintiff's patented design.
In this action, Pro-Tech alleges, in short, that during their
employment at Pro-Tech, defendants Thomas and Gerald LaJuett
("the LaJuetts") were privy to certain confidential information
concerning Pro-Tech's manufacturing and marketing of the Sno
Pusher, and that, in violation of their employment contracts,
they set up a rival business under the name of "Rochester Custom Steel" ("RCS"). When it discovered what they had done,
Pro-Tech fired the LaJuetts in May 2000.
Pro-Tech also alleges that defendant Steven Sepaniak, while
employed in Pro-Tech's sales department, began working at first
surreptitiously and later overtly with the LaJuetts, who by
2001 had begun marketing a snow pusher of their own, under the
name "Sno-Pro." Because Sepaniak's activities, which allegedly
included diverting customers from Pro-Tech to RCS, were allegedly
in breach of his employment agreement, Pro-Tech fired him in
Pro-Tech alleges that by manufacturing and selling the Sno-Pro
snow pusher, the moving defendants have infringed upon the '755
patent. Pro-Tech also alleges that defendants have
misappropriated Pro-Tech's trade secrets, breached certain
confidentiality and non-solicitation agreements that they had
entered into with Pro-Tech, and committed various torts, such as
breach of fiduciary duty, conversion, and tortious interference
with contract.*fn1 In their counterclaims, defendants allege
that Pro-Tech has interfered with defendants' relationships with
their customers and suppliers, by threatening to sue or otherwise
take action against those customers and suppliers if they
continued doing business with RCS. DISCUSSION
Defendants make two arguments in support of their motion for
summary judgment. First, defendants contend that there is no
evidence of patent infringement. Second, in the alternative,
defendants contend that the '755 Patent is invalid as a matter of
law for a number of reasons. Both arguments relate to the
patent's claim of a "blade including a plurality of horizontal
and vertical reinforcing channels on the back thereof. . .".
'755 Patent, Col. 3, Lines 4-5. In support of their contention
that defendants' product does not infringe the patent in issue,
defendants maintain that their Sno-Pro Pusher does not use
vertical reinforcing channels, but rather "boxed gussets."
Concerning invalidity, defendants contend that the inventor of
the invention claimed in the '755 Patent, Michael Weagley, a
principal of Pro-Tech, did not disclose to the patent examiner
two known items of prior art: that is, two other snow pushers
that incorporated nearly all of the elements set forth in the
listed claims of the '755 Patent, including the use of
I turn first to the question of infringement. If plaintiffs
have failed to establish patent infringement, then there is no
need to explore issues relating to the patent's validity.
I. Patent Infringement
A. General Principles
A determination of patent infringement requires a two-step
analysis. "First, the claim must be properly construed to
determine its scope and meaning. Second, the claim as properly
construed must be compared to the accused device or process."
Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993). "In order for a court to
find infringement, the plaintiff must show the presence of every
element or its substantial equivalent in the accused device."
Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1199
(Fed. Cir. 1994).
The first step, then, is to construe any disputed claim terms.
In a patent infringement case that is to be tried to a jury, it
is the court's task to construe the claims of the patent.
Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-91
(1996); see also Apex Inc. v. Raritan Computer, Inc.,
325 F.3d 1364, 1370 (Fed. Cir.) ("claim construction . . . is a question
of law"), cert. denied, 540 U.S. 1073 (2003). In determining
the meaning of disputed terms, the court should look first to the
language of the claims themselves. Bell & Howell Document Mgmt.
Prod. Co. v. Altek Sys., 132 F.3d 701, 705 (Fed. Cir. 1997);
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996). There is a "strong presumption" that the words of the
claims should be given their ordinary and customary meaning as
understood by one of ordinary skill in the art, unless the patent
or its file history makes clear that a particular special
definition is intended. Apex, 325 F.3d at 1371; K-2 Corp. v.
