Nano-Second Technology Co Ltd v. Dynaflex International

Filing 271

ORDER Re: Defendants' Motion for Partial Summary Judgment of Invalidity 230 by Judge Ronald S.W. Lew: the Court GRANTS Defendants' Motion for Partial Summary Judgment of Invalidity. SEE ORDER FOR FURTHER AND COMPLETE DETAILS. (jre)

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1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 NANO-SECOND TECHNOLOGY CO., ) LTD., a Taiwanese ) 12 Corporation, ) ) 13 ) Plaintiff, ) 14 ) v. ) 15 ) ) 16 DYNAFLEX INTERNATIONAL, ) a California Corporation., ) 17 and GFORCE Corp. d/b/a DFX ) SPORTS & FITNESS, a Nevada ) 18 Corporation, ) ) 19 Defendants. ) 20 CV 10-9176 RSWL (MANx) ORDER Re: Defendants’ Motion for Partial Summary Judgment of Invalidity [230] Currently before the Court is Defendants Dynaflex 21 International and GForce Corporation’s (“Defendants”) 22 Motion for Partial Summary Judgment of Invalidity 23 [230]. The Court having reviewed all papers submitted 24 pertaining to this Motion and having considered all 25 arguments presented to the Court, NOW FINDS AND RULES 26 AS FOLLOWS: 27 The Court hereby GRANTS Defendants’ Motion for 28 Partial Summary Judgment. 1 1 2 I. BACKGROUND Plaintiff Nano-Second Technology Co. (“Plaintiff”) 3 brought this Action against Defendant Dynaflex 4 International and Defendant GForce Corporation d/b/a 5 DFX Sports & Fitness (“Defendants”) alleging 6 infringement of Plaintiff’s patent, United States 7 Patent No. 5,800,311 (“‘311 Patent”). 8 The patent-in-suit involves a gyroscopic wrist 9 exerciser containing light emitting diodes, a counter, 10 and a string used to impart rotation on the rotor. See 11 ECF No. 230-1, Schwartz Decl., Ex. 1. (the ‘311 12 Patent). 13 Specifically, the wrist exerciser (10) claimed in 14 the ‘311 patent includes a spherical rotor (40) mounted 15 on a ring (30) within a hollow spherical casing 16 (60),(11). The exerciser comes with a flexible rope 17 (56) with a rigid end (55) that is inserted into a 18 driving hole (45) formed in the groove (42) of the 19 rotor (40). The rope (56) sits on the groove (42) and 20 wraps around the rotor (40). The user can hold the 21 exerciser (10) in one hand, while pulling the rope (56) 22 with the other, to impart rotation to the rotor (40). 23 Once the rotor (40) is given an initial spin, the user 24 can gyrate the exerciser manually to cause the rotor to 25 precess about an axis perpendicular to its spin axis. 26 The wrist exerciser (10) is also equipped with 27 lighting elements (43) in the form of light emitting 28 diodes (LEDs) arranged in the groove (42) of the rotor 2 1 (40). The LEDs are energized by coils (53) that are 2 mounted on the rotor (40) and a magnet (34) that is 3 mounted on the ring (30). The coils rotate within the 4 magnetic lines of force of the magnet, which induces an 5 electric current within the coils, and provide 6 electricity to the LEDs. Finally, the wrist exerciser 7 contains a counter (20) that displays the number of 8 rotations of the rotor. 9 Plaintiff has asserted claims 1-5, 7, 9-12, 15, and 10 17 (“asserted claims”) of the ‘311 Patent in this 11 Action. Defendant moves for partial summary judgment 12 of invalidity on each of these claims. Claims 1 and 15 13 are independent claims. 14 Claim 1 recites the following: 15 A wrist exerciser comprising a spherical casing 16 having a first axis and a second axis 17 substantially perpendicular to each other, a 18 ring received within the spherical casing to be 19 concentric with and rotatable about the first 20 axis with respect to the casing and a spherical 21 rotor received within the ring and having a 22 rotational axis co-linear with the second axis 23 to be rotatable about the second axis with 24 respect to both the casing and the ring, the 25 rotor having an outer surface on which a 26 circumferential groove is formed with a driving 27 hole formed in the groove, a flexible rope 28 having a rigid end receivable in and engageable 3 1 with the driving hole. The flexible rope being 2 windable around the outer surface of the rotor 3 along the groove through a top opening formed 4 on the casing so that the rotor is driven to 5 rotate about the second axis by pulling to 6 unwind the rope from the rotor, light 7 generation means mounted on the rotor to emit 8 light during the rotation of the rotor. 