Briese Lichttechnik Verttriebs GmbH v. Langton et al
Filing
297
MEMORANDUM OPINION AND ORDER re: 212 MOTION to Strike, filed by Hans-Werner Briese, Briese Lichttechnik Verttriebs GmbH, 204 MOTION for Summary Judgment of Invalidity, filed by Key Lighting, Inc., 215 CROSS MOTION for Summary Judgment of Validity of Claims 1-13 and 17-18 of U.S. Patent No. 5,841,146, filed by Hans-Werner Briese, Briese Lichttechnik Verttriebs GmbH. This is a patent infringement action brought by Hans-Werner Briese ("Briese") and Briese Lichttechnik Vertriebs GmbH (collectively "Plaintiffs") against Key Lighting, Inc. ("Key Lighting" or "Defendant"), Brent Langton, B2Pro, and Sergio Ortiz (collectively "Defendants"), concerning U.S. Patent No. 5,841,146 (& quot;the '146 patent"), an umbrella-shaped light reflector for use in photography and videography. The Court has subject matter jurisdiction of this action pursuant to 28 U.S.C. §§ 1331, 1338(a). For the foregoing reasons, Plainti ffs' motion to strike certain evidentiary proffers is granted to the extent indicated herein. Defendant's motion for summary judgment of patent invalidity is denied, and Plaintiffs' motion for summary judgment of patent validity is granted. This Memorandum Order resolves docket entry numbers 204, 212 and 215. (Signed by Judge Laura Taylor Swain on 7/31/2012) (ja)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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BRIESE LICHTTECHNIK VERTRIEBS
GmbH and HANS-WERNER BRIESE,
Plaintiffs,
No. 09 Civ. 9790 (LTS)(MHD)
-v-
BRENT LANGTON, B2PRO, KEY
LIGHTING, INC. and SERGIO ORTIZ,
Defendants.
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MEMORANDUM OPINION AND ORDER
This is a patent infringement action brought by Hans-Werner Briese ("Briese")
and Briese Lichttechnik Vertriebs GmbH (collectively "Plaintiffs") against Key Lighting, Inc.
("Key Lighting" or "Defendant"), Brent Langton, B2Pro, and Sergio Ortiz (collectively
"Defendants"), concerning U.S. Patent No. 5,841,146 ("the' 146 patent"), an umbrella-shaped
light reflector for use in photography and videography. The Court has subject matter jurisdiction!
of this action pursuant to 28 U.S.C. §§ 1331, 1338(a).
Defendant Key Lighting has filed a motion for summary judgment of patent
invalidity as to claims 1-13 and 17-18 of the '146 patent. Plaintiffs have cross-moved for
summary judgment of patent validity as to those claims and moved to strike certain evidence
proffered in support of Key Lighting's motion. Six other motions are currently pending in this
action and will be addressed in a separate order. The Court has reviewed carefully the parties'
submissions and, for the following reasons, Plaintiffs' motion to strike is granted in part,
Defendant's motion for summary judgment is denied, and Plaintiffs' cross-motion for summary .
judgment ofvaIidity is granted.
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documents, manufacturing of evidence, one instance of attempted obstruction ofjustice,
misrepresentations to the court and apparent perjury. (Memorandum & Order of Mag. J.
Dolinger, Jan. 10,2011, making findings of misconduct, docket entry no. 162.) In support of its
motion for summary judgment of patent invalidity, Key Lighting proffers allegations that
Plaintiffs' variable-focus umbrella was displayed publicly more than a year before the' 146
patent application was filed. The Court ordered that Defendants make their prior art umbrella
available for inspection by March 5, 2010. (Feb. 11,2010, Pretrial Scheduling Order p.6.) On
March 5, 2010, Defendants produced a single umbrella reflector, measuring approximately 1.8
meters ("the 180 device"), which was missing certain components, including the yoke that would
have held the umbrella to its stand and the tube in the center of the umbrella where a light source •
would have been affixed ("the tubular carrying means"). At a hearing on July 5, 2010,
Magistrate Judge Michael Dolinger ordered Defendants to produce by August 5, 2010, all
documentation of prior art upon which they intended to rely, or be limited to what they had
already disclosed. (Transcript of July 22,2010, discovery hearing, docket entry no. 75, p. 33.)
