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Ficep Corp. v. Voortman USA Corp.

United States District Court, D. Maryland

February 3, 2017

FICEP CORPORATION Plaintiff
v.
VOORTMAN USA CORP. Defendant Claim Language Court's Construction Preamble Claim 1 Claims 7 and 14

          MEMORANDUM AND ORDER RE: SUMMARY JUDGMENT

          Marvin J. Garbis United States District Judge

         The Court has before it Voortman USA Corp.'s Motion for Summary Judgment that the Asserted Claims of U.S. Patent No. 7, 974, 719 are not Infringed and/or Invalid [ECF No. 80], Plaintiff's Motion for [partial] Summary Judgment [ECF No. 85], and the materials submitted relating thereto. The Court has held a hearing and has had the benefit of the arguments of counsel.

         I. BACKGROUND

         Ficep Corporation ("Ficep") and Voortman USA Corp. ("Voortman") are competitors that design, develop, and manufacture machines and systems for the steel construction and forging industries.

         Ficep owns, by assignment, United States Patent No. 7, 974, 719[1] ("the '719 Patent"), entitled "Method and an apparatus for automatic manufacture of an object with multiple intersecting components." The claimed invention "relates to systems and methods for automatic manufacture of an object based on automatic transmission of a three-dimensional rendering of the object, such as a rendering from a CAD to an assembly line for manufacture." '719 Patent, col. 1:9-13.

         In this case, Ficep sues Voortman for indirect infringement of the '719 Patent based on direct infringement by its customers. Complaint, ECF No. 1. Voortman counterclaims for a declaratory judgment of noninfringement and invalidity. Answer, ECF No. 19.

         By the instant motions:

• Voortman seeks summary judgment based on no direct or induced infringement and invalidity under 35 U.S.C. §§ 102, 103 (anticipation, obviousness).
• Ficep seeks partial summary judgment establishing direct infringement by Voortman's customers and denying Voortman's invalidity claims.

         II. SUMMARY JUDGMENT STANDARD

         In a patent case, as in any other form of civil litigation, a motion for summary judgment shall be granted if the pleadings and supporting documents "show[] 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); Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1332 (Fed. Cir. 1998) .

         The well-established principles pertinent to summary judgment motions can be distilled to a simple statement: The Court may look at the evidence presented in regard to a motion for summary judgment through the non-movant's rose-colored glasses, but must view it realistically. After so doing, the essential question is whether a reasonable fact finder could return a verdict for the non-movant or whether the movant would, at trial, be entitled to judgment as a matter of law. See, e.g., Celotex Corp. v. Catrett, 477 U.S. 317, 322-323 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Thus, in order to defeat a motion for summary judgment, "the party opposing the motion must present evidence of specific facts from which the finder of fact could reasonably find for him or her." Mackey v. Shalala, 43 F.Supp.2d 559, 564 (D. Md. 1999) (emphasis added).

         When evaluating a motion for summary judgment, the Court must bear in mind that the "[s]ummary judgment procedure is properly regarded not as a disfavored procedural shortcut, but rather as an integral part of the Federal Rules as a whole, which are designed 'to secure the just, speedy and inexpensive determination of every action.'" Celotex, 477 U.S. at 327 (quoting Rule 1 of the Federal Rules of Civil Procedure).

         "Cross motions for summary judgment Mo not automatically empower the court to dispense with the determination whether questions of material fact exist.'" Equal Rights Center v. Archstone Smith Trust, 603 F.Supp.2d 814, 820 (D. Md. 2009) (quoting Lac Courte Oreilles Band of Lake Superior Chippewa Indians v. Voigt, 700 F.2d 341, 349 (7th Cir. 1983)). Rather, the court must examine each party's motion separately and determine whether summary judgment is appropriate as to each under the Rule 56 standard. Desmond v. PNGI Charles Town Gaming, L.L.C., 630 F.3d 351, 354 (4th Cir. 2011); Mingus Constructors, Inc. v. United States, 812 F.2d 1387, 1391 (Fed. Cir. 1987). The court may grant summary judgment in favor of one party, deny both motions, or grant in part and deny in part each of the parties' motions. See Rossignol v. Voorhaar, 316 F.3d 516, 523 (4th Cir. 2003).

         III. DISCUSSION

         The parties have extensively (if not excessively) briefed the instant motions. In view of the filings and the multiple cross-references, the Court stated, at the commencement of the motion hearing, that the briefing had been read for background but that the parties' contentions had to be stated at the hearing.

