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LoggerHead Tools, LLC v. Sears Holdings Corp.

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

July 20, 2018

LOGGERHEAD TOOLS, LLC, Plaintiff,
v.
SEARS HOLDING CORPORATION and APEX TOOL GROUP, LLC, Defendants.

          MEMORANDUM OPINION AND ORDER

          REBECCA R. PALLMEYER UNITED STATES DISTRICT JUDGE

         This long-running patent dispute proceeded to trial a year ago. Plaintiff LoggerHead Tools, LLC prevailed, winning a jury verdict and a large damages award against Defendants Sears Holdings Corp. and Apex Tool Group, LLC, on claims that by selling the “Max Axess Locking Wrench, ” Defendants infringed LoggerHead's patent for an “Adjustable Gripping Tool.” This court concluded, however, that the jury instructions were infected by an inaccurate claim construction. The court therefore vacated the jury's verdict, revisited the claim construction performed by Judge Darrah (to whom this case was previously assigned), and ordered a new trial. See LoggerHead Tools, LLC v. Sears Holding Corp., No. 12 C 9033, 2017 WL 6569629 (N.D. Ill.Dec. 22, 2017). Plaintiff now asks the court to reconsider its decision and reinstate the verdict. In the alterative, Plaintiff seeks summary judgment in its favor under the court's revised claim construction. For their part, Defendants Sears and Apex contend that the revised claim construction dictates summary judgment in their favor. For the reasons explained here, the court agrees. Plaintiff's motions are denied and Defendants' motion for summary judgment is granted.

         BACKGROUND

         Most of the relevant facts of this case are undisputed.[1] Plaintiff LoggerHead Tools, LLC, is the assignee of United States Patents No. 6, 889, 579 (hereafter “‘579 patent”) and No. 7, 992, 470 (hereafter “‘470 patent”). Both patents are titled “Adjustable Gripping Tool” and both describe several wrench-like hand-tools designed to “impart work upon a workpiece.” (Defs.' L.R. 56.1 Statement of Facts (hereafter “DSOF”) [504], at ¶¶ 10-11.) Two embodiments of such a tool appear below. Squeezing the tool's handles together causes several tooth-like “gripping elements” (labeled 26 in the images below) to close in on, and grip, a lug nut or other workpiece.

         (Image Omitted)

(‘579 Patent, Ex. 1 to DSOF, Figs. 2, 4.)

         These “gripping elements” are at the center of this litigation. The claims LoggerHead now asserts against Defendants[2] require “at least one gripping element.” Each gripping element, in turn, must include a “body portion” (34), an “arm portion” (36), and a “force transfer element” (38). The arm portion must be “configured to engage” certain other components of the tool (called “guides”); the body portion must be “adapted for engaging the work piece”; and the force transfer element must be “contiguous with the arm portion.” (DSOF ¶ 13.) Two images of a set of gripping elements satisfying all these requirements appear below:

         (Image Omitted)

(‘579 Patent, Fig. 1.; Pl.'s Tr. Demonst. Ex., Fig. 1.)

         The parties agree that a gripping element need not be U-shaped, like those depicted above, to satisfy all the applicable requirements in the asserted claims. (See Pl.'s Statement of Add'l Material Facts (hereafter “PSAMF”) [507-2], at ¶ 2; Defs.' Resp. to PSAMF [515], at ¶ 2.) The key question in this case is whether a gripping element that is a solid rectangle-like the one in Defendants' accused product, discussed in greater detail below-includes the requisite “arm portion.”

         I. Prosecution History

         The prosecution history of the ‘470 patent shows why the inclusion of an arm portion in LoggerHead's claims is significant. During prosecution, LoggerHead[3] distinguished its claims from the prior art by arguing that the prior art did not include an arm portion. The company made this argument in response to the U.S. Patent Office's rejection of certain claims on the grounds that they were anticipated by United States Patent No. 2, 787, 925 (hereafter “Buchanan patent” or “Buchanan”).[4] (PSAMF ¶ 26.)

         LoggerHead first applied for the ‘470 patent on April 11, 2005. See ‘470 patent, at [22]. The patent examiner rejected LoggerHead's claims as anticipated by Buchanan on April 16, 2008. The examiner stated, inter alia, that a feature of the Buchanan patent referred to as a “plunger” satisfies LoggerHead's proposed claims involving a gripping element, [5] because the plunger “includ[es] a body portion (24) adapted for engaging the work piece, an arm portion configured to engage one at least one guide and a force transfer element (26) contiguous with the arm portion.” (PSAMF ¶ 25.)

         LoggerHead raised several arguments in response to this rejection. The company argued, for example, that “Buchanan does not show the elements united in the same way as disclosed in Applicant's claims.” (Id. at ¶ 27.) The company also argued that Buchanan's “plunger” does not disclose both a body portion and an arm portion. LoggerHead attached the following images to its response to illustrate the differences between Buchanan's plunger and the gripping element LoggerHead claimed:

         (Image Omitted)

(LoggerHead Response of July 16, 2008, Ex. 3 to PSAMF, at LH-00001657.) The company noted that “[t]he Examiner does not specify where Buchanan teaches an arm portion.” (Id.) In fact, LoggerHead asserted, “Buchanan's gripping element does not contain an arm portion. Instead, the force transfer element (i.e., pin 26) of Buchanan is directly attached to the body portion.” (Id.) Buchanan's force transfer element, LoggerHead continued, “is contiguous with the body, not an arm portion because Buchanan does not teach or suggest an arm portion.” (PSAMF ¶ 27.) LoggerHead concluded that the claims in its patent thus differed from Buchanan and should be allowed. “For this reason alone, ” LoggerHead asserted, referring to the absence of an arm portion in the Buchanan patent, LoggerHead's “claims are in condition for allowance.” (Id.) The company did not submit any claim amendments with this response. (Id. at ¶ 28.) On November 3, 2008, the Patent Office concluded that LoggerHeads' “arguments . . . are persuasive, ” and therefore withdrew the April 2008 rejection. (PSAMF ¶ 29.)

