McGinley et al v. Luv N Care Ltd

Filing 237

MEMORANDUM RULING re 137 MOTION for Summary Judgment - Noninfringement filed by Bayou Graphics & Design L L C, H H H I I L L C, BuyBabyDirect L L C, Luv N Care Ltd, Admar International Inc, Control Services Inc and 136 MOTION for Partial Summary Judgment - Literal Infringement filed by Michael L McGinley, S C Products Inc. Signed by Judge Terry A Doughty on 5/15/2019. (crt,Crawford, A)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF LOUISIANA
MONROE DIVISION
MICHAEL L. McGINLEY, ET AL.

CASE NO. 3:17-CV-00821

VERSUS

JUDGE TERRY A. DOUGHTY

LUV N’ CARE, LTD., ET AL.

MAG. JUDGE KAREN L. HAYES

RULING ON MOTION FOR SUMMARY JUDGMENT
Pending before the Court is the Motion for Summary Judgment [Doc. No. 137] filed by
Luv n’ care, Ltd. (“LNC”), Admar International, Inc. (“Admar”), BuyBabyDirect, LLC (“BBD”),
Bayou Graphics and Design, LLC (“BGD”), Control Services, Inc. (“CS”), and HHHII, LLC
(“HHHII”), (collectively “Defendants”). Plaintiffs Michael L. McGinley and S C Products, Inc.,
(collectively “Plaintiffs”) have filed an Opposition [Doc. No. 157], and Defendants have filed a
Reply [Doc. No. 168]. The matter is fully briefed.
Also pending before the Court is Plaintiffs’ Motion for Summary Judgment [Doc. No.
136]. Defendants have filed an Opposition [Doc. No. 143], and Plaintiffs have filed a Reply [Doc.
No. 170]. The matter is fully briefed.
The Court is now prepared to rule on these motions.
I.

FACTUAL AND PROCEDURAL BACKGROUND
Defendants seek summary judgment that U.S. Patent No. 8,636,178 (the ’178 Patent)

asserted by Plaintiffs is not infringed. [Doc. No. 137]. Plaintiffs move for summary judgment that
the importation into and/or the use, offers to sell, and actual sale of the Nuby Tear Free Rinse Pail
(“Accused Device”) literally infringed claims 1 and 6 of the ’178 Patent. [Doc. No. 136].
The ’178 Patent issued on January 28, 2014, and is related to a “flexible panel pitcher
device.” Plaintiffs assert that Defendant LNC infringed and continues to infringe the ’178 Patent

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by importing and using, offering to sell, and selling the Accused Device. [Doc. No. 136-33 at 78].1 Plaintiffs additionally assert that Defendant BBD infringed and continues to infringe the ’178
Patent by using, offering to sell, and selling the Accused Device [Doc. No. 136-33 at 8]. LNC
admits that it first offered to sell the Accused Device in October 2011 and completed its first sale
in March 2012. [Doc. No. 143-1 at ¶¶ 40-42]. BBD admits that it first offered to sell the Accused
Device via the internet “prior to March 2, 2012.” [Id. at ¶¶ 43-46]. Plaintiffs contend that the
importation into, and the use, offers to sell and sale of the Accused Device within the United States
by LNC and BBD infringed the ’178 Patent. [Doc. No. 136-33 at 8].
Defendants assert that there is no dispute concerning the configuration of the Accused
Device. [Doc. No. 137 at 1]. Defendants further assert that the Accused Device fails to meet the
requirements that the claimed container have either a “generally flat sidewall” or “a generally flat
inwardly flexible panel.” Id. Defendants contend that a visual inspection of the Accused Device
reveals that it has no “generally flat” sidewall or flexible panel. Id.
II.

LAW AND ANALYSIS
A. Standard of Review
Under Federal Rule of Civil Procedure 56(a), “[a] party may move for summary judgment,

identifying each claim or defense--or the part of each claim or defense--on which summary
judgment is sought. The court shall grant summary judgment if the movant shows that there is
no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of
law.” The moving party bears the initial burden of informing the court of the basis for its
motion by identifying portions of the record which highlight the absence of genuine issues of

Citations to the parties’ filings are to the filing’s number in the docket (Doc. No.) and pin cites
are to the page numbers assigned through ECF.
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material fact. Topalian v. Ehrmann, 954 F.2d 1125, 1132 (5th Cir. 1992); see also Fed. R. Civ.
P. 56(c)(1) (“A party asserting that a fact cannot be . . . disputed must support the assertion
by . . . citing to particular parts of materials in the record . . . ). A fact is “material” if proof of
its existence or nonexistence would affect the outcome of the lawsuit under applicable law in the
case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute about a material fact
is “genuine” if the evidence is such that a reasonable fact finder could render a verdict for the
nonmoving party. Id.
If the moving party can meet the initial burden, the burden then shifts to the nonmoving
party to establish the existence of a genuine issue of material fact for trial. Norman v. Apache
Corp., 19 F.3d 1017, 1023 (5th Cir. 1994).

