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Not Dead Yet Manufacturing, Inc. v. Pride Solutions, LLC

United States District Court, N.D. Illinois, Eastern Division

September 19, 2017

NOT DEAD YET MANUFACTURING INC., d/b/a NDY MFG, INC. Plaintiff,
v.
PRIDE SOLUTIONS, LLC and MAY WES MANUFACTURING, Defendants.

          MEMORANDUM OPINION AND ORDER

          REBECCA R. PALLMEYER UNITED STATES DISTRICT JUDGE.

         Plaintiff Not Dead Yet Manufacturing, Inc. has sued Defendants Pride Solutions, LLC and May West Manufacturing, a division of Pride, for patent infringement. Plaintiff's president, Kenneth E. Shoup, is the named inventor on a number of United States patents related to agricultural equipment, including at least two patents concerning "quick connect and disconnect" apparatuses for the assembly of devices known as "stalk stompers." As the court has explained in prior rulings in this case, see Not Dead Yet Mfg., Inc. v. Pride Sols., LLC, 222 F.Supp.3d 657 (N.D. Ill. 2016); Not Dead Yet Mfg., Inc. v. Pride Sols., LLC, No. 13 C 3418, 2015 WL 5829761, at *1 (N.D. Ill. Oct. 5, 2015), a stalk stomper attaches to the front of a combine or tractor and flattens cornstalks after they have been cut, thereby protecting the tires of the combine or tractor from damage caused by the sharp remains of the stalks. Prior to the development of the “quick connect” apparatus, connecting and disconnecting a standard stalk stomper to a combine or tractor took a substantial amount of time. The "quick connect and disconnect apparatus" makes it easier to attach and remove the stalk stompers by allowing users to secure the stalk stompers to a combine's toolbar assembly quickly, without the use of tools.

         Two patents are at issue in this case: U.S. Patent No. 8, 418, 432 (the "'432 Patent") was issued to Shoup on April 16, 2013, and U.S. Patent No. 8, 745, 963 (the "'963 Patent") was issued to Shoup on June 10, 2014. Both patents concern quick-connect-and-disconnect apparatuses for stalk stompers, and Plaintiff owns both patents by way of assignment. Plaintiff and Defendants are competitors; both manufacture and sell stalk stomper products containing quick-connect-and-disconnect features. Plaintiff alleges that two of Defendants' products, the so-called "QD1" and "QD2" products, infringe at least one claim of both the '432 Patent and the '963 Patent. In addition, Plaintiff alleges that Defendants have misleadingly marketed the QD1 as "The Original Quick Disconnect Stalk Stomper, " in violation of the federal Lanham Act and Illinois consumer protection statutes. Defendants deny that their products infringe the '432 Patent or the '963 Patent, either literally or under the doctrine of equivalents. They also deny that their advertisements were misleading or deceptive. In addition to contending that their products do not infringe the patents at issue, Defendants assert that (1) claim 1 of the '432 Patent and claims 6 and 7 of the '963 Patent are invalid for indefiniteness, (2) claims 6 and 7 of the '963 patent are invalid for anticipation, and (3) the '963 Patent is invalid because Plaintiff or its counsel failed to fulfill their duty of candor and good faith toward the U.S. Patent & Trademark Office ("USPTO").

         The parties have filed cross-motions for summary judgment [150] [154]. Plaintiff moves for partial summary judgment, urging the court to rule that Defendants' QD1 product infringes claims 6 and 7 of the '963 Patent and claim 1 of the '432 Patent and that there is insufficient evidence for a finding that either patent is invalid for indefiniteness, anticipation, or inequitable conduct. Defendants respond that the evidentiary record supports their invalidity contentions. They maintain, further, that the QD1 does not infringe either patent because it lacks a number of claimed elements. Indeed, Defendants contend that no reasonable jury could find that either the QD1 or the QD2 infringes the patents at issue. In addition, Defendants contend that the record conclusively establishes that Plaintiff or its counsel engaged in inequitable conduct in the prosecution of the '963 patent, and they have moved for summary judgment of invalidity on that basis. Finally, Defendants argue that Plaintiff's false advertising and deceptive practices claims must fail because, among other things, Plaintiff has failed to demonstrate that the alleged advertisements were actually false or deceptive.