9 Claims 2, 5, and 9 depend on Claim 1. Claim 2 10 discloses the additional limitation of “electrically 11 driving lighting elements disposed in the groove” and 12 an “electrical generator means.” Claim 5 discloses the 13 additional limitation of a “counter”. Claim 9 14 discloses the further limitation of partition plates 15 that generate sound during rotation of the rotor. 16 Claim 7 depends on Claim 5, and discloses a counter 17 attached to the bottom opening of the casing, with a 18 proximity detector actuateable by a magnet fixed in the 19 groove of the rotor. 20 Claim 15 is identical to Claim 1 except that Claim 21 15 recites “a counter being provided to count the 22 rotations of the rotor about the second axis” instead 23 of “light generation means.” Claim 17 depends upon 24 Claim 15, and discloses the additional limitation of a 25 counter having a proximity detector actuateable by a 26 magnet fixed in the groove of the rotor. 27 Previously, the Court construed the following 28 claim terms: “driving hole”; “light generation means”; 4 1 and “electrical generator means” [97]. 2 The Court construed “light generation means” as a 3 means-plus-function claim. The claimed function is “to 4 generate light and emit light during rotation of the 5 rotor”. The Court found that the following structure 6 corresponds to this function: 7 A ring magnet fixed to the ring and coaxial 8 with the second axis and two coils fixed to the 9 rotor and corresponding to the ring magnet for 10 generating electrical current to power the 11 light-emitting diodes [LEDs], which are 12 disposed in the groove of the rotor and 13 electrically connected to the coils. 14 The Court construed “electrical generator means” as 15 a means-plus-function limitation. The claimed function 16 is “supplying electrical current to the lighting 17 elements.” The Court construed the corresponding 18 structure as “coils that cut through the magnetic line 19 of force provided by the ring magnet; and a ring magnet 20 fixed to the ring and coaxial with the second axis and 21 two coils fixed to the rotor and corresponding to the 22 ring magnet for generating electrical current to power 23 the LEDs.” 24 In its Motion, Defendants assert that at least five 25 pieces of prior art render the ‘311 Patent obvious: 26 U.S. Patent No. 5,353,655 (“the ‘655 Patent”); U.S. 27 Patent No. 3,726,146 (“the Mishler ‘146 Patent”); U.S. 28 Patent No. 3,945,146 (“the Brown ‘146 Patent”); U.S. 5 1 Patent No. 4,150,580 (“the ‘580 Patent”); and U.S. 2 Patent No. D365,612 (“the ‘612 Patent”). 3 II. LEGAL STANDARD 4 A. Summary Judgment 5 Summary judgment is appropriate when there is no 6 genuine issue of material fact and the moving party is 7 entitled to judgment as a matter of law. 8 P. 56. Fed. R. Civ. A genuine issue is one in which the evidence is 9 such that a reasonable fact-finder could return a 10 verdict for the non-moving party. Anderson v. Liberty 11 Lobby, 477 U.S. 242, 248 (1986). 12 A party seeking summary judgment always bears the 13 initial burden of establishing the absence of a genuine 14 issue of material fact. 15 U.S. 317, 322 (1986). Celotex Corp. v. Catrett, 477 “Where the moving party will 16 have the burden of proof on an issue at trial, the 17 movant must affirmatively demonstrate that no 18 reasonable trier of fact could find other than for the 19 moving party.” Soremekun v. Thrifty Payless, Inc., 509 20 F.3d 978, 984 (2007). 21 Once the moving party makes this showing, the 22 non-moving party must set forth facts showing that a 23 genuine issue of disputed material fact remains. 24 Celotex, 477 U.S. at 322. The non-moving party is 25 required by Federal Rule of Civil Procedure 56(e)1 to go 26 27 1 The Federal Rules of Civil Procedure were amended on 28 December 1, 2010. Federal Rule of Civil Procedure 56(e) has now been codified as Federal Rule of Civil Procedure 56(c). 6 1 beyond the pleadings and designate specific facts 2 showing a genuine issue for trial exists. Id. at 324. 3 B. Obviousness 4 A party seeking to establish that patent claims are 5 invalid must overcome the statutory presumption of 6 validity set forth in 35 U.S.C. § 282 by clear and 7 convincing evidence. Impax Labs., Inc. v. Aventis 8 Pharms., Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008). 9 A patent is invalid for obviousness under 35 U.S.C. 10 § 103 “if the differences between the subject matter 11 sought to be patented and the prior art are such that 12 the subject matter as a whole would have been obvious 13 at the time the invention was made to a person having 14 ordinary skill in the art.” Takeda Chem. Indus. v. 15 Alphapharm Pty., Ltd., 492 F.3d 1350, 1355 (Fed. Cir. 16 2007). 