In evaluating the evidence tendered by the parties,

the Court must accept the evidence of the nonmovant as credible and draw all justifiable
inferences in its favor. Anderson, 477 U.S. at 255. However, “a party cannot defeat summary
judgment with conclusory allegations, unsubstantiated assertions, or only a scintilla of
evidence.” Turner v. Baylor Richardson Med. Ctr., 476 F.3d 337, 343 (5th Cir. 2007) (citing
Anderson, 477 U.S. at 248). The summary-judgment standard on a patent claim is the same as
the standard for other claims. Avia Group Int'l v. L.A. Gear Calif., Inc., 853 F.2d 1557, 1560-61
(Fed. Cir. 1988).
A determination of patent infringement involves a two-step inquiry. “The court must first
interpret the claims to determine their scope and meaning. It must then compare the properly
construed claims to the allegedly infringing device.” Dynacore Holdings Corp. v. U.S. Phillips
Corp., 363 F.3d 1263, 1273 (Fed. Cir. 2004) (citation omitted). The comparison is only to the
patent claims, not to any specific embodiment in the patent specification or to the patent holder’s
commercial embodiment. See Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1347

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(Fed. Cir. 2003). The patent holder bears the burden of proving infringement by a preponderance
of the evidence. See Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 557
(2014); Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1340 (Fed. Cir. 2013) (citing Tech.
Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)).
The first step of this inquiry is a legal determination. The second step is primarily factual,
though to support a judgment of infringement the accused device must satisfy every limitation in
the asserted claims, either literally or under the doctrine of equivalents. Freedman Seating Co. v.
American Seating Co., 420 F.3d 1350, 1356-57 (Fed. Cir. 2005). Although the comparison of the
claims to the accused system is a fact question, summary judgment may be granted if no reasonable
jury could find infringement. See Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S.
17, 39 n.8 (1997).
B. Analysis
The parties dispute the meaning and scope of five terms/phrases of the ’178 Patent. [Doc.
No. 223 at 2; Doc. No. 224 at 1-2]. The Court has resolved the parties’ claim construction disputes
and determined the scope of the claims by entering a Memorandum Opinion and Order on Claim
Construction (“Claim Construction Order”). For the reason stated in the Claim Construction
Order, the Court construes the disputed claim terms/phrases as follows:
Court’s Construction
“including but not limited to”

Disputed Term
“comprising”
“generally flat sidewall section”

“a section of the sidewall that is not perfectly
flat, and differs in its shape as compared to the
remainder of the continuous sidewall”

“generally flat inwardly flexible panel”

“a portion of the flat sidewall section that is not
perfectly flat, and differs in its shape as
compared to the remainder of the continuous
sidewall.”

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“handle located on”

Plain and ordinary meaning

“handle joined to”

Plain and ordinary meaning

Having determined the scope and meaning of the claims, the Court now compares the
properly construed claims to the allegedly infringing device. The parties agree that the ’178 Patent
claims are directed to a container requiring a “generally flat sidewall” and a “generally flat flexible
panel.” [Doc. No. 157-1 at ¶ 13]. Specifically independent claims 1 and 6 recite the following
elements:
1. A container comprising:
a generally continuous sidewall terminating in an upper sidewall
end and a lower sidewall end and defining an inward fluid
holding space bounded by said continuous sidewall, said
continuous sidewall having a flexible portion thereof that
defines a generally flat sidewall section and a generally non
flexible portion joined on either end to the flexible portion,
a bottom closing said lower sidewall end with said upper sidewall
generally flat sidewall section end being generally open,
a generally flat inwardly flexible panel forming a portion of said
generally flat sidewall section and extending to form at
least a portion of said upper sidewall end, the flexible panel
facing outwardly and being sized, shaped and sufficiently
pliable to matingly mold to the head of a person during use;
said flexible panel having a generally smooth inward
surface for unobstructed fluid flow out of said open upper
sidewall end, and
a handle located on the non flexible portion opposite the flexible
panel to allow a user to lift and pour the container when
filled with liquid.
[’178 Patent Claim 1] (emphasis added).
6. A container comprising:
a generally rigid continuous sidewall having an upper sidewall
end and a lower sidewall end and defining an inward fluid
holding space bounded by said continuous sidewall, said
continuous sidewall having a flexible portion thereof that
defines a generally flat sidewall section and a generally non
flexible portion joined on either end to the flexible portion,

