GMI Holdings, Inc. v. Stanley Door Systems, Inc., 943 F. Supp. 1420 (N.D. Ohio 1996)

*1421 Harold H. Reader, III, Robert E. Chudakoff, Michael N. Ungar, Ulmer & Berne, Cleveland, OH, Stephen A. Hill, Rankin, Hill, Lewis & Clark, Cleveland, OH, Joseph A. DeGrandi, Michael A. Makuch, Helen Hill Minsker, Beveridge, DeGrandi, Weilacher & Young, Washington, DC, for GMI Holdings, Inc. d/b/a The Genie Company.

Christopher B. Fagan, Fay, Sharpe, Beall, Fagan, Minnich & McKee, Cleveland, OH, Siegrun D. Kane, David H.T. Kane, Kane, Dalsimer, Sullivan, Kurucz, Levy, Eisele & Richard, New York City, for Stanley Door Systems, Inc.

O'MALLEY, District Judge.

Plaintiff, GMI Holdings, Inc., d/b/a The Genie Company ("Genie"), alleges that two screw-drive garage door opener devices designed and manufactured by defendant Stanley Door Systems, Inc. ("Stanley") infringe Genie's U.S. Patent Number 4,352,585. Stanley has moved for summary judgment under Rule 56(c) of the Federal Rules of Civil Procedure, claiming it is entitled to a judgment of non-infringement as a matter of law. Specifically, Stanley asserts that the openers do not embody the claims of the Genie patent and that, accordingly, no reasonable trier of fact could conclude that those openers infringe that patent. For the reasons set forth below, Stanley's motion for summary judgment is GRANTED.

Genie commenced this action in 1992, asserting eight separate claims against Stanley that attack Stanley's marketing practices as violative of various federal and state laws designed to protect against unfair trade practices. Among these claims was a patent claim charging Stanley with infringing the '585 patent by manufacturing and selling a garage door opening device Stanley began marketing in 1983.

In response, Stanley filed an answer and nine-count counterclaim denying that it engaged in any improper conduct or competed unfairly with Genie and claiming that, in fact, Genie had engaged in improper trade practices, including trademark infringement and violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). With respect to Genie's charge of patent infringement, Stanley asserted that the Genie '585 patent is invalid, that, even if valid, Stanley's 1983 model garage door opener does not infringe that patent, that Genie is estopped by its own conduct during the prosecution of the '585 from claiming infringement in this case and that Genie waited far too long to bring suit, despite full awareness of Stanley's marketing efforts. Based on these assertions, Stanley requested among other things, that this Court declare the '585 invalid and not infringed.

Discovery on all issues was completed in September, 1994. In November, 1994, this matter was transferred to the undersigned's docket and a status conference was held shortly thereafter. At that time, the parties indicated their respective intentions to file cross-motions for summary judgment on most of the claims asserted. In the hopes of narrowing the issues presented, or possibly resolving the matter completely, the Court, with agreement of the parties, referred the matter to Magistrate Judge David Perelman for a settlement conference. Shortly before the settlement conference, Genie charged that a second garage door opening device, which Stanley began marketing in the fall of 1994 in lieu of the first-accused 1983 device, also infringed its '585 patent.

At the settlement conference, the parties agreed in principle to resolve all of the non-patent claims involved in the action (including trademark, trade dress, product disparagement and unfair trade practice claims) and agreed upon a mechanism for presentation of the patent claims to the Court. This agreement in principle was finalized and ultimately put in the form of a Stipulation of Partial Dismissal and Judgment Entry, filed on January 10, 1996. By that stipulation, Genie dismissed the first seven of the claims in its complaint and Stanley agreed to dismiss Counts 1 through 7 and paragraphs 157 through 163 and 177 through 181 of Count 9 of the counterclaim. The parties then agreed to present the remaining claims, Genie's claims that the '585 has been infringed and Stanley's counterclaim seeking a judgment that it has not, to the Court in stages.^[1] First, the parties agreed that Genie's patent infringement claim would be construed to include a claim of infringement with respect to Stanley's post-1994 garage door opener (the second-accused device), without a formal amendment of the complaint in this action. Next, the parties agreed that the issue of infringement with respect to both accused devices would be presented to the Court by way of a dispositive motion in which Stanley *1423 would seek a judgment of non-infringement as a matter of law. And, finally, the parties agreed to stay discovery with respect to the post-1994 opener, pending the Court's resolution of Stanley's dispositive motion.

