inequitable conduct are treated as interchangeable for purposes of
this summary judgment motion.
A. Inequitable Conduct: Grounds 1 - 3

To establish the defense of inequitable conduct, CFM must
prove (1) the existence of material prior art; (2) Dimplex’s
knowledge of the prior art and its materiality; and (3) Dimplex’s
failure to disclose that prior art with intent to mislead the U.S.
Patent and Trademark Office (the “PTO”). Fox Indus., Inc. v.
Structural Preservation Sys., 922 F.2d 801, 803 (Fed. Cir. 1991).
The underlying elements of this defense must be proven by clear and
convincing evidence during the application process of the asserted
patent. Abbott Labs. V. TorPharm, Inc., 300 F.3d 1367, 1379-80
(Fed. Cir. 2002).

A threshold level of intent to mislead the PTO and a threshold
level of materiality must be established. Amgen, Inc. v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1357-58 (Fed. Cir. 2003). If
established, then the court will balance the actual levels of
intent and materiality to determine whether, as a matter of equity,
inequitable conduct has occurred. Duro-Last, Inc. v. Custom Seal,
Inc., 321 F.3d 1098, 1109-10 (Fed. Cir. 2003). “Applicants for
patent, including their legal representatives, have the duty to
prosecute patent applications in the PTO with candor, good faith,
and honesty.” Life Techs., Inc. v. Clontech Labs., Inc., 224 F.3d
1320, 1324 (Fed. Cir. 2000). With respect to materiality, a prior
art reference need not be submitted to the PTO if the information

- 20 -


that the ‘921 patent lacks a flicker element that reflects light in
a wavering motion. Id. at col. 12, ll. 29-31.
CFM does not put forth adequate evidentiary support to raise

a genuine disputed question of fact as to Dimplex’s contentions.
CFM argues, however, that the required flicker element and
wavering motion is disclosed in the ‘921 patent through
incorporation of the ‘644 patent’s “reflective paddle wheel.” ‘921
at col. 3, 11. 18-38. In referring to the ‘644 patent, the ‘921
patent states that ‘644:

discloses an alternative way of trying to

introduce colour into apparatus for producing

imitation fire effects. In this case, a

reflective paddie wheel, which is rotated by a
motor, reflects light onto the rear of a

screen or screens . . . which diffuses or
reflects light rays emanating from a light
source. A reflective surface, which is

concave about a horizontal axis, is positioned
behind the reflecting panels and screen. .. .
Whilst this again may produce a reasonably
satisfactory result, it is not an optimum
effect.

‘921 at col. 3, 11. 18-38.

Dimplex counters that the ‘644 reference is only background
art and cannot be considered in an anticipation analysis, which
requires that the patent at issue be anticipated by a single prior
art reference. Dimplex states that the issue of combining the ‘644
patent and the ‘921 patent is more appropriate under an obviousness

analysis - 35 U.S.C. § 103, which was not brought by CFM on summary

judgment.

-14-


Once the jury makes a finding as to materiality and intent,
however, it is the court’s job to balance the elements and make a
determination of whether inequitable conduct has been committed.
See Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350,
1364 (Fed. Cir. 1984) ("The result of that balancing is obviously
not a fact that may be found to exist or not, nor is it a mere
matter of application of the law to the facts, both normal jury
functions. It requires that judicial discretion be brought to
bear, and the district court shall decide it.”). The Court notes
that on the intent requirement, CFM fails to point to direct
evidence of intent to mislead. At best, intent to mislead could be
inferred by Dimplex’s attorney’s negligence in failing to further
investigate the documents received in connection with the ‘580
patent application. Those documents included a 1996 search report
issued by the European Patent Office in connection with an EPO
patent filing for Bitech and partial copy of a British application.
Although the documents that Kristoffer Hess, an inventor of the
‘580 patent, and the attorney received were supporting documents to
the ‘921 patent, CFM does not point to any evidence in the record
that shows that those involved with the ‘580 patent application
prosecution had any actual knowledge of the ‘921 patent
application. See Elk Corp. of Dallas, 168 F.3d 28 (finding
inequitable conduct on the basis of indirect or circumstantial
evidence only when actual knowledge of withheld prior art shown by

undisputed evidence or admissions); Bristol-Myers Squibb v. Rhone-

- 24 -


stationary or mobile component made of light-
weight material that contains openings for
transmitting light to produce an impression of
moving flames.”

A “flicker element having at least one

reflective surface” as construed reads “a

component part having at least one surface

that reflects light in a wavering motion.”

“[A] screen having a partially reflecting

surface and a diffusing surface” as construed

reads “a screen having a surface that

partially bends light or gives back an image

and also having a surface that disperses and

softens light.”

