Advanced Steel Recovery, LLC v. X-Body Equipment, Inc. et al

Filing 70

ORDER signed by Judge Garland E. Burrell, Jr. on 8/8/2014 GRANTING defendants' 56 Motion for Summary Judgment. This matter is CLOSED. (Marciel, M)

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UNITED STATES DISTRICT COURT

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EASTERN DISTRICT OF CALIFORNIA

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ADVANCED STEEL RECOVERY, LLC,

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Plaintiff,
v.

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ORDER GRANTING DEFENDANTS’
MOTION FOR SUMMARY JUDGMENT

X-BODY EQUIPMENT, INC. and
JEWELL ATTACHMENTS, LLC,
Defendants.

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No. 2:12-cv-1004-GEB-DAD

___________________________________
AND RELATED COUNTERCLAIMS

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Defendants move under Federal Rule of Civil Procedure

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(“Rule”) 56

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summary

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concerning

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Defendants also move for summary judgment on their counterclaim

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in which they seek a declaration of non-infringement of U.S.

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Patent No. 7,744,330 (“the ‘330 patent”). Plaintiff opposes the

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motions.

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for summary judgment, or in the alternative, partial

judgment,
U.S.

on

each

Patent

of

No.

Plaintiff’s
8,061,950

infringement

(“the

‘950

claims

patent”).

I. LEGAL STANDARD

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A party seeking summary judgment under Rule 56 bears

28

the initial burden of demonstrating the absence of a genuine
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issue of material fact for trial. Celotex Corp. v. Catrett, 477

2

U.S. 317, 323 (1986). “A fact is ‘material’ when, under the

3

governing substantive law, it could affect the outcome of the

4

case.” Thrifty Oil Co. v. Bank of Am. Nat’l Trust & Sav. Ass’n,

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322 F.3d 1039, 1046 (9th Cir. 2003) (quoting Anderson v. Liberty

6

Lobby, Inc., 477 U.S. 242, 248 (1986)). An issue of material fact

7

is “genuine” when “‘the evidence is such that a reasonable jury

8

could return a verdict for the nonmoving party.’” Id. (quoting

9

Anderson, 477 U.S. at 248).

10

If

the

movant

satisfies

its

“initial

burden,”

“the

11

nonmoving party must set forth, by affidavit or as otherwise

12

provided in Rule 56, ‘specific facts showing that there is a

13

genuine issue for trial.’” T.W. Elec. Serv., Inc. v. Pac. Elec.

14

Contractors Ass’n, 809 F.2d 626, 630 (9th Cir. 1987) (quoting

15

former Fed. R. Civ. P. 56(e)). “A party asserting that a fact

16

cannot be or is genuinely disputed must support the assertion by

17

citing to particular parts of material in the record . . . or

18

showing that the materials cited do not establish the absence or

19

presence of a genuine dispute, or that an adverse party cannot

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produce admissible evidence to support the fact.” Fed. R. Civ. P.

21

56(c)(1). Summary judgment “evidence must be viewed in the light

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most

23

inferences must be drawn in favor of that party.” Sec. & Exch.

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Comm’n v. Todd, 642 F.3d 1207, 1215 (9th Cir. 2011) (citing

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Johnson v. Paradise Valley Unified Sch. Dist., 251 F.3d 1222,

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1227 (9th Cir. 2001)).

favorable

to

the

nonmoving

party,

and

27

Further, Local Rule 260(b) prescribes:

28

Any

all

party

opposing

a
2

motion

for

summary

reasonable

1

judgment
or
summary
adjudication
[must]
reproduce the itemized facts in the [moving
party’s] Statement of Undisputed Facts and
admit those facts that are undisputed and
deny those that are disputed, including with
each denial a citation to the particular
portions
of
any
pleading,
affidavit,
deposition, interrogatory answer, admission,
or other document relied upon in support of
that denial.

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9
10

If

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.

.

Simmons v. Navajo Cnty., Ariz., 609 F.3d 1011, 1017 (9th Cir.
2010) (quoting Keenan v. Allan, 91 F.3d 1275, 1279 (9th Cir.
1996));

see

also

Fed.

R.

Civ.

P.

56(c)(3)

(“The

court

need

consider only the cited materials, but it may consider other
materials in the record.”).
II. UNCONTROVERTED FACTS
The following facts are uncontroverted in the summary
judgment record. Claim 1 in the ‘950 patent, upon which all other
claims except claim 9 in the ‘950 patent depend, discloses a

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container packer
inter alia]:

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a transfer base including proximate and
distal ends and a container packer guide;

28

.

