Skyline Zipline Global, LLC v. Domeck et al
Filing
74
ORDER (1) Granting Defendants/Counterclaimants Todd Domeck, Experimental Resources, Inc., And Go Zip, LLC's Motion For Summary Judgment As To Count 1 (Patent Infringement) Of The Complaint Filed on August 8, 2012, Doc. No. 47; And (2) Granting D efendant Maui Land And Pineapple Company, Inc.'s And Kapalua Land Company, LTD.'s Motion For Summary Judgment As To Count I Of The Complaint, Doc. No. 56 re 47 , 56 . Signed by JUDGE J. MICHAEL SEABRIGHT on 2/6/13. (gls, ) CERTIFICATE OF SERVICEParticipants registered to receive electronic notifications received this document electronically at the e-mail address listed on the Notice of Electronic Filing (NEF). Participants not registered to receive electronic notifications were served by first class mail on the date of this docket entry
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF HAWAII
SKYLINE ZIPLINE GLOBAL, LLC,
)
)
Plaintiff,
)
)
vs.
)
)
TODD DOMECK; EXPERIENTIAL
)
RESOURCES, INC.; GO ZIP, LLC;
)
MAUI LAND AND PINEAPPLE
)
COMPANY, INC.; KAPALUA LAND )
COMPANY, LTD.; BALDWIN
)
BROTHERS LLC dba PIIHOLO
)
RANCH ZIPLINE; JOHN DOES 1-10; )
JANE DOES 1-10; DOE
)
CORPORATIONS 1-10; and DOE
)
PARTNERSHIPS 1-10,
)
)
Defendants.
)
________________________________ )
CIVIL NO. 12-00450 JMS-BMK
ORDER (1) GRANTING
DEFENDANTS/
COUNTERCLAIMANTS TODD
DOMECK, EXPERIENTIAL
RESOURCES, INC., AND GO ZIP,
LLC’S MOTION FOR SUMMARY
JUDGMENT AS TO COUNT I
(PATENT INFRINGEMENT) OF
THE COMPLAINT FILED ON
AUGUST 8, 2012, DOC. NO. 47;
AND (2) GRANTING DEFENDANT
MAUI LAND AND PINEAPPLE
COMPANY, INC.’S AND
KAPALUA LAND COMPANY,
LTD.’S MOTION FOR SUMMARY
JUDGMENT AS TO COUNT I OF
THE COMPLAINT, DOC. NO. 56
ORDER (1) GRANTING DEFENDANTS/COUNTERCLAIMANTS TODD
DOMECK, EXPERIENTIAL RESOURCES, INC., AND GO ZIP, LLC’S
MOTION FOR SUMMARY JUDGMENT AS TO COUNT I (PATENT
INFRINGEMENT) OF THE COMPLAINT FILED ON AUGUST 8, 2012,
DOC. NO. 47; AND (2) GRANTING DEFENDANT MAUI LAND AND
PINEAPPLE COMPANY, INC.’S AND KAPALUA LAND COMPANY,
LTD.’S MOTION FOR SUMMARY JUDGMENT AS TO COUNT I OF THE
COMPLAINT, DOC. NO. 56
I. INTRODUCTION
This dispute stems from Cougar Mountain Adventures, Ltd.’s
(“Cougar Mountain”) efforts to enter into agreements to develop, install, and/or
operate zipline adventure courses for Defendants Maui Land and Pineapple
Company, Inc. (“MLPC”) and Kapalua Land Company, Ltd. (collectively,
“Kapalua Defendants”), as well as for Baldwin Brothers, LLC dba Piiholo Ranch
Zipline (“Baldwin Brothers”).1 As alleged in the August 8, 2012 Complaint,
Cougar Mountain disclosed its intellectual property to its proposed subcontractor,
Experimental Resources, Inc. (“ERI”), and ERI’s owner Todd Domeck
(“Domeck”), who then used this information in developing and operating zipline
operations for Kapalua Defendants and Baldwin Brothers without Cougar
Mountain’s involvement or knowledge. Cougar Mountain has since assigned the
rights to its intellectual property, including its rights to U.S. Patent No. 7,819,066
(“the ‘066 Patent”), to Plaintiff Skyline Zipline Global, LLC (“Skyline”), which
brought this action.
In Count I of the Complaint, Skyline asserts a claim against all
Defendants for infringement of the ‘066 Patent, based on their making, using,
selling, and/or offering for sale ERI’s zipline trolleys. Currently before the court is
(1) Kapalua Defendants’ and (2) ERI, Domeck, and Go Zip’s (collectively, “ERI
1
The Complaint incorrectly identifies Baldwin Brothers as Piiholo Land, LLC and
Piiholo Classic, LLC. The parties have since stipulated and substituted these Defendants for the
proper party. Doc. No. 34. Baldwin Brothers joins in ERI Defendants’ Motion for Summary
Judgment. Doc. No. 50.
