Baby Jogger, LLC v. Britax Child Safety, Inc.
Filing
213
MEMORANDUM OPINION AND ORDER granting in part and denying in part 85 Motion for Summary Judgment and denying 92 MOTION for Partial Summary Judgment. The Clerk is DIRECTED to provide a copy of this Memorandum Opinion and Order to counsel for the parties. Signed by District Judge Raymond A. Jackson on 11/19/13. (tbro)
FILED
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
NOV 1 9 2013
Norfolk Division
6LIMK, U.S. DiSlHICI COURT
NORFC) LK. VA
BABY JOGGER, LLC
Plaintiff,
CIVIL ACTION NO. 2:12cv452
v.
BRITAX CHILD SAFETY, INC.,
Defendant.
MEMORANDUM OPINION & ORDER
Before this Court are cross-motions from Plaintiff and Defendant for summary judgment
(ECF No. 86 and 93) pursuant to Rule 56 of the Federal Rules of Civil Procedure. Having
carefully reviewed the parties' pleadings, this matter is now ripe for judicial decision. For the
reasons stated herein, Plaintiffs Motion for Summary Judgment is GRANTED IN PART and
DENIED IN PART. Defendant's Motion for Partial Summary Judgment is DENIED.
I. BACKGROUND & PROCEDURAL HISTORY
Plaintiff Baby Jogger, LLC ("Baby Jogger") alleges that Defendant Britax Child Safety,
Inc. ("Britax") committed patent infringement and trade dress infringement of its baby strollers.
Specifically, Baby Jogger accuses Britax's B-Agile and BOB Motion strollers of infringing Baby
Jogger's U.S. Patent No. 6,905,548 ("the '548 Patent"). Furthermore, Baby Jogger asserts that
Britax's B-Agile stroller infringes Baby Jogger's trade dress in its City Mini strollers. In
response, Britax has filed counterclaims against Baby Jogger, alleging that Baby Jogger's
strollers infringe its U.S. Patent No. 6,102,431 ("the '431 Patent") and that Baby Jogger and its
President Mark Zehfuss engaged in tortious interference with its prospective economic
expectancy and unfair and deceptive trade practices.
Baby Jogger owns the '548 Patent, issued by the United States Patent & Trademark
Office ("PTO") on August 1, 2000. The '548 Patent describes the invention of a compact all-
terrain baby stroller that can be folded with one hand. Britax owns the '431 Patent, issued by the
PTO on August 15, 2000, which discloses a baby stroller that can be folded with one hand for
storage and transport. U.S. Patent No. 4,544,178 ("the '178 Patent" or "the Al-Shiekh stroller")
was issued on October 1, 1985 and describes a collapsible stroller with a reversible handle.
The parties requested construction of four terms in the '431 Patent. On August 26, 2013,
this Court found construction of the terms "two meshing geared components," "secured to" and
"fixed component" was unnecessary because the terms are clear based on their plain and
ordinary meaning. This Court adopted a construction of "means of retracting said piston against
said spring" defining the term as a means-plus-function involving "knife blade followers" that
retracts the piston against the spring.
The parties filed cross-motions for summary judgment on issues involving the validity of
the '548 Patent, infringement of the '548, '431 and '178 Patents, the trade dress of the City Mini
stroller, and the unfair trade practices and tortious interference claims. In its Motion for
Summary Judgment, Baby Jogger asserts that the '548 Patent has been infringed, the '548 Patent
is valid as a matter of law, it has not infringed the '431 Patent, and it has not unfairly competed
or tortiously interfered with Britax. In its Motion for Partial Summary Judgment, Britax asserts
that the '548 Patent is invalid and that the City Mini stroller's trade dress is not protected under
the Lanham Act. On October 7, 2013, the Court conducted a hearing on these motions.
II. LEGAL STANDARDS
A.
Patent Infringement
Determining whether a patent has been infringed requires a two-step analysis: first, the
court construes the claim to determine its meaning and scope, and second, the fact finder
compares each limitation of the construed claim to the accused infringing product Cook Biotech
Inc. v. Acell, Inc., 460 F.3d 1365, 1372 (Fed. Cir. 2006); Fellowes, Inc. v. Michilin Prosperity
Co., Ltd., 491 F. Supp. 2d 571, 584 (E.D. Va. 2007). If the comparison does not reveal any
genuine issue of material fact regarding each element of the accused product's presence in an
asserted claim literally or under the doctrine of equivalents, there is no infringement and
summary judgment must be granted. Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350,
1357 (Fed. Cir. 2005).
Literal infringement requires that the accused claim contain every limitation in the
asserted claim. V-Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1312 (Fed. Cir. 2005).