17 Obviousness analysis is “objective”: 18 Under § 103, the scope and content of the prior art 19 are to be determined; differences between the prior 20 art and the claims at issue are to be ascertained; 21 and the level of ordinary skill in the pertinent 22 art resolved. 23 obviousness or nonobviousness of the subject matter 24 is determined. 25 commercial success, long felt but unsolved needs, 26 failure of others, etc., might be utilized to give 27 light to the circumstances surrounding the origin 28 of the subject matter sought to be patented. Against this background the Such secondary considerations as 7 1 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 2 (2007) (quoting Graham v. John Deere Co. of Kansas 3 City, 383 U.S. 1 (1966), and stating that the Graham 4 factors still control). 5 “[A] patent composed of several elements is not 6 proved obvious merely by demonstrating that each of its 7 elements was, independently, known in the prior art. 8 Although common sense directs one to look with care at 9 a patent application that claims as innovation the 10 combination of two known devices according to their 11 established functions, it can be important to identify 12 a reason that would have prompted a person of ordinary 13 skill in the relevant field to combine the elements in 14 the way the claimed new invention does.” 15 Id. at 418. In other words, obviousness depends on “whether the 16 improvement is more than the predictable use of prior 17 art,” and whether there were reasons (e.g. demand, 18 need, or problem known in the field or market) to 19 combine the known elements or make such improvements in 20 the fashion claimed by the patent at issue. Id. at 21 417-18 (emphasis added). 22 The “combination of familiar elements according to 23 known methods” is likely to be obvious when it “does no 24 more than yield predictable results.” Id. at 416. If 25 an ordinarily skilled artisan can implement a 26 predictable variation of a work available in the same 27 field of endeavor or a different one, section 103 28 likely bars patentability of the variation. 8 Id. 1 “Whether an invention would have been obvious under 2 35 U.S.C. § 103 is a question of law . . . based upon 3 underlying factual questions.” 4 at 1355. Takeda Chem., 492 F.3d Summary judgment may be appropriate if “the 5 content of the prior art, the scope of the patent 6 claim, and the level of ordinary skill in the art are 7 not in material dispute, and the obviousness of the 8 claim is apparent in light of these factors.” KSR 9 Int’l Co., 550 U.S. at 427 (citing Graham, 383 U.S. at 10 17). 11 12 III. EVIDENTIARY OBJECTIONS As part of its Reply, Defendants filed an Ex Parte 13 Application to strike portions of the declaration of 14 Tony M. Lu, Plaintiff’s counsel, filed with Plaintiff’s 15 Opposition [264]. The Court construed the Ex Parte 16 Application as part of the Reply because the Ex Parte 17 Application contains evidentiary objections that are 18 ordinarily filed as part of the Reply. Plaintiff did 19 not file a response. 20 The Court SUSTAINS Defendants’ evidentiary 21 objections to Paragraphs 5 through 8, and 10 through 14 22 because they offer improper legal conclusions or expert 23 testimony. 24 IV. ANALYSIS 25 A. Ordinary Skill in the Art 26 The obviousness analysis requires determining the 27 level of ordinary skill in the pertinent art. 28 Graham, 383 U.S. at 17-18. See “Ascertaining the level of 9 1 ordinary skill in the art is necessary for maintaining 2 objectivity in the obviousness inquiry.” See Ryko Mfg. 3 Co. v. Nu-Star, Inc., 950 F.2d 714, 719 (Fed. Cir. 4 1991). Factors to consider include the educational 5 level of the inventor, the educational level of those 6 who work in the relevant industry, and the 7 sophistication of the technology involved. 8 See id. Defendants contend that the level of ordinary skill 9 in the art is as follows: a person having two or more 10 years of post-secondary education in mechanical design 11 and one or two years of experience designing toys, 12 fitness devices or other electromechanical objects. 13 Alternatively, one of ordinary skills could have been a 14 high school graduate with aptitude for mechanical 15 devices and two or more years designing toys, fitness 16 devices, or other electromechanical objects. Schwartz 17 Reply Decl. Ex. 1, Expert Report of Dr. Vijay Gupta on 18 Defendants’ Contention that the Asserted Claims of U.S. 19 Patent No. 5,800,311 Are Invalid (“Gupta Report”), ¶ 20 49. 