Summer Infant (USA), Inc. v. TOMY International, Inc.

Filing 140

MEMORANDUM AND ORDER : The Court ADOPTS the Magistrate Judges R & R (ECF No. 137 ) in its entirety for the reasoning set forth therein. TOMYs Motion for Partial Summary Judgment (ECF No. 87 ) is GRANTED with respect to Summer Infants affirmative d efense of invalidity and DENIED as to infringement. Summer Infants Motion for Summary Judgment (ECF No. 99 ) is GRANTED. Judgment on Summer Infants complaint and TOMYs counterclaim is entered in favor of Summer Infant and against TOMY; the Accused Tub does not infringe the 209 Patent. All other claims and counterclaims are dismissed with prejudice. So Ordered by District Judge Mary S. McElroy on 1/19/2023. (Potter, Carrie)

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UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF RHODE ISLAND

SUMMER INFANT (USA), Inc.,
Plaintiff,
v.
TOMY INTERNATIONAL, Inc.,
Defendant.

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C.A. No. 17-00549-MSM-PAS

MEMORANDUM AND ORDER
Mary S. McElroy, United States District Judge.
This matter is before the Court on defendant TOMY International, Inc.’s
(“TOMY”) objection (ECF No. 137) to the Report and Recommendation issued by
Magistrate Judge Patricia A. Sullivan (“R & R”) (ECF No. 135) on August 31, 2022.
Defendant’s objection encompasses matters referred and decided by Magistrate
Judge Sullivan pursuant to 28 U.S.C. §636 (b)(1)(A) as well as those for which she
issued an R & R pursuant to 28 U.S.C. §636(b)(1)(B). Matters decided pursuant to
28 U.S.C. §636(b)(1)(A) are reviewed by this Court and reconsidered only if the
decision is “clearly erroneous or contrary to the law.” Id. Matters for which the
Magistrate Judge issued reports and recommendations and to which a party files a
written objection, the Court must review de novo.
I.

BACKGROUND
TOMY is the owner of U.S. Patent No. 6,578,209 (“’209 Patent”), titled “Tubs

for Bathing Infants and Toddlers,” and sells an infant/toddler bathing tub (“TOMY

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Tub”) that it contends is a commercial embodiment of at least one claim in the ’209
Patent. Plaintiff Summer Infant (USA), Inc., (“Summer Infant”) began selling an
infant/toddler bathing tub (“Accused Tub”) in 2017 in competition with the TOMY
Tub and initiated this action seeking a declaration that the Accused Tub does not
infringe TOMY’s ’209 Patent. TOMY counterclaimed for infringement of the ’209
Patent, and Summer Infant responded with a claim that the ’209 Patent is invalid.
On August 31, 2022, Magistrate Judge Sullivan responded to several motions
from both parties. By separate text order, the Magistrate Judge decided the parties’
cross motions pursuant to Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993)
(“Daubert”), denying TOMY’s motion to partially exclude the infringement opinions
of Summer Infant’s technical expert, Mr. Gordon (ECF No. 84), and granting Summer
Infant’s motion to preclude TOMY’s expert, Mr. Mauro, from testifying about certain
of his infringement opinions (ECF No. 94). 1 In her R & R, the Magistrate Judge
analyzed the parties’ cross motions for partial summary judgment and recommended
that this Court deny TOMY’s motion for summary judgment on infringement, grant
TOMY’s motion for summary judgment on Summer Infant’s affirmative defense of
invalidity, and enter judgment on this complaint in favor of Summer Infant by
declaring that the Accused Tub does not infringe the ’209 Patent. In response, TOMY
objected to the Magistrate Judge’s order striking certain of Mr. Mauro’s infringement

The Magistrate Judge also granted in part and denied in part Summer Infant’s Daubert
motion to preclude TOMY’s damages expert from testifying (ECF No. 95) and its combined
motion to strike evidence for containing inadmissible hearsay and preclude TOMY from
arguing willfulness (ECF No. 107). Because the Court’s adoption of the Magistrate Judge’s
R & R moots such issues, these determinations do not require additional discussion.
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opinions as well as her R & R recommending a finding of non-infringement. (ECF
No. 137.)
II.