Because the Court now grants summary judgment in favor of Stanley, no further discovery is needed, and, in light of the parties' earlier stipulation, this matter is dismissed in its entirety.

The '585 Patent discloses and claims a complete garage door opener that utilizes a motor-driven rotating screw (screw drive) to raise and lower the door. Specifically, as shown on Figure 1 of the '585 patent (Exhibit A to this opinion), the Genie opener uses a screw (20) that extends within a rigid guide (28), from a motor (17) to an assembly (34, 37, 38, 39) that pulls the door (14) open or pushes the door closed, depending upon whether the motor rotates the screw clockwise or counterclockwise.

The lifting or closing operation is accomplished by the movement of a partial nut (or traveler), to which the door is attached. The partial nut moves along the screw as it rotates, dragging the door with it. Because the average garage door is eight or nine feet high, the partial nut must move that distance to fully open (or, alternatively, close) the door. Because the partial nut is pulled along by rotations of the screw drive, the screw drive must, in turn, be eight or nine feet long.

A screw which is approximately nine feet long is both bulky and awkward, making it difficult to store and handle and expensive to ship. Garage door opener manufacturers, accordingly, have looked for ways to segment the screw and the guide that houses it, while not inhibiting the smooth operation of the screw drive function. The first such effort resulted in the issuance of Patent No. 4,241,540 to Depperman. The Depperman patent disclosed a garage door opener in which the screw and guide are segmented into foldable parts. (Exhibit B to this opinion). While solving some of the handling problems, the Depperman design purportedly had some functional weaknesses, in that it was allegedly "prone to tolerance errors" at the joint where the fold occurs, and still was somewhat bulky because of the way in which the segments would need to be packaged together.

The improvement to the art claimed in the '585 patent is use of a screw which is (1) segmentable into completely disconnectable, rather than foldable, parts for packaging and shipping, and (2) capable of being reconnected readily by the end user in a manner that allows for smooth and dependable operation i.e., for smooth transition of the partial nut during rotation and for operation with limited tolerance failures at the coupling of the screw segments.

The '585 contains 19 claims, of which only Claims 1 and 15 are independent. Of those, Genie only asserts infringement as to Claim 1. As finally allowed, Claim 1 reads as follows (emphasis added):

1. In a garage door operator having a motor-driven screw at least partially within guide means, a partial nut guided by said guide means and movable longitudinally therealong by engagement with said screw and connectable to open and close the garage door, the screw being in at least first and second parts, and a coupling adapted to interconnect adjacent ends of the first and second screw parts, the improvement comprising said coupling being readily connectable and being disconnected at the time of shipment to the customer said coupling in the connected condition being capable of being traversed by the partial nut, the first screw part having a portion adapted to abut and directly transmit torque both clockwise and counterclockwise to the second screw part.

The prosecution history which resulted in the specific phrasing of Claim 1 of the '585 is important. In the first application for the '585, Genie claimed an invention broad enough to cover all segmented screw-type garage openers. Thus, Claim 1 claimed a garage door opener having a screw in at least first and second parts and a coupling adapted to interconnect the ends of those parts, "the improvement comprising said coupling being *1424 readily connectable and being disconnected at the time of shipment to the customer." Spalding Patent Application dated March 6, 1980, at 16.^[2] The patent examiner rejected this claim on the grounds that it was obvious in light of the prior art. Specifically, the patent examiner found that earlier patents separately taught the inventions of (1) a screw-drive operated garage door opener, (2) segmentation of the screw in a screw-drive mechanism and (3) the method for interlocking such a segmented screw. Accordingly, the patent examiner concluded that the combination of these inventions would be obvious to one of ordinary skill in the art, rendering the claim unpatentable under 35 U.S.C. § 103. USPTO Action dated October 10, 1980, at 2.

Genie then amended Claim 1 to require that the coupling "in the connected condition [be] capable of being traversed by the partial nut." Amendment "A" to Spalding's Patent Application, at 2. The patent examiner again rejected the claims as obvious, this time citing to yet an additional prior art reference "teaching the segmentation of elongated screw threaded shafts while retaining their capability of being traversed by a nut when assembled." USPTO Action dated April 16, 1981, at 2.

