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WYTTENBACH v. ATOMA INT'L

March 11, 1998

WILLIAM H. WYTTENBACH, MD CHT, and RICHARD SMITH, MD, Plaintiffs,
v.
ATOMA INTERNATIONAL, INC.; TOYOTA MOTOR CORPORATION; TOYOTA MOTOR MFG., U.S.A., INC.; and TOYOTA MOTOR SALES, U.S.A., INC., Defendants.



The opinion of the court was delivered by: CASTILLO

 Plaintiffs William H. Wyttenbach and Richard Smith sue defendants Atoma International, Inc. ("Atoma"), Toyota Motor Corporation ("TMC"), Toyota Motor Manufacturing, U.S.A., Inc. ("TMM"), and Toyota Motor Sales, U.S.A., Inc. ("TMS") *fn1" for infringement of claims 1, 2, 4, 11, and 12 of United States Patent No. 4,533,176 (the "'176 patent"). Plaintiffs allege that Atoma manufactures and sells child restraint seats that embody and therefore infringe upon plaintiffs' patented invention. Plaintiffs further contend that the Toyota defendants infringe upon the '176 patent by selling and/or manufacturing motor vehicles incorporating Atoma's child restraint seats. Defendants deny that the accused seats infringe the claims of the '176 patent.

 BACKGROUND2

 Procedural Facts

 As owners of the '176 patent, plaintiffs filed a complaint against Atoma on July 22, 1996, alleging that Atoma made and sold child restraint seats that infringe upon plaintiffs' device. Defs.' Facts P 8. On September 26, 1996, plaintiffs amended their complaint to add charges against the Toyota defendants. Id. P 9. Plaintiffs assert that the Toyota defendants infringe upon the '176 patent by importing, making, and/or selling vehicles incorporating the child restraint seats, which embody the patented invention. Id.

 Defendants denied infringement of the '176 patent and asserted several affirmative defenses. Id. P 10. Defendants filed a two-count counterclaim against plaintiffs seeking a declaratory judgment of non-infringement and invalidity of all claims of the '176 patent. *fn3" Id. PP 10-11.

 Almost six weeks later, plaintiffs requested a one-week extension of the June 13, 1997 deadline for filing their response to Atoma's motion for summary judgment, which the Court granted. On June 20, 1997, plaintiffs filed a cross-motion for summary judgment, claiming that defendants' seats literally infringe the '176 patent. On that same day, however, plaintiffs filed a motion pursuant to Fed. R. Civ. P 56(f) seeking additional discovery to respond to defendants' motion for summary judgment regarding infringement under the doctrine of equivalents. Defendants then filed a motion for early consideration of plaintiffs' Rule 56(f) motion. The Court granted early consideration of the motion, but denied the discovery request without prejudice. Presently before the Court are the parties' cross-motions for summary judgment on the issues of literal infringement and infringement under the doctrine of equivalents, as well as plaintiffs' renewed Rule 56(f) motion.

 The '176 Patent

 On July 21, 1983, inventor William Wyttenbach submitted his "Built-in Automatic Infant Restraint Seat" to the United States Patent and Trademark Office ("PTO") for patent *fn4" Id. P 14. The invention, in layman's terms, consists of a fold-away child protection and restraining seat concealed within the adult passenger seat of a motor vehicle. Id. After rotating away the padding of the adult passenger seat, the child's seat may be placed in a position for use by a small child. Id. Wyttenbach's application originally contained fifteen claims. Those of particular relevance are set forth below. Defs.' Facts P 23. Application claim 1, as originally filed, provided:

 
"A vehicle seat for adults in combination with a foldaway infant protection and restraining seat, said combination seat comprising: a seat member suitable for supporting an adult person in a moving vehicle including a support frame secured to the structure of said vehicle, and a contact portion secured to said support frame for receiving and contacting the body of a seated person, said contact portion including a section rotatable to between a first location and a second location; a restraining means secured to said support frame; and a child's seat movably secured to said support frame, said child's seat and restraining member movably cooperating with each other and said support frame and said rotatable section of said contact portion of said seat member to provide a first position wherein said child's seat and said restraining member are concealed by said rotatable section of said contact portion being in said first location and said seat member is suitable for occupancy by an adult, and movable to a second position wherein said rotatable section of said contact portion is in said second location and said child's seat is accessible and available for use by a small child, and wherein said restraining means and said child's seat are suitable for restraining a child in said child's seat against substantial impact forces."

 Application claim 4, as originally filed, stated:

 
"The combination vehicle seat of Claim 1 wherein: said support frame includes a back portion and said contact portion including a back contact portion having a front section and a rear section, said rear section secured to said back support frame, and said front section being said rotatable section, and being rotatable attached to one of said rear section and said back support frame, said child's seat being located between said front and rear section when said rotatable section is in said first location and said child's seat is in said first position, and said front section suitable for moving away from said rear section to said second location so as to reveal said child's seat such that said child's seat may be placed in said second position for receiving and protecting a child." (emphasis added).

