Graco Children's Products Inc. v. Kids II, Inc.
Filing
179
OPINION AND ORDER GRANTING IN PART AND DENYING IN PART 130 Motion for Summary Judgment; DENYING 133 Motion for Partial Summary Judgment. Signed by Judge Thomas W. Thrash, Jr. on 3/22/2018. (jkl)
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
GRACO CHILDREN’S PRODUCTS
INC.,
Plaintiff,
v.
CIVIL ACTION FILE
NO. 1:13-CV-1183-TWT
KIDS II, INC.,
Defendant.
OPINION AND ORDER
This is a patent infringement lawsuit. It is before the Court on the
Defendant’s Motion for Summary Judgment [Doc. 130] and the Plaintiff’s
Motion for Partial Summary Judgment [Doc. 133]. For the reasons set forth
below, the Defendant’s Motion for Summary Judgment [Doc. 130] is GRANTED
in part and DENIED in part, and the Plaintiff’s Motion for Partial Summary
Judgment [Doc. 133] is DENIED.
I. Background
The Plaintiff Graco Children’s Products Inc. is a Delaware corporation
that sells children’s products, including playards and playpens for infants.1 The
Defendant Kids II, Inc. is a Georgia corporation that also sells children’s
1
Def.’s Statement of Material Facts ¶¶ 3-4.
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products, including playards and playpens for use with infants.2 The Plaintiff
is seeking to enforce its rights under a patent for an infant playpen. Specifically,
U.S. Patent No. 6,735,796 (“the ‘796 Patent”) describes a combination folding
playpen with a bassinet and changing table that are removable.3
Robert J. Warner, Jr. and Richard Essex are the listed inventors on the
‘796 Patent.4 In the late 1990s, Warner and Essex were employed by Century
Products Company.5 While at Century, Warner and Essex worked together on
a project to design a child’s playpen.6 On May 27, 1998, U.S. Patent Application
No. 09/085,690 was filed.7 This application then issued as U.S. Patent No.
6,233,759 on May 22, 2001, listing Warner and Essex as the inventors.8 In 1998,
the Plaintiff acquired Century.9 The Plaintiff is listed as the assignee of this
patent.10 Prior to the issuance of this patent, a “continuation application” was
2
Id. ¶¶ 1-2.
3
Pl.’s Statement of Material Facts ¶ 24.
4
See ‘796 Patent.
5
Pl.’s Statement of Material Facts ¶ 1.
6
Id. ¶ 4.
7
Id. ¶ 13.
8
Id.
9
Id.
10
Id.
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filed to pursue additional claims.11 On January 19, 2001, U.S. Patent Application No. 09/764,090 was filed.12 This application included 46 claims.13 In an
Office Action dated August 15, 2001, the U.S. Patent and Trademark Office (the
“PTO”) found allowable subject matter in certain claims, but rejected other
claims as anticipated by another patent.14 In response to this, the applicants
submitted a declaration under 37 C.F.R. § 1.131 stating that the rejected claims
were patentable because they were conceived and reduced to practice before the
effective date of the other patent.15 In this response, the applicants also added
three new claims (Claims 47-49).16 New Claim 48 eventually became Claim 18
of the ‘796 Patent.17 The PTO accepted the declaration, and after additional
prosecution, issued a Notice of Allowance.18 On May 18, 2004, the ‘796 Patent
was issued.19
11
Id. ¶ 14.
12
Id.
13
Id. ¶ 15.
14
Id. ¶ 16.
15
Id. ¶ 17.
16
Id. ¶ 19.
17
Id. ¶ 20.
18
Id. ¶¶ 21-22.
19
Id. ¶ 23.
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On April 10, 2013, the Plaintiff filed the Complaint. The Plaintiff
contends that multiple products made by the Defendant (the “Accused Products”) infringe the ‘796 Patent. The Accused Products fall into two categories,
based upon how the bassinet20 is supported on the playpen.21 The first category,
the “Generation One Products,” directly supports the “Dream Centre” bassinet
on the upper frame assembly side rails with four clamps.22 In contrast, the
second category, the “Generation Two Products,” connects the “Dream Centre”
bassinet to the playpen’s vertical legs with two cantilevered tubes.23 This
distinction is important for the parties’ infringement arguments.
On November 28, 2016, this Court issued a Claims Construction Order
construing four disputed terms in the ‘796 Patent.24 Following this Court’s
claims construction ruling, the Plaintiff narrowed its infringement contentions.25
20
The parties dispute whether the Defendant’s “Dream Centre” is a
“bassinet” within the meaning of the ‘796 Patent, which is discussed below.
21
Def.’s Statement of Material Facts ¶¶ 31-39.
Id. ¶ 32. The “Shiloh” playpen (Model No. 60072) is the only
Accused Product in the Generation One Products category. Id. The “Shiloh”
Model No. 60072 later adopted the design changes in the Generation Two
Products, but retained the same model number. Id. ¶ 34. All of the other
Accused Products are Generation Two Products. Id. ¶ 35.
22
Id. ¶¶ 33-35, 39. These products are also sometimes referred to by
the parties as the “J-Tube” products, describing the shape of the cantilevered
support tubes. Id. ¶ 54.
23
24
See Claims Construction Order [Doc. 106].
25
Def.’s Statement of Material Facts ¶ 15.
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The Plaintiff contends that the Defendant infringes Claims 18, 19, 20, 31, and
32 of the ‘796 Patent.26 Both parties now move for summary judgment. The
Plaintiff moves for partial summary judgment, arguing that the Generation One
Products infringe Claim 18 as a matter of law. The Defendant also moves for
summary judgment, arguing that: (1) the Generation Two Products do not
infringe Claim 18; (2) none of the Accused Products infringe Claims 19, 20, 31,
and 32 because they do not meet the “rectangular frame” limitation; (3) none of
the Accused Products infringe Claims 31 and 32 because they do not meet the
“pair of tubes” limitation; and (4) summary judgment is appropriate as to
damages.
II. Legal Standard
Summary judgment is appropriate only when the pleadings, depositions,
and affidavits submitted by the parties show no genuine issue of material fact
exists and that the movant is entitled to judgment as a matter of law.27 The
court should view the evidence and any inferences that may be drawn in the
light most favorable to the nonmovant.28 The party seeking summary judgment
must first identify grounds to show the absence of a genuine issue of material
Id. ¶ 16. Claim 18 is the only independent claim of the ‘796 Patent
asserted against the Defendant. Id. ¶ 17.
26
27
FED. R. CIV. P. 56(a).
28
Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59 (1970).
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fact.29 The burden then shifts to the non-movant, who must go beyond the
pleadings and present affirmative evidence to show that a genuine issue of
material fact exists.30 “A mere ‘scintilla’ of evidence supporting the opposing
party’s position will not suffice; there must be a sufficient showing that the jury
could reasonably find for that party.”31
III. Discussion
A. Claim 18
Both parties move for summary judgment as to Claim 18. The Plaintiff
argues that it is entitled to summary judgment as to infringement of Claim 18
by the Generation One Products. The Defendant argues that it is entitled to
summary judgment as to non-infringement by the Generation Two Products.
