Aviva Sports, Inc. v. Fingerhut Direct Marketing, Inc. et al
Filing
717
ORDER granting 686 Motion for Partial Summary Judgment. (Written Opinion) Signed by Judge Joan N. Ericksen on December 3, 2012. (CBC)
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Aviva Sports, Inc.,
Plaintiff,
v.
Civil No. 09-1091 (JNE/JSM)
ORDER
Fingerhut Direct Marketing, Inc., Menard, Inc.,
Kmart Corporation, Wal-Mart Stores, Inc., and
Manley Toys, Ltd.,
Defendants.
Plaintiff Aviva Sports, Inc. (“Aviva”) brought this action against Defendants Fingerhut
Direct Marketing, Inc. (“Fingerhut”), Menard, Inc. (“Menard”), Kmart Corporation (“Kmart”),
Wal-Mart Stores, Inc. (“Wal-Mart”), and Manley Toys, Ltd. (“Manley”), asserting claims of
patent infringement and false advertising. The Court conducted a claim construction hearing on
June 22, 2012 and issued a claim construction order on July 18, 2012. Now before the Court is
Defendant Wal-Mart’s Motion for Partial Summary Judgment. For the reasons stated below,
Wal-Mart’s motion is granted.
I.
BACKGROUND
The patent at issue in this litigation, U.S. Patent No. 6,558,264 (filed Nov. 3, 2001) (’264
Patent), is entitled “Inflatable Wedge for Diving onto a Water Slide.” The invention disclosed in
the ’264 Patent is an inflatable water play structure that connects to the end of a garden hose.
The body of the structure is generally wedge-shaped, to permit a user to slide from the top end to
the bottom end of the structure. The structure also includes a water emitting device, which
discharges water so as to lubricate the sliding surface of the structure. Aviva alleges, among
1
other things, infringement of claim 14 of the ’264 Patent. 1 Claim 14 depends from claim 11,
which recites:
11. A water play structure for connection to an end of a garden hose,
comprising a cushioning slide having a wedge-shaped inflatable body with a
bottom surface to rest on a support surface, a downwardly sloped upper surface
along which a user can slide from a top end to a bottom end thereof, a plurality of
generally vertically disposed baffles which interconnect the base to the upper
surface to retain the inflatable body in a wedge shape, and a water emitting device
connectable to the garden hose for discharging water at the top end of said upper
surface to flow down to said bottom end of said upper surface to lubricate said
upper surface during sliding of the user therealong.
Claim 14 recites:
14. The water play structure according to claim 11, wherein respective
side baffles of the plurality of baffles, and respective sides of the inflatable body
are slightly taller than a remaining plurality of said plurality of baffles, such that
the upper surface comprises a pair of side rails with a sliding surface
therebetween.
In the claim construction order dated July 18, 2012, the Court construed the claim term
“vertically disposed baffles which interconnect the base to the upper surface to retain the
inflatable body in a wedge shape,” as recited in claim 11, to mean “vertically disposed baffles
entirely inside the inflatable body that interconnect the base to the upper surface to retain the
inflatable body in a wedge shape.” The Court found that based on the claim language and
1
Manley filed a reexamination request with the U.S. Patent and Trademark Office
(USPTO) on February 19, 2010. During the reexamination process, Aviva cancelled claims 1-12
and 15-17. Claim 14, which depends from (cancelled) claim 11, was found patentable. In an
appeal brief to the USPTO, the patent owner wrote claim 14 in independent form, incorporating
into it the limitations of claim 11. See ECF Docket No. 619, Ex. 11, at 3, 18. The file history,
however, does not reveal any amendment in which claim 14 was rewritten in independent form.
This appears to be permissible. See 2 U.S. Dep’t of Commerce, U.S. Patent & Trademark
Office, Manual of Patent Examining Procedure §§ 2260.01, 2660.03 (8th rev. ed. 2012) (stating
that when an unamended base patent claim is cancelled, dependent claims do not have to be
rewritten in independent form and that “the content of the canceled base claim would remain in
the printed patent and would be available to be read as a part of the dependent claim”).
2
prosecution history, the “baffles,” including the raised “side baffles,” must be distinct from and
completely internal to the inflatable body.
Wal-Mart now asks the Court to find that there is no infringement of claim 14 of the ’264
Patent, or in the alternative, that claim 14 is invalid.
II.
