Thanks for visiting! Welcome to a new way to research case law. You are viewing a free summary from Descrybe.ai. For citation and good law / bad law checking, legal issue analysis, and other advanced tools, explore our Legal Research Toolkit — not free, but close.
Metso Minerals v. Powerscreen Intern. Distribution
Citations: 681 F. Supp. 2d 309; 2010 U.S. Dist. LEXIS 7099; 2010 WL 318263Docket: 06-cv-1446 (ADS)(ETB)
Court: District Court, E.D. New York; January 28, 2010; Federal District Court
In the patent infringement case Metso Minerals, Inc. v. Powerscreen International Distribution Limited et al., the court addresses the allegations concerning United States Patent 5,577,618, which pertains to an improved screener designed for sorting construction debris into uniformly sized piles. The patent, granted to Malachy J. Rafferty in 1996, covers a mobile aggregate material processing plant that can compact its lateral conveyors for easier transport. Metso claims the defendants—Powerscreen, Terex, Powerscreen New York, and Emerald—have infringed on this patent, while the defendants seek a declaratory judgment of non-infringement. The court is considering motions for claim construction, a motion by the plaintiff to limit the defendants’ new defenses and evidence, and motions for summary judgment from both parties. The court partially grants and denies the plaintiff's motion to preclude and their motion for summary judgment, while denying the defendants' motion for summary judgment. The innovation claimed in the '618 patent lies in the transportability of the screener, as prior art required more cumbersome methods for transporting lateral conveyors. The '618 patent pertains to a mobile aggregate material processing plant featuring double-jointed lateral conveyors that fold compactly into the plant. The patent encompasses a mobile chassis, a plant support frame, an input hopper for raw materials, a material processing system, and an outfeed delivery system with lateral conveyors. The preferred embodiment includes a hopper that processes rubble of various sizes and two lateral conveyors with movable joints—tail articulation means (TAM) and head articulation means (HAM)—allowing the conveyors to be folded into an L shape for transport. The plaintiff initiated an infringement lawsuit on March 29, 2006, without initially serving PSNY. By September 4, 2008, defendants Powerscreen, Terex, and Emerald responded with affirmative defenses, including non-infringement and invalidity claims. They sought to amend their answer to include a defense of inequitable conduct and to dismiss PSNY due to the lack of service. The court granted this motion, leading to an amended answer and counterclaims filed by the defendants on July 11, 2008. After being served, PSNY filed a similar response on September 9, 2008. All defendants are requesting a declaratory judgment of non-infringement. The plaintiff asserts that Powerscreen's mobile screeners infringe the '618 patent, with Terex, PSNY, and Emerald allegedly liable for their roles in manufacturing or distributing the infringing products. At the conclusion of discovery, both parties submitted motions for claim construction and summary judgment. The defendants sought summary judgment on all claims, while the plaintiffs sought it on all issues except for obviousness, willful infringement, and damages. Additionally, the plaintiffs aimed to preclude the defendants from asserting specific defenses and from introducing certain undisclosed evidence. The parties requested the Court to construe ten terms from the '618 patent's claims. Both parties sought construction of four terms: "mobile," "road-hauled," "chassis," "wheel," and "head articulation means." The plaintiffs requested construction of five additional terms: "processed material outfeed delivery means," "at least one lateral delivery conveyor," "material processing means," "tail articulation means," and "belt defining a conveyor plane." The defendants requested construction of one term exclusively: "does not project laterally beyond the chassis." The Court partially granted and denied the plaintiff's motion to preclude certain defenses and evidence. Subsequently, it granted in part and denied in part the plaintiffs' motion for summary judgment, while denying the defendants' motion for summary judgment entirely. Claim construction is exclusively a legal question for the Court. It interprets claims as understood by individuals skilled in the relevant field, applying generally understood meanings unless the terms possess specific meanings in that field. The Court relies on the patent and its prosecution history, examining the claim and its context within the patent specification. Generally, patent terms should encompass the preferred embodiments described, although they are not limited to them. The means-plus-function claims under 35 U.S.C. § 112, 6 require a two-step process for construction, identifying the function and corresponding structures or acts defined in the specification. The Court examines the patent specification to determine the structures that fulfill the function outlined in a means-plus-function claim, as established in relevant case law. Key points include that a court cannot include unnecessary features in the claim and that the specification must be reviewed to identify corresponding structures. The Court deems it necessary to construe five out of ten identified terms for the resolution of summary judgment motions and trial, specifically: "mobile," "road-hauled," "chassis," "wheel," "head articulation means," and "does not project laterally beyond the chassis," as they pertain to the defendants' non-infringement defenses. Regarding "mobile, road-hauled," both parties seek a definition: the defendants propose it means "with a chassis mounted on wheels so that the plant can be towed or pulled along a road," while the plaintiff suggests it means "mobile and capable of being hauled on a road, with or without any other devices." Both parties agree that "road-hauled" implies the invention must be transportable on a road. The Court finds the term straightforward and cautions against overstepping into jury interpretation. However, the defendants reference a passage from the patent specification suggesting that "mobile" indicates the ability to be transported over long distances, arguing that the patent limits "road-hauled" to mean a device that can be pulled on its own wheels. The Court interprets the term "mobile" within the patent as denoting the ability of a screening plant to be relocated over long distances. It emphasizes that "road-hauled" should not limit the invention to devices specifically towed or pulled on their own wheels, as these characteristics apply only to the preferred embodiment and are not essential to the invention. The Court defines "mobile, road-hauled" as being capable of long-distance hauling on a road, irrespective of additional devices. Regarding the term "chassis," both parties seek its construction. The patentee's claim includes a plant support frame mounted on the chassis, and the term also pertains to head and tail articulation means that prevent lateral projection beyond the chassis when folded for transport. The defendant suggests defining "chassis" as "a pair of longitudinal beams," while the plaintiff argues for a broader definition that encompasses structures to which other elements are attached, including various components for both tire-mounted and track-mounted screeners. The defendants support their narrower interpretation with specific references from the patent’s specification, asserting that the chassis is distinct from the wheels and jack legs. They highlight regulatory standards on patent figures to argue that the representation of the chassis indicates it consists solely of longitudinal beams. Conversely, the plaintiff contends that the term "wheel-mounted chassis" implies that the wheels are integral to the chassis. The plaintiff argues that the patent's drawings indicate that the conveyors, when folded, extend beyond the identified "longitudinal beams," contradicting the defendants' assertions that the chassis consists solely of these beams. The plaintiff emphasizes that the patent specifies the folded conveyor "does not project laterally beyond the chassis," suggesting that the chassis must include more than just the longitudinal beams. Figures 4 and 5 clearly depict the conveyors extending to the edges of the wheel arches, reinforcing the plaintiff's position that "chassis" encompasses this broader structure. The Court acknowledges the principle that a patent should be construed to include its preferred embodiment, which in this case includes the wheels and wheel arches as part of the chassis. The defendants reference Hockerson-Halberstadt to argue that the drawings should not dictate proportions, but the Court clarifies that it is not inferring precise sizes but rather recognizing key design elements shown in the figures. Nevertheless, the Court expresses caution in defining "chassis" too narrowly to structures found only in the preferred embodiment and is reluctant to explicitly include or exclude components related to "tracks." Lacking a comprehensive definition of "chassis" in the patent, the Court turns to extrinsic evidence from Powerscreen's Spare Parts Listings, which describe "track chassis" and "wheel chassis" as encompassing the entirety of assembly parts beneath the screening plant's functional elements. This external evidence aligns with the intrinsic patent details and leads the Court to define "chassis" as “the entire assembly of parts that rest beneath the plant support frame.” Both parties seek the Court's interpretation of the term "wheel" as it appears in the claim provision of a patent describing "a wheel mounted chassis extending in a longitudinal direction." The defendants define "wheel" as "a circular rim with a rubber tire that revolves on an axle and rides directly on the road," while plaintiffs propose a broader definition, encompassing various forms of wheels, including those made of metal or wood, and those used in machinery, such as sprocket wheels and guide wheels. The defendants argue that the patent's specification limits "wheel" to those that ride on a road, asserting that tracks should not be included in the definition since they are distinct from wheels in construction. The plaintiffs counter that "wheel" has a common meaning and is supported by Powerscreen's own documents, which refer to track assemblies as including "wheels." The Court finds that, while "wheel" must refer to components that allow the device to move easily, it cannot be narrowly defined as only tire-mounted wheels on a road, as this would improperly restrict the patent claims. The Court also dismisses the plaintiffs' claim that "wheel" includes "endless tracks" since the patent does not reference tracks, and an endless track does not fit the definition of circular. Therefore, the Court defines "wheel" as "a circular