         For the reasons discussed below, the court grants both motions in part and denies them in part.

         BACKGROUND

         Both parties have filed statements of material facts, and corresponding statements in opposition, as required by Local Rule 56.1. (See Pl.'s Stmt. of Mat. Facts in Supp. of its Mot. for Partial Summ. J. [152] (hereinafter "Pl.'s 56.1"); Stmt. of Mat. Facts Supp. Defs.' Mot. for Summ. J. [156] (hereinafter "Defs.' 56.1"). The following facts are largely taken from those statements.

         I. The Patents at Issue

         The court has already described the inventions covered by the '432 Patent and the '963 Patent in its claim construction ruling, see Not Dead Yet Mfg., 2015 WL 5829761, at *1-*2, and will therefore provide only a brief description here. The following is a depiction of the preferred embodiment of the invention covered by the '432 Patent:

         (Image Omitted)

         ('432 Patent, Ex. A to Pl.'s 56.1 [152-2], FIG. 6.) Stalk stompers protect the tires of a combine or tractor by flattening cornstalks after they have been cut. Shoup's invention, as depicted above, allows users to attach the stalk stomper (10) to the combine's toolbar assembly (12) without the use of tools. Specifically, the invention allows a user, by means of nothing more than his or her hands and a small pin, to attach a bracket (42) on the toolbar assembly to a "plate member" (26), that is itself attached the stalk stomper's "shoe" (18) (the part that flattens the stalks). The Patent describes how a user would connect the bracket to the stalk stomper's plate member:

[T]o connect the stalk stomper (10) to the tool bar assembly (12), the cross bar (29) is engaged in the recesses (46) and the stalk stomper (10) is pivoted so that the angle plate member (26) of the stalk stomper (10) is above the top of the pair of holes (48) and the pin (31) can be inserted into the transversely aligned holes (48) to connect the stalk stomper [] to the tool bar assembly. The pin (31) will engage the retention stop (27) to preclude longitudinal movement of the stalk stomper . . . to prevent the cross bar or transverse bar (29) from disengaging from the recesses (46) in use.

(Id. at col. 4, ll. 15-25.) To disconnect the stalk stomper, a user would simply remove the pin from the transversely aligned holes and remove the cross bar from the recesses. (Id. at col. 4, ll. 25-27.)

         The '963 Patent covers a similar invention, though there are observable differences in the preferred embodiments depicted in the patent. Two of the preferred embodiments of the '963 Patent are displayed in the figures below.

         (Image Omitted)

         ('963 Patent, Ex. B to Pl.'s 56.1 [152-3], FIG. 8, FIG. 10.) To assemble the device depicted in Figure 8 above as a preferred embodiment of the '963 Patent, "the cross bar (129) is engaged in the recesses (146) and the plate member (126) of the stalk stomper (110) is pivoted to align holes (148) with the one of the pairs of holes (150, 152 or 154) in the sidewall (125)." (Id. at col. 6, l. 64-col. 7, l. 1.) In the device depicted in Figure 10, another preferred embodiment of the '963 Patent, the tool bar assembly (212) includes a tool bar (240) and a mount, and the implement assembly, "such as stalk stomper (210), includes an upper support member (215) which may include a plate member (226), a cross bar member (229) and a pair of sidewall members (225)." (Id. at col. 7, ll. 10-12, 22-25.)

         II. The Accused Products

         A. Design

         Defendants have sold the stalk stomper product referred to in this litigation as the QD1 since June 2011. Defendants' product also features a quick-connect-and-disconnect apparatus. That apparatus consists of a top or "header" bracket (labeled (1) in the figures below) that connects to what Defendants refer to as a "shoe bracket" (labeled (2.1) in the figures below). (Pl.'s 56.1 ¶ 9.)

         (Image Omitted)

(Id.) The figure below depicts the top bracket and the shoe bracket when connected.

         (Image Omitted)

(Id.) As displayed in the above figures, the QD1's shoe bracket contains what Defendants call a "C-channel member, " composed of a flat upper surface and two descending sidewalls that support a cross bar adapted to fit into the recesses of the header bracket. (Id. ¶ 14.) Each sidewall also contains a hole with a pin bushing, [1] and during operation of the stalk stomper, a pin must be inserted within the holes to engage with the pin bushing and restrict longitudinal movement of the shoe bracket relative to the header bracket. (Id. ¶ 18.)