Infringement under the doctrine of equivalents may be found if the accused product does not
literally infringe the express terms of the previously patented asserted invention but there is
"equivalence" between the elements of the accused claim and the asserted claim. WarnerJenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997) (citing Graver Tank &
Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609 (1950)); Abbott Labs., Inc. v. Novopharm
Ltd., 323 F.3d 1324, 1329 (Fed. Cir. 2003). The Federal Circuit has identified the proper
analysis of infringement under the doctrine of equivalents:
A finding of infringement under the doctrine of equivalents requires a showing
that the difference between the claimed invention and the accused product or
method was insubstantial or that the accused product or method performs the
substantially same function in substantially the same way with substantially the
same result as each claim limitation of the patented product or method.
AquaTex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320, 1326 (Fed. Cir. 2007). As a matter
of law, the doctrine of equivalents must be applied on an element-by-element basis and does not
apply where its application would vitiate a claim limitation. Warner-Jenkinson, 520 U.S. at 18;
W.L. Gore & Assocs., Inc. v. Medtronic, Inc., 874 F. Supp. 2d 526, 565 (E.D. Va. 2012).
B.
Invalidity of a Patent based on Anticipation and Obviousness
In order to receive patent protection, a claimed invention must be of patentable subject
matter, novel, nonobvious, and fully and particularly described. 35 U.S.C. §§ 101, 102, 103,
112. Patents are presumed valid in their entirety and each claim of a patent is presumed valid
independently. 35 U.S.C. § 282. To successfully defend against an infringement claim on a
motion for summary judgment, an accused infringer must provide clear and convincing evidence
of invalidity "so that no reasonable jury could find otherwise." Eli Lilly & Co. v. Barr Labs.,
Inc., 251 F.3d 955, 962 (Fed. Cir. 2001). See also Kahn v. Gen. Motors Corp., 135 F.3d 1472,
1480 (Fed. Cir. 1998) (noting that it is the defendant's burden to prove by clear and convincing
evidence that the plaintiffs claimed invention would have been obvious in light of the prior art
to support a defense of invalidity); ActiveVideo Networks, Inc. v. Verizon Commc 'ns, Inc., 807 F.
Supp. 2d 563, 566 (E.D. Va. 2011) ("An accused infringer challenging the validity of a patent
claim must prove anticipation by clear and convincing evidence."). Although he would not have
the burden of proof at trial, for a patentee to successfully move for summary judgment, he must
show that the accused infringer "failed to produce clear and convincing evidence of a defense
upon which a reasonable jury could invalidate the patent." Eli Lilly & Co., 251 F.3d at 962.
A patent may be invalidated for not being novel and thus anticipated where a reference
invention, which "describe[s], either expressly or inherently, each and every claim limitation and
enable[s] one of skill in the art to practice an embodiment of the claimed invention without
undue experimentation," was patented more than one year prior to the date of the allegedly
invalid patent's application to the PTO. 35 U.S.C. § 102(e); Am. Calcar, Inc. v. Am. Honda
Motor Co., Inc., 651 F.3d 1318, 1341 (Fed. Cir. 2011). Prior art inherently discloses a claimed
invention if all elements of the claimed invention are present and arranged as in the prior art and
there is "no change in manner of application and no result substantially distinct in its nature."
Ansonia Brass & Copper Co. v. Elec. Supply Co., 144 U.S. 11,18 (1892); Finisar Corp. v.
DirecTV Group, Inc., 523 F.3d 1323, 1334-35 (Fed. Cir. 2008). See also MEHL/Biophile Int'l
Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) ("Under the principles of inherency, if
the prior art necessarily functions in accordance with, or includes, the claimed limitations, it
anticipates."). Determining anticipation is a question of fact that "may be decided on summary
judgment if the record reveals no genuine dispute of material fact." Golden Bridge Tech., Inc. v.
Nokia, Inc., 527 F.3d 1318, 1321 (Fed. Cir. 2008).
A patent may be invalidated for obviousness "if the differences between the subject
matter sought to be patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person having ordinary skill in the
art." 35 U.S.C. § 103(a). See also KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007)
(explaining a patent to be obvious if it is no more than a predictable use of prior art elements and
there is an apparent reason to combine those elements as the patent does); Comaper Corp.v.