DISCUSSION
Summary judgment is proper “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). To support an assertion that a fact cannot be or is genuinely disputed, a party must cite “to
particular parts of materials in the record,” show “that the materials cited do not establish the
absence or presence of a genuine dispute,” or show “that an adverse party cannot produce
admissible evidence to support the fact.” Fed. R. Civ. P. 56(c)(1)(A)-(B). “The court need
consider only the cited materials, but it may consider other materials in the record.” Fed. R. Civ.
P. 56(c)(3). In determining whether summary judgment is appropriate, a court must look at the
record and any inferences to be drawn from it in the light most favorable to the nonmovant.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). The nonmoving party must
substantiate its allegations by “sufficient probative evidence [that] would permit a finding in [its]
favor on more than mere speculation, conjecture, or fantasy.” Mann v. Yarnell, 497 F.3d 822,
825 (8th Cir. 2007) (internal quotation marks omitted).
The determination of infringement requires two steps. “First, the claim must be properly
construed to determine its scope and meaning. Second, the claim as properly construed must be
compared to the accused device or process.” Absolute Software, Inc. v. Stealth Signal, Inc., 659
F.3d 1121, 1129 (Fed. Cir. 2011) (internal quotation marks omitted). The Court has already
construed the claims in the ’264 Patent. “To establish infringement, every limitation set forth in
3
a patent claim must be found in an accused product or process exactly or by a substantial
equivalent.” Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991). The
patentee bears the burden of proving infringement by a preponderance of the evidence.” Id. “To
prove literal infringement, the patentee must show that the accused device contains every
limitation in the asserted claims. If even one limitation is missing or not met as claimed, there is
no literal infringement.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999)
(internal quotation marks omitted). “Infringement under the doctrine of equivalents requires that
the accused product contain each limitation of the claim or its equivalent.” Absolute Software,
659 F.3d at 1139 (internal quotation marks omitted). “An element of an accused product is
equivalent to a claim limitation if the differences between the two are insubstantial, a question
that turns on whether the element of the accused product ‘performs substantially the same
function in substantially the same way to obtain the same result’ as the claim limitation.” Id. at
1139-40 (citation omitted). “[T]he doctrine of equivalents must be applied to individual
elements of the claim, not to the invention as a whole.” Warner-Jenkinson Co., Inc. v. Hilton
Davis Chem. Co., 520 U.S. 17, 29 (1997). “Infringement, whether literal or under the doctrine of
equivalents, is a question of fact.” Id. at 1129-30.
To prove that Wal-Mart’s products infringe claim 14 of the ’264 Patent, Aviva must
produce evidence that the allegedly infringing products include, among other things, “side
baffles of the plurality of baffles, and respective sides of the inflatable body, that are slightly
taller than a remaining plurality of said plurality of baffles, such that the upper surface comprises
a pair of side rails with a sliding surface therebetween.” In its claim construction order, the
Court stated that the “baffles” must be entirely inside the inflatable body. Aviva concedes that
there is no literal infringement of claim 14 because the accused products do not include slightly
4
’264 Patent discloses a structure in which the side rails are actually formed by something other
than taller side baffles. This assertion is wholly at odds with the claim language.
Aviva asserts that Wal-Mart’s accused products contain elements equivalent to the “side
baffles” of claim 14. Aviva’s argument, however, is based on its erroneous understanding of
where the “side baffles,” as disclosed in the ’264 Patent, are located and what functions they
serve. First, by misunderstanding the location at which the side baffles attach to the upper
surface of the wedge, Aviva incorrectly identifies the element that it contends is being
“insubstantially changed by the accused product.” Pl.’s Mem. Opp. 6. Aviva believes that the
element to be analyzed under the doctrine of equivalents is only that portion of the side rail that
is closest to the back wall of the wedge—i.e., the only portion that Aviva believes contains side
baffles that are taller than the middle baffles. As previously explained, however, the entire side
rail is formed by taller side baffles, not just the backmost portion.
