United States District Court, D. Nevada
ROBERT C. JONES, District Judge.
This gripping case turns on the validity of a patent covering wrench jaws. The parties have cross-moved for partial summary judgment, (ECF Nos. 277, 294), and filed numerous motions to seal, (ECF Nos. 281, 289, 297, 317, 328, 349, 357, 365). For the reasons stated herein, the Court: (1) grants Plaintiff JS Products, Inc.'s motion for partial summary judgment as to invalidity, (ECF No. 277); (2) declares Claim 1 of U.S. Patent No. 7, 066, 057 invalid; and (3) denies Defendant/Counterclaimant Kabo Tool Company's motion for summary judgment as to patent infringement, (ECF No. 294). The Court also grants the pending motions to seal.
I. FACTS AND PROCEDURAL HISTORY
Plaintiff JS Products, Inc. ("JSP") is a Nevada corporation in the business of importing and selling tools. (Compl., ECF No. 1, at 1-2). Defendant Kabo is a Taiwanese company that owns U.S. Patent No. 7, 066, 057 (the "057 Patent"), which relates to a wrench with jaws that have different tilt angles. ( Id. at 1-2; 057 Patent, ECF No. 1, at 8).
On August 29, 2011, counsel for Kabo sent JSP a letter stating that Kabo owned the 057 Patent and that Kabo believed certain wrenches imported into the United States and sold by JSP (the "Accused Products") infringed on the 057 Patent. (Compl., ECF No. 1, at 2). Kabo further demanded that JSP cease and desist its allegedly infringing activity. ( Id. at 2-3). In a responsive letter, JSP acknowledged Kabo's demand but disagreed with its allegations and detailed several alleged defects in Kabo's infringement theory. ( Id. at 3).
On November 17, 2011, JSP initiated the instant action against Kabo, claiming: (1) that JSP is entitled to a declaratory judgment of non-infringement and invalidity and/or unenforceability of the 057 Patent (claim 1); (2) intentional interference with contractual relations and/or prospective economic advantage (claim 2); and (3) commercial disparagement and/or corporate defamation (claim 3). ( Id. at 3-5). Kabo has counterclaimed for infringement. (First Am. Countercl., ECF No. 153).
On December 7, 2011, Kabo filed a motion to dismiss claims two and three, which the Court granted, with leave to amend. (Order, ECF No. 33). JSP subsequently filed its First Amended Complaint ("FAC"), in which it has realleged the commercial disparagement and/or corporate defamation claim (now claim 2) and omitted the claim for intentional interference with contractual relations and/or prospective economic advantage. (FAC, ECF No. 34, at 6). The parties have engaged in lengthy, and often contentious, discovery. ( See, e.g., Order, ECF No. 245).
A. The 057 Patent
The 057 Patent includes one independent claim and two dependent claims. Specifically, the 057 Patent claims the following:
1. A wrench comprising: a handle and a head connected to an end of the handle and a first jaw and a second jaw extending from the head, the first jaw having a first inclined surface defined in a first side thereof and the second jaw having a second inclined surface defined in a first side thereof, the first inclined surface and the second inclined surface respectively tapered toward two respective distal ends of the first and second jaws defining respective tilt angles relative to a horizontal plane, the tilt angle relative to the horizontal plane of the first inclined surface is different from the tilt angle relative the horizontal plane of the second inclined surface, so that a thickness of the distal end of the first jaw is smaller than a thickness of the distal end of the second jaw.
2. The wrench as claimed in claim 1, wherein each respective inclined surface insects a respective root portion of the first and second jaws.
3. The wrench as claimed in claim 1, wherein each respective inclined surface insects a root portion of the head.
U.S. Patent No. 7, 066, 057 (filed June 27, 2006). Only the first claim ("Claim 1") is at issue in this case. ( See JSP Mem. Supp. of Mot. Summ. J. ("JSP Mem."), ECF No. 278, at 6; Kabo Mot. Summ. J., ECF No. 294, at 7-8).
B. Prosecution History
A review of the 057 Patent's prosecution history reveals the difficulty in determining Claim 1's scope. The 057 Patent was issued from U.S. Patent Application Number 10/910, 290, filed August 4, 2004 (the "290 Application"). When Kabo initially filed the 290 Application, it intended to patent a wrench with a pair of jaws with sloping faces or surfaces sharing a common or identical incline. Specifically, the Background of the Invention section of the 290 Application states the following:
A conventional wrench is disclosed in Fig. 1 and generally includes a handle with a head which includes two jaws. The handle and the jaws are located at the same plane so that when using the wrench to rotate an object such as a bolt head, the handle and the two jaws are rested on the on the surface where the bolt is connected. The user has to lift the handle slightly and insert his fingers in the space between the surface and the handle. However, this also makes the head and the two jaws to be lifted an angle so that the two jaws embrace the bolt head at an angle. In other words, only limited clamping area [ sic ] of the two jaws contact the bolt head and this could make the jaws slip away from the bolt head.
The present invention intends to provide a wrench wherein the two jaws each have an inclined surface so that the handle is oriented upward when the two jaws are rested on the surface with their inclined surfaces. By this way, the user can hold the handle comfortably and the bolt head is clamped by the clamping surfaces of the two jaws.
U.S. Patent Application Serial No. 10/910, 290 (filed Aug. 04, 2004) (emphasis added); 057 Patent, col. 1, lines 14-31. Similarly, the Summary of the Invention provides that:
The present invention relates to a wrench including a handle and a head connected to an end of the handle. A first jaw and a second jaw extend from the head. The first jaw has a first inclined surface defined in a first side thereof and the second jaw has a second inclined surface defined in a first side thereof. The first inclined surface and the second inclined surface are respectively tapered toward two respective distal ends of the first and second jaws. The first and second inclined surfaces share a common plane which is inclined relative to a horizontal plane so that when the first and second inclined surfaces are rested on a surface, the handle is oriented upward and the user can comfortably hold the handle while the object is clamped by the two jaws. The present invention will become more obvious from the following description when taken in connection with the accompanying drawings which show, for purposes of illustration only, a preferred embodiment in accordance with the present invention.
290 Application; 057 Patent, col. 1, lines 35-52 (emphasis added).
Consistent with Kabo's belief that its invention comprised a wrench having jaws with common inclines, Kabo presented claims to that invention in the 290 Application. Indeed, as originally ...