United States District Court, N.D. Illinois, Eastern Division
June 10, 2005.
ANDREW CORPORATION, Plaintiff,
BEVERLY MANUFACTURING COMPANY, Defendant.
The opinion of the court was delivered by: JAMES HOLDERMAN, District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff Andrew Corporation ("Andrew"), filed this suit on
September 23, 2004 alleging that defendant Beverly Manufacturing
Company ("Beverly"), infringed two of Andrew's United States
patents No. 5,850,056 ("the '056 patent"), and No. 6,324,543
("the '543 patent"). (Dkt. No. 1). Beverly filed an answer,
affirmative defenses and counterclaim on November 8, 2004. (Dkt.
No. 12). On January 7, 2005, Beverly filed a motion for partial
judgment on the pleadings as to Andrew's infringement allegations
under the '543 patent pursuant to Rule 12(c) of the Federal Rules
of Civil Procedure, ("Rules"). (Dkt. No. 21). On February 3,
2005, this court granted Beverly's motion to stay discovery on
the '543 patent pending this court's determination of Beverly's
motion for judgment on the pleadings involving the '543 patent.
(Dkt. No. 27). The court's February 3, 2005 order also required
Andrew to identify the claims in the '543 patent that it alleges
Beverly's device infringes and required the parties to submit
jointly a paginated copy of the '543 patent's prosecution
history. For the reasons set forth below, this court denies
Beverly's motion for judgment on the pleadings, vacates the stay
of discovery and requests the parties to proceed with the agreed
amended litigation schedule set on May 26, 2005. (Dkt. No. 44). BACKGROUND
The '543 patent, dated March 12, 2002, is entitled "Stackable
Transmission Line Hanger." (Dkt. No. 31 at pg. 1). The '543
patent is for a device that allows the connection of transmission
cables to an antenna system such as a cellular or communication
tower. (Id. at 15). The patented device also contains a feature
that allows it to connect with other copies of the device so that
several transmission cables can be "stacked" or held by an
interconnected series of the patented devices to the transmission
Andrew's complaint alleges that Beverly's product Part No.
62875 ("Part No. 62875"), infringes Andrew's '543 patent. (Dkt.
No. 1 at ¶ 13). Andrew asserts that Beverly's device infringes
Claims 1, 2, 3, 4, 7, 8, 11, 12, 13, 15, 16, 17, 19, 20, 31, 32,
33, and 38 of the '543 patent. (Dkt. No. 30). Andrew seeks a
judgment of infringement, equitable and monetary relief, costs
and attorneys' fees. (Dkt. No. 1 at pg. 4). Exhibit B to Andrew's
complaint is a letter dated August 12, 2004 sent by one of its
attorneys to Beverly asserting that Beverly's Part No. 62875
infringes Andrew's '543 patent. The August 12, 2004 letter also
demanded that Beverly stop producing and selling Beverly's Part
No. 62875 and that Beverly provide an accounting of all Part No.
62875s sold since Andrew received its '543 patent. (Dkt. No. 1
Beverly filed a counterclaim seeking a declaration that its
Part No. 62875 does not infringe the '543 patent and seeking
attorneys' fees. (Dkt. No. 12 at pg. 8-9). Beverly argues that
this court can decide this issue of noninfringement under a 12(c)
motion for judgment on the pleadings. Andrew in response contends
that Beverly's motion goes beyond the pleadings, and therefore
the court cannot decide this issue under the present procedural
posture of the case. ANALYSIS
Andrew's complaint invokes this court's subject matter
jurisdiction pursuant to 35 U.S.C. §§ 271 and 281 and
28 U.S.C. §§ 1331 and 1338. (Dkt. No. 1 at ¶ 4). An actual controversy
exists between Andrew and Beverly so as to allow for the
existence of Beverly's requested relief of a judgment on the
pleadings of noninfringement. See Anoto AB v. Sekendur, No. 03
C 4723, 2004 WL 2434220, at * 1 (N.D. Ill. Oct. 28, 2004) (citing
Arrowhead Indus. Water, Inc. v. Ecolochem, Inc., 846 F.2d 731,
736 (Fed. Cir. 1988)).