2
Defendants”) Motions for Summary Judgment as to the patent infringement claim.2
Defendants argue that there is no genuine issue of material fact that the ERI
trolleys infringe the ‘066 Patent because they do not include a “first spreader” or a
“second spreader” as required by each claim in the ‘066 Patent. Based on the
following, the court GRANTS the Motions for Summary Judgment.
II. BACKGROUND
A.
Factual Background
1.
The ‘066 Patent
The ‘066 Patent, titled “Zipline Trolley,” was filed with the U.S.
Patent and Trademark Office (“PTO”) on September 29, 2008, published on
September 10, 2009, and issued on October 26, 2010. See Doc. No. 47-27, ERI
Defs.’ Ex. B, ‘066 Patent. The named inventor on the ‘066 Patent is Kevin
Geoffrey Smith, and Skyline asserts that Smith and his related companies (Cougar
Mountain, Skyline Eco-Adventures, Ltd. and Skyline Zipline USA, LLC) assigned
their rights in the ‘066 Patent to Skyline.
As explained in the ‘066 Patent, a zipline trolley is a device that “rolls
along a suspended length of cable” and can attach to a rider. See id. at col. 1, lines
2
Kapalua Defendants have also filed a Motion to Dismiss the Counts of the Complaint
against them, which Baldwin Brothers has substantively joined in part. The court will address
the Motion to Dismiss after Skyline responds to the court’s “Order Requiring Plaintiff Skyline
Global, LLC to File a Jurisdictional Statement.”
3
18-25. The ‘066 Patent discloses that a zipline trolley typically includes (1) a
cylindrical frame enclosing two wheels that roll along the top of the cable; (2) a
handlebar that is suspended from the bottom of the cylindrical frame by four lines,
and to which slings may attach to connect the trolley to the user; and (3) a braking
mechanism. Id. at col. 1, lines 19-28. The ‘066 Patent describes that the
conventional zipline trolley “is bulky and heavy, making it difficult to transport it
from one end of the cable to the other. The design of the trolley also makes it
difficult to remove and replace the wheels, lines, and slings, which is periodically
necessary to allow for replacement due to wear and tear.” Id. at col. 1, lines 29-34.
As described in the specification, the invention of the ‘066 Patent “comprises a
trolley that is lighter and more compact than the conventional trolley. This trolley
also allows for the easier removal and replacement of the wheels, lines, and
slings.” Id. at col. 2, lines 25-28.
The ‘066 Patent recites one independent claim, and fourteen
dependent claims.3 At issue for purposes of the present Motions is the meaning of
the term “spreader,” as used in Claim 1, the only independent claim. The court
3
Patent claims come in two general forms: independent claims and dependent claims.
See 35 U.S.C. § 112. Independent claims contain all the claim limitations in the individual claim
and, as the name implies, stand on their own with respect to the identification of the claim
limitations. In comparison, dependent claims incorporate by reference all the claim limitations
of a referenced independent claim, and include additional claim limitations. Id.
4
recites and discusses the claim language in its claim construction analysis.
2.
ERI’s Trolleys
Skyline asserts that ERI’s trolleys, some of which are used in Kapalua
Defendants’ and Baldwin Brothers’ zipline courses, infringe various claims of the
‘066 Patent. According to Todd Domeck, the chief executive officer of ERI and
managing member of Go Zip, ERI Defendants have made, used, sold, and/or
offered for sale seven different models of zipline trolleys. Doc. No. 47-2, Domeck
Decl. ¶ 4. ERI designed four of these models, and the other three models were
designed and manufactured by third parties and then offered for sale and sold by
ERI Defendants. Id.
ERI trolley model 1, as depicted in ERI Exhibits 1-5, Doc. Nos. 47-3 47-7, was designed and manufactured by ERI and was sold for use in Kapalua
Defendants’ zipline course, as well as another zipline on Oahu. Doc. No. 47-2,
Domeck Decl. ¶¶ 5-6. Go Zip uses and operates both these zipline courses. Id.
¶¶ 7-8.
ERI trolley model 2, as depicted in ERI Exhibits 6-10, Doc. Nos. 47-8
- 47-12, was designed and manufactured by ERI and sold for use in Baldwin
Brothers’ zipline course. Doc. No. 47-2, Domeck Decl. ¶¶ 17-18.
ERI trolley model 3, as depicted in ERI Exhibits 11-13, Doc. Nos.
5
47-13 - 47-15, was designed and manufactured by ERI, and was sold in 2009 for
use in the Flying Hawaiian Zipline course in Maui. Doc. No. 47-2, Domeck Decl.
¶¶ 28-29.
ERI trolley model 4, as depicted in ERI Exhibits 14-18, Doc. Nos.
