Sunscreen Mist Holdings, LLC v. Snappyscreen, Inc. et al

Filing 98

ORDER: For the reasons stated in the attached Order, Defendant Snappyscreen, Inc.'s 93 motion for summary judgment is denied without prejudice to renew at a later date. In the meantime, the parties will confer and advise the Court by April 10, 2024 as to how they wish to proceed with respect to resolving the discussed issues in the Order, which must occur before the re-filing of any summary judgment motion. Ordered by Judge Pamela K. Chen on 3/27/2024. (YW)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
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SUNSCREEN MIST HOLDINGS, LLC,
Plaintiff,
- against -

ORDER DISMISSING MOTION
WITHOUT PREJUDICE
19-CV-835 (PKC) (SJB)

SNAPPYSCREEN, INC.,
Defendant.
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PAMELA K. CHEN, United States District Judge:
On March 14, 2018, Plaintiff Sunscreen Mist Holdings, LLC (“Plaintiff”) initiated this
action against three defendants, including Defendant Snappyscreen, Inc. (“Defendant”), in the
Southern District of Florida, based on allegations of patent infringement and Lanham Act
violations relating to Plaintiff’s sunscreen spray booths. (See Dkt. 1.) On February 11, 2019, the
case against Defendant was severed and transferred to this District. (See Dkt. 42.) On October
17, 2022, Defendant moved for summary judgment as to the only remaining claim for patent
infringement. (See Dkt. 93.) Because that motion was filed prematurely, the Court dismisses it
without prejudice to renew.
Both parties rely heavily on the testimony of their witnesses in arguing for or against
summary judgment in this case, and each side seeks to exclude testimony of the other side’s
witness. (See generally Def.’s Mot. for Summ. J. of Invalidity (“Def.’s Mot.”), Dkt. 94; Pl.’s Br.
in Opp’n (“Pl.’s Opp’n”), Dkt. 96.) As a result, whether there is a material factual dispute in this
case depends largely on the extent to which each of those witnesses’ testimony is admissible. See
Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 164 F.3d 736, 746 (2d Cir. 1998) (holding that
courts may only rely on admissible evidence in deciding summary judgment motions). However,

the parties have not fully set forth their arguments for the Court to resolve these issues. Thus,
additional briefing on the admissibility of witness testimony is required.
This problem is particularly acute with respect to Defendant’s expert witness, Michael
Boyd, whose opinion is critical to each side’s case. (See, e.g., Pl.’s Opp’n, Dkt. 96, at 6–9
(questioning the reliability of Mr. Boyd and requesting exclusion of his testimony).) “Trial courts
serve as gatekeepers for expert evidence and are responsible for ‘ensuring that an expert’s
testimony both rests on a reliable foundation and is relevant to the task at hand.’” Phoenix Light
SF Ltd. v. Wells Fargo Bank, N.A., 574 F. Supp. 3d 197, 200 (S.D.N.Y. 2021) (quoting Daubert v.
Merrell Dow Pharms., Inc., 509 U.S. 579, 597 (1993)). “Under Federal Rule of Evidence
[(“Rule”)] 702, expert testimony is admissible where: (a) the expert’s scientific, technical, or other
specialized knowledge will help the trier of fact to understand the evidence or to determine a fact
in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of
reliable principles and methods; and (d) the expert has reliably applied the principles and methods
to the facts of the case.” Id.; see also Fed. R. Evid. 702 (setting forth criteria for determining the
admissibility of expert testimony). To determine whether a proposed expert’s testimony is
admissible under Rule 702, courts must consider: “(1) the qualifications of the proposed expert;
(2) whether each proposed opinion is based upon reliable data and reliable methodology; and (3)
whether the proposed testimony would be helpful to the trier of fact.” S.E.C. v. Tourre, 950 F.
Supp. 2d 666, 674 (S.D.N.Y. 2013) (citing Nimely v. City of New York, 414 F.3d 381, 396–97 (2d
Cir. 2005)). In particular, in determining whether an expert’s testimony is reliable, courts must
“undertake a rigorous examination of the facts on which the expert relies, the method by which
the expert draws an opinion from those facts, and how the expert applies the facts and methods to
the case at hand.” Amorgianos v. Nat’l R.R. Passenger Corp., 303 F.3d 256, 267 (2d Cir. 2002).

