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Ebs Automotive Services; Abf Technologies, Inc v. Illinois Tool Works

September 12, 2011


The opinion of the court was delivered by: Honorable Janis L. Sammartino United States District Judge


Presently before the Court are (1) Plaintiffs EBS Automotive Services (EBS) and ABF Technologies, Inc.'s (ABF) (collectively, Plaintiffs) motion for summary adjudication for infringement of claims 1, 3--7, 9--12, 14 and 15 of U.S. Patent No. 6,206,055 (the '055 patent) (ECF No. 99); and

(2) Defendant Illinois Tool Works, Inc.'s (ITW) motion for summary judgment of invalidity of the '055 patent (ECF No. 100). Also before the Court are the parties' respective oppositions, replies, and post-hearing supplemental briefs. (Pls.' Opp'n, ECF No. 108; ITW's Opp'n, ECF No. 109; Pls.' Reply, ECF No. 114; ITW's Reply, ECF No. 117; Pls.' Suppl. Br., ECF No. 141; ITW's Suppl. Br., ECF No. 142.) Having carefully considered the parties' arguments and the law, the Court DENIES both motions.


EBS is a California corporation with its principal place of business located in Westminster, California. (FAC ¶ 4, ECF No. 87.) ABF, also a California corporation, has its principal place of business in Fresno, California. (Id. ¶ 5.) ITW is a publicly traded Delaware corporation with its principal executive offices in Illinois. Illinois Tool Works Inc., Annual Report (Form 10-K) (Feb. 28, 2011). ITW "is a multinational manufacturer of a diversified range of industrial products and equipment with approximately 840 operations in 57 countries." Id. at 2. ITW's businesses are internally reported as 60 operating segments. Id. at 14. Among these operating segments is Wynn's.*fn1 (See ITW's Opp'n 1 (indicating that ITW does business as Wynn's).)

The '055 patent is jointly owned by EBS and ABF. (FAC ¶¶ 10--11.) The '055 patent claims "[a]n apparatus and method for removing, flushing contaminants from[,] and replacing vehicle brake fluid." U.S. Patent No. 6,206,055, at [57] (filed Oct. 7, 1999).

Before the invention of the apparatus and method claimed in the '055 patent, "changing brake fluid was a laborious task." (Pls.' Mem. ISO MSJ 3; see also '055 Patent col.3 ll.10--14 ("The prior art method of replacing brake fluid takes two people about 45 minutes to an hour to remove and replace the brake fluid. The prior art method also requires additional time to clean up the resulting spillage that is essentially inherent in the prior art method.").) The conventional manual method of changing brake fluid "required one technician to sit in the driver's seat and 'pump' the brake with his foot while a second technician opened a brake bleeder valve at each wheel. The pumping motion forced the brake fluid through the bleeder valve and out of the system." (Hollub Decl. ISO Pls.' MSJ ¶ 11, ECF No. 108-1 .) "This process would be repeated many times until all of the air bubbles were removed from the brake lines." (Id.)

Moreover, the prior art method of replacing brake fluid is "carried out in an open air environment whereby the fluid is exposed to the atmosphere as the brake system is being drained and new fluid is added." '055 Patent col.2 ll.49--52. "Unfortunately, new brake fluid can become contaminated with moisture, air[,] and particulates as soon as the brake fluid container is opened and poured into the brake system due to the typical open system method used to flush and replace used brake fluid." Id. col.3 ll.20--24. Further, "[b]rake fluid is highly toxic, and damaging to air, water, and people exposed to it." (Hollub Decl. ISO Pls.' MSJ ¶ 7; accord '055 Patent col.2 ll.45--47, 52--54.)

The invention of the apparatus and method claimed in the '055 patent "ended the laborious and dangerous manual method [of changing brake fluid] by implementing a completely automated way of removing and replacing brake fluid." (Pl.'s Mem. ISO MSJ 4.) In summary, the apparatus claimed by the '055 patent combines a fill pump and a vacuum pump, along with "various fluid control and measuring devices, fluid tanks, and an electronic mechanism." '055 Patent col.4 ll.29--31. Because it uses both a fill pump and a vacuum pump (Hollub Decl. ISO Pls.' MSJ ¶ 9), and operates as a closed system, '055 Patent col.3 ll.53--54, the invention allows the user to replace brake fluid more quickly than is possible under the prior art method and without exposing the brake fluid to the environment, id. col.4 ll.22--37.

ITW allegedly has infringed and continues to infringe the '055 patent through its manufacture, use, sale, and distribution "of brake machines and related fluids," including the Wynn's BrakeTech Rapid Fluid Exchange Machine (the BrakeTech). (FAC ¶ 12.) Like the invention claimed in the '055 patent, the BrakeTech incorporates both "pressure bleeding/flushing" and "vacuum bleeding." (Hischier Decl. ISO ITW's Opp'n ¶ 2, ECF No. 109-2.) However, in contrast to the invention claimed in the '055 patent, the BrakeTech does not operate as a closed system; rather, the new fluid and used fluid containers "sit[] on top of the chassis," which exposes the old and new brake fluid to the environment. (Id. at ¶¶ 5--6.)