frame that has a hub at the center for attachment to or suspension from an axle, on which it revolves, and that serves to bear the weight of the screening plant," allowing for variations but excluding non-weight-bearing structures. Both parties seek the Court's interpretation of "head articulation means" (HAM) as outlined in claim 1 of the patent, which describes it as a connection between the head and tail sections allowing movement from an operative to a transport position without lateral projection beyond the chassis. Both parties concur that HAM is a means-plus-function claim governed by 35 U.S.C. § 112, 6, necessitating identification of its function and the corresponding structures in the specification. The plaintiff defines the function of HAM as "connecting" the head section to the tail section for movement between positions, proposing "a pivotal connection" as the sole necessary structure. Conversely, the defendant provides a more comprehensive function description, emphasizing the specific conditions under which the head section connects to the tail section and identifying multiple structures, including a pivot joint, hydraulic ram, tapered frame part, fixed and adjustable stops, a pin and holding plate, lubrication grooves, a C-clip, and a bushing. The Court finds the plaintiff's function definition inadequate for capturing the full operational context of HAM, agreeing instead with the defendant's broader description. It acknowledges that while a pivotal connection is essential, not all structures listed by the defendant are necessary. The Court references the patent specification to identify the relevant structures supporting the defined function, confirming that a pivot joint, hydraulic ram, and tapered frame part are integral to HAM, along with details regarding the pin and bushing mechanism as described in the specification. The Court analyzes the connection between the head section and the tail section in relation to the HAM (Head Articulation Means) to determine which structures should be included in the claim. Key criteria for incorporation include whether the structures effectively connect these sections as described. The "fixed stop" and other "stops," lubrication grooves, and the C-clip do not facilitate this connection and are thus excluded from the claim. In contrast, the pivot joint, connecting pin, bushing, wing plates, and holding plate are integral to connecting the head section to the tail section and are therefore included in the claim. The "tapered part of the head section," while noted as part of the articulation means, does not perform the connecting function and is excluded. Although the hydraulic ram is described as part of the HAM, its incorporation into the claim is not warranted because the specification allows for alternative embodiments without a drive means for articulation. This indicates that the HAM can function without the hydraulic ram, which leads to its exclusion from the claim. The Court also clarifies that while the specification mentions alternative structures, this does not imply that all described structures must be included in the claim. The plaintiff's argument that the invention is not restricted to the specified embodiments is acknowledged but does not alter the Court's findings regarding necessary structures for the claim. The Court determines that the plaintiff's broad assertion regarding means-plus-function claims does not suffice to modify the established rule that such claims are confined to specific structures detailed in the specification. Citing Fonar Corp. v. General Elec. Co., the Court emphasizes that merely stating alternative structures without identifying them does not expand the claim's scope. The plaintiff argues that only a "pivotal connection" should be included in the HAM, asserting that it is the sole necessary structure for the recited function. However, the Court clarifies that means-plus-function terms must encompass all structures described in the specification that perform the function, regardless of the existence of unnamed alternatives. The Court incorporates the actual structures that constitute the "pivotal connection" as essential, countering the plaintiff's reliance on cases like Golight, Inc. v. Wal-Mart Stores, Inc., which hold that superfluous structures should not be included. The plaintiff further contends that elements such as a "pivot joint," "bushing," and "pivot pin" should not be part of the HAM, as they are mentioned in dependent claims, arguing that this would violate the doctrine of claim differentiation established in Wenger Mfg. Inc. v. Coating Machinery Systems, Inc. The Court, however, finds that the principles from Laitram Corp. v. Rexnord, Inc. and Nomos Corp. v. Brainlab USA, Inc. indicate that claim differentiation is a guideline rather than an absolute rule, especially when a claim has a singular interpretation. The court interprets the "head articulation means" to connect the head section to the tail section, allowing movement from an operative to a transport position while ensuring the head does not extend laterally beyond the chassis. Necessary components for this function include a pivot joint, connecting pin, bushing, wing plates, and holding plate, all of which will be included in the interpretation of the "head articulation means" and its equivalents. The term "does not project laterally beyond the chassis" is analyzed, with the defendants suggesting it should refer to the longitudinal beams instead of the