         Defendants' second quick-connect-and-disconnect product is the QD2, developed approximately three years after the QD1. As illustrated in the representative embodiment taken from Defendants' own patent application from 2015 and depicted below, the QD2 is similar to the QD1. (Defs.' 56.1 ¶ 6.)

         (Image Omitted)

(Id.) The header bracket of the QD2 has two sets of recesses, one near the front of the assembly and another further back. Projections (210) from the shoe assembly fit with those recesses. A securing pin, the end of which is labeled (230) in the figure above, engages the ledge of the header bracket to lock the shoe assembly in place. (Id.)

         B. Promotion

         In addition to Plaintiff's infringement contentions, addressed below, Plaintiff challenges certain statements Defendants have made in advertisements for the QD1 and QD2 products. Specifically, Plaintiff asserts that Defendants marketed the QD1 as "The Original Quick Disconnect Stalk Stomper" although they knew that Plaintiff and another manufacturer had sold quick-disconnect stalk stompers before the QD1 was commercially available. (Pl.'s Stmt. of Add'l Facts (hereinafter "Pl.'s Add'l 56.1) [165] ¶ 31.) In addition, Plaintiff says, after Defendants stopped advertising QD1 as "The Original" in May 2014 while this suit was pending, they began a new campaign for the QD2 that again holds out the QD1 as the original quick-disconnect stalk stomper, announcing "This design change replaces a major change we introduced three years ago with the earliest quick disconnect." (Id. ¶ 34.) Plaintiff contends this conduct constitutes false advertising and violates (1) the federal Lanham Act, 15 U.S.C. § 1125(a); the Illinois Uniform Deceptive Trade Practices Act ("IUDTPA"), 815 Ill. Comp. Stat. 510/2; and (3) the Illinois Consumer Fraud and Deceptive Business Practices Act ("ICFA"), 815 Ill. Comp. Stat. 505/2.

         Defendants deny that the advertisements contain any false statements or that they actually deceived any consumers. According to Defendants, all of their stalk stomper products, regardless of the products' individual features, are marketed as "THE ORIGINAL" because Defendants were the first company to introduce stalk stompers, decades ago. In addition, Defendants note that they were the first to refer to their stalk stomper products using the term "quick disconnect." Thus, Defendants contend, their use of the term "The Original" was not literally false. With respect to the advertisement for the QD2, Defendants respond that the advertisement merely states that the QD1 was their earliest quick-disconnect product and thus makes no representation, let alone a false representation, about whether the QD1 was made available prior to any other company's quick-disconnect product. (Defs.' Reply to Pl.'s 56.1 [172] ¶ 31.)

         III. Infringement Contentions and Claim Construction

         The court turns first to Plaintiffs' claims of infringement. Plaintiffs assert that both the QD1 and QD2 infringe claim 1 of the '432 Patent and claims 6 and 7 of the '963 Patent. Defendants deny that their products infringe any of those claims because, they argue, their products lack certain elements of each claim. The court has already construed a number of the terms in those claims and will provide the court's construction of the disputed terms in parentheses where appropriate. See Not Dead Yet, 2015 WL 5829761, at *5-*17.

         A. Claim 1 of the '432 Patent and the QD1

         With respect to claim 1 of the '432 Patent, Defendants maintain that there is no genuine dispute of material fact that the QD1 lacks at least (1) a plate member (a single smooth thin flat sheet of material that may contain minor angles or curves), (2) a plate member having (thereon) a cross bar, or (3) retention means (a block or stop that retains the position of the stalk stomper with respect to the mounting bracket by restricting the longitudinal movement via engagement with a pin member, and equivalents thereof). Plaintiff insists the QD1 has each of these features. The C-channel member of the QD1's shoe bracket literally meets the plate member limitation, Plaintiff contends, because it is a single smooth thin flat sheet of material, with what Plaintiff contends is a minor angle (90 degrees) formed by the bracket's sidewalls. In the alternative, Plaintiff argues that the C-channel member meets the plate member limitation under the doctrine of equivalents. Plaintiff also maintains that the cross ...


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