The opinion of the court was delivered by: Jeanne E. Scott United States District Judge
JEANNE E. SCOTT, U.S. District Judge
This matter comes before the Court on the following partial summary judgment motions:
Plaintiff GSI Group, Inc.'s (GSI) Motion for Partial Summary Judgment that GSI's Bin Door Patent (U.S. Patent No. 5,135,271) is Valid as to 35 U.S.C. §§ 101, 102, and 112 (d/e 400) (Motion 400); GSI's Motion for Partial Summary Judgment Against Sukup's Inequitable Conduct Affirmative Defense and Counterclaim, and for a Declaration of Enforceability as to GSI's Bin Door Patent (d/e 420) (Motion 420); Defendant Sukup Manufacturing Co.'s (Sukup) Alternative Motion for Summary Judgment of Invalidity of U.S. Patent No. 5,135,271 (d/e 454) (Motion 454); and Sukup's Motion for Summary Judgment of Non-Infringement of U.S. Patent No. 5,135,271 (d/e 442) (Motion 442).
For the reasons set forth below: Motion 400 is allowed; Motions 420 and 442 are allowed in part; and Motion 454 is denied.
I. THE PATENT and PRIOR ART
United States Patent No. 5,135,271 (271 Patent) describes an improved latching mechanism and pin design for grain storage bin doors. Grain storage bins are cylindrical structures made of corrugated metal designed to hold large amounts of grain. When the bins are full, the grain presses outward against the walls of the bin. This pressure is called "hoop stress." The bins have doors on the sides to allow access to the interior of the bins when the bins are empty. The problem is how to construct a door that can withstand the hoop stress when the bin is full and still open and close easily when the bin is empty. Sukup Unsealed Summary Judgment Exhibits (d/e 461) (Sukup Unsealed Exhibits), Exhibit 21, U.S. Patent No. 5,135,271 (271 Patent), Background of Invention.
Prior designs used metal pins pointing inward toward the interior of the bin, placed in rows on the vertical sides of the door frame (also referred to as the door jamb). The door was divided into several horizontal door panels (also referred to as cover members). The door panels were hinged to swing into the bin to open. The door panels also had holes on each side that would fit over the pins located on the door frame. When the door was shut, the pins would hold the door panels in place when the grain was placed into the bin. The pins effectively integrated the door into the wall so that the door panels would bear the hoop stress as part of the bin wall. Id. Grain bins using this design were sold under the names of Brock and Stormor. The Brock design was patented by a man named Grossman. Sukup Unsealed Exhibits, Exhibit 20, U.S. Patent No. 4,913,478.
A problem arose from the prior designs because the hoop stress would cause the pins to press up and stick against the side of the holes in the doors. When the grain bins were then emptied, the door panels would stick on the pins and become difficult to open. The 271 Patent describes a latching mechanism that solves this problem by using a latch that creates leverage when opening the door to force the door off the pins. The 271 Patent also describes an improved pin that better withstands the shear force applied by the bin walls and the door panel as they pull against the pin under the weight of the grain when the bin is full.
The abstract to the 271 Patent states: In order to help disengage the cover member from the adjacent bin wall, the latching apparatus includes cam means for providing a mechanical advantage to force the cover member out of engagement with the pins and thereby permit the cover member to open with reduced effort. 271 Patent, Abstract.
The detailed drawings of the preferred embodiment of the invention show a grain bin door divided into three horizontal door panels, one above the other. The 271 Patent drawings of the door are set forth in Figures 1 and 2, of the 271 Patent, reproduced in Appendix A to this Opinion. Each door panel is hinged to swing into the bin when opened. Each door panel has a series of holes lined up vertically on each side to fit over the row of pins on each side of the door jamb. Each door panel has two latch bars on the outside of the door panel. The two latch bars run horizontally, one above the other, for the width of the door panel.
At either end, the latch bar is connected to the cover member by a capital "L" shaped hook with the latch bar attached to the top of the L shape and the door panel attached to the base of the L shape by a bolt that acts as a pivot point. A detailed drawing of the L shaped hook is set forth in Figure 7 of the 271 Patent, reproduced in Appendix B.
When the door panel is closed, the L shaped hook fits over a rod or bolt that sticks out from the door frame that acts as a catch. The door panel is latched by forcing the L shaped hook over the catch so that the L shape is upside down and the catch is caught in the corner formed by the L shape.
The base of the L shape is flat on the bottom, but the top of the base of the L shape is curved. The curved shape runs next to the catch when the latch is opened and closed. The curve is designed so that the catch is closer to the pivot point on the door panel when the latch is closed and farther from the pivot point when the latch is opened. The curve acts as a cam when the door is opened and closed. When the latch is closed, the catch runs along the curve of the cam and pulls the pivot point on the door panel closer to the catch. This forces the door panel closer to the catch on the exterior of the door frame. The effect of this is to force the door panel onto the pins and shut. When the latch is opened, the catch runs along the cam surface and forces the pivot point on the door panel farther away. This forces the door panel away from the catch on the door frame and into the empty bin. The effect is to push the door panel off the pins on the inside of the door frame, allowing it to swing open into the empty bin.
