Quality Edge, Inc. v. Rollex Corporation
709 F. App'x 1000
| Fed. Cir. | 2017Background
- Quality Edge sued Rollex for infringement of U.S. Patent No. 7,137,224, which claims a vented soffit panel having, inter alia, “a generally horizontal imperforate top wall.”
- The accused product (Rollex’s Stealth Soffit™) has perforations in its top wall; Rollex sought early summary judgment of noninfringement on that basis.
- The district court construed the claim phrase to allow top-wall perforations so long as any perforations are hidden from view underneath the eaves, and granted summary judgment of infringement and a permanent injunction for Quality Edge.
- Rollex argued the phrase should require a truly imperforate (no-holes) top wall and that the district court’s construction rendered claims indefinite; the district court rejected indefiniteness and denied various discovery and evidentiary motions by Rollex.
- The district court also dismissed Rollex’s boilerplate invalidity defenses and counterclaim for failure to plead facts under Twombly/Iqbal and Sixth Circuit “fair notice” standards; Rollex sought reassignment on remand.
- The Federal Circuit reviewed claim construction de novo, reversed the district court’s construction, vacated infringement judgment and injunction, affirmed dismissal of the invalidity pleadings, and denied reassignment.
Issues
| Issue | Quality Edge’s Argument | Rollex’s Argument | Held |
|---|---|---|---|
| Proper construction of “a generally horizontal imperforate top wall” | Phrase permits some perforations if those perforations are hidden from view below the eave | “Generally” modifies only horizontal orientation; “imperforate” means no perforations | Reversed district court: phrase means the top wall is generally horizontal when installed and does not include any perforations |
| Effect of claim construction on infringement | District court: accused product’s hidden perforations infringe | Rollex: accused product has holes and therefore cannot meet an imperforate top wall limitation | Vacated summary judgment of infringement and permanent injunction because correct construction requires no perforations |
| Indefiniteness challenge to claims | Quality Edge: claim language is definite as construed | Rollex: construction requiring “hidden from view” is indefinite (depends on arbitrary viewer position) | Moot after Federal Circuit’s construction; court did not reach indefiniteness beyond that point |
| Dismissal of invalidity counterclaim/defenses for inadequate pleading | Quality Edge: Rollex’s pleadings lacked factual detail and fair notice | Rollex: (did not contest pleading standard on appeal) | Affirmed dismissal for boilerplate allegations and undue delay/prejudice refusing leave to amend |
| Request for reassignment on remand | Rollex: prior rulings and rulings on discovery/evidence justify reassignment | Quality Edge: no basis; issues stemmed from Rollex’s litigation choices | Denied — reassignment is extraordinary and not warranted here |
Key Cases Cited
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (four-factor test for permanent injunctions)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (standard of review for claim construction factual findings)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim construction principles and primacy of specification)
- Medgraph, Inc. v. Medtronic, Inc., 843 F.3d 942 (Fed. Cir. 2016) (review standards for claim construction)
- Laitram Corp. v. NEC Corp., 62 F.3d 1388 (Fed. Cir. 1995) (utility of dependent claims in construing independent claims)
- CoreBrace LLC v. Star Seismic LLC, 566 F.3d 1069 (Fed. Cir. 2009) (apply regional circuit law to procedural issues)
- Head v. Jellico Hous. Auth., 870 F.2d 1117 (6th Cir. 1989) (factors for denying leave to amend)
- Armco, Inc. v. United Steelworkers, 280 F.3d 669 (6th Cir. 2002) (reassignment on remand is extraordinary relief)