The opinion of the court was delivered by: Jeanne E. Scott, U.S. District Judge
This matter comes before the Court on Defendant Sukup Manufacturing Company's (Sukup) Motion for Summary Judgment as to Lack of Willfulness (d/e 446). Plaintiff GSI Group, Inc. (GSI), alleges that Sukup willfully infringed on the following patents held by GSI: U.S. Patent 5,135,271 (271 Patent) covering a latching device and improved pin design related to grain bin doors; U.S. Patent 5,400,525 (525 Patent) covering a flame cone in a grain bin heater; U.S. Patent No. 6,076,276 (276 Patent), U.S. Patent No. 6,073,367 (367 Patent), U.S. Patent No. 6,073,364 (364 Patent), and U.S. Patent No. 6,233,843 (843 Patent) (collectively the Tower Dryer Patents) covering various aspects of a sweep grain unloading device (Sweep Unloader) used in GSI's tower grain dryers. The Court has previously determined that: (1) the 364 and 843 Patents are valid; (2) the 276 and 367 Patents are invalid; and (3) issues of fact exist regarding whether the 525 Patent and the 271 Patent are valid. Opinion entered on September 11, 2008 (d/e 667) (Opinion 667), at 41-42; Opinion entered September 25, 2008 (d/e 678) (Opinion 678), at 19-20; Opinion entered October 8, 2008, (d/e 682) (Opinion 682), at 12. The Court also has determined that Sukup previously infringed on the 364 and 843 Patents, but is not currently infringing on them. Opinion 678, at 17-18. The Court has also determined that if the 525 Patent is valid, Sukup previously infringed on that Patent, but it is not currently infringing on that Patent. Opinion 682, at 20. The Court has yet to address other affirmative defenses raised by Sukup that may affect its liability. Sukup now asks for partial summary judgment that even if it is liable for infringement, GSI cannot establish that the infringement was willful. After careful review, the Court concludes that issues of fact exist regarding Sukup's alleged willfulness. The Motion is therefore denied.
The U.S. Patent Office (PTO) issued the 271 Patent on August 4, 1992. The PTO issued the 525 Patent on March 28, 1995. The PTO issued the Tower Dryer Patents in June 2000, except for the 843 Patent. The 843 Patent was issued on May 22, 2001. GSI gave statutory notice of the 271 Patent in September 2002 by marking its bin doors with the patent number. Defendant Sukup Manufacturing Co.'s Motion Under Federal Rule of Civil Procedure Rule 56 for Partial Summary Judgment to Preclude Damages Before Notice of Infringement Pursuant to 35 U.S.C. § 287 (d/e 79), at ¶ 4; Text Order entered July 19, 2006. GSI did not mark its grain bin heater or tower dryer with the patent numbers of the applicable patents-in-suit as of the date that it brought this action on January 19, 2005.
GSI mentioned at least some of its patents in its marketing material. In 2003, GSI published a brochure for its tower dryers that were marketed under the brand name Zimmerman. GSI's Opposition to Sukup's Motion for Partial Summary as to Lack of Willfulness (d/e 446) (d/e 506) (GSI Opposition), Exhibit 7, GSI Tower Dryer Brochure (GSI Brochure). The GSI Tower Dryer Brochure stated the following about the Sweep Unloader referred to as the "Accu-trol Metering System" Proven (Patented) Accu-trol Metering System, included in most models, provides positive grain flow from columns with self cleaning action, free of restriction resulting from transient moisture, foreign objects, or varying product conditions.
Id., at 2.*fn1 Sukup's Director of Marketing Randy Coffee had a copy of the GSI Brochure when he prepared the marketing materials for Sukup's tower dryer; he copied the specifications in the GSI Brochure when he prepared those marketing materials. GSI Opposition, Exhibit 5, Deposition of Randy Eugene Coffee, at 61, 64. GSI has also advertised that its grain bin door latching device was patented. Opposition to Defendant Sukup's Motion for Summary Judgment Barring Plaintiff from Recovery of Lost Profits and Alternatively Under Entire Market-Value Rule, d/e 451 (d/e 546), Exhibit 4, Declaration of Ronald Bestwick in Opposition to Sukup's Motion for Summary Judgment (d/e 451) Regarding Damages for Infringement of U.S. Patent 5,135,271, attached GSI Grain Bin Brochure, at 6; Plaintiff's PreMarkman Hearing Brief Regarding Construction of U.S. Patents 6,073,364; 6,073,367; 6,076,276; 6,233,843; 5,135,271 and 5,400,525 (d/e 78), Exhibit 4, GSI Grain Bin Brochure Excerpt, at 6. The GSI grain bin advertising materials presented to the Court were published after this suit was filed.
