Victaulic Co. v. ASC Engineered Sols.

VICTAULIC COMPANY, Plaintiff, v. ASC ENGINEERED SOLUTIONS, LLC, Defendant.

Civil Action No. 20-887-GBW

United States District Court, D. Delaware

December 6, 2022

MEMORANDUM ORDER

GREGORY B. WILLIAMS UNITED STATES DISTRICT JUDGE

Plaintiff Victaulic Company (“Victaulic”) alleges that Defendant ASC Engineered Solutions, LLC's (“ASC”) “pre-assembled SLT products with captured couplings” (the “Accused Products”) infringe United States Patent No. 7,712,796 (“the '796 patent”). D.I. 1 ¶ 1; D.I 152 ¶ 6. Pending now is Victaulic's Motion #2 for Partial Summary Judgment that the Accused Products Literally Meet the Radius of Curvature Limitation (the “Motion,” D.I. 197). The Court has reviewed the parties' briefing, D.I. 198; D.I. 217; D.I. 230, and statements of facts, D.I. 199; D.I. 218. For the reasons below, the Court denies Victaulic's Motion.

I. BACKGROUND

A. Interpretation of Claim 1 of the '796 Patent

Claim 1 of the '796 patent claims the following:

1. In combination, interconnectable pipe coupling segments and a pair of pipe elements, each said coupling segment being positionable straddling facing end portions of said pair of pipe elements for securing said pipe elements together in end-to-end relationship, wherein said end portions of said pipe elements have an outer surface of substantially cylindrical profile, said pipe elements each having a circumferential groove in said outer surfaces of said end portions, and wherein each said segment comprises:

first and second arcuate surfaces adapted to contact the outer surfaces of said pipe elements within said circumferential grooves, said arcuate surfaces being in spaced apart relation to one another on opposite sides of said segment, each of said arcuate surfaces subtending an angle of less than 180° and having a radius of curvature greater than the radius of curvature of said outer surfaces of said pipe elements exclusive of said circumferential grooves [the “radius of curvature^[1]' limitation] ....

D.I. 1-1, Ex. 1 at 11:33-61 (emphasis added); see id. at 13:28-31,15:25-28,16:25-28 (claims 21,41, and 44). ASC sought to construe the italicized language as

“the radius of curvature of the outermost surfaces of said pipe elements at locations that are not within said circumferential grooves such that both pipe elements may be inserted between said segments when they are attached to one another by fasteners”

D.I. 101, Ex. A at 3 (emphasis added). Victaulic argued that no construction was necessary. Id.

The Court declined to construe the term. D.I. 124 at 1. At the Markman bearing, the Court explained that it would not either “change outer surfaces to outermost surfaces” or “add the limitation ‘such that both pipe elements may be inserted between said segment when they are attached to one another by fasteners [.]”' Tr. of Sept. 23,2021 Hr'g at 34:14-25. The Court had earlier construed “outer" in the context of the following limitation in Claim 1: “wherein said end portions of said pipe elements have an outer surface of substantially cylindrical profile ....” D.I. 1-1, Ex. 1 at 11:38-40. The Court explained that “outer” did not have to mean “outermost”:

[T]he parties agree that the claim term an outer surface refers to the surface either inside the [circumferential] groove or exclusive of the groove. ASC's term outermost surface refers only to the surface exclusive of the groove[.] [T]hus[J changing the claim term from outer surface to outermost surface as ASC proposes means that the claim term [that] currently refers to two surfaces will instead refer to one specific surface.

Tr. at 20:8-16. The Court referenced that prior reasoning when it again rejected an “outermost” limitation in the radius of curvature limitation. Tr. at 34:17-20.

B. The Accused Products

Victaulic's Final Infringement Contentions. D.L 200-1, Ex. 2, App'x A (‘'Contentions”), provide diagrams of the Accused Products that label the portion of the Accused Products that Victaulic alleges infringe each limitation of Claim 1 of the '796 patent. Victaulic states that

As shown below [in Figure B], when an SLT Product (1) (which includes a coupling (2) and a first pipe element (3)) is combined with a grooved second pipe element (4)..., the combination forms an Accused Instrumentality.

[As in Figures C, D, and E,] [t]he[] Accused Instrumentality comprises interconnectable pipe coupling segments (2a, 2b) and a pair of pipe elements (the captured pipe element (3) [as shown in Figure A] and the second pipe element (4)). Each said coupling segment (2a, 2b) is positionable straddling facing end portions (3a, 4a) of said pair of pipe elements (3, 4) for securing said pipe elements (3, 4) together in end-to-end relationship, wherein said end portions (3a, 4a) of said pipe elements (3, 4) have an outer surface (3c, 4c) of substantially cylindrical profile (i.e., a substantially uniform radius of curvature), said pipe elements (3, 4) each having a circumferential groove (3b, 4b) in said outer surfaces (3c, 4c) of said end portions (3a, 4a).....

