M-Edge International Corporation v. LifeWorks Technology Group LLC
MEMORANDUM AND ORDER denying 112 Defendant Lifeworks' Motion for Summary Judgment of Non-Infringement and Renewed Motion to Strike Portions of the Malguarnera Expert Report; directing Plaintiff to arrange a telephone conference regarding the scheduling of further proceedings and trial. Signed by Judge Marvin J. Garbis on 3/8/2017. (krs, Deputy Clerk)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND
CIVIL ACTION NO. MJG-14-3627
MEMORANDUM AND ORDER RE: SUMMARY JUDGMENT
The Court has before it Defendant Lifeworks’ Motion for
Summary Judgment of Non-Infringement and Renewed Motion to
Strike Portions of the Malguarnera Expert Report [ECF No. 112]
and the materials submitted relating thereto.
The Court has
considered the materials and has had the benefit of the
arguments of counsel.
Plaintiff M-Edge International Corporation (“M-Edge”) sues
Defendant Lifeworks Technology Group LLC (“Lifeworks”) for
infringement of United States Patent No. 8,887,910 “Low Profile
Protective Cover Configurable as a Stand” (“the ‘910 Patent”).
By the instant motion, Lifeworks seeks summary judgment of
non-infringement of the claims of the ‘910 Patent and seeks to
have the Court strike the doctrine of equivalents (“DOE”)
portions of M-Edge’s expert report.
SUMMARY JUDGMENT STANDARD
A motion for summary judgment shall be granted if the
pleadings and supporting documents “show that there is no
genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.”
Fed. R. Civ. P.
The well-established principles pertinent to summary
judgment motions can be distilled to a simple statement:
Court may look at the evidence presented in regard to a motion
for summary judgment through the non-movant’s rose-colored
glasses, but must view it realistically.
After so doing, the
essential question is whether a reasonable fact finder could
return a verdict for the non-movant or whether the movant would,
at trial, be entitled to judgment as a matter of law.
e.g., Celotex Corp. v. Catrett, 477 U.S. 317, 322-323 (1986);
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986);
Shealy v. Winston, 929 F.2d 1009, 1012 (4th Cir. 1991).
in order to defeat a motion for summary judgment, “the party
opposing the motion must present evidence of specific facts from
which the finder of fact could reasonably find for him or her.”
Mackey v. Shalala, 43 F. Supp. 2d 559, 564 (D. Md. 1999)
When evaluating a motion for summary judgment, the Court
must bear in mind that the “summary judgment procedure is
properly regarded not as a disfavored procedural shortcut, but
rather as an integral part of the Federal Rules as a whole,
which are designed ‘to secure the just, speedy and inexpensive
determination of every action.’”
Celotex, 477 U.S. at 327
(quoting Rule 1 of the Federal Rules of Civil Procedure).
A determination of patent infringement requires a two-step
Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d
1334, 1339 (Fed. Cir. 2016).
First, the court construes the
asserted claims, and second, it compares the properly construed
claims to the accused product.
Step one, claim
construction, is a question of law. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995)(en
banc), aff’d, 517 U.S. 370 (1996).
Step two, comparison of the
asserted claims to the accused device, requires a determination
that every claim limitation or its equivalent be found in the
Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,
520 U.S. 17, 29 (1997).
Whether there is infringement, either literally or under
the doctrine of equivalents, is a question of fact.
F.3d at 1339.
“As such, it is amenable to summary judgment when
no reasonable factfinder could find that the accused product
contains every claim limitation or its equivalent.”
“To establish literal infringement, every limitation set
forth in a claim must be found in an accused product, exactly.”
Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d
1313, 1319 (Fed. Cir. 2015)(quoting Southwall Techs., Inc. v.
Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995)).
Infringement by the Doctrine of Equivalents
Where literal infringement of a claim element is not found,
infringement under the doctrine of equivalents (“DOE”) may be
found where the “accused product or process contain[s] elements
identical or equivalent to each claimed element of the patented
invention.” Warner–Jenkinson, 520 U.S. at 40.
“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.” Id. at
An element is equivalently present in an accused device if
there are only minor or insubstantial differences while the
essential functionality is retained.
