Zen Design Group, Limited v. Scholastic, Inc.
Filing
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OPINION AND ORDER denying 60 Defendant's Motion for Summary Judgment of Noninfringement. Signed by District Judge Robert H. Cleland. (LWag)
UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
_____________________________________________________________________
ZEN DESIGN GROUP, LIMITED,
Plaintiff,
v.
Case No. 16-12936
SCHOLASTIC, INC.,
Defendant.
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OPINION AND ORDER DENYING DEFENDANT’S MOTION
FOR SUMMARY JUDGMENT OF NONINFRINGEMENT
Before the court is Defendant Scholastic’s Motion for Summary Judgment of
Noninfringement for its “Top Secret” Ultraviolet Light Pens. (ECF No. 60.) The motion
has been fully briefed. (Zen Design’s Response, ECF No. 63; Scholastic’s Reply, ECF
No. 72; Zen Design’s Surreply, ECF No. 76.) Both parties have additionally filed various
exhibits under seal or in the traditional manner. (ECF Nos. 64–69, 73–74.) The court
held a hearing on June 20, 2019 and was given the opportunity to handle exemplars of
the pen at issue. For the reasons stated on the record at the hearing, as well as those
stated below, the court will deny the motion.
I. BACKGROUND
Plaintiff Zen Design owns U.S. Patent No. 6,860,616, “Ultraviolet Light Writing
System,” and filed this infringement action against Scholastic based on Scholastic’s sale
of certain invisible-ink pens. (ECF No. 6, PageID.34.) Pursuant to Markman v. Westview
Instruments, Inc., 517 U.S. 370 (1996), the parties extensively briefed the issue of claim
construction and the court held a hearing, after which it issued an Opinion and Order
Construing Claims. (ECF No. 52.) The UV Light Writing System patent contains 16
independent claims. (ECF No. 6-2, PageID.48.) Claims 1, 7, 15, and 16 were construed
by the court. (ECF No. 52.) The present motion centers around the part of Claim 1 that
describes “a pen assembly having a cap end and a pen tip end, said pen assembly
mateably attachable to said battery holder via both the cap end and pen tip end.” (ECF
No. 6-2, PageID.48.) The court construed “mateably attachable” to mean “configured to
engage in a complementary manner.” (ECF No. 52, PageID.1335.) Scholastic moves for
summary judgment that its Top Secret UV Light Pen does not infringe Claim 1.
II. STANDARD
Under Federal Rule of Civil Procedure 56, summary judgment is appropriate “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.” Fed. R. Civ. P. 56(a). The court
considers “whether the evidence presents a sufficient disagreement to require
submission to a jury or whether it is so one-sided that one party must prevail as a matter
of law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251 (1986). The evidence, and
all reasonable inferences drawn from it, must be considered “in the light most favorable
to the opposing party.” Tolan v. Cotton, 572 U.S. 650, 657 (2014) (quoting Adickes v.
S.H. Kress & Co., 398 U.S. 144, 157 (1970)).
“The first step in the patent infringement analysis requires the court to construe
the scope and meaning of the asserted claims.” E.I. du Pont De Nemours & Co. v.
Unifrax I LLC, 921 F.3d 1060, 1068 (Fed. Cir. 2019) (citing Markman, Inc., 517 U.S. at
372–74). After that, the court conducts “a comparison of the claims to the accused
device.” Id. at 1072–73 (citing Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206, 1211
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(Fed. Cir. 1998)). “[S]ummary judgment of non-infringement can only be granted 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 claims.” Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999) (citing Fed.
R. Civ. P. 56(a); Liberty Lobby, 477 U.S. at 255).
III. DISCUSSION
Scholastic, as the party moving for summary judgment of noninfringement, has
the initial burden of showing “an absence of evidence to support” Zen Design’s
infringement claim. See Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). The burden
then shifts to Zen Design, who must set forth enough evidence to raise at least a
genuine issue of material fact for trial. Id. at 324. The issue in this motion is whether the
pen assembly of Scholastic’s Top Secret UV Pen is “configured to engage in a
complementary manner” with its battery holder/cap on the cap end of the pen assembly.
Having reviewed the evidence, the court finds that there are sufficient factual disputes
regarding whether the Pen infringes Claim 1 to require submission to a jury.