“{A]n image . . . which resembles moving

flames” and “an image which resembles moving

gasses” from claims 1 and 30 as construed

reads “a representation that gives the

appearance of moving flames” and ‘a

representation that gives the appearance of

moving gasses from a fire.”
(See Markman Order).

A. Means-Plus-Function Claim Construction
As discussed in the Court’s Claim Construction (see Markman

Order at 4-5) a portion of claim 1 is written in a means-plus-
function format. Literal infringement of a 35 U.S.C. § 112, @ 6
claim requires that the relevant structure in the accused device
perform the identical function recited in the means-plus-function
clause. See Ishida Co., Ltd. v. Taylor, 221 F.3d 1310, 1316-17
(Ped. Cir. 2000). If it performs the identical function, then the

accused device must also be identical or equivalent to the

corresponding structure in the specification. Lockheed Martin


is cumulative of other information before the PTO. 37 C.F.R.
§ 1.56(b); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1312
(Fed. Cir. 2000). CFM must also prove the intent to mislead by
clear and convincing evidence; mere negligence or even gross
negligence is not sufficient. See Kingsdown Med. Consultants, Ltd.
v. Hollister, Inc., 863 F.2d 867, 876 (Fed. Cir. 1988), cert.
denied, 490 U.S. 1067 (1989). Dimplex argues that CFM cannot prove
the intent and materiality element of this defense.
1. Hamilton Beach Unit Fireplace

CFM argues that Dimplex’s failure to disclose a commercialized
Hamilton Beach fireplace sold in the United States resulted in
inequitable conduct before the PTO. Dimplex acknowledges that it
had the Hamilton Beach unit in its possession. However, Dimplex
contends that the unit did not need to be disclosed to the PTO
because it was not material and merely cumulative art. Dimplex
argues that the unit is a commercial embodiment of U.S. Patent
No. 4,965,707 (the “*‘707 patent”), which was disclosed to the PTO.
An uncited reference is cumulative or less material if “the most
pertinent prior art in the field was . . . before the examiner.”
Halliburton Co. v. Schlumberger Tech. Corp., 925 F.2d 1435, 1440
(Fed. Cir. 1991). The ‘707 patent is disclosed several times in
the ‘580 patent specification as incorporated by reference and is
therefore highly material. See ‘580 at col. 3, 11. 57-59; col. 4,
ll. 26-27. If the Hamilton Beach unit is cumulative of the ‘707

patent, then the unit is less material and need not be disclosed

-21-


Chirichillo v. Prasser, 30 F. Supp. 2d 1132, 1138 (E.D. Wis. 1998)
(stating that “an invention need not be at a commercially
satisfactory phase of development in order for conception to be
complete”). O’Neill’s own deposition shows that his suggestions do
not rise to a level of contribution entitling him to the status of
co-inventor.

CFM fails to point to any evidence in the record that
indicates any communication or cooperation by O’Neill with the
inventors of the ‘580 patent before he received the working
prototype. Further, nothing in the record suggests that O’Neill
knew about the ‘580 patent invention until the inventors sent him
the prototype. It is undisputed that before O’Neill ever made any
suggested modifications, the prototype already existed. Moreover,
CFM fails to argue joint inventorship in its opposition brief
Therefore, the Court finds that even when considering the facts in
the light most favorable to CFM, CFM cannot prove that O’Neill was
an unnamed inventor by clear and convincing evidence. Accordingly,
the Court GRANTS Dimplex’s Motion for Summary Judgment as to Joint
Inventorship.

Vv. CONCLUSION
For the reasons stated herein, the Court hereby:
1. DENIES Dimplex’s partial motion for summary judgment of

infringement;

- 27 -


that has a component with reflecting several surfaces that rotate
to give a “flickering effect to simulated flames.” ‘697 at col. 1,
11. 33-48. The ‘143 patent discloses a “rotable light-reflecting
element” that is formed by a “large number of individual light-
reflecting vanes.” ‘143 at col. 2, 11. 10-15. CFM fails to point
to any evidence in the record that would raise an issue of fact as
to the noncumulative nature of the electric log set. Again, the
Court notes that Dimplex need not disclose a physical embodiment of
an already disclosed patent if it is cumulative art. Further, CFM
again has not provided any evidentiary support of a threshold
intent to deceive regarding this product. Thus, the Court finds
that CFM has not reached the threshold level of materiality and
cannot prove that Dimplex failed to disclose material prior art
with an intent to mislead. Accordingly, the Court GRANTS Dimplex’s
Summary Judgment Motion as to the Electric Log Set.
3. The ‘921 Patent Application

Dimplex did not disclose the ‘921 patent to the PTO when
prosecuting the ‘580 patent application. The issue of the
Materiality of the ‘921 patent overlaps with the factual issues
surrounding the anticipation analysis discussed above at Part IV.B,
supra. Because the Court found that issues of fact remain on the
anticipation issue, the Court cannot make a determination as to
inequitable conduct on this issue. Accordingly, the Court DENIES
Dimplex’s Summary Judgment Motion on Inequitable Conduct for the
‘921 patent.