47-16 - 47-20, was designed by ERI, manufactured by Indianapolis Fabrications,
and sold by ERI for use in zipline courses in West Virginia, California, and Oahu.
Doc. No. 47-2, Domeck Decl. ¶¶ 39-40. Go Zip operates the zipline courses in
California and Oahu. Id. ¶ 41.
For each of ERI trolley models 1-4, there are two pairs of lines that
run from the upper part of the device (the part of the device through which the
cable runs), and attach to either side of the handlebar. Specifically, each pair of
lines attaches to a single point on either side of the handlebar.
As to ERI trolley models 5-7, as shown in ERI Exhibits 19-22, Doc.
Nos. 21-24, Skyline concedes that they are not at issue because they do not include
a “first spreader” or “second spreader,” under any reasonable interpretation of
these terms. See Doc. No. 63, Pl.’s Concise Statement of Facts.
B.
Procedural Background
On August 8, 2012, Skyline filed its Complaint asserting claims for
(1) patent infringement against all Defendants (Count I); (2) breach of contract
6
against Domeck and ERI (Count II); (3) trade secret misappropriation against all
Defendants (Count III); (4) fraudulent concealment against all Defendants except
Go Zip (Count IV); and (5) tortious interference against Domeck and ERI (Count
V).4
On December 6, 2012, ERI Defendants filed their Motion for Partial
Summary Judgment. Doc. No. 47. On December 7, 2012, Baldwin Brothers
joined ERI Defendants’ Motion. Doc. No. 50. On December 28, 2012, Kapalua
Defendants filed their Motion for Partial Summary Judgment. Doc. No. 56.
Skyline filed Oppositions on January 14, 2013, Doc. Nos. 64, 66, and Replies were
filed on January 18, 2013. A hearing was held on February 4, 2013.
III. STANDARD OF REVIEW
Summary judgment is proper where there is no genuine issue of
material fact and the moving party is entitled to judgment as a matter of law. Fed.
R. Civ. P. 56(a). Rule 56(a) mandates summary judgment “against a party who
fails to make a showing sufficient to establish the existence of an element essential
to the party’s case, and on which that party will bear the burden of proof at trial.”
4
On October 17, 2012, ERI Defendants filed a Counterclaim asserting, among other
claims, a counterclaim for declaratory judgment of noninfringement. Doc. No. 12-1. At the
February 4, 2013 hearing, counsel for ERI Defendants agreed that their counterclaim for
noninfringement is moot if the court grants their Motion for Summary Judgment. ERI
Defendants shall further notify the court via letter by February 28, 2013 whether they intend to
dismiss their counterclaim for declaratory judgment of invalidity.
7
Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); see also Broussard v. Univ. of
Cal. at Berkeley, 192 F.3d 1252, 1258 (9th Cir. 1999).
“A party seeking summary judgment bears the initial burden of
informing the court of the basis for its motion and of identifying those portions of
the pleadings and discovery responses that demonstrate the absence of a genuine
issue of material fact.” Soremekun v. Thrifty Payless, Inc., 509 F.3d 978, 984 (9th
Cir. 2007) (citing Celotex, 477 U.S. at 323); see also Jespersen v. Harrah’s
Operating Co., 392 F.3d 1076, 1079 (9th Cir. 2004). “When the moving party has
carried its burden under Rule 56[(a)] its opponent must do more than simply show
that there is some metaphysical doubt as to the material facts [and] come forward
with specific facts showing that there is a genuine issue for trial.” Matsushita
Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574, 586-87 (1986) (citation and internal
quotation signals omitted); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
247-48 (1986) (stating that a party cannot “rest upon the mere allegations or
denials of his pleading” in opposing summary judgment).
“An issue is ‘genuine’ only if there is a sufficient evidentiary basis on
which a reasonable fact finder could find for the nonmoving party, and a dispute is
‘material’ only if it could affect the outcome of the suit under the governing law.”
In re Barboza, 545 F.3d 702, 707 (9th Cir. 2008) (citing Anderson, 477 U.S. at
8
248). When considering the evidence on a motion for summary judgment, the
court must draw all reasonable inferences on behalf of the nonmoving party.
Matsushita Elec. Indus. Co., 475 U.S. at 587; see also Posey v. Lake Pend Oreille
Sch. Dist. No. 84, 546 F.3d 1121, 1126 (9th Cir. 2008) (stating that “the evidence
of [the nonmovant] is to be believed, and all justifiable inferences are to be drawn
in his favor” (citations omitted)).
IV. ANALYSIS
Defendants seek summary judgment on Count I of the Complaint
asserting that ERI’s zipline trolleys infringe various claims of the ‘066 Patent.
Defendants argue that ERI’s trolleys include neither a “first spreader” nor a
“second spreader” as recited in Claim 1 of the ‘066 Patent, the only independent
claim, and therefore ERI’s trolleys do not infringe any claims of the ‘066 Patent.
