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Se-Kure Controls, Inc. v. Diam USA

September 18, 2009

SE-KURE CONTROLS, INC., PLAINTIFF/COUNTER-DEFENDANT,
v.
DIAM USA, INC., DEFENDANT/COUNTER-PLAINTIFF,
POP DISPLAYS, USA, LLC (SUCCESSOR IN INTEREST TO DIAM, USA, INC.), THIRD-PARTY PLAINTIFF,
v.
TELEFONIX, INC., THIRD-PARTY DEFENDANT,
TELEFONIX, INC., CROSS-CLAIM PLAINTIFF,
v.
SE-KURE CONTROLS, INC. CROSS-CLAIM DEFENDANT.



The opinion of the court was delivered by: Judge Ronald A. Guzmán

MEMORANDUM OPINION AND ORDER

Se-Kure Controls, Inc. ("Se-Kure") has sued Diam USA, Inc. ("Diam") for infringement of U.S. Patent No. RE37,590 E ("the '590 Patent"). Pursuant to Federal Rule of Civil Procedure ("Rule") 56, defendants Diam; Pop Displays USA, LLC ("POP Displays"); and third-party defendant Telefonix, Inc. ("Telefonix") (collectively hereinafter "defendants") have moved for summary judgment on the issue of invalidity under 35 U.S.C. § 103. For the reasons provided herein, the Court grants defendants' motion.

Facts

Plaintiff Se-Kure is an Illinois corporation that designs, manufactures, and sells retail security systems. (Pl.'s LR 56.1(b)(3)(B) ¶ 1; Am. Compl. ¶ 9.) Defendant POP Displays, a successor in interest to Diam, is a Delaware corporation with a principal place of business in New York. (Pl.'s LR 56.1(b)(3)(B) ¶ 2; Am. Compl. ¶ 6.) POP Displays has sued third-party defendant Telefonix, a corporation located in Illinois, for indemnification. (Pl.'s LR 56.1(b)(3)(B) ¶ 5; see Third-Party Compl. ¶¶ 9, 10.)

On June 10, 1994, Se-Kure filed a patent application for a retractable sensor for an alarm system on behalf of Roger Leyden ("Leyden") and Terrance Surma ("Surma"), the named inventors. (See Am. Compl., Ex. A, U.S. Patent No. 5,552,771 at 1.) On September 3, 1996, the application issued as U.S. Patent No. 5,552,771 ("the '771 Patent"). (Id.)

Leyden and Surma submitted the '771 Patent for a reissue proceeding before the U.S. Patent and Trademark Office ("USPTO") on February 19, 1997. (Defs.' Mot. Summ. J., Ex. 1, '590 Patent at 1.) After reexamining the '771 Patent, the USPTO issued the '590 Patent. (Id.)

The abstract of the '590 Patent, entitled "Retractable Sensor for an Alarm System," states: A retractable sensor assembly for use with an alarm system to prevent theft of valuable products while eliminating the problem of entangled and unsightly sensor cords is disclosed. The retractable sensor allows the user to grasp the product and pull it to a comfortable position. The invention consists of a housing, a retractor means contained in the housing, a sensor having two states, 1) secured when attached to the product, and 2) unsecured when detached from the product, a multiconductor cable having a first end connected to the sensor, cooperating with the retraction means and a second end extending out of the housing, where the retraction means urges the sensor to the housing, yet allows the sensor to be pulled from the housing when an external force is exerted on the sensor, while maintaining a continuous electrical path from the first, sensor end of the cable to the second end of the cable.

(See id. at 1.)

Plaintiff asserts that Diam has infringed and continues to infringe the '590 Patent by manufacturing and selling merchandise security systems that employ retractable multiconductor cables and sensors. (Am. Compl. ¶ 20.) Defendants argue that the '590 Patent is invalid under 35 U.S.C. § 103 because it is an obvious combination of U.S. Patent No. 5,172,098 ("the '098 Patent") and U.S. Patent No. 4,989,805 ("the '805 Patent"). (See Defs.' Mem. Supp. Mot. Summ. J. 11-12.) The '098 Patent is owned by plaintiff and was issued on December 5, 1992. (Pl.'s LR 56.1(b)(3)(B) ¶ 17.) The '098 prior art patent and the '590 Patent-at-issue have the same inventors, Surma and Leyden. (Id.) The '098 Patent is entitled "Alarm System Sensing and Triggering Apparatus," and itsabstract reads:

An alarm system remotely detects a sensor being attached to or detached from a product. The sensor has a secured state and an unsecured state. The sensor is in the secured state when attached to the product and in the unsecured state when detached from the product. The sensor includes an indicator for indicating the state of the sensor. A detector electrically connected to the sensor determines the state of the sensor. The detector provides a control signal in response to the state of the sensor. The control signal controls the indicator. An alarm is electrically connected to the detector and is responsive to the control signal for indicating the state of the sensor.

(Defs.' Mot. Summ. J., Ex. 2, '098 Patent, Title, Abstract.) The '098 Patent contains twenty claims, five of which are independent claims. (See id., cols. 9-12.) Notably, the '098 Patent teaches that a retractable cord may be used in the alarm system. (See Defs.' Mot. Summ. J., Ex. 2, '098 Patent, col. 4, lines 22-24.)

The '805 Patent, invented by Mr. Paul Burke ("Burke"), is entitled "Retractable Reel Assembly for Telephone Extension Cord," and its abstract reads:

To provide a highly functional yet very compact retractable reel assembly for a telephone extension cord, a housing is provided which is adapted to be mounted on a wall in proximity to a telephone or telephone jack for utilization with either wall mounted or table telephones, respectively. The retractable reel assembly includes a reel biased for rotation in one direction, a ratchet for selectively restraining rotation of the reel in the one direction, and an expansion chamber for a length of the cord within the housing, whereby the portion of the cord leading to the telephone or telephone jack can normally be wound in a radially and axially confined planar helical array. With this arrangement, the retractable reel assembly can allow the portion of the cord to be repositioned to a radially expanded helical array during withdrawal of the remainder of the cord from the housing and returned to the radially and axially confined helical array during retraction of the remainder of the cord into the housing.

(Defs.' Mot. Summ. J., Ex. 5, '805 Patent, Title, Abstract.) The '805 Patent contains twenty claims, five of which are independent claims. (See id., cols. 9-12.)

Discussion

Summary judgment is appropriate if "the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). "The evidence of the non-movant is to be believed, and all justifiable inferences ...


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