chassis. However, the court maintains that "chassis" encompasses more than just the beams, rejecting the defendants' proposed change. The term "project" is interpreted to mean "to jut out" without a technical definition provided by either party. The court concludes that the phrase means "does not extend, in any amount, laterally beyond the chassis." Additionally, the plaintiff's motion seeks to exclude certain defenses from the defendants, specifically challenging the assertion that the accused plants do not infringe the patent due to their conveyors extending beyond the chassis, and arguing the patent's invalidity based on obviousness related to prior patents. The court will address these motions before considering summary judgment. The plaintiff seeks to exclude evidence regarding how far the conveyors of the Accused Screening Plants extend beyond their chasses when folded. The Court denies this request, noting that the plaintiff's expert, Stephen A. Whyte, acknowledged in his report that the conveyors may extend slightly beyond the chassis when folded. This admission indicates the plaintiff was aware of the issue before the defendant's summary judgment motion. The Court emphasizes that the plaintiff bears the burden of proving all elements of the relevant patent, specifically the positioning of the lateral conveyors during transport, which is crucial for the '618 patent. Consequently, the defendant is permitted to argue this point in summary judgment and at trial. Conversely, the Court grants the plaintiff's motion to exclude the defendant's new obviousness defense. The plaintiff argues that the defendant failed to previously assert that the combination of the Erickson patent application and the Couperus patent renders the '618 patent obvious, despite having identified these documents during discovery. The defendants counter that prior identification allows them to argue the combination's obviousness now. The Court notes that while the defendants listed various documents in response to the plaintiff’s interrogatories, their expert report did not address the specific combination of Erickson and Couperus. The Court finds the defendants' expert report to be comprehensive in discussing their obviousness defense, but it lacks the specific combination mentioned. The defendants failed to assert the Erickson/Couperus combination argument in prior documents before their summary judgment motion, leading the Court to view this omission as a waiver. Consequently, the Court grants the plaintiff's motion to preclude this defense and also excludes certain evidence not disclosed during discovery. The defendants submitted an affidavit from Joseph Daly, a product engineer manager, claiming to have reviewed design drawings of the Accused Screening Plants using CAD software, which indicated that the conveyors overhang their chasses by up to 13.3 inches. However, the defendants did not produce the underlying drawings or provide Daly's opinion until their summary judgment motion, prompting the plaintiff to seek exclusion of this evidence. The Court agrees, noting that the defendants failed to produce responsive documents requested by the plaintiff during discovery and did not justify this failure as harmless. Therefore, under Federal Rule of Civil Procedure 37, the Court excludes both the drawings and Daly's testimony. Both parties requested attorneys' fees related to these motions, but the Court denies these requests, directing each party to bear its own costs. Regarding the parties' motions for summary judgment, the plaintiff seeks a ruling that the Accused Screeners infringe the '618 patent, the striking of all defendants' affirmative defenses except for obviousness, and the dismissal of all counterclaims. The defendants seek dismissal of the plaintiff's claims based on non-infringement and to preclude the assertion of willful infringement and enhanced damages. The Court finds genuine issues of material fact concerning the plaintiff’s motion, granting it in part and denying it in part. The court will determine the case by reviewing pleadings and evidence, including questioning attorneys, and will issue an order identifying undisputed facts, which will be considered established. The court has found genuine issues of material fact regarding the defendants' motion for summary judgment and therefore denies the motion in full. Summary judgment under Fed. R.Civ. P. 56(c) is appropriate only when there is no genuine issue of material fact, meaning a resolution could affect the case outcome. A material fact influences the suit's result, while a genuine issue exists if a reasonable jury could side with the nonmoving party. The court must view evidence favorably to the opposing party. The moving party must meet its burden, after which the nonmoving party must present specific facts demonstrating a genuine issue. Mere doubts about the evidence are insufficient to avoid summary judgment; it requires substantial evidence against the moving party's claim. In patent infringement cases, defendants must show that no reasonable fact-finder could conclude that the accused devices infringe on any claim element. Infringement issues are generally for a jury, but summary judgment is warranted if no reasonable juror could find equivalence. The Supreme Court has indicated that the doctrine of equivalents requires analysis of each element's role in the patent claim to determine if a substitute element matches the claimed element's function, way, and result. The court will now address infringement concerning both parties' summary judgment motions. To succeed in their motion for summary judgment, the plaintiff must demonstrate that the accused devices embody all elements of the claim in question. The defendants can win by proving the absence of even one element. They argue three main points to support their claim of non-infringement: 1. The lateral conveyors of the Accused Screening Plants extend laterally beyond the chassis when in transport. 