Because a district court has no independent
duty “to scour the record in search of a
genuine issue of triable fact,” and may “rely
on the nonmoving party to identify with
reasonable particularity the evidence that
precludes
summary
judgment,”
. . .
the
district court . . . [is] under no obligation
to undertake a cumbersome review of the
record on the [nonmoving party’s] behalf.

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20

“specifically

statement.” Beard v. Banks, 548 U.S. 521, 527 (2006).

14

19

not

admitted the validity of the facts contained in the [movant’s]

13

18

does

statement of undisputed facts,” the nonmovant “is deemed to have

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nonmovant

[controvert duly supported] facts identified in the [movant’s]

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16

the

system,

3

which

comprises[,

1

a container packer including a proximate end,
a distal end with an opening, opposite
sidewalls, a floor and an interior;

2
3

said
container
packer
being
movable
longitudinally along said container packer
guide between a retracted position on said
transfer base and an extended position
extending at least partially from said
transfer base distal end;

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5
6

a container packer drive connected to said
transfer base and said container packer and
adapted for moving said container packer
between its extended and retracted positions;
[and]

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8
9

. . . .

10

said container packer drive comprising a
container packer piston-and-cylinder unit
connected to said transfer base proximate end
and
said
container
packer
proximate
end . . . .

11
12
13
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(Compl. Ex. A, ‘950 Patent col. 4:62-5:8, 5:24-26, , ECF No. 1-

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1.) Claim 9 in the ‘950 patent also discloses: “said container

16

packer drive compris[es] a container packer piston-and-cylinder

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unit connected to said transfer base proximate end.” (‘950 Patent

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col. 6:34-37.)

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The ‘950 patent is a “continuation of . . . [the ‘330

20

patent.” (‘950 patent p. 1.). The sole independent claim in the

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‘330

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compris[es] a container packer piston-and-cylinder unit connected

23

to said transfer base proximate end.” (Def. X-Body Equipment,

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LLC’s Answer to Compl. & Countercls. Ex. B, ‘330 Patent col.

25

5:21-23, ECF No. 7.)

26

“Plaintiff

patent

also

discloses:

. .

.

“said

did

not

container

accuse

the

packer

drive

Acculoader

of

27

infringement of the ‘330 patent in this case and did not identify

28

any claim of the ‘330 patent as infringed in response to an
4

1

interrogatory

2

claims.” (Pl.’s Resp. to Defs.’ Stat. of Undisputed Facts (“Pl.’s

3

Resp.”) ¶ 9, ECF No. 65.)

asking

for

a

list

of

all

allegedly

infringed

4

The figures below depict “exemplary embodiments” of the

5

‘950 and ‘330 patent inventions. (‘950 Patent col. 2:18; ‘330

6

Patent col. 2:9.) Figure 1 “is a side elevational view of a

7

container

8

transfer base,” and Figure 2 “is a side elevational view thereof,

9

shown

packer

with

the

system

. . .

container

in

packer

a

retracted

extended

position

partly

into

on

a

[a]

10

transport container.” (‘950 Patent col. 2:20-25; ‘330 Patent col.

11

2:11-16.)

12

reference number 6 designates the container packer, and reference

13

number

14

unit, which is shown connected to the transfer base proximate end

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at reference number 26 and to the container packer proximate end

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at reference number 32. (‘950 Patent col. 3:28-33; ‘330 Patent

17

col. 3:21-25.)

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Reference

designates

number

the

4

designates

container

packer

the

transfer

base,

piston-and-cylinder

18
19
20
21
22

(‘950 Patent p. 2-3; ‘330 Patent p. 2-3.)

23

The figures below depict Defendants’ accused Acculoader

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product. Figure 3 is a side view of the product, and Figure 4 is

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a view from beneath the product. Reference number 1 designates

26

the

container

packer,1

reference

number

2

designates

the

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1

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Defendants call this part of the Acculoader a “load sled.” However,
Plaintiff identified this item as a “container packer.” (See Decl. of Robert

5

1

container

2

designates the proximate-end of the sidewalls of the container

3

packer, and reference number 4 designates the distal end of the

4

sidewalls

5

unit[] that move[s] the [container packer] of the Acculoader [is]

6

attached to the bottom of the [container packer]”2 as depicted by

7

reference number 5 in the figures below. (Pl.’s Resp. ¶ 5.)

packer

of

the

piston-and-cylinder

container

packer.

unit,

“The

reference

number

3

piston-and-cylinder

1

8
9
10
11
12
13
14

4

3
5

15

2

FIG. 3

16
17
18
19
20

FIG. 4

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(Decl. of Ronald Dennis in Supp. of Defs.’ Mot. (“Dennis Decl.”)

