Havco Wood Products LLC v. Industrial Hardwood Products, Inc.
3:10-cv-00566
W.D. Wis.Oct 22, 2012Background
- Havco owns five patents covering FRP-underlay composite flooring for semi-trailer floors; IHP sells Pound Saver flooring alleged to infringe.
- Patents include the ’735, ’824, ’766, ’942, and ’765, each claiming substantial continuous bonding/coating of the hardwood to FRP underlay to improve trailer-floor properties.
- The court previously construed terms to require a substantially continuous bond or coating, with a related focus on a discontinuous bond line disclosed in Scharpf as breathable but water-impervious.
- IHP argues Pound Saver uses adhesive-lacking strips that create a discontinuous bond line and thus noninfringe Havco’s claims; Havco argues Pound Saver still falls within the amended scope.
- The court amended its construction to tie the discontinuous bond line to the functional property of being pervious to vapor and impervious to water.
- On cross-motions for summary judgment, the court grants IHP noninfringement as to the ’766 patent and grants Havco leave to file a second amended complaint, while denying other motions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Substantially continuously limitation | Havco: Pound Saver meets substantially continuous bond/coating. | IHP: Pound Saver breaches continuous bond due to adhesive-lacking strips. | Issue for jury; disputed whether Pound Saver meets the limitation. |
| Continuous trailer floor requirement | Havco: system designed to form a continuous floor when installed. | IHP: Pound Saver sold as a kit; not a continuous floor cannot infringe. | Issue for jury; extent of assembly not determinative under construction. |
| Alteration of FRP/underlay surfaces | Havco: alteration by sanding can be attributed to IHP through its FRP supplier. | IHP: alterations performed by Lamilux are not attributable to IHP; no imputation. | Genuine issues of material fact; liability not resolved on summary judgment. |
| Contributory or inducement infringement | Havco seeks to assert § 271(b)/(c) after discovery of packaging/use facts. | IHP: no pleaded basis for contributory/induced infringement; amendment denied. | Leave to amend denied; direct infringement theory remains viable; no basis for contributory/induced in current posture. |
| Patent validity (obviousness) | Havco contends prior art and commercial success support non-obviousness. | IHP raises genuine issues of fact on prior art, analogies, and secondary considerations. | Not resolved on summary judgment; issues of fact remain regarding obviousness. |
Key Cases Cited
- In re Hedges, 783 F.2d 1038 (Fed. Cir. 1986) (prosecution disclaimer must be read in full context)
- Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1329 (Fed. Cir. 2009) (disclaimers must be clear and unmistakable)
- BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) (mastermind theory of control over entire process)
- Yoon Ja Kim v. ConAgra Foods, Inc., 465 F.3d 1312 (Fed. Cir. 2006) (direct infringement follows from control over entire process)
- Absolute Software v. Stealth Signal, Inc., 659 F.3d 1121 (Fed. Cir. 2011) (infringement is a fact-intensive inquiry)
- Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314 (Fed. Cir. 2011) (analogous art and relevance to obviousness)