Salomon S.A., 191 F.3d 1356, 1362-63 (Fed. Cir. 1999);
Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477
(Fed. Cir. 1998); Vitronics, 90 F.3d at 1582; Hoechst Celanese
Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir.), cert.
denied, 519 U.S. 911 (1996). "Additionally, dictionary
definitions may be consulted in establishing a claim term's
ordinary meaning." Apex, 325 F.3d at 1371.
"[S]econd, it is always necessary to review the specification
to determine whether the inventor has used any terms in a manner
inconsistent with their ordinary meaning. The specification acts
as a dictionary when it expressly defines terms used in the
claims or when it defines terms by implication." Vitronics, 90 F.3d at 1582; Markman,
52 F.3d at 979. Because the specification contains a written description of
the invention which must be clear and complete enough to enable
those of ordinary skill in the art to practice the invention, the
specification "is the single best guide to the meaning of a
disputed term." Vitronics, 90 F.3d at 1582.
"Third, the court may also consider the prosecution history of
the patent, if in evidence." Id. The Federal Circuit has
described the prosecution history as "often of critical
significance in determining the meaning of the claims." Id.
(citing Markman, 52 F.3d at 980).
If this "intrinsic" evidence, i.e. the claims, the
specification, and the prosecution history, is unambiguous, the
court may not look to other, extrinsic evidence. Elkay Mfg. Co.
v. Ebco Mfg. Co., 192 F.3d 973, 976-77 (Fed. Cir. 1999), cert.
denied, 529 U.S. 1066 (2000); Pitney Bowes, Inc., v.
Hewlett-Packard Co., 182 F.3d 1298, 1308-9 (Fed. Cir. 1999);
Vitronics, 90 F.3d at 1583. Extrinsic evidence is that evidence
which is external to the patent and file history, such as expert
testimony, inventor testimony, dictionaries, and technical
treatises and articles. Vitronics, 90 F.3d at 1584. The court
may receive extrinsic evidence to educate itself about the
invention and the relevant technology, but it may not use
extrinsic evidence to arrive at a claim construction that is
clearly at odds with the construction dictated by the intrinsic
evidence. See Goldenberg v. Cytogen, Inc., 373 F.3d 1158, 1164
(Fed. Cir. 2004) (extrinsic evidence "may not be used to vary the
meaning disclosed by the patent itself"); accord Altiris, Inc.
v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003); Key
Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir.
1998). Extrinsic evidence, then, may be used only to help the
court come to the proper understanding of the claims; it may not
be used to vary or contradict the claim language. B. Application to this Case
Before the Court construes the relevant claim language in this
case, some further understanding of the similarities and
differences between Pro-Tech's Sno Pusher and defendants' Sno-Pro
is needed. There is no real dispute here that plaintiff's Sno
Pusher does use horizontal and vertical channels to provide added
strength to the blade. The real issue, with respect to
infringement at least, is whether the term "vertical channel," as
used in the '755 patent, is broad enough to include defendants'
"boxed gusset" design. Is defendants' design such that it
As illustrated in Figure 4 of the '755 patent, there are three
horizontal channels (designated "11" in Figure 4 of the patent,
which is attached as Exhibit A to this Decision and Order)
running across the back of the blade, and three vertical channels
("12") between the horizontal channels. The patent states that
all the channels are welded to the blade. '755 Patent col. 2 line
According to defendants, their Sno-Pro design does not
utilize vertical reinforcing channels, but rather "boxed
gussets."*fn2 A gusset, in general, is a flat, usually
angled piece of metal used for strengthening a
structure.*fn3 Defendants' expert, Ronald N. Salzman, who
holds a doctorate in Mechanical Engineering, describes a boxed
gusset as "a double gusset with a plate welded between." Salzman
Aff. (Dkt. #56) ¶ 5(F). A critical issue in this case is whether
defendants' boxed gusset constitutes a "channel" as that term is
used in the '755 patent. The relevant claim language of the '755 patent states that it
claims "an upstanding transverse blade with a front, back, and
bottom, said blade including a plurality of horizontal and
vertical reinforcing channels on the back thereof. . . ." The
claims themselves give no further explanation of what is meant by
"channel." The specification also gives no definition of
"channel," though it does state that "[w]elded straight channels
are inherently stronger and not prone to failure by buckling, as
compared to typical prior art vertical curved ribs cut from steel
plate." '755 Patent col. 2 lines 38-41.