Scholastic provides the declaration of the Pen’s designer (Mr. Roy Yu), original
technical drawings of the Pen, and exemplars of the Pen itself as evidence that the pen
cap is not purposefully designed to engage with the cap end of the pen assembly. (ECF
No. 60-5.) Mr. Yu declares that while he “purposefully designed the pen cap to engage
the pen tip end of the pen in a complementary manner,” he “did not purposefully design
the pen cap to engage with the back end of the pen in a complementary manner.” (Id.,
¶¶ 8–10.) He further explained that from his own physical inspection of the Pen, “it is
clear that the inside circumference of the pen cap is smaller than the outside
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circumference of the back end of the pen barrel, such that the pen cap was not
designed to be engaged with or joined to the back end of the pen,” and that this is
supported by the original technical specification drawings. (Id., ¶¶ 11–13.) The court
inquired at the motion hearing whether a complementary fit may arise between parts of
a product in the absence of design intent. Scholastic conceded it may but argued that
this does not show the parts are configured to fit together in that way.
In rebuttal, Zen Design argues that—regardless of Mr. Roy Yu’s subjective intent
in designing it—the Pen is configured such that the cap engages the back end of the
pen assembly in a complementary manner via a common “friction fit.” It offers as
evidence two YouTube videos of children reviewing the Pen, which depict them
uneventfully putting the cap on the back end of the pen assembly, and an advertisement
by Scholastic for a UV Pen depicting the cap on the back end. (ECF Nos. 63-6, 63-7,
63-8; 69.) It also offers the declaration of its expert witness, Mr. Ralph Marciano,
explaining various features of the pen design that facilitate the friction fit. (ECF No. 632.) Scholastic challenges this argument with clips of its video deposition of Mr.
Marciano, which depict him handling various commercially available pens that utilize
friction fits and comparing them to the pen at issue. (ECF No. 74.)
Viewing the evidence in the light most favorable to Zen Design, as the court
must, it is not so one-sided as to permit summary judgment of noninfringement. At a
minimum, the YouTube videos and advertisement proffered by Zen Design raise a
genuine triable issue regarding the configuration of the Pen. The court’s own
observations of the exemplars’ physical characteristics reveal little, if anything, to the
contrary. While Scholastic briefly argues that the YouTube videos should not be
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considered because they have not been properly “authenticated” (ECF No. 72,
PageID.1830), it concedes that the videos do indeed feature the pen at issue. The court
finds that the videos are properly considered as evidence here.
“To satisfy the requirement of authenticating or identifying an item of evidence,
the proponent must produce evidence sufficient to support a finding that the item is what
the proponent claims it is,” such as the “appearance, contents, substance, internal
patterns, or other distinctive characteristics of the item.” Fed. R. Evid. 901(a), (a)(4).
“Authentication is a ‘relatively low[] hurdle,’ and may be proved through a variety of
methods, including circumstantial evidence.” United States v. Quintana, 763 F. App’x
422, 426 (6th Cir. 2019) (citing United States v. Farrad, 895 F.3d 859, 878 (6th Cir.
2018); United States v. Cosgrove, 637 F.3d 646, 658 (6th Cir. 2011)). “Evidence is
authentic when the proponent offers ‘sufficient proof . . . that a reasonable juror could
find in favor of authenticity.’” Id. (quoting United States v. Jones, 107 F.3d 1147, 1150
n.1 (6th Cir. 1997)). Because the YouTube videos clearly display the Top Secret UV
Pen, identifiable by its name, packaging, appearance, and operation, there is sufficient
evidence for a jury to find that the videos are what Zen Design claims they are.
In conclusion, the evidence raised by Zen Design in rebuttal to Scholastic’s
motion raises genuine issues of material fact about whether the Top Secret UV Pen
infringes Claim 1 of its patent. Accordingly,
IT IS ORDERED that Defendant’s Motion for Summary Judgment of
Noninfringement for its “Top Secret” Ultraviolet Light Pen (ECF No. 60) is DENIED.
s/Robert H. Cleland
ROBERT H. CLELAND
UNITED STATES DISTRICT JUDGE
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Dated: July 9, 2019
I hereby certify that a copy of the foregoing document was mailed to counsel of record
on this date, July 9, 2019, by electronic and/or ordinary mail.
s/Lisa Wagner
Case Manager and Deputy Clerk
(810) 292-6522
S:\Cleland\Cleland\JUDGE'S DESK\C2 ORDERS\16-12936.ZENDESIGN.DenySummaryJudgmentofNoninfringementRHC.docx
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