- 23 -


sufficiently to have placed a person of ordinary skill in the field
of the invention in possession of it.” In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) (citing Akzo N.V. v. U.S. Int'l Trade Comm'n,
808 F.2d 1471, 1479 (Fed. Cir. 1986)). This requires that “[t]here
must be no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill in
the field of the invention.” Scripps Clinic & Research Found. v.
Genentech, Inc., 927 F.2d 1565, 1576 (Fed.Cir. 1991).

The crux of the anticipation analysis centers around the ‘644
patent’s incorporation of the reflective paddle wheel. Both
parties present credible evidence that disputes whether the ‘921
patent sufficiently describes the necessary elements of the claims
at issue in the ‘580 patent. As each element of ‘580 is compared
to the corresponding embodiment in ‘921, it becomes apparent that
the interpretation is a matter of fact for the jury to decide.

CFM points out every element in Claims 1 and 30 and cites to
expert testimony and other sources that indicate that when the
alternative way of introducing color to create the impression of
flames is added to the ‘921 specification, every element of the
corresponding claims in the ‘580 patent are identically shown in
‘921. Dimplex contends, however, that the introduction of the
reflective paddle wheel in replacing the curved reflector
limitation would not allow for the single flag disclosed in ‘921 to
cast moving shadows in front of the flame shapes that would have

been created by the curved reflector of ‘921, and that CFM has not

- 18 -


Products read on every element of Claim 1. After a thorough review
of the parties’ briefs and supporting documentation, the Court
agrees with CFM on this point. To support its infringement motion,
Dimplex must demonstrate that the Accused Products read on each
limitation in Claim 1 of the ‘580 patent.

First, Dimplex does not point to undisputed evidentiary
support to indicate that all the Accused Products are substantially
similar to each other and can thus be deemed interchangeable for
purposes of comparison to Claim 1. Second, from the parties’
references to the record, the Court cannot determine, with any
certainty, which Accused Products are referenced in connection with
each element. Therefore, the Court cannot properly decipher if
specific Accused Products literally infringe or raise disputed
questions of fact.

Dimplex cites to testimony specific to Claim 1’s elements
where at least one and sometimes several of the Accused Products
are referenced. These references are rarely clear as to which
products the expert or other evidence specifically rely upon. For
example, often the references are to exhibit numbers, which refer
to a specific Accused Product. The Court is not entirely clear as
to which Accused Product or Products matches with each exhibit
number or other reference. Also, other testimonial evidence does
not include enough context to clearly indicate which products the
experts and other witnesses have actually reviewed. General

statements such as “some” or “several” in reference to the Accused

-~10-


Referring to the patent’s specification, the corresponding flame
effect structure should properly be construed as “a stationary or
mobile component made of material that contains openings for
transmitting light to produce an impression of moving flames.” See
Cardiac Pacemaker v. St. Jude Med., 296 F.3d 1106, 113 (Fed. Cir.
2002) (explaining that in a § 112, @ 6 claim, the Court must
determine the claim limitation’s structure, if any, using the
patent specification) .

Dimplex argues correctly that under the Court’s construction,
the material does not need to “ripple, billow, or otherwise move”
for the flame effect to literally read on the means-plus-function
limitation of claim 1. In the specification, “a single thin sheet
of a light-weight, substantially opaque, material such as
polyester” refers to the preferred embodiment of the flame effect
structure so that the structure itself can move to aid in producing
“a moving flame effect.” See U.S. Patent No. 5,642,580, col. 4,
11. 8-9. The patent specification also discloses that a moving
flame effect can be produced by use of the flicker element alone
“without the flame effect element,” although this is not the best
means in producing a “realistic effect.” Id. col. 5, ll. 25-31.

The corresponding structure to a function set forth in a
means-plus-function limitation “must be necessary to perform the
claimed function.” See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d
1314, 1321 (Fed. Cir. 2003) (emphasis added). The “light-weight”

term originally read into the structure as part of the means is not

-~7-


Corp. v. Space Systems/Loral, Inc., 324 F.3d 1308, 1320 (Fed. Cir.
2003).