In determining whether an accused device infringes a patent claim, the
court must (1) determine the meaning and scope of the patent claims allegedly
infringed; and then (2) compare the properly construed claims to the infringing
device. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995)
(en banc). The first step, known as claim construction, is an issue of law for the
court to decide. Id. at 979. Although the second step of comparing the claims to
the accused device is generally determined by the finder of fact, id., summary
9
judgment may be granted “if, after viewing the alleged facts in the light most
favorable to the non-movant, there is no genuine issue as to whether the accused
device is encompassed by the claims.” Wavetronix LLC v. EIS Elec. Integrated
Sys., 573 F.3d 1343, 1358 (Fed. Cir. 2009) (quoting Combined Sys., Inc. v. Def.
Tech. Corp. of Am., 350 F.3d 1207, 1210 (Fed. Cir. 2003)). The court addresses
each of these inquiries.
A.
Claim Construction
1.
Claim Construction Principles
“A claim in a patent provides the metes and bounds of the right which
the patent confers on the patentee to exclude others from making, using or selling
the protected invention.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1257 (Fed. Cir. 1989). To determine the meaning of a claim term, the
court must examine the intrinsic evidence, which includes the claims, the patent’s
specification, and its prosecution history (i.e., the complete record of the
proceedings before the PTO in obtaining the patent, including the prior art cited
during the examination). Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005) (en banc). The court may also consider extrinsic evidence, i.e., “all evidence
external to the patent and prosecution history,” Markman, 52 F.3d at 980, although
such extrinsic evidence is “less significant than the intrinsic record in determining
10
the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317.
With that said, however, “[t]he sequence of steps used by the judge in consulting
various sources is not important; what matters is for the court to attach the
appropriate weight to be assigned to those sources in light of the statutes and
policies that inform patent law.” Id. at 1324.
Phillips explained the importance and weight to be given to each of
theses sources for claim construction. The claims are “of primary importance, in
the effort to ascertain precisely what it is that is patented.” Id. at 1312 (quoting
Merrill v. Yeomans, 94 U.S. 568, 570 (1876)). Claim terms “‘are generally given
their ordinary and customary meaning,’” which is “the meaning that the term
would have to a person of ordinary skill in the art in question at the time of the
invention, i.e., as of the effective filing date of the patent application.” Id. at 131213 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996)).
The claim term must be read “not only in context of the particular
claim in which the disputed term appears, but in the context of the entire patent,
including the specification.” Id. at 1313. The specification “is always highly
relevant to the claim construction analysis. Usually, it is dispositive; it is the single
best guide to the meaning of a disputed term.” Id. at 1315 (quoting Vitronics, 90
11
F.3d at 1582). The specification “necessarily informs the proper construction of
the claims,” given that its very purpose is to “describe the invention in ‘full, clear,
concise, and exact terms.’” Id. at 1316 (quoting 35 U.S.C. § 112). As a result,
“[t]he construction that stays true to the claim language and most naturally aligns
with the patent’s description of the invention will be, in the end, the correct
construction.” Id. (quoting Renishaw PLC v. Marposs Societa’ per Azioni, 158
F.3d 1243, 1250 (Fed. Cir. 1998)); see also Irdeto Access, Inc. v. Echostar Satellite
Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (“Even when guidance is not provided
in explicit definitional format, ‘the specification may define claim terms “by
implication” such that the meaning may be found in or ascertained by a reading of
the patent documents.’” (citations and some quotations omitted)).
The prosecution history “provides evidence of how the PTO and the
inventor understood the patent.” Phillips, 415 F.3d at 1317. The prosecution
history is often “less useful” than the specification because the prosecution history,
as an ongoing negotiation between the PTO and applicant, often lacks the clarity of
the specification. Id. The prosecution history can nonetheless “inform the
meaning of the claim language by demonstrating how the inventor understood the
invention and whether the inventor limited the invention in the course of
prosecution, making the claim scope narrower than it would otherwise be.” Id.
12
(citing Vitronics, 90 F.3d at 1582-83).
Although less significant and reliable than intrinsic evidence, extrinsic
evidence may be useful when it is “considered in the context of the intrinsic
evidence.” Id. at 1319. For example, technical dictionaries may assist the court
“‘to better understand the underlying technology’ and the way in which one of skill
in the art might use the claim terms.” Id. at 1318 (quoting Vitronics, 90 F.3d at
1584 n.6). General purpose dictionaries may also be helpful where “the ordinary
meaning of claim language as understood by a person of skill in the art may be
readily apparent even to lay judges, and claim construction in such cases involves
little more than the application of the widely accepted meaning of commonly
understood words.” Id. at 1314 (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed.