21 On the other hand, Plaintiff contends that a person 22 of ordinary skill in the art would have a good 23 understanding of the theory and practice of electronics 24 hardware and mechanical design. A person of ordinary 25 skill would thus have a Bachelor’s degree or equivalent 26 in Electrical Engineering, Mechanical Engineering, or 27 Electronics and a year of relevant experience. Lu 28 Decl., Ex. 1, Expert Report of Dr. Chi On Chui (“Chui 10 1 Report”), ¶ 34. 2 The Court finds that the slight differences 3 identified by the Parties are not material to this 4 Motion. Although Plaintiff appears to dispute the 5 level of ordinary skill in the art, citing a slightly 6 higher level, Plaintiff has not demonstrated how this 7 is relevant to any of its analysis. For the purposes 8 of this Motion, the Court assumes that a person of 9 ordinary skill in the art possesses the qualities 10 identified by Plaintiff: one of ordinary skill in the 11 art would have a good understanding of electronics 12 hardware and mechanical design. Such person will have 13 a Bachelor’s degree from a four-year college in 14 Electrical Engineering, Electronics, and Mechanical 15 Engineering, and a year of relevant experience. 16 B. Scope and Content of the Prior Art 17 Under the Graham test for obviousness, the Court 18 must also determine the scope and content of the prior 19 art. The scope of prior art is only that art which is 20 analogous. 21 Cir. 1992). See In re Clay, 966 F.2d 656, 658-59 (Fed. Analogous art is art that is not “too 22 remote to be treated as prior art.” 23 F.2d at 657. In re Clay, 966 In addition, a prior art reference is 24 analogous if it is from the same “‘field of endeavor,’ 25 even if it addresses a different problem, or, if not 26 within the same field, if the reference is ‘reasonably 27 pertinent’ to the particular problem with which the 28 inventor is involved.” In re Conte, 36 Fed. Appx. 446, 11 1 450, 2002 WL 1216965, *4 (Fed. Cir. 2002) (citing In re 2 Clay, 966 F.2d at 658-59). The determination of 3 relevant prior art is a question of fact. In re Clay, 4 966 F.2d at 658. 5 Relevant prior art is further defined by 35 U.S.C. 6 §§ 102(a) and (b), which limit the time frame within 7 which prior art can be found. Sections 102(a) and (b) 8 provide: 9 A person shall be entitled to a patent unless -- 10 (a) the invention was known or used by others in 11 this country, or patented or described in a printed 12 publication in this or a foreign country, before 13 the invention thereof by the applicant for patent, 14 or 15 (b) the invention was patented or described in a 16 printed publication in this or a foreign country or 17 in public use or on sale in this country, more than 18 one year prior to the date of the application for 19 patent in the United States. 20 Defendants contend that the asserted claims of the ‘311 21 patent are invalid because they are obvious in view of 22 prior art. Defendants point to five prior art patents 23 in doing so: 24 1. 25 The ‘655 Patent issued on October 11, 1994. U.S. Patent No. 5,353,655 (“the ‘655 Patent”): The 26 ‘655 Patent discloses a gyroscopic wrist exerciser with 27 a spherical housing (10) and a rotor (12) within the 28 housing. The rotor is mounted on a shaft (14) that 12 1 provides the spin axis (or the first axis) (36) for the 2 rotor. The shaft ends (28) fit in notches (26) in a 3 circular guide ring (24). The circular guide ring (24) 4 sits in a circumferentially-extending groove (22) in 5 the housing. The guide ring (24) rotates about the 6 groove (22) around a second axis perpendicular to the 7 ring. A user can initiate the rotation of the rotor by 8 engaging the open end (16) of the casing or by running 9 the device along a surface. The user can also manually 10 gyrate the wrist exerciser, about a third axis 11 perpendicular to the first and second axes, causing the 12 rotor to precess about the second axes. This generates 13 a torque about the third axis. 14 The wrist exerciser also includes coils (42) and 15 permanent magnets (41) that use the rotation of the 16 rotor to “generate electricity for operating various 17 electrical visual or audio devices”. 18 include lights or counters. These devices can In one embodiment of the 19 patent, the coil (42) is embedded in the housing (10), 20 and the magnets (41) are mounted in the “outer 21 periphery of the rotor”. In another embodiment, the 22 magnets are embedded in the housing and the coil is 23 mounted on the rotor. The coils form a circuit with 24 brushes and plate-like members, providing electricity 25 to the audio or visual devices. 