Choon's Design LLC v. Tristar Products, Inc.
Filing
189
ORDER: (1) Granting 186 Defendant's Motion for Summary Judgment; and (2) Dismissing the Case. Signed by District Judge Victoria A. Roberts. (LVer)
UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTICT OF MICHIGAN
SOUTHERN DIVISION
CHOON’S DESIGN INC.,
Plaintiff,
Case No. 14-10848
Honorable Victoria A. Roberts
v.
TRISTAR PRODUCTS, INC.,
Defendant.
___________________________/
ORDER: (1) GRANTING DEFENDANT’S SECOND MOTION FOR
SUMMARY JUDGMENT [ECF No. 186]; and (2) DISMISSING THE CASE
I.
INTRODUCTION
Plaintiff Choon’s Design Inc. (“Choon’s”) brings this patent
infringement suit against Tristar Products, Inc.’s (“Tristar”).
Choon’s has two remaining claims: (1) Tristar’s single-piece
Bandaloom infringes claim 3 of U.S. Patent No. 8,684,420 (“the ‘420
patent”) under the doctrine of equivalents; and (2) Tristar’s Bandaloom Mini
infringes claim 16 of U.S. Patent No. 8,622,441 (“the ‘441 patent”) under
the doctrine of equivalents. To decide these claims, the Court will also
discuss its ruling on U.S. Patent No. 8,485,565 (“the ‘565 patent”) and prior
rulings concerning the ‘420 patent and ‘441 patent.
Tristar moves for summary judgment of noninfringement on these
claims; this is Tristar’s second motion for summary judgment. [ECF No.
186]. Tristar’s motion is fully briefed and before the Court.
Tristar’s motion is GRANTED. The case is DISMISSED.
II.
BACKGROUND
A.
The Beginning of This Case Through July 2018
Choon’s filed this case in February 2014. The Court entered an order
on claim construction in April 2016, ruled on cross motions for summary
judgment in August 2017, and entered a second order on claim
construction in January 2018.
The only claims that survived summary judgment were Choon’s
allegations of infringement under the doctrine of equivalents of claims 9
and 14 of its ‘565 patent, claim 3 of its ‘420 patent, and claim 16 of its ‘441
patent.
In July 2018, the Court stayed the case pending Choon’s appeal to
the Federal Circuit in a parallel infringement action, Choon’s Design, LLC v.
Idea Vill. Prod. Corp., No. 13-13568 (E.D. Mich.) (Michelson, J.).
This case and the Idea Village case have similarities and differences.
In both cases, Choon’s alleged the defendant sold a single-piece loom that
infringed the ‘565 and ’420 patents. However, the patent claims were
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construed differently in the two cases, leading to different summary
judgment rulings.
In Idea Village, District Judge Laurie J. Michelson granted the
defendant summary judgment on the ‘565 patent, finding that a single-piece
loom cannot infringe claims 9 and 14 of the ‘565 patent either literally or
under the doctrine of equivalents. But Choon’s claim alleging infringement
of the ‘420 patent survived summary judgment in Idea Village. The parties
settled that claim before trial before a decision on the merits, and the case
was closed. Choon’s appealed Judge Michelson’s claim construction for
the ‘565 patent and her summary judgment decision to the Federal Circuit.
In this case, the parties’ agreed that the Court should construe
relevant claim limitations for the ‘420 patent consistent with the limitations
for the ‘565 patent. At summary judgment, the Court declined to find that
Tristar infringed Choon’s ‘441 patent as a matter of law under the doctrine
of equivalents; that claim survived summary judgment.
The Court also found that a question of fact existed regarding
whether a single-piece loom could infringe the ‘565 and ‘420 patents under
the doctrine of equivalents. In so finding, the Court overruled Tristar’s
argument that Choon’s could not show that the accused one-piece
Bandaloom was equivalent to the claims of the ‘565 patent, which contains
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a base that is detachable from the pin bar(s). Now, with the final decision
of the Federal Circuit on hand, the Court can rule as a matter of law that
Tristar’s single-piece loom does not infringe claim 3 of the ‘420 patent
under the doctrine of equivalents.