Cir. 2001)). Finally, expert testimony may be helpful, but “conclusory,
unsupported assertions by experts as to the definition of a claim term are not useful
to a court,” and the court should “discount any expert testimony ‘that is clearly at
odds with the claim construction mandated by the claims themselves, the written
description, and the prosecution history, in other words, with the written record of
the patent.’” Id. at 1318 (quoting Key Pharms. v. Hercon Labs. Corp., 161 F.3d
709, 716 (Fed. Cir. 1998)).
13
2.
Application
Defendants argue that the court should construe the term “spreader” as
used in Claim 1 of the ‘066 Patent as “a device holding two linear elements apart.”
In comparison, Skyline asserts that a “spreader” is “a device that, when combined
with another spreader, holds each pair of lines descending from the trolley far
enough apart to create an angulation between them, which helps prevent the
handlebar from swinging from side to side.” Doc. No. 62, Pl.’s Opp’n at 11.
Based on the following, the court finds that Defendants’ construction most
comports with the term’s usage in the ‘066 Patent as would be understood by a
person of ordinary skill in the art.
As a starting point, the claim term “spreader,” on its own, does not
appear to require any special interpretation -- any layperson would understand the
basic meaning of this word. See Phillips, 415 F.3d at 1314 (explaining that “[i]n
some cases, the ordinary meaning of claim language as understood by a person of
skill in the art may be readily apparent even to lay judges, and claim construction
in such cases involves little more than the application of the widely accepted
meaning of commonly understood words”). Specifically, a layperson would
understand that a “spreader” spreads, i.e., a spreader distributes, separates, and/or
disperses other items.
14
That a person of ordinary skill in the art would understand that the
term “spreader” is used according to its common understanding is well-supported
by the intrinsic evidence, which does not suggest any specialized meaning of the
word. The term “spreader” appears in the Claim 1 as follows:
1. A zipline trolley comprising:
a substantially flat first side flange;
a substantially flat second side flange, wherein said first
side flange and second side flange are arranged in
a parallel configuration;
a substantially flat front face attached perpendicularly to
the front edges of said first and second side
flanges, and wherein said substantially flat front
face extends beyond the width between said first
and second side flanges;
a substantially flat back face attached perpendicularly to
the rear edges of said first and second side flanges,
and wherein said substantially flat back face
extends beyond the width between said first and
second flanges;
two axles for bearing wheels extending between said first
side flange and said second side flange;
four lines, comprising
first two lines, wherein one end of each of said first
two lines is attached to said first side flange;
and
second two lines, wherein one end of each of said
second two lines is attached to said second
side flange;
a first spreader, wherein said first spreader is attached
to the other end of each of said first two lines;
a second spreader, wherein said second spreader is
attached to the other end of each of said second
two lines; and
a handlebar, wherein said handlebar is rigidly attached to
15
said first spreader and said second spreader.
According to the claim language, two lines from the top portion of the trolley
attach to each “spreader,” suggesting that each spreader spreads, or separates, the
two lines that attach to it.
The specification confirms that “spreader” is used according to its
plain meaning. The specification describes that for each spreader, one line is
attached to the “front hole” of the spreader, and the second line is attached to the
“back hole” of the spreader:
A lower frame 3 of the trolley comprises a first line 100,
a second line 101, a third line 102, a fourth line 103, a
left spreader 110, a right spreader 115, and a handlebar
130. The lines 100, 101, 102, 103 hang below upper
frame 1. First line 100 is attached at one end to left front
hole 90 and at the other end to a left front spreader hole
120 on left spreader 110. Second line 101 is attached at
one end to left rear hole 91 and at the other end to a left
rear spreader hole 121 on left spreader 110. Third line
102 is attached at one end to right front hole 92 and at the
other end to a right front spreader hole 122 on right
spreader 110. Fourth line 103 is attached at one end to
right rear hol[e] 93 and at the other end to a right rear
spreader hole 123 on right spreader 110.
‘066 Patent, col. 4, lines 6-18. Thus, the specification describes that each spreader
acts to space the lines attached to it from one another, which in the embodiment
described by the specification is accomplished by attaching each line to either the
front or back of the spreader. Specifically, left spreader 110 spreads lines 100 and
16
101 (the lines that attach to left spreader 110), and right spreader 115 spreads lines
102 and 103 (the lines that attach to right spreader 115). That each spreader acts to
separate the lines attached to it is further displayed in Figure 1 of the ‘066 Patent.
See Doc. No. 47-27, ERI Defs.’ Ex. B, ‘066 Patent at Fig. 1.
Finding that the specification supports the common meaning of the
term “spreader” does not, as Skyline argues, improperly limit the claims to the
preferred embodiment of the invention shown in Figure 1 of the ‘066 Patent.