2. None of the Accused Screening Plants includes the claimed head articulation means from the '618 patent. 3. The chassis of the Accused Screening Plants mounted on tracks is not "wheel mounted" and thus not "mobile, road-hauled." The plaintiff disputes each point, asserting that the elements are present in the Accused Screening Plants, warranting a finding of infringement. Regarding the first point, the defendants argue that the conveyors project laterally beyond what they define as "chassis," which the Court has rejected in favor of a broader definition. The defendants maintain that even under the Court's definition, the conveyors extend beyond the wheelbase in transport mode, but the plaintiff's motion to preclude this argument was denied. The Court has also barred the defendants from using certain undisclosed design evidence. A genuine issue of material fact exists regarding whether the conveyors of the Accused Screening Plants literally infringe on the '618 patent. The plaintiff’s expert states that the conveyors do not extend beyond the chassis when in transport, supported by photographs, while admitting the possibility of some extension. Conversely, the defendants' expert claims the conveyors do protrude. Thus, a factual dispute remains. The plaintiff further argues that if the conveyors do extend beyond the chassis, they should still be considered infringing under the doctrine of equivalents. The defendants counter that any protrusion, no matter how minimal, cannot be equivalent to a term that requires no protrusion in transport mode. Infringement, particularly by equivalency, is generally a factual issue for the jury. The Court, after considering the evidence favorably for the defendants, finds that the plaintiff is not entitled to summary judgment regarding infringement by equivalents related to the '618 patent. The defendants' expert, Frank J. Loeffler, argues that the lateral conveyors of the Accused Screening Plants extend beyond their chassis, which does not address the problems outlined in the '618 patent. This raises a material issue of fact concerning potential infringement by equivalents. The defendants seek summary judgment by asserting that any conveyor extending beyond the chassis cannot infringe the claim element stating that it "not" extend beyond the chassis. They reference the case Moore U.S.A. Inc. v. Standard Register Co., where the court held that an adhesive strip extending only 48% of the envelope length did not infringe a claim requiring it to extend "a majority" of the length. They argue that there is a clear distinction between conveyors that extend beyond the chassis and those that do not, suggesting the language of the '618 patent was intentionally crafted to exclude minimal extensions. However, the Court acknowledges that even conveyors that project slightly beyond the chassis could function similarly to those that do not. Strictly interpreting the patent as the defendants suggest could allow potential infringers to easily evade liability, which contradicts the purpose of the doctrine of equivalents. The Court views the chassis edge as a practical reference for the plant's compact design, indicating that the specific requirement for conveyors to remain entirely within the chassis is not critical. Unlike Moore U.S.A., which involved claim vitiation, the current case does not present a situation where applying the doctrine of equivalents would nullify a claim limitation. Even if minimally protruding conveyors were considered equivalent to non-protruding conveyors, the phrase "does not project laterally beyond the chassis" imposes a limitation requiring that conveyors not materially protrude beyond the chassis. Although the patentee did not include the term "materially," a reasonable jury could still find that the Accused Screening Plants might infringe this claim by equivalents. The defendants argue that the plaintiff is estopped from claiming infringement by equivalents due to amendments made during the prosecution of the '618 patent, which clarified that the transport position includes "no elements extending laterally of the chassis." However, the Court finds this argument unconvincing, noting that the relevant language was present in the original application and that no amendments were made to add or modify it. The prosecution history does not demonstrate a clear surrender of subject matter concerning equivalents. Consequently, the Court denies summary judgment for both parties regarding literal infringement and infringement by equivalents for this claim term. Regarding the "head articulation means," a means-plus-function claim element, it encompasses both the structures specified in the claim and their equivalents. To infringe this element, a structure must perform the recited function and include the incorporated structures or their equivalents. The defendants claim that the Accused Screening Plants lack several specific components; however, the Court has defined "head articulation means" as not requiring these components. Since