Sage Products, Inc. v.
Devon Indus., Inc., 126 F.3d 1420, 1423, 1424 (Fed. Cir. 1997).
One way to determine whether differences are insubstantial is to
show equivalence under the function-way-result test, i.e., “an
element in the accused device is equivalent to a claim
limitation if it performs substantially the same function in
substantially the same way to obtain substantially the same
result.” Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir.
An equivalence determination is normally reserved for a
Sage, 126 F.3d at 1423.
May M-Edge Assert the DOE?
Lifeworks contends that the Court should preclude M-Edge
from asserting infringement by means of the DOE.
Rule 804.1 of the Rules of the United States District Court
for the District of Maryland (“Local Rules”) requires disclosure
of “[w]hether each limitation of each asserted claim is alleged
to be literally present or present under the doctrine of
Moreover, the Scheduling Order, issued January
20, 2015, required an Initial Disclosure of Infringement
Contentions to be filed within 30 days that stated:
Whether each limitation of each
asserted claim is alleged to be literally
present or present under the doctrine of
equivalents in the Accused Instrumentality;
Scheduling Order C.1.e., ECF No. 17.
Except with regard to a limitation of Claim 3 not here at
issue,1 M-Edge’s compliance with the Order consisted of generally
stating that it might rely on the DOE if it turned out that it
had to do so.
Its Initial Disclosure [ECF No. 19] states:
To the extent the Defendant contends
that a claim limitation in claims 1, 2, and
6 is not literally present in an Accused
Product, Plaintiff contends that such
limitation is met by the doctrine of
Initial Infringement Contentions 3, ECF No. 19.
The claim charts stated as to Claim 3:
An anti-slip pad formed as an elongated
pad extending substantially perpendicularly
to a longitudinal axis formed by the
articulable back would function in the same
way by holding the electronic device and
holding sheet in the manner pictured above
with the exterior rear cover angled from the
middle rear cover. Accordingly, the product
infringes claim 3 at least under doctrine of
Initial Infringement Contentions, ECF No. 19, Exs. A-E at 8, and
Claim Chart, ECF No. 22.
On May 23, 2016, M-Edge served its expert report that
To the extent that the fact finder
finds that in order to literally infringe,
the holding sheet cannot consist of four
separate corner pieces, then this limitation
is infringed under the doctrine of
equivalents. The holding sheet in the
Accused Products performs substantially the
same function (holding the electronic
device) in substantially the same way (using
elastic bands that lie in the same plane and
apply a force towards the center of the
device) to obtain substantially the same
result (to make it easier for the user to
install his or her device, to avoid covering
the electronic elements of the electronic
device, to allow devices of various sizes to
be utilized by a single case, and to allow
the case to have a low-profile) as the claim
Malguarnera Expert Report ¶ 62, Def.’s Mot. Ex. H, ECF No. 11211.
This statement expressly disclosed that M-Edge intended to
rely upon the DOE in regard to a specified limitation of the
asserted claims and further stated the basis upon which it would
rely for its DOE assertion.
The local patent rules “are designed to require the parties
to crystallize their theories of the case early in the
litigation so as to prevent the shifting sands approach to legal
argument.” Changzhou Kaidi Elec. Co. v. Okin Am., Inc., 112 F.
Supp. 3d 330, 332 (D. Md. 2015).
The rules “seek to balance the
right to develop new information in discovery with the need for
certainty as to legal theories.” Paice LLC v. Hyundai Motor
Corp., Civil No. WDQ–12–499, 2014 WL 3725652, at *3 (D. Md. July
24, 2014) (quoting O2 Micro Int’l Ltd. v. Monolithic Power Sys.,
Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006)).
As such, the rules
serve as tools to ensure that theories of infringement and
invalidity are provided early enough to permit adequate
preparation for trial.
Id. (citing O2 Micro, 467 F.3d at 1365-
M-Edge may have been in literal, albeit minimal, compliance
with the Scheduling Order and Local Rule DOE disclosure
requirement with its essentially meaningless “placeholder”
M-Edge was, by no means, in compliance with the
spirit of the Rule and Order.2
The parties may debate whether
Lifeworks should have sought a more specific DOE disclosure by
motion or through discovery.