A. Motion for Judgment on the Pleadings verses Summary
As previously mentioned, the parties disagree whether this
court can determine at this stage in this litigation whether
Beverly's Part No. 62875 infringes Andrew's '543 patent. Beverly
argues that this court can decide the question of infringement
under a motion for judgment on the pleadings pursuant to Rule
12(c) of the Federal Rules of Civil Procedure ("Rules"). Andrew
counters that Beverly's motion and secondary information provided
by Beverly in support of its motion goes beyond the pleadings,
and therefore inappropriately converts the motion to one for
summary judgment. Andrew further argues summary judgment is not
appropriate at this stage in the litigation because the parties
have not yet to engage in discovery on the '543 patent/Part No.
62875 issue. Andrew also argues that Beverly should be denied
summary judgment because Beverly has failed to follow the
procedural requirements for the submission of factual information
in support of summary judgment under Local Civil Rule 56 (N.D.
As to procedural rules this court is bound to follow Seventh
Circuit law because as the United States Court of Appeals for the
Federal Circuit has stated, the regional appellate rules govern "procedural matters not unique to the areas that are
exclusively assigned to the Federal Circuit," National Pesto
Indus., Inc. v. West Bend Co., 76 F.3d 1185, 1188 n. 2 (Fed.
Cir. 1996) (citing Lummus Indus., v. D.M & E. Corp.,
862 F.2d 267 (Fed. Cir. 1996)). This court is, of course, bound by Federal
Circuit law on substantive areas of patent law exclusive to the
Federal Circuit's jurisdiction, but, this court must look to the
law of the Seventh Circuit for the proper method of addressing a
motion for judgment on the pleadings.
Andrew has not provided, and this court has been unable to
identify through its own research, any binding authority from the
Seventh Circuit or persuasive authority from the Federal Circuit
that holds that it is per se inappropriate for a court to
address a counterclaim of noninfringement by the procedural means
of a motion for judgment on the pleadings. Andrew's argument is
not that it is improper in general to address a motion for a
judgment on the pleadings, but that what Beverly is attempting to
do violates the requirements for a judgment on the pleadings
under Rule 12(c) by improperly requiring the conversion of the
motion to one for summary judgment under Rule 56.
The court, after reviewing the arguments presented by counsel,
believes that the proper procedure for the court to follow is to
address Beverly's motion for judgment on the pleadings as such
under Rule 12(c) and not convert Beverly's motion into one for
summary judgment under Rule 56.*fn1 1. Standard of Review for Rule 12(c) Judgment on the
Rule 12(c) permits for a motion for judgment on pleadings at a
point after the close of the pleadings but within such time that
the motion would not delay the trial. Fed.R.Civ.P. 12(c). A
court reviewing a Rule 12(c) motion for judgment on the pleadings
must apply the same standard as applied for a Rule 12(b)(6)
motion to dismiss for failure to state a claim upon which relief
maybe granted. Guise v. BMW Mortgage Inc., 377 F.3d 795, 798
(7th Cir. 2004). The well-pleaded allegations in the complaint
must be accepted as true and the ambiguities in the complaint
must be construed in favor of the plaintiff. Thompson v.
Illinois Dep't of Prof'l Regulation, 300 F.3d 750, 753 (7th Cir.
2002). Granting a Rule 12(c) motion is only permissible "when it
appears beyond a doubt that the plaintiff cannot prove any facts
to support a claim for relief and the moving party demonstrates
that there are no material issues of fact to be resolved."
Guise, 377 F.3d at 798.
"In a motion for judgment on the pleadings, the court considers
the pleadings alone, which consist of the complaint, the answer,
and any written instruments attached as exhibits." Housing Auth.
Risk Retention Group, Inc. v. Chicago Hous. Auth., 378 F.3d 596,
599 (7th Cir. 2004) adopting No. 02 C 4474 (N.D. Ill. 2003).