A lever with a cam surfaced end had been used in other contexts. In 1956, a man named Oswald patented a fastener that used a lever with a cam to open casement windows. Sukup Unsealed Exhibits, Exhibit 18, U.S. Patent 2,767,008 (Oswald Patent). The drawings from the Oswald Patent are reproduced in Appendix C. The drawings showed a pin protruding out of the side of a window frame and lever attached to the window sash. The casement window was hinged on the side opposite the fastener. The lever consisted of a body that was generally round with one flat side. A handle protruded out from the body. The body was attached to the side of the window sash and could be rotated around the screw by raising and lowering the handle. The body of the fastener also had a curved channel cut into it that the pin would slide into. When the handle was lowered, the curved sides of the channel acted as a cam surface to force the pin toward the frame to close the window. When the handle was raised, the curved channel forced the pin away from the frame to allow the window to be opened. The Oswald Patent stated:
[W]hen the fastener handle 4b is raised the cam surface 4d, acting against the projecting portion of the keeper pin 5, will serve to forcibly start the opening of the sash and this action is made doubly effective by the relief of the cam surface 4d at its inner end which causes the shoulder formed by the relief to suddenly strike the keeper pin and separate the sash from the frame in event they are stuck together with varnish or paint. Id., at 2.*fn1
The grain bins in use at the time GSI submitted the 271 Patent application, however, did not use cam openers. The Stormor door used a latch that consisted of two flat pieces of metal. Between the two pieces of metal was a cam mechanism operated by a handle that protruded from one side of the latching device. A drawing of the latch is set forth in Appendix D. One piece of metal was attached to a hinge that was attached to the door panel. The end of the other piece of metal was bent up to form a hook edge. The protruding handle operated the cam mechanism to move the piece of metal with the hook edge back and forth. Another flat piece of metal was attached to the door jamb. The end of this piece of metal on the door jamb was also bent to form a hook edge. To close the door panel, the two hook edges would be interlocked. The handle would then be turned to pull the door panel shut. To open, the handle would be turned to release the interlocked hook edges. Once released, the door could be opened; however, the latch did not apply any force on the door panel to force the panel open.
The Grossman/Brock bin used an L shaped handle attached to the door panel. A copy of the drawings from the Grossman Patent are reproduced in Appendix E. The L shaped handle hooked over a pin that protruded from the door jamb. To close the door panel, the handle was forced down over the pin, which pulled the door panel shut. The L shaped handle, however, was not attached to the door with a cam surface. Thus, lifting the handle allowed the door panel to be opened, but did not apply any force on the door panel to force the panel off the pins. The cam action in the 271 Patent latch provided force to release the stuck pins.
The 271 Patent also described an improved pin design. The 271 Patent Abstract stated that the 271 Patent disclosed an "improved pin structure." Id. The detailed drawings in the 271 Patent also showed the pin. Those drawings are set forth in Figures 4 and 8 in the 271 Patent, reproduced in Appendix F.
The pin was fastened to the door frame by a bolt. The bolt passed through the pin and was secured by a nut on the top of the pin. The portion of the pin that protruded into the bin was tapered. The portion of the pin that was next to the wall of the bin door frame had a shoulder with a diameter slightly smaller than the rest of the pin. This shoulder fit into the hole in the wall of the bin door frame so that the wall of the hole in the door frame abutted the pin rather than the bolt that fastened the pin to the wall. This design kept the door frame from pressing directly against the bolt when the hoop stresses from a full bin were pushing against the wall. Otherwise, the pressure from the side of the wall pressing against the bolt would tend to shear off the bolt more easily. The detailed description of the preferred embodiment of the 271 Patent stated:
Pin 38 is comprised of a threaded bolt 76 which extends through a cap bar or washer 78, and through an enlarged hole 80 in door jamb 18 which is substantially larger than the diameter of bolt 76. A load transfer pin member 82 is secured in place on bolt 76 and the bolt is preloaded or tensioned by a threaded nut 84. Specifically, nut 84 is tightened on bolt 76 to a pre-determined torque level thereby to preload the bolt in tension and to tightly draw the base of pin member 82 and cap bar 78 into firm frictional engagement with jamb 18 held therebetween. In this manner, loads between the jamb 18 and the cover members are substantially transferred by the frictional engagement of the pin member and the cap bar with jamb 18, and not by bolt 76 bearing against the edge of enlarged hole 80. It will be appreciated that, in this manner, bolt 76 is loaded only in tension due to its preload and the bolt is not subjected to substantial shear. This had the effect of increasing the load-carrying capability of improved pin means 34, 38 of the present invention.