On August 11,2010, Judge Dolinger entered the following order:
IT IS HEREBY ORDERED that Defendants are limited in all further
proceedings in this case, regarding their allegations of prior art, to
only the component(s) provided to Briese for inspection on March 5,
20 10, and are precluded from introducing into evidence or otherwise
referring to at any time in this case, any undisclosed components or
documentation of alleged prior art which was not provided to Briese
for inspection by August 5, 2010.
(August 11,2010, Order, docket entry no. 82.) On September 5,2010, at the deposition of
Defendant Langton, Plaintiffs learned for the first time that Defendants claim to have a second
prior art device ("the 240 device"). (Transcript of the Sept. 10, 2010, Deposition of Brent
Langton p. 155, 162-63, Ex. E. to the Decl. of Veronica Munoz.) According to Defendants,
when the incomplete 180 device was produced on March 5, 2010, the 240 device
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was also in the room, on the floor in a black bag. (Id. at 163.) When asked why he did not show
Plaintiffs the 240 device, Langton responded, "I don't know why. Just maybe it didn't come
Up.,,1 (Id.) Defendants now proffer evidence concerning the 240 device and certain elements of
the 180 device that were not produced for inspection, in support of their summary judgment
motion.
Discussion
Plaintiffs' Motion to Strike Certain Exhibits and Portions of Exhibits
Here, "[b ]ecause a decision on the motion to strike may affect [Defendants']
ability to prevail on summary judgment, it is appropriate to consider the Motion to Strike prior to
[the parties' cross-motions for] summary jUdgment." Rund v. IP Morgan Chase Group Long
Term Disability Plan, 10 Civ. 5284,2012 WL 1108003, 1 (S.D.N.V. Mar. 30,2012). Plaintiffs
seek to strike Defendants' proffer of the 240 device and the yoke and tubular carrying means of
the 180 device, along with portions of declarations and other exhibits that refer to those devices
and their components. Judge Dolinger's August 11,2010, Order precludes Defendants from
"introducing into evidence or otherwise referring to at any time in this case, any undisclosed
components or documentation of alleged prior art which was not provided to Briese for
inspection by August 5,2010." The 240 device, the yoke of the 180 device, and the tubular
Plaintiffs hired a photographer to attend the March 5, 2010, inspection, and some
of the photographs taken that day show a black bag, partially opened, with a
device inside, and affixed to the device was a label that read "240 Umbrella
Prototype." Plaintiffs do not dispute that the 240 device was physically present at
the March 5, 2010, inspection. However, it is also undisputed that Defendants
failed to tender the 240 device for inspection on March 5, 2010, and did not assert
the 240 device as invalidating prior art until after the March 5, 2010, inspection.
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carrying means of the 180 device were not provided to Briese for inspection by August 5, 2010.
The 240 device, although present in the room at the time of the inspection, was not provided to
Briese for inspection. Accordingly, Plaintiffs' motion to strike those devices and components
and portions of documents referring to those devices and components is granted.
Plaintiffs' motion also seeks to strike other exhibits and portions of documents on
the grounds that they are vague, conclusory or otherwise inadmissible. The remaining aspects of
Plaintiffs motion to strike are moot, as a decision on those aspects would not affect the Court's
decision on the cross-motions for summary judgment.
The Parties' Cross-motions for Summary Judgment
When deciding cross-motions for summary judgment, the standard to be used "is
the same as that for individual summary judgment motions and a court must consider each
motion independent of the other." Schultz v. Stoner, 308 F. Supp. 2d 289,298 (S.D.N.Y. 2004)
(internal quotations omitted).
Summary judgment is to be granted in favor of a moving party 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 oflaw." Fed. R. Civ. P. 56(a); see also Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 256 (1986) (the moving party bears the burden of establishing that there is no
genuine issue of material fact). Correspondingly, summary judgment will be entered "against a
party who fails to make a showing sufficient to establish the existence of an element essential to
that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v.