Genie once again amended Claim 1, this time requiring that the first screw part have "a portion adapted to directly transmit torque both clockwise and counterclockwise to the second screw part." Amendment to Spalding's Patent Application, dated July 10, 1981, at 2. And, once again, the patent examiner rejected Genie's claims. This time, the claims were rejected under 35 U.S.C. § 102 as being substantially met by the Depperman foldable screw mechanism mentioned above. The examiner noted that the failure to mention Depperman earlier in the history of his consideration of the '585 application was "regrettable."^[3] USPTO Action, dated October 9, 1981, at 2.

To overcome this third rejection, Genie further amended Claim 1 to require that the first screw portion be adapted to "abut and directly transmit torque both clockwise and counterclockwise to the second screw part." Amendment "C" to Spalding Patent Application, at 3 (emphasis added). In the remarks accompanying this proposed amendment, Genie explained that the invention it sought to claim was superior to Depperman. Genie first pointed out that Depperman's structure suffered from a problem of weakness of the coupling relative to the rest of the screw and from the problem of "possible cumulative error in the tolerance of all the manufactured parts." Id. at 2. Genie then described its invention as a "hermaphroditic interfitting coupling" and explained its advantages vis-a-vis Depperman as follows:

Claim 1 has been amended to state that the first screw part has a portion adapted to abut the second screw part. Accordingly, claim 1 is considered to have at least two pertinent differences over Depperman, namely, that the coupling is connectable and disconnected at the time of shipment, and secondly that the first screw part has a portion adapted to abut and directly transmit torque both clockwise and counterclockwise to the second screw part. The second of these two differences is what has been discussed immediately above, namely, the direct interconnection rather than the indirect coupling and many parts of the Depperman construction, resulting in the superior coupling of the present invention.

Id. at 3 (emphasis added).

Both Stanley devices are admittedly motor-driven screw-drive garage door openers like Genie's device as shown in the '585 patent. The Stanley devices also employ segmented screw portions which are disconnected for shipping and handling and are readily reconnectable in a fashion that allows smooth operation of the lifting mechanism. Stanley claims that the similarity between its devices and the device shown in the '585 ends with *1425 these general functional concepts. Stanley claims that it has never employed the critical improvement claimed in the '585 its unique interconnecting mechanism.

In Stanley's 1983 device (Exhibit C to this opinion),^[4] the first and second screw parts are coupled by means of a short tubular link which fits over the ends of the screw parts. Pins are inserted through pinholes in the tubular link and in the screw parts to hold the assembly together.

The 1994 Stanley device has a D-shaped protuberance on the end of each screw part and a metal sleeve that receives the protuberances on the opposite end. (Exhibit C to this opinion). The sleeve has a D-shaped, axial through-hole that corresponds to the D-shaped protuberances of the screw parts. When any two screw parts are received within the sleeve, the D-shaped protuberances of each screw part extend toward each other, but do not come into physical contact with each other.

Stanley claims that, because neither of these devices employ a coupling mechanism in which the screw parts come into direct contact with one another, those devices do not contain all of the limitations of Claim 1 of the '585 and, thus, do not infringe that patent as a matter of law. Genie counters that (1) as properly construed, claim 1 covers the couplings Stanley has employed in both of its devices and (2) even if they do not do so literally, the accused openers infringe the '585 because they perform substantially the same overall function in substantially the same way to obtain the same overall result. Genie claims that, at a minimum, material disputes of fact require presentation of the second of these arguments to the jury.

Rule 56(c) of the Federal Rules of Civil Procedure dictates that, where summary judgment is sought:

The judgment sought shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.

While all evidence must be viewed in the light most favorable to the non-moving party, summary judgment is appropriate whenever that non-moving party "fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S. Ct. 2548, 2552, 91 L. Ed. 2d 265 (1986). "In other words, the movant [can] challenge the opposing party to `put up or shut up' on a critical issue. After being afforded sufficient time for discovery, as required by Fed.R.Civ.P. 56(f), if the respondent [does] not `put up,' summary judgment [is] proper." Street v. J.C. Bradford & Co., 886 F.2d 1472, 1478 (6th Cir. 1989).

In this context, "[t]he trial court no longer has the duty to search the entire record to establish that it is bereft of a genuine issue of material fact." Id. at 1479-80 (citing Frito-Lay, Inc. v. Willoughby, 863 F.2d 1029, 1034 (D.C.Cir.1988)). The trial court need not seek out factual disputes nor speculate on the possibility that, under some as yet unstated scenario, a meaningful factual dispute might somehow arise. The non-moving party is under an affirmative duty to point out specific facts in the record as it has been established, which create a genuine issue of material fact. See Fulson v. City of Columbus, 801 F. Supp. 1, 4 (S.D.Ohio 1992).