The claims do, however, appear to draw a distinction between a
"channel" and a "gusset." In addition to claiming "a plurality
of horizontal and vertical reinforcing channels on the back" of
the blade, Claim 1 claims "a horizontal backing member with a
plurality of vertical gussets mounted on said blade along and
behind the bottom thereof." '755 Patent col. 3 lines 21-26.
The Merriam-Webster Online Dictionary (http://m-w.com) gives
several definitions for the word "channel," the most apt of which
is "a long gutter, groove, or furrow; a metal bar of flattened
U-shaped section." Similary, the Oxford English Dictionary
(http://oed.com) defines "channel" as a "lengthened groove or
furrow on any surface," and also states that "channel" can be
"[s]hort for channel bar," which is defined as "an iron bar or
beam flanged to form a channel on one side." Those definitions do
aptly describe the channels shown in Figure 4 of the '755 patent,
which appear to be long pieces of metal with a bracket-shaped
Plaintiff's expert, James B. Taylor, who holds a doctorate in
Industrial Engineering, opines that "the `boxed gusset' utilized
by the defendants is a vertical channel as it comprises all of
the elements one of ordinary skill in the art at the time of the
invention would have understood (i.e., a pair of sides or flanges connected to and extending in parallel
from a web)." Taylor Aff. (Dkt. #71) ¶ 16. He states that the
fact that defendants' boxed gusset has triangular rather than
rectangular sides is immaterial, because "all cross sections of
the [boxed gusset] channel are "U" shaped. . . ." Id. ¶ 14.
Salzman, on the other hand, states in his affidavit that a
boxed gusset is not the same thing as a channel. He opines that
"channels are hot-rolled factory made structural steel shapes"
that are "identified as `C', `MC', or `U' shapes in the art."
Salzman Aff. ¶¶ 5(E), 5(F). He adds that a "gusset . . . is a
piece of steel plate used as a reinforcement to provide
stiffening," and that "welding a plate between two gussets does
not create a channel." Id. ¶ 5(F).
Based simply on the claim language and the ordinary meaning of
the term "channel," it is not immediately apparent whether
"channel" should be construed to include a "boxed gusset." Given
its commonly understood meaning, the term "channel" would not
generally bring to mind an object with triangular sides. At the
same time, though, it does seem that one could construct a
channel by welding three metal plates together to form a U or
As stated, however, the third category of intrinsic evidence
that a court may consider is the prosecution history, which
"contains the complete record of all the proceedings before the
Patent and Trademark Office, including any express
representations made by the applicant regarding the scope of the
claims." Vitronics, 90 F.3d at 1582. Based upon the prosecution
history of the '755 patent, I conclude that the term "channel,"
as used in the patent, does not include a "boxed gusset."
"[E]ven where the claim language is not ambiguous, `[t]he
prosecution history limits the interpretation of claim terms so
as to exclude any interpretation that was disclaimed during prosecution.'" Schumer v. Laboratory Computer Systems, Inc.,
308 F.3d 1304, 1313 (Fed. Cir. 2002) (quoting Southwall Techs.,
Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir.), cert.
denied, 516 U.S. 987 (1995)). "Thus, the prosecution history
limits even clear claim language so as to exclude any
interpretation that was surrendered during prosecution, but only
where the accused infringer can demonstrate that the patentee
surrendered that interpretation `with reasonable clarity and
deliberateness.'" Id. (quoting Pall Corp. v. PTI Techs.,
Inc., 259 F.3d 1383, 1393 (Fed. Cir. 2001), vacated on other
grounds sub nom. PTI Techs., Inc. v. Pall Corp., 535 U.S. 1109
(2002)) (additional internal quotes omitted).
The inventor, Michael Weagley, submitted a patent application
for a snow pusher on October 28, 1996. See Basch Aff. (Dkt.
