United States District Court, S.D. Indiana, Indianapolis Division
KENNETH BUTLER, SR. an individual, Plaintiff,
BALKAMP INC., NATIONAL AUTO PARTS ASSOCIATION, GENUINE PARTS COMPANY CORPORATION, TIEN-I INDUSTRIAL CORPORATION, LIMITED, YUH YEOU INDUSTRY CO., LTD, Defendants.
ORDER ON PENDING MOTIONS
SARAH EVANS BARKER, District Judge.
This suit concerns the alleged infringement by Defendants Balkamp, Inc. ("Balkamp"), National Automotive Parts Association ("NAPA"), Genuine Parts Company Corporation ("Genuine Parts"), Tien-I Industrial Corporation, Limited, and Yuh Yeou Industry Co., Ltd. (collectively, "Defendants") of United States Design Patent No. D500, 646 S ("the 646 patent") held by Plaintiff Kenneth Butler, Sr. ("Plaintiff" or "Mr. Butler"). This matter comes before the Court to construe certain patent terms relevant to the underlying infringement action and also for ruling on Defendants' Motion for Summary Judgment of Non-Infringement and Invalidity [Docket No. 31], filed on December 31, 2013.
The 646 Patent
Mr. Butler is the inventor and owner of the 646 patent, entitled "Tool Handle." The 646 Patent was issued on January 11, 2005, and is a design patent that claims the design for a tool handle that is used with socket wrench sets. The only claim of the 646 patent claims "[t]he ornamental design for a tool handle, as shown and described." The patent includes the seven figures pictured here as well as a cover page that includes a short description of each figure.
The Accused Product
Balkamp is an Indiana corporation and subsidiary of Genuine Parts, which is a Georgia corporation specializing in replacement parts for cars. Balkamp distributes automotive aftermarket products in the NAPA Auto Parts System. NAPA is a Michigan nonprofit corporation whose parent is also Genuine Parts. Defendants sell tool handles under the name "Spinning Impact Extension" that Plaintiff alleges apply the patented design of the 646 patent or a colorable imitation thereof. Defendants' Spinning Impact Extension comes in three sizes, shown below:
The Prior Art
The scope and content of the prior art for the 646 patent is apparently not in dispute. During prosecution of the 646 patent, the Patent Office cited three U.S. design patents, shown below:
The Patent Office also cited the following five U.S. utility patents during prosecution of the 646 patent, shown below:
The prior art also includes the following six uncited tool handle references, identified and shown below that were not before the Patent Office: (1) U.S. Patent No. 2, 071, 543, entitled "Revolving Grip Tool, " filed September 14, 1935 and issued February 23, 1937 (" Kress "); (2) Williams M-110 Extension Handle, which is a commercial embodiment of Kress, publicly available as early as 1955 ("M-110"); (3) U.S. Patent No. 3, 650, 165, entitled "Ratchet Tool, " filed November 21, 1969 and issued March 21, 1972 (" Wolfe "); (4) U.S. Patent No. 3, 575, 069, entitled "Ratchet and Speed Wrench Combination, " filed July 29, 1969 and issued April 13, 1971 (" White "); (5) Snap-On® SG-6, which was described in a printed publication and on sale in the United States since at least 1930 ("SG-6"); and (6) U.S. Patent No. 1, 775, 402, entitled "Wrench Outfit, " filed January 26, 1925 and issued September 9, 1930 (" Mandl ").
The Instant Litigation
On November 21, 2012, Mr. Butler filed a complaint against Defendants alleging that the Spinning Impact Extension infringes his 646 Patent. On December 3, 2013, the parties filed a joint claim construction statement and, on December 31, 2013, Defendants filed their initial Markman /claim construction brief as well as a motion for summary judgment of non-infringement of the 646 Patent. Defendants have ...