United States District Court, D. Delaware
W. Shaw, Jeffrey T. Castellano, and Andrew E. Russell, SHAW
KELLER LLP, Wilmington, DE James R. Nuttall, Katherine H.
Johnson, Randal S. Alexander, Robert F. Kappers, and John L.
Abramic, STEPTOE & JOHNSON LLP, Chicago, IL Boyd Cloern,
STEPTOE & JOHNSON LLP, Washington, DC Attorneys for
Melanie K. Sharp and Robert M. Vrana, YOUNG CONAWAY STARGATT
& TAYLOR, LLP, Wilmington, DE J. Michael Huget and Brian
J. Arnold, HONIGMAN MILLER SCHWARTZ AND COHN LLP, Chicago, IL
Sarah E. Waidelich, HONIGMAN MILLER SCHWARTZ AND COHN LLP,
Ann Arbor, MI Attorneys for Defendants.
U.S. DISTRICT JUDGE
before the Court in this patent infringement action are the
(i) Plaintiff American Axle & Manufacturing, Inc.'s
("A AM" or "Plaintiff) Motion for Summary
Judgment of Infringement (D.I. 155; see also D.I.
(ii) AAM's Motion for Summary Judgment of No. Invalidity
Pursuant to 35 U.S.C. §§ 101 and 102 (as to the
Laskey Reference) (D.I. 159; see also D.I. 206);
(iii) AAM's Motion to Exclude Portions of the Testimony
of Neapco's Technical Expert, Steven Becker, and
Neapco's Damages Expert, Michael Chase (D.l. 157; see
also D.I. 206);
(iv) Defendants Neapco Holdings LLC and Neapco Drivelines
LLC's (collectively, 1 "Neapco" or
"Defendants") Motion for Summary Judgment of
Invalidity and/or Non-Infringement (D.I. 149);
(v) Neapco's Supplemental Motion for Summary Judgment of
Invalidity and/or Non-Infringement as to the New Claims (D.I.
(vi) Neapco's Motion to Preclude Certain Expert Testimony
and Evidence (D.I. 208).
filed suit against Neapco on December 1.8, 2015, alleging
infringement of U.S. Patent Nos. 7, 774, 911 (the
"'911 patent"), 8, 176, 613 (the "'613
patent"), and 8, 528, 180 (the "'180
patent"). (See D.I. 1) The pending motions are
principally (if not entirely) addressed to the'911
'911 patent "generally relates to shaft assemblies
for transmitting rotary power in a driveline and more
particularly to a method for attenuating driveline vibrations
transmitted through a shaft assembly." ('911 patent
col. 1:4-7) The reason for attenuating such vibrations is to
reduce the tonal noise that can be heard by occupants in the
vehicle as a result of the vibrations. (See Id. col.
1:8-23) "Modern automotive propshafts are commonly
formed of relatively thin-walled steel or aluminum tubing and
as such, can be receptive to various driveline excitation
sources, " which "can typically cause the propshaft
to vibrate in a bending (lateral) mode, a torsion mode and a
shell mode." (Id. col. 1:39-44) Several
techniques existed in the prior art "to attenuate
vibrations in propshafts including the use of weights and
liners." (Id. col. 1:53-54) However, many of
the prior art liners only attenuate shell mode vibrations and
not also bending or torsion mode vibrations. (See
Id. col. 2:34-38) The '911 patent purports to
provide "an improved method for damping various types of
vibrations in a hollow shaft, " which facilitates the
damping of shell mode vibration as well as bending mode
vibration and/or torsion mode vibration. (Id. col.
April 7, 2017, the Court issued its Claim Construction
Opinion (D.I. 113), which found certain claims of the
'911 patent indefinite.
August 11, 2017, the parties filed motions with respect to
the claims that remained asserted after the Court's Claim
Construction Opinion. In particular, the motions were
directed to '911 patent claims 22-24, 26, 27, 31, and
34-36 (the "Original Claims"). (D.I. 149, 155, 157,
159) The parties completed briefing on their initial motions
on September 15, 2017.
meantime, on September 6, 2017, the Court granted AAM's
motion for reconsideration of the Claim Construction Opinion,
finding that new evidence demonstrated that Defendants had
failed to prove that any of the claims of the '911 patent
were indefinite. (D.I. 180) The Court then ordered the
parties to submit supplemental briefing to address how the
pending motions might apply to the claims that had been
initially invalidated as indefinite, but were now
newly-revived in the case. In particular, the supplemental
briefing relates to claims 1-6, 12, 13, and 19-21 of the
'911 patent (the "New Claims, " and
collectively with the Original Claims, the "Asserted
Claims"). (D.I. 188) The parties submitted supplemental
briefs and motions on December 1, 2017 and responsive briefs
on December 18, 2017.
the parties filed a total of 287 pages of briefing in
relation to their many motions. The Court heard oral argument
on January 18, 2018. (D.I. 217 "("Tr."))
claim 22 is representative of the Original Claims and reads:
A method for manufacturing a shaft assembly of a driveline
system, the driveline system further including a first
driveline component and a second driveline component, the
shaft assembly being adapted to transmit torque between the
first driveline component and the second driveline component,
the method comprising:
providing a hollow shaft member;
tuning a mass and a stiffness of at least one ...