26 2. 27 28 /// 13 See Schwartz Decl. Ex. 1 2. U.S. Patent No. 3,726,146 (“the Mishler ‘146 2 Patent”): 3 The Mishler ‘146 Patent issued on April 10, 1973. 4 The patent discloses a hand-held gyroscopic device 5 comprising of a rotor (12) mounted within a cylinder 6 (10) for rotation about perpendicular axes. 7 includes a shaft (14) having a hole (34). The rotor The hole 8 (34) receives a string that can be wrapped around the 9 shaft (14). The user can impart rotation on the rotor 10 by pulling on the string, and can manually gyrate the 11 spinning rotor to cause the rotor to precess, 12 generating a torque felt by the user. 13 3. Id. Ex. 4. U.S. Patent No. 3,945,146 (“the Brown ‘146 14 Patent”): 15 The Brown ‘146 Patent issued on March 23, 1976. It 16 discloses a gyroscope with a casing (11) housing a 17 rotor (42), a shaft (26) and a starter element (39). 18 A starter cord (22) is wound around a hub (50) of the 19 starter element (39). Pulling the cord imparts 20 rotation to the starter element. Id. Ex. 5. 21 4. 22 The ‘580 Patent issued on April 24, 1979, and U.S. Patent No. 4,150,580 (“the ‘580 Patent”): 23 discloses a gyroscopic exerciser consisting of a 24 spherical shell (10) and a rotor (18) mounted within 25 the shell. The rotor has partition plates (90-96) that 26 divide the central bore of the rotor into quadrants. 27 The plates pull air into the shell during high 28 rotational activity, cooling the exerciser. 14 Id. Ex. 6. 1 5. U.S. Patent No. D365,612 (“the ‘612 Patent”): 2 The ‘612 Patent issued on December 26, 1995, which 3 is a design patent for a gyroscopic exerciser. The 4 patent depicts a rotor mounted for rotation within a 5 spherical housing. 6 Id. Ex. 7. Defendants also contend that gyroscopic devices 7 have appeared in advertisements since 1991. A number 8 of these devices use string wound within a 9 circumferential groove in the rotor to impart rotation 10 on the rotor. 11 Schwartz Decl. Ex. 8. The Court finds that the prior art cited above are 12 analogous prior art and sufficient to establish 13 obviousness by clear and convincing evidence. Each of 14 the prior arts are in the same field of endeavor as the 15 ‘311 Patent, because they all relate to gyroscopic 16 exercisers or gyroscopes. Plaintiff does not dispute 17 the use of Defendants’ cited prior art. 18 Further, the cited prior art also conforms to the 19 time requirements of 35 U.S.C. §§ 102(a) and (b), 20 because they were printed or patented before the filing 21 of the ‘311 Patent, which is December 3, 1997. 22 Schwartz Decl. Ex. 1. The Court notes that none of 23 these references were considered by the U.S. Patent and 24 Trademark Office (USPTO) during the initial examination 25 of the ‘311 Patent. 26 C. The Differences Between the Prior Art and Claimed 27 Invention 28 The final element in the Graham analyses requires 15 1 the determination of any differences between the 2 teachings found in the prior art and the claimed 3 invention, from the vantage point of a hypothetical 4 person with ordinary skill in the art. See Graham, 383 5 U.S. at 17-18; Velander v. Garner, 348 F.3d 1359, 1380 6 (Fed. Cir. 2003). The claims of the patent-in-suit 7 must be considered “as a whole.” W.L. Gore & Assoc., 8 Inc. v. Garlock, Inc., 721 F.2d 1540, 1547-48 (Fed. 9 Cir. 1983). It is “[t]he claims, not [the] particular 10 embodiments [that] must be the focus of the obvious 11 inquiry.” Jackson Jordan, Inc. v. Plasser Am. Corp., 12 747 F.2d 1567, 1578 (Fed. Cir. 1984). Although it is 13 entirely proper to use the specification of the patent 14 to interpret what the patentee meant by a word or 15 phrase in a claim, adding to the claim an extraneous 16 limitation appearing in the specification is improper. 17 See E.I. du Pont de Nemours & Co. v. Phillips Petroleum 18 Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988) (citations 19 omitted). 20 On balance, the Court finds that there is little 21 difference in the teachings of the prior art and the 22 independent claims of the ‘311 Patent. 