The court can also consider copies of written documents that the
defendant attaches to the motion when the documents are referred
to in the plaintiff's complaint, they are central to the
plaintiff's claims but were not attached as exhibits, Albany
Bank & Trust Co. v. Exxon Mobil Corp., 310 F.3d 969, 971 (7th
Cir. 2002). The court can also take judicial notice of matters in
the public record. Anderson v. Simon, 310 F.3d 969, 971 (7th
Cir. 2002). 2. Material Considered by the Court on the Motion for Judgment
on the Pleadings
Andrew objects to the consideration of other patents and their
prosecution histories to which Beverly has referred in its motion
and supporting memorandum. Andrew's view is that the court should
only consider the pleadings and the '543 patent, and that other
materials Beverly has requested the court to consider should be
The court's evaluation of materials is not quite as limited as
Andrew asserts because the court is allowed to take judicial
notice of information in the public record when considering a
motion for judgment on the pleadings. Anderson v. Simon,
310 F.3d 969, 971 (7th Cir. 2002). A patent and a patent's
prosecution history are public documents in the public record and
therefore the court can also consider these documents.
The court cannot, however, consider all of the material
presented by Beverly in its motion and supporting exhibits.
Beverly includes a marketing flyer with pictures of Part No.
62875 and also includes a physical example of Part No. 62875.
Both parties also include various pictures of the Beverly and
Andrew products with their memoranda. As stated earlier in this
opinion, the court will not consider this additional material
with regard to a motion for judgment on the pleadings.
Rule 10(c) allows for the attachment of "a copy of any written
instrument" as an exhibit to a pleading. Fed.R.Civ.P. 10(c).
The judicially created corollary of Rule 10(c) is the rule
allowing the defendant to attach to a motion to dismiss a copy of
a written document that is referred to in the plaintiff's
complaint and is central to the plaintiff's claim. See e.g.,
Albany Bank & Trust Co. v. Exxon Mobil Corp., 310 F.3d 969, 971
(7th Cir. 2002). The Seventh Circuit has defined "written
instruments" under Rule 10(c) to "include document such as
affidavits, letters, . . . contracts, and loan documents." Northern Indiana
Gun & Outdoor Shows, Inc. v. City of South Bend, 163 F.3d 449,
453 (7th Cir. 1998) (internal citations omitted).
The physical item Part No. 62875 does not fall within the
definition of "written instruments" under Rule 10(c) or Rule
10(c)'s judicially recognized corollary rule. This court agrees
with Beverly that Beverly's Part No. 62875 is a central item in
the dispute much the same way that a contract would be the
central item in a breach of contract dispute. Although it seems
like a technicality, the plain language of Rule 10(c) and the
Seventh Circuit interpretation limits the court to considering
only "written documents." Therefore, the court must exclude
Beverly's Part No. 62875 from its consideration of Beverly's
motion for judgment on the pleadings.
B. Claim Construction
To assist the parties, the court has examined certain of the
claim language of the '543 patent. Claim construction of the '543
patent can proceed and, indeed, should proceed without reference
to the alleged infringing device because claim construction, "is
a matter of law for the court to determine." Markman v. Westview
Instruments, Inc., 52 F.3d 967, 976 (1995) (en banc) aff'd
517 U.S. 370 (1996). The first step in construing a claim is to look
to the intrinsic evidence concerning the patent, which includes
the patent specification as well as the patent's prosecution
history. It is improper for a court to rely on extrinsic evidence
when evaluation of the intrinsic evidence resolves the dispute
regarding the construction of a claim. Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). "Where
the public record unambiguously describes the scope of the
patented invention, reliance on any extrinsic evidence is
improper." Id. "The words of the claims themselves define the
scope of the invention, and are given their ordinary and
customary meaning." Id. (citations omitted). Generally
speaking, there is a heavy presumption that a claim term carries its ordinary and
customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002). "[P]rior art cited in a patent
or cited in the prosecution history of the patent constitutes
intrinsic evidence." V-Formation, Inc. v. Benetton Group SpA,
401 F.3d 1307, 1311 (Fed. Cir. 2005) (quoting Kumar v. Ovonic
Battery Co., 351 F.3d 1364, 1368 (Fed. Cir. 2003)).
