Zip Dee, Inc. v. Dometic Corp.

Citations: 63 F. Supp. 2d 913; 52 U.S.P.Q. 2d (BNA) 1693; 1999 U.S. Dist. LEXIS 14251; 1999 WL 734945Docket: 93 C 3200

Court: District Court, N.D. Illinois; September 16, 1999; Federal District Court

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The case 63 F.Supp.2d 913 (1999) involves Zip Dee, Inc. as the plaintiff and Dometic Corporation as the defendant in a patent infringement dispute. The United States District Court for the Northern District of Illinois presided over the matter, with Senior District Judge Shadur expressing discomfort with the implications of Dometic's defense strategy. Dometic's approach entailed introducing holes into their awning product, which undermined its waterproof design, and then adding a separate waterproof layer to mitigate the effects of those holes. This strategy raised concerns about its legitimacy, as it appeared to allow Dometic to avoid infringement liability despite closely copying key elements of Zip Dee’s patented design. The court noted that applying an element-by-element analysis to infringement could disadvantage the patent holder, Zip Dee. However, recent developments in the doctrine of equivalents may influence the interpretation of Dometic's actions. The court indicated that it would consider the implications of these developments alongside ongoing Markman proceedings, which pertain to the interpretation of patent claims. The essence of Zip Dee's patent lies in a watertight connection mechanism for awning structures, which Dometic’s adjustments seemed to counteract, raising fundamental questions about non-infringement claims based on seemingly superficial modifications.

The Court finds that Dometic's argument regarding equivalence is ineffective due to the Federal Circuit's clarification in Odetics, Inc. v. Storage Tech. Corp., which states that structural equivalence should not involve a component-by-component analysis. Dometic's addition of a waterproof fabric layer is seen as potentially achieving the necessary functional identity and structural equivalence required by Odetics. Any dispute regarding this interpretation must be resolved by the Federal Circuit, while the current ruling serves as the trial decision framework. 

The parties must determine whether the jury or the Court will address the equivalence issue regarding Dometic AB's alleged infringement under certain use conditions, with the agreement that Dometic AB does not literally infringe the patent. For Dometic BAC, the Court previously indicated that it does not literally infringe the patent either, and while Zip Dee has made strong arguments for potential literal infringement, the lower threshold for proving equivalence diminishes the need for a literal infringement claim at trial. 

The Court concludes that the pretrial matters remaining have been resolved, requiring the parties to update their jury instructions accordingly. A telephonic status hearing is scheduled for September 28, 1999, to discuss trial preparations. Both parties maintain their rights to appeal any prior court decisions.

Zip Dee will not claim at trial that the Dometic device's AC portion infringes the patent either literally or under the doctrine of equivalents. Dometic will not challenge the patent's validity and will withdraw its request for claim construction based on prior art, including the 1960s Zip Dee product, but retains the right to reference prior art for other infringement issues. Zip Dee may assert that the Dometic device's AB portion infringes under the doctrine of equivalents but cannot claim literal infringement for AB. There is disagreement regarding whether Zip Dee can argue that the BAC portion infringes under either theory. Dometic has raised BAC arguments in court, and Zip Dee can respond with a brief by March 26, 1999, with Dometic allowed to reply by April 16, 1999. After the court rules on BAC issues, the parties will submit revised jury instructions and special interrogatories. The trial will be bifurcated, separating damages from liability issues, with the same jury hearing both phases. Dometic concedes the validity of Zip Dee's patent, and the document references ongoing legal discussions related to patent law principles.