The means-plus-function claim as construed requires “a
stationary or mobile component made of light-weight material that
contains openings for transmitting light to produce an impression
of moving flames.” (Markman Order at 9). The parties disagree as
to whether the Accused Products’ flame effect structures are
“light-weight” as required by the Court’s Claim Construction and
thus necessary to literally read on to claim 1 for infringement.
Rather than being a material factual dispute most appropriate for
the jury, the parties’ dispute focuses in part on the Court’s
construction of this limitation. Before turning to the
infringement analysis, the Court will first address its original
intent during the construction of the structural flame effect
limitation of claim 1. See Utah Med. Prods., Inc. v. Graphic
Controls Corp., 350 F.3d 1376, 1382 (Fed. Cir. 2003) (stating that
it was not error for the district court to revise its claim
construction to clarify its original intent).

The Court construed the function of the means-plus-function
limitation as “transmitting light from said light source.”
(Markman Order at 7). The Court explained that the clause “‘to
produce moving effect’ merely states the ultimate desired result of
the limitation in the claim... and therefore ‘adds nothing to
the substance of the claim.’” Id. (quoting Tex. Instruments, Inc.

v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1172 (Fed. Cir. 1993)).

-6-


proved that it would produce the required flame images by clear and
convincing evidence. Dimplex also contends that Claims 30-32 of
the ‘580 patent recite that the light reflected from the rotating
flicker element in connection with the diffusing screen produce the
appearance of moving gasses from a fire, but that the ‘921 patent
is silent as to any mechanism that creates an image that resembles
moving gasses, leaving an absent limitation. Therefore, ‘921
cannot anticipate Claims 30-32. Dimplex has raised disputed facts
regarding the flame simulating assembly, flicker element, and
resultant images that question the requirement that the elements be
arranged in the same way.

The question remains one of fact: Do patents ‘921 and ‘644 by
reference embody all the elements of Claims 1 and 30 and their
dependents? The record is not so clear as to support Dimplex’s
contention that a reasonable juror could not possibly conclude that
the elements of ‘921 are in the same arrangement to function in the
identical way as the elements in claims 1 and 30 of the ‘580
patent. CFM’s Motion for Summary Judgment of Invalidity by
Anticipation is therefore DENIED.

V. INEQUITABLE CONDUCT

CFM asserts the affirmative defense of unenforceability.
Dimplex moves for summary judgment of inequitable conduct on four
grounds: (1) the Hamilton Beach fireplace as prior art; (2) the
electric log set as prior art; (3) the ‘921 patent application as

prior art; and (4) joint inventorship. Unenforceability and

- 19 -


Accused Products. See Utah Med. Prods., Inc., 350 F.3d at 1383
(“To qualify as an equivalent of the structure disclosed in the
specification under § 122, 4 6, the structure of the accused device
c{an] have no more than insubstantial differences from” the
patented structure.). CFM submitted evidence that the flame effect
elements in the Accused Products are single 24 gauge dark metal
sheets weighing approximately 3 lbs. 3 ounces that contain multiple
openings for the transmission of light. CFM indicates that some of
the Accused Products’ flame effect elements vary slightly in weight
and size. This fact, however, is not material to the claim
limitation at issue.

CFM focuses its contention that a disputed issue of fact
exists as to this limitation wholly on the term “light-weight.”
Because the Court has refined its earlier construction to eliminate
this term, there is no genuine or material issues of fact regarding
this limitation. Accordingly, the Court finds that the Accused
Products’ flame effect elements literally read on ‘580's means-
plus-function clause - “a stationary or mobile component made of
material that contains openings for transmitting light to produce
an impression of moving flames.”

3. Issues of Fact

As the Court discussed earlier, Dimplex moves for summary
judgement of infringement on all Accused Products listed in the
pleadings. CFM contends that Dimplex has failed to demonstrate

that there are no genuine issues of fact that all of the Accused


Poulenc Rorer, 326 F.3d 1226, 1239-40 (Fed. Cir. 2003) (evidence of
actual knowledge undisputed); GFI, Inc. v. Franklin Corp., 265 F.3d
1268 (Fed. Cir. 2001) (actual knowledge of withheld prior art
undisputed).

The Federal Circuit has emphasized that the challenged
“conduct must be sufficient to require a finding of deceitful
intent in the light of all the circumstances.” Kingsdown Med.
Consultants, 863 F.2d at 873. In light of this scant evidence on
intent, the materiality of omitting the ‘921 patent must be strong
for “the scales [to] tilt to a conclusion that ‘inequitable
conduct’ occurred.” Critikon, Inc. v. Becton Dickinson Vascular
Access, Inc., 120 F.3d 1253, 1256 (Fed. Cir. 1997).

B. Joint Inventorship: Ground 4

CFM argues that Dimplex committed fraud upon the PTO because
it did not name all the relevant inventors of the ‘580 patent. A
patented invention may be the work of two or more joint inventors.
See 35 U.S.C. § 116. CFM must prove that Dimplex omitted an
inventor by clear and convincing evidence. See Bd. of Educ. v. Am.
Bioscience, Inc., 333 F.3d 1330, 1337 (Fed. Cir. 2003). The
inventors as named in an issued patent are presumed to be correct.
Cannon Computer Sys., Inc. v. Nu-Kote Int’l, Inc., 134 F.3d 1085,
1088 (Fed. Cir. 1998). “An inventor under the patent laws is the
‘person or persons who conceived the patented invention.’” Hoop v.