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Ex. 1, Acculoader Design Drawings, ECF No. 56-5.)3

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24
25
26
27
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Hawkins in Supp. of Defs.’ Mot. Ex. 3, Ex. 1, p. 2 (ECF pagination, p. 49),
ECF No. 56-3.) For consistency, this part of the Acculoader is referenced as
the “container packer.”
2
Plaintiff asserts that this statement is disputed but has not
specifically controverted it and therefore “is deemed to have admitted the
validity of the facts contained” therein. Banks, 548 U.S. at 527.
3
Plaintiff objects to consideration of the following paragraph from Mr.
Dennis’s declaration, on the grounds that it lacks foundation, is “not the
best evidence,” and is hearsay: “Attached as Exhibit 1 hereto is a true and
correct copy of design drawings for the Acculoader. The drawing accurately
depicts the design used by [Defendant] Jewell to manufacture the Acculoader as

6

1

“The

piston-and-cylinder

packer]

of

the

unit[]

3

measure[s] 238 inches long.”4 (Pl.’s Resp. ¶ 4.) The distance

4

from the proximate end of the sidewalls (depicted at reference

5

number 3 above) to the distal end of the sidewalls (depicted at

6

reference number 4 above) is 468.25 inches. The attachment point

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between the container packer piston-and-cylinder unit and the

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container packer is 164.81 inches from the proximate end of the

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sidewalls of the container packer, or 35.2% down the length of

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the container packer from the proximate end of the sidewalls to

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the distal end of the sidewalls. (Acculoader Design Drawings.)

retracted,

III. DISCUSSION
A. ‘950 Patent

14
15

fully

the

[container

13

when

move[s]

2

12

Acculoader,

that

1. Literal Infringement of ‘950 Patent
Defendants

argue

their

non-infringement

motion

16

concerning all claims in the ‘950 patent should be granted since

17

“the piston-and-cylinder[] for the [container packer] [of the

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Acculoader]

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well as the actual dimensions of the shown part of the Acculoader.” (Pl.’s
Evidentiary Objections, 9:13-19, ECF No. 64.) Plaintiff’s lack of foundation
objection is unfounded since Mr. Dennis explains in paragraph 2 of his
declaration that “[as] a Design Engineer, [he] was directly involved in the
development of design drawings from the Acculoader,” and thus provides
foundation for his averment that the “drawing[s] accurately depict[] the
design used . . . as well as the actual dimensions of the . . . Acculoader.”
(Dennis Decl. ¶¶ 2-3.) See Barthelemy v. Air Lines Pilots Ass’n, 897 F.2d 999,
1017 (9th Cir. 1990) (“[P]ersonal knowledge . . . [can be] reasonably inferred
from [a declarant’s] position[] and the nature of [his] participation in the
matters to which [he] swore . . . .”). Review of the declaration testimony
reveals that Plaintiff’s other objections are also unfounded. Therefore,
Plaintiff’s objections are overruled.
4
Plaintiff argues that this statement is disputed but has not
specifically controverted it with any facts and therefore “is deemed to have
admitted the validity of the facts contained” therein. Banks, 548 U.S. at 527;
see T.W. Elec. Serv, 809 F.2d at 630 (“If the movant satisfies its initial
burden . . . the nonmoving party must set forth . . . ‘specific facts showing
that there is a genuine issue for trial.’” (quoting former Fed. R. Civ. P.
56(e)).

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27
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[is]

not

connected

7

to

the

proximate

end

of

the

1

[container packer] at all,” which the two independent claims of

2

the

3

connected “at a point on the bottom of the container packer far

4

from the proximate end.” (Defs.’ Mot. 7:15-16, 9:26-27, ECF No.

5

56 (emphasis added).) Plaintiff counters:

‘950

6

(claims

1

and

9)

require,

but

instead

is

The term “proximate end” . . . should simply
mean
the
back
half
to
the
container
packer . . . . Thus, the claim element that
reads,
“said
container
packer
drive
comprising
a
piston-and-cylinder
unit
connected to . . . said container packer
proximate end” means the piston-and-cylinder
is connected at the back half of the
container packer (i.e., the end opposite the
transport container).

7
8
9
10
11

. . . .

12

The Acculoader therefore literally infringes
both claims 1 and 9 [in the ‘950 patent].