STANDARD OF REVIEW
Rule 72 requires that non-dispositive motions decided by a magistrate judge

be modified or set aside only if they are “clearly erroneous or contrary to the law.”
Fed R. Civ. P. 72(a). By contrast, when a magistrate judge issues recommendations
on a dispositive motion, district court review is de novo. See Fed. R. Civ. P. 72(b).
Here, Magistrate Judge Sullivan’s recommendations regarding the parties’ motions
for summary judgment are reviewed de novo, while her decisions denying TOMY’s

Daubert motion and partially granting Summer Infant’s Daubert motion are
reviewed for clear error. TOMY claims that the latter of these decisions constitutes
a dispositive motion, because the partial exclusion of its technical expert’s opinions
on infringement is critical to Magistrate Judge Sullivan’s ultimate recommendation
of non-infringement, and that therefore this decision should be reviewed de novo.
(ECF No. 139.) The Court is unpersuaded by this argument. Daubert motions are
not among those enumerated in 28 U.S.C. §636 (b)(1)(A), nor are they of the same
character as the listed motions. Many motions decided pursuant to 28 U.S.C. §636
(b)(1)(A) can affect the ultimate disposition of a legal action; parties would not raise
them if they did not expect them to have an effect. But a decision to preclude certain
expert testimony does not by itself dispose of a case or any claim or defense within it.
Therefore, the Magistrate Judge’s decision on this matter is reviewed for clear error.

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III.

DISCUSSION
The motions referred and decided by Magistrate Judge Sullivan pursuant to

28 U.S.C. §636 (b)(1)(A) are undoubtedly intertwined with those for which she issued
an R & R pursuant to 28 U.S.C. §636(b)(1)(B). Still, the Court must consider each in
turn according to its appropriate standard of review.
A. Motions Decided by the Magistrate Judge
1. Motion to Exclude Opinions of TOMY’s Technical Expert
Magistrate Judge Sullivan denied the portion of Summer Infant’s Daubert
motion seeking to exclude Mr. Mauro’s infringement opinions that were based on his
alleged failure to consider the curved surfaced of the Accused Tub (ECF No. 94 at 3034) and granted the portion seeking to exclude those of Mr. Mauro’s infringement
opinions that relied on equating the Accused Tub’s seating design with the seating
design described in the ’209 Patent. Id. at 42-44. The Magistrate Judge determined
that Mr. Mauro’s equation of the Accused Tub’s seating design, with its “single
essentially horizontal bottom surface extending from one back rest to the other with
a convex central hump rising vertically in the center,” with the ’209 Patent’s
description of “two seating surfaces disposed at differing inclinations and extending
from respective back rests to distal edges joined at a bottom surface apex,” was akin
to Mr. Mauro forcing a square peg into a round hole. (ECF No. 135 at 22-24.)
TOMY objects to this determination, but the Court is unpersuaded by its
arguments. TOMY first contends that Judge Sullivan “added requirements to the
claimed ‘seating surfaces’ regarding how a vertical portion of the Accused Tub’s

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bottom surface central ‘hump’ interacted with a child in the seat.” (ECF No. 139 at
8.) But the consideration of how a child would sit in the tub did not add requirements
to the scope of the claims. Rather, this analysis was necessary to determine whether
Mr. Mauro ignored the Court’s construction that the term “seating surface” must be
interpreted consistent with its ordinary and plain meaning. Ultimately, Magistrate
Judge Sullivan determined that “a seating surface for a toddler or infant, in the plain
and ordinary meaning of the term, simply does not reference a surface that is vertical
or nearly so.”

(ECF No. 135 at 23.)