The Court addresses each of the parties’ arguments in turn. Patent infringement
analysis involves a two-step process. First, the claims of the patent must be
construed as a matter of law. Second, the claims as construed must be compared
to the accused product.32 “Infringement is a question of fact.”33 “To prove
infringement, the patentee must show that an accused product embodies all
29
Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986).
30
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 257 (1986).
31
Walker v. Darby, 911 F.2d 1573, 1577 (11th Cir. 1990).
32
Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1323
(Fed. Cir. 2001).
33
Charles Mach. Works, Inc. v. Vermeer Mfg. Co., 723 F.3d 1376,
1378 (Fed. Cir. 2013).
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limitations of the claim either literally or by the doctrine of equivalents.”34 “If
any claim limitation is absent from the accused device, there is no literal
infringement as a matter of law.”35
1. Generation One Products
First, the Plaintiff moves for summary judgment as to infringement by
the Defendant’s Generation One Products. The Plaintiff argues that the
Generation One Products literally infringe Claim 18, and that it is entitled to
summary judgment as to the issue of infringement.36 The Plaintiff bears the
burden of proof as to the issue of infringement. Therefore, to succeed on a
motion for summary judgment on the issue, it must show that no reasonable
trier of fact could find non-infringement by the Defendant.37 The Court
concludes that the Plaintiff has not met this burden.
Claim 18 of the ‘796 Patent describes:
18. A play pen comprising:
an upper frame assembly having a long axis;
34
Cir. 2013).
Cephalon, Inc. v. Watson Pharm., Inc., 707 F.3d 1330, 1340 (Fed.
35
Id.
36
Pl.’s Mot. for Partial Summ. J., at 17.
One 2007 Toyota FJ Cruiser, VIN JTEBU11F670023522, 824 F.
Supp. 2d 1369, 1376 (N.D. Ga. 2011) (“But where the moving party has the
burden—the plaintiff on a claim for relief or the defendant on an affirmative
defense—his showing must be sufficient for the court to hold that no reasonable
trier of fact could find other than for the moving party.”).
37
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a bassinet assembly removably supported on said
upper frame assembly, said bassinet assembly having
a long axis; and
a changing table assembly removably supported on said
upper frame assembly, said changing table assembly having
a long axis,
wherein the long axes of said bassinet assembly and said
changing table assembly are perpendicular to
the long axis of said upper frame assembly.38
The Plaintiff claims that there is no dispute of material fact that the Generation
One Products, which support the “Dream Centre” sleeping station directly from
the upper frame of the playpen, infringe Claim 18.
Two main issues are in dispute: first, whether the “Dream Centre” in the
Accused Products is a “bassinet” within the meaning of Claim 18; second,
whether the long axes of the Generation One Products’ bassinet and changing
table assemblies are perpendicular to the long axes of their upper frame
assembly. However, as a preliminary matter, the parties first dispute whether
the Defendant made binding concessions as to certain elements of Claim 18 in
its Response to Infringement Contentions. Local Patent Rule 4.1 requires a
party claiming patent infringement to provide the opposing party a Disclosure
of Infringement Contentions, including, among other things, “[a] chart
identifying specifically where each element of each asserted claim is found
38
‘796 Patent, 8:63-97, 9:1-6.
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within each Accused Instrumentality.”39 Likewise, the opposing party must
provide a Response to Infringement Contentions, including a “chart responsive
to the claims chart contained within the Disclosure of Infringement Contentions,
and shall either acknowledge or deny whether each element of each asserted
claim is found within each Accused Instrumentality.”40
In its first Response to Initial Infringement Contentions, the Defendant
stated it “acknowledges that the bassinet of the Accused Product is removably
supported on the upper frame assembly.”41 Later, the Plaintiff served Supplemental Infringement Contentions upon the Defendant. These contentions
related to Model 60212, a different model of playpens manufactured by the
Defendant, which the Plaintiff believed to infringe the ‘796 Patent.42 In its
response to these contentions, the Defendant again admitted that the first
model, Model 60072, includes a bassinet that is removably supported on the
upper frame assembly.43 Finally, the Plaintiff once again served another set of
contentions, the Second Supplemental Infringement Contentions, dealing with
three other models of playpens made by the Defendant that it had recently
39
N.D. Ga. Patent L.R. 4.1(b)(3).
40
Id. 4.2(a)(1).
41
Pl.’s Statement of Material Facts ¶ 83.
42
Id. ¶¶ 92-93.
43
Id. ¶ 94.
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discovered.44 The Defendant provided its Second Supplemental Response to
Graco’s Second Supplemental Infringement Contentions.45 In this response, the
Defendant for the first time denied that Model 60072 met the removable
bassinet element of Claim 18.46
The Plaintiff argues that these responses are binding, and that the
Defendant cannot withdraw its earlier concession that the Generation One
Products meet this element.47 The Defendant argues that it is not bound by this
earlier contention because infringement contentions and responses only have
the same binding effect as interrogatory responses, which “are not binding
admissions and may be changed.”48 Furthermore, the Defendant argues that the
amendment to its response was justified because it learned of new evidence
during discovery establishing that its Dream Centre is not a “bassinet.”49
The Court concludes that the Defendant is bound by these earlier
concessions. Local Patent Rule 4.5(b) “provides that a party’s disclosure of
infringement contentions may ‘be supplemented or amended pursuant to the
44
Id. ¶ 95. These models included Model 60282, Model 60286, and
Model 60344.
Id. ¶ 97. The Defendant served this response on July 15, 2014, with
two weeks of discovery remaining. Id.
45
46
Id. ¶ 98.
47
Def.’s Br. in Opp’n to Pl.’s Mot. for Partial Summ. J., at 23-25.
48
Id. at 19 n.11.
49
Id. at 19-20.
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rules for supplementation and amendment of discovery responses generally
provided for under the Federal Rules of Civil Procedure.’”50 “Under the Federal
Rules of Civil Procedure, ‘[a] party is under a duty seasonably to amend [its
discovery responses] if the party learns that the response is in some material
respect incomplete or incorrect . . . .’”51 “The Local Patent Rules have been
characterized as an ‘exercise in forced door closing,’ in the sense that they force
the parties to take infringement and invalidity positions early in the litigation
and stick to them.”52 “[T]hese requirements put the parties on notice early in the
discovery process of the infringement and invalidity issues in the case. They also
enable the parties to identify the claim terms in dispute so that the Court may
construe only those terms which are relevant to the infringement and invalidity
issues identified by the parties.”53 These rules “promote[] efficient discovery and
reduces the potential for discovery disputes and wasted effort” and “discourage
gamesmanship and tend to facilitate early resolution of the dispute.”54
Atleisure, Inc. v. Ace Evert Inc., No. 1:12-CV-1260-CAP, 2013 WL
12106174, at *2 (N.D. Ga. June 6, 2013) (quoting N.D. Ga. Patent L.R. 4.1(b)(3)).
50
51
ChemFree Corp. v. J. Walter, Inc., 250 F.R.D. 570, 572 (N.D. Ga.