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a bottom attached to said lower sidewall end with said upper
sidewall end being generally open,
a rim connected to said upper sidewall end,
a portion of said rim being sufficiently inwardly flexible to
conform to the shape of an object to which said rim is
pressed against,
an inwardly flexible and pliable panel forming a portion of said
generally flat sidewall section and connecting with said
inwardly flexible rim portion, said inwardly flexible panel
having a generally smooth inward surface for unobstructed
fluid flow out of said open upper sidewall end and an
outward facing surface that is sized and shaped to matingly
mold to the head of a person during use, and
a handle joined to the non flexible portion opposite the flexible
portion to provide for lifting and pouring of the contents of
the container by a user.
[’178 Patent Claim 6] (emphasis added).
The only accused product is Defendants’ Nuby Tear Free Rinse Pail (“Accused Device”).
[Doc. No. 157-1 at ¶ 1]. The physical design of the Accused Device has not changed since
Defendants began selling it. [Doc. No. 168-1 at ¶ 4]. Defendants have presented evidence that the
Accused Device has neither a “generally flat sidewall section” nor “a generally flat inwardly
flexible panel.” Defendants’ evidence includes Exhibits 249A-E, which are photographs of the
Accused Device. [Doc. No. 157-1 at ¶ 1].

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[Doc. No. 137-8 at 1-5]. As illustrated in Exhibits 249A-E, the Accused Device does not include
either the “generally flat sidewall section” limitation or the “generally flat inwardly flexible pane”
limitation, as properly construed by the Court. That is, the Accused Device does not include either
“a section of the sidewall that is not perfectly flat, and differs in its shape as compared to the
remainder of the continuous sidewall,” or “a portion of the flat sidewall section that is not perfectly
flat, and differs in its shape as compared to the remainder of the continuous sidewall.”
The parties agree that the front or face of the Accused Device comprises a parabolic-shaped
sidewall section. [Doc. No. 157-1 at ¶ 16]. As indicated in the figures below, Plaintiffs identify
“E” and “H” as the recited “generally flat sidewall section” and “generally flat inwardly flexible
pane” in the Accused Device for claims 1 and 6:

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[Doc. No. 138-1 at 20 (Claim 1), 25 (Claim 6)]. The following pictures provide a top view (left)
and bottom view (right) of the Accused Device.

[Doc. No. 137-8 at 4, 5]. As illustrated in the above pictures, the parabolic-shaped section
(elements E and H identified by Plaintiffs), does not differs in its shape as compared to the

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remainder of the continuous sidewall. Instead, this sidewall section is a continuous curve
following the general shape of an oval. Accordingly, Defendants have demonstrated that the
Accused Device does not meet either the “generally flat sidewall section” limitation or the
“generally flat inwardly flexible panel” limitation, as properly construed by the Court. Thus,
summary judgment is appropriate because the Accused Device does not contain each and every
element of the claims.
Plaintiffs contend that the Accused Device possesses each of the elements recited in Claims
1 and 6. [Doc. No.136-33 at 29-33; Doc. No. 157 at 23-25]. The evidence submitted by Plaintiffs
as it relates to the “generally flat sidewall section” and the “generally flat inwardly flexible panel”
limitations includes photographs of the Accused Device and an affidavit of Mr. Michael
McGinley. [Doc. Nos. 136-12, 136-15, 136-16; Doc. No. 136-2].2 The parties do not dispute that
the photographs submitted by Plaintiff accurately depict the Accused Device. [Doc. No. 143-1 at
¶ 14]. However, the photographs do not raise a genuine issue as to any material fact, because they
are cumulative of the photographs submitted by Defendants. [Compare, Doc. No. 137-8 at 2 and
Doc. No. 136-12 at 2]. Likewise, Mr. McGinley’s affidavit does not indicate that the Accused
Device includes either the “generally flat sidewall section” limitation or the “generally flat
inwardly flexible panel” limitation, as properly construed by the Court. [Doc. No. 138-1 at ¶¶ 2125]. Indeed, the parties agree that the front or face of the Accused Device comprises a parabolic-

