MEMORANDUM DECISION AND ORDER
This is an action for infringement for U.S. Patent No. 4,937,989 (the '989 patent) claiming a mobile home support that elevates and ties together "trailer-like" sections of mobile homes. The suit is brought by plaintiffs Sure Safe Industries, Inc. ("Sure Safe") and Intertrack Management, Inc. ("Intertrack") against defendants C&R Pier Mfg. ("C&R"), its president, Richard Clifton, and a former shareholder of C&R Pier, Chuck Giles.
The '989 patent claims a combination of three assemblies: 1) a pair of piers; 2) a two-part clamp to engage an I-beam (the "marriage lock", and 3) a tie-rod assembly for connecting piers. The '989 patent does not contain claims for any single subassembly by itself. Only a product comprised of all three subassemblies arranged as set out in the claims infringes.
Defendants have brought three motions for summary judgment: 1) based on noninfringement; 2) based on invalidity; and 3) by Chuck Giles.
I. LEGAL STANDARD
Federal Rule or Civil Procedure 56(c) mandates the entry of summary judgment against a party which "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, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986). The party moving for summary judgment bears the burden of proving that there is no genuine issue of material fact and that judgment may be entered as a matter of law. Richards v. Neilsen Freight Lines, 810 F.2d 898, 902 (9th Cir. 1987). "A party opposing a properly supported motion for summary judgment . . . 'must set forth specific facts showing that there is a genuine issue for trial."' Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986) (citing Fed. R. Civ. P. 56(e)) (footnotes omitted). All justifiable inferences are to be drawn in the non-movant's favor. Id. at 255.
II. MOTION FOR SUMMARY JUDGMENT BASED ON NONINFRINGEMENT
Defendant C&R sells piers to support sections of mobile homes. Since at least 1971, the predecessor-in-interest to C&R had been selling a pier for mobile home sections. One version of the pier has a pyramid-like shape and is comprised of a square base with four stanchions at each corner of the base which extend upward at an inward angle and converge together at a tubular collar.
C&R also sells tie-rods to connect sections of mobile homes. Since at least 1971, mobile manufacturers and installers have been supplying a tie rod to connect together multiple sections of mobile homes. The tie rod is either: 1) a simple all-threaded rod, or 2) a square tube with threaded rod extensions at each end of the square tube. The rods are run through the holes and secured to the I-beams using nuts and washers.
In about 1988, C&R developed a two-part clamp for engaging the I-beam or a subcarriage. C&R sells this two-part clamp as part of several products. The two part clamp can be provided with a pier or with a tie-rod, but not both. The '887 patent was issued to cover C&R's clamp.
The dispute regarding this motion is whether:
1) defendants have directly infringed plaintiffs' '989 patent by selling their products in combination; or
2) whether, if some unknown third person has directly infringed the '989 patent, defendants induced or contributed to the infringement.
35 U.S.C. § 271 provides that patent infringement can occur by direct infringement, inducing infringement and/or contributory infringement. If the independent claims 1 and 4 are not infringed, then the corresponding claims 2, 3, and 5 are not infringed. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546 (Fed. Cir. 1989).
Plaintiffs have the burden of proving infringement by a preponderance of the evidence. SmithKline Diagnostics, Inc. v. Helena Labs Corp., 859 F.2d 878, 889 (Fed. Cir. 1988). Consequently, there are many decisions granting summary judgment based upon noninfringement. See e.g., Molinaro v. Fannon/Courier Corp., 745 F.2d 651, 655 (Fed. Cir. 1984).
A. Direct Infringement
Direct infringement requires that the accused device embodies every element of the claim. Builders Concrete v. Bremerton Concrete Products, 757 F.2d 255 (Fed. Cir. 1985). The doctrine of equivalents allows the court to find infringement when the accused device and claimed invention perform substantially the same the same way to yield substantially the same result. The Federal Circuit has held that the doctrine of equivalents does not relieve a plaintiff from showing a 1:1 correspondence between every element of a claim or its substantial equivalent and the accused product. Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935 (Fed. Cir. 1987). The Federal Circuit has also noted that the doctrine of equivalents is disfavored. See London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (CA FC 1991).
The '989 patent is for a combination of three sub-assemblies: a) a pair of piers; b) a two-part clamp; and c) a tie-rod. The '989 patent does not individually claim any single assembly. Piers, tie-rods and two-part clamps were all in existence prior to the filing of the application for the '989 patent.
This court essentially agrees with defendants that what the '989 inventors accomplished was to make the improvement of attaching the tie rod to the piers. They did not invent the tie rod, piers or marriage lock. Thus, defendants did not infringe the '989 patent, because their products cannot create all three subassemblies combined as specified in the claims in plaintiffs' patent.
Specifically, the underlying elements of claims 1 and 4 cannot be found in defendants' product. These claims require physical connection between the piers and the tie-rod, whereas defendants submit convincing evidence that their model of the pier and tie-rod cannot be attached.
The accused product is missing at least four elements of the claimed combination of claim 1, and five elements of claim 4, for which there is no equivalent at all. The missing elements from claim 1 of the patent in suit are:
1) a nonrotatable hex nut that supports a threaded rod on the horizontal pad;
2) a tie-rod assembly that is transversely situated between a pair of I-beams while being in alignment with a pair of piers that support the I-beams;