Specifically, Skyline asserts that the claim language and specification of the ‘066
Patent describe only that the lines attach to the spreaders, and nowhere do they
affirmatively state that the spreaders must hold the lines attached to the spreader
apart. Doc. No. 62, Pl.’s Opp’n at 18. The court is well aware that difficulties can
arise between the court’s obligations to interpret the claim terms in view of the
specification, but at the same time not improperly read limitations from the
specification into the claims. See Phillips, 415 F.3d at 1315, 1323. This case,
however, is not difficult -- the ‘066 Patent does not have to recite that the spreader
acts to separate the two lines attached to it because such fact is commonly
understood from the use of the word “spreader” itself in context of the two lines
being attached to it.
Conversely, the ‘066 Patent does not support Skyline’s proposed
17
construction. Skyline proposes that a “spreader,” as used in the ‘066 Patent, is “a
device that, when combined with another spreader, holds each pair of lines
descending from the trolley far enough apart to create an angulation between them,
which helps prevent the handlebar from swinging from side to side.” In other
words, Skyline asserts that a “spreader” on its own does not hold apart the lines
attached to it, but rather is a mere component, combined with the handlebar and
other spreader, that acts to hold apart each pair of lines (i.e., the right spreader, left
spreader, and handlebar work together to hold lines 100 and 101 apart from lines
102 and 103, as shown in Figure 1 of the ‘066 Patent). Skyline’s proposed
construction -- that a “spreader” is only a component of a device that spreads other
items -- is not a common-sense construction of the term.
And more importantly, the specification does not support Skyline’s
construction. Although Skyline is correct that the specification discloses that the
angulation formed between the pairs of lines (as opposed to between each line) will
be determined by the lengths of the lines and of the handlebar, see Doc. No. 47-27,
ERI Defs.’ Ex. B, ‘066 Patent at col. 4, lines 40-53, the specification neither
suggests that a spreader on its own does not act to separate the lines attached to it,
nor specially defines that a “spreader” performs its function only when combined
with other parts of the trolley device. The court therefore rejects that the
18
specification supports Skyline’s proposed construction. Cf. Merck & Co. v. Teva
Pharmaceuticals USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005) (explaining the
“lexicographer rule” that an inventor may choose to give claim terms a meaning
inconsistent with the ordinary meaning by explicitly providing such definition in
the specification).
Finally, although not directly addressing the meaning of “spreader,”
the prosecution history appears to support that a person of ordinary skill in the art
would understand that the term “spreader” as recited in the ‘066 Patent is used
according to is common meaning and acts to keep the lines attached to it separated.
The patent examiner initially rejected the claims of the ‘066 Patent as obvious in
light of U.S. Patent Nos. 245,893 and 3,040,678. The patent examiner explained
that several aspects of the invention of the ‘066 Patent were disclosed in the ‘893
Patent, which discloses a “swing” consisting of, among other things, a seat hanging
from four lines attached to a V-shaped lever, which is suspended in the middle of a
room by lines fastened to the walls. The examiner explained that the “spreaders”
of the ‘066 Patent were disclosed in the ‘893 Patent as the sides of the seat. Doc.
No. 47-33, ERI Defs.’ Ex. H. That is, the sides of the seat correspond to the first
and second spreader, and as shown in the figure of the ‘893 patent, the sides of the
swing, like the spreaders of the ‘066 patent, separate the lines coming down from
19
the top of the apparatus. See Doc. No. 47-34, ERI Defs.’ Ex. I.
In sum, all of the intrinsic evidence supports that the term “spreader”
was used in its plain and ordinary sense as a device that separates items (in this
case, the two lines that attach to each spreader). The dictionary definitions of
“spreader” comport with this construction. See Phillips, 415 F.3d at 1314 (noting
that where claim instruction does not require elaborate interpretation, “general
purpose dictionaries may be helpful”). For example, the Merriam Webster
Dictionary defines “spreader” simply as “one that spreads,” which can be, among
other things, “a device as a bar holding two linear elements (as lines, guys, rails
apart and usually taut.” Doc. No. 47-28, ERI Defs.’ Ex. C. The American
Heritage Dictionary of the English Language defines “spreader,” as, among other
things, “a device, such as a bar, for keeping wires or stays apart.” Doc. No. 47-29,
ERI Defs.’ Ex. D. See also Doc. No. 47-30, ERI Defs.’ Ex. E (New Oxford
American Dictionary -- “a device that spreads apart one thing from another”); Doc.
No. 47-31, ERI Defs.’ Ex. F (Random House Compact Unabridged Dictionary -“a device for spacing or keeping apart two objects, as electric wires”).