Sukup first started marketing its accused grain bin heater in 1999. Opinion 682, at 7. In developing its heater, Sukup personnel examined the GSI grain bin heater and copied the GSI flame cone design covered by the 525 Patent. GSI Opposition, Exhibit 12, Deposition of Randall Poock, at 17-20.
Sukup started marketing its grain bins in 2001. The original design of the pin used in the Sukup door latching mechanism was largely identical to the preferred embodiment of the pin design set forth in the 271 Patent and to the pin design actually used by GSI. Opinion 667, at 15, 50. The Sukup handle and latching mechanism was not identical to the GSI handle. GSI used one long handle bar, but Sukup used two handles. GSI's design used a cam that rotated against a pin on the door frame, but the Sukup design used the end of the handle that rotated against a bracket on the door frame. See Opinion 667, at 4-8, 16-18.
Sukup first started marketing a tower dryer in 2004. In November 2003, Sukup personnel inspected and took photographs of a GSI tower dryer in Hopkinsville, Kentucky. GSI Opposition, Exhibit 9, Deposition of Kevin Janssen, at 38-40; Exhibit 10, Deposition of George Griffin, at 27; Exhibit 11, Deposition of John Hanig, at 50. The Court previously determined that the original design of the Sukup sweep unloading device infringed on the 364 and 843 Patents. Opinion 678, at 17. Charles Sukup stated in his deposition that he first learned of GSI's Tower Dryer Patents in October 2004. GSI Opposition, Exhibit 1, Deposition of Charles Sukup, at 73-74. He stated that he was not aware of the other GSI patents-in-suit until after this case was filed. Id., at 75.
GSI filed this case on January 19, 2005. The initial Complaint alleged infringement of the Tower Dryer Patents and the 271 Patent. Complaint (d/e 1), Counts I and II. On May 10, 2005, GSI filed an Amended Complaint alleging infringement of the 525 Patent. Amended Complaint (d/e 5), Count III. GSI, however, did not seek a preliminary injunction to stop the alleged ongoing infringement.
After the case was filed, Sukup secured some opinions from its counsel Timothy Zarley. Zarley rendered some oral opinions beginning in February 2005. GSI Opposition, Exhibit 2, Deposition of Timothy Zarley, at 13. On April 7, 2005, attorney Zarley issued a written opinion letter regarding the Tower Dryer Patents. GSI Opposition, Exhibit 4, Opinion Letter, dated April 7, 2005. Zarley opined that Sukup's newer, post-filing version of the sweep unloading device did not infringe on the Tower Dryer Patents. Id. Zarley did not address whether the original sweep unloading device infringed on these patents. On April 20, 2005, attorney Zarley issued an opinion letter regarding Claim 14 of the 271 Patent. GSI Opposition, Exhibit 3, Opinion Letter dated April 20, 2005. Zarley opined that Sukup's pin in its grain bin door latching system did not infringe on Claim 14 of the 271 Patent. Zarley did not provide a written opinion regarding the other claims in the 271 Patent. Zarely did not issue a written opinion regarding the flame cone covered by the 525 Patent.
Also, after this case was filed, Sukup modified its accused devices. Sukup replaced its flame cone in its grain bin heater with a "wedding cake" diverter insert. Opinion 682, at 7. Sukup redesigned the sweep unloading device in its tower dryer several times. Opinion 678, at 7-8. Sukup also redesigned the pin used in its grain bin door latching mechanism several times. Opinion 667, at 15-16.
At summary judgment, Sukup must present evidence that demonstrates the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). The Court must consider the evidence presented in the light most favorable to GSI. Any doubt as to the existence of a genuine issue for trial must be resolved against Sukup. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). Once Sukup has met its burden, GSI must present evidence to show that issues of fact remain with respect to an issue essential to its case, and on which it will bear ...