#70) Ex. I. Claims 1 and 2 of the application stated in part that
Weagley claimed a snow pusher with "an upstanding transverse
blade including a plurality of horizontal and vertical
reinforcing channels on the back thereof. . . ." Id. 5, 6.
On May 12, 1997, the examiner rejected Claims 1 and 2, in part
on grounds of obviousness. In particular, the examiner stated
that an existing patent ("Goldberg") "shows a snowplow having a
transverse blade with vertical channels . . . but does not show
horizontal channels." He also stated that another patent
("Meyer") "shows a snow plow blade with a rubber edge having
horizontal channels. . . ." Basch Aff. Ex. I at 22. He then
stated that "[i]t would have been obvious to one of ordinary
skill in the art to modify Goldberg to include horizontal
channels as taught by Meyer to improve the strength of the blade
with these reinforcement members." Id.
In response to that decision, Weagley submitted an amended
application on August 13, 1997. In support of the amended
application, Weagley stated that the patent examiner's reference
to Goldberg as a patent for a snowplow blade with vertical channels
on its back "is a misperception. Goldberg's `angle bars' . . .
are not channels." Basch Aff. Ex. I at 30. Similarly, Weagley
asserted that the examiner's description of the Meyer plow as
having horizontal channels on its back was also a "misperception.
Meyer's angle irons . . . are not channels. The applicant's
[i.e. Weagley's] channels give strength and rigidity to the
blade structure, and for this purpose, channels are greatly
superior to angles." Id.
On September 8, 1997, the Patent and Trademark Office allowed
the amended application. In his reasons for allowance, the
examiner stated that "[t]he prior art of record fails to show or
suggest a snows [sic] pusher that includes a blade having
vertical and horizontal reinforcing channels. . . ." Gianforti
Aff. Ex. J at 3 (emphasis in original). The examiner, then,
apparently agreed with Weagley that the reinforcing structures
disclosed by the Goldberg and Meyer patents were not "channels."
It appears clear then that during the prosecution of the patent
application, Weagley expressly limited the scope of the term
"channel" in order to avoid rejection of the application based on
prior art. Although the prior art apparently did not employ boxed
gussets, Weagley made clear that he did not intend the term
"reinforcing channels" to include all types of reinforcing
structures on the back of the plow blade.*fn4 Weagley
apparently did this in order to avoid prior art, i.e. Goldberg
and Meyer. Plaintiff cannot obtain here what it abandoned during
prosecution of the patent. "Claims that have been narrowed in
order to obtain issuance over the prior art cannot later be
interpreted to cover that which was previously disclaimed during
prosecution." Elekta Instrument S.A. v. O.U.R. Scientific
Intern., Inc., 214 F.3d 1302, 1308 (Fed. Cir. 2000) (citing
Graham v. John Deere Co., 383 U.S. 1, 33 (1966)). See also
Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570,
1576 (Fed. Cir. 1995) ("Claims may not be construed one way in
order to obtain their allowance and in a different way against
accused infringers"); Lemelson v. General Mills, Inc.,
968 F.2d 1202, 1206 (Fed. Cir. 1992) ("Prosecution history is especially
important when the invention involves a crowded art field, or
when there is particular prior art that the applicant is trying
to distinguish"), cert. denied, 506 U.S. 1053 (1993); Advance
Transformer Co. v. Levinson, 837 F.2d 1081, 1083 (Fed. Cir.
1988) ("Positions taken in order to obtain allowance of an
applicant's claims are pertinent to an understanding and
interpretation of the claims that are granted by the PTO, and may
work an estoppel as against a subsequent different or broader
I am aware that the Court should "consider? the prosecution
history . . . to determine whether the applicant clearly and
unambiguously `disclaimed or disavowed [any interpretation]
during prosecution in order to obtain claim allowance.'"