Hoop, 279 F.3d 1004, 1007 (Fed. Cir. 2002) (quoting C.R. Bard, Inc.

- 25 -


IN THE UNITED STATES DISTRICT COURT F | L Ee
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

rep 8 2905
jg ENWEBER.
CFM CORPORATION wacay © SE IDGE
' YS. DETRICT cou!
Plaintiff, Case No. 02 C 1981
v. Hon. Harry D. Leinenweber

DIMPLEX NORTH AMERICA LTD.,

Defendant.

MEMORANDUM OPINION AND ORDER

Plaintiff CFM Corporation (hereinafter, “CFM”) filed suit for
declaratory judgment of non-infringement, invalidity, and
unenforceability against Defendant Dimplex North America Ltd.
(hereinafter, “Dimplex”) over its U.S. Patent No. 5,642,580 (“the
‘580 patent” or “‘580”). Dimplex’s counterclaim accuses CFM of
infringement. Dimplex filed a Motion for Partial Summary Judgment
of infringement of Claim 1 of the ‘580 patent on all of CFM
products listed in the pleadings, including the HES 30, HES 40
HEF 33, DEF 33, DEF 36, DEF 36 NH, and the Addison and Saratoga
stoves (the “Accused Products”), and for inequitable conduct. CEM
filed a Motion for Summary Judgment of invalidity, specifically for
lack of novelty (anticipation) under 35 U.S.C. § 112(b), and moves
to strike certain evidence.

For the reasons stated herein, Dimplex’s motion for partial
summary judgment of infringement and inequitable conduct is denied

in part and granted in part. CFM’s motion for summary judgment of


onto said diffusing surface produces an image
which resembles moving gasses from a fire; and

a simulated fuel bed positioned adjacent to

said partially reflecting surface .

wherein the image of moving gasses appears to

emanate between the simulated fuel bed and its

image on the screen.
‘580 at col. 8, ll. 15-32. For purposes of the anticipation
analysis, terms that appear in claim 30, which are similar to those
of Claim 1, are defined in the same manner as construed by the
Court in its Claim Construction. See Epcon Gas Sys., Inc. v. Bauer
Compressors, Inc., 279 F.3d 1022, 1030-31 (Fed. Cir. 2002).

In its summary judgment motion for invalidity, CFM argues that
the ‘580 patent was anticipated by European Patent No. EP 0 611 921
A2 (the “*921 patent” or “‘921"). The ‘921 patent discloses an
“(a]pparatus for simulating flames or a solid fuel fire” and was
filed with the European Patent Office on August 24, 1994. Noel
O’Neill, an employee of the Glen Dimplex Group located in Ireland,
was the inventor. The ‘921 patent also references British Patent
No. GB A 1 272 644 (the “‘644 patent” or “*644"), see ‘921 at
col. 3, 11. 18-38, which discloses “Improvements in Apparatus for
Producing Imitation Fire Effects” and was published in 1972.
Patents are presumed valid and CFM bears the burden of

establishing invalidity by clear and convincing evidence. 35
U.S.C. § 282; Beckson Marine, Inc. v. NEM, Inc., 292 F.3d 718, 725

(Fed. Cir. 2002). 35 U.S.C. § 102(b) covers anticipation and

states that “[a] person shall be entitled to a patent unless

-12-


Products do not provide unambiguous guidance when deciding a
summary judgment motion. Dimplex provides manuals and pictures for
some of the Accused Products, but again does not demonstrate that
these diagrams are representative of the other accused products in
suit.

The Court concludes that the parties’ would benefit from trial
where each party can bring forth systematic evidence to demonstrate
that each product either does or does not read on each limitation
to Claim one and the other claims at issue. The Court finds that
the resolution of the infringement issue must await trial.
Dimplex’s Motion for Summary Judgment of Infringement is therefore

DENIED.

Iv. INVALIDITY

CFM moves for summary judgment of invalidity on Claims 1 and
30 of the ‘580 patent and their dependent claims. Claims 5, 7, 13-
16, 24-25 depend from Claim 1 and Claims 31-32 depend from
Claim 30. A dependent claim contains all the limitations for the
claim from which it depends. See 35 U.S.C. § 112, @ 4.