"[W]hoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States ... during the term of the patent ... infringes the patent." 35 U.S.C. § 271(a). The patent owner has the burden of proving infringement, whether literal infringement or infringement under the doctrine of equivalents, by a preponderance of the evidence. See Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1361 (Fed.Cir. 1983).

*1426 "An infringement analysis entails two steps." Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995), aff'd, ___ U.S. ___, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996). The first step, commonly known as claim construction or claim interpretation, "is determining the meaning and scope of the patent claims asserted to be infringed." Id. "The second step is comparing the properly construed claims to the device accused of infringing." Id.

The construction of the patent and the terms contained therein is an issue to be determined by the court as a matter of law. Markman, ___ U.S. at ___, 116 S. Ct. at 1394. To ascertain the meaning of the claims, a court should consider the claim language, the other claims, the patent specification, the prosecution history, and the prior art. See United States v. Adams, 383 U.S. 39, 49, 86 S. Ct. 708, 713, 15 L. Ed. 2d 572 (1966) (stating that "claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention"); Markman, 52 F.3d at 979-80; SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1118 (Fed.Cir.1985). "Expert testimony, including evidence of how those skilled in the art would interpret the claims, may also be used." Fonar Corp. v. Johnson & Johnson, 821 F.2d 627, 631 (Fed.Cir.1987), cert. denied, 484 U.S. 1027, 108 S. Ct. 751, 98 L. Ed. 2d 764 (1988). In construing a claim, claim terms are to be given their ordinary meaning unless examination of the specification, prosecution history, and other claims indicate that the inventor intended otherwise. Carroll Touch, Inc. v. Electro Mechanical Sys., 15 F.3d 1573, 1577 (Fed.Cir.1993). The "[c]laims must be read in view of the specification, of which they are a part." Markman, 52 F.3d at 979. For purposes of construing the claim, the written description contained in the specification "may act as a sort of dictionary, which explains the invention and may define the terms used in the claims." Id. Normally, however, words in a claim will be given their ordinary meaning. Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759 (Fed.Cir.1984).

In construing the claims, the court may look to the patent's prosecution history if it is a part of the record in the case. Markman, 52 F.3d at 980. "This `undisputed public record' of proceedings in the Patent and Trademark Office is of primary significance in understanding the claims." Id. Although the prosecution history "can and should be used" when construing the claims, it "cannot `enlarge, diminish or vary' the limitations in the claims." Id. (citation omitted). The court may also consider extrinsic evidence to aid the court in coming to a correct conclusion as to the true meaning of the language employed by the patent. Id. "Extrinsic evidence consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises. This evidence may be helpful to explain scientific principles, the meaning of technical terms, and terms of art that appear in the patent and prosecution history." Id. The district court is free to use helpful extrinsic evidence and reject other evidence as unhelpful. Id. Extrinsic evidence, however, may not be used to vary or contradict the terms of the claims. Id. at 981. The district court's claim construction, enlightened by such extrinsic evidence as may be helpful, must still be based upon the patent itself and the prosecution history. Id. "When, after considering the extrinsic evidence, the court finally arrives at an understanding of the language as used in the patent and prosecution history, the court must then pronounce as a matter of law the meaning of that language." Id.

The second prong of the infringement analysis, comparison of the claim to the accused device or process, is a question of fact. Markman, 52 F.3d at 976 (citing Envirotech, 730 F.2d at 758). When an allegedly infringing product includes every limitation of the patent claim, literal infringement is made out, and that is the end of the inquiry. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607, 70 S. Ct. 854, 855, 94 L. Ed. 1097 (1950). The presence of additional elements in the accused device is irrelevant if all of the claimed elements are present in it. Amstar Corp. v. Envirotech Corp., 730 F.2d 1476, 1482 (Fed.Cir.1984), cert. denied, 469 U.S. 924, 105 S. Ct. 306, 83 L. Ed. 2d 240 (1984).