The Court finds no clear error in this

determination.
TOMY also argues that the Magistrate Judge made a clear error of fact in
characterizing the “hump” as having “two nearly vertical sides,” because one side of
the Accused Tub’s “hump” is less steeply inclined than the other. (ECF No. 139 at 89.) But the Court finds this to be a fair description of this portion of the Accused Tub,
which, in the Court’s view, has one vertical side and one side that is, as Magistrate
Judge Sullivan described, “nearly vertical.” (ECF No. 135 at 23.) Because there is
nothing in this portion of the Magistrate Judge’s decision that is “clearly erroneous
or contrary to the law,” the Court declines to reconsider it. 28 U.S.C. §636(b)(1)(A).
2. Motion to Exclude Opinions of Summer Infant’s Technical Expert
The Magistrate Judge also denied TOMY’s Daubert motion (ECF. No. 84) to
exclude portions of the testimony of Summer Infant’s Technical Expert, Mr. Gordon.
TOMY does not object to this decision.

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B. Motions for which the Magistrate Judge Issued a Report and Recommendation
1. TOMY’s Motion for Partial Summary Judgment
Magistrate Judge Sullivan recommended the Court grant TOMY’s Motion for
Partial Summary Judgment relative to Summer Infant’s affirmative defense of
invalidity and deny the Motion relative to infringement (ECF No. 87). There is no
objection

from

either

party

regarding

the

Magistrate

Judge’s

invalidity

recommendation, and it is unclear if TOMY objects to the infringement
recommendation.

In any event, the Magistrate Judge’s decision to admit Mr.

Gordon’s testimony – to which TOMY does not object – presents genuine issues of
fact as to whether the Accused Tub infringes.

As such, the Court adopts her

recommendations on TOMY’s Motion for Partial Summary Judgment in full for the
reasoning set forth in the R & R.
2. Summer Infant’s Motion for Summary Judgment
The Magistrate Judge recommended the Court grant Summer Infant’s Motion
for Summary Judgment and issue a declaration of non-infringement in favor of
Summer Infant and against TOMY (ECF No. 99). Like all the determinations in the
Magistrate Judge’s R & R, the Court reviews this recommendation de novo. See 28
U.S.C. §636(b)(1)(B). After a thorough review of the record and the papers, the Court
agrees with the Magistrate Judge for the reasons stated in her R & R, which provides
a fair consideration of the facts and a well-reasoned discussion of the relevant law.
TOMY objects to this recommendation, arguing that the Magistrate Judge’s
infringement analysis should be rejected because it describes the ’209 Patent’s bottom

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surface apex as extending the width of the tub bottom, which is not specifically cited
in the Court’s claim construction. (ECF No. 137 at 3-7). The Court disagrees. Not
only does the Judge’s explanation of the claim construction for the bottom surface
apex include multiple references to the “width of the tub” (ECF No. 54 at 18-19), but
more importantly, the recommendation does not rest on this feature. TOMY’s ’209
Patent calls for two seating surfaces that rise at different angles to a bottom surface
apex. The Accused Tub has a flat bottom surface with a central hump to prevent an
infant from slipping. These structures are not equivalent, and neither the facts nor
the admitted expert testimony can support TOMY’s infringement theory. For these
reasons, the Court adopts the Magistrate Judge’s recommendations on Summer
Infant’s Motion for Summary Judgment in full.
IV.

CONCLUSION
The Court ADOPTS the Magistrate Judge’s R & R (ECF No. 137) in its entirety

for the reasoning set forth therein. TOMY’s Motion for Partial Summary Judgment
(ECF No. 87) is GRANTED with respect to Summer Infant’s affirmative defense of
invalidity and DENIED as to infringement. Summer Infant’s Motion for Summary
Judgment (ECF No. 99) is GRANTED. Judgment on Summer Infant’s complaint and
TOMY’s counterclaim is entered in favor of Summer Infant and against TOMY; the
Accused Tub does not infringe the ’209 Patent. All other claims and counterclaims
are dismissed with prejudice.

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IT IS SO ORDERED.

_________________________________
Mary S. McElroy
United States District Judge
January 19, 2022

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