52
McKesson Info. Sols. LLC v. Epic Sys. Corp., 495 F. Supp. 2d 1329,
2007).
1332 (N.D. Ga. 2007).
53
Id.
54
Id.
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The Defendant argues that it first learned of this potential defense
concerning the “bassinet” element after the deposition of the Defendant’s
Engineering Manager, Chaitanya Tadipatri on June 3, 2014. On July 15, 2014,
the Defendant served its Second Supplemental Response to Graco’s Second
Supplemental Infringement Contentions. Thus, the Defendant asserts that this
amendment is justified due to the new evidence it discovered concerning the
definition of “bassinet.” However, the Defendant has not shown that it was
diligent in finding this evidence supporting a potentially “dispositive” defense,
or that it was diligent in amending its response to the infringement contentions.
The Defendant argues that it first learned of this possible defense after the
deposition of one of its own engineers. This was after a significant amount of
discovery, approximately 8 months, had already occurred. The Defendant’s
failure to discover this allegedly “dispositive” defense from one of its own
employees for nearly a year demonstrates that it was not diligent in making
these early infringement contention responses. Furthermore, the Defendant still
did not amend its response to the infringement contentions until July 15, over
a month after the June 3 deposition of Tadipatri. This does not constitute a
diligent effort to amend its infringement responses.55
55
Cf. Tillotson Corp. v. Shijiazhaung Hongray Plastic Products, Ltd.,
244 F.R.D. 683, 690 (N.D. Ga. 2007) (finding that a plaintiff that supplemented
its infringement contentions four days after discovering new evidence acted
diligently).
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Thus, the Court concludes that the Defendant is bound by its earlier
responses admitting this claim element. “[A]llowing such tardy disclosures
would go against the policy and purpose of the Patent Local Rules.”56 These
rules “were adopted in order to ‘facilitate the speedy, fair and efficient resolution
of patent disputes.’”57 “This purpose is undermined when parties are permitted
to make initial ‘place holder’ disclosures regarding infringement or invalidity,
then makes substantial changes or additions to those contentions immediately
prior to or after the close of fact discovery.”58
Therefore, only the final element of Claim 18 is in dispute. The parties
disagree as to whether the Generation One Products contain the final element
of Claim 18. This element states that “the long axes of said bassinet assembly
and said changing table assembly are perpendicular to the long axis of said
upper frame assembly.”59 The Plaintiff argues that the person of ordinary skill
in the art would apply the “X-axis” and “Y-axis” coordinate system in this
context. The Plaintiff contends that, applying that standard, the long axis of the
upper frame assembly runs the length of the long side of the upper frame
assembly, and the long axis of the bassinet assembly similarly runs along the
56
ChemFree Corp. v. J. Walter, Inc., 250 F.R.D. 570, 573 (N.D. Ga.
57
Id. (quoting N.D. Ga. Patent L.R. 1.2(a)).
58
Id.
59
‘796 Patent, 9:4-6.
2007).
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long side of the bassinet assembly. Thus, according to the Plaintiff, the Accused
Products meet this limitation. The Defendant argues that the “long axes” are the
“corner-to-corner diagonals,” not the long sides of these parts, and that the
diagonals of the playpens and the changing tables in the Accused Products are
not perpendicular to each other.60 Thus, according to the Defendant, this
limitation is not met.
The Court finds that an issue of material fact exists as to this question.
Therefore, neither party is entitled to summary judgment on this issue. The
Plaintiff offers the expert testimony of Dr. Robert Andres. In this testimony, Dr.
Andres states a rectangle only has one “long axis,” and that in the context of the
Accused Products, that long axis is the long side of the upper frame assembly
and the long sides of the bassinet and changing table.61 In contrast, the
Defendant offers the expert opinion of Dr. Singhose that the “long axes” of the
Accused Products’ upper frame assemblies, changing tables, and bassinets are
the corner-to-corner diagonals.62 The Plaintiff responds that an “axis” is distinct
from a “diagonal,” and that Claim 18 calls for a single “long axis,” and not
multiple long axes.63 The Defendant’s evidence, although more far-fetched than
60
Def.’s Br. in Opp’n to Pl.’s Mot. for Partial Summ. J., at 20-21.
61
Pl.’s Statement of Material Facts ¶¶ 111-26.
62
Def.’s Statement of Additional Material Facts ¶¶ 86-97; Def.’s Br.
in Opp’n to Pl.’s Mot. for Partial Summ. J., at 20-21.
63
Pl.’s Mot. for Partial Summ. J., at 19-20.
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the Plaintiff’s evidence at first glance, is enough to create a question of fact for
the jury to decide. The Defendant’s arguments go to the weight of the Plaintiff’s
expert opinion, and are proper for a jury to consider. Therefore, the Plaintiff is
not entitled to summary judgment as to infringement of Claim 18 by the
Generation One Products.
2. Generation Two Products
Next, the Defendant argues that it is entitled to summary judgment as
to non-infringement of Claim 18 by the Generation Two Products. The
Generation Two playpens utilize cantilevered tubes to support the “Dream
Centre” bassinet. With the Generation Two Products, the bassinet is supported
on the playpen by cantilevered tubes that are attached to the vertical legs of the
playpen, instead of being supported directly from the top frame of the playpen.
The Plaintiff concedes that the Generation Two Products do not literally infringe
any of the asserted claims.64 Therefore, it must rely upon the doctrine of
equivalents to assert infringement by these products.
“An accused device that does not literally infringe a claim may still
infringe under the doctrine of equivalents if each limitation of the claim is met
in the accused device either literally or equivalently.”65 “An element in the
64
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 38-39.
Amgen Inc. v. Hoffman-La Roche, Ltd., 580 F.3d 1340, 1382 (Fed.
Cir. 2009) (quoting Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1459 (Fed.
Cir. 1998)).
65
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accused product is equivalent to a claim limitation if the differences between the
two are ‘insubstantial’ to one of ordinary skill in the art.”66 “Insubstantiality
may be determined by whether the accused device performs substantially the
same function in substantially the same way to obtain the same result as the
claim limitation.”67 And, “[e]ach element contained in a patent claim is deemed
material to defining the scope of the patented invention, and thus the doctrine
of equivalents must be applied to individual elements of the claim, not to the
invention as a whole.”68 “It is important to ensure that the application of the
doctrine, even as to an individual element, is not allowed such broad play as to
effectively eliminate that element in its entirety.”69 “Where the evidence is such
that no reasonable jury could determine two elements to be equivalent, district
courts are obliged to grant partial or complete summary judgment.”70
The central question for courts is “whether the substitution of one
element for the other is a change of such substance as to make the doctrine of
equivalents inapplicable; or conversely, whether under the circumstances the
change was so insubstantial that” the application of the doctrine of equivalents
66
Id.
67
Id.
68
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29
(1997).
69
Id.
70
Id. at 39 n.8.