Antec, Inc., 596 F.3d 1343, 1351-52 (Fed. Cir. 2010) (explaining a patent to be obvious where
"two or more pieces of prior art could be combined, or a single piece of prior art could be
modified, to produce the claimed invention."). "While the ultimate conclusion of obviousness is
for the court to decide as a matter of law, several factual inquiries underlie this determination"
and must be considered under the Graham v. John Deere Co., 383 U.S. 1 (1966) ^Graham")
analytical framework. These factual inquiries include "the scope and content of the prior art, the
level of ordinary skill in the field of the invention, the differences between the claimed invention
and the prior art, and any objective evidence of non-obviousness such as long-felt need, and
commercial success." Sibia Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1355
(Fed. Cir. 2000) (citing Graham, 383 U.S. at 17-18). If the content of the prior art, the scope of
the patent claim, and the level of ordinary skill in the art are not materially disputed, a defendant
may succeed in a motion for summary judgment if he sufficiently demonstrates that one of
ordinary skill "would have both recognized the problem in the art as recognized by the inventors
and found it obvious to solve such problem in the manner claimed in the invention." Morpho
Detection, Inc. v. Smiths Detection Inc., 2012 WL 5879851, *6 (E.D. Va.).
C.
Trade Dress Infringement
Section 43(a) of the Lanham Act provides a cause of action to a plaintiff if a defendant
uses "any word, term name, symbol, or device, or any combination thereof... which is likely to
cause confusion ... as to the origin, sponsorship, or approval of his or her goods." 15 U.S.C. §
1125(a)(1)(A). To establish trade dress infringement, the plaintiff "must prove (1) that its trade
dress is either inherently distinctive or has acquired secondary meaning so that it is perceived as
identifying and distinguishing the source of the goods; (2) that its trade dress is nonfunctional;
and (3) that defendant's trade dress is likely to cause confusion among the relevant purchasing
public." X-ITProd, L.L.C v. Walter Kidde Portable Equip., Inc., 155 F. Supp. 2d 577, 617
(E.D. Va. 2001). Summary judgment is appropriate if there are no genuine issues of material
fact as to whether the allegedly protected product's features are inherently distinctive, acquired
secondary meaning, are nonfunctional, or there is a likelihood of consumer confusion. Ashley
Furniture Indus., Inc. v. SanGiacomo N.A. Ltd., 187 F.3d 363, 377 (4th Cir. 1999).
To analyze the acquisition of secondary meaning, the United States Court of Appeals for
the Fourth Circuit ("Fourth Circuit") outlined factors a court may consider in Perini Corp. v.
Perini Const., Inc., 915 F.2d 121 (4th Cir. 1990). The Perini factors include: "(1) advertising
expenditures; (2) consumer studies linking the mark to a source; (3) sales success; (4) unsolicited
media coverage of the product; (5) attempts to plagiarize the mark; and (6) the length and
exclusivity of the mark's use." Perini Corp., 915 F.2d at 125. The Fourth Circuit has
recognized a presumption of secondary meaning sufficient to shift the burden of persuasion to
the defendant in cases of intentional, direct copying. See Osem Food Indus, v. Sherwood Foods,
917 F.2d 161, 165 (4th Cir. 1990) (applying the presumption where defendant admitted to
copying the plaintiffs trade dress); Int'l Bancorp, L.L.C. v. Societe Des Baines De Mer Et Du
Cercle Des Etrangers A Monaco, 192 F. Supp. 2d 467, 481 (E.D. Va. 2002) (applying the
presumption where accused mark was identical to the protected mark and both were used in the
same market);X-ITProducts, L.L.C, 155 F. Supp. 2d at 624 (applying the presumption where
parties agreed that certain elements of the plaintiffs trade dress were copied by the defendant).
To establish that a product's features are nonfunctional, the plaintiff must prove that the
features taken as a whole are not "essential to the use or purpose of the article or ... [do not
affect] the cost or quality of the article," even if individual features possess functional
characteristics. InwoodLabs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n. 10 (1982); Ashley
Furniture Indus., Inc., 187 F.3d at 375.
To establish consumer confusion, courts consider the factors such as "(1) strength or
distinctiveness of mark, (2) similarity of two marks, (3) similarity of goods or services marks
identify, (4) similarity of facilities two parties use in their business, (5) similarity of advertising
used by two parties, (6) alleged infringer's intent, and (7) actual confusion." Renaissance
Greeting Cards, Inc. v. Dollar Tree Stores, Inc., 405 F. Supp. 2d 680, 689 (E.D. Va. 2005), aff'd,
227 F. App'x 239 (4th Cir. 2007).
D.
Unfair and Deceptive Trade Practices and Tortious Interference with
Prospective Economic Expectancy
Britax asserts both its unfair trade practices and tortious interference claims under North
Carolina law. A federal court sitting in diversity jurisdiction applies the choice of law rules of
the forum state to determine the applicable substantive law. Klaxon Co. v. Stentor Elec. Mfg.
