The opinion of the court was delivered by: Matthew F. Kennelly, District Judge:
MEMORANDUM OPINION AND ORDER
Konvin Associates has sued Extech/Exterior Technologies contending that Extech's standing seam roofing system infringes on Konvin's United States patent, number 6,164,024 (the "'024 patent"). On April 6, 2005, the Court conducted a claim construction hearing and in an oral ruling, construed disputed terms in the patent. Extech has moved for summary judgment, arguing that the asserted claims in the patent are invalid or, alternatively, that its system does not infringe the patent. Konvin has filed a cross motion for summary judgment on the infringement issue only. For the following reasons, the Court grants Extech's motion in part and denies it in part and denies Konvin's motion.
Konvin's invention is a unique type of standing seam roofing system. It allows contractors to securely install translucent roofing panels, like those used in skylights, in buildings located in areas that experience hurricane force winds. Konvin's system uses metal clips and U-shaped plastic pieces to attach the panels (also called glazing panels) to a roof. The glazing panels have narrow "flanges" -- called seam flanges -- which extend upward less than an inch along the panels' edges. The seam flanges fit underneath one side of an "I" shaped metal clip that is screwed onto a roof. A U-shaped plastic piece, called a batten, fits over the top of the metal clip and clasps snugly into teeth located on the sides of the seam flanges. In windy conditions, the top of the metal clip and the batten prevent the panels from being blown away. The system is depicted below:
Konvin's president, Moshe Konstantin, claims that the need for this invention arose in the wake of Hurricane Andrew, after the state of Florida passed regulations requiring all roofing panels to be hurricane resistant. At that time, according to Konstantin, there was no standing seam roofing system on the market that employed glazing panels strong enough to satisfy these regulations. Once Konvin began selling its hurricane resistant system, it became enormously successful.
The relevant claims in the '024 patent describe Konvin's system as follows:
1. A glazing panel system for use with rafters and purlins and having light transmission to withstand forces of approximately 50 psf or 100 mph wind speeds, said glazing system comprising: . . . a top flange on the retention clip abutting the top sides of each of said adjacent seam flanges over a distance about equal to or greater than the length of the base to retain the glazing panels against said forces, the central web having side bearing surfaces that are substantially flat and extend continuously between the top flange and base of the clip with the bearing surfaces having a predetermined height sized to substantially match that of the exterior faces of the seam flanges between the top sides of the seam flanges and the bottom sheet of the panels to allow the exterior faces to bear flush against the web bearing surfaces continuously therealong between the top flange and base of the clip.
5. A glazing panel system in accordance with claim 1 wherein: a second web is spaced from the first web, and is positioned parallel to and spaced from the first web on the retention clip; and the spaced webs separating adjacent upstanding seam flanges further apart at the seam than the thickness of a single web.
13. A glazing panel system having light transmission to withstand forces of approximately 50 psf or from winds in excess of 50 mph and for use with rafters and purlins, said glazing system comprising: . . . at least one retention clip . . . having a base for being secured to the purlins . . . ; a top flange on the retention clip abutting the top sides of each of said adjacent seam flanges over a distance about equal to or greater than the width of the rafter to retain the snap-fit detents on the seam flanges from peeling loose from the detents on the batten members to withstand 50 psf or winds in excess of 50 mph with the central web having a predetermined height to position the top flange to engage tightly against the top sides of the adjacent seam flanges so that said engagement provides the primary resistance against pull forces tending to separate the tooth snap-fit detents of the batten members and seam flanges and the batten joined panels off from the framework of purlins and rafters.
15. A clip for architectural panel members having upstanding seam flanges connected by a batten-type joining connector, the clip comprising: a central web portion of the clip having side bearing surfaces for being disposed between adjacent panel members and extending between connected seam flanges thereof;
a base integral with the central web portion and having a predetermined length; and
a top flange which extends integrally transverse to the base length on top of the central web portion continuously across the web portion to provide the top flange with a transverse width with the central web portion having a predetermined height sized so that the integral top flange engages over and tightly against one adjacent panel seam flange on one side of the clip central portion to stiffen the connected panel members.
