United States District Court, D. Minnesota
For Plaintiff: John M. Weyrauch, Esq., Paul P. Kempf, Esq., and Peter R. Forrest, Esq., Dicke, Billig & Czaja, PLLC.
For Defendants: Jeffrey C. Brown, Esq., Sapientia Law Group; and Sander J. Morehead, Esq. and Tim R. Shattuck, Esq., Woods Fuller Shultz & Smith, P.C.
MEMORANDUM OPINION AND ORDER
DONOVAN W. FRANK, United States District Judge.
This matter is before the Court on a Second Motion for Summary Judgment brought by Defendant Masaba, Inc. (" Masaba" ) (Doc. No. 190) and a Cross-Motion to Vacate the Constructions of " Channel Beam" and " Elongate Opening" or in the
Alternative to Grant Plaintiff's Summary Judgment of Noninfringement of the Undercarriage Patents and Dismissal of Invalidity Counterclaims brought by Plaintiff Superior Industries, LLC (" Superior" ) (Doc. No. 203). For the reasons stated below, the Court grants Masaba's Second Motion for Summary Judgment, denies Superior's motion to vacate, denies Superior's Motion for Summary Judgment as moot, and dismisses Masaba's invalidity counterclaims without prejudice as moot.
In its Amended Complaint, Superior alleges that Masaba has infringed one or more claims of U.S. Patent No. 7,424,943 (the '943 Patent), U.S. Patent No. 7,607,529 (the '529 Patent), and U.S. Patent No. 7,845,482 (the '482 Patent) (together the " Unloader Patents" ) by making and selling certain truck unloaders. (Doc. No. 36 (" Am. Compl." ) ¶ ¶ 14-32.) Superior also alleges that Masaba has infringed on ore more claims of U.S. Patent No. 7,470,101 (the '101 Patent) and U.S. Patent No. 7,618,231 (the '231 Patent" ) (together, the " Support Strut/Undercarriage Patents" ) by making and selling stacking conveyors equipped with a support strut. ( Id.) Masaba filed amended counterclaims seeking, in relevant part, declaratory judgment pursuant to 28 U.S.C. § 2201 that the patents-in-suit are invalid. (Doc. No. 37 (" Answer and Countercl." ) ¶ 9.)
In a Memorandum Opinion and Order dated August 17, 2012 (the " Markman Order" ), the Court construed the disputed terms in this action. (Doc. No. 118 (" Markman Order" ).) In the Markman Order, the Court stated the following with respect to Superior's Unloader Patents:
The device claimed in the Unloader Patents was intended to address the need for a material transport vehicle unloading system that is portable, quick to set up, and able to be relocated. (['943 Patent], col. 1, ll: 30-35; col. 2, ll: 31-33; Fig. 1 (" low-profile, portable drive-over truck dump conveyor system" ); col. 4, ll: 33-54.) Specifically, the Unloader Patents claim a truck unloader comprising a portable, vehicle-towed, longitudinally-extending frame supporting a conveyor system with three ramp sections. ( Id., col. 1, ll: 39-55.) One end of the frame has a towing connector, and the other end has a wheeled axle system that allows the truck unloader to be road transportable. ( Id., col. 2, ll: 33-40.) After towing, the towing vehicle is disconnected and the portion of the frame that carries the drive-over ramp system is placed on the ground. ( Id., col. 3, ll: 57-67.) The ramp system is comprised of three ramp sections: two are drive-on sections that are pivotally connected to each side of the frame and are comprised of a support frame and a ramp; and a third section includes a grate over the hopper of the longitudinally-extending frame. ( Id., col. 2, ll: 53-60.) The two drive-on ramp sections are lowered into contact with the ground. The grate in the third ramp section is designed to support the transport vehicle and to allow material
to be deposited on the conveyor belt system.
(Doc. No. 118 at 5-6.)
With respect to the Unloader Patents, the Court construed several terms. Significantly, the Court explained that the claimed invention's " support frame" is comprised of a pair of side frame members and an end frame member and ruled that the term " support frame" " must be construed to include the purpose of the structure," which is " primarily, to provide a barrier for an earthen ramp and, secondarily, to provide support for a pivoting ramp." ( Id. at 12-14.) The Court therefore construed " support frame" as " a frame consisting of a pair of side frame members and an end frame member that provides a barrier for supporting an earthen ramp that can also provide support for a pivoting ramp when it is in a lowered position." ( Id. at 15, 23, 36 and 41.)