Catrett, 477 U.S. 317, 322 (1986). A fact is considered material "if it might affect the outcome
of the suit under the governing law," and an issue of fact is a genuine one where "the evidence is
such that a reasonable jury could return a verdict for the nonmoving party." Holtz v. Rockefeller
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& Co. Inc., 258 F.3d 62, 69 (2d Cir. 2001) (quoting Anderson, 477 U.S. at 248). The Second
Circuit has explained that "[t]he party against whom summary judgment is sought ... 'must do
more than simply show that there is some metaphysical doubt as to the material facts. . .. [T]he
nonmoving party must come forward with specific facts showing that there is a genuine issue for·
trial.'" Caldarola v. Calabrese, 298 F.3d 156, 160 (2d Cir. 2002) (quoting Matsushita Elec.
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,586-87 (1986». "[O]nly admissible evidence
need be considered by the trial court in ruling on a motion for summary judgment." Opals on Ice
Lingerie, Designs by Bernadette, Inc. v. Bodylines, Inc., 320 F.3d 362,371 (2d Cir. 2003).
Defendants' invalidity argument rests solely on an assertion that the '146 patent is
invalid because the invention described by the patent was used publicly, sold, offered for sale, or
described in a printed publication more than one year before the patent was filed. Plaintiffs
assert in their cross-motion for summary judgment that the '146 patent is presumptively valid
and that Defendants have failed to rebut the presumption of patent validity.
A patent is presumed to be valid. 35 U.S.C. § 282. An accused infringer may
overcome a patent's presumption of validity by presenting clear and convincing evidence that
"the invention was patented or described in a printed publication in this or a foreign country or in
public use or on sale in this country, more than one year prior to the date of the application for
patent in the United States." 35 U.S.C.A. § 102(b) (West 2001); see also Cummings v. Adidas
USA, 716 F. Supp. 2d 323,331 (S.D.N.Y. 2010) (applying a "clear and convincing" evidence
standard) appeal dismissed, 457 Fed. App'x 926 (Fed. Cir. 2011). Public use, sale, offer for sale,
and description in a publication are "barring" activities, and "the first determination in the
§ 102(b) analysis must be whether the subject of the barring activity met each of the limitations
of the claim, and thus was an embodiment of the claimed invention." Scaltech Inc. v.
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ReteclTetra, L.L.c., 178 F.3d 1378, 1383 (Fed. Cir. 1999). A dependent claim includes all of
the limitations of the independent claim upon which it depends, Hartness InrI Inc. v.
Simplimatic Engineering Co., 819 F.2d 1100, 1108 (Fed. Cir. 1987), so a finding that alleged
prior art does not cover the limitations of a particular independent claim compels a finding that
the prior art does not cover the dependent claim either.
Pursuant to Judge Dolinger's August 11 Order, Defendants are limited in their
allegations of prior art "to only the component(s) provided to Briese for inspection on March 5,
2010, and are precluded from introducing into evidence or otherwise referring to at any time in
this case, any undisclosed components or documentation of alleged prior art which was not
provided to Briese for inspection by August 5, 2010." (Aug. 11,2010, Order, docket entry no.
82.) The sole device that Defendants produced for inspection on March 5, 2010, was a 180
device that lacked, among other things, a tubular carrying means. The existence of a tubular
carrying means is one of the limitations of Claim One of the' 146 patent. Because Key Lighting
is precluded from proffering evidence of prior art that contains a tubular carrying means, Key
Lighting cannot demonstrate that an invention meeting all of the limitations of Claim One was
used, sold, displayed or described publicly prior to the one-year bar period. Accordingly, Key
Lighting's motion for summary judgment of invalidity of Claim One is denied and, because the
remaining claims that Key Lighting challenges are all dependent on Claim One, Key Lighting's
summary judgment motion as to those claims is also denied. Plaintiffs' cross-motion for
summary judgment of validity of the '146 patent is granted, as Key Lighting has failed to raise a
triable issue of fact as to the existence of prior use, sale, display or description of an invention
that meets all of the limitations of Claim One.
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Conclusion
For the foregoing reasons, Plaintiffs' motion to strike certain evidentiary proffers
is granted to the extent indicated herein. Defendant's motion for summary judgment of patent
invalidity is denied, and Plaintiffs' motion for summary judgment of patent validity is granted.
This Memorandum Order resolves docket entry numbers 204, 212 and 215.
SO ORDERED.
Dated: New York, New York
July 31, 2012
~SWAfN
United States District Judge
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