the defendants do not dispute that the Accused Screening Plants include the necessary structural elements as construed by the Court, there is no genuine issue of material fact. Therefore, the Court grants the plaintiff's motion for summary judgment on this aspect, establishing it as a fact for trial. Defendants argue that the Accused Screening Plants do not infringe the "head articulation means" limitation of the '618 patent because their conveyors extend laterally beyond the chassis when folded. They assert that the function of the head articulation means (HAM) is to connect the head and tail sections to prevent lateral protrusion. The plaintiff counters that either the conveyors do not protrude or any protrusion is minimal and equivalent to non-protruding designs. The Court agrees that the HAM's function is to prevent lateral protrusion and finds genuine issues of material fact regarding whether the conveyors of the Accused Screening Plants protrude when folded and if minimal protrusions can be considered equivalent. Consequently, the Court denies both parties' motions for summary judgment on this issue. Regarding the track-mounted Accused Screening Plants, the defendants claim they are not "mobile, road-hauled" and lack "wheel mounted chasses." The Court has defined "mobile, road-hauled" to mean capable of being transported over long distances on a road, with or without additional devices. The defendants do not dispute that the track-mounted screeners meet this definition, leading the Court to conclude there is no genuine issue of fact on this point. However, the defendants argue that the definition of "wheel" does not include "tracks." The plaintiff contends that the chasses of the track-mounted screeners are "wheel mounted" because they are supported by wheels that drive the tracks. The Court determines that this matter is appropriate for jury consideration due to existing factual disputes about the operation of the tracks and the role of the wheels, thus denying summary judgment for both parties on this issue. Lastly, the defendants do not dispute that the Accused Screening Plants contain other elements of claim 1 of the '618 patent. The Court grants summary judgment in favor of the plaintiff concerning the infringement of the elements of claim 1 of the '618 patent, finding no genuine issues of material fact based on the plaintiff's expert, Steven A. Whyte. The defendants' request to preclude claims of willful infringement and enhanced damages is denied due to insufficient argumentation. The plaintiff seeks summary judgment on multiple issues, including standing to sue, proper marking of screeners, and various affirmative defenses raised by the defendants. The defendants have withdrawn certain affirmative defenses, including failure to mark, failure to state a claim, lack of personal jurisdiction over PSNY, and invalidity under 35 U.S.C. 101, but have not addressed all aspects of their invalidity defense or the potential for new affirmative defenses. Regarding the plaintiff's standing, the defendants argue that the plaintiff lacks good title to the '618 patent, claiming that the original patentee, Malachy Rafferty, did not have the right to sell the patent as it belonged to his employer, Masterskreen. However, the Court finds that the plaintiff has established its title through a chain of ownership, with Rafferty selling the patent to the plaintiff in 1999 and a subsequent quitclaim deed from Masterskreen executed on March 27, 2006, rectifying any potential title defect. Thus, the Court agrees with the plaintiff that there are no genuine issues of material fact regarding its standing to sue. Defendants contend that Rafferty lacked proper title to the '618 patent due to the failure to name Richard Byrne as an inventor. However, the Court rejects this argument and grants summary judgment in favor of the plaintiff regarding standing. Regarding the defendants' invalidity defense based on 35 U.S.C. 102, which asserts that the '618 patent is invalid, the Court emphasizes that patents are presumed valid under 35 U.S.C. 282. Defendants must provide evidence meeting a clear and convincing standard to substantiate their invalidity claim. The Court finds that the defendants failed to provide such evidence, thus granting summary judgment for the plaintiff on this issue. On the invalidity defense based on 35 U.S.C. 112, defendants argue that if the Court adopts the plaintiff's claim construction to include track-mounted screening plants, the patent would be invalid due to insufficient description. The Court finds this claim meritless, clarifying that a patent does not need to describe every potential embodiment. Citing ICU Medical, Inc. v. Alaris Medical Systems, Inc., the Court concludes that the patent's specification sufficiently describes the preferred embodiment, granting summary judgment dismissing the defendants' defense under 35 U.S.C. 112. Lastly, the defendants have reserved the right to assert additional defenses, but the Court finds this matter not ripe for adjudication since no amendments to their answers are currently being sought. Therefore, the Court declines to rule on this issue. The defendants claim that the '618 patent is invalid due to Richard Byrne's status as either an unnamed co-inventor or sole inventor, which, if proven, would violate 35 U.S.C. § 102(f). The plaintiff contests this assertion, seeking summary judgment, arguing that Byrne was not the true inventor but merely executed Rafferty's conceptual