freal Foods LLC et al v. Hamilton Beach Brands, Inc. et al

Filing 248

MEMORANDUM ORDER re 177 MOTION for Summary Judgment Motion for Partial Summary Judgment of Non-Infringement and Invalidity. IT IS HEREBY ORDERED that Defendants' motion for summary judgment of noninfringement of claim 21 of U.S. Patent No. 7,520,662 and claims 6-11 of U.S. Patent No. 7,520,658 when consumers use the MIC2000 milkshake blender is DENIED. Signed by Judge Colm F. Connolly on 4/18/2019. (fms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
F'REAL FOODS, LLC and
RICH PRODUCTS
CORPORATION,
Plaintiffs,

v.

Civil Action No. 16-41-CFC

HAMILTON BEACH
BRANDS, INC. and HERSHEY :
CREA1\.1ERY COrv.t:PANY,
Defendants.:

MEMORANDUM ORDER

Pending before the Court is Defendants' motion for summary judgment, D.I.
177, in which Defendants seek five summary judgments. 1 In memorandum orders
issued on April 15, 2019 (D.I. 243) and April 16, 2019 (D.1. 244 and D.I. 245), I
addressed four of the summary judgment motions. The remaining motion seeks
summary judgment of noninfringement of claim 21 of U.S. Patent No. 7,520,662
(the "#662 patent") and claims 6-11 of U.S. Patent No. 7,520,658 (the "#658

1

D .I. 177 actually set forth six motions for summary judgment, but Defendants
collapsed two of the motions in their briefing and treated them as a single motion.
See D.I. 178 at 14-16. For that reason, the Court treated those two motions as a
single motion. See D.I. 244.

patent") when consumers use the :rvllC2000 milkshake blender. See D.I. 177 at 1;
D.I. 178 at 16. For the reasons discussed below, I will deny the motion.
1.

Claim 21 of the #662 patent recites a "method for rinsing a splash

shield on a mixing machine," and claims 6-11 of the #65 8 patent recite a "method
for retaining a vessel in a holder while mixing contents of the vessel[.]" Both
patented methods require, among other things, the "providing [of] a mixing
machine[.]"
2.

Defendants argue that summary judgment of noninfringement of the

asserted method claims is required where the :rvllC2000 milkshake blenders are
used by customers in retail stores because direct infringement under 35 U.S.C. §
271(a) can only occur "where all steps of a claimed method are performed by or
attributable to a single entity." Akamai Techs., Inc. v. Limelight Networks, Inc.,
797 F.3d 1020, 1022 (Fed. Cir. 2015) (en bane). According to Defendants, "[t]here
is no genuine issue of fact that no single entity performs every step of the asserted
method claims[,]" because the retailers, not the consumers who operate the
machine, "provid[e]" the :rvllC2000 blenders. D.I. 178 at 17.
3.

The single entity test prescribed by Akamai, however, is not limited to

whether a single entity performs every patented step. Rather, the test is whether
the steps "are performed or attributable to a single entity." 797 F.3d at 1022
(emphasis added). And, as the court explained in Akamai, "[w ]here more than one

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actor is involved in practicing the steps, a court must determine whether the acts of
one are attributable to the other such that a single entfty is responsible for the
infringement." Id. An entity is "responsible for others' performance of method
steps ... where that entity directs or controls others' performance[.]" Id. Such
direction and control "can [ ] be found when an alleged infringer conditions
participation in an activity or receipt of a benefit upon performance of a step or
steps of a patented method and establishes the manner or timing of that
performance." Id. at 1023.
4.

"Whether a single actor directed or controlled the acts of one or more

third parties is a question of fact[.]" Id. As the parties dispute whether consumers'
performance of some of the patented method steps was directed or controlled by
retailers who provided the consumers with MIC2000 blenders, I will deny
Defendants' motion for summary judgment.

WHEREFORE, on this Eighteenth day of April in 2019, IT IS HEREBY
ORDERED that Defendants' motion for summary judgment ofnoninfringement
of claim 21 of U.S. Patent No. 7,520,662 and claims 6-11 of U.S. Patent No.
7,520,658 when consumers use the MIC2000 milkshake blender is DENIED.

IT IS SO ORDERED.

ES DISTRICT JUDGE
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