Co., 313 U.S. 487, 496 (1941). In determining which jurisdiction's law to apply for claims based
on issues of state law, Virginia's choice of law rules dictate that the laws of "the place where the
alleged wrongful act occurred" be applied. To adjudicate tort claims, federal courts in Virginia
have interpreted "the place where the alleged wrongful act occurred" to mean the place where
the last event to make an actor liable transpired. The law of the place where prospective
contracts with a third party were never consummated will be applied to tortious interference with
prospective economic expectancy claims. See Gen. Assur. ofAm., Inc. v. Overby-Seawell Co.,
12-2244, 2013 WL 3722347, 5 (4th Cir. July 17, 2013) (applying North Carolina law, the state
where a customer terminated its contract with the plaintiff due to the defendant's tortious
conduct); Ford Motor Co. v. Nat'l Indem. Co., 2013 WL 4773977 (E.D. Va. Sept. 5, 2013) ("For
a claim of tortious interference, the last event necessary is a legal injury or damage to the
plaintiff caused by the wrongful interference."). The law of the place where injuries were
suffered will be applied to an unfair and deceptive trade practices claim. See Feeley v. Total
Realty Mgmt., 660 F. Supp. 2d 700, 713-14 (E.D. Va. 2009) (concluding that "the place of the
injury is each plaintiffs state of residence for the purposes of claims of unfair and deceptive
trade practices" because plaintiffs suffered financial injury when they purchased overvalued
8
lands from their residences, although the actual lands were located in different states);
Corinthian Mortgage Corp. v. Choicepoint Precision Mktg., LLC, 543 F. Supp. 2d 497, 503
(E.D. Va. 2008) (noting that "unfair trade practices claim is a tort claim" and is governed by the
substantive law of the place where the injuries were suffered).
There is both a statutory and common law cause of action for unfair and deceptive trade
practices under North Carolina law. "To prevail on a claim of unfair and deceptive trade
practices, a plaintiff must show: (1) defendants committed an unfair or deceptive act or practice;
(2) in or affecting commerce; and (3) that plaintiff was injured thereby." Strickland v.
Lawrence, \16 N.C. App. 656, 665 (2006) (citations and quotations omitted); see also N.C. Gen.
Stat. Ann. § 75-1.1 (West 2012) ("[UJnfair or deceptive acts or practices in or affecting
commerce, are declared unlawful."). "Under [N.C. Gen. Stat. §] 75-1.1, an act or practice is
unfair if it is immoral, unethical, oppressive, unscrupulous, or substantially injurious to
consumers. An act or practice is deceptive if it has the capacity or tendency to deceive." Ace
Chem. Corp. v. DSI Trans., Inc., 115 N.C. App. 237, 247 (1994) (internal citations omitted).
"Although it is a question of fact whether the defendant performed the alleged acts, it is a
question of law whether those facts constitute an unfair or deceptive practice." RD&J Props, v.
Lauralea-Dilton Enters., LLC, 165 N.C. App. 737, 748 (2004).
There is a North Carolina common law cause of action for tortious interference with
prospective economic expectancy that requires "conduct by the defendants which prevents the
plaintiffs from entering into a contract with a third party." Owens v. Pepsi Cola Bottling Co.,
330 N.C. 666, 680 (1992). The plaintiff has the burden of establishing that the defendant
"induced a third party to refrain from entering into a contract with Plaintiff without justification.
Additionally, Plaintiff must show that the contract would have ensued but for Defendants'
interference." DaimlerChrysler Corp. v. Kirkhart, 148 N.C. App. 572, 585 (2002). A plaintiff
may act with justification when there is "a reasonable and bona fide attempt to protect" the
interests of the actor or when he or she acts with no legal malice. United Lab. v. Kuykendall, 322
N.C. 643, 662 (1988), aff'd, 335 N.C. 183, 437 S.E.2d 374 (1993). See also Childress v. Abeles,
240 N.C. 667, 675 (1954) (noting that legal malice may mean acting on "hatred, ill will, or
spite."); Coleman v. Whisnant, 225 N.C. 494, 506 (1945) (holding that legal malice may occur
when a party interferes "with the free exercise of another's trade or occupation ... by preventing
people, by force, threats or intimidation from trading with" the other party).
Summary judgment is appropriate for both unfair trade practices and tortious interference
claims if the moving party shows that the evidence does not present a genuine issue as to any
material facts, even when all inferences of fact are drawn in favor of the party opposing the
motion. MLCAuto., LLC v. Town ofS Pines, 207 N.C. App. 555, 560 (2010); First Atl. Mgmt.
Corp. v. Dunlea Realty Co., 131 N.C. App. 242, 251-52 (1998).