13
14

patent

(Pl.’s Opp’n 11:7-11, ECF No. 62 (emphasis added).)

15

Claims 1 and 9 in the ‘950 patent require that the

16

described invention include a “container packer drive comprising

17

a container packer piston-and-cylinder unit connected to said

18

transfer base proximate end and said container packer proximate

19

end.” (‘950 Patent, col. 5:24-26, 6:33-37 (emphasis added).)

20

“We give claim terms their plain and ordinary meaning

21

unless the patentee acted as its own lexicographer or there was a

22

disavowal of claim scope.” Braintree Labs., Inc. v. Novel Labs.,

23

Inc., 749 F.3d 1349, 1365 (Fed. Cir. 2014). Here, Plaintiff has

24

not

25

definition

26

“waived any argument with respect to [the] term [‘proximate end’]

27

by failing to raise it during the claim construction phrase.”

28

Cent.

shown

that
of

the
the

Admixture

patent
term

Pharm.

itself

contemplates

“proximate

Servs.,
8

end.”

Inc.

v.

a

particular

Further,

Advanced

Plaintiff

Cardiac

1

Solutions, P.C., 482 F.3d 1347, 1356 (Fed. Cir. 2007). Therefore,

2

the

3

applies.

plain

4

and

ordinary

meaning

of

the

term

“proximate

end”

“[I]t is entirely appropriate for the district court to

5

look to dictionaries

6

the

7

Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008).

8

Webster’s Third New International Dictionary defines

9

“end” as “the extreme or last part lengthwise” and provides,

10

inter alia, these examples: the “[end] of a rope” and “the rear

11

[end]

12

Dictionary 747, definition 1(c)(2) (1986). Therefore, the plain

13

and

14

Plaintiff’s proffered definition of “back half.” (Pl.’s Opp’n

15

11:11.)

plain

16

meaning

of

an

ordinary

The

. . . for context—to aid in arriving at

of

a

claim

automobile.”

meaning

Webster’s

of

container

term.”

“proximate

packer

Helmsderfer

Third

end”

New

does

v.

Bobrick

the term

International

not

piston-and-cylinder

include

unit

is

17

connected to the Acculoader container packer 164.81 inches from

18

the proximate end of the sidewalls of the container packer or

19

35.2%

20

Drawings.) This connection point is not at the proximate end.

21

Therefore,

22

literally infringe the ‘950 patent.

23
24

down

the

length

Plaintiff

of

has

2. Infringement

the

shown

of

sidewalls.

that

‘950

the

(Acculoader

Acculoader

Patent

by

does

not

Doctrine

of

Equivalents

25

Plaintiff argues:

26

[I]f the element “said container packer drive
comprising
a
piston-and-cylinder
unit
connected to . . . said container packer
proximate end” is not literally present in
the Acculoader, . . . the Acculoader has an
9

27
28

Design

1

equivalent. Any difference between where the
packer [piston-and-]cylinder of the accused
Acculoader connects to Defendants’ container
packer . . . and where the packer [pistonand-]cylinder of claims 1 and 9 connects to
the container packer . . . is insubstantial.

2
3
4
5

(Pl.’s

6

cannot infringe the ‘950 patent under the doctrine of equivalents

7

since

8

attachment

9

vitiate the point of attachment requirement.” (Defs.’ Reply 7:19-

10

Opp’n

13:1-6.)

“allowing
at

the

some

Defendants

doctrine
other

counter

of

that

equivalents

location

entirely

the

to

would

Acculoader

encompass
improperly

21, ECF No. 67.)

11

“Under [the] doctrine [of equivalents], a product or

12

process that does not literally infringe upon the express terms

13

of a patent claim may nonetheless be found to infringe if there

14

is ‘equivalence’ between the elements of the accused product or

15

process

16

Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21

17

(1997). “[E]quivalence [must] be assessed on an limitation-by-

18

limitation

19

invention as a whole.” Freedman Seating Co. v. Am. Seating Co.,

20

420 F.3d 1350, 1358 (Fed. Cir. 2005). Further, “[t]he doctrine of

21

equivalents cannot be used to erase ‘meaningful structural and

22

functional

23

entitled to rely in avoiding infringement.’” Conopco, Inc. v. May

24

Dep’t Stores Co., 46 F.3d 1556, 1562 (Fed. Cir. 1994) (quoting

25

Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935 (Fed.

26

Cir. 1987) (en banc)).