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is justified.71 In applying the doctrine, a court should consider a number of
factors, including:
What constitutes equivalency must be determined against the
context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the
prisoner of a formula and is not an absolute to be considered in a
vacuum. It does not require complete identity for every purpose
and in every respect. In determining equivalents, things equal to
the same thing may not be equal to each other and, by the same
token, things for most purposes different may sometimes be
equivalents. Consideration must be given to the purpose for which
an ingredient is used in a patent, the qualities it has when
combined with the other ingredients, and the function which it is
intended to perform. An important factor is whether persons
reasonably skilled in the art would have known of the
interchangeability of an ingredient not contained in the patent
with one that was.72
However, it is also important to remember that the doctrine of equivalents
“necessarily adds uncertainty to the scope of patent claims, and thereby detracts
from the public-notice function of patent claims and risks deterring
non-infringing and potentially innovative endeavors.”73 “In recognition of this
risk, and in an effort to strike the proper balance between protecting patentees
while also providing sufficient notice to the public, various rules of law have
emerged to constrain when and how the doctrine of equivalents is to be
71
Id. at 24 (internal quotations omitted).
72
Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609
(1950).
73
Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1358
(Fed. Cir. 2005).
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applied.”74 One of these legal principles is the “all limitations” rule. This rule
“holds that an accused product or process is not infringing unless it contains
each limitation of the claim, either literally or by an equivalent.”75 There are two
implications of this rule. “First, the all limitations rule requires that equivalence
be assessed on a limitation-by-limitation basis, as opposed to from the
perspective of the invention as a whole.”76 “Second, an element of an accused
product or process is not, as a matter of law, equivalent to a limitation of the
claimed invention if such a finding would entirely vitiate the limitation.”77
Here, a finding of equivalence is impermissible under the all-elements
rule of Warner-Jenkinson because it would eliminate the “bassinet assembly
removably supported on said upper frame assembly” limitation out of these
claims.78 “There is no set formula for determining whether a finding of
equivalence would vitiate a claim limitation, and thereby violate the all
74
Id.
75
Id.
76
Id.; see also Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520
U.S. 17, 29 (1997) (“Each element contained in a patent claim is deemed
material to defining the scope of the patented invention, and thus the doctrine
of equivalents must be applied to individual elements of the claim, not to the
invention as a whole.”).
77
Freedman Seating Co., 420 F.3d at 1358.
See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160 (Fed. Cir. 1998)
(rejecting under the all-elements rule the conclusion that a conical-shaped part
of an artificial hip socket and a hemispherical shaped part were equivalent
because such a conclusion “would write the ‘generally conical outer surface’
limitation out of the claims”).
78
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limitations rule.”79 “Rather, courts must consider the totality of the circumstances of each case and determine whether the alleged equivalent can be fairly
characterized as an insubstantial change from the claimed subject matter
without rendering the pertinent limitation meaningless.”80
For example, in Freedman Seating Co. v. American Seating Co., the
patent at issue described a stowable seat for use in public transportation.81 The
claimed product and the accused product used different support structures.82
The claimed product contained a support member having a moveable end that
was “slidably mounted” to the seatbase.83 In contrast, the accused product
contained a support member that was “rotatably” mounted, not slidably
mounted, to the seatbase.84 The Federal Circuit, after analyzing a number of
cases applying the doctrine of equivalents, concluded that a finding of equivalent
infringement would vitiate the “slidably mounted” limitation in the claim.85 The
court explained that the plaintiff’s doctrine of equivalent argument “would mean
that any support member capable of allowing translational and rotational
79
Freedman Seating Co., 420 F.3d at 1359.
80
Id.
81
Id. at 1352.
82
Id. at 1354.
83
Id. at 1352.
84
Id. at 1355.
85
Id. at 1361.
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motion would be equivalent to a support member ‘slidably mounted to said
seatbase,’ which reads ‘slidably mounted’ completely out of the claims.”86 This,
according to the court, “is the precise type of overextension of the doctrine of
equivalents that the claim vitiation doctrine is intended to prevent.”87 The court
also explained that the subject matter claimed in this patent involved “simple
and well-known technologies,” but the patentees nonetheless chose to limit their
claims narrowly to the slide mechanism.88
Similarly, in Sage Products, Inc. v. Devon Industries, Inc., the Federal
Circuit rejected a plaintiff’s doctrine of equivalents argument.89 There, the
asserted patent described a container for discarding syringes.90 The patent
claimed “an elongated slot at the top of the container body,” and the accused
product in that case had a slot located in the interior of the container rather
than the top.91 The Federal Circuit concluded that a finding of equivalent
infringement would vitiate the “slot at the top of the container body”
86
Id. at 1362.
87
Id.
88
Id.
89
Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420 (Fed. Cir.
90
Id. at 1422.
91
Id. at 1422-23.
1997).
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limitation.92 The court explained that it reached this conclusion due to the
simplicity of the structure of the device and the narrowness of the claim.93 The
court explained that a “skilled patent drafter” would foresee the “limiting
potential” of this “over said slot” limitation, and realize that such specificity
would render the claimed invention to be narrow.94 The court stated that “[i]f
Sage desired broad patent protection for any container that performed a
function similar to its claimed container, it could have sought claims with fewer
structural encumbrances.”95
Likewise, in this case, a finding of equivalence would entirely vitiate the
“bassinet assembly removably supported on said upper frame assembly”
limitation. It is not a “subtle difference in degree,” but instead is a “substantial
difference or difference in kind.”96 Like in Freedman Seating Company and Sage
Products, the subject matter of the ‘796 Patent “involves relatively simple and
well-known technologies.”97 The choice between supporting the bassinet on the
92
See id. at 1424-26.
93
Id.
94
Id. at 1425.
95
Id.
Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309,
1321 (Fed. Cir. 1998); see also Freedman Seating Co., 420 F.3d at 1361 (finding
96
that the “structural difference” between a “slidably mounted” seat and a
“rotatably mounted” seat “is not a ‘subtle difference in degree,’ but rather, ‘a
clear, substantial difference or difference in kind.’”).
97
Freedman Seating Co., 420 F.3d at 1362.
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upper frame assembly or some other part of the playpen such as the vertical
struts was not unforeseeable to the patentee. The use of cantilevered tubes was
not the result of a technological breakthrough. Yet, the patentee still chose to
limit the claim to a bassinet removably supported on the upper frame assembly.
“Members of the public were therefore justified in relying on this specific
language in assessing the bounds of the claim.”98 Concluding that bassinets
removably supported from other parts of the playpen equivalently infringe
Claim 18 (and its dependent claims) would “unjustly undermine the reasonable
expectations of the public.”99
And, unlike in Hughes Aircraft Company v. United States, there was no
“subsequent change in the state of the art, such as later-developed technology”
that “obfuscated the significance of the limitation at the time of its incorporation
into the claim.”100 The patentee here could have sought claims with fewer
structural requirements that would have provided broader patent protection,
such as not requiring that the bassinet be connected to the upper frame
assembly. Therefore, since a finding of infringement under the doctrine of
98
Id.
99
Id.; see also Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420,
1425 (Fed. Cir. 1997) (“[A]s between the patentee who had a clear opportunity
to negotiate broader claims but did not do so, and the public at large, it is the
patentee who must bear the cost of its failure to seek protection for this
foreseeable alteration of its claimed structure.”).