III. DISCUSSION
The parties have filed two motions: Baby Jogger's Motion for Summary Judgment and
Britax's Motion for Partial Summary Judgment. Baby Jogger moves for summary judgment that
(1) Britax infringed its '548 Patent; (2) Claims 39, 40 and 53 of the '548 Patent are valid as a
matter of law; (3) Baby Jogger has not infringed the '431 Patent; and (4) Baby Jogger and
Zehfuss have not unfairly or deceptively competed with Britax or tortiously interfered with its
prospective business. Britax moves for summary judgment that (1) the City Mini strollers' trade
dress has not been infringed and (2) every claim of the '548 Patent is invalid.
10
Baby Jogger's Motion for Summary Judgment
A.
Infringement of Baby Jogger's '548 Patent
Baby Jogger argues that Britax's B-Agile and BOB Motion strollers practice every
limitation of Claims 39-41, 53-54, 58, 65 and 72-73 of its '548 Patent and therefore infringe.
Britax stipulates that its strollers are covered by the aforementioned claims but maintains that its
strollers do not infringe because the '548 Patent is invalid as anticipated and obvious in light the
relevant prior art, the '178 Patent. Based on this Court's analysis of anticipation and
obviousness of the '548 Patent herein, Britax has not presented clear and convincing evidence
that the '548 Patent is invalid for anticipation or obviousness. Britax has raised no other defense.
Accordingly, the Court grants Baby Jogger summary judgment that Britax has infringed its '548
Patent.
B.
Validity of Baby Jogger's '548 Patent
i.
Anticipation
The parties do not dispute material facts related to the issue of anticipation. Baby Jogger
maintains that Britax has not proven that the '178 Patent discloses each and every limitation of
the '548 Patent to establish anticipation because Britax Expert Dr. James Rice ("Dr. Rice")
provided only conclusory opinions of the disclosure of Claim 39 of the '548 Patent. First, Baby
Jogger asserts that Dr. Rice does not sufficiently explain how the Claim 39 element that
describes the '548 Patent stroller handle could have been disclosed. Baby Jogger's stroller
handle is directly attached to a gear unlike the Al-Shiekh stroller handle, which is attached to a
gear indirectly via a pivot pin, is rotatably mounted on the gear, and can move independently of
the gear. Dr. Rice counters that regardless of the differences in the way the handle is connected
to the gear, under the plain meaning of the word "attached," in both patents, the components are
11
nonetheless "attached" to one another; thus, attachment via a pivot pin permitting independent
movement can nevertheless anticipate a claim describing direct and dependent attachment.
Second, Baby Jogger argues that Dr. Rice does not establish anticipation of the Claim 39
description of the driving force engagement and corresponding rotation of the second leg
member during the entire folding and unfolding process. Dr. Rice states that driving engagement
occurs in the same way in the' 178 Patent as in the '548 Patent when folding commences from
the second unfolded position. Finally, Baby Jogger asserts that because Claims 40 and 53
depend on Claim 39 and anticipation of Claim 39 has not been established, Britax fails to
establish anticipation for all three claims.
The Court finds that Britax has not provided sufficient evidence that all limitations of
Claim 39 of the '548 Patent are disclosed by the '178 Patent. Britax fails to explain how the
patents' folding processes perform the same functions and results despite the fact that the
handles, force and motion are dissimilar. The evidence supports a finding that the '548 Patent
discloses a different manner of attaching gears by subtracting the pivot pin from its structure and
forcing simultaneous and dependent motion. The '548 Patent also changed the purpose of
inventing a collapsible stroller. Baby Jogger endeavored to construct an easily foldable stroller
for all-terrain use as opposed to a foldable stroller with a reversible handle. Britax has not
demonstrated that the '178 Patent provides an inherent description of the '548 Patent that would
have enabled one of ordinary skill in the art to create Baby Jogger's invention without undue
experimentation because it has not sufficiently explained how the gear attachment and folding
mechanism elements of Claim 39 are arranged in the same manner with the same application and
results in the Baby Jogger stroller as in the Al-Shiekh stroller. The Court concludes that Britax
has not presented clear and convincing evidence of anticipation of Claims 39, 40 and 53 of the
12
'548 Patent to establish invalidity; thus, summary judgment is granted for Baby Jogger on the
issue of anticipation.
B.