The Court also noted that Superior's Strut/Undercarriage Patents relate to conveyor systems used in stockpiling rock or other aggregate material and claim a particularly-configured support strut for a stacking conveyor. ( Id. at 41-42.) With respect to the Support Strut/Undercarriage Patents, the Court explained:
The claims of the Support Strut Patents define a " telescoping support strut" that supports a conveyor assembly of a portable conveyor system comprised of two strut sections (a first strut section and a second strut section). The support strut telescopically extends and retracts the conveyor assembly. (['101 Patent], col. 1, ll: 15-25.) The claimed telescoping support strut is " fully braced" to improve its stability and rigidity when extended. ( Id., col. 7, ll: 53-col. 8, ll: 14.) The strut resembles a telescoping ladder with two sections. ( Id. at Abstract.)
The first section of the strut is comprised of a pair of cross-braced beams that are attached to the " upper" portion of the conveyor system; and the second section of the strut is comprised of a pair of channel beams that are cross-braced to one another and pivotally-connected to the base of the conveyor system. ( Id.) The beams of the first strut section have " facing surfaces" and are telescopically received by the channel beams of the second section. ( Id. at Figs. 4A, 4B, 4C, 5 & col. 1, ll: 46-54.) There is a slot in the perimeter wall of the channel beams within which the beams of the first strut section travel. ( Id., col. 1, ll: 54-57.) Hydraulic cylinders move the first strut section in and out of the second strut section. There is a box frame located where the first strut section emerges from the second strut section to provide support to the ends of the channel beams of the second strut section.
( Id. at 42.) The Court then construed " channel beam" to mean " a metal beam having a perimeter wall with three complete sides and one partial side configured to substantially surround all four sides of the respective beam [of the first strut section] it engages with." ( Id. at 51-52.) The Court also construed the term " elongate opening" to mean a " slot defined by the openings in the partial fourth sides of the channel beams." ( Id. at 53.)
After the Court issued its Markman Order, Masaba moved for summary judgment seeking dismissal of Superior's Amended Complaint based on Superior's inability to establish infringement or entitlement to relief. (Doc. Nos. at 133 & 134.) Superior conceded that, under the Court's Markman Order, it could not establish infringement of any of the claims of the patents-in-suit and filed a motion seeking both entry of judgment of non-infringement and dismissal of the invalidity counterclaims. (Docs. No. 143 & 144.) In an Order dated February 7, 2013, the
Court granted Superior's motion for judgment of non-infringement. (Doc. No. 154.)
Superior appealed the Court's Markman Order to the Federal Circuit Court of Appeals. (Doc. No. 159.) On January 16, 2014, the Federal Circuit issued an Opinion and Judgment. (Doc. No. 183 (" Fed. Cir. Opinion" ).) The Federal Circuit vacated and remanded the case for further proceedings, noting that the district court's summary judgment opinion does not explain how the construction of any term would affect Superior's infringement claims. ( Id. at 6.) The Federal Circuit explained: " It is impossible for us to determine from this opinion which of the thirteen contested claim constructions would 'actually affect' the infringement analysis. This poses a risk that our review of at least some of these constructions would amount to an advisory opinion." ( Id. at 7.)
With respect to the Unloader Patents, the Federal Circuit noted that several of the disputed terms (" support frame," U-shaped frame," and " end frame member," etc.) involve the support frame located under the ramp sections in the claimed unloaders. ( Id. at 8.) The Federal Circuit also noted that " [n]ot all of Masaba's accused unloader systems include a support frame" and explained that " [i]f none of the accused products include a support frame, then the multiple terms relating to the support frame are irrelevant to the infringement analysis and our review of the district court's construction of these terms would be an impermissible advisory opinion." ( Id.)
With respect to the Support Strut/Undercarriage Patents, the Federal Circuit noted that the parties dispute the construction of the term " channel beam" --and in particular that the parties dispute whether the term denotes a beam with three sides or a beam that necessarily includes a partial fourth side. ( Id. at 7.) While the Court, in its Markman Order, construed " channel beam" as having a partial fourth side, the Federal Circuit explained that Masaba claims that the allegedly infringing support strut system does not use a channel beam ...