The main difference between Claim 30 and Claim 1 is a rotor
element and the production of an image of moving gasses.
Claim 30's distinct elements read:

a rotor for rotating said flicker element
around said axis;

a screen having a partially reflecting surface

and a diffusing surface, wherein light
reflected from said rotating flicker element

-1l1-


necessary to accomplish the limitation’s function - “transmitting
light from said light source.” Accordingly, the Court amends its
earlier Claim Construction to eliminate the term “light-weight”
from the above described limitation. The clause now reads: “a
stationary or mobile component made of material that contains
openings for transmitting light to produce an impression of moving
flames.”
B. Infringement Analysis
1. “Light Source”

Neither party disputes that the Accused Products all have a
light source as required under claim 1.

2. “{[A] stationary or mobile component made of
material that contains openings for transmitting
light to produce an impression of moving flames.”

CFM fails to raise a genuine issue of material fact as to the
function of the flame effect element. Neither party points to
evidence in the record that disputes that the Accused Products all
have a flame effect structure that functions to “transmit[] light
from said light source.” Accordingly, the Accused Products perform
the function of transmitting light as required by Claim1. “If the
identical function is performed, the next step is to determine
whether the accused device uses the same structure . . . found in
the specification, or {its] equivalents.” IMS Tech., Inc. v. Haas
Automation, Inc., 206 F.3d 1422, 1430 (Fed. Cir. 2000).

The evidence submitted by CFM in its opposition essentially

concedes the existence of the corresponding structure in the

-g-


because the most pertinent prior art would be that actually
referenced in the specification of the ‘580 patent.

The Court agrees with the undisputed evidence that the
Hamilton Beach fireplace uses the Optiflame technology from the
‘707 patent. CEM argues that there is no evidence to demonstrate
that the Hamilton Beach unit is licensed for the Optiflame
technology, but CFM fails to point to any evidence in the record
that disputes Dimplex’s contrary evidence. When prosecuting a
patent, an applicant need not also submit all physical embodiments
of disclosed patent references if the information is cumulative.
See Elk Corp. of Dallas v. GAF Bldg. Materials Corp., 168 F.3d 28,
31 (Fed. Cir. 1999). Further, CFM has not provided any evidentiary
support that points to a threshold intent to deceive regarding this
product. Accordingly, the Court GRANTS Dimplex’s Summary Judgment
Motion on Inequitable Conduct as to the Hamilton Beach fireplace.

2. Electric Log Set

CFM also argues that Dimplex should have disclosed the
existence and details of an electric log set provided to the
inventors by another Dimplex employee. CFM contends that the
electric log set was material because it disclosed a flicker
element with petals that had a reflective surface.

Dimplex acknowledges receipt of the log set, but states that
it was cumulative prior art of U.S. Patent No. 3,699,697 (the “‘697
patent”) and U.S. Patent No. 1,164,143 (the “*‘143 patent”). The

‘697 patent discloses a flicker element situated within a log set

- 22 -


2. GRANTS Dimplex’s motion for summary judgment = on
inequitable conduct regarding the Hamilton Beach electric fireplace

unit, the electric log set, and on the issue of joint inventorship;

3. DENIES Dimplex’s motion for summary judgment on the ‘921
patent;

4. DENIES CFM’s motion for summary judgment of invalidity;
and

5. The Court also denies as moot CFM’s motion to strike

Dimplex’s Exhibits 12 and 21-23 submitted in supporting memoranda.

The Court did not find it necessary to rely upon these exhibits for

purposes of evaluating Dimplex’s summary judgment motion and thus

it does not need to reach the iss of whether such extrinsic
evidence was properly before the C

IT IS SO ORDERED.

Nae

Harry D. Leinenweber, Judge
United States District Court

pated: Mauss Adds
g

- 28 -


read on the accused device exactly. Johnston v. IVAC Corp., 885
F.2d 1574, 1579 (Fed. Cir. 1989). The patentee bears the ultimate
burden of proving patent infringement. See Vivid Tech., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 807 (Fed. Cir. 1999).

Dimplex’s infringement motion concerns Claim 1 of the ‘580
patent. Claim 1 recites:

A flame simulating assembly comprising:

a light source;

a flame effect element having means for
transmitting light from said light source to
produce a moving flame effect;

at least one flicker element having at least
one reflective surface, said flicker element
being positioned intermediate of said light
source and said flame effect element to
reflect light from said light source for
subsequent transmission by said flame effect
element;

a screen having a partially reflecting surface
and a diffusing surface, said flame effect
element extending proximate to said diffusing
surface wherein said transmitted light
produces an image on the screen which
resembles moving flames;

and a simulated fuel bed positioned adjacent
to said partially reflecting surface wherein
an image of the fuel bed is displayed on the
screen and wherein the image of moving flames
appears to emanate between the simulated fuel
bed and its image in the screen.