Obviousness
The parties do not dispute facts related to the scope of the prior art, the differences
between the patents and the level of ordinary skill in the pertinent field under the Graham
analytical framework. The parties also have not explicitly identified secondary considerations
for the Court to consider in its Graham analysis. The parties disagree over whether the '548
Patent Claim 39 represents predictable modifications to the '178 Patent that one of ordinary skill
in the art would have been motivated to make. Baby Jogger argues that its stroller is more than
an obvious improvement to the existing Al-Shiekh stroller. Dr. Rice contends that the basic
structure of the Baby Jogger and Al-Sheikh strollers' folding mechanism is the same regardless
of the reversible handle and lost motion means. He believes that the reversible handle and lost
motion means are independent from the geared folding mechanism, meaning that the presence of
these additional features does not preclude a finding that the folding mechanism of both patents
performs the same way. Dr. Rice also states that the ' 178 Patent's reversible handle would have
been obvious to a person of ordinary skill to remove to simplify the stroller design and end up
with a stroller like Baby Jogger's invention. Baby Jogger counters that simplifying the design is
not a genuine motivation to establish obviousness here because if making the handle stationary
and eliminating the lost motion means was a "problem" that one of ordinary skill would have
been motivated to invent around, it would not have taken fifteen years to develop a solution.
The Court finds that Britax has not provided clear and convincing evidence that the Al-
Shiekh stroller renders Baby Jogger's invention obvious. Britax has not demonstrated that Baby
Jogger's stroller did not contribute more than would have been obvious to one of ordinary skill in
13
the art to the Al-Shiekh stroller. The evidence does not demonstrate that more likely than not,
Baby Jogger simply combined familiar elements according to known methods to invent its
stroller. Baby Jogger invented a baby stroller folding mechanism to allow for a simpler gear
structure, stationary handle and driving force and corresponding rotation of leg members during
the entire folding process. Britax does not sufficiently explain how a motivation to eliminate a
specialized handle or simplify a design relates specifically to the '178 Patent because of any
problem with the original invention. Britax also has not provided independent evidence of
secondary considerations to demonstrate the '548 Patent's obviousness such as lack of
advantages claimed over the prior art, expected results, lack of skepticism of experts in the field,
copying by competitors, and lack of commercial success. Because Britax has not provided clear
and convincing evidence that Baby Jogger altered the ' 178 Patent in merely predictable ways,
the Court grants granting summary judgment in favor of Baby Jogger that Claim 39, and
consequently Claims 40 and 53, are nonobvious.
C.
Infringement of Britax's '431 Patent
i.
Literal Infringement
Baby Jogger asserts that it is entitled to summary judgment that the '548 Patent does not
literally infringe Britax's '431 Patent. First, Baby Jogger points out that this Court concluded
that the '431 Patent discloses knife blade followers, which the '548 Patent does not contain.
Britax argues that under the parties' agreed upon definition of a follower as "a component which
follows the motion of a separate component," the lower notched portion of each rotating gear
plate of the '548 Patent may be considered a follower even though it is not a separate component.
Britax insists that because the lower notched portion performs a different function and
corresponds to a different structure than the rest of the gear plate, it is a follower under the
14
parties' definition. Second, Baby Jogger argues that its stroller does not literally infringe the
"two meshing geared components" limitation of Britax's '431 Patent under the plain and
ordinary meaning of the term. Baby Jogger's '548 Patent has three geared components, two
geared plates and an idler gear, and the geared plates do not directly mesh. Britax argues that the
two geared plates mesh indirectly via the third gear and may be considered two meishing gears.
Knife blade followers are not literally the same as lower notched portions o'gear plates,
especially since the knife blade followers are separate components while the notched portions are
integrally connected to the gear plate. Also, under the plain and ordinary meaning of the word
"mesh," the "two meshing gears" term refers to gears that lock together or engage with one
another. To mesh directly with another gear is not literally the same as meshing inc|irectlywith a
gear using a third intermediary gear. The Court concludes that Baby Jogger has not) literally
infringed Britax's '431 Patent and grants Baby Jogger summary judgment.
ii.
Infringement under the Doctrine of Equivalents
Baby Jogger believes its strollers do not infringe the '431 Patent under the doctrine of
equivalents. Baby Joggers asserts that the differences between its three geared component
structure and the '431 Patent's "two meshing geared components" are substantial. Britax argues
that there are no substantial differences in the gear structures or folding mechanisms1 of the '431
and '548 Patents because their configurations similarly function in a similar manner with a
similar result.
A reasonable jury could find that the three geared components and lower notched portion
of the gear plates in the '548 Patent perform substantially the same function in the same way
with the same result as the two meshing gears and knife blade followers of the '431 Patent.
There are disputed material facts regarding the '548 Patent that persist, including the
15
functionality of the lower notched portions of its geared plates and the meshing of its gears.
Concluding that there is equivalence between Baby Jogger's three gear structure arid Britax's
two gear structure would not vitiate the "two meshing geared components" claim of the '431
Patent. A reasonable jury could find equivalence regardless of the dissimilar number of gears so
long as the gear structures substantially perform the same function in the same way with the
same result. See Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356 (Fed. Cir. 2)12) (noting
that '"[v]itiation' is not an exception to the doctrine of equivalents, but instead a legal
determination that 'the evidence is such that no reasonable jury could determine two elements to
be equivalent.'"). Because there is a genuine issue of material fact here, summary judgment is
denied on the issue of infringement of the '431 Patent under the doctrine of equivalents.