100
Cir. 1998).
Hughes Aircraft Co. v. United States, 140 F.3d 1470, 1475 (Fed.
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equivalents would vitiate the “removably supported on said upper frame
assembly” limitation of the patent, the Defendant is entitled to summary
judgment of non-infringement by the Generation Two Products.101 And, since the
Generation Two Products do not infringe Claim 18 as a matter of law, they also
do not infringe the other claims that the Plaintiff asserts, since these are
dependent claims.102 Therefore, the Defendant is entitled to summary judgment
of non-infringement as to the Generation Two Products for all of the claims
asserted by the Plaintiff.
B. Claims 19, 20, 31, and 32 – “Rectangular” Limitation
Next, the Defendant argues that both generations of the Accused Products
do not meet the “rectangular frame” limitation of Claims 19, 20, 31, and 32, and
therefore, it is entitled to summary judgment as to these claims. The Plaintiff
argues that it is entitled to summary judgment as to infringement of these
claims by Generation One Products.103 Claim 19 describes a playpen “wherein
the changing table assembly includes a rectangular frame, and means for
101
Cir. 1997).
Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1421 (Fed.
Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1553
(Fed. Cir. 1989) (“It is axiomatic that dependent claims cannot be found
infringed unless the claims from which they depend have been found to have
been infringed; hence Wahpeton's zeal for a determination of infringement of
claims dependent on independent claims 14 and 21 is necessarily doomed by its
failure to obtain the determination of infringement of those independent
claims.”).
102
103
Pl.’s Mot. for Partial Summ. J., at 28.
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securing a changing table surface to span said rectangular frame.”104 Claims 20,
31, and 32 are dependent upon Claim 19.
The Defendant argues that the rectangular frame limitation is not met
for two reasons. First, the Defendant argues that “rectangular” means the
changing table frame must be an exact rectangle – two sets of opposing sides of
equal length, where the sides are at right angles to one another.105 Under such
a view, the elbows of this frame must have exactly ninety degree angles.
According to the Defendant, the Accused Products do not infringe these claims
because the sides of their changing table frames are slightly curved and bowed
outward – they are not an exact rectangle with ninety degree angles.106 Second,
the Defendant argues that a rectangular frame must be “planar,” and that the
changing tables of the Accused Products are not planar because they are threedimensional.107 The Plaintiff responds that a person of ordinary skill in the art
would understand “rectangular” to mean that a frame is “substantially”
rectangular in shape.108 The Plaintiff asserts that “rectangular” is “conventional,
and refers to a general shape – not a ‘perfect rectangle.’”109 Thus, under this
104
‘796 Patent 9:7-9.
105
Def.’s Mot. for Summ. J., at 30-31.
106
Id. at 31.
107
Id. at 32-33.
108
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 35.
109
Id.
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“common sense” view, the changing table frames of the Accused Products meet
this limitation because they are generally in the shape of a rectangle – even if
they are slightly curved.110 Further, the Plaintiff argues that the claim does not
require a “planar” rectangular frame, and that such a requirement would
improperly insert a limitation from a specification into the claim.111
The Court concludes that an issue of material fact exists as to this
question. Therefore, neither party is entitled to summary judgment. Both the
Plaintiff and the Defendant have offered evidence supporting their respective
arguments. The Defendant argues that the plain meaning of “rectangular”
means an exact rectangle, while the Plaintiff offers evidence that the person of
ordinary skill in the art would read the term “rectangular” to be generally in the
shape of a rectangle. Furthermore, the Defendant offered expert evidence
supporting its argument that a rectangle must be “planar,” while the Plaintiff
offers a compelling argument that this contravenes the plain meaning of the
term “rectangular.” This presents an issue of material fact that a jury must
resolve. Therefore, summary judgment for either party would be inappropriate.
C. Claims 31 and 32 – Pairs of Tubes Limitation
Next, the Defendant moves for summary judgment as to Claims 31 and
32 based upon the pairs of tubes limitation. Claim 31, and the dependent Claim
110
Id.
111
Pl.’s Mot. for Partial Summ. J., at 29-30.
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32, provide that the playpen’s “rectangular frame includes a pair of lateral tubes
joined to a pair of tubular side assemblies.”112 The Defendant argues that the
Accused Products do not infringe Claims 31 and 32 because they do not have a
pair of lateral tubes that are joined to a pair of tubular side assemblies. It
contends that the Accused Products do not have two pairs of tubes at all, as
these claims require. Instead, the changing table frames in the Accused
Products only utilize one pair of C-shaped tubes that connect at each end.113 The
Plaintiff responds that Claims 31 and 32 only requires a single pair of tubes,
that when joined, form a pair of tubular side assemblies. It contends that the
claims do not require there to be four “joints,” but instead only requires that
tubes be “joined” and then form a pair of lateral and side tubes.114
The Court concludes that this claim limitation is not met as a matter of
law. The plain language of Claims 31 and 32 clearly envisions two separate
pairs of tubes – one pair of lateral tubes, and one pair of tubular side assemblies.
Thus, the changing table frame in such a playpen would have 4 tubes total. In
contrast, the Accused Products only contain 2 tubes (one pair) – two “C-shaped”
tubes that form the frame. The Plaintiff’s argument distorts the plain language
of the claim. When the two tubes in the Accused Products are joined, they still
112
‘796 Patent 10:13-15.
113
Def.’s Mot. for Summ. J., at 34.
114
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 37.
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do not create two pairs of tubes. They may create four sides of the frame – but
that is not the same as two different pairs of tubes. Given the plain language of
the claim, no reasonable jury could conclude that this claim limitation is met.
The Plaintiff then argues that, even if the changing table frame does not
literally infringe, it still infringes under the doctrine of equivalents. However,
this argument also fails. As discussed above, the doctrine of equivalents cannot
be applied in a manner that would vitiate the limitations of a claim.115
Concluding that the Accused Products equivalently infringe Claims 31 and 32
would do just that. Claims 31 and 32 specifically enumerate that the rectangular
frame be composed of a pair of lateral side tubes joined to a pair of tubular side
assemblies.116 This is not a minor detail of Claim 31 – it is a main component of
the structure described. This limitation, in fact, is the entirety of Claim 31 –
Claim 31 is a dependent claim that adds this sole limitation to Claim 19. Thus,
applying the doctrine of equivalents would vitiate the entirety of Claim 31. This
is not a subtle difference in degree, but instead is a substantial difference.
Furthermore, this also demonstrates that the patentees clearly envisioned that
the rectangular frames could be structured in a different manner, but chose this
specific structure in Claim 31. It would violate the reasonable expectations of
the public for the Court to now expand these claims to include other structures.
115
Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1358
(Fed. Cir. 2005).
116
‘796 Patent 10:13-15.
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This and the fact that this is relatively simple technology weigh against
applying the doctrine of equivalents. The patentees could have written these
claims to encompass this type of design, and did not. Therefore, the Plaintiff’s
doctrine of equivalents argument also fails, and the Defendant is entitled to
summary judgment as to Claims 31 and 32.
