The opinion of the court was delivered by: JAMES H. ALESIA
Plaintiff Remcor Products Co. charges that defendants Scotsman Group, Inc. and Booth, Inc. have infringed U.S. Patent No. 4,300,359 and U.S. Reissue Patent No. 34,565, both entitled "Cold Plate System for Ice Dispenser". In defense, defendants assert that plaintiff is judicially estopped from claiming infringement and that plaintiff's patents are unenforceable due to inequitable conduct. Before the court are plaintiff's Motion For Partial Summary Judgment and defendants' Cross-Motion For Summary Judgment seeking summary determination of both defenses.
A. Judicial Estoppel Defense
In April 1991, IMI plc
("IMI") and REM Holding Inc.
("REM Holding") agreed to an acquisition plan whereby Remcor would be sold to IMI. Because of the nature and dollar value of the transaction, the proposed acquisition was subject to the notice provisions of the Hart-Scott-Rodino Antitrust Improvements Act of 1976, 15 U.S.C. § 18a ("H-S-R Act"). On June 21, 1991, REM Holding filed a "Notification and Report Form" with the Federal Trade Commission ("FTC") and the United States Department of Justice in compliance with the H-S-R Act. Ex. A. The Act provides for a thirty-day waiting period following the filing of the notification before the proposed transaction may be consummated. 15 U.S.C. § 18a(b). On June 26, the FTC acknowledged the filing and set a waiting period expiration date of July 25, 1991. Ex. B. During the waiting period, Mr. Robert Cook of the FTC telephone REM Holding's counsel and requested additional information related to the proposed transaction. Ex. C, Kaufmann Dep. 29-30. On July 17, 1991, Remcor's President and counsel had a telephone interview with Mr. Cook regarding the requested additional information. Ex. C, Kaufmann Dep. 37-41, 45. In a July 22 follow-up letter, REM Holding identified twelve manufacturers of ice-beverage dispensers who were competitors of Remcor. Remcor reserved its right to define an appropriate product market for antitrust analysis, however. Ex. F.
During the July 17 conversation and in the July 22 letter, Remcor told the FTC:
(a) the technology for ice-beverage dispensers was readily available to the industry;
(b) ice-beverage dispensers are commodity products which compete in a market in which there are many competitors; and
(c) all of Remcor's competitors had designed around the Remcor Patent.
Ex. D, Koeneman's Notes for FTC on Wednesday; Ex. E, Koeneman Dep. at 243-44, 248, 260, 408; Ex. F.
No further communications occurred. The FTC did not extend the waiting period. Ex. C, Kaufmann Dep. 28-29. The FTC did not initiate any proceedings to challenge the proposed acquisition. Ex. C, Kaufmann Dep. 28-29. There were no hearings. The FTC did not issue a decision or judgment, nor did it seek an injunction against the acquisition. The waiting period expired as scheduled on July 25, 1991. Ex. C, Kaufmann Dep. 29. IMI's acquisition of Remcor was subsequently consummated.
B. Inequitable Conduct Defense
In the body of the specification of the Remcor patent, several prior art references were cited and disclosed as follows:
There is illustrated in the accompanying drawing an embodiment of a cold plate system for an ice dispenser which is presently contemplated as the best mode of carrying out the invention. As shown, an ice dispenser, indicated generally at 10, is conventionally comprised of a hopper, bin or tank 12 for storing a large mass of crushed, cracked, flaked or cubed ice, such as 50 pounds, a rotary impeller or agitator 14 driven by an electric motor 16, and means 18 for accommodating controlled discharge of ice from the lower end portion of the hopper through a discharge opening 20. The means 18, although not forming a part of the present invention, is highly desirable to enable convenient dispensing of ice in the hopper, ...