The Court construed disputed Claim 1 language in its Claim
Construction as follows:
A “flame effect having means for transmitting

light from said light source to produce a
moving flame effect” as construed reads “a


The issue of incorporation by reference is a matter of law for
the court to decide. Advanced Display Sys., Inc. v. Kent State
Univ., 212 F.3d 1272, 1284 (Fed.Cir. 2000) (“[I]f incorporation by
reference is at issue, the court must determine what material
constitutes the single, prior art document.”).

The Court is not limited to the preferred embodiment of the
‘921 patent and can look at patents incorporated by reference into
the original patent. Ultradent Prods., Inc. v. Life-Like
Cosmetics, Inc., 127 F.3d 1065 (Fed. Cir. 1997). A single prior
art reference can incorporate other documents by citing those
documents with enough detail when describing the incorporated
material so “that the material is effectively part of the host
document as if it were explicitly contained therein.” Id. at 1282.
“To incorporate material by reference, the host document must
identify with detailed particularity what specific material it
incorporates and clearly indicate where that material is found in
the various documents.” Advanced Display Sys., 212 F.3d at 1283.

Dimplex cites to cases that do not support its argument that
the ‘644 patent reference is solely background art. Both In re
Bond, 910 F.2d 831 (Fed. Cir. 1990), and Richardson v. Suzuki Motor
Co., 868 F.2d 1226 (Fed. Cir. 1989), only state the well-
established legal conclusion that every element of the claimed
invention must be identically shown in a single prior art
reference. Scripps Clinic & Research Foundation v. Genentech,
Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991), does not exclude all

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‘644 reflective paddle wheel and no other part of the patent, as
described above, is sufficiently explicit to incorporate the
alternative mode to one reasonably skilled in the art as a matter
of law.

B. Anticipation

The Court now turns to the anticipation analysis, which is a
question of fact. Atlas Powder Co., 190 F.3d at 1346. Although
CFM must prove that the ‘921 patent anticipates the ‘580 patent by
clear and convincing evidence because patent validity is presumed,
the Court notes that “‘{wJhen an attacker . .. produces prior art
or other evidence not considered [by] the PTO, there is, however,
no reason to defer to the PTO so far as its effect on validity is
concerned.” Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d
1350, 1359 (Fed. Cir. 1984). Because the prosecution history
indicates that the ‘921 patent was not considered by the Patent and
Trademark Office during the prosecution of the ‘580 patent, there
is no requirement of deference to the PTO’s decision.

“To anticipate, every element and limitation of the claimed
invention must be found in a single prior art reference, arranged
as in the claim.” Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir.
2001). To be arranged as in the same claim “every element of the
claimed invention must be identically shown in a single reference.”
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677
(Fed.Cir. 1988). The description contained in the single prior art
reference “must describe the applicant's claimed invention

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together with the affidavits, if any, show that there is no genuine
issue as to any material fact and that the moving party is entitled
to a judgment as a matter of law.” Fep. R. Civ. P. 56(c). A
genuine issue of triable fact exists only if “the evidence is such
that a reasonable jury could return a verdict for the nonmoving
party.” Pugh v. City of Attica, 259 F.3d 619, 624 (7th Cir. 2001)
(quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106
S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986)).
III. PATENT INFRINGEMENT

Determining patent infringement is a two-step process in which
the Court first construes the claims. Cybor Corp. v. FAS Techs.,
Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). The fact
finder then compares the construed claims to the accused device to
determine, as a question of fact, whether all of the claim
limitations are present in the accused device. Id. at 1454; Int/1
Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1369 (Fed. Cir.
2004).

Summary judgment on the issue of literal infringement is
proper “‘when no genuine issue of material fact exists, in
particular, when no reasonable jury could find that every
limitation recited in the properly construed claim either is or is
not found in the accused device.’” Goldenberg v. Cytogen, Inc.,
373 F.3d 1158, 1163-64 (Fed. Cir. 2004) (quoting Bai v. L & L Wings,
Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998)). For literal
infringement, every limitation of claim 1 of the ‘580 patent must

-3-


v. M3 Sys., 157 F.3d 1340, 1352 (Fed. Cir. 1998)). Conception “is
‘the formation in the mind of the inventor, of a definite and
permanent idea of the complete and operative invention .. . a
Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228
(Fed. Cir. 1994) (quoting Hybritech, Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d1367, 1476 (Fed. Cir. 1986)). One may not qualify as
a joint inventor by “merely assisting the actual inventor after
conception of the claimed invention.” Ethicon, Inc. v. U.S.
Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998) (emphasis
added). Therefore, “critical question . . . is who conceived

the subject matter of the claims at issue.” Id.

The inventors named on the ‘580 patent are Kristoffer Hess,
David Miller MacPherson, and Ignazio Gallo (the “inventors”). The
inventors sent a working prototype of their invention to Arthur
Purton and Noel O’Neill at the Bitech division of the Glen Dimplex
Group in Ireland. CFM contends that O’Neill should have been named
as an inventor on the ‘580 patent.

