MEMORANDUM OPINION AND ORDER
VIRGINIA M. KENDALL, District Judge.
Plaintiff, Henryk Oleksy, filed suit against General Electric Co. ("GE") alleging that GE infringed his patented method for determining machining instructions to cut the root sections of turbine blades. This protracted litigation has involved substantial motion practice and multiple discovery disputes. The parties submitted cross motions for summary judgment regarding the validity of the Oleksy patent pursuant to 35 U.S.C. § 101. The parties also submitted ten claim terms for construction. Additionally, Oleksy moved to strike certain of GE's affirmative defenses pursuant to Federal Rule of Civil Procedure 12(f) and GE moved to dismiss Oleksy's claim for contributory infringement pursuant to Fed. R.Civ.Pro. 12(b)(6). For the reasons set forth below, Oleksy's motion for summary judgment is granted and GE's is denied. GE's motion to dismiss the contributory infringement claim is granted. Oleksy's motion to strike is granted in part and denied in part. The claim terms are construed as set forth below.
STATEMENT OF FACTS
Oleksy worked at the Preferred Machine and Tools Products Corporation in Bedford Park, Illinois. (GE 56.1 ¶ 7.) While there, he developed a computer-controlled process for improving the manufacture of steam turbine blades at the Bedford Park plant. ( Id. at ¶ 8; HO 56.1 Resp. ¶ 8.) The USPTO issued United States Patent No. 6, 449, 529 (the "Oleksy patent"), covering Oleksy's method, on September 10, 2002. (HO 56.1 ¶ 11.)
GE manufactures turbines. (GE 56.1 ¶ 13.) A turbine consists of a rotary wheel and blades. ( Id. ) The blades are connected to the wheel by a root section component. ( Id. ) Specifically, projections on the interior surface of the root sections, called "hooks, " attach and hold turbine blades to the rotary wheel. (HO 56.1 ¶¶ 24-25; GE 56.1 Resp. ¶¶ 24-25.) To prevent the blades from wobbling, the curvature of the hook in the root section must be machined to specific dimensions. (GE 56.1 ¶ 14; HO 56.1 ¶ 26.)
The Oleksy patent claims a method of determining the machining instructions for purposes of milling root sections of turbine blades. (HO 56.1 at Ex. A.) This method uses a CNC milling machine to cut a concave internal hook in the root section of a turbine blade. ( Id. ) An alleged benefit of the Oleksy method is that it requires only one machine setup and therefore simplifies the procedure for machining the curved surface of the hook. ( Id. )
Specifically, the Oleksy patent's abstract describes the patented method as: "[a] method of determining machining instructions during machining of a workpiece using a machine having a cutter, the surfaces of the workpiece being defined by a plurality of programmed instructions obtained by trigonometric analysis of the required curvatures of the surfaces." (HO 56.1 at Ex. A.)
Claim 1 recites several components used in combination to accomplish the "method of determining machining instructions... during machining of a workpiece": (1) at least a three-axis milling machine having a spinning form cutter and a rotary table; (2) a workpiece to machine precise concave and convex surfaces within a metal block; (3) the surfaces of said workpiece defined by of a plurality of programmed instructions that are obtained by trigonometric analysis; (4) that the trigonometric analysis is performed using a diagram of concave and convex surfaces and movements of the cutter and rotary table; and (5) a root section having at least a first hook as a holding hook. (GE 56.1 ¶ 24; HO 56.1 ¶ 12; HO 56.1 Ex. A.) The claim states that the spinning form cutter moves in a convex path defined by trigonometric analysis, while the rotary table simultaneously rotates. ( Id. ) The resulting programmed instructions are used by the CNC machine to determine machining instructions that are used by the CNC machine to cut the required concave hook in the root section. ( Id. )
Claim 2 recites "[t]he method of claim 1 wherein said trigonometric analysis of the required curvatures of the surfaces comprises analysis of a diagram of a graphical construction of the required curvatures of the surfaces and the movements of said spinning cutter and said rotary table relative to the application of said spinning form cutter to the required curvatures of said root section of said turbine blade, said graphical construction consisting essentially of a trigonometric analysis, said root section comprising at least one holding hook." (GE 56.1 ¶ 42; HO 56.1 ¶ 13; HO 56.1 Ex. A.)
Claim 3 recites "[t]he method of claim 1 wherein said trigonometric analysis of the required curvatures of the surfaces and movements of said spinning cutter and said rotary table determines the path of said spinning form cutter as a curved convex radius of E plus R wherein E is the distance from center of rotary table to first holding hook and R is the radius on the first holding hook." (GE 56.1 ¶ 43; HO 56.1 ¶ 14; HO 56.1 Ex. A.)
Claim 4 recites "[t]he method of claim 1 wherein said trigonometric analysis of the required curvatures of the surfaces and movements of said spinning cutter and said rotary table determines the path of said spinning form cutter as a curved convex radius of E plus R wherein E of the convex radius is determined by points L, C, and A, L being the minimum distance P and distance M determined by angle , the angle of rotation to the left, C being the minimum distance E determined by the angle 0; A being the minimum distance F and distance Y determined by angle -Q, the angle of rotation to the right; E being the distance from the center of rotary table to first holding hook, and R the radius on the first holding hook." (GE 56.1 ¶ 44; HO 56.1 ¶ 15; HO 56.1 Ex. A.)