         The Patent Office nevertheless did not immediately allow LoggerHead's proposed claims. Instead, the Office rejected the claims several more times based on “art other than Buchanan.” (Id. at ¶ 32.) On at least one such occasion, on January 26, 2010, LoggerHead chose to amend its proposed claims instead of contesting the rejection.[6] (Id. at ¶ 31.)

         For reasons that are not clear from the record, the patent examiner subsequently turned his attention back to the Buchanan patent. On October 13, 2010, the examiner again rejected several of LoggerHead's proposed claims as anticipated by Buchanan. (Id. at ¶ 33.) Like the April 2008 rejection, the October 2010 rejection asserted that Buchanan discloses a gripping element that includes a “body portion (24) adapted for engaging the work piece, ” an “arm portion . . . configured to engage one the at least one guide, ” and “a force transfer element (26) contiguous with the arm portion.” (Id.) Unlike the April 2008 rejection, however, which did not identify exactly where or how Buchanan's plunger discloses an arm portion, the October 2010 rejection identified the purported arm portion as being “adj. 25”-that is, adjacent to the indentation in the plunger identified by the number 25 in the image labeled “Buchanan's Plunger” above. (Id.)

         In response to the October 2010 rejection, LoggerHead again argued that “Buchanan does not show all the elements united in the same way as disclosed in Applicant's claims.” (Id. at ¶ 34.) LoggerHead also attached the same two images contrasting Buchanan's plunger with LoggerHead's gripping element that it had attached to its response to the April 2008 rejection. The company urged that, contrary to the patent examiner's assertion that an arm portion is “adj[acent]” to the indentation in Buchanan's gripping element, “[n]o structure is adjacent to the crimping portion 25 of Buchanan except for the pin 26.” (Id.) LoggerHead then repeated its earlier contentions that “Buchanan's gripping element does not contain an arm portion, ” and that Buchanan's force transfer element “is contiguous with the body, not an arm portion because Buchanan does not teach or suggest an arm portion.” (Id.) LoggerHead again declined to amend its claims in response to the October 2010 rejection, and, on April 25, 2011, the Patent Office again withdrew its rejection, this time noting that “[a]pplicant's arguments . . . have been fully considered and are persuasive.” (Id. at ¶ 36.) In its ensuing Notice of Allowability, the Office explained that:

[t]he art of record considered as a whole, alone, or in part, fails to provide, inter alia, at least one gripping element including a body portion . . ., an arm portion configured to engage on said at least one guide and a force transfer element contiguous with the body portion[.]

(Id. (emphasis and ellipses in original).) The ‘470 patent issued on August 9, 2011, as a continuation-in-part of the ‘579 patent. ‘470 patent, at [22, 63].

         II. The Max Axess Locking Wrench

         Defendant Sears Holdings Corporation began retailing Loggerhead's “Bionic Wrench” in 2009. See LoggerHead, 2017 WL 6569629, at *3. As described in this court's previous opinion, however, LoggerHead's business relationship with Sears soured in early 2012. Id. Around the same time, Sears began working with Defendant Apex Tool Group to develop and market another adjustable gripping tool as part of Sears' “Craftsman” product line. Id. Both Apex and Sears were aware of LoggerHead's patents during the development of this new adjustable gripping tool. Id. at *4. At various points during the design process, Apex consulted with outside patent counsel John Owen about the possibility of an infringement action. (Id.; DSOF ¶ 25.) On at least one occasion, Owen suggested that Apex likely could avoid such a charge if it were to mimic certain design features from the Buchanan patent. Id. In a letter dated March 8, 2012, for example, Owen explained that LoggerHead had “argued multiple times during prosecution . . . that Buchanan's plungers do not have an arm portion.” LoggerHead, 2017 WL 6569629, at *4 (emphasis in original). “This means, ” Owen wrote, “that [LoggerHead] is very likely precluded from now asserting that a flat body structure like Buchanan's ‘plungers' falls within the scope of [LoggerHead's] claims that require an arm portion on the gripping element.” Id.

         Sears began retailing Apex's tool, the “Max Axess Locking Wrench” (“Max Axess” or “MALW”), in September 2012. Id. Unlike the U-shaped gripping element depicted in LoggerHead's patents, the MALW's gripping element is a solid, block-like structure with a pin (that is, the force transfer element) driven through one end. (DSOF ¶ 28.) Images of the MALW's gripping element appear below:

         (Image Omitted)

(Id. at ¶ 29.)

         The central dispute in this case is whether the MALW's gripping element includes the “arm portion” necessary for infringement of LoggerHead's patents. LoggerHead's expert witness, Dr. Jonathan Cagan, has testified that the MALW's gripping element does include ...


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