Further, to prove infringement under the doctrine of equivalents, Aviva must show that
some element of the accused products “‘performs substantially the same function in substantially
the same way to obtain the same result’ as the claim limitation.” Absolute Software, 659 F.3d at
1139-40 (citation omitted). This is known as the “function-way-result” test. Claim 14 requires
“slightly taller” side baffles that serve two functions. One function is that the side baffles form a
pair of side rails with a sliding surface in between them. This is to prevent users from
accidentally falling laterally off the side of the wedge. Aviva contends that both the invention
disclosed in the ’264 Patent and Wal-Mart’s accused products perform this function in the same
way—through the use of side rails—and that they achieve the same results. Following Aviva’s
argument to its logical conclusion, any inflatable wedge that includes side rails that prevent users
from falling off the wedge, regardless of how those rails are formed, would infringe the ’264
7
Patent under the doctrine of equivalents. Claim 14 does not claim a wedge with side rails formed
by any means. It explicitly requires that the “side baffles of the plurality of baffles, and
respective sides of the inflatable body are slightly taller than a remaining plurality of said
plurality of baffles.” Aviva’s argument reads out this claim limitation in its entirety. “[A]n
element of an accused product . . . is not, as a matter of law, equivalent to a limitation of the
claimed invention if such a finding would entirely vitiate the limitation.” Freedman Seating Co.
v. Am. Seating Co., 420 F.3d 1350, 1358 (Fed. Cir. 2005).
The second function of the “side baffles” is that, just like all the other baffles in the baffle
array, the side baffles perform the structural role of retaining the inflatable body in a wedge
shape. They “connect two spaced sheets of material together” to prevent the body from
“ballooning up in the middle when inflated.” Claim Construction Order 17, ECF No. 664.
Aviva entirely neglects this function in its equivalence analysis.
Claim 14 of the ’264 Patent, as construed, requires side walls and internal side baffles
that are slightly taller than the middle baffles, such that the taller side baffles and side walls form
raised side rails. Aviva’s argument would vitiate the “slightly taller” side baffles element of
claim 14. “[T]he doctrine of equivalents is not a license to ignore or ‘erase . . . structural and
functional limitations of the claim,’ limitations ‘on which the public is entitled to rely in avoiding
infringement.’” Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1582 (Fed. Cir.
1996) (quoting Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532 (Fed. Cir.
1987)). Aviva’s attempt to use the doctrine of equivalents as a back door to recapture claim
scope lost during claim construction is precluded. See Decisioning.com, Inc. v. Federated Dep’t
Stores, Inc., 527 F.3d 1300, 1315 (Fed. Cir. 2008) (“[Plaintiff is precluded from asserting that
8
those systems infringe under the doctrine of equivalents, as doing so would vitiate an element of
the claims . . . as construed.”).
Moreover, even if Aviva had presented evidence to support its claim of equivalence,
prosecution history estoppel would operate to prevent application of the doctrine in this case.
“Arguments and amendments made to secure allowance of a claim, especially those
distinguishing prior art, presumably give rise to prosecution history estoppel.” Elkay, 192 F.3d
at 981. “Prosecution history estoppel prevents operation of the doctrine of equivalents from
expanding a claim limitation to include subject matter surrendered during the patent’s
prosecution.” Id.; see also Duramed Pharm., Inc. v. Paddock Labs., Inc., 644 F.3d 1376, 1380
(Fed. Cir. 2011) (“[T]he doctrine of prosecution history estoppel prevents a patent owner from
recapturing through the doctrine of equivalents subject matter surrendered to acquire the
patent.”). Whether prosecution history estoppel applies is a question of law. Intervet Inc. v.
Merial Ltd., 617 F.3d 1282, 1291 (Fed. Cir. 2010). 2
As discussed in detail in the Court’s previous claim construction order, during the
reexamination process the patent owner distinguished the invention disclosed in the ’264 Patent
from the prior art by specifically disclaiming structures in which the raised side rails were not
formed from taller side baffles. See, e.g., Nickels Decl. Ex. C, at 10, ECF No. 600-1 (explaining
2
The parties dispute whether amendment-based estoppel applies in this case. Amendmentbased estoppel applies to “bar the patentee from asserting equivalents if the scope of the claims
has been narrowed by amendment during prosecution.” Honeywell Int'l Inc. v. Hamilton
Sundstrand Corp., 370 F.3d 1131, 1139 (Fed. Cir. 2004). As explained above, it is not clear
from the record that claim 14 was ever rewritten or amended, or that there was any other
narrowing amendment made. The Court, however, need not determine whether amendmentbased estoppel applies, because argument-based estoppel does apply in this case to preclude
Aviva’s arguments. “To invoke argument-based estoppel, the prosecution history must evince a
‘clear and unmistakable surrender of subject matter.’” Eagle Comtronics, Inc. v. Arrow
Commc'n Labs., Inc., 305 F.3d 1303, 1316 (Fed. Cir. 2002). Here, there is such a surrender.