D.
Unfair and Deceptive Trade Practices and Tortious Interference with
Prospective Economic Expectancy by Baby Jogger and Mr. Zehfuss
Baby Jogger argues that Britax does not have admissible evidence to support either its
unfair and deceptive trade practices claim or tortious interference with prospective business
expectancy claim. Britax maintains that there are facts on record from depositions and exhibits
that, taken in the light most favorable to its company, demonstrate material disputec issues
regarding Baby Jogger's conduct, motive, intent and justifications. Baby Jogger also challenges
the certainty of Britax's requested damages. Britax maintains that it can establish that Baby
Jogger and Zehfuss's tortious, unfair and deceptive conduct was the proximate cause of
considerable lost profits. Lastly, Baby Jogger maintains that Britax incorrectly asserted its
causes of action under North Carolina law.
The Court finds summary judgment inappropriate because there are genuine [factual
disputes remaining regarding Baby Jogger's allegedly tortious and unfair conduct, there are
genuine disputes of material fact that relate to the unfair and deceptive trade practicejs claim.
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Neither party disputes whether the alleged torts affect commerce, but both parties proffer
contradictory facts about Baby Jogger's allegedly unfair or deceptive acts and Britax's alleged
damages, allegations necessary to establish a prima facie claim here. However, there is evidence
that infers Baby Jogger may have engaged in unfair and deceptive acts. Zehfuss admitted during
his deposition that he insinuated to manufacturer Sunnylove that the B-Agile strollers they were
developing infringed Baby Jogger's patent and he confronted Britax employees in public about
the B-Agile stroller's inferior and infringing qualities. Additionally, there is deposition
testimony and documentary evidence that Zehfuss spoke with Buy Buy Baby representatives
regarding the possibility of litigation against Britax.
Britax alleges that Baby Jogger was the proximate cause of Britax's damaged Britax
presents evidence that because of Zehfuss and Baby Jogger's conduct, Sunnylove temporarily
halted the manufacturingof its B-Agile stroller and Buy Buy Baby only sold the B-Agile stroller
in six of its sixty-six stores at the time the product was launched. Even though Baby Jogger
challenges the facts regarding Zehfuss's litigation threats and infringementaccusations as well as
the admissibility of the expert opinion to establish the $1.1 million loss profits damages figure,
the Court finds that the evidence viewed in the light most favorable to Britax establishes that
there is a genuine issue of material fact as to Baby Jogger's unfair and deceptive trade practices
that must be presented to a jury.
There are also genuine disputes of material facts that relate to the tortious interference
with prospective economic expectancy claim. The parties dispute whether Baby Jogger's
conduct prevented Britax from entering into a contract with a third party. With inferences drawn
in favor of Britax as the nonmoving party, there is evidence that demonstrates that Baby Jogger
induced Buy Buy Baby to refrain from contracting to sell the B-Agile stroller in all of its stores.
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There is also evidence to suggest the retail contract for the B-Agile stroller in all Buy Buy Baby
stores would have ensued but for Baby Jogger's interference. Britax presents testimonial and
documentary evidence of Buy Buy Baby's conversations with Baby Jogger about potential
infringement and the possibility of a law suit before it decided not to retail the B-A^;ile strollers
in more than six of its stores, even though other Britax products had been previously launched in
all of its stores. The Court finds genuine issues of material fact regarding tortious interference
with Britax's expected B-Agile stroller product launch. Summary judgment for Baby Jogger is
denied.
The choice of law rules in this forum, the Commonwealth of Virginia, dictate that the
substantive laws of the location of the last act necessary to make the defendant liable for the tort
be applied. For the unfair and deceptive trade practices claim, it is the place where 3ritax
suffered its financial injuries as a result of Baby Jogger's misconduct. For the tortious
interference claim, it is the place where prospective contracts with a third party were never
consummated as a result of Baby Jogger's interference. Since Britax's principal place of
business is North Carolina, Britax experienced decreased shipments to and from its North
Carolina distribution center and Buy Buy Baby refrained from submitting purchase orders for its
North Carolina stores, Britax's assertion of its claims under North Carolina law is appropriate.
Britax's Motion for Partial Summary Judgment
A.
Trade Dress
Britax moves for summary judgment that it has not infringed the City Mini strollers'
trade dress because the strollers' product features are not protectable under the Lanhpm Act.
