The opinion of the court was delivered by: Judge Robert M. Dow, Jr.
MEMORANDUM OPINION AND ORDER
Plaintiff Carrier Vibrating Equipment ("Carrier") sued Defendant General Kinematics Corporation, alleging infringement of U.S. Patent No. 7,712,513 ("the '513 patent"). General Kinematics counter-claimed asserting, among other things, that the '513 patent is invalid. Before the Court is General Kinematics' motion for summary judgment that claims 31 and 32 of the '513 patent are invalid for failure to comply with the written description requirement of 35 U.S.C. § 112, first paragraph . For the reasons set forth below, the Court grants General Kinematics' motion .
The Court takes the relevant facts primarily from the parties' Local Rule ("L.R.") 56.1 statements of material facts. As counsel helpfully explained at the claim construction hearing and tutorial held on March 26, 2012, the technology in this case involves a method for controlling the retention time of a casting on a vibratory conveyor, typically used in an industrial environment such as a foundry or other molding facility. '513 patent col. 1 ll. 7-8; id. col. 2 ll. 12-13. When used in the foundry process, these vibratory conveyors, known as "shakeouts," are used to shake sand or other surrounding mold media used in the casting process from the metal casting itself. The '513 patent, entitled "System and Method for Controlling Casting Shakeout Retention," discloses a system and method for controlling the retention time -- the time that a casting is retained in its mold -- of a casting being transported on a vibratory conveyor. This is accomplished first by imparting a vibratory force to the conveyor at a predetermined angle to the conveying surface whereby the predetermined angle determines the retention time, and then by modifying that angle. The '513 patent was issued on May 11, 2010, based upon a patent application filed on April 4, 2006 ("the original application"). The named inventor of the '513 patent is Charles Mitchell, a fifteen-year employee of Carrier and currently Carrier's Foundry Sales Manager.
Claims 31 and 32 of the '513 patent, the only two claims at issue in the instant motion, both depend from claim 30. Claim 30 is directed to the modification of the predetermined angle of a vibratory force applied to a conveyor, and reads as follows:
A method for controlling the retention time of a casting positioned on a conveyor comprising: providing a vibratory conveyor having a conveying surface and a frame through which a vibratory force may be transmitted to the conveying surface; imparting a vibratory force to said conveyor at a predetermined angle to said conveying surface whereby the predetermined angle determines the retention time of said casting; and modifying the predetermined angle of vibratory force imparted to said conveyor to modify said retention time. '513 patent col. 8 ll. 63-67-col. 9 ll. 1-6. Claims 31 and 32 add limitations relating to the modification of the magnitude of the vibratory force applied to a conveyor. Id. col. 9 ll. 10, 16, 18. Specifically, Claim 31 reads:
A method for controlling the retention time of a casting positioned on a conveyor as claimed in claim 30 comprising: imparting a vibratory force of a predetermined magnitude to said conveyor whereby the magnitude of force determines the retention time of said casting; and modifying the predetermined magnitude of vibratory force imparted to said conveyor to modify said retention time.
Id. col. 9 ll. 7-13 (emphasis added). Claim 32 reads:
A method for controlling the retention time of a casting positioned on a conveyor as claimed in claim 30 comprising: reducing the magnitude of the force applied to said conveyor to slow the advance of the mold; and increasing the magnitude of the force applied to said conveyor to discharge said casting from said conveyor after a predetermined time period.
Id. col. 9 ll. 14-20 (emphasis added).
Claims 31 and 32 were not a part of the original application that was filed on April 4, 2006. The two claims, originally numbered claims 52 and 53, were added by amendment in mid-2009. Similarly, claim 16 of the '513 patent, the only other claim in the '513 patent that references the "magnitude of vibratory force," was not a part of the original application. Claim 16 discloses a "speed control for each of said plurality of electric motors to independently vary the respective speeds thereof whereby the resultant magnitude of vibratory force imparted to said conveyor is variedby varying the speed of at least one electric motor." Id. col. 7 ll. 58-62 (emphasis added). The patent examiner allowed these three new claims without comment. (Theuerkauf Declar., Ex. B. at ¶ 27.)
General Kinematics has moved for summary judgment as to claims 31 and 32 of the '513 patent, arguing that these two claims are invalid under 35 U.S.C. § 112, first paragraph, for failure to comply with the written description requirement. General Kinematics argues that the invention described in the original application relates only to the modification of the angle of vibratory force. According to General Kinematics, "[t]here is no mention of modification of the magnitude of force, either alone or in combination with the modification of the angle." (Def. Memo. at 1.) In response, Carrier contends that the inventor of the '513 patent had possession of the inventions disclosed in claims 31 and 32 at the time that the original application was filed and that a person of ordinary skill in the art would recognize that fact by reading the disclosures in the '513 patent, its incorporated patents, and its prosecution history. Carrier also argues that General Kinematics cannot prevail on summary judgment without the opinion of an expert who is of ordinary skill in the art.
Summary judgment is proper if "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment ...