United States District Court, N.D. New York
DOUGLAS J. NASH, ESQ., GABRIEL M. NUGENT, ESQ., JASON C. HALPIN, ESQ., JOHN D. COOK, ESQ., KATHRYN DALEY CORNISH, ESQ., Hiscock, Barclay Law Firm, Syracuse, NY, for the Plaintiff.
KATHRYN R. GRASSO, ESQ., JOSEPH P. LAVELLE, ESQ., ANDREW N. STEIN, ESQ., DLA Piper LLP, Washington, DC, DAVID M. LASCELL, ESQ., ERIKA N.D. STANAT, ESQ., JERAULD E. BRYDGES, ESQ., Harter, Secrest Law Firm, Rochester, NY, for the Defendant.
MEMORANDUM-DECISION AND ORDER
GARY L. SHARPE, Chief District Judge.
On July 5, 2011, plaintiff PPC Broadband, Inc. commenced this patent infringement action against defendant Corning Gilbert Inc. (Compl., Dkt. No. 1.) Pending are, among other things, Gilbert's motions for summary judgment on the defenses of laches and equitable estoppel, (Dkt. No. 136), and for summary judgment on the issue of willfulness, (Dkt. No. 131), and PPC's cross motion for summary judgment on laches and equitable estoppel, (Dkt. No. 169), as well as PPC's motion to strike portions of Gilbert's combined reply to its motion and opposition to PPC's cross motion, (Dkt. No. 198). For the reasons that follow, all four motions are denied.
Both PPC and Gilbert are engaged in the business of designing and manufacturing coaxial cable connectors. ( See generally Compl.) On July 21, 2000, PPC filed a patent application for a coaxial cable connector, which was approved and a patent issued to PPC on May 6, 2003 as U.S. Patent No. 6, 558, 194 ("194 patent"). ( Id. ¶¶ 1, 23, 24; Dkt. No. 1, Attach. 2.) On January 21, 2003, PPC filed another patent application for a coaxial cable connector, which was approved and a patent issued to PPC on February 1, 2005 as U.S. Patent No. 6, 848, 940 ("940 patent"). (Compl. ¶¶ 1, 26, 27; Dkt. No. 1, Attach. 3.)
PPC alleges that Gilbert has infringed the 194 and 940 patents by making, using, selling, offering for sale, selling, and/or importing coaxial cable connectors, specifically Gilbert's UltraRange and UltraShield series connectors, that infringe on PPC's patents. (Compl. ¶¶ 45-58.) More specifically, PPC alleges that Gilbert's infringement has been "willful, deliberate, and intentional, " entitling PPC to enhanced damages and attorneys' fees pursuant to 35 U.S.C. §§ 284 and 285. ( Id. ¶¶ 50, 55.)
In 2003, in a prior action between these two parties in the United States District Court for the Western District of Wisconsin, PPC alleged that certain cable connectors manufactured by Gilbert under the trade name UltraSeal infringed the 194 patent. (Def.'s Statement of Material Facts (SMF) ¶ 7, Dkt. No. 144, Attach. 1; Pl.'s SMF ¶ 1, Dkt. No. 170, Attach. 1 at 20-29.) After trial, a jury returned a verdict that the UltraSeal connectors infringed the asserted claims of the 194 patent, and a permanent injunction was entered preventing Gilbert from further infringement of the 194 patent. (Def.'s SMF ¶ 8; Pl.'s SMF ¶¶ 2-3.)
Following this litigation, Gilbert began production of a new connector under the name UltraRange, which PPC subsequently examined and determined did not infringe the 194 patent. (Def.'s SMF ¶ 15; Pl.'s SMF ¶¶ 7-9.) At some point in early 2005, Gilbert modified the design of its UltraRange connector, making changes to the gripper and a taper on the connector shell. (Def.'s SMF ¶ 32; Pl.'s SMF ¶¶ 11-12.) On March 24, 2005, Gilbert began distributing this new version of the UltraRange to its customers under the same trade name; PPC was not notified directly of this change to the UltraRange. (Pl.'s SMF ¶¶ 13, 15.) Gilbert's marketing materials continued to depict the original design of the UltraRange connector. ( Id. ¶ 32.) At one point after the changes were made to the 2004 version of the UltraRange, PPC did perform testing on the connector, although that testing consisted only of a performance evaluation conducted by a PPC employee with no involvement in infringement analysis. ( Id. ¶¶ 17-19.) Additionally, in October 2005, another PPC sales and marketing employee requested a cross-sectioned cutaway of an UltraRange connector, although it does not appear as though a cross-sectioned connector was actually obtained by PPC in connection with that request. ( Id. ¶¶ 21-22.)
In late 2010, PPC became aware that Gilbert was marketing a new line of connectors, under the trade name UltraShield, which was being advertised as having the same design as the UltraRange connectors. ( Id. ¶ 23.) Upon examining the UltraShield in April 2011, PPC discovered that the design and operation of that connector differed from what it had understood of the UltraRange line of connectors. ( Id. ¶¶ 24-26.) PPC then re-examined the UltraRange connectors and discovered that changes had been made since the time PPC had first examined the UltraRange. ( Id. ¶¶ 27-28.) PPC subsequently commenced this action on July 5, 2011, alleging that the UltraShield and the current version of the UltraRange connectors infringe the 194 and 940 patents. (Compl.) Gilbert continues to sell its UltraRange and UltraShield connectors to the present day. (Pl.'s SMF ¶ 44.)
III. Standard of Review
The standard of review pursuant to Fed.R.Civ.P. 56 is well established and will not be repeated here. For a full discussion of the standard, the court refers the parties to its decision in Wagner v. Swarts, 827 F.Supp.2d 85, 92 (N.D.N.Y. 2011), ...