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Plaintiffs submit other affidavits, deposition testimony, and exhibits with their motion.
However, Plaintiffs do not identify these exhibits as being relevant to the specific issues before the
Court. Indeed, most of these affidavits, deposition testimony, and exhibits relate to claim
construction issues or other undisputed facts. (See, e.g., 136-33 at 14, nn. 5-11). Plaintiffs also
cite the Declaration of Nouri E. Hakim and argue that it substantiates that the Accused Device is
“reasonably regarded as ‘generally flat.’” [Doc. No. 170 at 6]. The Court finds that even when
this inference is considered in Plaintiffs’ favor, it relates to whether the “generally flat sidewall
section” differs in its shape as compared to the remainder of the continuous sidewall.
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shaped sidewall section. [Doc. No. 157-1 at ¶ 16]. The pictures submitted by Plaintiffs show that
the parabolic-shaped section does not differ in its shape as compared to the remainder of the
continuous sidewall.
Doctrine of Equivalents
Even if an accused product does not literally infringe the asserted claims of a patent, the
accused product may infringe under the doctrine of equivalents if the differences between the
element of the accused product at issue and the claim limitation at issue are insubstantial. Dawn
Equip. Co. v. Kentucky Farms, Inc., 140 F.3d 1009, 1015-16 (Fed. Cir. 1998). One test used to
determine whether differences are insubstantial is to determine whether the element performs
substantially the same function in substantially the same way to obtain substantially the same result
as the claim limitation. Id. at 1016.
Here, there are not facts establishing equivalents. Plaintiffs only provide the conclusory
statement that “[t]he record in this case is more than adequate for a reasonable jury to find that the
sidewall section, flexible panel and handle of the parties’ competing rinse cup products do the
same work in substantially the same way, and accomplish substantially the same result even
though they may differ in name, form and shape.” [Doc. No. 170 at 14]. This conclusory statement
is wholly insufficient.
Moreover, when a limitation is added to overcome a prior art rejection, an estoppel is
effected, preventing the patentee from arguing equivalents.

As discussed in the Claim

Construction Order, the “generally flat sidewall section” and the “generally flat inwardly flexible
panel” limitations were expressly added to overcome a USPTO rejection and to distinguish the
claims from the prior art. Based on the representations made during the prosecution, Plaintiffs are
estopped from arguing that the parabolic-shaped sidewall section (elements E and H in the above

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figures), differs in its shape as compared to the remainder of the continuous sidewall. Like the
prior art identified in the prosecution history, the Accused Device has a sidewall that is a
continuous curve (i.e., a circular, round, or oval shape). As the Federal Circuit has stated, “[t]he
doctrine of equivalents is not a talisman that entitles a patentee to a jury trial on the basis of
suspicion; it is a limited remedy available in special circumstances, the evidence for which is the
responsibility of the proponent.” Schoell v. Regal Marine Indus., 247 F.3d 1202, 1210 (Fed. Cir.
2001); see also Zelinski v. Brunswick Corp., 185 F.3d 1311, 1317 (Fed. Cir. 1999) (affirming the
district court’s grant of Brunswick's motion for summary judgment of noninfringement under the
doctrine of equivalents because the only evidence submitted by patentee was a conclusory
statement by a patent law expert).
In conclusion, failure to find all the claim limitations in the Accused Device renders the
Accused Device non-infringing. Defendants have demonstrated that the Accused Device does not
include either the “generally flat sidewall section” limitation or the “generally flat inwardly
flexible panel” limitation, as properly construed by the Court. Plaintiffs have failed to present
evidence that raises a genuine issue of material fact on this issue, and no reasonable jury could
find that the Accused Device contains this claim limitation or its equivalent. Defendants are
entitled to summary judgment on non-infringement, and, consequently, their Non-Infringement
Motion is granted, and Plaintiff's Motion is denied
III.

CONCLUSION
Based on a comparison between the properly construed claims of the ’178 Patent and

Defendants’ Accused Device, there is no genuine issue of material fact regarding whether the
Accused Device includes either the “generally flat sidewall section” limitation or the “generally
flat inwardly flexible panel” limitation. As a result, Defendants’ Motion for Summary Judgment
[Doc. No. 137] is GRANTED. For the same reason that Defendants are entitled to summary
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judgment on non-infringement, Plaintiff's Motion for Summary Judgment [Doc. No. 136] is
DENIED.
Monroe, Louisiana, this 15th day of May, 2019.

____________________________________
TERRY A. DOUGHTY
UNITED STATES DISTRICT JUDGE

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