B.
The Federal Circuit’s Decision in Idea Village
In June 2019, the Federal Circuit issued a final decision affirming the
district court in Idea Village – see Choon’s Design, LLC v. Idea Vill. Prod.
Corp., 776 Fed. Appx. 691 (Fed. Cir. 2019).
The Federal Circuit agreed with the district court’s construction of the
term “supported on” in claim 1 of the ‘565 patent to mean “attached to but
detachable from,” such that it found the district court correctly construed the
phrase “at least one pin bar supported on the base” in claim 1 as “at least
one pin bar attached to but detachable from the base.” See id. at 696. The
Federal Circuit also held that the accused single-piece loom (and by
implication, any single-piece loom) did not infringe claims 9 and 14 of the
‘565 patent under the doctrine of equivalents as a matter of law, because a
single-piece loom does not have a detachable pin bar, which is required
under the above construction of “supported on.” See id. at 697. In
concluding this, the Federal Circuit effectively found that this Court erred in
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its conclusion that a fact question existed over whether Tristar’s one-piece
Bandaloom was equivalent to the ‘565 patent.
The Federal Circuit did not address the ’420 or ‘441 patents.
C.
Tristar’s Second Motion for Summary Judgment
On August 14, 2019, the parties filed a Joint Notice informing the
Court that the Federal Circuit issued its decision in Idea Village, asking the
Court to lift the stay, and informing the Court that the Federal Circuit’s
decision foreclosed Choon’s claims based on the ‘565 patent.
Tristar asked to file a second summary judgment motion; it said that
the Idea Village decision and other recent Federal Circuit authority entitled
it to summary judgment on Choon’s remaining claims under the ‘420 and
‘441 patents as well.
On November 12, 2019, the Court lifted the stay, dismissed Choon’s
claims for infringement of the ‘565 patent, and granted Tristar’s request to
file a second motion for summary judgment.
Tristar’s second summary judgment motion is now before the Court.
III.
SUMMARY JUDGMENT STANDARD
Consideration of a patent infringement claim is a two-step process.
The first step – claim construction – requires the Court to determine the
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scope and meaning of the asserted claims as a matter of law. See
Markman v. Westview Instruments, Inc., 517 U.S. 370, 372-74 (1996). The
Court engaged in two rounds of claim construction. Moreover, as
explained below, the Federal Circuit’s construction of the term “supported
on” in the ‘565 patent in Idea Village is relevant to Choon’s claim that
Tristar infringed the ‘420 patent.
The second step – the determination of infringement – “is assessed
by comparing the accused device to the claims; the accused device
infringes if it incorporates every limitation of a claim, either literally or under
the doctrine of equivalents.” MicroStrategy Inc. v. Bus. Objects, S.A., 429
F.3d 1344, 1352 (Fed. Cir. 2005) (citation and internal brackets omitted).
The patent owner has the burden to prove infringement and must do so by
a preponderance of the evidence. See Amgen Inc. v. F. Hoffman-La
Roche Ltd., 580 F.3d 1340, 1374 (Fed. Cir. 2009) (citation omitted).
Infringement is a question of fact. Brilliant Instruments, Inc. v. GuideTech,
LLC, 707 F.3d 1342, 1344 (Fed. Cir. 2013).
Summary judgment of non-infringement is appropriate “if, after
viewing the alleged facts in the light most favorable to the non-movant,
there is no genuine issue whether the accused device is encompassed by
the [patent] claims,” and the moving party is entitled to judgment as a
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matter of law. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1304 (Fed. Cir. 1999); Fed. R. Civ. P. 56(a). If any reasonable juror could
find infringement, summary judgment must be denied. Brilliant
Instruments, 707 F.3d at 1344; Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 248 (1986).
IV.
ANALYSIS
A.
Claim 3 of the ‘420 Patent
Although the Federal Circuit did not address the ‘420 patent in Idea
Village, Tristar says its accused infringing product – i.e., the single-piece
Bandaloom – cannot infringe the ‘420 patent under the doctrine of
equivalents for the same reason it did not infringe the ‘565 patent; the ‘420
patent has the same operative claim term – i.e., “supported on” – as the
‘565 patent and similarly requires detachability from the base as a function.