23 As to Claim 1, as argued by Defendants, the ‘655 24 Patent teaches a spherical casing and a rotor received 25 in a ring, which rotates about an axis perpendicular to 26 the ring. 27 The ring sits within the housing. The ‘655 Patent also teaches the use of magnets and 28 coils to generate electricity used to energize LEDs, as 16 1 claimed in the ‘311 Patent. Although the LEDs, 2 magnets, and coils of the ‘655 Patent are not arranged 3 in the same manner as in the ‘311 Patent, they perform 4 the same function, and achieve the same result. As 5 described by Defendants, in both the ‘311 Patent and 6 the ‘655 Patent, the coils generate electricity by 7 cutting through the magnet’s lines of force. The 8 location of the magnets, coils, and LEDs is merely a 9 matter of design choice and does not change the overall 10 operation of the exerciser. There are only a few 11 places in the exerciser where one of ordinary skill 12 could place a magnet, coils, and lighting elements. 13 Gupta Report ¶¶ 88, 92 (“Details of the actual size, 14 shape, type, and number of magnets and coils and their 15 specific locations on the rotor and housing are 16 essentially design choices and not new inventions.”). 17 A person of ordinary skill in the art would be expected 18 to consider and effectuate mere design changes to the 19 gyroscope involving the arrangement of magnets, coils, 20 electrical circuits, and lights. Gupta Report ¶ 89 21 (“Someone designing a gyroscopic wrist exerciser in 22 1997, and wanting to add some form of electrical 23 generator to run lights or other devices, could start 24 with a structure equivalent to the electrical generator 25 disclosed in the ‘655 Patent. It is a matter of choice 26 for one of ordinary skill.”). 27 Plaintiff has not identified how the specific 28 location of the LEDs, magnets, and coils in the ‘311 is 17 1 distinguishable from the location of the magnets, 2 coils, and LEDs in the ‘655 Patent, or somehow 3 generates a novel or unexpected result. See 4 Application of Kuhle, 526 F.2d 553, 555 (C.C.P.A. 1975) 5 (“[T]he particular placement of the [battery] contact 6 provides no novel or unexpected result. The manner in 7 which electrical contact is made for Smith’s battery 8 would be an obvious matter of design choice within the 9 skill of the art. . . . use of a spring-loaded contact 10 in the manner claimed is well known with the common 11 flashlight.”) (citations omitted). Plaintiff cites to 12 its expert’s testimony that the location of the coils 13 and magnets in the ‘311 Patent results in a more 14 “efficient” means to generate electricity, but this 15 opinion is conclusory and unsupported by any evidence. 16 Thus the Court finds that it is insufficient to defeat 17 summary judgment. Telemac Cellular Corp. v. Topp 18 Telecom, Inc., 247 F.3d 1316 (Fed. Cir. 2001) (“broad 19 conclusory statements offered by [Plaintiff’s] experts 20 are not evidence and are not sufficient to establish a 21 genuine issue of material fact.”). 22 The only limitation of Claim 1 that the ‘655 Patent 23 does not teach is the use of a string to impart 24 rotation on the rotor. The Mishler ‘146 and the Brown 25 ‘146 both teach this missing limitation. Although 26 neither discloses the use of a groove formed on the 27 surface of the rotor to accommodate a string or a 28 string with a rigid end, one of the ordinary skill 18 1 would have found it obvious to modify the rotor of the 2 ‘655 Patent to contain a groove, and to make the string 3 end rigid. A rigid end makes it easier to insert a 4 string into a driving hole, and a groove in the rotor 5 would enable the use of the string to impart rotation 6 on the rotor. Gupta Report ¶ 111. These are merely 7 design alternatives to solving the problem of how to 8 impart rotation on the rotor. Id. ¶ 111. Further, the 9 known prior art depicted in Figure 5 of the ‘311 Patent 10 depicts the use of a groove on the rotor, a driving 11 hole, and a flexible rope with a rigid end. 12 Next, the Court finds that there was an incentive 13 to combine the teachings of the ‘655 Patent with the 14 Mishler ‘146 and Brown ‘147 to provide an alternative 15 means to impart rotation to the rotor of the ‘655 16 Patent. The Mishler ‘146 Patent itself identifies the 17 use of a string as an alternative to spinning the rotor 18 by hand. Schwartz Decl., Ex. 4 (Mishler Patent), 3:29- 19 40 (“It will be apparent that the rotor 12 of FIGS. 1 20 and 2 can be given an initial spin by holding the 21 support structure 10 of the device in one hand and 22 rapidly moving the other hand in a direction 23 perpendicular to the shaft 14 in a path which engages 24 the palm of the hand with the rim of the rotor. 25 Alternatively the shaft 14 may have a hole 34 extending 26 diametrically through the shaft as shown in FIG. 2 and 27 one end of a string may be inserted through such hole 28 and the string wrapped around the shaft. 