However, the Court finds that the
appropriate course of action is to determine whether Lifeworks
has suffered any substantial harm by virtue of M-Edge’s actions
and, if so, provide for any appropriate remedy.
Lifeworks seeks a sanction against M-Edge that, in the
context of the instant case, would essentially constitute a
Rather than seek to amend its disclosure to provide more
detail after the Claim Construction decision was issued on
February 16, 2016, it provided that detail in its expert report
on May 23, 2016.
Lifeworks has not shown any prejudice
resulting from the delay in M-Edge’s disclosure that cannot be
remedied at this time if, indeed, any remedy is needed.
the M-Edge expert report was served in May of last year,
Lifeworks was on notice of M-Edge’s detailed DOE contention
regarding the “sheet or mat” limitation of the claims at issue
and the alleged factual basis for that contention.
has taken the deposition of the M-Edge expert witness and may
seek leave to conduct any further discovery that may be
The Court will not prohibit M-Edge from seeking to rely
upon the DOE as set forth in its expert report.
Nor will the
Court strike any portion of Dr. Malguarnera’s expert report.4
The ‘910 Patent “relates generally to a protective casing
or cover for an electronic device having a display, the
protective casing or cover having a very low profile that can be
As discussed herein, it does not appear that M-Edge can
prove literal infringement as to the existence of a sheet or
However, the Court is not herein addressing, or ruling
upon, the content of testimony that Dr. Malguarnera (or any
other expert witness) may present at trial. The Court may well
limit the extent to which the respective expert witnesses may
provide opinion testimony, for example, as to their opinions
regarding whether there is infringement by virtue of the DOE.
unfolded to be configured as a stand for the electronic device.”
‘910 Patent 1:6-10.
The invention is a “novel mounting system with bands” that
can be used with tablets of various sizes.
Opp’n 1, ECF No.
Sample embodiments are demonstrated in figures 3, 9, and
An M-Edge Folio is a representative product practicing the
The Lifeworks’ Club Jacket is a representative accused
M-Edge asserts infringement of Independent Claim 1,
Dependent Claims 2 and 3 (that include the limitations of Claim
1 by reference), and Independent Claim 6.
Lifeworks contends that M-Edge cannot prove that an accused
device meets certain of the limitations of these claims.
See Stipulation, ECF No. 85, agreeing that if the Club
Jacket structure is found to infringe any of the claims 1 to 3
and 6 of the ‘910 Patent, then the 13 accused Lifeworks’ styles
would also infringe the same claims.
Claims 1, 2 and 3
The limitations in these claims as to which Lifeworks seeks
summary judgment are highlighted herein:
Independent Claim 1:
A protective cover for an electronic device
a front cover;
a rear cover including a middle rear cover,
an exterior rear cover, and a folding
portion that connects the middle rear cover
to the exterior rear cover;
an articulable back that connects the rear
cover to the front cover;
a holding sheet that forms a plane and is
attached to an inner surface of the exterior
rear cover and is not attached to the middle
rear cover, the holding sheet having openings
formed in the plane and located at corners of
the holding sheet to form bands, the bands
configured to attach to corners of the
electronic device for securing the electronic
device to the protective cover; and
an anti-slip pad attached to an inner
surface of the front cover.
‘910 Patent 6:52-67.
The limitations in Claim 6 as to which Lifeworks seeks
summary judgment are highlighted herein:
Independent Claim 6:
An electronic device casing comprising:
a front cover sheet;
a rear cover sheet including a middle
section, an exterior section, and a hinge
portion that connects the middle section to
the exterior section of the rear cover
sheet, the front cover and the rear cover
having inner surfaces that face each other
when the electronic device casing is in a
a spine portion that connects the rear cover
sheet to the front cover sheet;
[a]n elastic flat holding mat that forms a plane
and is attached to an inner surface of the
exterior section of the rear cover sheet and
is not attached to the middle section of the
rear cover sheet, the holding mat having
openings formed in the plane and located at
corners of the holding mat, the openings
configured to pull over corners of the electronic
device so that the openings engage with the
corners of the electronic device for securing
the electronic device to the casing; and
an anti-slip pad attached to the inner
surface of the front cover sheet.