D. Damages
Next, the Defendant moves for summary judgment as to damages. First,
the Defendant argues that the Plaintiff should be precluded from recovering presuit damages. The Defendant argues that the Plaintiff failed to mark any of its
patented products covered by the ‘796 Patent, and consequently it cannot
recover damages for any time prior to April 10, 2013, the date that it commenced
this action.117 The Plaintiff concedes that it never sought pre-suit damages.118
Therefore, the Plaintiff’s potential recovery will not include pre-suit damages.
The Defendant also argues that the Plaintiff should not be able to recover
damages at all if only one generation of the Defendant’s products is ultimately
found to infringe the ‘796 Patent.119 According to the Defendant, the Plaintiff’s
damages expert, Carrie Distler, did not provide specific opinions as to damages
for each generation of products. The Defendant contends that instead, Distler
117
Def.’s Mot. for Summ. J., at 36-37.
118
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 39.
119
Def.’s Mot. for Summ. J., at 37.
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only provided calculations for all of the Accused Products together, and did not
disaggregate the calculations for the different generations. Therefore, according
to the Defendant, the Plaintiff has not produced sufficient evidence to sustain
a claim for damages from infringement by only one generation of the Accused
Products. The Plaintiff does not dispute that Distler did not provide specific
damages calculations as to each generation. Instead, the Plaintiff argues that:
(1) it is still entitled by statute to a reasonable royalty for the use of the
invention by the infringer; (2) determining the damages for only Generation One
Products would be a simple mathematical exercise that the jury could perform;
and (3) the Defendant’s arguments are more appropriate for cross-examination,
and not summary judgment, because they go to the weight of Distler’s
testimony.120 The Court agrees.
First, the Plaintiff is still entitled by statute to recover a reasonable
royalty. 35 U.S.C. § 284 provides in relevant part that “[u]pon finding for the
claimant the court shall award the claimant damages adequate to compensate
for the infringement, but in no event less than a reasonable royalty for the use
made of the invention by the infringer, together with interest and costs as fixed
by the court.”121 “If a patentee’s evidence fails to support its specific royalty
estimate, the fact finder is still required to determine what royalty is supported
120
Pl.’s Br. in Opp’n to Def.’s Mot. for Summ. J., at 40-41.
121
35 U.S.C. § 284 (emphasis added).
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by the record.”122 “The statute is unequivocal that the district court must award
damages in an amount no less than a reasonable royalty.”123 “Indeed, if the
record evidence does not fully support either party’s royalty estimate, the fact
finder must still determine what constitutes a reasonable royalty from the
record evidence.”124 “[S]ection 284 is clear that expert testimony is not necessary
to the award of damages, but rather ‘may [be] receive[d] . . . as an aid.’”125 In
such a case, the Court should award “such reasonable royalties as the record
evidence will support.”126 Therefore, summary judgment would be inappropriate
because the Plaintiff will still be entitled to some reasonable royalty amount, to
Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1327 (Fed. Cir. 2014),
overruled on other grounds by Williamson v. Citrix Online, LLC, 792 F.3d 1339
(Fed. Cir. 2015); see also Dow Chem. Co. v. Mee Indus., Inc., 341 F.3d 1370,
122
1382 (Fed. Cir. 2003) (“The district court’s conclusion that no damages could be
awarded, in light of the presumption of damages when infringement is proven,
was in error.”); Del Mar Avionics, Inc. v. Quinton Instrument Co., 836 F.2d
1320, 1327 (Fed. Cir. 1987) (“The requirement to determine actual damages is
not diminished by difficulty of determination.”).
123
Dow Chem. Co., 341 F.3d at 1381.
Apple Inc., 757 F.3d at 1328; see also SmithKline Diagnostics, Inc.
v. Helena Labs. Corp., 926 F.2d 1161, 1167-68 (Fed. Cir. 1991) (“[T]he factual
124
determination of a reasonable royalty, however, need not be supported, and
indeed, frequently is not supported by the specific figures advanced by either
party . . . . [T]he district court may reject the extreme figures proffered by the
litigants as incredible and substitute an intermediate figure as a matter of its
judgment from all of the evidence.”).
125
Dow Chem. Co., 341 F.3d at 1382.
Id.; see also Apple Inc., 757 F.3d at 1328 (“Certainly, if the
patentee’s proof is weak, the court is free to award a low, perhaps nominal,
royalty, as long as that royalty is supported by the record.”).
126
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later be determined by the Court, if the Generation One Products are found to
infringe.
Furthermore, the Defendant’s expert, Daniel Cenatempo, demonstrates
that Distler’s calculations can be “corrected” to determine the damages
attributable to the Generation One Products.127 Cenatempo disagrees as to
whether Distler “reliably established that Graco lost sales, had the capacity to
make those sales, or the amount of profit that it would have earned.”128
However, he admits that Distler’s calculations, if believed to be true and
accurate, can be easily divided to show only damages for Generation One
Products.129 Cenatempo explains that “if I assumed that she was correct to assist
the fact finder, then her total alleged damages for the accused Generation 1
products are $155,567.”130 If a jury were to believe Distler’s calculations are
accurate, then it would be simple to determine the damages attributable to the
Generation One Products, as Cenatempo demonstrated. Therefore, Distler’s
expert opinion is not insufficient as a matter of law, and the Defendant is not
entitled to summary judgment as to damages.
127
Expert Report of Daniel Cenatempo [Doc. 152-14] at 58.
128
Id.
129
Id.
130
Id.
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Finally, the Defendant moves for summary judgment as to the Plaintiff’s
claim for lost profits, arguing that the Plaintiff’s lost profit evidence should be
excluded for the reasons presented in the Defendant’s Motion to Exclude [Doc.
136]. This argument – which goes to the admissibility of the lost profits
evidence, and not the parties’ summary judgment motions – will be determined
by the Court in relation to the Defendant’s Motion to Exclude Lost Profits
Evidence [Doc. 136].
E. Invalidity
Finally, the Defendant argues that the ‘796 Patent is invalid. The
Defendant argues that the ‘796 Patent is invalid as anticipated under 35 U.S.C.
§ 102, as obvious under 35 U.S.C. §103, and due to failure to identify the true
inventors on the patent. A patent is presumed to be valid under 35 U.S.C. §
282.131 Furthermore, “[e]ach claim of a patent (whether in independent,
dependent, or multiple dependent form) shall be presumed valid independently
of the validity of other claims; dependent or multiple dependent claims shall be
presumed valid even though dependent upon an invalid claim.”132 “[T]his
presumption can only be overcome by clear and convincing evidence of facts to
the contrary.”133 “Anticipation under 35 U.S.C. § 102 is a question of fact, while
35 U.S.C. § 282(a); see also Dana Corp. v. Am. Axle & Mfg., Inc.,
279 F.3d 1372, 1375 (Fed. Cir. 2002).
131
132
35 U.S.C. § 282(a).
133
Dana Corp., 279 F.3d at 1375.
