The opinion of the court was delivered by: Neal P. McCurn, Senior District Judge
HARRIS BEACH PLLC NEAL LOUIS SLIFKIN, ESQ. Attorneys for Plaintiffs LAURA W. SMALLEY, ESQ. 99 Garnsey Road Pittsford, NY 14534 HARRIS BEACH PLLC TED H. WILLIAMS, ESQ. Attorneys for Plaintiffs One Park Place 4th Floor 300 South State Street Syracuse, NY 13202 MEREK, BLACKMON & VOORHEES, P.C. JAMES J. MEREK, ESQ. Attorneys for Defendant 673 South Washington Street Alexandria, VA 22314 MENTER, RUDIN & TRIVELPIECE, CELIA E. MOORE, ESQ. P.C. Attorneys for Defendant 308 Maltbie Street, Suite 200 Syracuse, NY 13204-1498
MEMORANDUM, DECISION AND ORDER
Presently before the court in this patent infringement action are separate motions for partial summary judgment by plaintiffs and counter defendants, NuClimate Air Quality Systems, Inc. ("NuClimate") and James Miller ("Miller") (collectively, "Plaintiffs"), and by defendant and counter plaintiff Airtex Manufacturing Partnership ("Airtex").*fn1 Opposition and reply papers have been submitted regarding each motion. Also pending is a motion by Airtex for leave to file a supplemental memorandum in further opposition to Plaintiffs' motion for summary judgment. Plaintiffs oppose. Decision on all motions is rendered on the papers submitted, without oral argument.
This action involves U.S. Patent No. 6,623,353 ("the '353 patent"), entitled "Venturi Type Air Distribution System." See Decl. of Muammer Yazici, October 23, 2008, Dkt. No. 34-2 ("Yazici Decl."), Tab A. Airtex, current owner of the '353 patent, contends that two air handling systems owned by NuClimate -- the Q-4 air terminal and the Q-360 air terminal -- infringe the '353 patent. This court previously decided a motion for a preliminary injunction by M & I Heat Transfer Products, Ltd. ("M & I"), former owner of the '353 patent, wherein it enjoined Plaintiffs from "the further manufacture, use, sale, and/or offer for sale of" the Q-4 model but denied the motion regarding the Q-360 model. NuClimate Air Quality Sys., Inc. v. M & I Heat Transfer Prods., Ltd., No. 5:08-CV-0317, 2008 WL 2917589, at *22 (N.D.N.Y. July 24, 2008). Familiarity with the background of this action as set forth in this court's Memorandum, Decision and Order regarding the motion for preliminary injunction, is presumed. See id., at *1-5.
Airtex now moves for partial summary judgment, seeking an order that the Q-4 air terminal infringes several claims of the '353 patent, that the '353 patent is valid and enforceable, and that Miller is not an inventor of the '353 patent. Plaintiffs also move for partial summary judgment, seeking an order that their Q-360 air terminal does not infringe the '353 patent. Each motion is opposed and each movant has replied. Airtex further moves to file a supplemental memorandum or sur-reply in opposition to Plaintiffs' motion for partial summary judgment, which Plaintiffs oppose. For the following reasons, the court grants both motions for partial summary judgment, and denies Airtex's motion for leave to file a supplemental memorandum. Because Airtex sought damages on its counter claim but has limited its motion for summary judgment to issues of liability, the issue of damages remains to be resolved at trial.
A. Summary Judgment Standard
A motion for summary judgment shall be granted "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). See also Beyer v. County of Nassau, 524 F.3d 160, 163 (2d Cir. 2008). "In ruling on a motion for summary judgment, the district court may rely on any material that would be admissible or usable at trial." Major League Baseball Props., Inc. v. Salvino, Inc., 542 F.3d 290, 309 (2d Cir. 2008) (internal quotation and citation omitted).
The movant has the burden to show that no genuine factual dispute exists. See Vermont Teddy Bear Co., Inc. v. 1-800 Beargram Co., 373 F.3d 241, 244 (2d Cir. 2004) (citing Adickes v. S. H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598 (1970)). Moreover, when the court is deciding a motion for summary judgment, it must resolve all ambiguities and draw all reasonable inferences in the non-movant's favor. See id.