The heavy presumption of plain meaning is rebutted, and a court
may limit the ordinary meaning of a claim where: (1) the patentee
acting as his own lexicographer clearly established a definition
of the term different from its customary meaning in either the
patent specification or prosecution history, Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996), (2)
"the term `chosen by the patentee so deprive[s] the claim of
clarity' as to require resort to other intrinsic evidence for
evidence for a definite meaning, CCS Fitness, 288 F.3d at 1367,
(3) the doctrine of prosecution disclaimer applies, and (4) the
patentee phrases the claim in means-plus-function format. See
35 U.S.C. § 112 ¶ 6; Allen Eng'g Corp., 299 F.3d at 1347-48.
"Where the patentee has unequivocally disavowed a certain
meaning to obtain his patent, the doctrine of prosecution
disclaimer attaches and narrows the ordinary meaning of the claim
congruent with the scope of the surrender." Omega Eng'g, Inc. v.
Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003). See also
Spectrum Int'l, Inc. v. Sterlite Corp., 164 F.3d 1372, 1378
(Fed. Cir. 1998) ("[E]xplicit statements made by a patent
applicant during prosecution to distinguish a claimed invention
over prior art may serve to narrow the scope of a claim.");
Southwall Tech. Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576
(Fed. Cir. 1995) ("The prosecution history limits the
interpretation of claim terms so as to exclude any interpretation
that was disclaimed during prosecution."); Standard Oil Co. v.
American Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985) ("[T]he prosecution history . . . limits the interpretation of
claims so as to exclude any interpretation that may have been
disclaimed or disavowed during prosecution in order to obtain
claim allowance."). The doctrine of prosecution disclaimer is not
applied where the "alleged disavowal of claim scope is
ambiguous." Omega Eng'g, Inc., 334 F.3d at 1324.
Claims may be written in the means-plus-function form according
to 35 U.S.C. § 112, ¶ 6, which reads as follows:
An element in a claim for a combination may be
expressed as a means or step for performing a
specified function without the recital of structure,
material, or acts in support thereof, and such claim
shall be construed to cover the corresponding
structure, material, or acts described in the
specification and equivalents thereof.
35 U.S.C. § 112, ¶ 6. "The use of the word `means' `triggers a
presumption that the inventor used this term advisedly to invoke
the statutory mandate for means-plus-function clauses." Allen
Eng'g Corp., 299 F.3d at 1347 (citations omitted). This
presumption may be overcome when the claim language either
recites no function corresponding to the means or describes
sufficient structure or material for performing the structure.
1. Terms to be Constructed: "Locking Barb" & "Detent"
Beverly asserts that independent claims 1, 5, 31, 32, 33, 34,
35, 36, 37, and 38 of Andrew's '543 patent requires a "locking
barb" and Beverly's product does not include a locking
barb.*fn2 The question presented by the parties' arguments
is whether a "locking barb" and a "detent" are interchangeable
terms in relationship to the '543 patent. Beverly argues that its
Part No. 62875 does not infringe Andrew's '543 patent because its
part contains a "detent" while Andrew's patent requires a locking barb. Beverly does not provide
a definition of a "detent" or "locking barb." Instead, Beverly
argues that two prior art patents cited in the '543 patent,
United States Patents No. 5,393,021 (`021), and 4,763,132 (`132),
demonstrate that a locking barb is different than a detent.
Andrew argues that the term "locking barb" is used in the '543
patent in its ordinary and customary meaning. Although not
defining "locking barb," Andrew provides a definition for "barb"
from New Webster's Dictionary and Thesaurus of the English
Language. According to Andrew's dictionary definition, a barb is
"the part of an arrow, fishhook, bee's sting, etc. that points
backwards and prevents or hinders removal." (Dkt. No. 33 at pg. 6
citing New Webster's Dictionary and Thesaurus of the English
Language 77 (2d ed. 1992)). Andrew provides the McGraw-Hill
Dictionary of Science and Engineering definition for a "detent"
as "a catch or lever in a mechanism which initiates or locks
movement of a part, especially in escapement mechanisms," and
provides the New Webster's definition of a "detent" as "a catch
for controlling the motion of machinery, especially, one used in
horology," for the making of time pieces. (Id. at pg. 7).