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“Ultimately, the party offering the testimony has the burden of establishing its admissibility by a
preponderance of the evidence.” Better Holdco, Inc. v. Beeline Loans, Inc., 666 F. Supp. 3d 328,
352 (S.D.N.Y. 2023) (citing, inter alia, Daubert, 509 U.S. at 592 n.10); Fed. R. Evid. 702 Advisory
Committee’s Notes.
Again, however, with respect to this material dispute, the parties have failed to fully set
forth their arguments for the Court to decide whether Mr. Boyd can testify—which ordinarily
would be handled through Daubert proceedings—particularly in light of Defendant bearing the
burden to establish the admissibility of Mr. Boyd’s expert testimony. (See Def.’s Reply to Pl.’s
Opp’n (“Def.’s Reply Br.”), Dkt. 95, at 3–4 (providing only short analysis regarding Mr. Boyd’s
reliability).) Relatedly, the parties dispute whether Plaintiff’s principal, Josh Kaplan, is being
offered as an expert or lay witness (see id. at 1–3)—another issue the Court cannot decide on the
record presented to it for summary judgment.
For this reason alone, Defendant’s summary judgment motion must be dismissed without
prejudice to re-filing. See, e.g., Wechsler v. Hunt Health Sys., Ltd., 198 F. Supp. 2d 508, 515 n.8
(S.D.N.Y. 2002) (“[I]n those situations in which the Court was obliged to deny summary judgment
because of deficiencies in the submissions, [e.g., “underdevelopment” of arguments regarding
certain issues,] the parties may find it advisable to submit renewed summary judgment motions
that more clearly, and consistently, set forth their arguments and factual contentions.” (internal
quotation marks and citation omitted)); see also 523 IP LLC v. CureMD.Com, 48 F. Supp. 3d 600,
650 (S.D.N.Y. 2014) (“[T]he Court’s rulings on the parties’ applications for the exclusion of
testimony and evidence significantly change the landscape of admissible evidence available for
consideration. Given the significance of the Court’s findings on . . . the exclusion of evidence, the
parties’ respective summary judgment motions are DENIED without prejudice to refiling.”).

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There is an additional reason that weighs in favor of dismissing the summary judgment
motion for now. Defendant argues that summary judgment should be granted because Plaintiff’s
patent is invalid. (See generally Def.’s Mot., Dkt. 94.) And, despite having previously stipulated
to means-plus-function claim constructions of independent Claims 1 and 17, including “means to
accept payment from a user” and “means to spray the user with the stored sunscreen lotion,” and
despite Judge Bulsara having resolved the dispute regarding the meaning of “means to store
sunscreen lotion” (see Am. Joint Claim Constr. Chart, Dkt. 56-2, at 1–6); Sunscreen Mist Holdings,
LLC v. SnappyScreen, Inc., 19-CV-835 (PKC) (SJB), 2021 WL 3076039 (E.D.N.Y. Feb. 26, 2021),
R. & R. adopted, 2021 WL 3079703 (E.D.N.Y. July 20, 2021), the parties now seek to relitigate
those settled claim constructions that are critical to determining whether Plaintiff’s patent is invalid
(compare Pl.’s Opp’n, at Dkt. 96, at 14–23, with Def.’s Reply Br., Dkt. 95, at 5–10). While the
Court could ignore the parties’ efforts to undo their prior agreement and Judge Bulsara’s prior
ruling, given that Defendant’s motion cannot be resolved at this time for the above-discussed
reasons, the Court finds that this belated disagreement should be addressed separately before any
summary judgment motion is filed. See, e.g., Carotek, Inc. v. Kobayashi Ventures, LLC, Nos. 07CV-11163 (NRB), 08-CV-5706 (NRB), 2009 WL 2850760, at *7 (S.D.N.Y. Aug. 31, 2009) (“The
issues presented in the substantive patent motions require the Court to construe the claims in the
various patents at issue and make determinations of law as to their scope and validity. Such claim
construction is premature. A Markman hearing, at which the parties could adduce evidence about
the meaning of the claims through testimony as well as be fully heard, is appropriate. As a
consequence, both [summary judgment] motions are dismissed, without prejudice to refiling, if
necessary, after the Court has held a Markman hearing after all necessary discovery is
completed.”); Ferring B.V. v. Serenity Pharms., LLC, 348 F. Supp. 3d 236, 243 (S.D.N.Y. 2018)

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(“The parties dispute plausibly and in good faith the meaning of asserted claims which are the
subject of an imminent Markman claim construction hearing. . . . A full patent infringement
analysis will be conducted following the hearing[.]”).
Accordingly, Defendant’s summary judgment motion is denied without prejudice to renew
at a later date. In the meantime, the parties will confer and advise the Court by April 10, 2024 as
to how they wish to proceed with respect to resolving the above-discussed issues, which must
occur before the re-filing of any summary judgment motion.
SO ORDERED.
/s/ Pamela K. Chen
Pamela K. Chen
United States District Judge

Dated: March 27, 2024
Brooklyn, New York

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