When deciding whether a material issue of fact is in dispute, the court is cognizant that a fact is "material" if "it might affect the outcome of the suit under governing law." White v. Haider-Shah, No. 9:05-CV-193, 2008 WL 2788896, at *4 -5 (N.D.N.Y. Jul. 17, 2008) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510 (1986)). Also, "[a] material fact is genuinely in dispute 'if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.'" Id.
It should also be noted that, pursuant to Local Rule 7.1(a)(3), the court deems admitted any statement of material fact that is not specifically controverted by the opposing party. See N.D.N.Y. R. 7.1(a)(3).
B. Airtex's Motion for Partial Summary Judgment
Airtex seeks an order that the Q-4 literally infringes several claims of the '353 patent, that the '353 patent is valid and enforceable, and that Miller is not an inventor of the '353 patent. In support of its argument that the Q-4 literally infringes the '353 patent, Airtex relies almost exclusively on the declaration of Muammer Yazici, President of M & I, the entity that owned the '353 patent at the time this action was commenced. See Yazici Decl., Dkt. No. 34-2. Regarding Plaintiffs' validity challenges and claim of inventorship, Airtex relies on this court's previous decision granting M & I's motion for a preliminary injunction as to the Q-4, to argue that Plaintiffs have failed to meet their burden of proof.
In opposition, Plaintiffs argue that Airtex cannot prevail on its motion because certain of the claims of the '353 patent contain language which is ambiguous -- specifically, the terms "venturi effect" and "transverse, vertical cross section." Moreover, Plaintiffs argue, additional discovery is needed for the court to fully evaluate their claims of invalidity and inventorship and therefore, Airtex's motion is premature in this regard and should be denied.
There are three forms of patent infringement defined by statute: direct, induced and contributory. See 35 U.S.C. §§ 271(a)-(c). Direct infringement, which includes either literal or equivalent infringement, is defined as the making, using, selling or offering for sale the patented invention. See § 271(a); Cross Med. Prod., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1310 (Fed. Cir. 2005). Here, Airtex seeks an order that the Q-4 literally infringes claims 1, 2, 5, 8, 10, 15 and 17 of the '353 patent. Literal infringement occurs when "each and every limitation set forth in a claim appear[s] in an accused product." Cross Med. Prod., Inc., 424 F.3d at 1310.
"A determination of patent infringement requires a two-step analysis: first, the meaning of the claim language is construed, then the facts are applied to determine if the accused device falls within the scope of the claims as interpreted." MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1329 (Fed. Cir. 2007) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384 (1996)). Accordingly, construction of the meaning of claim language is a question of law for the court to decide. See NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1305 n.8 (Fed. Cir. 2005) (citing Markman, 52 F.3d at 978-79).
Here, Plaintiffs do not dispute that the Q-4 infringes claims 1, 2, 5, 10 and 17 of the '353 patent. Accordingly, the court's claim construction is limited to claims 8 and 15 of the '353 patent, which contain the alleged ambiguous language.
Airtex's Statement of Material Facts*fn2 consists almost entirely of a reading of claims 1, 2, 5, 8, 10, 15 and 17 of the '353 patent, followed by descriptions of the Q-4 which mirror the claim language. In support of their Statement of Material Facts ("SOMF"), Airtex relies almost exclusively on the declaration of M & I's president, Muammer Yacizi ("Yacizi"). In support of his assertions, Yacizi relies on plaintiff NuClimate's literature regarding the Q-4 as well as Plaintiffs' papers in opposition to the former motion for preliminary injunction, including a declaration of Plaintiffs' purported expert, Michael I Tatkow, P.E. See Yacizi Decl. Exs. C-G, Dkt. No. 34. Significantly, Plaintiffs admit each of Airtex's material facts, except where they argue that Airtex states a legal conclusion, see Pls.' Response to Def.'s SOMF ¶¶ 3-5, 8, 18, 22, 31, 33, 47, 49 and 51, Dkt. No. 43, or where the statement of fact includes the phrase "transverse, vertical cross-section" or "venturi effect," both of which Plaintiffs argue are ambiguous, see id., ¶¶12, 16, 17, 27 and 30. Accordingly, because Plaintiffs admit that the elements of claims 1, 2, 5, 10 and 17 of the '353 patent are present in the Q-4, the court concludes that the Q-4 literally infringes said claims.