*1427 Even if an accused device does not literally infringe a patent claim, the accused device is still found to infringe the patent claim under the doctrine of equivalents if the accused device: (a) "performs substantially the same function," (2) "in substantially the same way," (3) "to achieve the same result." Graver Tank, 339 U.S. at 608, 70 S. Ct. at 856 (citation omitted). See Goodwall Constr. Co. v. Beers Constr. Co., 991 F.2d 751, 758 (Fed. Cir.1993); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934 (Fed.Cir.1987), cert. denied, 485 U.S. 961, 108 S. Ct. 1226, 99 L. Ed. 2d 426 (1988), and cert. denied, 485 U.S. 1009, 108 S. Ct. 1474, 99 L. Ed. 2d 703 (1988). The doctrine of equivalents is a factor to be considered in an infringement analysis "when actual literal infringement is not found," Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1361 (Fed.Cir.1983), but where the difference between an accused product and the asserted claim as a whole is insubstantial. Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1517-18 (Fed.Cir.1995) (citing cases), opinion supplemented by 64 F.3d 675 (Fed.Cir.1995), cert. granted, ___ U.S. ___, 116 S. Ct. 1014, 134 L. Ed. 2d 95 (1996). This doctrine is designed to avoid "a fraud on a patent" by discouraging a copyist from making changes in the patent which, though adding nothing, take the copied matter outside the claim. Graver Tank, 339 U.S. at 607-08, 70 S. Ct. at 855-56. The range of equivalents afforded a patent varies with the degree of invention: a pioneer invention, one which represents a major advance over the prior art, is entitled to a broad and liberal application of the doctrine of equivalents, while one that adds little to the state of the art is not. Thomas & Betts Corp. v. Litton Sys., Inc., 720 F.2d 1572, 1580 (Fed.Cir.1983).

While the doctrine of equivalents may, in appropriate circumstances, have the effect of broadening the preclusive effect of claim language, a patentee may never obtain patent protection in an infringement suit for subject matter it relinquished during prosecution of that patent. Zenith Lab., Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 1424 (Fed.Cir.), cert. denied, ___ U.S. ___, 115 S. Ct. 500, 130 L. Ed. 2d 409 (1994). Thus, a patent holder is estopped by actions it took or limitations it agreed to in order to obtain allowance of the claims of its patent from asserting that its patent covers subject matter beyond those limitations. Id. This principle, known as prosecution history estoppel, "serves as a check on the applicability of the doctrine of equivalents," counseling against its use where to do so would be inconsistent with a fair reading of the prosecution history. Mark I Mktg. Corp. v. R.R. Donnelley & Sons Co., 66 F.3d 285, 291 (Fed.Cir.1995), cert. denied, ___ U.S. ___, 116 S. Ct. 917, 133 L. Ed. 2d 847 (1996).

The test for determining whether a particular embodiment or claim interpretation was relinquished during the prosecution of the patent at issue is an objective one it requires assessment of "what a reasonable competitor would conclude from the patent's prosecution history." Id. The question of whether prosecution history estoppel prohibits use of the doctrine of equivalents to find infringement in a given case is one of law, to be decided by the court. Id. (citing LaBounty Mfg., Inc. v. United States Int'l Trade Comm'n, 867 F.2d 1572, 1576 (Fed.Cir.1989)).

Stanley claims that the language of claim 1 claims and requires a device in which the segmented parts of the screw drive, while disconnectable, are to be reconnected in such a way that the screw segments are in physical, direct contact with one another. This Court agrees; indeed Stanley's interpretation of claim 1 is the only interpretation that is consistent with the common meaning of the language used in and the prosecution history of the '585.

As noted above, Genie finally overcame rejection of its claims in the '585 by appending the words "abut and" to the words "directly transmit torque," so that claim 1 claims a coupling of the screw segments in a motor driven screw drive opener in which "the first screw part ha[s] a portion adapted *1428 to abut and directly transmit torque both clockwise and counterclockwise to the second screw part." In the Oxford English Dictionary, "abut" is generally defined as follows: "to touch at one end, border on." Beyond that general definition, usage of the term in relation to adjoining structures is explained as follows: "... [to] terminate at a point of contact...." While the word "direct" has various meanings, the most pertinent are: "from the source or original without interruption or diversion; c: mechanically joined or in mean; mechanically or electrically in contact; d(1): without any intervening agency or step; without any intruding or diverting factor; without use of a broker or other middleman...." And, finally, "transmit," in the context of mechanical applications, is defined as: "... (1) to cause (as light or force) to pass or be conveyed through space or a medium (2) to admit the passage of: conduit...."