‘910 Patent 7:17-37.
Limitations at Issue
In its claim construction [ECF No. 71], the Court stated
that “in all claims, the words ‘sheet’ and ‘mat’ have the same
Therefore, for purposes of the instant motion, the
limitations at issue with regard to all asserted claims are:
A holding sheet/mat,
Forms a plane,
Has openings formed in the plane,
To form bands6 or configured to pull over corners of
the electronic device7,
For securing the electronic device to the protective
cover8 or casing9.
The Holding Sheet Limitation
Lifeworks contends that its “four separate and disconnected
corner bands” are not “a holding sheet/mat.” Def.’s Mot. Mem.
12, 19, ECF No. 112-1.
The Court agrees that, literally, the
accused device does not have a holding sheet/mat.
the accused device has in lieu of a sheet/mat, is what can be
referred to as a four-corner combination layout (“the Four
Corner Combination”) that – according to M-Edge - functions as
if it were a sheet or mat.
The Court stated, in its claim construction, ECF No. 71 at
Claims 1, 2, and 3.
Claims 1, 2, and 3.
The Court does not find that the claim
should be construed as limited to a holding
sheet that is a single piece of material.
Indeed, not only is this restriction absent
from the claim itself but the disclosure
includes an embodiment, one of three, in
which the holding sheet “is made of two
different layers.” ‘910 Patent 6:32-33.
As disclosed in the ‘910 Patent, there can be a structure
that is a sheet/mat consisting of more than one piece of
However, such a structure must have the essential
quality of a sheet/mat.
That is, a relatively broad continuous
See, e.g., Oxford English Dictionary definition,
sheet: “A broad flat piece of material,” or “An extensive
unbroken surface area of something”(available at
Illustrations of a sheet/mat consisting of more than one piece
of material would include a multi-layer structure as disclosed
in the ‘910 patent or a common form of clipboard made up of
strips with different woods:
The Court, therefore, concludes that no reasonable jury
could find that the accused device literally has a sheet/mat as
required by the claims at issue.
Infringement by means of the DOE
The Court determines10 that a reasonable jury could – but by
no means must – find that the Four Corner Combination in the
accused device performs substantially the same function as the
claimed holding sheet/mat in substantially the same way to
obtain substantially the same result.
The jury may reasonably
find that the sheet/mat element of the claim is equivalently
present in the accused device because there are only minor or
insubstantial differences while the essential functionality is
Thus, the Court concludes that a reasonable jury could
find, by means of the DOE, that the accused device meets the
sheet/mat claim limitation.
The Court is basing this determination upon a possibly
reasonable finding of the function/way/result comparison. The
Court is not relying upon Dr. Malguarnera’s conclusion that
there is infringement by equivalence. That conclusory opinion
may not be admissible in evidence.
Prosecution History Estoppel
Prosecution history estoppel “hold[s] the inventor to the
representations made during the application process and to the
inferences that may reasonably be drawn from the amendment.” Id.
See, e.g., Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., 535 U.S. 722, 740 (2002) (holding that it would
be unfair to allow a patentee to use the DOE to recapture patent
scope that had been voluntarily surrendered in order to acquire
The presumption that the patentee has surrendered
an equivalent may be rebutted.
Id. at 741.
Lifeworks states that “during prosecution M-Edge went to
great lengths to emphasize that its invention contemplates a
planar structural surface. M-Edge specifically distinguished its
alleged “holding sheet/mat” of its `910 invention over the prior
art, i.e., Diebel Pub. No. US 2012/0037523 A1.).” Def.’s Mot.
Mem. 41, ECF No. 112-1.
Diebel disclosed a “Case for Electronic
Tablet” that can be described as a sleeve fitting over the case.