27

The

28

and

the

basis,

claimed

as

opposed

limitations

claim

elements

of

the

element

to

of

from

claim

at

the

patented

the

on

issue

perspective

which

is

invention.”

the

the

of

public

following:

the

is

a

“container packer drive comprising a container packer piston-and10

1

cylinder unit connected to said transfer base proximate end and

2

said container packer proximate end.” (‘950 Patent, col. 5:24-26,

3

6:33-37 (emphasis added).) The limitation described therein is a

4

connection between two particular places, one of which is the

5

“container

6

essence, locational.

packer

proximate

end.”

Id.

The

limitation

is,

in

7

The Acculoader is connected at a different location: a

8

point closer to the middle of the container packer sidewalls than

9

the proximate end of those sidewalls. No reasonable jury could

10

find this connection point to be equivalent to the “container

11

packer

12

Indus., Inc., 126 F.3d 1420, 1422-26 (Fed. Cir. 1997) (holding

13

that a slot in a medical waste disposal container near the top

14

but within the container body could not be equivalent to a “slot

15

at the top of the container body” as disclosed in the patent);

16

see also Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149

17

F.3d 1309, 1318-19 (Fed. Cir. 1998) (holding that “no reasonable

18

jury could [] f[i]nd” infringement by the doctrine of equivalents

19

where claim limitations “tie[] [patented product structures] to

20

[]

21

structures were “not even close” to those places). Therefore,

22

Defendants

23

summary judgment motion on all claims in the ‘950 patent.

proximate

specific

24

end.”

place[s],”

are

entitled

Id.;

and

to

see

the

Sage

Prods.,

accused

prevail

on

Inc.

product’s

their

v.

Devon

analogous

non-infringement

3. Plaintiff’s 56(d) Request

25

However, Plaintiff requests that “if the present record

26

does

not

support

denial

of

[Plaintiff’s

27

judgment,” on all claims in the ‘950 patent, “the Court [should]

28

postpone a decision on this motion [under Rule 56(d)] until . . .
11

motion

for]

summary

1

further discovery is taken.” (Pl.’s Opp’n 4:4-6.) Specifically,

2

Plaintiff’s counsel avers:

3

5

[E]xpert discovery has yet to take place.
. . . [Plaintiff] expects its expert(s) to
explain how any limitations that may not be
met literally are met under the doctrine of
equivalents.

6

. . . .

7

[Plaintiff] has not been given an opportunity
during this litigation, particularly with an
expert
present,
to
conduct
a
detailed
inspection
of
the
Acculoader.
. . . Permitting [Plaintiff] a pre-ruling
inspection
of
the
Acculoader,
with
a
technical expert, would allow [Plaintiff] to
assess the veracity of Defendants’ alleged
undisputed facts [concerning the design of
the Acculoader], the untested averments in
Defendants’ declarations, as well as the
substantiality, or lack thereof, of any
difference in design between the Acculoader
and the claims of the ‘950 [p]atent.

4

8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

(Rule 56(d) Decl. of Mark D. Nielsen ¶¶ 8, 24, ECF No. 62-5.)
Defendants counter that the 56(d) request should be
denied since Plaintiffs’ “Rule 56(d) declaration never states
that [Plaintiff] has any basis for disputing the main position of
the piston-and-cylinder.” (Defs.’ Reply 19:3-4.)
Rule

56(d)

prescribes:

“If

a

nonmovant

shows

by

affidavit or declaration that, for specified reasons, it cannot
present facts essential to justify its opposition, the court may
. . . defer considering the motion or deny it.”
“To

prevail

under

. .

.

Rule

[56(d)],

[a]

part[y]

opposing a motion for summary judgment must make ‘(a) a timely
application

which

(b)

specifically

identifies

(c)

relevant

information, (d) where there is some basis for believing that the
information sought actually exists.’” Emp’rs Teamsters Local Nos.
12

1

175 & 505 Pension Trust Fund v. Clorox Co., 353 F.3d 1125, 1129

2

(9th

3

Holders of Am., 784 F.2d 1472, 1475 (9th Cir. 1986)). “The burden

4

is

5

sufficient facts to show that the evidence sought exists, and

6

that it would prevent summary judgment.” Id. at 1129-30 (quoting

7

Chance v. Pac-Tel Teletrac, Inc., 242 F.3d 1151, 1161 n.6 (9th

8

Cir. 2001)).