As shown below [in Figures C, D, and E], each said segment (2a, 2b) comprises: first and second arcuate surfaces (2c, 2d) adapted to contact the outer surfaces of said pipe elements (3,4) within said circumferential grooves (3b, 4b), said arcuate surfaces (2c, 2d) being in spaced apart relation to one another on opposite sides of said segment (2a, 2b).

As shown below [in Figure F], each of said arcuate surfaces (2c, 2d) has a radius of curvature (R) greater than the radius of curvature (S) of said outer surfaces (3c, 4c) of said pipe elements (3, 4) exclusive of said circumferential grooves (3b, 4b). As shown below, the arcuate surfaces (2c, 2d) have the same radii of curvature (R), and the outer surfaces (3c, 4c) also have the same radii of curvature (S).

Contentions at 1, 11, 17 (footnotes and some emphases omitted).

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The Court notes that ASC has not agreed to Victaulic's infringement contentions.

II. LEGAL STANDARD

“The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). “A genuine issue of material fact is one that could lead a reasonable jury to find in favor of the nonmoving party.” Bletz v. Corrie, 974 F.3d 306, 308 (3d Cir. 2020). “The court must review the record as a whole, draw all reasonable inferences in favor of the nonmoving party, and must not ‘weigh the evidence or make credibility determinations.'” Id. (citation omitted). The Court must enter summary judgment if the non-moving party “fails to make a showing sufficient to establish the existence of an element essential to [its] case, and on which [it] will bear the burden of proof at trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); see Sodexo MAGIC, LLC v. Drexel Univ., 24 F.4th 183,204 (3d Cir. 2022) (quoting Celotex. 477 U.S. at 322). The Federal Circuit applies “the law of the regional circuit, here the Third Circuit.” Acceleration Bay LLC v. 2KSports, Inc., 15 F.4th 1069,1075 (Fed. Cir. 2021).

III. DISCUSSION

Victaulic argues that “[e]ach Accused Product [] literally satisfies/infringes” the radius of curvature limitation “as a matter of law” because ASC improperly tries to reintroduce the rejected limitation that the “outer” surface be the “outermost" surface. D.I. 198 at 1-2. Victaulic asserts that “ASC's accused coupling segments indisputably include arcuate surfaces with a radius of curvature larger than two such outer surfaces of the pipe elements ....” D.I. 198 at 3. ASC responds that, while Victaulic identifies only “one outer surface,” the “plain language” of the radius of curvature limitation requires a radius greater than the radius “of the ‘outer surfaces' (plural) of the pipe elements exclusive of the grooves.” D.I. 217 at 1. ASC points to “a raised lip” in the “pre-installed pipe element” of the Accused Products and argues that “[t]he radius of curvature of the coupling's arcuate surfaces is not greater than the radius of curvature of this outer surface.” D.I. 217 at 1 (emphasis in original). Lastly, ASC argues that the Court cannot grant summary "judgment as to a discrete issue" because the decision does not involve a “claim or defense” as Rule 56(a) requires. D.I. 217 at 18 (emphasis in original).

The parties dispute the proper construction of the claim term “outer surfaces” in the radius of curvature limitation in Claims 1,21,41, and 44 of the '796 patent. However, the parties may not argue claim construction before the jury. See Cordis Corp. v. Bos. Sci. Corp., 561 F.3d 1319,1337 (Fed. Cir. 2009); Board of Regents v. Boston Scientific Corp., 2022 WL 17039729, at *10 (D. Del. Nov. 17, 2022). Thus, the Court will first resolve the parties' claim construction dispute. The Court will then rule on the Motion.

A. Construction of “Outer Surfaces”

‘“[T]he claims of a patent define the invention to which the patentee is entitled the right to exclude.'” Phillips v AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citation omitted); Aventis Pharms. Inc. v. Amino Chemicals Ltd., 715 F.3d 1363,1373 (Fed. Cir. 2013) (same). The proper construction of a patent is a question of law, although “subsidiary factfinding is sometimes necessary.” Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 32627 (2015) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)). “The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.”^[1]Thorner v. Sony Comput. Entm't Am. LLC. 669 F.3d 1362,1365 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313); Unwired...