design. At the time of the patent application, Byrne was employed by Rafferty at Masterskreen. Byrne contends he conceived the invention, whereas the plaintiff maintains Byrne's contributions do not qualify him as a co-inventor. Under Federal Circuit law, the burden of proof lies on the party challenging inventorship to demonstrate by clear and convincing evidence that the named inventor is not the true inventor. The Federal Circuit emphasizes that uncorroborated testimony from an alleged inventor alone is insufficient to meet this standard. Byrne's claims lack corroboration, although he points to drawings and logbooks as potential support. The plaintiff argues these documents do not prove inventorship and that Byrne himself acknowledged that only his testimony could substantiate his claims. The court finds that Byrne's role as an engineer does not equate to co-inventorship, and allowing his drawings to support his claims would set a precedent undermining the requirement for corroboration in inventorship disputes. The Court finds that the drawings presented by the defendants do not adequately corroborate Byrne's testimony, referencing case law that allows for independent circumstantial evidence to meet corroboration standards. The defendants claim the plaintiff failed to produce additional drawings and logbooks that could affect inventorship claims. While the plaintiff disputes the existence of these documents, asserting they were destroyed, the Court deems this dispute irrelevant to the main analysis since Byrne testified that such documents would not prove his role as the originator of the ideas. Consequently, the Court grants summary judgment in favor of the plaintiff concerning the defendants' inventorship invalidity claim. Regarding the defendants' counterclaim of inequitable conduct, they allege the plaintiff did not disclose that Richard Byrne was the true inventor and failed to inform the Patent and Trademark Office (PTO) about three relevant devices considered prior art. The Court finds no factual issues regarding Byrne's inventorship but identifies factual questions about the failure to disclose prior art. Inequitable conduct can render a patent unenforceable if an applicant intentionally misleads the PTO by withholding material information or providing false information. The defendants assert that the plaintiff should have disclosed three devices—Masterstock 70, Masterstock 80, and Dominator—that share elements with the '618 patent, and the plaintiff does not dispute the failure to disclose these devices. The plaintiff argues that the Masterstock 70 and 80 screeners were effectively encompassed by another device disclosed to the Patent and Trademark Office (PTO), thereby exempting them from separate disclosure. The plaintiff also contends that the Dominator screener was not sold in the U.S. prior to the filing of the '618 patent, making its disclosure unnecessary under applicable law. The Court concludes that there are no triable facts regarding the Masterstock screeners, determining their omission was not material since their hinge design, claimed to be relevant by the defendants, is also present in a previously disclosed U.S. Patent No. 3,444,987. Thus, the failure to disclose the Masterstock screeners does not affect the validity of the '618 patent. Regarding the Dominator, the plaintiff maintains that the patentee was not legally required to disclose it as it was sold exclusively overseas before the relevant date. The defendants claim that an invoice dated May 27, 1993, shows a Dominator was sold in the U.S. before September 7, 1993. The plaintiff counters that the invoice reflects an internal transfer of assets rather than a sale, and that the shipping likely occurred after the critical date. The Court finds genuine issues of fact regarding the sale of the Dominator in the U.S. prior to September 7, 1993, noting ambiguity in the invoice and the potential for a jury to infer a separate sale to Masterskreen Chicago. Masterskreen International, Ltd. was involved in a legal dispute concerning the sale of the Dominator product. The Court determined that a reasonable jury could conclude that a Dominator was delivered in the U.S. before September 7, 1993, based on an invoice dated nearly three and a half months prior. Additionally, if the patentee was aware of a pre-September 1993 sale, the exclusion of the Dominator as "prior art" could be seen as intentional. Consequently, the plaintiff's motion for summary judgment on this matter was denied. Regarding the defendants' counterclaim of laches, they argued that the plaintiff delayed filing suit until 2006 despite knowing about the accused sales beginning in 2000, resulting in loss of relevant files that prejudiced the defendants. The plaintiff contended that any document destruction was routine and that the delay was due to settlement discussions. The Court concluded that summary judgment was inappropriate, as the time between discovering the alleged infringement and initiating the lawsuit was significant, and the destruction of the patent prosecution file raised factual issues regarding laches. The Court issued several orders: the plaintiff's motion to preclude was partially granted, the plaintiff's motion for summary judgment was also partially granted, and the defendants' motion for summary judgment was entirely denied. The parties were instructed to file a joint pre-trial order by March 8, 2010, and to attend scheduled pre-trial conferences on March 11 and March 15, 2010.