The opinion of the court was delivered by: Judge James B. Zagel
MEMORANDUM OPINION AND ORDER
This is a patent infringement action in which Plaintiff Eazypower Corporation ("Eazypower") alleges that Defendant Jore Corporation ("Jore") infringed Claims 1, 2, 4, 5, and 7 ("the Asserted Claims") of U.S. Patent No. 4,876,929 ("the '929 Patent" or "Kozak invention") which issued on October 31, 1989, and is entitled "Portable Screw Driver Having Flexible Extension Shaft." The '929 Patent has expired. Jore comes now with a motion for summary judgment as to the issue of patent invalidity. Oral arguments were heard on August 30, 2010. For the following reasons, Defendant's motion for summary judgment is denied.
"Local Rule 56.1(a)(3) requires a movant to submit a statement of undisputed material facts that, according to the movant, entitles that party to judgment as a matter of law." Malec v. Sanford, 191 F.R.D. 581, 583 (N.D. Ill. 2000). According to the rule, the statement "shall consist of short numbered paragraphs," each of which specifically refers to affidavits, parts of the record, and other material in support of the facts set forth therein. Local Rule 56.1. Defendant has complied with this requirement.
Local Rule 56.1(b)(3)(B) requires the opposing party to file "a response to each numbered paragraph in the moving party's statement, including, in the case of any disagreement, specific references to the affidavits, parts of the record, and other supporting materials relied upon." Pursuant to Rule 56.1(b)(3)(C), the non-movant should also file its own statement of additional facts that requires the denial of summary judgment, including references to supporting material. Just as the movant's statement, the non-movant's statement should consist of short numbered paragraphs.
After failing to respond to Jore's statement of material facts, Eazypower sought leave to file a response on February 12, 2010. Eazypower did not notice up its motion, but rather sent an email to Courtroom Deputy Donald Walker. In this email, Eazypower attached its "Motion for Leave to File Eazypower's Response to Defendant Jore Corporation's Statement of Material Facts Regarding its Motion for Partial Summary Judgment of Invalidity" and "Eazypower's Response to Defendant Jore Corporation's Statement of Material Facts Regarding its Motion for Partial Summary Judgment of Invalidity." Counsel for Jore was copied onto that email. I granted Eazypower's motion to file its Response, however Eazypower failed to promptly file its Response on the Court's electronic docket. Nonetheless, on February 26, 2010, in docket entry 120, Jore responded to the documents I granted Eazypower leave to file. On April 1, 2010, I ordered Eazypower to electronically file its Response by April 10, 2010. Eazypower filed its response on Monday April 12, 2010 as docket entry 126.*fn1
Jore asks that I strike Eazypower's filed Response because the document filed in docket entry 126 differs greatly from the document submitted to the Court on February 12, 2010 which I granted leave to file. Jore is correct. The document in entry 126 includes not only edits to its Objections, but also adds over ten pages in "Additional Facts" not included in its prior submissions to the Court. In its motion to strike Eazypower's response, Jore objected to several additional facts contained in Eazypower's Response which do not comply with Local Rule 56.1. The Seventh Circuit has "consistently and repeatedly upheld a district court's discretion to require strict compliance [with Local Rule 56.1]." Bordelon v. Chi. School Reform Bd. of Trustees, 233 F.3d 524, 537 (7th Cir. 2000); Cichon v. Exelon Generation Co, LLC, 401 F.3d 803, 809 (7th Cir. 2005).
Eazypower failed to initially comply with Local Rule 56.1, yet I granted Eazypower leave to file a tardy Response to Jore's properly filed 56.1 Statement of Facts. Eazypower, however, failed to promptly docket its Response, and instead, two months after I granted leave, filed a new document which included edits and additional facts. While it is within my discretion to strike Easzypower's Response, I decline to do so. Eazypower's statement of additional facts does not include any facts that were not presented in its response to Jore's motion for summary judgment. Jore replied to Eazypower's response and addressed the factual allegations contained therein. Furthermore, Jore has challenged certain "Additional Facts" in its motion to strike. Though Eazypower's compliance with the Local Rules and this Court's Order was severely deficient, because of the complicated facts involved in this case, I will accept Eazypower's Response to Jore's 56.1 statement of facts and Eazypower's statement of additional facts contained therein. Accordingly, Jore's motion to strike Eazypower's response to its statement of facts is denied.
III. STATEMENT OF RELEVANT FACTS
Eazypower is an Illinois corporation engaged in the design, manufacture, packaging, distributing, and selling of hand tools, power tools, and accessories. Jore is a Delaware corporation also engaged in the design, manufacture, packaging, distributing and selling of power tool accessories. Jore and Eazypower are competitors.
In 2005, Eazypower brought suit against Jore claiming that Jore had infringed, induced infringement, and contributorily infringed on Eazypower's '929 Patent entitled "Portable Screw Driver Having Flexible Extension Shaft." Specifically, Eazypower alleged that a Jore product, the Jore Flex Shaft, infringed on claims 1, 2, 4, 5, and 7 of the '929 patent.
The '929 Patent was issued on October 31, 1989.*fn2 It describes a "cordless portable electric screwdriver having a chuck for . . . holding a tool for rotary drive motion at one end" and a "flexible extension shaft." The flexible shaft includes a series of concentric coil springs, which are secured to cylindrical body portions at the ends of the flexible extension shaft. A flexible sleeve surrounds the cylindrical fittings to define internal shoulders. The purpose of the flexible extension shaft is to allow for the use of portable electric screwdrivers in difficult to reach areas of limited access.*fn3 The '929 Patent was filed on September 15, 1988. Therefore the "critical date," one-year prior to the filing of the patent, is September 15, 1987.*fn4
In 2009, Jore filed a Motion for Partial Summary Judgment on the basis of patent invalidity, arguing that the '929 Patent is invalid under 35 U.S.C. §102 (a) & (b) because another flexible extension shaft product called the FB-19 (also known as the Shinki FB-19, OMEGA flex shaft, or Tru Value) was in prior use and was previously marketed and sold.*fn5 The facts of this case are hotly contested.
B. Comparison Between the '929 Device and the FB-19
Jore has put forth the 2002 and 2009 expert reports of Albert Karvelis, Ph.D., P.E. ("Karvelis"). In the reports, Karvelis compared the '929 flexible extension shaft screwdriver with the a FB-19 and determined that the FB-19 contained each and every element of claims 1, 2, 4, 5, and 7 of the '929 patent and therefore anticipates the asserted claims. In his 2002 report, Karvelis explained that the FB-19 used for comparison was provided to him by the attorneys, and he was "asked to assume that this FB-19 is prior art to the '929 patent." Eazypower did not object to the FB-19 Karvelis used in his comparison or rebut the Kravelis report.
C. Prior Use and Sale in the United States
Jore has presented testimonial, documentary, and physical evidence to support its assertion that the FB-19 was imported and sold in the United States between 1981 and 1984. Jore maintains that Harrison Fuller, the former president of Omega Precision Hand Tools, Inc. ("Omega"), went to Japan and inspected a FB-19 in around 1982. He saw the FB-19 on a visit to the Shinki Industries manufacturing facility in Osaka, Japan. Following this visit, Omega Precision Hand Tools ("Omega"), imported and sold thousands of FB-19s in the United States between 1981 and 1984. It is immaterial whether importation began in 1981 or 1982. The FB-19 flexible extension shafts that Omega sold were packaged by Omega and stamped with Omega trademarks. The FB-19 was packaged individually and sold ...