Specifically, Claim 1 of the ‘565 patent and claim 1 of the ‘420 patent
(on which claim 3 relies) each contain the term “supported on.” The
relevant phrase in the ‘565 patent is: “at least one pin bar supported on the
base”; the relevant phrase in the ‘420 patent is: “a plurality of pins
supported on the base. . . .”
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Tristar says the Court should construe the term “supported on” in the
‘420 patent consistent with the Federal Circuit’s construction of that term in
the ‘565 patent. The Court agrees.
The Court previously held, and the parties agreed, that the relevant
terms in the ‘420 patent – including “supported on” – would be construed
the same way as they were for the ‘565 patent:
Because the ‘565 patent and ‘420 patent are related patents
that rely on the same specification, the Court construes these
terms in the same manner as construed for the ‘565 patent.
See In re Katz Interactive Call Processing Patent Lit., 639 F.3d
1303, 1325 (Fed. Cir. 2011) (“[W]e ordinarily interpret claims
consistently across patents having the same specification.”).
Choon’s and Tristar agree with this approach.
[ECF No. 165, PageID.7503].
Thus, the Federal Circuit’s construction of “supported on” for the ‘565
patent also applies to that term in the ‘420 patent: the phrase “a plurality of
pins supported on the base” in the ‘420 patent means “a plurality of pins
attached to but detachable from the base.” As a result, the ‘420 patent
requires that the plurality of pins be detachable from the base, and “the
accused device must perform the functions of the detachable [plurality of
pins] in order to be equivalent.” See Idea Village, 776 Fed. Appx. at 697
(citing Honeywell Int’l Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1321 (Fed.
Cir. 2006)).
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Choon’s says that while ordinarily terms in related patents should be
construed the same, here the term “supported on” in the ‘420 patent should
be construed different than it was construed in the ‘565 patent. This is a
complete change from the position Choon’s has held throughout this case.
During initial claim construction, Choon’s “submit[ted]” that the terms in the
‘420 patent should be construed in the same manner as the ‘565 terms.
[See ECF No. 56, PageID.1988 (“Since both the ‘565 patent and the ‘420
patent are related patents and rely on the same specification, Choon’s
submits that these claim terms should be construed in the same manner as
construed for the ‘565 patent.”)]. And, in its reply brief during the second
round of claim construction, Choon’s “agree[d]” with Tristar that the ’420
patent “terms should be construed in the same manner as construed for the
‘565 patent.” [ECF No. 159, PageID.7342].
Choon’s is bound by that earlier position; the Court will not rehash
matters settled early in this case. Burley v. Gagacki, 834 F.3d 606, 618
(6th Cir. 2016) (“Under the law of the case doctrine, findings made at one
stage in the litigation should not be reconsidered at subsequent stages of
that same litigation.” (citation omitted)).
Choon’s says that “even construing the ‘420 patent in the same
manner as the Federal Circuit did the ‘565, the finding of no infringement
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under the doctrine of equivalents does not apply to the ‘420 patent,”
because the Federal Circuit’s analysis centered on reconfigurability.
Choon’s argues that reconfigurability does not apply to the ‘420 patent
because the ‘420 patent claim requires “rows of offset pins.” The Court
disagrees.
Choon’s contention that the ‘420 patent claim’s recitation of offset
pins prevents reconfigurability is unsupported. As Tristar says, the ‘420
patent, just like the ‘565 patent, discloses detachable and reconfigurable
pins, and offset pins can be reconfigured on the loom and still be offset.
Stated differently, there is more than one configuration in which the offset
pins could be placed that would maintain the offset nature of the pins.
Like the ‘565 patent, the ‘420 patent claims cannot cover a singlepiece loom; to find otherwise would “expand the scope of the claims
beyond the specification.” See Idea Village, 776 Fed. Appx. at 696.
Tristar is entitled to summary judgment that it does not infringe claim
3 of the ‘420 patent under the doctrine of equivalents.