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obviousness under § 103 is a question of law based on underlying findings of
fact.”134
1. Infringement vs. Invalidity
First, the Plaintiff contends that the Defendant’s invalidity argument is
misplaced because infringement and invalidity are distinct legal issues. The
Plaintiff emphasizes that its Motion for Partial Summary Judgment focuses on
infringement, and that the validity of a patent does not affect whether it has
been infringed.135 Thus, according to the Plaintiff, the Court should not “reach”
the issue of invalidity.136 The Court acknowledges, as the Plaintiff insists, that
infringement and validity are separate inquiries. Thus, an issue of material fact
as to validity may not necessarily preclude summary judgment as to infringement. However, as outlined above, issues of material fact exist as to certain
infringement issues, as well as to issues related to validity (which is discussed
below). The Court will not fault the Defendant for including its invalidity
arguments in its brief on this particular motion, instead of in its own Motion for
Summary Judgment. Factual issues concerning both infringement and validity
Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381
(Fed. Cir. 2015) (citing Flo Healthcare Sols., LLC v. Kappos, 697 F.3d 1367,
1375 (Fed. Cir. 2012)).
134
135
Pl.’s Reply Br., at 20.
136
Id. at 23.
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will still need to be resolved by the fact finder. Therefore, the Court will address
the Defendant’s invalidity arguments.
2. Invalid as Anticipated
The Defendant first argues that the ‘796 Patent is invalid as anticipated.
“A patent claim is anticipated if a single prior art reference expressly or
inherently discloses every limitation of the claim.”137 “A patent claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference.”138
“Anticipation challenges under § 102 must focus only on the limitations actually
recited in the claims.”139 Whether a prior art reference discloses a limitation is
a question of fact.140
The Defendant argues that U.S. Patent No. 5,918,329, issued to Huang
et al. (the “Huang Patent”) anticipates the claims asserted by the Plaintiff.141
The Huang Patent, titled “Foldable Bed Detachably Mounted onto a Crib” was
137
Cir. 2014).
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1252 (Fed.
SRI Int’l v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed. Cir.
2008) (quoting Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed.
138
Cir. 1987)).
139
DDR Holdings, 773 F.3d at 1252.
140
Id.
141
Def.’s Br. in Opp’n to Pl.’s Mot. for Partial Summ. J., at 26-27.
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filed on December 9, 1997.142 This precedes the filing date of the ‘796 Patent by
170 days.143 The Huang Patent describes a bed and changing table that are
detachably mounted onto a playpen.144 The “main objective” of the Huang Patent
is to provide a foldable bed which can be fitted onto a crib.145 On May 27, 1998,
Robert J. Warner, Jr. and Richard Essex, the original inventors of the ‘796
Patent, filed a patent application with the PTO.146 During the prosecution of the
‘796 Patent, a PTO examiner determined that portions of the ‘796 Patent were
anticipated by the Huang Patent.147 In an Office Action dated August 15, 2001,
the PTO found certain claims in the patent application allowable, but rejected
then-pending claims 20-26, 28-29, 31, and 33-34 in Essex and Warner’s
application.148 In response, Essex and Warner claimed that their invention was
conceived and reduced to practice before the Huang Patent.149 They submitted
142
Def.’s Statement of Additional Material Facts ¶ 152.
143
Id. ¶ 153.
144
Id. ¶ 154.
145
Id.
146
Pl.’s Statement of Material Facts ¶ 13.
147
Def.’s Statement of Additional Material Facts ¶ 241. The initial
application for the ‘796 Patent was filed on May 27, 1998. Id. ¶ 250. The PTO
issued the ‘796 Patent on May 18, 2004. Pl.’s Statement of Material Facts ¶ 24.
148
Pl.’s Statement of Material Facts ¶ 16; Pl.’s Response to Def.’s
Statement of Additional Material Facts ¶ 241.
149
Def.’s Statement of Additional Material Facts ¶ 242.
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a declaration under 37 C.F.R. § 1.131, where they declared that the claims in
their application that were rejected as anticipated by the Huang Patent were
nonetheless patentable because the invention was conceived and reduce to
practice before the effective date of the Huang Patent.150 Essex and Warner
stated in their declaration that they had already developed and built a prototype
of the playpen.151 Furthermore, in this declaration, Essex and Warner added
three new claims, including what would ultimately become Claim 18.152 The
PTO accepted the declaration on February 19, 2002, and the ‘796 Patent was
issued on May 18, 2004.153
The Defendant now argues that a material issue of fact exists as to the
effectiveness of the Plaintiff’s “swear behind” of the presumptive date of the ‘796
Patent.154 “Conception is the formation, in the mind of the inventor, of a definite
and permanent idea of the complete and operative invention, as it is thereafter
to be applied in practice.”155 “A reduction to practice can be either a constructive
reduction to practice, which occurs when a patent application is filed, or an
150
Pl.’s Statement of Material Facts ¶ 17.
151
Id. ¶ 18.
152
Id. ¶ 20.
153
Id. ¶¶ 21, 23.
154
Def.’s Br. in Opp’n to Pl.’s Mot. for Partial Summ. J., at 28.
155
Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998).
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actual reduction to practice.”156 “In order to establish an actual reduction to
practice, the inventor must prove that: (1) he constructed an embodiment or
performed a process that met all the limitations of the interference count; and
(2) he determined that the invention would work for its intended purpose.”157
“[I]n the context of establishing conception and reduction to practice for the
purposes of establishing a priority date, the burden of production can shift from
the patent challenger to the patentee.”158 “This is because a patent challenger
has the burden of producing evidence to support a conclusion of unpatentability
under § 102 or § 103, but a patentee bears the burden of establishing that its
claimed invention is entitled to an earlier priority date than an asserted prior
art reference.”159 This burden of production shifts “because the patentee
affirmatively seeks to establish a proposition not relied on by the patent
challenger and not a necessary predicate for the unpatentability claim
asserted—effectively an affirmative defense.”160
156
Id.
157
Id.
158
In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir.
159
Id. at 1375-76.
160
Id. at 1376.
2016).
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The Plaintiff responds that the PTO never cited the Huang Patent against
Claim 18 or the other claims asserted in this action.161 Instead, according to the
Plaintiff, the inventors swore behind other claims that were initially rejected by
the PTO – which are not at issue here.162 The Court agrees. The Defendant has
provided no evidence that the original applicants relied upon conception and
reduction to practice to establish a prior effective date for the claims asserted
in this action. The claims which Essex and Warner did swear behind (and which
the PTO originally concluded to be anticipated by the Huang Patent) are not
asserted by the Plaintiff in this action. Essex and Warner did not rely upon a
prior effective date for Claim 18 and its dependent claims. Since the Plaintiff
does not contend that its asserted claims are entitled to an earlier priority date,
it does not bear the burden of proof on this issue. The Defendant, which does
bear the heavy burden of proof, has failed to produce evidence that the claims
asserted were anticipated by the Huang Patent. Consequently, its invalidity as
anticipated argument fails.
3. Obviousness
Next, the Defendant argues that the ‘796 Patent is invalid as obvious. The
Defendant contends that the ‘796 Patent claims a predictable combination of
161
Pl.’s Reply Br., at 24.
162
Id.