On May 8, 2009, Plaintiffs commenced this action accusing ITW of infringing the '055 patent. (ECF No. 1.) The Court held a claim construction hearing on April 9, 2010. (Minute Entry, April 9, 2010, ECF No. 58; Claim Construction Order, ECF No. 68.) The operative first amended complaint was filed on October 20, 2010.*fn2 (FAC.)


Federal Rule of Civil Procedure 56 permits a court to grant summary judgment where (1) the moving party demonstrates the absence of a genuine issue of material fact and (2) entitlement to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). "Material," for purposes of Rule 56, means that the fact, under governing substantive law, could affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Shum v. Intel Corp., 633 F.3d 1067, 1076 (Fed. Cir. 2010). For a dispute to be "genuine," a reasonable jury must be able to return a verdict for the nonmoving party. Anderson, 477 U.S. at 248.

The initial burden of establishing the absence of a genuine issue of material fact falls on the moving party. Celotex, 477 U.S. at 323. The movant can carry his burden in two ways: (1) by presenting evidence that negates an essential element of the nonmoving party's case; or (2) by demonstrating that the nonmoving party "failed to make a sufficient showing on an essential element of her case with respect to which she has the burden of proof." Id. at 322--23. "Disputes over irrelevant or unnecessary facts will not preclude a grant of summary judgment." T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir. 1987).

Once the moving party establishes the absence of genuine issues of material fact, the burden shifts to the nonmoving party to set forth facts showing that a genuine issue of disputed fact remains. Celotex, 477 U.S. at 324. The nonmoving party cannot oppose a properly supported summary judgment motion by "rest[ing] on mere allegations or denials of his pleadings." Anderson, 477 U.S. at 256. When ruling on a summary judgment motion, the court must view all inferences drawn from the underlying facts in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). "Summary judgment is as appropriate in a patent case as it is in any other case." Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1332 (Fed. Cir. 1998) (quoting C.R. Bard, Inc. v. Advanced Cardiovascular, Inc., 911 F.2d 670, 672 (Fed. Cir. 1990)) (internal quotation marks omitted). "When presented with patent validity and infringement issues, trial courts should . . . decide both." Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983); see also Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 330 (1945) (holding that "better practice" in patent suits is to inquire fully into validity, rather than dispose of them on the ground of non-infringement alone).


Plaintiffs move for summary judgment on the issue of infringement of claims 1, 3--7, 9--12, 14, and 15 of the '055 patent.*fn3 *fn4 (Pls.' Mem. ISO MSJ 1.) Plaintiffs' theory is one of direct infringement, see 35 U.S.C. § 271(a), as opposed to one of inducing infringement, see id. § 271(b), or contributory infringement, see id. § 271(c). (See Pl.'s Mem. ISO MSJ 6 ("Wynn's BrakeTech directly infringes claims 1, 3--7, 9--12, 14, and 15 of the '055 patent."); id. at 9 (alleging that ITW offers to sell, sells, and uses the BrakeTech).) Specifically, Plaintiffs contend that "there is substantial, irrefutable evidence including a parts list, operating manual, Wynn's instructional video, and a detailed illustration depicting where each and every limitation [of the '055 patent] is found on" the BrakeTech. (Id. at 6.)

1. Legal Standard

Under 35 U.S.C. 271(a), "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States . . . infringes the patent." A patent infringement analysis proceeds in two steps. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff'd 517 U.S. 370. In the first step, the court construes the asserted claims as a matter of law.*fn5 See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456, 1466 (Fed. Cir. 1998). In the second step, the factfinder compares the claimed invention to the accused device. Id. at 1467; see also Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1340 (Fed. Cir. 2010) ("A determination of infringement is a question of fact . . . ."). "Summary judgment on the issue of infringement is proper when no reasonable jury could find that every limitation in a properly construed claim either is or is not found in the accused device either literally or under the doctrine of equivalents." U.S. Philips Corp. v. Iwasaki Elec. Co. Ltd., 505 F.3d 1371, 1374--75 (Fed. Cir. 2007) (quoting PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1364 (Fed. Cir. 2005)) (internal quotation marks omitted); see also Lockheed Martin Corp. v. Space Systems/Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003) ("[A] determination of infringement . . . is a question of fact. Thus . . . , summary judgment is proper only if 'no reasonable jury could return a verdict for the nonmoving party.'" (quoting Anderson, 477 U.S. at 255)).

"To prove literal infringement, the patentee must show that the accused device contains every limitation in the asserted claims. If even one limitation is missing or not met as claimed, there is no literal infringement."*fn6 Riles v. Shell Exploration & Prod. Co., 298 F.3d 1302, 1308 (Fed. Cir. 2002) (quoting Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1211 (Fed. Cir. 1998)).

