The opinion of the court was delivered by: DAVID LARIMER, Chief Judge, District
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.
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 ...