The court is therefore left to construe the meaning of the challenged
claim language, which appears in independent claims 8 and 15.*fn3
When interpreting claims, courts must view them "in the
context of 'those sources available to the public that show what a
person of skill in the art would have understood disputed claim
language to mean.'" MBO Labs., Inc., 474 F.3d at 1329 (quoting
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en
banc)). The most relevant of the intrinsic evidence is the patent's
specification, followed by the prosecution history. See id. Extrinsic
evidence, such as "testimony, dictionaries, learned treatises, or
other material not part of the public record associated with the
patent[,] may be helpful but is 'less significant than the intrinsic
record in determining the legally operative meaning of claim
language.'" Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996)). Ultimately, though, words used in
patent claims are to be interpreted to "have the meaning and scope
with which they are used in the specification and the prosecution
history." Id. (citing Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1478 (Fed. Cir. 1998).
Claim 8 of the '353 patent discloses: An air handling apparatus for a building having an enclosed space, said apparatus comprising: four induction units adapted for mounting in a ceiling of the enclosed space and forming four sides of an induction unit assembly which is substantially rectangular or square in plan view, each induction unit including an air plenum section with a primary air inlet, an air mixing section connected to said air plenum section and forming an air mixing chamber which in transverse, vertical cross-section is elongate, and a series of air nozzles mounted on one side of said air mixing section and extending into said air mixing chamber, each air mixing section having an air outlet in an end thereof spaced from said air plenum section and a side air inlet for permitting return air to flow through a side of said air mixing section in the region of said nozzles; and supporting members for mounting said induction unit assembly at or near said ceiling so that each air mixing section as seen in transverse, vertical cross-section extends at an angle of about 90 degrees to said ceiling during use of said apparatus; wherein, during use of said apparatus, said return air is drawn by venturi effect created by a flow of primary air from said nozzles into each air mixing chamber and said induction units are capable of providing air flows comprising a mixture of said primary air and return air at said air outlets.
Ex. A to Yacizi Decl, Dkt No. 34-3 (emphasis added). Claim 15 of the '353 patent discloses:
An air handling system for a building having a ceiling and an enclosed space below said ceiling, said system comprising: four induction units adapted for mounting adjacent said ceiling and forming four sides of an induction unit assembly which is substantially rectangular in plan view, each of said units having a primary air intake section and an air mixing section that, during use of said system and when viewed in transverse, vertical cross-section extends downwardly at an angle of approximately 90 degrees to said ceiling to an air outlet formed at a lower end of the air mixing section, each air mixing section also having a side air inlet for permitting return air to flow through a side thereof into an air mixing chamber of the induction unit; and supporting members for mounting the rectangular induction unit assembly so that said assembly is located adjacent said ceiling during use of the system in the building, wherein during use of the system, said return air is drawn by a venturi effect into each air mixing chamber and said induction units are capable of delivering a mixture of primary air, taken from the primary air intake sections, and return air through the air outlets to said enclosed space.
Plaintiffs argue that there is an "actual dispute regarding the proper scope of the claim language," citing in support thereof deposition testimony of plaintiff Miller that he does not know what a "transverse vertical cross-section" or a "Venturi effect" is. See Pls.' Response to Def.'s SOMF ¶¶ 12, 16, 17, 27 and 30 citing Dep. of James Miller, Oct. 28, 2008, at 137, 142, Dkt. No. 42-2. In addition, Plaintiffs cite Webster's Dictionary definitions of the terms venturi, transverse, and cross-section. See Decl. of Neal L. Slifkin, Dec. 15, 2008, Exs. 2-4, Dkt. No. 42. Plaintiffs also argue, without supporting authority, that because "transverse" and "cross-section" have the same dictionary meaning, it is clear one of the terms cannot have its ordinary meaning.
Nonetheless, the court's reading of the specification, which is the most relevant of the intrinsic evidence and must be relied upon before less significant extrinsic evidence such as dictionary definitions or the deposition testimony of a party, reveals that the terms "transverse vertical cross-section" and "Venturi effect" in claims 8 and 15 are not ambiguous and are as Airtex ...