The record indicates that O’Neill made two modifications and
then returned the prototype to the inventors. The evidence clearly
shows that one of the modifications regarding the positioning of
the flame effect element was not used. This is evident from the
testimony of the inventors and from examining the specifications of
the ‘580 patent. Even if the modifications that O’Neill made were
incorporated into the invention, the record is clear that O’Neill

did not contribute to the conception of the invention. See

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invalidity is denied. CFM’s evidentiary objections are denied as
moot.
I. BACKGROUND

The parties are Canadian corporations that make electric
fireplaces. Dimplex is the owner by assignment of the ‘580 patent
entitled “Flame Simulating Assembly.” The ‘580 patent was issued
in July 1997 and covers aspects of an electric fireplace. The
types of electric fireplaces and stoves at issue are relatively
mobile structures that use mechanical means to create an overall
visual impression of a fire. Several patented versions of these
types of fireplaces are available in the U.S. market, some more
realistic in appearance than others. All the Accused Products are
sold in the U.S. market.

On January 7, 2003, the Court entered a protective order in
this case that outlined guidelines for treatment of confidential
information. Pursuant to that Order, the parties’ briefs, 56.1
statements, supporting affidavits, and other evidence filed in
connection with these motions remain under seal. On April 22,
2004, the Court issued a Claim Construction Order (the “Claim
Construction”) construing certain disputed claim limitations of
claim 1. CFM Corp. v. Dimplex North Am. Ltd., No. 02 C 1981, 2004
WL 887412 (N.D. Ill. Apr. 22, 2004) (“Markman Order”).

II. SUMMARY JUDGMENT

Summary judgment is appropriate when “the pleadings,

depositions, answers to interrogatories, and admissions on file,

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the invention was patented or described in a printed publication in
this or a foreign country or in public use or on sale in this
country, more than one year prior to the date of the application
for patent in the United States.” To demonstrate that the ‘580
patent was anticipated by the prior art, CFM must show that the
single prior art reference contains every limitation of the
contested claims. Trintec Indus., Inc. v. Top-USA Corp., 295 F.3d
1292, 1295 (Fed.Cir. 2002). Anticipation is a question of fact.
Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed. Cir.
1999).

As a preliminary matter, neither party disputes that the ‘921
patent is a prior art reference published more than one year before
the filing of the ‘580 patent.

A. Incorporation by Reference

Dimplex argues that ‘921 cannot anticipate Claims 1 and 30 and
all dependent claims because ‘921 does not use a “flicker element
having at least one reflective surface,” ‘580 at col. 6, ll. 27-32
& col. 8, 11. 17-21, and as construed “a component part having at
least one surface that reflects light in a wavering motion.” (See
Markman Order at 9-10). Dimplex points to the stationary “rear
reflecting means” in Claim 1 of the ‘921 patent to demonstrate that
this component only reflects light in a steady and non-wavering
manner. ‘921 at col. 11, 11. 35-45. Dimplex also points to the
“reflective material” in Claim 8 of the ‘921 patent that “reflect
flashes of light onto the screen to simulate said sparks” to show

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extrinsic evidence, but instead states that the single source rule
does not preclude the use of extrinsic evidence to show what a
reference’s disclosure signified to one of ordinary skill in the
art. See 1-3 Chisum on Patents § 3.02(d). The extrinsic evidence,
however, may only be used “to explain but not expand the meaning of
the reference.” Sunrise Med. HHG, Inc. v. AirSep Corp., 95 F.
Supp. 2d 348, 451 (W.D. Penn. 2000).

The Court finds CFM’s argument that the ‘644 patent reference
is incorporated into ‘921 persuasive. CFM cites to Celeritas Tech
v. Rockwell, which stated that “[a] reference is no less
anticipatory if, after disclosing the invention, the reference then
disparages it. Thus, the question whether a reference ‘teaches
away’ from the invention is inapplicable to an anticipation
analysis.” 150 F.3d 1354, 1361 (Fed.Cir. 1998). The ‘644
reference clearly is not the preferred embodiment of the ‘921
patent, but as Celeritas Tech explains, the fact that the reference
“teaches away” from the invention is not relevant to the
anticipation question. See id. The ‘921 patent explicitly states
that ‘644's reflective paddle wheel is an “alternative way of
trying to introduce colour into apparatus for producing imitation
fire effects.” ‘921 at col. 3, 11. 18-20. The reference then goes
on to explain, with particularity, the alternative mechanism
itself. Id. at col. 3, ll. 20-38. The Court finds the detailed
description of the reflective paddle wheel to be sufficent.

Accordingly, the Court concludes that the detailed reference to

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