The Oleksy Patent was reexamined by the Patent Office at the request of GE and the Patent Office affirmed patentability of all claims of the Oleksy Patent. (HO 56.1 ¶ 16.)
I. The Validity of Oleksy's Patent Under 35 U.S.C. § 101
A. Summary Judgment Standard
Summary judgment is proper when "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 moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c)(2). In determining whether a genuine issue of fact exists, the Court must view the evidence and draw all reasonable inferences in favor of the party opposing the motion. See Bennington v. Caterpillar Inc., 275 F.3d 654, 658 (7th Cir. 2001). However, in doing so, the Court will limit its analysis of the facts on summary judgment to evidence that is properly identified and supported in Local Rule 56.1 statement submitted by the parties. See Bordelon v. Chicago Sch. Reform Bd. of Trustees, 233 F.3d 524, 529 (7th Cir.2000). Where a proposed statement of fact is supported by the record and not adequately rebutted, the court will accept that statement as true for purposes of summary judgment. Id.
B. The Patent Is Valid Under Section 101
The parties agree that there is no genuine issue of material fact with respect to whether the Oleksy patent is valid because determining the validity of a patent is a question of law. See CyberSource Corp v. Retail Decisions, Inc., 654 F.3d 1366, 1369 (Fed. Cir. 2011) ("Issues of patent-eligible subject matter are questions of law."); see also Parker v. Flook, 437 U.S. 584, 589 (1978) (deciding as a matter of law that, "[a] process is "within the statutory definition when it was either tied to a particular apparatus or operated to change materials into a different state or thing.'").
While a patent issued by the USPTO enjoys a presumption of validity, Section 101 of the Patent Act defines patentable subject matter. It provides that:
Whoever invents or discovers any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. § 101. However, "laws of nature, natural phenomena, and abstract ideas" are not patentable. Diamond v. Diehr, 450 U.S. 175, 185 (1981); see also Bilski v. Kappos, 130 S.Ct. 3218, 3222 (2010); Mayo Collaborative Services, dba Mayo Medical Laboratories v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012); Association for Molecular Pathology v. Myriad Genetics, Inc., No. 12-398, ___ S.Ct. ___, 2013 WL 2631062, at *7 (June 13, 2013). This is because "they are the basic tools of scientific and technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); see also Mayo, 32 S.Ct. at 1293 (noting that "the Court has written that a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are manifestations of... nature, free to all men and reserved exclusively to none.") (internal citations and quotations omitted).
While a law of nature or mathematical formula is not patentable by itself, the application of the law or formula may be patentable. See Diehr, 450 U.S. at 187 ("an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection"); Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 188 (1939) ("While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge and scientific truth may be."); Funk Brothers Seed Co. v. Kalo Inoculant Co., 68 S.Ct. 440, 441 (1948) ("If there is to be invention from [a discovery of a law of nature], it must come from the application of the law of nature to a new and useful end.") (internal citations omitted); Association for Molecular Pathology, 2013 WL 2631062, at *10 (finding that isolated DNA cannot be patented but noting that innovative method for manipulating genes could potentially be patented). In order for the application of a mathematical formula to be patentable, the process sought to be patented must include an additional element or a combination of additional elements that constitute "an inventive step." Flook, 98 S.Ct. 2522; see also Mayo, 132 S.Ct. at 1294 ("the Court has also made clear, to transform an unpatentable law of nature into a patent-eligible application of such law, one must do more than simply state the law of nature while adding the words apply it'") (internal citations omitted); Bilski, 130 S.Ct. at 3218 ("The prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the formula to a particular technological environment' or adding insignificant post solution activity.") (internal quotations and citations omitted).
Claim 1 of Oleksy's patent describes his claimed process as follows:
A method of determining machining instructions for milling machinery comprising at least a three-axis computer numerical control milling machine during machining of a work piece to machine precise concave and convex surfaces within a metal block, said method comprising, in combination
1. Using a machine having a spinning form cutter and a rotary table
2. The surfaces of the work piece being defined by a plurality of programmed instructions for said computer numerical control milling machine obtained by trigonometric analysis of required curvatures of the surfaces and movements of said spinning form cutter and said rotary table
3. Said movement of said spinning form cutter being in a convex path and said movement of said rotary table being to rotate simultaneously from a plus rotation angle to a minus rotation angle and, alternatively, from a minus rotation angle to a plus rotation angle
4. Said programmed instructions determined by said trigonometric analysis of a diagram of required concave and convex surfaces of resulting root section of a turbine blade and movements of said spinning form cutter and rotary table
5. Said root section having at least a first hook as a first holding hook.
(GE 56.1 ¶ 24; HO 56.1 ¶ 12 [formating added].)
The parties do not dispute that Claim 1 of Olesky's patent describes a process for an application of a normally unpatentable mathematical formula, the "trigonometric analysis." Therefore, the pertinent question for this Court's § 101 analysis is whether the claim includes an additional element or a combination of additional elements that constitute "an inventive step." In reaching the conclusion that it does, the Court finds the Supreme Court's ruling in Diehr instructive.