 As originally filed, application claim 5 described:

 
"The combination vehicle seat of Claim 1 wherein: said support frame includes a lower support frame and said contact portion including a lower contact portion having a top section and a bottom section, said bottom section secured to said lower support frame, and said top section being said rotatable section, and being rotatably attached to one of said bottom section and said lower support frame, said child's seat being located between said top and bottom section when said rotatable section is in said first position, and said top section suitable for moving away from said bottom section to said second location so as to reveal said child's seat such that said child's seat may be placed in said second position for receiving and protecting a child." (emphasis added).

 Application claim 11, as originally filed, stated:

 
"A vehicle seat for adults in combination with a foldaway infant protection and restraining seat, said combination seat comprising: a seat member suitable for supporting an adult person in a moving vehicle including a support frame secured to the structure of said vehicle, and a contact portion secured to said support frame for receiving and contacting the body of a seated person, said support frame including a back portion and said contact portion including a back contact portion having a front section and rear section, said rear section secured to said back support frame and defining a cavity, and said front section rotatably attached to one of said rear section and said back support frame; a restraining belt secured to said support frame; and a child's seat including a seat and back portion movably secured to said support frame, said child's seat and restraining member movably cooperating with each other and said support frame and contact portion of said seat to provide a [child's] seat, said child's seat movable to a first position between said front and rear sections and within said cavity, and wherein said child's body support means and said restraining member are concealed by said front section in said first location and said seat is suitable for occupancy by an adult, and a second position wherein said front section is in said second location and said child's seat is accessible and available for use by a small child, and wherein said restraining means and said child's seat are suitable for restraining a child in said child's seat against substantial impact forces."

 Wyttenbach's application acknowledged prior patents for similar built-in child seats, but distinguished his invention on two grounds. Wyttenbach focused primarily upon the effective child-protection features offered by his invention. See Def. Ex. 2 at 1-3. While previously patented seats, Wyttenbach argued, were concerned only with convenience, his was the first device to incorporate adequate child-safety restraints. Wyttenbach's description further noted that "it is yet another object of the present invention to provide a restraining device which may be used by both infants which cannot set up without support and small children who may tend to be active." Def. Ex. 2 at 2-3. The device can achieve this versatility because the child seat rotates from a slightly slanted position (similar to an adult seat) to a semi-reclined position "suitable for use by small infants or children who cannot set without support."

 Prosecution History of the '176 Patent

 In an Office Action dated October 4, 1984, the Patent Examiner for the PTO rejected application claims 1-3, 8, 9, and 11-15 under 35 U.S.C § 103 on the basis of obviousness. Id. P 26. In rejecting claims 1-3, 9, 11, 12, 14 and 15, the Patent Examiner stated "Audi et al shows the general combination claimed. Rothe shows a child's seat pivotally mounted to an adult's seat. To provide the Audi, etc. device with means to hingedly mount his child seat in the manner shown is a matter of choice obvious to one having ordinary skill in the art." Id. P 27. The Audi device refers to an integral adult/child seat in an automobile. The Rothe invention describes a barber's chair, whose backrest doubles as the bottom of a child seat.

 The Patent Examiner similarly rejected application claims 8 and 13 "as being unpatentable over Audi, etc. and Rothe as applied to claims 1-3, 9, 11, 12, 14, and 15 above, and further in view of Mast et al. To provide the modified Audi, etc. assembly with control linkages as in Mast, et al . . . is considered a matter of choice obvious to one having ordinary skill in the art." The Mast patent (No. 2,584,481) shows a seat that includes a fold-down armrest for use as a child seat. The Patent Examiner objected to claims 4-7 and 10 as being dependent on rejected base claim 1, but stated that application claims 4-7 and 10 "would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims." *fn5" Id. P 28; Pls.' Facts P 28; Pls.' Add'l Facts P 2.

 In response, Wyttenbach's patent counsel, James C. Kesterson ("Kesterson"), amended the claims on January 3, 1985. Defs.' Facts P 31. In the amendment, Kesterson canceled application claims 4, 5, 11, and 12. Id. P 31. Kesterson indicated in the remarks to the amendment that "Claim 1 was amended to include the limitations of [application] Claim 4, thereby incorporating the Examiner's suggestion, and the limitations of [application] Claim 5 were combined with the limitations of [application] Claim 1 so as to provide a new Claim 16 and thereby also incorporating the Examiner's suggestion." Id. P 32. The amendment further stated "that all of the claims now ...


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