9
that the prior art did not “actually teach using baffles of different heights to form raised sides on
an inflatable structure,” but instead kept the baffles “all the same height”); Id. at 12 (stating that
the prior art “ke[pt] all the baffles . . . the same height,” thus “teach[ing] away from the invention
of claim 14”). The patent owner explained that whereas the prior art used “add on tubes” to
create raised side rails, the invention disclosed in the ’264 Patent used taller side baffles.
Aviva asserts that only “two specific types” of “add on tubes” were disclaimed during the
reexamination process—tubes that were added to the sides or top of a flat inflatable body, and
tubes that were affixed to the top of a wedge. It is not entirely clear as to what Aviva believes
was or was not disclaimed, but it appears as though Aviva is arguing that the patent owner did
not disclaim structures in which the raised sides were formed by “add on tubes” that are affixed
to the side of a wedge. But the shape of the inflatable body to which the “add on tubes” were
affixed (i.e., flat or wedge-shaped) and whether the “add on tubes” were affixed to the side or the
top of the body were never the points of contention during the reexamination process. Rather,
the relevant issue upon which the patent owner focused was the manner in which the raised side
rails were formed—i.e., whether or not they were created by taller side baffles. The patent
owner disclaimed all structures in which the raised side rails were not formed by taller baffles.
To the extent that Aviva is arguing that the only “add on tubes” that the patent owner
disclaimed were separate tubes that were later attached to a main inflatable body, Aviva’s
argument also fails. The patent owner clearly disclaimed more than only those particular types
of “add on tubes.” For example, the patent owner described the Healy prior art reference (shown
below), which taught an elongated water slide that was created by overlying two sheets of plastic
material and then heat sealing the two sheets together to form the tubes. See Nickels Decl. Ex. F,
at 15,17, ECF No. 600-1.
10
U.S. Patent No. 6,312,341 fig.2
(filed Mar. 15, 2000).
The two outermost tubes, which were larger in diameter, were created by increasing the
distance between the heat seals that formed those tubes—not by adding two larger-diameter
tubes later in the production process. The patent owner nevertheless characterized these two
larger-diameter tubes in the Healy reference as “add on tubes,” and explained that the Healy
reference taught away from the invention in claim 14 because it did not use “baffles of different
heights to form raised sides.” Id. Ex. C, at 10. The patent owner clearly disclaimed more than
simply structures in which separate tubes were later added onto a main body—the patent owner
disclaimed any structure in which the side rails were not formed by taller side baffles. 3 After the
Court’s claim construction, it is now undisputed that the allegedly infringing products do not
include taller side baffles, and that the raised side rails of the accused products are not formed by
taller side baffles. Thus, the patent owner disclaimed during reexamination the types of
structures it now accuses of infringement. Limitations disclaimed in prosecution history cannot
be reclaimed through the back door in claim construction. The back door is still closed if the
limitations walk around the block and try again with the doctrine of equivalents.
3
Aviva’s further attempt to narrowly define “tubes” as “hollow elongated cylinders” is
unavailing. Pl.’s Mem. Opp. 13. The precise shape of the “add on tubes” was not the focus of
the patent owner’s disclaimer during the reexamination process. Rather, the focus was on the
manner in which raised sides were created.
11
In sum, Aviva has failed to present evidence that there is infringement of claim 14 of the
’264 Patent, either literally or under the doctrine of equivalents. Even if there were sufficient
evidence of equivalence to create a genuine dispute of material fact, Aviva cannot now recapture
through the doctrine of equivalents subject matter that was explicitly disclaimed during
reexamination of the ’264 Patent. For those reasons, Wal-Mart is entitled to judgment of noninfringement of claim 14 as a matter of law. 4
III.
CONCLUSION
Based on the files, records, and proceedings herein, and for the reasons stated above, IT IS
ORDERED THAT:
1. Wal-Mart’s Motion for Partial Summary Judgment [Docket No. 686] is GRANTED.
Dated: December 3, 2012
s/Joan N. Ericksen
JOAN N. ERICKSEN
United States District Judge
4
Because the Court finds that claim 14 of the ’264 Patent is not infringed, the Court need
not consider Wal-Mart’s alternative invalidity argument.
12
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?