Ductmate Industries, Inc. v. Famous Supply Corp., 5:98-CV-2341.

55 F.Supp.2d 777

DUCTMATE INDUSTRIES, INC., Plaintiff, v. FAMOUS SUPPLY CORP., et al., Defendants.

No. 5:98-CV-2341.

United States District Court, N.D. Ohio, Eastern Division.

July 6, 1999.

COPYRIGHT MATERIAL OMITTED

George Raynovich, Jr., Buchanan & Ingersoll, Pittsburgh, PA, Paul David Eklund, Davis & Young, Cleveland, OH, Melvin L. Moser, Gorr, Moser, Dell & Loughney, Pittsburgh, PA, David G. Utley, Davis & Young, Akron, OH, for Ductmate Industries, Inc., plaintiff.

Jonathan M. Yarger, James B. Rosenthal, Kohrman, Jackson & Krantz, Cleveland, OH, David A. Dillard, Peter J. Reitan, Christie, Parker & Hale, Pasadena, CA, Robert J. Gilmer, Myron Charles Collins, Eastman & Smith, Toledo, OH, for Famous Supply Corporation, XL Enterprises, Inc., Duro Dyne Corporation, MEZ Industries, Inc., defendants.

OPINION AND ORDER

GWIN, District Judge.

In this patent infringement case, Plaintiff Ductmate Industries, Inc. sues Defendants Famous Supply Corporation, XL Enterprises, Inc., Duro Dyne Corporation, and Mez Industries, Inc. for direct and indirect infringement of four patents.¹ The patents in suit involve a mechanical system for connecting metal air duct sections together. Plaintiff Ductmate alleges the defendants infringed these patents by manufacturing, distributing and using duct connecting parts and methods that copy Ductmate's patented devices and methods.

On May 3, 1999, Defendants filed a motion seeking summary judgment of non-infringement and invalidity on all of Plaintiff Ductmate's claims for infringement [Doc. 44]. With this motion, the defendants say the accused devices and methods of connecting air duct sections using "duct connecting flanges," "corner pieces," and "gaskets," is a system well known and disclosed in prior art. Defendants argue Ductmate's patents are invalid as "anticipated" under 35 U.S.C. § 102, or invalid as "obvious" under 35 U.S.C. § 103(a).

In ruling on the defendants' motion, the Court first construes certain patent claims as a matter of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The parties have filed briefs proposing claims construction for the '376 patent (Claims 1-7), the '661 patent (Claims 1-9), the '688 patent (Claims 1 and 5), and the '756 patent (Claims 1-9). On May 3, 1999, the Court conducted a Markman hearing to hear evidence and argument on claims construction.

After construing the claims, the Court decides if the defendants show an absence of factual issues to warrant a judgment of non-infringement on Ductmate's claims. The Court also decides if the defendants give clear and convincing evidence to warrant a judgment of invalidity. Having reviewed the record, and for the reasons that follow, the Court denies the defendants' motion for summary judgment of non-infringement and invalidity.

I. Background

On October 14, 1998, Plaintiff Ductmate Industries, Inc. filed this suit against Defendants Duro Dyne Corp., Famous Supply Corp., Mez Industries, Inc., and XL Enterprises, Inc. [Doc. 1]. Defendant Mez Industries manufactures the accused duct connecting system and devices. The accused devices include metal corner pieces used to connect sections of air duct together. The corner pieces are designated Mez 220A, 230A, and 240A, and are used with Mez 120, 130, and 140 duct connecting flanges. Defendants Duro Dyne Corp. and Famous Supply distribute Mez products. Defendant XL Enterprise, Inc. has manufactured and installed ducts using Mez parts purchased from Defendant Famous Supply.

In its complaint, Plaintiff Ductmate accuses all of the defendants of infringing Ductmate's duct connecting system, parts and methods claimed in its '376, '756, '661 and '668 patents. Ductmate specifically accuses Defendant XL of directly infringing the method claimed in the '756 Patent. Ductmate also accuses Defendants Mez, Duro Dyne and Famous Supply of inducing infringement of all four patents. Ductmate says these defendants indirectly infringed the patents by making or selling the accused Mez products to others.