2. Analysis

A. Independent Apparatus Claims (Claims 1 and 6)

Plaintiffs assert that ITW infringes several of the '055 patent's apparatus claims by making, using, offering to sell, and selling the BrakeTech . (See Pls.' Mem. ISO MSJ 7--16.) Among the apparatus claims, two-claims 1 and 6-are independent. See supra note 3. Claims 1 and 6 both recite "[a]n apparatus for removing and replacing hydraulic fluid used in a hydraulic fluid system in a vehicle," '055 Patent col.8 ll.7--9 (claim 1); id. col.8 ll.51--53 (claim 6), and contain substantially the same limitations, compare id. col.8 ll.7--33, with id. col.8 l.51 to col.9 l.13; see also Pls.' Mem. ISO MSJ 14 ("Claim 6 contains the same elements as Claim [1] with the single addition of the last 'suction hose' element . . . ."). Below, the Court addresses the various ways in which Plaintiffs contend that ITW infringes the '055 patent-making or selling the patented combination; offering to sell it; and using it.

(1) Whether ITW Makes or Sells the Patented Combination

To determine whether ITW makes or sells the patented combination, the Court addresses each common limitation or group of common limitations in turn.*fn7 (a) First limitation The first limitation of claims 1 and 6 is "a housing." '055 Patent col.8 l.10 (claim 1); id. col.8 l.54 (claim 6). The Court construed this limitation as comprising "a case, enclosure, receptacle, or support frame for mechanical parts." (Claim Construction Order 3.)

Plaintiffs contend that the BrakeTech's chassis (see Kneafsey Decl. ISO Pls.' MSJ Ex. 2, ECF Nos. 99-2, 99-4 to -43 (pictures depicting BrakeTech)), "is a housing since it is, at the very least, a receptacle or support frame" for containers of brake fluid. (Pls.' Mem. ISO MSJ 8.) ITW responds that "the containers of brake fluid placed on top of the BrakeTech chassis are not 'mechanical parts.'" (ITW's Opp'n 8 (emphasis in original).) Plaintiffs reply that ITW's argument "lacks common sense because the claim language itself describes a tank in the housing. If a tank is not a mechanical part, then no tank would ever meet this limitation-not even the preferred embodiment." (Pls.' Reply 3.) As further evidence that the brake fluid containers "are mechanical parts in the housing," Plaintiffs point to the fact that ITW itself has assigned part numbers to the containers of new brake fluid and the waste tank. (Id.)

The Court agrees with Plaintiffs. As the parties frame it, whether the BrakeTech's chassis constitutes a housing as required by the first limitation turns on whether the brake fluid containers are "mechanical parts." Webster's Third New International Dictionary defines "mechanical" as "of, relating to, or concerned with machinery or tools." WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY 1400 (1971); accord THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 1087 (4th ed. 2000) ("Of or relating to machines or tools."). In context, the containers are "of" or "relating to" a machine because they are integral parts of the BrakeTech-it could not function without them. (See Arnold Decl. ISO ITW's Opp'n Ex. A, at 15, ECF Nos. 109-3 to -7 (describing how the BrakeTech uses new brake fluid and waste fluid containers).) That ITW has assigned part numbers to the containers further supports this conclusion. (See Kneafsey Decl. ISO Pls.' MSJ Ex. 6, at 48; id. Ex. 8.) Thus, the Court finds that the containers are mechanical parts.

Furthermore, the BrakeTech's chassis is clearly a "a case, enclosure, receptacle, or support frame for mechanical parts" beyond the brake fluid containers. (Claim Construction Order 3.) ITW's BrakeTech Assembly Instructions and Parts List clearly depicts a pressure pump assembly and vacuum pump assembly enclosed within the chassis. (See Kneafsey Decl. ISO Pls.' MSJ Ex. 6, at 44, 54, 56--57, 59; see also id. Ex. 2, at 20--21 (pictures of BrakeTech with control panel removed).) And the chassis supports a "control panel assembly" consisting of, inter alia, a toggle switch block, pressure gauge, and rocker switch. (See id. Ex. 6, at 42--43, 54, 57.) The Court doubts that ITW would define these items as anything other than "mechanical parts." Accordingly, there is no genuine issue of material fact that the BrakeTech meets the first limitation.*fn8

(b) Second and Third Limitations

The second limitation of claims 1 and 6 is "a fresh fluid tank in said housing for storing a source of fresh hydraulic fluid for use in the vehicle." '055 Patent col.8 ll.11--12 (claim 1); id. col.8 ll.55--56 (claim 6). The third limitation of claims 1 and 6 is "a waste fluid tank in said housing for receiving and storing a source of waste hydraulic fluid received from the vehicle." Id. col.8 ll.13--15 (claim 1); id. col.8 ll.57--59 (claim 6). The Court construed the terms "fresh fluid tank" and "waste fluid tank" to mean "a container for fresh hydraulic fluid" and "a container for used hydraulic fluid," respectively. (Claim Construction Order 3.)

Plaintiffs contend that "[t]he BrakeTech machine contains a fresh fluid container and waste fluid container in the receptacle/housing." (Pls. Mem. ISO MSJ 8 (emphasis in original).) ITW advance three arguments ...

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