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December 27, 1996

ZIP DEE, INC., Plaintiff,

The opinion of the court was delivered by: SHADUR

 This action between Zip Dee, Inc. ("Zip Dee") and The Dometic Corporation ("Dometic") is one of a very small handful of cases on this Court's calendar that has outlasted its third anniversary. With the case at last nearing trial on Zip Dee's original patent-based claims, the most recent of a seemingly never-ending series of disputes between the parties *fn1" involves two motions by Zip Dee:

1. a motion in limine as to the expert reports by which Dometic purports to have identified its 35 U.S.C. ยงยง 102 ("Section 102," dealing with anticipation) and 103 ("Section 103," dealing with obviousness) attacks on Zip Dee's patent in suit (the "'172 Patent"); and
2. a motion for fees and expenses in connection with Zip Dee's earlier motion to compel Dometic to produce two originally undisclosed opinions of counsel as to noninfringement (as frequently occurs in patent infringement cases, Dometic seeks to avoid a determination of willful infringement by advancing the defense that it relied in good faith on the opinion of counsel).

 Because Zip Dee accuses Dometic of stonewalling in connection with the first matter, it seeks an award of attorneys' fees and expenses on that issue as well.

 As has too often been the case in this overripe litigation, analysis of the two current motions discloses that Dometic has sought to put an impermissible spin on each of the matters at issue. At the risk of incurring a Macbeth-like curse, *fn2" this Court now admonishes Dometic's counsel:

 Hold, enough!

 Although this opinion does not grant Zip Dee's alternative motion for total trial preclusion of the expert evidence proffered by Dometic, the latter is cautioned that any further instances of its repeatedly problematic litigation tactics will most likely be met with a stiffer response than the mere shifting of attorneys' fees and expenses.

 Dometic's Expert Reports

 For an extended period of time (more than a year) Dometic resisted Zip Dee's legitimate efforts to pin down Dometic's claims of patent invalidity by obtaining an identification of the assertedly relevant prior art, coupled with a chapter and verse specification of how that prior art purportedly applied to each of Zip Dee's patent claims. Initially Dometic sought to bury Zip Dee with sheer numbers, simply listing a host of earlier patents (over 150?) without providing the matching element-by-element comparisons that are required to establish anticipation under Section 102 (see, e.g., Shearing v. Iolab Corp., 975 F.2d 1541, 1544 (Fed. Cir. 1992)). Nor did Dometic couple its citation of prior art references with the additional particularization that is required for an obviousness defense under Section 103 (see, e.g., Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-51 (Fed. Cir. 1988)). *fn3" Instead Dometic postponed the day of reckoning by stating that only its trial lawyers had that information, which would ultimately be provided in the form of expert opinions. Then Dometic's further efforts at obfuscation led to the filing of a motion to compel by Zip Dee, which this Court granted--permitting Dometic to comply, however, through the promised expert reports.

 When those reports were finally tendered, they did not at all conform to what is required by the uniform case law. Although the experts do mention a handful of items of prior art (one physical device, Zip Dee's own 1960s product and 11 earlier patents *fn4" ), they included none of the necessary linkage with the elements of Zip Dee's patent claims for anticipation purposes under Section 102. Nor did Dometic provide the information as to the combination of references required for a Section 103 obviousness defense.

 That noncompliance led to Zip Dee's follow-up motion, now up for decision. In response Dometic has said for the first time that it will in fact offer no prior patents against the Zip Dee patent claims. Instead Dometic's only proposed comparisons will be (1) between Zip Dee's own 1960s awning product and Zip Dee's '172 Patent and (2) between the 11 prior patent references and Dometic's own accused structure.

 Three consequences flow from that current state of affairs. First, Dometic will not be permitted to shift ground: Its expert reports have set the outer boundaries of the arguments and evidence that it will be permitted to offer at trial regarding the claimed invalidity of the '172 Patent. Second, the nature of those reports permits only one true contention as to the invalidity of the '172 Patent: the argument that it represents no advance over Zip Dee's own earlier product. Third and relatedly, Dometic's contention that its own device does not extend beyond the teachings of the specified prior art will not be considered as a contention regarding the invalidity of the '172 Patent as such.

Intellectual property rights such as patent rights are matters of status. Their validity or invalidity may be determined without reference to the question whether another party's embodiment infringes on the patent.

 When Dometic's experts eschewed any effort to lay Zip Dee's claims alongside the prior art to demonstrate anticipation or obviousness, they disqualified themselves from any attack in either respect on the status of the '172 Patent as embodying a valid invention. *fn5" By limiting their comparative analysis to one that places Dometic's device alongside the prior art, assertedly demonstrating that it contains no element not disclosed there, the experts have limited themselves--and hence Dometic--to a defense of noninfringement (and not invalidity) in that regard.

 Accordingly this Court adopts the following limitations that have been requested at Zip Dee's Mem. 4-5:

a. Dometic will not be permitted to apply any of the asserted claims to any prior art reference other than Zip Dee's 1960s "prior art product" as embodied in the physical structure itself (illustrated in Exs. O and P of the Ouellette Report).
b. Dometic will not be permitted to introduce any testimony, claim chart or other exhibit which attempts an element-by-element comparison between the claims at issue and the 1960 Zip Dee Product containing information not provided in Exs. O and P of the Ouellette Report. If Dometic at this late date has failed to identify in the prior art an element in the asserted claims, it should not be allowed to "spring" such upon Zip Dee later.
c. Dometic will not make any element-for-element correspondence between the prior art patents and the ...

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