Giving each of these words their literal meaning, claim 1 can only be read to claim a coupling in which the screw segments come in physical contact with, "i.e., touch," one another in such a way as to allow for the passage of torque from one screw segment to the next without the aid of any intervening coupling mechanism. This is precisely the device Genie describes throughout the '585's specification and its prosecution history.

In its "Summary of Invention," for instance, after repeating the language used in claim 1, Genie explains, inter alia:

Accordingly, an object of the invention is to provide a door operator screw coupling with a minimum of parts, and hence with a minimum possible cumulative tolerance.

Another object of the invention is to provide a door operator screw coupling wherein the coupling includes first and second hermaphroditic parts which are mutually interengageable in only one possible way to preclude mismatch of the threads from the screw parts upon attempted traversal by the partial nut.

'585 Patent, col. 2, at lines 16-25. Thus, Genie sums up a mechanism in which the screw segments serve both a screw and coupling function simultaneously ("i.e., are hermaphroditic")^[5] and do so by directly engaging each other (i.e., are "mutually interengageable") so as to allow coupling "with a minimum of parts" and to ensure "good torque transmittal capability."

Genie further explains the advantage of its design in the specification:

Phase means are provided so that the couplings are mutually interengageable in only one possible manner, and this precludes interconnecting these screw parts in an incorrect phase of threads on the screw parts. The phase means is provided by the hermaphroditic style of coupling. The interconnecting male and female shoulders 44 and 45, for example, provide direct transfer of longitudinal compression force therebetween.... The two couplings 11 and 71 illustrate ways in which a part of the first screw directly engages a part of the second screw for directly transmitting torque both clockwise and counterclockwise between the screw parts.

'585 Patent, col. 7, at lines 27-45. Indeed, the specification and the drawings repeatedly emphasize the "interconnected," "interengaged," or "interfitting" of the screw segments. See Figures 2, 4, 5 and 6 and references in virtually every column of the '585.

A reading of claim 1 which requires physical contact between and among the screw segments is consistent with and wholly supported by the prosecution history. As noted, Genie labored to overcome repeated rejection of the claims in its '585. Genie was finally successful in that regard when it added and emphasized the phrase "abut and directly transmit torque" in describing the relationship between, and operation of, its screw segments. As Genie explained to the patent examiner, it is the direct interconnection of the screw segments in the '585, rather than the indirect coupling of those segments, *1429 which constitutes the patentable improvement over Depperman.

In the face of the plain meaning of the words, the specification and drawings and the clear teachings of the prosecution history, Genie counsels a contrary reading of claim 1 one in which "abut" is read to mean "close to" and "directly transmit torque" is read to mean "to transmit torque along the same longitudinal axis." Specifically, Genie points out that Figures 2 and 5 show a coupling mechanism in which the screw parts which interconnect protrude from the threaded portion of their screw segments, and that, in operation, those threaded segments, while close enough to be traversed by the partial nut, technically remain separated. As Genie notes, this design differs from that depicted in Figure 6 where the threaded segments of the screw actually interconnect. Genie also points out that, in those circumstances depicted in Figures 2 and 5, the '585 employs a sleeve over the coupling to assist passage of the partial nut. Therefore, Genie argues that claim 1 should be read to include screw segments which approach one another in such a fashion as to allow torque to be transmitted, through the assistance of a sleeve, along a common axis, from one threaded screw segment to the next.^[6]

Despite some arguable support for this reading in the drawings, this Court finds that it is simply not supported by and is, indeed, inconsistent with the language in the claims. There is, moreover, no support in the claims or its specification for the distinction Genie attempts to draw between "screw parts" and "threaded screw parts." Claim 1 claims screw segments which "abut" for purposes of "directly" transmitting torque. The screw segments shown in all of the figures of the '585 do just that "touch one another" they simply do so in slightly different ways. Genie's present attempt to interpret its claims in a way that is inconsistent with the common meaning of the language it chose for the very purpose of overcoming a rejection of those claims is unpersuasive.

It is undisputed that in the Stanley devices both the 1983 and the 1994 models the screw parts do not come in physical contact with one another. They do not, accordingly, "abut" each other as this Court interprets that term in claim 1. It is also undisputed that the Stanley devices do and necessarily must employ additional or intervening elements in its coupling mechanism in order to (1) effectuate the connection between the screw segments and (2) transmit torque among those screw segments. As the inventor of the '585 device explained, the torque on the Stanley unit is transmitted to a reduced section (i.e., a protuberance), to a sleeve, to a pin and then to a second reduced section or protuberance. (Spalding Depo. at p. 113). Thus, torque is transmitted through various coupling pieces and is not transmitted "directly" from screw segment to screw segment as described in claim 1. Because neither Stanley device reads on the critical claims of claim 1, as this Court now interprets those claims as a matter of law, the Stanley devices do not literally infringe the '585.