B.
Claim 16 of the ‘441 Patent
Claim 11 of the ‘441 patent – on which claim 16 depends – requires
“at least one clip including inward facing ends disposed on each side of an
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opening for securing ends of the series of links together.” This claim
describes what can be referred to as a “C-Clip.” The accused device is
Tristar’s Bandaloom S-Clip. The two clips are shown below; the claimed
device is represented in Figure 1 and the accused device in Figure 2.
Choon’s alleged that the Bandaloom S-Clip infringed the ‘441 patent
literally and under the doctrine of equivalents. The Court granted Tristar
summary judgment on Choon’s literal infringement claim and found that,
because “Tristar fails to address Choon’s claim that the Bandaloom [S-Clip]
infringes claim 16 under the doctrine of equivalents[,] . . . [that] claim
survives summary judgment.” [ECF No. 138, PageID.6395].
Tristar’s failure to address Choon’s doctrine of equivalents claim
appears to be an oversight. Indeed, although it did not address the claim in
its motion, Tristar moved for reconsideration of the Court’s order, claiming
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that the Court committed a palpable defect by failing to grant it summary
judgment of non-infringement of the ‘441 patent under the doctrine of
equivalents. The Court denied Tristar’s motion for reconsideration.
Tristar now reasserts this argument, arguing that intervening Federal
Circuit precedent prevents the application of the doctrine of equivalents as
Choon’s proposes.
Choon’s says Tristar’s motion is nothing more than an untimely and
improper request for reconsideration because none of the intervening case
law on which Tristar relies established a change in the law. It says Tristar’s
veiled motion for reconsideration should be denied on this basis alone.
Choon’s also says Tristar’s argument fails on the merits, and that the issue
must go to the jury.
The Court agrees with Choon’s that the “intervening precedent”
Tristar cites does not establish a change in the law, and that Tristar is
essentially reiterating the same argument it made in its motion for
reconsideration of this Court’s summary judgment order. Nevertheless, the
Court considers Tristar’s argument, because declining to address this issue
now would only delay the inevitable and would be a waste of judicial
resources and waste of the time and resources of the parties. Tristar is
entitled to summary judgment.
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Tristar says it is entitled to summary judgment of non-infringement on
claim 16 of the ‘441 patent under the doctrine of equivalents because:
[I]t is impossible to apply Choon’s proposed theory of
infringement under the doctrine of equivalents without
overriding the clear and natural language of the claim that
requires: (1) a single opening; and (2) inward facing ends
disposed on each side of that opening. Such an application to
cover the accused S-clip would also serve to vitiate these claim
limitations and render them completely inconsequential.
[ECF No. 186, PageID.7987 (citations omitted)].
The Court agrees with Tristar.
“A patentee must establish ‘equivalency on a limitation-by-limitation
basis’ by ‘particularized testimony and linking argument’ as to the
insubstantiality of the differences between the claimed invention and the
accused device or process.” Akzo Nobel Coatings, Inc. v. Dow Chem. Co.,
811 F.3d 1334, 1342 (Fed. Cir. 2016) (citation omitted).
Here, the clear and natural language of the claim requires a single
opening and inward facing ends disposed on each side of that opening.
Because Tristar’s accused S-Clip includes two separate openings with a
single inward facing end on one side of each opening, applying the doctrine
of equivalents would impermissibly expand the scope of the claim and
impermissibly override the plain and natural language of the claim. See
Amgen Inc. v. Sandoz Inc., 923 F.3d 1023, 1029 (Fed. Cir. 2019) (“[O]ur
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precedent prohibits us from overriding the natural language of [a] claim. . . .
The doctrine of equivalents applies only in exceptional cases and is not
‘simply the second prong of every infringement charge, regularly available
to extend protection beyond the scope of the claims.’” (citation omitted));
GLG Farms LLC v. Brandt Agric. Prod., Ltd., 741 Fed. Appx. 794, 799
(Fed. Cir. 2018) (“The plain language of the claims clearly requires that the
drive assemblies be mounted ‘on the base wall[]’. . . . GLG Farms’ broad
scope of equivalence would ‘effectively eliminate that claim element in its
entirety,’ and must therefore be rejected.” (internal citation omitted)).