Pin member 82 includes a generally cylindrical body portion 86 and an inwardly extending tapered portion 88. The diameter of cylindrical body portion 86 is only slightly less than the diameter of bore 36 to provide a snug fit between body portion 86 and bore 36. The diameter of the portion of bolt 76 which passes through hole 80 in door jamb 18 is substantially less than that of hole 80 so that the shear forces, as heretofore described, exerted between storage structure jamb 18 and cover member 24 will not act to shear bolt 76. 271 Patent, at 5. The 271 Patent also stated that the interior of the pin could be threaded so that the bolt could be screwed into the pin, which would eliminate the need for the nut on the end. Id.
The Grossman/Brock design used the head of the bolt as the pin on the interior of the door jamb. The Stormor design used a cap/nut as the pin on the interior of the jamb. A drawing of the two designs is set forth in Appendix G. Under either of these designs, the side of the hole in the door frame contacted the bolt directly and, thus, applied hoop stresses, or shear forces (or loads), directly on the bolt rather than the pin.
II. DEVELOPMENT OF THE 271 PATENT
GSI assigned Ronald Bestwick to the task of designing an improved bin cover door. Bestwick previously worked for Stormor as chief engineer. In that capacity, Bestwick designed grain bins for Stormor. Sukup Sealed Exhibits, Exhibit 242, Excerpts of Deposition of Ronald Bestwick, at 17-18. Bestwick had a bachelor's degree in agricultural engineering. Bestwick first started on improving the pin design. Bestwick added a shoulder to the pin. He considered this an important feature of his invention. The shoulder was the portion of the pin with the smaller diameter that fit into the hole in the door jamb. By having the side of the door jamb press against the shoulder of the pin, the shear forces were absorbed by the shoulder of the pin instead of the bolt. See Sukup Sealed Summary Judgment Exhibits (d/e 460) (Sukup Sealed Exhibits), Exhibit 111, Excerpts of Deposition of Ronald Bestwick (Bestwick Deposition), at 26-27, 36-37. After developing the pin, Bestwick developed the handle with the cam surface to force the door panels off the pins. The first prototypes of the new door were completed in early 1990. Id., at 36.
GSI began testing the new designs in 1990. Bestwick tested the design and a prototype at the GSI facility in early 1990. On April 12, 1990, and May 17, 1990, the design was tested to see if it would be able to handle the hoop stresses that would occur in normal use. These tests were conducted at the University of Illinois by German Gurfinkel, a structural engineer. Gurfinkel tested a light weight design, intended for grain bins up to 27 feet in diameter, and a heavy weight design, intended for grain bins up to 65 feet in diameter. Both were put under stress until they failed. In both cases, the design failed at points beyond the hoop stress expected under normal use. Thus, the design could withstand the stresses that could be expected in normal use. These tests did not test the efficacy of the new handle design for opening and closing the cover members. On May 25, 1990, Gurfinkel produced a report of the test results. Sukup Sealed Exhibits, Exhibit 153, Second Progress Report; Bestwick Deposition, at 52-55.
GSI also installed a grain bin door at the Vogel Popcorn facility in Mattoon, Illinois, in April 1990. Bestwick said the door was installed at Vogel Popcorn to test the door. Bestwick Deposition, at 37-38. GSI asked for permission to install the door in an existing bin. GSI did not charge Vogel Popcorn for the door. No evidence indicates that GSI required Vogel Popcorn to sign any confidentiality agreements regarding the door. The door installed was hand-made. Bestwick supervised the installation of the door and instructed Vogel Popcorn personnel on the proper operation of the door. Id., at 37-51.
GSI selected the Vogel Popcorn facility because the door would be opened and closed more often. A grain bin door generally is opened and closed when the bin is empty in order to clean the bin. Usually, a bin is emptied only once a year. The Vogel Popcorn bin, however, was filled and emptied every two months or so. Thus, at Vogel Popcorn, the door would be opened and closed more often and GSI could see more quickly how the door performed under several uses. Bestwick and other GSI personnel inspected the door to see how it was operating. These inspections continued for several months until Vogel Popcorn had completed three to four cycles of closing the door, filling and emptying the bin, and opening the door. Id., at 42-43. The door worked successfully. GSI did not make any material changes to the design of the door as a result of these tests. Id. The door has remained in use at the Vogel Popcorn facility without any changes. Id., at 42.