19 Pulling the 1 string will then spin the rotor 12.”). The incentive 2 to combine prior art references can come from the prior 3 art itself or be reasonably inferred from the “nature 4 of the problem to be solved, leading inventors to look 5 to references related to solutions to that problem.” 6 Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 7 F.3d 1568, 1573 (Fed. Cir. 1996). Further, Defendants 8 have provided evidence, which Plaintiff does not 9 dispute, that the wrist exerciser industry sought to 10 improve the attractiveness of ordinary gyroscopic 11 exercisers to consumers by adding additional features, 12 such as an alternative means to impart rotation on the 13 gyroscope and fanciful lighting elements. 14 Decl. ¶¶ 104-105. See Gupta A person of ordinary skill would be 15 motivated to make improvements and add appealing 16 features to a basic wrist exerciser to enhance its 17 marketability. 18 Id. ¶ 109-110. Plaintiff’s only other argument is that there is 19 “no reasonable expectation of success” to combine the 20 teachings of the ‘655 and Mishler and Brown ‘146 21 Patents, but again this is conclusory. Further, this 22 is not a requirement to finding obviousness. See KSR 23 Int’l Co., 550 U.S. at 415 (holding that the 24 obviousness analysis is flexible and expansive). 25 The Court finds the remaining independent claim, 26 Claim 15, is identical to Claim 1 except that Claim 15 27 recites “a counter being provided to count the 28 rotations of the rotor about the second axis” instead 20 1 of “light generation means.” 2 the use of a counter. The ‘655 Patent teaches For the reasons discussed above 3 in relation to Claim 1, the Court finds Claim 15 4 obvious. 5 The Court finds the remaining dependent claims of 6 the ‘311 Patent obvious, as follows. 7 Claim 2 of the ‘311 Patent is obvious over the ‘655 8 Patent in view of the Mishler ‘146 or Brown ‘146 9 Patents. The claimed function of Claim 2 is similar to 10 that disclosed in the ‘655 Patent. In the ‘655 Patent, 11 electricity is generated by coils and magnets that 12 energize LEDs connected to the coils. Further, the 13 claimed structure of Claim 2, involving the arrangement 14 of magnets and coils on the rotor, is similar to the 15 arrangement of magnets and coils disclosed in the ‘655 16 Patent, as discussed above. 17 Claim 3 depends on Claim 2, and adds “wherein the 18 generator means comprises at least one coil of 19 conductive wire fixed on the rotor to be in electrical 20 connection with the lighting elements and a magnet 21 fixed to the ring and having magnetic line of force, 22 the magnet being positioned corresponding to the coil 23 so that the rotation of the rotor moves the coil to cut 24 through the magnetic line of force of the magnet and 25 thus induce an electrical current in the conductive 26 wire of the coil which is supplied to light the 27 lighting elements.” The Court finds that for the same 28 reasons as Claims 1 and 2, Claim 3 is obvious over the 21 1 ‘655 Patent in view of the Mishler ‘146 or Brown ‘146 2 patents as applied to Claim 1. The magnets and coils 3 of the ‘655 Patent generate an electrical current, as 4 the coils “cut through the magnetic line of force of 5 the magnet”. The disposition of the coils and magnets 6 is merely a design choice. 7 Claim 4 depends on Claim 3, and adds “wherein the 8 generator means comprises two coils provided on two 9 opposite sides of the rotational axis of the rotor.” 10 The Court finds that for the same reasons as Claims 111 3, Claim 4 is obvious over the ‘655 Patent in view of 12 the Mishler ‘146 or Brown ‘146 patents as applied to 13 Claim 1. Again, although Plaintiff argues that the 14 ‘655 Patent discloses a different arrangement of coils 15 and magnets than the ‘311 Patent, it has not explained 16 how the structure disclosed in the ‘311 Patent is 17 novel. As discussed above, the arrangement of the 18 magnets and coils in the ‘655 Patent generates an 19 electric current in the same way as the magnets and 20 coils in the ‘311. How they are arranged is a matter 21 of design choice. 22 Claim 5 depends on Claim 1, but adds a “counter.” 23 For the reasons discussed above for Claim 1, the Court 24 finds that Claim 5 is obvious over the ‘655 Patent in 25 view of the Mishler ‘146 and Brown ‘146 Patents as 26 applied to Claim 1. Plaintiff acknowledges that the 27 ‘655 Patent discloses a counter. The Court finds that 28 there was a motivation to add a counter to a wrist 22 1 exerciser because it would have enhanced the 2 attractiveness of the wrist exerciser to customers. 