Andrew's argument is that these dictionary definitions
demonstrate that a barb and a detent are the same thing because
they are both used to attach an item against another surface.
The court agrees with Beverly's argument to the extent that the
court agrees that the prior art patent '021 is relevant to the
interpretation of the '543 patent. The '021 patent relates to a
device used to connect cables to transmission towers. One of the
short comings of the '021 patent, according to the background
section in the '021 patent, is that the patented device does not
make full contact with the transmission tower in certain
situations. (Dkt. No 21, Ex 4 at col. 2, 1. 20-35). The inability
to make full contact is caused by non-uniformities such as imperfections, bubbles or variations in the galvanizing finish of
the attachment opening on the tower wall.
The '543 patent specifically addresses the same situation but
states that "the hanger 10 is designed such that each locking
barb 22 contacts the inner surface 60 of the supporting
structure 5 at the barb contact point 23." (Dkt. No. 31 at
Paske 17). This is a key difference between the '543 and '021
patents. The '021 patent recognizes the inefficiency in the
process of the attachment of the '021 patented device to the
larger support tower due to irregularities in the tower wall's
finishing. The '543 patent corrects for this problem by allowing
for complete attachment to the tower wall even when the tower
wall structure has irregularities.
The court cannot, however, accept the remainder of Beverly's
argument. The '021 patent uses the word "detent" for the part of
the device that connects the device to the tower. The '543 patent
uses the phrase "locking barb." Beverly argues that since the
'021 patent contains the word "detent" and '543 patent has the
phrase "locking barb," this means that a "locking barb" and a
"detent" are two different things.
The court cannot agree with Beverly's conclusion on that point
at this time. The locking barb and the detent are the parts of
the patented devices in the two respective patents which enhances
the connection of the patented device to the tower. It is true
that the '021 patent claims a lesser level of connection to the
tower than the '543 patent. However, this does not mean that the
respective connectors in each patent, the locking barb and the
detent, are different items. The '543 mentions that it is able to
correct the irregularity in the connection, not through the use
of the locking barb, but instead through the design of the
patented product. "The hanger 10 is designed such that each
locking barb 22 contacts the inner surface 60 of the
supporting structure 5 at the barb contact point 23." (Dkt. No. 31 at Paske 17)
(emphasis added). The difference in result from the '021 patent
and the '543 patent does not appear to be based on the presence
of the detent in the '021 patent and locking barb in the '543
patent. The difference appears to be due to the adjustment of the
design of the '543 patent. The court, however, cannot make a
definitive determination on this point at this time.
Although the court has been able to consider the parties
arguments as they relate to the '543 and '021 patents, the court
cannot proceed with an infringement analysis for several reasons.
The court cannot consider Beverly's Part No. No. 62875 because to
do so would expand beyond the scope of a Rule 12(c) motion for
judgment on the pleadings.
Even if the court could consider Beverly's Part No. 62875, the
court does not have sufficient information to determine whether
Beverly's part infringes Andrew's '543 patent. The court has
attempted to construe key patent term in dispute within the
context presented by the parties at this time. The court
recognizes the difference between the '021 patent and the '543
patent as they relate to the connection of the patented products
to the tower and the difficulties in that connection due
irregularities that are sometimes present in the tower structure
D. Sanctions and Attorneys Fees
Both parties also seek attorneys' fees and sanctions from the
other party in relation to this motion. In light of the fact that
this is an outgoing litigation and neither party has obtain
prevailing party status, this court will not consider requests
for attorneys' fees and sanctions at this time. CONCLUSION
For the reasons set forth above, Beverly's motion for judgment
on the pleadings as to its counterclaim of noninfringement on
Andrew's '543 patent is denied. The stay of February 3, 2005 of
discovery related to the '543 patent is lifted. The parties are
to proceed under the agreed amended litigation schedule of May
26, 2005. (Dkt. No. 44).