GSI filed its patent application for the 271 Patent to the Patent and Trademark Office (PTO) on June 14, 1991. GSI included information on the Grossman Patent in its application. GSI also included sales brochures from Stormor and from Brock. Sukup Unsealed Exhibits, Exhibit 22, Excerpts from the 271 Patent file history (271 History). GSI made the following comment regarding the Stormor brochure: "On page 4 of the Stormor brochure, there is disclosed some pin structure; however, the latching system and pin structure claimed in the instant application is not disclosed or suggested." 271 History, Information Disclosure Statement, p. 2. The Stormor brochure stated the following about the Stormor door:
Durable Construction -- These all-galvanized steel doors are set in a corrugated heavy steel frame. The frame matches the corrugation of the sidewall sheets for tight bolting and a permanent weather seal.
Easy Access -- The new design of these doors permits easy access to the bin, with no cross bars or support members to hinder movement through the door opening. 271 History, Stormor Brochure, at 4.
In approving the 271 Patent application, the Patent Inspector considered both the Grossman and Oswald Patents. The Patent Examiner stated:
The prior art does not suggest the recited combination of integrating means and forcing means, in the environment as claimed. Although the patent Grossman discloses the general environment and Oswald discloses a latch with a forcing cam edge 4d, there is no suggestion of combining them in the particular environment, wherein the separation is more than mere opening the closure, but includes separation of the integrating means. 271 History, Notice of Allowability. The Patent Examiner, however, did not consider the Brock and Stormor sales brochures because they were undated. The 271 Patent was ultimately approved and issued on August 4, 1992. 271 Patent, at 1.
Sukup started marketing its grain bin door in 2001. The door used two hinged panels with pins and holes like GSI's door and the prior art. Sukup used a pin and separate bolt like the 271 Patent. The pin had a shoulder that fit into the hole in the bin wall door frame. Sukup Sealed Exhibits, Exhibit 55, Engineering Drawing of Sukup First Generation Pin. A copy of Exhibit 55 is attached as Appendix H. The bolt passed through the pin so that only the pin touched the sides of the door panel and door jamb. The pin also had a tapered end that faced into the bin.
After this suit was filed, Sukup modified its pin twice. Sukup Unsealed Exhibits, Exhibit 48, Declaration of Charles E. Sukup (Charles Sukup Declaration), ¶¶ 74, 81-83, 85-88, 89-92. The second generation pin no longer used a separate pin and bolt. Sukup Seal Exhibits, Exhibit 128, Engineering Drawing of Sukup Second Generation Pin. Rather, a threaded end was added to the end of the pin that went into the door jamb so that the threaded end would extend to the outside of the door jamb when the pin was put in place. A copy of Exhibit 128 is attached as Appendix I. The second generation pin also reduced the amount of taper on the end that extended into the interior of the bin. The third generation pin used the same one-piece design with the threaded end, but reduced the taper further on the end that extended into the bin. Sukup Sealed Exhibits, Exhibit 127, Engineering Drawing of Third Generation Pin. A copy of Exhibit 127 is attached as Appendix J. Sukup currently uses only its third generation pin in its grain bin doors. Charles Sukup Declaration, ¶ 92.
Each door panel of the Sukup bin door had two handles on it. Charles Sukup Declaration, ¶¶ 76-77. Each handle (Handle) was connected to the door panel with a bracket (Pivot Bracket) that allowed the Handle to slide back and forth laterally several inches, and also to rotate freely for approximately 180 degrees. The end of each Handle that extended from the Pivot Bracket toward the outer edge of each door panel (Hook End) was bent at an angle with respect to the portion of the Handle that passed through the Pivot Bracket.*fn2
The other end of each Handle extended toward the interior portion of the door panel from the Pivot Bracket (Handle End). The Handle End was generally "U" shaped. The Handle End extended approximately ten inches toward the center of the panel, then was bent at a 90 degree angle, then extended another ten inches approximately, and then bent at a 90 degree angle again, and then extended another ten inches approximately (the Gripping Portion), back toward the outer edge of the panel. A picture of the Sukup door Handle is set forth in Appendix K.
To close the panel, the operator would slide the Handle toward the outer edge of the panel so that the Hook End would engage a bracket on the side of the door frame. The operator would then rotate the Handle from the top of the door panel to the bottom using the Gripping Portion of the Handle. The rotation of the Hook End would push the bent portion of the Hook End against the bracket on the side of the door frame and force the panel closed over the pins. To open the panel, a person would rotate the Handle from the bottom of the panel to the top of the panel. The rotation of the Hook End would then push against the bracket in the door frame to force the door panel to be released from the pins. The operator would then slide each Handle toward the center of each panel to pull each Hook End out of each bracket on the door frame and open the panel.
The Gripping Portion of the Handle was designed to remain two to three inches off the panel when the Handle was placed into either the opened or closed position. In this way, the person operating the door would not smash his hands against the door panel when opening or closing the door. Sukup referred to this raised part of the Gripping Portion as the "knuckle ...