3 Gupta Report ¶ 117. 4 Claim 7 depends on Claim 5, and adds “wherein the 5 casing comprises a bottom opening and wherein the 6 counter comprises a surface which is attached to the 7 bottom opening of the casing, the surface having a 8 proximity detector mounted thereon to be corresponding 9 to and actuateable by a magnet fixed in the groove of 10 rotor so as to obtain the rotation turns of the rotor, 11 the counter comprising a display to show number of the 12 rotation turns.” The Court finds that Claim 7 is 13 obvious over the ‘655 Patent in view of the Mishler 14 ‘146 or Brown ‘146 Patent as applied to Claim 1. The 15 ‘655 Patent discloses the use of a counter on a wrist 16 exerciser for counting the number of rotations made by 17 the rotor. Further, the Court finds that all counters 18 require sensors, and that one of ordinary skill in the 19 art would have been able to mount a sensor, such as a 20 magnet, on the rotor to actuate the counter. 21 Although the ‘655 Patent does not disclose a 22 particular location for the counter, the specific 23 arrangement of the counter involves nothing more than a 24 design choice. Gupta Report ¶ 120. Moreover, there 25 are only so many places on the wrist exerciser where 26 one can attach a counter. See KSR, 550 U.S. at 416 27 (The “combination of familiar elements according to 28 known methods” is likely to be obvious when it “does no 23 1 more than yield predictable results.”). A person of 2 ordinary skill of the art would have found it obvious 3 to mount a counter on the bottom of the ‘655 Patent. 4 The Court also finds that Claim 9 of the ‘311 5 Patent is obvious over the ‘655 Patent in view of the 6 Mishler ‘146 or Brown ‘146 Patent as applied to Claim 7 1. The ‘580 and ‘612 Patents both teach the use of 8 rotor fins that cause air to enter the interior of the 9 shell. The ‘580 Patent identifies a reason for adding 10 fins to a rotor: to “provide internal cooling of the 11 entire device as the rotor turns.” Schwartz Decl. Ex. 12 6, 1:46-49; see also Gupta Report ¶¶ 122-123. 13 generated when air whips through the device. Sound is One of 14 ordinary skill in the art would have found it obvious 15 to modify the rotor of the ‘655 Patent to include fins 16 and partitions to generate sound, as claimed in Claim 17 9. 18 The Court finds that Claim 10 is similar to Claim 19 9, except that Claim 10 includes an additional 20 partition plate. Both the ‘580 and ‘612 Patents 21 disclose the use of multiple partition plates. For the 22 same reasons as discussed above, the Court finds that 23 Claim 10 of the ‘311 Patent is obvious over the ‘655 24 Patent in view of the Mishler ‘146 or Brown ‘146 Patent 25 as applied to Claim 1. Plaintiff also does not dispute 26 that the ‘580 Patent discloses the additional 27 limitation of Claim 10. 28 Claim 11 depends on Claim 9, and recites “wherein 24 1 each of the chambers comprises a weight block fixed 2 therein.” For the same reasons as discussed above, the 3 Court finds that Claim 11 of the ‘311 Patent is obvious 4 over the ‘655 Patent in view of the Mishler ‘146 or 5 Brown ‘146 Patent as applied to Claim 1, and further in 6 view of the ‘580 Patent. A person with ordinary skill 7 in the art, motivated to increase the rotational speed 8 of the rotor, would have been able to modify the rotor 9 of the ‘655 Patent to include a weight block, such as a 10 metal ring disclosed in the ‘580 Patent. 11 Claim 12 depends on Claim 2, and adds “wherein the 12 lighting elements comprise light emitting diodes.” 13 ‘655 Patent discloses the use of LEDs. The For the reasons 14 discussed above in relation to Claim 2, the Court finds 15 Claim 12 obvious. 16 Finally, Defendants point out that Claim 17 is 17 identical to Claim 7, with exception that claim 7 18 depends from Claim 5. Thus for the same reasons 19 discussed for Claim 7, Claim 17 is obvious. 20 Accordingly, the prior art teaches the limitations 21 in the asserted claims in this Action. The Court finds 22 that Defendants have shown by clear and convincing 23 evidence that the asserted claims are obvious. 24 25 26 27 28 /// 25 1 2 V. CONCLUSION For the foregoing reasons, the Court GRANTS 3 Defendants’ Motion for Partial Summary Judgment of 4 Invalidity. 5 6 IT IS SO ORDERED. 7 DATED: May 10, 2013 8 9 HONORABLE RONALD S.W. LEW Senior, U.S. District Court Judge 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 26

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