Naturally, I have read through the materials that you have produced, and I will certainly in the course of the proceeding have various questions to ask of you.
I want it to be clear nobody is going to be inhibited from saying everything you want to say here, but I want you to understand that I'm going to be looking at the record of this proceeding as stating what your arguments are.
And I'm not going to go, after this hearing, go back rooting through the briefs to find what it is you're contending. I think you have to say what you're contending here so it's as clear as possible.
So don't omit anything that you want to have considered as being your contention.

Tr.[2] at 2-3.

         A. The Invention

         The invention at issue is a process to enable a user to start with a design model[3] of an object in electronic format and manufacture the object without the possibility of human error in the process. In essence, a human being can utilize Computer Assisted Design ("CAD") software to create a design model of an object. Thereafter, the design proceeds through manufacturing automatically. It can be succinctly stated that the data has gone from the design model to the manufacturing machine "untouched by human hands."

         The '719 Patent discloses a preferred embodiment and flow chart to practice the invention:

         (IMAGE OMITTED)

         Thus, the process can be described in terms of 6 steps:

1. Creating a design model. An individual uses CAD software, [4] to create, in electronic format, a three-dimensional design model of a multi-component object.[5]
2. Receipt by Controller. The electronic file[6]constituting the design model is transmitted[7] to a device capable of processing a design model, referred to as a programmable logic controller ("PLC").
3. Storing the Design Model. The design model is stored in a database.
4. Extracting Dimensions and Parameters. A logic system within the PLC extracts the component dimensions from the design model and identifies and extracts intersection and manufacturing parameters.
5. Transmitting Dimensions and Parameters. The dimensions and the intersection and manufacturing parameters are transmitted[8] to one or more manufacturing machines.
6. Manufacturing. The components are manufactured based on the transmitted dimensions and parameters.

         1. Claim Construction

         The Judge initially presiding over this case, Judge Quarles, construed 19 claim terms in a Memorandum Opinion [ECF No. 70] at 17-19. See Appendix A.

         The parties have demonstrated by their briefing and oral argument on the instant motions that there is an actual dispute requiring a construction of the term "programmable logic controller" and a modification of the construction of "design model."

         "When the parties raise an actual dispute regarding the proper scope of [the asserted] claims, the court, not the jury, must resolve that dispute." 02 Micro Int'l v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008)(finding error in the district court's failure to resolve "a fundamental dispute regarding the scope of a claim term"); see also Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 835 (2015).

         a. Programmable Logic Controller

         Judge Quarles was not asked to, and did not, construe the term "programmable logic controller" ("PLC"), considering that the term was to be given its plain and ordinary meaning.

         It is now apparent that the parties dispute the "plain and ordinary meaning" of the term. Hence, the Court finds it necessary to construe the term.

         The '791 Patent specification states:

The programmable logic controller [] is implemented in order to control and monitor the manufacture of an object. Any device capable of processing a design model as described herein may be considered as a programmable logic controller. In various embodiments, one or more logic devices or processors may be used.

'719 Patent, col. 5:32-37.

         Voortman states that it provides customers two VACAM software programs, VACAM Office software and VACAM Machine software. Tr. 84. VACAM Machine software "has a component that is a programmable logic controller. It can control these machines that Voortman sells." Id. "It's the only VACAM application that can actually convert these signals into the other signals that tells the machine how to manufacture." Id. "The two programs are on different components, different computers, and they do different things." Id.

         Ficep's position is, succinctly, that the programmable logic controller can be spread among more than one device.

[T]he programmable logic controller can be one or more processors. So you can have one processor here and a different processor there; and if they're together doing it, that's one or more processors that are the programmable logic controller.

Tr. 9.

         Ficep does not contend, as Voortman asserts, that "for purposes of claim interpretation, a programmable logic controller doesn't need to control." Tr. 95.

         Ficep's position is logical and consistent with the specification statement that "[i]n various embodiments, one or more logic devices or processors may be used." '719 Patent, col. 5:32-37. Ficep acknowledges that the programmable logic controller must control and must perform all the other claimed functions. However, the programmable logic controller need not be on one single device. "[Y]ou can have a computer at the machine. You can have a computer at the office. You can have a computer at two or three machines. One or more devices can constitute the programmable logic controller." Tr. 134.

         The Court construes the term "programmable logic controller" to refer to:

A device that may comprise one or more logic devices or processors and is capable of processing a design model to control and monitor the manufacture of an object.

         b. Design Model

         The '719 Patent states that a "design model" includes design specifications related to the object to be manufactured. '719 Patent, col. 1:1-25.