20. The retaining clip of claim 15 wherein the central web portion includes a pair of spaced web portions with each web portion having an outer bearing surface for engaging a panel abutted thereagainst with the bearing surfaces of the pair of web portions being spaced at a predetermined distance.
21. The retaining clip of claim 20 wherein the pair of spaced webs define an upwardly, opening channel therebetween to receive a depending tongue of a batten member.
Extech contends that the '024 patent is a combination of references contained in prior art, including one that is described in the '024 patent. As depicted in figure 13, reproduced below, that particular prior art reference is a glazing panel system identical to the Konvin system, except that the top flanges of the I-shaped metal clips do not abut the top sides of the seam flanges over a distance about equal to the length of the clip's base, and the clip does not have portions of non-uniform thickness. '024 patent, drawing sheet 5 of 5.
The prior art also includes a number of other standing seam roofing systems that are designed to operate in a manner similar to the system described in the '024 patent. Though these systems are designed for use with metal panels, they disclose the elements of the '024 patent not disclosed by the figure above, namely, a metal clip that abuts the top sides of the seam flanges over a distance about equal to the length of the clip's base and a clip that has portions of non-uniform thickness.
Summary judgment may be granted only when there are no genuine issues of material fact in dispute and the moving party is entitled to judgment as a matter of law. FED. R. CIV. P. 56(c). In considering a motion for summary judgment, the Court views the facts in the light most favorable to the nonmoving party and draws reasonable inferences in its favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).
Before proceeding to the substantive issues presented by the summary judgment motions, the Court must first resolve a procedural matter. Extech has asked the Court to strike expert testimony contained in an affidavit submitted by Moshe Konstantin because he was not identified as an expert witness under Federal Rule of Civil Procedure 26(a)(2)(A). Konvin has raised the same objection to an affidavit submitted by William P. Voegele.
The parties clearly violated Rule 26(a)(2)(A) by failing to disclose Konstantin and Voegele as expert witnesses prior to the deadline established by the Court for making such disclosures. The remedy for such a violation, however, is not necessarily the exclusion of a witness' testimony. Rule 37(c) provides that a party is not permitted to use evidence disclosed in violation of Rule 26(a) "unless such failure is harmless." In the absence of prejudice to an opposing party, therefore, a discovery violation does not merit the wholesale exclusion of evidence.
Neither party contends that admitting the Konstantin and Voegele affidavits would be unfairly prejudicial. Without any indication that either side was harmed by these discovery violations, the Court declines to exclude the evidence. Sherrod v. Lingle, 223 F.3d 605, 613 (7th Cir. 2000). To the extent the parties have made specific objections to the affidavits because they contain inadmissible hearsay or are not based on personal knowledge, the Court addresses the objections in the course of the discussionbelow.
Extech maintains that certain claims in the '024 patent are invalid because they are indefinite, anticipated by prior art, or obvious. Because a patent is presumed valid, 35 U.S.C. § 282, Extech must establish invalidity by clear and convincing evidence. AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1238-39 (Fed. Cir. 2003).
Extech argues that claims 5 and 21 are invalid because they are indefinite under 35 U.S.C. § 112, ¶ 2. That statute provides that "[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2. The Federal Circuit has held that this provision contains two requirements: "first, [the claim] must set forth what 'the applicant regards as his invention,' and second, it must do so with sufficient particularity and distinctness, i.e., the claim must be sufficiently 'definite.'" Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1348 (Fed. Cir. 2002)(quoting Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1377 (Fed. Cir. 2000)). "[T]he inquiry under section 112, paragraph 2, . . . focuses on whether the claims, as interpreted in view of the written description, adequately perform their function of notifying the public of the patentee's right to exclude." Solomon, 216 F.3d at 1379. In Allen, the Federal ...