The patents in suit involve a mechanical system and method of connecting sheet-metal air duct sections using three essential parts: (1) L-shaped metal corner pieces with two equal-length legs extending at near 90 degrees from the corner section; (2) shaped sheet-metal duct connecting flanges with a "duct receiving" portion and an "upstanding corner piece receiving" portion designed to receive duct end edges and corner piece legs; and (3) gaskets to provide an air-tight seal between abutting duct sections (flange frames).

The process of assembling air duct sections generally occurs on location. An installer joins the sheet-metal duct sections together using the parts described above. Mez Industries designs the corner piece legs to fit into the corner piece receiving portions of the flanges. By inserting four corner pieces into receiving flange ends the installer creates a "flange frame." A properly built flange frame will fit the rectangular ends of a duct section. An installer may connect continuous duct sections by joining air duct sections using sets of flange frames and placing bolts through pre-set holes in the corner pieces. A gasket is placed between two abutting flange frames to create an air-tight seal. Defendants say the duct connecting system, its parts and its methods, was well known and disclosed in prior art.

In arguing that Plaintiff Ductmate's patent was obvious or anticipated, Defendants rely on the earlier "Smitka Patent"—U.S. Patent No. 4,123,094 (the "Smitka '094"). Defendants say the Smitka patent discloses the parts and methods comprising the duct connecting system at issue.

First, Defendants allege that Smitka '094 discloses using a corner piece in a manner consistent with the Mez corner piece. Defendants say Smitka discloses using a corner piece with displaced planar legs (as apposed to flat or co-planar legs) to connect the flanges. The defendants also say that Smitka '094 discloses using a corner piece with an offset corner region. This permits the forward end of the duct corners to extend beyond the front surface of the recessed corner region in the assembled condition.

Defendants next allege that Smitka '094 discloses using a gasket in a manner consistent with the Mez gasket. Defendants say Smitka discloses using "packing" to create an air-tight seal between the flange frames. Defendants suggest using gaskets to seal duct joints was well known in prior art. The defendants reference earlier patents as examples, including the Mez DT 26 27 515 Patent (disclosing the use packing) and the Knox patent (disclosing the use of a sealing ring). Alternatively, the defendants allege that the function of a gasket to keep duct connections air-tight is obvious to anyone skilled in the art.

Defendants seek judgment of non-infringement contending the accused Mez devices and methods are similar to the teachings of Smitka '094 and other prior art. Defendants also seek judgment finding Ductmate's patents invalid as anticipated or as obvious under 35 U.S.C. §§ 102 or 103(a), respectively. The Court decides these issues.

II. Summary Judgment

Pursuant to Federal Rule of Civil Procedure 56, summary judgment will be rendered when requested if the evidence presented in the record shows that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law. In assessing the merits of a summary judgment motion, courts shall draw all justifiable inferences from the evidence presented in the record in the light most favorable to the nonmoving party. Woythal v. Tex-Tenn Corp., 112 F.3d 243, 245 (6th Cir.), cert. denied, ___ U.S. ___, 118 S.Ct. 414, 139 L.Ed.2d 317 (1997).

The party moving for summary judgment has the burden of demonstrating the absence of genuine issues of material fact. However, an opponent to a motion for summary judgment may not rest upon the mere allegations or denials of his pleadings, but must set forth through competent and material evidence specific facts showing that there is a genuine issue for trial. "[T]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Miller v. Lorain County Bd. of Elections, 141 F.3d 252, 256 (6th Cir.1998) (same).

Accordingly, viewing the evidence in the light most favorable to the nonmoving party, the court determines "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Anderson, 477 U.S. at 251-52, 106 S.Ct. 2505.

This review does not change in patent infringement cases. Avia Group Int'l v. L.A. Gear California, Inc., 853 F.2d 1557, 1561 (Fed.Cir.1988). However, because infringement is itself a question of fact, "a district court must approach a motion for summary judgment of infringement or non-infringement with a care proportioned to the likelihood of it being inappropriate." SRI Int'l v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1116 (Fed.Cir. 1985) (citations omitted).

Applying this standard, the Court first considers the defendants' motion of non-infringement. The Court then will address the defendants' motion on invalidity.

III. Discussion

Plaintiff Ductmate sues the defendants for direct and indirect infringement. A defendant is liable for patent infringement if a plaintiff shows that the defendant violated 35 U.S.C. § 271(a). Section 271(a) states in part:

"[W]hoever without authority makes, uses, sells, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent."

35 U.S.C. § 271(a).

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