Cir.

on

2004)

the

9

(quoting

party

Here,

VISA

seeking

Defendant

Int’l

Serv.

additional

has

not

Ass’n

discovery

proffered

v.

to

Bankcard

proffer

sufficient

facts

10

showing that expert discovery would demonstrate the Acculoader’s

11

container packer piston-and-cylinder unit is connected to the

12

container

13

proximate end of the container packer. Therefore, Defendant has

14

not shown that expert discovery “would . . . prevent summary

15

judgment.” Clorox, 353 F.3d at 1129-30. Further, Plaintiff has

16

not shown “there is some basis for believing” that an inspection

17

of the Acculoader would reveal a difference in the design of the

18

Acculoader from the design described in Defendants’ evidence. Id.

19

at 1129. Therefore, Plaintiff’s request for a postponement under

20

Rule 56(d) is denied.

packer

at

a

location

that

is

equivalent

to

the

21

B. ‘330 Patent

22

Defendants argue they are entitled to summary judgment

23

on their declaratory judgment claim of non-infringement of the

24

‘330 patent since “[t]he ‘330 patent has only one independent

25

claim,” which, like the ‘950 patent, “requires ‘said container

26

packer drive comprising a container packer piston-and-cylinder

27

unit [be] connected to said transfer base proximate end and said

28

container packer proximate end.’” (Defs.’ Mot. 15:22-24 (quoting
13

1

‘330

2

declaratory relief claims directed to the ‘330 [p]atent should be

3

dismissed for lack of subject matter jurisdiction. . . . Here, as

4

Defendants

5

[Plaintiff] did not accuse, and has not accused, the Acculoader

6

of infringing the ‘330 [p]atent.” (Pl.’s Opp’n 15:20-21, 16:2-3.)

Patent

7

col.

admit

“The

8

jurisdiction

9

circumstances,

5:21-23.)

in

their

threshold
is

‘whether

show

that

Plaintiff

counters:

Statement

question
the

for

facts

there

is

of

Undisputed

declaratory

alleged,

a

“Defendants’

under

substantial

Facts,

judgment
all

the

controversy,

10

between parties having adverse legal interests, of sufficient

11

immediacy and reality to warrant the issuance of a declaratory

12

judgment.’” Microsoft Corp. v. Datatern, Inc., Nos. 2013-1184 &

13

2013-1185,

14

(quoting MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127,

15

127 S.Ct. 764, 166 L.Ed.2d 604 (2007)). “[R]elated litigation

16

involving the same technology and the same parties is relevant in

17

determining

18

controversy exists on other related patents.” Teva Pharms. USA,

19

Inc. v. Novartis Pharms. Corp., 482 F.3d 1330, 1344 (9th Cir.

20

2007).

2014

WL

whether

1760882,

a

at

*2

(Fed.

justiciable

Cir.

May

declaratory

5,

2014)

judgment

21

Here, the ‘950 patent is part of the same patent family

22

as the ‘330 patent since it is continuation of the ‘330 patent

23

application. Further, the ‘950 and ‘330 patents contains several

24

identical claim elements, including the limitation that “said

25

container packer drive compris[es] a container packer piston-and-

26

cylinder unit connected to said transfer base proximate end and

27

said container packer proximate end.” (‘950 patent col. 5:24-26;

28

‘330 patent col. 5:21-23.) Therefore, subject-matter jurisdiction
14

1

exists over Defendants’ counterclaim. See Seaboard. Int’l, Inc.

2

v. Cameron Int’l Corp., No. 1:13-cv-281-MLH-SKO, 2013 WL 3936889,

3

at *9 (E.D. Cal. July 30, 2013) (holding that subject-matter

4

jurisdiction

5

where

6

plaintiff

7

“contain[ed]

8

patents were “part of the same patent family as they [were] all

9

derived from applications related to [a] parent application”).

the

10

existed
asserted

had

over

patents

“never

claims

a

declaratory
and

asserted

that

[were]

judgment

counterclaim
or

demanded

nearly

counterclaim

patents,

which

royalties

for,”

identical,”

and

the

Since the ‘330 patent’s sole independent claim contains

11

the

same

limitation

12

between the container packer piston-and-cylinder unit and the

13

container

14

summary

15

infringement of the ‘330 patent for the same reasons discussed

16

above in sections III.A.1 & III.A.2 of this order.

packer

judgment

19
20

the

proximate
on

17
18

as

their

‘950

end,

patent

concerning

Defendants

declaratory

are

judgment

connection

entitled

claim

of

to
non-

IV. CONCLUSION
For the stated reasons, Defendants’ motion for summary
judgment is granted.
Dated:

August 8, 2014

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22
23
24
25
26
27
28
15