         In the claim construction process, Voortman stated that the claim term "design model of an object" should be construed as "an electronic file" containing all data needed to allow assembly of an object. Voortman Opening Brief [ECF No. 33] at 29. Ficep stated that "[t]here is no disagreement that the claimed Mesign model' involves one or more electronic files to be employed with a computer." Ficep Opening Brief [ECF No. 34] at 13 (emphasis added). Neither party addressed the issue in its responsive brief.

         Judge Quarles construed the term "design model of an object" as "the design model of an object in the form of an electronic file." Judge Quarles did not discuss his use of the words "an electronic file" and did not address the party's present dispute regarding the content of the design model.

         Voortman does not now deny that, in terms of the number of files, the "design model" should be construed as Ficep contends. As stated by Voortman regarding the design model claim construction issue:

It's not the number of files that matters; it's what's in the files that matter.

Tr. 107.

         In regard to content, Voortman presents an issue best understood and considered in the context of infringement. That is, whether, when Voortman's customers extract and use the specifications of a single component from a design model of a multi-component object, they infringe.[9] In other words, the design model of a multi-component object to be manufactured (e.g., a coffee mug) includes specifications of each separate component (the cylinder and the handle). That design model is not processed to result in a manufactured ultimate product (the coffee mug). Rather, the Voortman customer extracts from the design model the specifications for a single component (the cylinder) that includes what is necessary for the connection of the other component (the handle).

         The Court does not find that the term, "design model" should be limited to an electronic file or files including the specifications of a single component of a multi-component obj ect.

         Voortman contends that during the prosecution of the '719 Patent, there was a disclaimer of an intention to include within the term "design model" a design model of an object having multiple individual components. Tr. 103.

         Voortman asserts that during the prosecution of the '719 Patent, Ficep, [10] in distinguishing the Jones[11] patent, "clearly disclaimed" a construction of "design model" that would include specifications of more than one component of a multi-component object to be manufactured. In this regard, Ficep said:

Jones does not disclose or suggest an automatic manufacturing system incorporating and utilizing a design model of an object having multiple individual components, wherein at least two of the individual components define an intersection at which the two components are in contact with one another. Concomitantly, Jones does not disclose or suggest an automatic manufacturing system with elements that identify and extract intersection parameters from a design model. The manufacturing system of Jones et al. is concerned exclusively with the manufacture of individual or separate components from respective design specifications of the individual components. In contrast to the present invention, there is nothing in the Jones reference that provides for a design model of an entire object having multiple components in contact with one another at one or more intersection points. Accordingly, the Jones system does not include componentry (such as a programmable logic controller) that identifies and extracts intersection information or parameters from a design model of an object having multiple components in contact with one another at one or more intersection points.

Def.'s Mot. Ex. C 9, ECF No. 82-3 (quoting Prosecution History for '719 Patent at VRTFCP0008494).

         Ficep amended the independent claims to delete the phraseology "an object with multiple intersecting components" and to insert the language "the object has multiple individual components, at least two of the individual components defining an intersection at which the two components are in contact with one another." Def.'s Mot. Ex. B 26, ECF No. 82-2 (quoting Prosecution History at VRTFCP0008491).

         The essence of the distinction between Jones and the '719 Patent lies in the requirement, in the Jones process, that, once the design model is done, a human operator must thereafter insert manufacturing specifications prior to manufacturing. In the '719 Patent process, once the design model is done, the specifications therein are extracted and, without the risk of human "contamination" of the data, manufacturing proceeds pursuant to the design model.

         The Court concludes that the construction of the term "design model" should be stated as:

The design model of an object is in the format of one or more electronic files. In regard to a multi-component ultimate object, the design model may include the specifications of one or more of the separate components of the multi-component ultimate object.

         B. Infringement

         A patent owner has the burden of establishing infringement by a preponderance of the evidence. Creative Compounds, LLC v. Starmark Labs., 651 F.3d 1303, 1314 (Fed. Cir. 2011)(citing SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1123 (Fed. Cir. 1985).

         In this case, Ficep accuses Voortman of indirect infringement by inducing or contributing to direct infringement by its customers. To establish its claim for indirect infringement, Ficep must prove direct infringement and intentional inducement. That is, that:

• Voortman's customers directly infringed, and
• Voortman intentionally acted to induce infringement and "knew or should have known [its] actions would induce actual infringements." Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., ___ F.3d ___, No. 2015-2067, ...

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