U.S. Test, Inc. v. NDE Environmental Corp.

196 F.3d 1376, 1999 WL 1045077
CourtCourt of Appeals for the Federal Circuit
DecidedNovember 19, 1999
DocketNo. 99-1087
StatusPublished
Cited by18 cases

This text of 196 F.3d 1376 (U.S. Test, Inc. v. NDE Environmental Corp.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
U.S. Test, Inc. v. NDE Environmental Corp., 196 F.3d 1376, 1999 WL 1045077 (Fed. Cir. 1999).

Opinion

LOURIE, Circuit Judge.

U.S. Test, Inc. and Bobby Cobb appeal from the decision of the United States District Court for the Western District of Louisiana granting United Coastal Insurance Co.’s (“UCIC’s”) motion for summary judgment that UCIC had no duty to defend U.S. Test and Cobb in their patent infringement suit against NDE Environmental Corporation (“NDE”), and denying U.S. Test and Cobb’s corresponding cross-motion. See U.S. Test, Inc. v. NDE Envtl. Corp., No. 95-0199 (W.D.La. Oct. 16, 1998) (judgment). Because the district court correctly concluded that UCIC had no duty to defend U.S. Test and Cobb, we affirm.

BACKGROUND

U.S. Test manufactures and sells the Model 200P, an ultrasonic device used to detect leaks in underground fuel storage tanks. See Statement of Material Facts Not in Dispute at 1, ¶ 2. U.S. Test solicits sales of the Model 200P by advertising in national trade journals, mailing brochures to potential customers, and presenting the Model 200P at national trade shows. See id. at 2, ¶ 3. U.S. Test also provides training seminars and instructions on the proper use of the Model 200P. See id. at 2, ¶ 4.

After competitor NDE acquired an exclusive license to two patents directed to the ultrasonic gauging of tanks, U.S. Patents 4,748,486 and 4,805,453 (the “Haynes patents”), NDE sent letters to several of U.S. Test’s customers charging them with infringement of these patents in their use of the Model 200P. See Compl. for Deck J. at 3, ¶ 8. In response to these letters, U.S. Test filed a declaratory judgment action against NDE, requesting the district court to declare that its actions did not infringe the Haynes patents, and that the patents were invalid and unenforceable. See id. at ¶¶ 10-12. NDE counterclaimed, alleging that U.S. Test infringed the Haynes patents by making, using, and selling products that infringe the patents, as well as inducing others to perform methods and to use products that infringe the patents. See NDE Answer, Countercl., and Jury Demand at ¶¶ 18-21. NDE amended its answer and counterclaim and further asserted that U.S. Test was liable for contributory infringement of the ’453 patent. See Am. Countercl. at 6, ¶ 11. NDE also joined Bobby Cobb, the CEO, president, and sole shareholder of U.S. Test, as a counter-defendant. See, id. at 1, ¶ 1; 6, ¶ 12.

U.S. Test then filed an amended complaint, making UCIC, the insurance company from which it had purchased a general commercial liability insurance policy, a third-party defendant pursuant to Fed. R.Civ.P. 14. See Pl.’s Am. Supplemental Compl. at 1-2, ¶¶ 1, 3. U.S. Test alleged that under the “advertising injury” provision of the policy, UCIC was obligated to defend U.S. Test in the patent infringe[1378]*1378ment action brought by NDE and to pay any damages awarded against it. See id. That provision reads as follows:

COVERAGE B. PERSONAL AND ADVERTISING INJURY LIABILITY
1. Insuring Agreement.
a. We will pay those sums that the insured becomes legally obligated to pay as damages because of “personal injury” or “advertising injury” to which this insurance applies. No other obligation or liability to pay sums or perform acts or services is covered unless explicitly provided for under SUPPLEMENTARY PAYMENTS — COVERAGES A and B. We will have the right and duty to defend any “suit” seeking those damages.
Hs # H* Hi * Hi
b. This insurance applies to “personal injury” only if caused by an offense:
Hi ❖ * * * *
(2) Arising out of the conduct of your business, excluding advertising, publishing, broadcasting or telecasting done by or for you....
Hi ‡ ^ ^ Hi sfc
c. This insurance applies to “advertising injury” only if caused by an offense:
******
(2) Committed in the course of advertising your goods, products or services....
******

J.A. at A150-A151. As relevant here, Section V. of the policy defines “advertising injury” and “personal injury” as follows:

1. “Advertising injury” means injury arising out of one or more of the following offenses:
a. Oral or written publication of material that slanders or libels a person or organization or disparages a person’s or organization’s goods, products or services;
Hi * * * * ❖
d.Infringement of copyright, title, or slogan.
******
16. “Personal injury” means injury, other than “bodily injury”, arising out of one or more of the following offenses:
Hi * * Hi Hi Hi
d. Oral or written publication of material that slanders or libels a person or organization or disparages a person’s or organization’s goods, products or services....
Hi Hi Hi Hi H< Hi

J.A. at A155, A157. In its answer, UCIC asserted, inter alia, that it had no duty to defend U.S. Test under the policy. See Ans. at 3, ¶ 8.

U.S. Test and Cobb (hereinafter “U.S. Test”) and UCIC cross-moved for summary judgment on the issue whether UCIC had a duty to defend U.S. Test. The district court, from the bench, granted UCIC’s motion for summary judgment and. denied U.S. Test’s cross-motion. The court held that UCIC had no duty to defend U.S. Test, because, under the plain language of the policy, patent infringement does not constitute “advertising injury.” See Tr. at 34-35. The court reasoned that if the policy were meant to cover patent infringement, it would have included such language in the policy, as it did for “infringement of copyright, title or slogan.” See id. at 34. The court also noted that the disparagement by “oral or written publication” portion of the “advertising injury” provision did not cover patent infringement, as that language should be “read in the context of libel and slander.” Id. Finally, the court held that UCIC did not waive its right to deny U.S. Test coverage under the “advertising injury” provision of the policy. See id.

[1379]*1379U.S. Test appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (1994).

DISCUSSION

A. Standard of Review

Summary judgment is appropriate when there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(c). We review a district court’s grant of summary judgment de novo, see K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 52 USPQ2d 1001, 1003-04 (Fed.Cir.1999), reapplying the summary judgment standard,

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Bluebook (online)
196 F.3d 1376, 1999 WL 1045077, Counsel Stack Legal Research, https://law.counselstack.com/opinion/us-test-inc-v-nde-environmental-corp-cafc-1999.