Middleton, Inc. v. Minn. Mining & Mfg. Co., 311 F.3d 1384, 1388
(Fed. Cir. 2002) (quoting Standard Oil Co. v. Am. Cyanamid Co.,
774 F.2d 448, 452 (Fed. Cir. 1985)). I also recognize that Weagley
did not expressly distinguish channels from "boxed gussets,"
since neither the Goldberg nor Meyer patent employed boxed
gussets. Nonetheless, Weagley did make clear that the term "channel," as used in the
patent application, was not meant to include all reinforcing
I also note that it appears from the '755 patent itself that
this is a "crowded art field," which makes prosecution history
"especially important. . . ." Lemelson, 968 F.2d at 1206. The
patent states that "[s]now pushers of various configurations are
presently known," and that "[t]hey are typically characterized by
one or more of the following: a relatively complex mounting
arrangement, a steel blade as the snow scraper, a relatively
light construction backed with ribs and angles." '755 patent,
col. 1, lines 9-13. The patent examiner's initial rejection of
the patent application on grounds of obviousness also suggests
that the field is a crowded one. The '755 patent may represent
some improvement over prior art, but it seems clear that the
patentee was not striking out into virgin territory.
Plaintiff's expert, Dr. Taylor, opined that a person of
ordinary skill in the art would understand the term "channel" to
mean "a mechanical structure with a U-shaped cross section," and
that "a channel includes a pair of parallel sides or flanges . . .
that extend from the edges of a web or back . . . in a
direction generally perpendicular to the web." Taylor Aff. ¶ 13.
He also states that "[d]epending upon the orientation of the
channel as described in the '755 patent, the sides or flanges
would either lie parallel with a generally horizontal plane
(horizontal channels) or in a generally vertical plane (vertical
channels), and could be curved so as to enable welding to the
rear surface of the curved pusher blade." Id.
Based on that construction of "channel," Taylor further opines
that a "simple observation of the cross-section of [defendants']
`boxed gusset' clearly shows it to be a channel," because "all
cross sections of the channel are `U' shaped." Id. ¶ 14. I am not
persuaded by that reasoning. Focusing solely on the
cross-section, and ignoring the other attributes of the
defendants' design seems unwarranted. Likewise, Taylor states
that "the non-rectangular nature of the side flanges [of
defendants' boxed-gusset design] is not a distinguishing feature
as all cross sections of the channel are `U' shaped," but he
offers no real reason why the boxed gusset's U-shaped
cross-section renders its triangular sides "not a distinguishing
After considering the relevant evidence and opinions of the
parties' experts, I believe that the triangular shape of the
sides of defendants' boxed gusset design is significant, and
that it does not create a "channel" as that term is used in the
'755 patent. The vertical channels depicted in the '755 patent
have a curved back that parallels the curvature of the snow
pusher blade, so that the channel has a uniform depth throughout.
Defendants' design, on the other hand, uses pairs of
triangular-shaped gussets with a metal plate welded between them.
The back of this "boxed gusset," i.e., where the connecting
plate is located, is not curved, nor does it follow the shape of
the blade, but rather slants at a downward angle from near the
top of the back of the pusher blade to the horizontal posts that
connect the blade to a vehicle. Thus, while the backs of
plaintiff's vertical channels run parallel to the back of the
blade, the back of defendants' boxed gusset runs from near the
top of the back of the blade to a point some distance from the
blade, near the connecting mechanism. Such a structure does not
call to mind a "groove" or "furrow," which, as stated, is the
commonly understood meaning of "channel."
Another difference between the two designs is that, although
any given cross-section of the boxed gusset might indeed be
U-shaped, the depth of the cross-section would vary depending on where the cross-section was taken. The depth would be greatest at
a cross-section bisecting the boxed gusset, and smallest at a
cross-section near either end of the connecting plate. A
cross-section of one of plaintiff's channels, however, would be
the same at any point along its length.
In accordance with the commonly understood meaning of the term
"channel," and in light of the prosecution history, I therefore
conclude that, as used in the '755 patent, "vertical channel"
refers to a structure with a U- or bracket-shaped cross-section
that runs vertically down the back of the plow blade, and which
generally conforms throughout its length to the shape or
curvature of the back of the blade. It does not, then, include a
so-called "boxed gusset," with a back that does not conform to
the blade's shape, but rather slopes at a downward angle away
from the top of the blade.