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known prior art elements such that the claimed invention is obvious.163 A patent
is invalid “if the differences between the claimed invention and the prior art are
such that the claimed invention as a whole would have been obvious before the
effective filing date of the claimed invention to a person having ordinary skill in
the art to which the claimed invention pertains.”164 The reason an obvious claim
is invalid “is because its differences over the prior art are simply not sufficient
to warrant a patent grant.”165 “The determination of obviousness under 35
U.S.C. § 103 is a legal conclusion based on underlying facts.”166 The Defendant
is required to prove that the asserted claims are obvious by clear and convincing
evidence.167
This underlying factual inquiry into obviousness is guided by the Graham
factors, which include: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claimed invention, (3) the level of
ordinary skill in the art, and (4) any relevant secondary considerations.168
163
Def.’s Br. in Opp’n to Pl.’s Mot. for Partial Summ. J., at 28-33.
164
35 U.S.C. § 103.
165
Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1363
(Fed. Cir. 2005).
Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1290 (Fed. Cir.
2013)(citing Graham v. John Deere Co., 383 U.S. 1, 17 (1966)).
166
167
Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381
(Fed. Cir. 2015).
TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1341 (Fed. Cir. 2010)
(citing Graham, 383 U.S. at 17-18).
168
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Furthermore, “[w]hen determining whether a patent claiming a combination of
known elements would have been obvious, we ‘must ask whether the improvement is more than the predictable use of prior art elements according to their
established functions.’”169 This inquiry usually involves “considering the
‘interrelated teachings of multiple patents; the effects of demands known to the
design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.’”170
The Court finds that this record presents a genuine issue of material fact
as to whether the patent is invalid as obvious. The Plaintiff first argues that the
combination of U.S. Patent No. 5,867,850 (the “Mariol ‘850”), U.S. Patent No.
5,553,336 (the “Mariol ‘336”), U.S. Patent No. 5,778,465 (“Myers”), and U.S.
Patent No. 2,493,401 (“Gunter”) renders the ‘796 Patent invalid as obvious.
Mariol ‘850 provided that “Play yards and cribs often are utilized with bassinets
which are adapted to be disposed over or hang from the play yard and crib.”171
Mariol ‘336 describes a rectangular playpen with a structure similar to an upper
169
Id.
170
Id. (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
171
Def.’s Statement of Additional Material Facts ¶ 174.
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frame assembly.172 Gunter describes a rectangular frame on a crib that can be
used to change or dress a child.173 A reasonable fact finder could find that this
combination of prior art rendered the asserted claims in the ‘796 Patent obvious.
Furthermore, the Defendant also argues that the ‘796 Patent is invalid
due to a second combination. According to the Defendant, a combination of U.S.
Patent No. 5,845,349 (“Tharalson”), U.S. Patent No. 3,644,947 (“Padera”), and
Mariol ‘336 also renders the ‘796 Patent obvious. According to the Defendant,
Tharalson provides for a playpen that can be converted for use as a bassinet,
changing table, and co-sleeper.174 Furthermore, Padera provides for a device that
facilitates changing an infant which attaches to the side railings of a crib.175
Thus, according to the Plaintiff, these prior arts, along with Mariol ‘336, show
that having a combination playpen, bassinet, and changing table was an obvious
concept.176
The Plaintiff argues that none of these combination arguments are
supported by evidence. The Plaintiff points out that these combinations are not
mentioned in Dr. Singhose’s invalidity reports.177 Thus, according to the
172
Def.’s Br. in Opp’n to Pl.’s Mot. for Partial Summ. J., at 30.
173
Def.’s Statement of Additional Material Facts ¶ 199.
174
Def.’s Br. in Opp’n to Pl.’s Mot. for Partial Summ. J., at 32-33.
175
Id. at 33.
176
Id.
177
Pl.’s Reply Br., at 24.
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Plaintiff, the Plaintiff falls far short of the clear and convincing standard to
show that the ‘796 Patent is invalid. However, the Court finds a genuine issue
of material fact exists as to the underlying factual findings for the obviousness
inquiry. Even despite the lack of analysis by Dr. Singhose, a reasonable fact
finder, applying the Graham factors, could conclude that these combinations are
obvious, and thus render the patent invalid. Therefore, the Defendant’s
invalidity due to obviousness argument survives summary judgment.
4. Inventorship
Finally, the Defendant argues that the ‘796 Patent is invalid because it
fails to identify the “true inventor.”178 “A patent is invalid if more or fewer than
the true inventors are named.”179 “Because a patent is presumed valid under 35
U.S.C. § 282, there follows a presumption that the named inventors on a patent
are the true and only inventors.”180 This is a heavy burden – exclusion of an
actual inventor must be proven by clear and convincing evidence.181 The
Defendant argues that “the identity of the true inventors is murky” because
marketing employees of Century Products Company (the original employer of
178
Def.’s Br. in Opp’n to Pl.’s Mot. for Partial Summ. J., at 40.
179
Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n, 383 F.3d 1352,
1381 (Fed. Cir. 2004).
180
Id.
181
Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998).
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Warner and Essex) provided assistance in designing the playpen.182 The Plaintiff
responds that this argument falls far short of meeting the Defendant’s burden
on this issue.183 According to the Plaintiff, this is mere speculation, which does
not constitute clear and convincing evidence.184 The Court agrees.
To prevail on this argument, the Defendant “must show, by clear and
convincing evidence, that the unnamed but alleged co-inventor made a
contribution to the conception of at least one claim of the patent ‘that is not
insignificant in quality, when that contribution is measured against the
dimension of the full invention.’”185 “It is not enough under that standard if the
alleged co-inventor ‘merely explain[ed] to the real inventors well-known concepts
and/or the current state of the art.’”186 Instead, the party asserting invalidity
must provide evidence of substantial contributions to the conception by the
alleged co-inventors.187 The Defendant has not produced evidence that an
unnamed co-inventor made significant contributions to the conception of the
claims in the ‘796 Patent, or what the degree of those supposed contributions
182
Def.’s Br. in Opp’n to Pl.’s Mot. for Partial Summ. J., at 40.
183
Pl.’s Reply Br., at 23.
184
Id.
185
CardiAQ Valve Techs., Inc. v. Neovasc Inc., 708 F. App’x 654, 658
(Fed. Cir. 2017).
Id. (quoting Acromed Corp. v. Sofamor Danek Grp., Inc., 253 F.3d
1371, 1379 (Fed. Cir. 2001)).
186
187
Acromed Corp., 253 F.3d at 1379.
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were. The Defendant’s vague references to potential co-inventors in the Century
marketing teams come nowhere near rebutting the presumption that the named
inventors are the only true inventors. Therefore, this argument fails as a matter
of law.
IV. Conclusion
For the reasons stated above, the Defendant’s Motion for Summary
Judgment [Doc. 130] is GRANTED in part and DENIED in part, and the
Plaintiff’s Motion for Partial Summary Judgment [Doc. 133] is DENIED.
SO ORDERED, this 22 day of March, 2018.
/s/Thomas W. Thrash
THOMAS W. THRASH, JR.
United States District Judge
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