Centricut v. Esab Group, et al.

2001 DNH 070

• Court: District Court, D. New Hampshire
• Decided: April 3, 2001
• Docket: CV-99-039-M
• Status: Published

Opinion

Centricut v . Esab Group, et a l . CV-99-039-M 04/03/01 UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Centricut, LLC, Plaintiff

v. Civil N o . 99-039-M Opinion N o . 2001 DNH 070 Esab Group, Inc., Defendant,

v. Centricut, LLC (New Hampshire) and Centricut, LLC (Delaware), Counterclaim-Defendants.

O R D E R

Centricut, LLC (New Hampshire), brings this action seeking a

declaratory judgment of non-infringement, invalidity and

unenforceability of United States Patent 5,023,425 (“the ‘425

Patent”), held by defendant, Esab Group, Inc. (“Esab”). Esab

counterclaims for a finding of infringement against Centricut,

LLC (New Hampshire), and Centricut, LLC (Delaware) (collectively

“Centricut”). Centricut moves for summary judgment on Count I of

the Amended Complaint and Count I of the Amended Counterclaim

(document n o . 2 5 ) , arguing it is entitled to judgment as a matter

of law for three reasons: (1) the ‘425 patent is invalid as indefinite; (2) even if the ‘425 Patent is valid, there is no

infringement, either literal or under the doctrine of

equivalents; and (3) Esab is barred from asserting the doctrine

of equivalents.

Standard of Review

Summary judgment is appropriate when the record reveals “no

genuine issue as to any material fact and . . . the moving party

is entitled to a judgment as a matter of law.” Fed. R. Civ. P.

56(c). When ruling upon a party’s motion for summary judgment,

the court must “view the entire record in the light most

hospitable to the party opposing summary judgment, indulging all

reasonable inferences in that party’s favor.” Griggs-Ryan v .

Smith, 904 F.2d 112, 115 (1st Cir. 1990).

The moving party “bears the initial responsibility of

informing the district court of the basis for its motion, and

identifying those portions of [the record] which it believes

demonstrate the absence of a genuine issue of material fact.”

Celotex Corp. v . Catrett, 477 U.S. 317, 323 (1986). If the

moving party carries its burden, the burden shifts to the

nonmoving party to demonstrate, with regard to each issue on

2 which it has the burden of proof, that a trier of fact could

reasonably find in its favor. See DeNovellis v . Shalala, 124

F.3d 298, 306 (1st Cir. 1997).

At this stage, the nonmoving party “may not rest upon mere

allegation or denials of [the movant’s] pleading, but must set

forth specific facts showing that there is a genuine issue” of

material fact as to each issue upon which he or she would bear

the ultimate burden of proof at trial. Id. (quoting Anderson v .

Liberty Lobby, Inc., 477 U.S. 242, 256 (1986)). In this context,

“a fact is ‘material’ if it potentially affects the outcome of

the suit and a dispute over it is ‘genuine’ if the parties’

positions on the issue are supported by conflicting evidence.”

Intern’l Ass’n of Machinists and Aerospace Workers v . Winship

Green Nursing Center, 103 F.3d 196, 199-200 (1st Cir. 1996)

(citations omitted).

Background

Centricut makes and sells replacement parts used in plasma

arc torches of various manufacturers, including Esab. In 1998,

ESAB filed a civil action in the District of South Carolina,

Florence Division claiming that several electrodes manufactured

3 by Centricut infringe the ‘425 Patent. That case was dismissed

for lack of personal jurisdiction on January 1 5 , 1999. Believing

Esab would shortly file a new action for infringement, Centricut

filed this action for declaratory judgment on January 2 7 , 1999.

The ‘425 Patent, entitled “Electrode for Plasma Arc Torch

and Method of Fabricating Same,” pertains to an alleged

improvement to electrodes used in plasma arc torches - a device

which utilizes a stream of pressurized gas, ionized by a current,

to penetrate and cut metals for industrial use. An electrical

arc is generated between an electrode in the torch and the metal

workpiece. The basic design of the electrode entails an outer

“holder,” generally made of copper or copper alloys, and an

insert which emits electrons from the surface (the “emissive

insert”), creating the electrical arc. The arc attaches to the

emissive insert and is supported by the ionized gas stream

(referred to as the “plasma”). Various gases may be used as the

plasma, however, when oxygen is used, the life of the electrode

is limited to a fraction of its usual life. It is believed that

this happens because the outer holder oxidizes, causing the arc

to attach to the holder, instead of the emissive insert, and melt

the holder.

4 The ‘425 Patent teaches a way to allegedly prevent the

plasma arc from attaching to the holder, thus extending the life

of the electrode. The electrode in the ‘425 Patent entails

surrounding the emissive insert with a “sleeve,” and mounting the

two in a “cavity” in the front end of the holder. The sleeve is

composed of a metallic material with a “work function” greater

than the relatively low work function of the emissive insert.

Discussion

The words “work function,” “cavity,” and “sleeve” are

significant to Centricut’s position. At this point in the

litigation, the scope of the ‘425 Patent has yet to be

determined. Neither party has requested a Markman hearing, or

previously asked the court to construe the patent as a matter of

law.

Centricut moves this court to find as a matter of law that

the ‘425 Patent is invalid as indefinite because the “work

function” of a metallic material is dependant on multiple factors

not addressed in the specifications. See 35 U.S.C. § 1 1 2 , ¶ 2

(requiring specifications to include “one or more claims

particularly pointing out and distinctly claiming the subject

5 matter which the applicant regards as his invention.”). In the

alternative, Centricut asks for a ruling as a matter of law that

its electrodes do not infringe the ‘425 Patent because they do

not have a “sleeve” or a “cavity.” In order to make either

finding, however, the court must first determine the precise

meaning of the words “work function,” “cavity,” and “sleeve,” as

used in the ‘425 Patent, and as understood by those skilled in

the art of designing and constructing plasma torches. See, e.g.,

Carroll Touch, Inc. v. Electro Mechanical Sus., Inc., 15 F.3d

1573, 1576 (Fed. Cir. 1993) (“First, the claim must be properly

construed to determine its scope and meaning.”). Although the

parties have attempted to present their respective readings of

the disputed terms in the context of this motion for summary

judgment, the court believes it would be more beneficial to

address these claim construction issues as a separate matter.

Conclusion

Because the ‘425 Patent has yet to be construed, Centricut’s

motion for summary judgment (document n o . 25) is premature.

Accordingly, it is denied without prejudice. All other matters

are stayed pending construction of the ‘425 Patent claims.

6 The parties shall file a stipulation as to claim

construction on or before May 4 , 2001, o r , by that date shall

notify the court as to whether a Markman hearing will be

necessary or the issues can be resolved on briefs.

SO ORDERED.

Steven J. McAuliffe United States District Judge

April 3 , 2001

cc: Edward A . Haffer, Esq. Michael J. Bujold, Esq. Neal E . Friedman, Esq. John R. Hughes, Jr., Esq. Blas P. Arroyo, Esq.