C. Doctrine of Equivalents
Plaintiff also contends that, even if defendants' design does
not literally infringe the '755 patent claims, it still should be
found to infringe under the doctrine of equivalents.
"Infringement under the doctrine of equivalents occurs when a
claimed limitation and the accused product perform substantially
the same function in substantially the same way to obtain
substantially the same result." V-Formation, Inc. v. Benetton
Group SpA, ___ F.3d ___, 2005 WL 590662, at *5 (Fed. Cir. 2005)
(citing Warner-Jenkinson Co. v. Hilton-Davis Chem. Co.,
520 U.S. 17, 40 (1997); accord Business Objects, S.A. v.
Microstrategy, Inc., 393 F.3d 1366, 1374 (Fed. Cir. 2005). The
"essential inquiry" is whether "the accused product or process
contain[s] elements identical or equivalent to each claimed
element of the patented invention[.]" Warner-Jenkinson,
520 U.S. at 40. "Infringement under the doctrine of equivalents requires that
any difference between the claim elements at issue and the
corresponding elements of the accused product be insubstantial."
Novartis Pharmaceuticals Corp. v. Eon Labs Mfg., Inc.,
363 F.3d 1306, 1312 (Fed. Cir. 2004) (citing Warner-Jenkinson,
520 U.S. at 39-40). The doctrine should not be applied so broadly as to
"erase `meaningful structural and functional limitations of the
claim on which the public is entitled to rely in avoiding
infringement.'" Sage Prods., Inc. v. Devon Indus., Inc.,
126 F.3d 1420, 1424 (Fed. Cir. 1997) (quoting Conopco, Inc. v. May
Dep't Stores Co., 46 F.3d 1556, 1562 (Fed. Cir. 1994)). Like
literal infringement, infringement under the doctrine of
equivalents presents a question of fact. Bai v. L & L Wings,
Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998). Summary judgment may
therefore be granted only "if the record contains no genuine
issue of material fact and leaves no room for a reasonable jury
to find equivalence." Leggett & Platt, Inc. v. Hickory Springs
Mfg. Co., 285 F.3d 1353, 1357 (Fed. Cir. 2002).
Plaintiff's expert states that defendants' "boxed gusset is . . .
utilizing a substantially similar mechanical structure to
perform the reinforcement function intended by the recited
vertical channel in claims 1 and 2 of the '755 patent, to achieve
the same result of providing reinforcement to the back side of
the blade and between the horizontal channels." Dkt. #71 ¶ 17. He
adds that "the `boxed gusset' has a mechanical structure
identical to a channel (parallel sides or flanges with a web
spanning there between), that is similarly welded to the rear of
the blade between the horizontal channels, resulting in
reinforcement and improved rigidity of the snow pusher as was the
function of the vertical channels in the '755 patent." Id. In response, defendants rely on the doctrine of prosecution
history estoppel, which "may bar the patentee from asserting
equivalents if the scope of the claims has been narrowed by
amendment during prosecution." Honeywell Int'l Inc. v. Hamilton
Sundstrand Corp., 370 F.3d 1131, 1139 (Fed. Cir. 2004) (citing
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
535 U.S. 722, 733-34 (2002)), petition for cert. filed, 73 U.S.L.W. 3146
(U.S. Aug. 31, 2004) (No. 04-293).
As the Supreme Court has explained, the theory behind this
doctrine is that:
[w]hen . . . the patentee originally claimed the
subject matter alleged to infringe but then narrowed
the claim in response to a rejection, he may not
argue that the surrendered territory comprised
unforeseen subject matter that should be deemed
equivalent to the literal claims of the issued
patent. . . . [H]is decision to . . . submit an
amended claim is taken as a concession that the
invention as patented does not reach as far as the
Festo, 535 U.S. at 733-34. Unlike the doctrine of equivalents,
"[p]rosecution history estoppel as a limit on the doctrine of
equivalents presents a question of law." Glaxo Wellcome, Inc. v.