There, the question was whether a process for molding raw, uncured rubber into cured, molded products was patentable. The process used a known mathematical equation, the Arrhenius equation to determine when to open the rubber mold. The process consisted of the following steps: (1) continuously monitoring the temperature on the inside of the mold; (2) feeding the resulting numbers into a computer, which would use the Arrhenius equation to continuously recalculate the mold opening time; and (3) configuring the computer to signal the appropriate time to open the mold. See Diehr, 450 U.S. at 177-79. Despite the reliance on the mathematical equation, the Court found the process to be patentable because of the way the additional steps of the process integrated the equation into the process as a whole. Specifically, it found that the process's steps were not obvious, already in use or purely conventional. As a result, it concluded that the patentees did not "seek to pre-empt the use of the equation;" rather, they sought "only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process." Id. This was sufficient to confer patentability.
Similarly here Oleksy's process is patentable despite its reliance on mathematical equation because of the way the equation is integrated into a process that also uses steps that are not obvious, already in use or purely conventional. Like the Arrehenius equation was used to mold rubber, Oleksy's process uses a trigonometric algorithm to tell a three-axis computer numerical milling machine how to cut the curved section of a hook. However, the process can only be completed if the trigonometric algorithm is combined with the following steps: (1) using a machine having a spinning form cutter and a rotary table; 2) using the trigonometric analysis to program the software instructions in the CNC milling machine; and (3) causing the spinning form cutter to move in a convex path, while the rotary table simultaneously rotates the work piece from a plus rotation angle to a minus rotation angle and, alternatively, from a minus rotation angle to a plus rotation angle. This last step, the use of a convex tool path combined with simultaneously rotating the work piece, is an unconventional step that was not previously used at the time of invention. As a result, Oleksy did not patent a mathematical formula, he patented a unique process of milling a root section of a turbine blade that happened to include the use of a mathematical formula as part of the process. Like the patentee in Diehr, Oleksy's patent does not pre-empt the use of his trigonometric analysis, he simply forecloses it use with respect to causing a spinning form cutter to move in a convex path to machine the root section of a turbine blade.
As a result, Oleky's method is also distinct from the processes found unpatentable in Mayo and Flook. In those cases, the Court found that the proposed process were not patentable because they simply appended generalized, conventional steps to laws of nature that caused the claim to say nothing more than "apply the law." See Mayo, 132 S.Ct. at 1300 (holding that "simply appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable"); Flook, 437 U.S. at 594 (holding that the additional claimed steps were sufficiently "well known" that there was no inventive step outside of the formula and noting that "post solution activity [that is] conventional or obvious can[not] transform an unpatentable principle into a patentable process."). Additionally, the Court was concerned that these patents did not limit the claim to particular applications; rather, these patents sought to patent the natural law for all uses. See Mayo, 132 S.Ct. at 1302 ("The determining' step too is set forth in highly general language covering all processes that make use of the correlations after measuring metabolites, including later discovered processes that measure metabolite levels in new ways."); Flook, 437 U.S. at 594. Conversely here, Oleksy's patent contains specifically defined, non-conventional steps. Moreover, the patent is limited to the particular application of milling the curvature of a hook. Since Oleky's patent includes a specific, inventive step that neither the patents at issue in Mayo nor Flook did, Oleky's process is patent eligible under Section 101. Accordingly, Oleky's motion for summary judgment on this issue is granted and GE's is denied.
II. Claim Construction
A. Legal Standard
The construction of a claim is a legal determination made by the Court that resolves disputed meanings in a patent to clarify and explain what the claim covers. See Terlep v. Brinkmann Corp., 418 F.3d 1379, 1382 (Fed. Cir. 2005) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995)). Generally, the terms of a claim are given the ordinary and customary meaning that the terms would have to a person of ordinary skill in the art at the time of the filing date of the patent application and "read in the context of the entire patent." Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005). An exception arises: "1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution." Medtronic Inc. v. Boston Sci. Corp., 695 F.3d 1266, 1275 (Fed. Cir. 2012). When interpreting a claim, the court looks first to intrinsic evidence: the words of the claims, the patent specification, and the prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record").
The claim language is the starting point for claim construction analyses because it frames and ultimately resolves all issues of claim interpretation. See Robotic Vision Sys., Inc. v. View Eng'g Inc., 189 F.3d 1370, 1375 (Fed. Cir. 1997). In some cases, the "ordinary and customary" meaning of the claim may be readily apparent and the court applies the widely accepted meaning of the commonly understood words. See Phillips, 415 F.3d at 1314. In many cases, however, the court must proceed beyond the bare language of the claims and examine the patent specification. See Id. at 1314-15. "The person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id. at 1313. The specification itself may be dispositive; "it is the single best guide to the meaning of a disputed term." Id. at 1315 ( quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). In the specification, the patentee provides a written description of the invention that allows a person of ordinary skill in the art to make and use the invention. See id. at 1323. Explanations within the specification may result in finding that a claim has a different scope than its plain meaning suggests. See Computer ...