Alternatively, Genie claims that, if the court refuses to hold that the accused Stanley devices literally infringe the '585 patent, they infringe under the doctrine of equivalents. Genie argues that, like its device, the Stanley couplings (a) transmit torque in only a straight line, (b) do not fold (unlike Depperman), (c) cause adjacent screw ends to interconnect, (d) do so in a way that still allows for traversal of the partial nut, and (e) accomplish all of this by holding the screw parts in close proximity within a rigid sleeve. *1430 Thus, Genie contends, the Stanley devices serve substantially the same function in substantially the same way to achieve substantially the same result. Accordingly, Genie argues that the Stanley devices infringe the claims of the '585, despite the fact that the screw ends do not come in contact with one another.

Moreover, Genie asserts that the space between the two screw parts serves no function and, thus, cannot alone be relied upon to take the accused devices outside the reach of claim 1. Faced with the many functional similarities between the devices, there is, at least initially, substantial appeal to Genie's argument. Nonetheless, Genie's functional assessment of the gap between the screw ends in the Stanley devices, assuming it is correct, cannot overcome the hurdle Genie faces based on prosecution history estoppel. Thus, the doctrine of equivalents will not allow Genie to broaden its claims to cover the Stanley devices.^[7]

Genie went to great lengths to avoid rejection of its claims based on the existence of prior art in the field. The prosecution history reveals that Genie was unsuccessful in obtaining allowance of its claims until they were narrowed to require actual physical contact between the ends of the screw segments in a manner that allows for direct transmission of torque from one screw segment to the next. And, Genie asserted that this narrowing rendered its claims patentably distinguishable from the prior art because of the uniquely interconnected nature of the resultant coupling. Thus, a competitor would reasonably conclude, as does this Court, that Genie surrendered any claim to couplings in which the screw segments remain spacially distinct, even slightly so. Under such circumstances, the doctrine of equivalents will not allow for an expansion of the claims of the '585 to cover the very design surrendered to secure that patent. See, e.g., Mark I Mktg., 66 F.3d at 292. This is especially so where, as here, the patent examiner obviously believed that the '585's contribution to the prior art was relatively insubstantial. See Thomas & Betts Corp., 720 F.2d at 1580.

This Court finds that no reasonable trier of fact could find that the accused devices infringe the '585 patent, rendering summary judgment of non-infringement appropriate. See Mark I Mktg., 66 F.3d at 292 (citing Brenner v. United States, 773 F.2d 306, 307 (Fed.Cir.1985)). Defendant's Motion for Summary Judgment is GRANTED.

IT IS SO ORDERED.

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[1] In addition to the infringement issue, Stanley did not relinquish its claim that Genie's entire action is barred by laches. In light of this opinion, this issue is moot.

[2] Exhibit K to Stanley's motion for summary judgment and exhibit E to Genie's response brief contains documents relating to the prosecution history of the '585 patent.

[3] To the extent Depperman justified rejection of Genie's third iteration of Claim 1, it presumably would have also justified rejection of the first and second.

[4] Exhibit C to this opinion depicts the critical portions of Stanley's 1983 and 1994 devices as well as the comparable portions of the Genie and Depperman devices.

[5] A "Hermaphrodite" is a person or thing which simultaneously combines "diverse elements" such as a plant or animal having both male and female reproductive organs. Here, Genie describes the end parts of its respective screw segments as having "male" and "female" shoulders which interengage or interfit to serve the coupling function and allow for transmission of the torque.

[6] As Stanley points out, there is nothing in the '585 itself which supports Genie's contention that the function of the sleeve 50 shown in figure 2 was to transmit torque. Indeed, if it were, Genie's assurance to the patent examiner that torque is transmitted in the '585 directly from one screw segment to the next i.e., without the aid of intervening or additional parts would have been inaccurate.

[7] Stanley asserts (without evidentiary support) that the gap allows Stanley to simplify the manufacturing process because the dimensioning of the screws is less critical where interconnection of the screw segments is not necessary.