Impax Labs., Inc., 356 F.3d 1348
, 1351 (Fed. Cir. 2004) (quoting
Wang Labs., Inc. v. Mitsubishi Elecs. America, Inc.,
103 F.3d 1571, 1578 (Fed. Cir.), cert. denied, 522 U.S. 818 (1997)).
"There are two distinct theories that fall under the penumbra
of prosecution history estoppel amendment-based estoppel and
argument-based estoppel." Deering Precision Instruments, L.L.C.
v. Vector Distribution Systems, Inc., 347 F.3d 1314, 1324 (Fed.
Cir. 2003). Amendment-based "[e]stoppel arises when an amendment
is made to secure the patent and the amendment narrows the
patents scope." Festo, 535 U.S. at 736. "The scope of the
estoppel depends on `the inferences that may reasonably be drawn
from the amendment.'" Allen Eng'g Corp. v. Bartell Indus.,
Inc., 299 F.3d 1336, 1350 (Fed. Cir. 2002) (quoting Festo,
535 U.S. at 737-38). See also Pioneer Magnetics, Inc. v. Micro
Linear Corp., 330 F.3d 1352, 1357 (Fed. Cir. 2003) (describing amendment of claim to avoid prior art as "the classic basis for
the application of prosecution history estoppel").
Argument-based estoppel can arise if the patentee "relinquished
[a] potential claim construction . . . in an argument to overcome
or distinguish a reference." Elkay Mfg., 192 F.3d at 979. See
also Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336,
1350 (Fed. Cir. 2002) ("An estoppel also may be found on the
basis of arguments made during prosecution of the application to
secure the allowance of claims"). "To invoke argument-based
estoppel, the prosecution history must evince a `clear and
unmistakable surrender of subject matter.'" Eagle Comtronics,
Inc. v. Arrow Communication Labs., Inc., 305 F.3d 1303, 1316
(Fed. Cir. 2002) (quoting Pharmacia & Upjohn Co. v. Mylan
Pharms., Inc., 170 F.3d 1373, 1376-77 (Fed. Cir. 1999)).
As previously explained, Weagley responded to the patent
examiner's initial rejection of his application by submitting an
amended application. The amended application did not amend the
claim language concerning channels, however. Rather, Weagley
argued to the patent examiner that channels were distinguishable
from other types of reinforcement devices such as angle irons or
bars. He therefore disavowed any contention that such devices
were equivalent to channels.
Again, I recognize that Weagley did not (and had no occasion
to) expressly distinguish his "channels" from "boxed gussets." He
did, however, contend that channels were different from other
types of reinforcing structures, and plaintiff should not now be
allowed to broaden the scope of the claims in order to cover a
broad range of equivalent products. If the patent were read to
cover, under the doctrine of equivalents, any structure attached
to the back of the blade in order to reinforce it, the patent
would cover the very prior art that Weagley sought to distinguish
in his amended application. This is particularly so because the '755 patent is clearly not
a "pioneer" patent, i.e., a patent for a "broad breakthrough
invention." Sun Studs, Inc. v. ATA Equipment Leasing, Inc.,
872 F.3d 978, 987 (Fed. Cir. 1989). Such an invention "merits a
broader scope of equivalents than does a narrow improvement in a
crowded technology." Id.; see also Augustine Med., Inc. v.
Gaymar Indus., Inc., 181 F.3d 1291, 1301 (Fed. Cir. 1999)
("Without extensive prior art to confine and cabin their claims,
pioneers acquire broader claims than non-pioneers who must craft
narrow claims to evade the strictures of a crowded art field").