Moreover, applying the doctrine of equivalents would entirely vitiate
the “an opening”/single opening claim element as well as the claim
limitation requiring “inward facing ends . . . on each side of an opening.”
Thus, Choon’s doctrine of equivalents claim fails. See, e.g., Rembrandt
Patent Innovations, LLC v. Apple, Inc., 716 Fed. Appx. 965, 976 (Fed. Cir.
2017) (“An argument under the doctrine of equivalents fails if it ‘renders a
claim limitation inconsequential or ineffective.’ As the Supreme Court
instructed, ‘if a theory of equivalence would entirely vitiate a particular claim
element, partial or complete judgment should be rendered by the court, as
there would be no further material issue for the jury to resolve.’” (citations
omitted)); Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 133814
39 (Fed. Cir. 2011) (concluding that a theory of equivalence was “legally
insufficient” because it “would vitiate [the] claim limitation by rendering it
meaningless” to find that “a signal from one source” was equivalent to
“signals from a plurality of sources”).
Choon’s attempts to save its claim by arguing that a device with two
openings can be equivalent to a device with a single opening because “‘two
physical components of an accused device may be viewed in combination
to serve as an equivalent of one element of a claimed invention.’” [ECF
No. 187, PageID.8075 (quoting Ethicon Endo-Surgery, Inc. v. U.S. Surgical
Corp., 149 F.3d 1309, 1320 (Fed. Cir. 1998)].
But in quoting Ethicon, Choon’s omitted the end of the sentence,
which provides an important caveat: “[T]wo physical components of an
accused device may be viewed in combination to serve as an equivalent of
one element of a claimed invention, as long as no claim limitation is
thereby wholly vitiated.” See Ethicon Endo-Surgery, 149 F.3d at 1320
(emphasis added).
As discussed above, Choon’s theory of equivalency does wholly
vitiate a claim limitation. Choon’s argument does not save its claim.
Moreover, as Tristar says, even if Choon’s doctrine of equivalents
claim is not precluded, the claim still fails because it cannot satisfy the
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function-way-result test. Among other things, Choon’s claim fails under the
“way” prong. Comparing the devices on a limitation-by-limitation basis,
Tristar’s accused S-Clip works in a substantially different way (two
openings) than the claimed C-Clip (one opening). See Amgen, 923 F.3d at
1029 (Fed. Cir. 2019) (“[T]he district court was correct to grant summary
judgment that Sandoz does not infringe claim 7 under the doctrine of
equivalents because its one-step, one-solution purification process works in
a substantially different way from the claimed three-step, three-solution
process.”).
Additionally, Choon’s fails to provide particularized testimony for each
prong of the function-way-result test. The two expert reports Choon’s relies
on provide nothing more than entirely conclusory statements. This is
insufficient to survive summary judgment on a claim under the doctrine of
equivalents. See Pazandeh, 718 Fed. Appx. at 980 (Fed. Cir. 2018)
(“[T]his testimony is entirely conclusory, and is therefore insufficient to
demonstrate that there is a genuine dispute of material fact as to
infringement under the doctrine of equivalents.”); Rembrandt, 716 Fed.
Appx. at 977 (“[C]onclusory expert testimony on [a] prong of the functionway-result test was insufficient, by itself, to create a genuine issue of
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material fact on the issue of infringement by equivalents.” (citing Augme
Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1336 (Fed. Cir. 2014)).
No reasonable jury could find that Tristar’s S-Clip infringes Choon’s
C-Clip under the doctrine of equivalents. Thus, Tristar is entitled to
summary judgment of non-infringement on claim 16 of the ‘441 patent. See
Akzo Nobel Coatings, 811 F.3d at 1342.
V.
CONCLUSION
For the foregoing reasons, the Court GRANTS Tristar’s second
motion for summary judgment. The case is DISMISSED.
IT IS ORDERED.
s/ Victoria A. Roberts
Victoria A. Roberts
United States District Judge
Dated: March 23, 2020
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