Lifeworks states that “by narrowly amending the claim
limitations – ‘a holding sheet’ (Claim 1) and ‘an elastic flat
holding mat’ (Claim 6) -- to require that they each ‘form(s) a
plane,’” and by arguing to the PTO that the prior art failed to
disclose a “holding sheet [and mat] ha[ving] the structure of a
plane” as specifically claimed in amended claims 1 and 6, id. at
41-42 (quoting Ex. B., May 23, 2014 “Amendment Under 37 C.F.R. §
1.111,” pgs. 6-7, 13-16, ECF No. 112-5), M-Edge is
estopped from attempting to recapture the
surrendered breadth of a “holding sheet/mat”
not having a two-dimensional, planar
structure or planar surface by virtue of
having made a narrowing amendment and
argument to distinguish the `910 patent over
Diebel. M-Edge is not entitled to recapture
any “holding sheet(s)/mat(s)” not having a
two dimensional, planar structure or planar
surface under the doctrine of equivalents.
Id. at 42 (footnote omitted, emphasis removed).
That may be, but in the instant case, M-Edge contends that
Lifeworks’ Four Corner Combination is, in fact, the equivalent
of a sheet/mat that forms a planar structure.
is not estopped from asserting infringement by means of the DOE.
In Tate Access Floors, Inc. v. Interface Architectural
Res., Inc., 279 F.3d 1357 (Fed. Cir. 2002), the United States
Court of Appeals for the Federal Circuit stated, “the doctrine
of equivalents is an equitable doctrine and it would not be
equitable to allow a patentee to claim a scope of equivalents
encompassing material that had been previously disclosed by
someone else, or that had been previously disclosed in others’
279 F.3d at 1367.
Lifeworks contends that if the Four Corner Combination in
its accused devices - with four separate and disconnected corner
bands – were found to be the equivalent of the claimed
sheet/mat, the finding “would impermissibly ensnare the prior
Def.’s Mot. Mem. 46, ECF No. 112-1.
Lifeworks refers to the Aluratek Universal Tablet Case.
The Court finds that a reasonable jury could find that the
four elastic bands combination of the Aluratek device performs
the same function of the claimed sheet/mat in the same way to
achieve the same result and, that compared to the claimed
element, there are only minor or insubstantial differences while
the essential functionality is retained.
However, the Court
also finds that a reasonable jury could make the opposite
There are distinctions between the accused Lifeworks’
devices and the Aluratek device that a reasonable jury could
find warrants a different DOE finding.
For example, in the
Aluratek prior art, the elastic bands hold the electronic device
directly against the supporting pad rather than against the
sheet/mat (or equivalent) from which the bands are formed as in
the accused devices or as shown in the ‘910 Patent.
On the evidence presented, the Court finds that there are
genuine issues of material fact regarding whether the Aluratek
prior art infringes the claims at issue by means of the DOE.
Accordingly, Lifeworks is not entitled to summary judgment with
regard to its ensnarement defense.
However, Lifeworks may
present the defense at trial.
The Other Limitations at Issue
If, but only if, a jury were to find that the Four Corner
Combination in the accused device meets the Claims 1 and 6
holding sheet/mat limitation by the DOE, it could reasonably
find that the other limitations at issue are literally met.
Forms a plane
If considered as a holding sheet/mat, the Four Corner
Combination could be found to form a plane.
The flat corners
not only lie in a plane, but define the equivalent of a holding
sheet/mat as a planar structure.
Has openings formed in the plane
If considered as a holding sheet/mat that forms a plane,
the Four Corner Combination could – indeed, would clearly appear
to – have openings formed in the plane.
iii. To form bands, etc.
If considered as a holding sheet/mat with openings formed
in the plane, the openings in the Four Corner Combination could
reasonably be found to form bands or be configured to pull over
the corners of an electronic device.
For securing the electronic device
If the Four Corner Combination is considered a holding
sheet/mat with openings formed in the plane to form bands or be
configured to pull over the corners of an electronic device, the
function of the bands, or configuration, could reasonably be
found to secure the electronic device to the protective cover or
For the foregoing reasons,
Defendant Lifeworks’ Motion for Summary Judgment
of Non-Infringement and Renewed Motion to Strike
Portions of the Malguarnera Expert Report [ECF
No. 112] IS DENIED.
Plaintiff shall arrange a telephone conference,
to be held by March 22, 2017, regarding the
scheduling of further proceedings and trial.
SO ORDERED, on Wednesday, March 8, 2017.
Marvin J. Garbis
United States District Judge
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