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Joyal Products, Inc. v. Johnson Electric North America

October 17, 2008


The opinion of the court was delivered by: Pisano, District Judge.


This is an action for patent infringement and breach of contract brought by Plaintiff, Joyal Products, Inc. ("Joyal" or "Plaintiff"), against Johnson Electric North America Inc., Johnson Electric Consulting, Inc., and Johnson Electric Manufacturory, Ltd. ("Johnson" or "Defendants"). Presently before the Court is a motion by Plaintiff for summary judgment dismissing Defendants' affirmative defenses and declaratory judgment counterclaim of anticipation and obviousness. Plaintiffs assert that Defendants, having abruptly withdrawn their expert witness on the issue of invalidity, lack sufficient evidence to prove invalidity at trial. Defendants have opposed the motion and have cross-moved for summary judgment of patent invalidity and dismissal of Plaintiff's breach of contract claims. For the reasons below, Plaintiff's motion is granted, and Defendants' cross-motion is denied.*fn1

I. Background

Because the Court writes only for the parties, familiarity with the underlying facts in this case is presumed. Only those facts relevant to the instant motions are set forth herein.

As stated above, in response to Plaintiff's claims of patent infringement, Defendants assert that the claims of United States Patent No. 5,111,015 (the "'015 patent") are invalid due to anticipation and obviousness. In June of 2008, Defendant served an expert report by Kurt Hofman, who opined that the '015 patent was anticipated by certain prior art patents and was obvious in light of various combinations of certain prior art patents. On August 28, 2008, in response to an in limine motion to exclude Mr. Hofman, Defendants withdrew Mr. Hofman as their witness, indicating that they would not be relying on either his testimony or his report at trial. As a result, on the eve of trial, Defendants are without expert testimony with respect to their theories of invalidity.

Plaintiff has moved for summary judgment dismissing Defendants' patent invalidity defenses and declaratory judgment counterclaim. Plaintiff argues that without their expert, Defendants lack sufficient evidence to prove anticipation and/or obviousness at trial. Specifically, Plaintiff asserts that expert testimony is required in this case due to the complexity of the technology. Additionally, Plaintiff argues that even if Defendants were permitted to proceed without an expert, Defendants are unable to establish a prima facie case of invalidity because they are without appropriate witnesses and cannot rely upon attorney argument as a substitute for competent evidence.

II. Discussion

A. Summary Judgment Standard

A court shall grant summary judgment under Rule 56(c) of the Federal Rules of Civil Procedure "if 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 movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). The substantive law identifies which facts are critical or "material." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A material fact raises a "genuine" issue "if the evidence is such that a reasonable jury could return a verdict" for the non-moving party. Healy v. N.Y. Life Ins. Co., 860 F.2d 1209, 1219 n.3 (3d Cir. 1988).

On a summary judgment motion, the moving party must show, first, that no genuine issue of material fact exists. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the moving party makes this showing, the burden shifts to the non-moving party to present evidence that a genuine fact issue compels a trial. Id. at 324. In so presenting, the non-moving party may not simply rest on its pleadings, but must offer admissible evidence that establishes a genuine issue of material fact, id., not just "some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986).

The Court must consider all facts and their logical inferences in the light most favorable to the non-moving party. Pollock v. American Tel. & Tel. Long Lines, 794 F.2d 860, 864 (3d Cir. 1986). The Court shall not "weigh the evidence and determine the truth of the matter," but need determine only whether a genuine issue necessitates a trial. Anderson, 477 U.S. at 249. If the non-moving party fails to demonstrate proof beyond a "mere scintilla" of evidence that a genuine issue of material fact exists, then the Court must grant summary judgment. Big Apple BMW v. BMW of North America, 974 F.2d 1358, 1363 (3d Cir. 1992).

B. Establishing Anticipation

It is well-established that anticipation is a question of fact. See, e.g., Ormco Corp. v. Align Technology, Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007). In order to anticipate a claim,

a single prior art reference must expressly or inherently disclose each claim limitation. But disclosure of each element is not quite enough -- this court has long held that '[a]nticipation requires the presence in a single prior art disclosure ...

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