As noted earlier, the use of vertical reinforcing structures
appears to have been common in the field of snowplow or snow
pusher design at the time of Weagley's patent application, and it
is obvious from the patent that he viewed his design as an
improvement over the "[s]now pushers of various configurations"
that were already known to him. '755 Patent, col. 1, line 9. See
also '755 Patent, col. 1, line 18 (noting that one object of
claimed invention was "improved strength of construction"). "The
patentee bears the burden of overcoming the presumption by
`showing that the amendment does not surrender the particular
equivalent in question,'" Allen Eng'g, 299 F.3d at 1350
(quoting Festo, 535 U.S. at 725), and I conclude that plaintiff
has failed to do so.
II. Remaining Claims
In their answer, defendants have asserted several affirmative
defenses alleging that the '755 patent is invalid, on various
grounds. In their motion, defendants also ask the Court to
declare the patent invalid. My finding of noninfringement,
however, renders it unnecessary for the Court to consider
defendants' invalidity arguments. See Lacks Indus., Inc. v.
McKechnie Vehicle Components USA, Inc., 322 F.3d 1335, 1346 (Fed. Cir. 2003) (declining to
reach validity issues "because we have affirmed the trial court's
grant of summary judgment of non-infringement and because
invalidity was raised below merely as an affirmative defense to
infringement"); Prima Tek II, L.L.C. v. Polypap, S.A.R.L.,
318 F.3d 1143, 1152-53 (Fed. Cir. 2003) (same); see also Cardinal
Chem. Co. v. Morton Int'l, Inc., 508 U.S. 83, 93 (1993) (holding
that an appellate court's affirmance of a finding of
non-infringement is not per se a sufficient reason for vacating
a declaratory judgment holding the patent invalid, but
distinguishing between "[a]n unnecessary ruling on an affirmative
defense" and "the necessary resolution of a counterclaim for a
In addition, both sides have asserted claims against each other
under state law for unfair competition, breach of contract, etc.
The Second Circuit has stated that, in general, "if [all] federal
claims are dismissed before trial . . ., the state claims should
be dismissed as well." Castellano v. Board of Trustees,
937 F.2d 752, 758 (2d Cir. 1991) (quoting United Mine Workers v.
Gibbs, 383 U.S. 715, 726 (1966)); accord Giordano v. City of
New York, 274 F.3d 740, 754 (2d Cir. 2001); see also Sadallah
v. City of Utica, 383 F.3d 34, 40 (2d Cir. 2004) ("because
plaintiffs no longer have any viable federal claim, any remaining
state law claims belong in state, rather than federal, court").
All of the parties' state law claims are therefore dismissed
without prejudice to refiling in state court.
Lastly, plaintiff has asserted certain claims against the
non-moving defendants, Westchester Machinery & Supply Co., Inc.,
and J&S Truck and Equipment Sales and Service. The moving
defendants have also asserted a cross-claim against the
non-moving defendants for contribution and indemnity. The Court has been informed by counsel for both plaintiffs and
the non-moving defendants that they have reached a settlement of
plaintiffs' claims against the non-moving defendants. Those
claims are therefore dismissed. The moving defendants'
cross-claims against the non-moving defendants are dismissed as
The motion for summary judgment (Dkt. #48) filed by defendants
Thomas P. Lajuett (both individually and d/b/a R.C.S. Sno-Pro),
Gerald S. LaJuett, Steven Sepaniak, RCS Manufacturing and
Development, LLC, and Rochester Custom Steel, Inc. ("the moving
defendants") is granted in part and denied in part. Counts I and
II of the Complaint (Dkt. #41) are dismissed with prejudice. The
remaining counts (Counts III through XIV) are dismissed without
prejudice. In all other respects, defendants' motion is denied.
The moving defendants' counterclaims are dismissed without
prejudice to refiling in state court. Plaintiff's cross-motion
for partial summary judgment (Dkt. #59) is denied as moot.
Pursuant to the parties' settlement agreement, plaintiffs'
claims against defendants Westchester Machinery & Supply Co.,
Inc., and J&S Truck and Equipment Sales and Service ("the
non-moving defendants") are dismissed with prejudice. The moving
defendants' cross-claim against the moving defendants is
dismissed as moot.
IT IS SO ORDERED.