The only evidence suggesting a contrary definition of “spreader” is
the Declaration of Kevin Smith, the named inventor on the ‘066 Patent, who
asserts in summary fashion that the term should be construed as proffered by
20
Skyline. Doc. No. 63-1, Smith Decl. ¶ 7. As an initial matter, Smith’s Declaration
is wholly conclusory and is therefore simply not useful to the court. Phillips, 415
F.3d at 1318. But even if the court considers the Smith Declaration, Skyline’s
specialized definition of “spreader” is not proffered in the specification, and runs
counter to the plain meaning that a “spreader” on its own separates other items (in
this case, the pair of lines that attach to it). Smith’s Declaration is insufficient to
rebut the plain meaning of “spreader,” especially where the intrinsic evidence does
not suggest this definition. Id. (stating that the court should “discount any expert
testimony ‘that is clearly at odds with the claim construction mandated by the
claims themselves, the written description, and the prosecution history, in other
words, with the written record of the patent’” (quoting Key Pharms., 161 F.3d at
716)); see also Markman, 52 F.3d at 983 (explaining that inventor testimony
“cannot be relied on to change the meaning of the claims”).
In sum, the court construes the term “spreader” as a device that
separates at least two items. As used in the ‘066 Patent, each spreader is attached
to either side of the handlebar and separates the two lines attached it.
B.
Infringement Analysis
Defendants argue that ERI’s trolleys do not include a “first spreader”
or a “second spreader” as recited in Claim 1, the only independent claim, and
21
therefore do not infringe any claims of the ‘066 Patent either literally or under the
doctrine of equivalents. Based on the following, the court agrees that no genuine
issue of material fact exists that ERI’s trolleys infringe the ‘066 patent.
1.
Literal Infringement
To find that an accused product literally infringes a patent claim,
“every limitation of the patent claim [must] be found in the accused device.”
Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1231 (Fed Cir.
2001) (quotations and citations omitted); Allen Eng’g Corp. v. Bartell Indus., 299
F.3d 1336, 1345 (Fed. Cir. 2002) (explaining that a claim is literally infringed
“when each of the claim limitations ‘reads on,’ or in other words is found in, the
accused device” (citation omitted)). Summary judgment on literal infringement is
proper “when no genuine issue of material fact exists, in particular, when no
reasonable jury could find that every limitation recited in the properly construed
claim either is or is not found in the accused device.” Goldenberg v. Cytogen, Inc.,
373 F.3d 1158, 1164 (Fed. Cir. 2004) (quotations omitted).
As described above, the court construes the term “spreader” as used in
Claim 1 of the ‘066 Patent to mean a device that separates at least two items. In
context of the claim language, the claimed zipline trolley has a “first spreader” and
a “second spreader,” each of which is attached to either side of the handlebar, and
22
each of which separates the two lines attached it. Applying this construction to
ERI’s trolleys, there is no genuine issue of material fact that the ERI trolley models
include either a “first spreader” or a “second spreader” as recited in the Claim 1.
Although each of the four ERI trolley models at issue has two pairs of lines that
run from the upper part of the trolley (the part of the trolley through which the
cable runs), each pair of lines does not attach to a “spreader” on the handlebar.
Rather, each pair of lines attaches to a single point on either side of the handlebar,
and nothing on the handlebar acts to spread each line from one other.
In opposition, Skyline argues that the ERI trolleys have metal
spreaders on each end of the handlebar because each end of the handlebar has a
metal component with two holes in it -- one hole for the pair of lines running from
the top of the trolley, and one hole below that for the sling lines to attach. Skyline
reasons that these metal components at the sides of the handlebar are “spreaders”
because they separate the sling line coming from below the handlebar from the
lines running from the top of the trolley.5 The court easily rejects this argument -in fact, the sides of ERI’s trolley handlebars join together, as opposed to separate,
the sling lines and lines from the top of the trolley. Simply put, the ends of the
5
At the February 4, 2013 hearing, Skyline conceded that if the court construes the term
“spreader” as proposed by Defendants, there is no genuine issue of material fact as to literal
infringement. The court nonetheless addresses Skyline’s argument presented in its Opposition.
23
ERI’s trolley handlebars are not “spreaders” in any sense of the word, and do not
separate any lines.
Because no reasonable jury could find that any of the ERI trolley
models have either a “first spreader” or a “second spreader” as claimed in the ‘066
patent, the court GRANTS Defendants’ Motions for Summary Judgment to the
extent they argue that the ERI trolleys do not literally infringe any claims of the
‘066 Patent.
2.
Doctrine of the Equivalents
“Under the doctrine of the equivalents, a product or process that does
not literally infringe the express terms of a patent claim may nonetheless be found
to infringe if there is ‘equivalence’ between the elements of the accused product or
process and the claimed elements of the patented invention.” Duramed Pharms.,
Inc. v. Paddock Labs., Inc., 644 F.3d 1376, 1380 (Fed. Cir. 2011) (internal citation
and quotations omitted). “The ‘essential inquiry’ in any determination under the
equivalents doctrine is whether ‘the accused product or process contain[s] elements
identical or equivalent to each claimed element of the patented invention.’”
Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637
F.3d 1269, 1279 (Fed. Cir. 2011) (alteration in original) (internal quotations
omitted).
24
“An element in the accused product is equivalent to a claim limitation
if the differences between the two are ‘insubstantial’ to one of ordinary skill in the
art.” Wavetronix LLC, 573 F.3d at 1360 (quoting Eagle Comtronics, Inc. v. Arrow
Commc’n Labs., 305 F.3d 1303, 1315 (Fed. Cir. 2002)); see also Siemens, 637
F.3d at 1279 (explaining that under the doctrine of equivalents, a party cannot
“avoid [ ] infringement liability by making only insubstantial changes and
substitutions . . . which, though adding nothing, would be enough to take the
copied matter outside the claim, and hence outside the reach of law” (internal
citation and quotations omitted)). In determining whether an alleged equivalent
includes only “insubstantial changes and substitutions,” the Federal Circuit has
applied the “function-way-result test . . . which asks whether an element of an
accused product performs substantially the same function in substantially the same
way to obtain substantially the same result as an element of the patented
invention.” Siemens, 637 F.3d at 1279.
“Although equivalence is a factual matter normally reserved for a fact
finder, the trial court should grant summary judgment in any case where no
reasonable fact finder could find equivalence.” Sage Prods. v. Devon Indus., 126
F.3d 1420, 1423 (Fed. Cir. 1997); see also Deere & Co. v. Bush Hog, LLC, --- F.3d
----, 2012 WL 6013405, at *5 (Fed. Cir. Dec. 4, 2012) (“If no reasonable jury
25
could find equivalence, then the court must grant summary judgment of no
infringement under the doctrine of equivalents.” (citations omitted)). “[F]or
example, courts properly refuse to apply the doctrine of equivalents ‘where the
accused device contain[s] the antithesis of the claimed structure.’” Deere & Co.,
2012 WL 6013405, at *4 (quoting Planet Bingo, LLC v. GameTech Int’l, Inc., 472
F.3d 1338, 1345 (Fed. Cir. 2006)). “In such a case, application of the doctrine of
equivalents would ‘vitiate’ a claim element[, such that] no reasonable jury could
determine two elements to be equivalent.” Id. (citing Warner-Jenkinson Co. v.
Hilton Davis Chem. Co., 520 U.S. 17, 39 n.8 (1997)); see, e.g., Asyst Techs., Inc. v.
Emtrak, Inc., 402 F.3d 1188, 1195 (Fed. Cir. 2005) (affirming summary judgment
of non-infringement because the “doctrine of equivalents cannot be extended to
reach an ‘unmounted’ system such as the [accused product] without vitiating the
‘mounted on’ limitation”); Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d
1091, 1106 (Fed. Cir. 2000) (refusing to find infringement under the doctrine of
equivalents because “it would defy logic to conclude that a minority -- the very
antithesis of a majority -- could be insubstantially different from a claim limitation
requiring a majority, and no reasonable juror could find otherwise”); Sage Prods.,
126 F.3d at 1424-25 (affiming grant of summary judgment of no infringement
under the doctrine of equivalents because patent claimed a slot at the top of the
26
container, and accused product placed slot inside the container).
No reasonable jury could determine that the metal components at the
ends of the handlebars of ERI’s trolleys are substantially equivalent to the “first
spreader” and the “second spreader” recited in Claim 1 of the ‘066 as properly
construed. Rather than separating the two lines from the top of the trolley, these
metal components bring them together -- the antithesis of a “spreader.” These
metal pieces therefore do not perform substantially the same function (i.e.,
spreading) in substantially the same way to obtain substantially the same result as
the spreaders recited in claim 1 of the ‘066 Patent. Thus, because there is no
genuine issue of material fact that ERI’s trolleys include the substantial equivalent
of a “first spreader” or a “second spreader,” the court GRANTS Defendants’
Motions for Summary Judgment on Plaintiff’s patent infringement claim.
///
///
///
///
///
///
///
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V. CONCLUSION
Based on the above, the court GRANTS the Motions for Summary
Judgment on Count I of the Complaint. Counts II-V of the Complaint remain.
IT IS SO ORDERED.
DATED: Honolulu, Hawaii, February 6, 2013.
/s/ J. Michael Seabright
J. Michael Seabright
United States District Judge
Skyline Zipline Global, LLC v. Domeck et al., Civ. No. 12-00450 JMS-BMK, Order (1) Granting
Defendants/Counterclaimants Todd Domeck, Experiential Resources, Inc., and Go Zip, LLC’s
Motion for Summary Judgment as to Count I (Patent Infringement) of the Complaint Filed on
August 8, 2012, Doc. No. 47; and (2) Granting Defendant Maui Land and Pineapple Company,
Inc.’s and Kapalua Land Company, Ltd.’s Motion for Summary Judgment as to Count I of the
Complaint, Doc. No. 56
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