Britax maintains that the design features of the City Mini stroller are functional and have not
acquired secondary meaning based on survey evidence and deposition testimony. Baby Jogger
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believes that it is entitled to a presumption of secondary meaning in its City Mini strollers' trade
dress because Britax intentionally copied its product features. Even absent the presumption,
Baby Jogger asserts contrary evidence to demonstrate that under the Perini factors, the
configuration of the City Mini strollers' packaging and design features is inherently distinctive
and nonfunctional.
In the absence of ample evidence of direct copying, the Court finds that Baby Jogger is
not entitled to a presumption of secondary meaning. However, Baby Jogger has raised genuine
issues of material fact regarding its trade dress' secondary meaning and functionality, which
must be resolved by a fact finder. Baby Jogger presents evidence that the City Mini stroller
canopy and foot bed are not functional, particularly since they require increased manufacturing
costs. Baby Jogger challenges Britax's survey of consumers' recognition of the City Mini
stroller trade dress as erroneous and unreliable. With inferences drawn in favor of Baby Jogger
as the nonmoving party, Britax has not proven that there are no genuine issues of material fact.
Because a reasonablejury could conclude that the City Mini strollers' product features are
protectable and its trade dress has been infringed, Britax's Motion for Partial Summary Judgment
is denied.
B.
Validity of Baby Jogger's '548 Patent
Britax seeks summary judgment that the '548 Patent is invalid for anticipation and
obviousness. Britax challenges the validity of the '548 Patent in two ways. First, Britax attacks
Baby Jogger's Motion for Summary Judgment directly by arguing in opposite that Claims 39,40
and 53 are anticipated and obvious in light of the '178 Patent. Second, Britax argue 5Claims 41,
54, 58, 65, 72-73 of the '548 Patent are rendered anticipated and obvious by the '178 Patent.
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First, as explained in the aforementioned analysis, Britax asserts that each li irritation of
Claims 39, 40 and 53 of the '548 Patent is disclosed by the '178 Patent. Britax argues that the
basic structure of the Baby Jogger and Al-Sheikh strollers' folding mechanisms is the same. It
also claims that both patents similarly describe attached gears and driving engagement. Baby
Jogger maintains that Britax has not proven by clear and convincing evidence that fie '178
Patent discloses, teaches or motivates each limitation of Claim 39 of the '548 Paten: to establish
invalidity by anticipation or obviousness.
Britax provides evidence of similarities between the '178 and '548 Patents' folding
mechanisms. However, Britax has not proven that it is substantially more likely than not that
one skilled in the art would be enabled to create the '548 Patent by incorporating the previous
disclosures of the '178 Patent or by employing predictable modifications to the ' 17fr Patent.
Britax's invalidity arguments do not amount to clear and convincing evidence of the: '178
Patent's disclosure of every element of Claim 39 of the '548 Patent or teaches each limitation of
the Claim to overcome its presumption of validity; thus summary judgment is denied.
Second, Britax also moves for summary judgment that Claims 41, 54, 58, 65, 72-73 of
the '548 Patent are anticipated and obvious in light of the prior art. Regarding anticipation,
Britax asserts that Claims 58, 65 and 72 of the '548 Patent describe gears that permit leg
members to rotate during folding just as the '178 Patent has a gear that permits the handle shaft
to rotate during folding. But Baby Jogger believes that because of the '178 Patent handle's
rotable mounting on a pivot pin and limited rotation of its leg members during folding, its claim
limitations do not disclose the limitations of the '548 Patent. Also, Britax asserts that the handle
described in Claims 41, 54, 58 and 73 of the '548 Patent as "fixedly attached" to the first gear is
disclosed by a similar handle description in the '178 Patent because both patents feature a handle
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and a gear that rotate in tandem. Baby Jogger counters that because there is a possibility of the
'178 Patent handle rotating independently from the first gear, there is no anticipation. In
addition, Claim 65 of the '548 Patent describes left and right side lock actuators tha: act to
prevent relative rotation of the two gears, which Dr. Rice claims is disclosed by the '178 Patent's
locking device on its front and rear legs that prevents rotation of the first gear sector relative to
the second gear sector. Baby Jogger's expert Dr. Eric Maslen contends that Claim 65 describes a
lock that acts directly on the gears unlike the lock in the '178 Patent.
Regarding obviousness, Britax generally reasserts the same arguments it made to
establish anticipation. Britax makes an additional argumentthat Claim 65 of the '548 Patent is
obvious in light of the '178 Patent and U.S. Patent No. 4,614,454 ("Kassai Patent"). The Kassai
Patentdescribes a baby carriage that locks using two meshing gears on foldable seel ions of a grip
rod. Britax reasons that it would have been obvious to one of ordinary skill in the field to replace
the locking mechanism in the Al-Shiekh stroller with the locking mechanism from tie Kassai
Patent, resulting in a lock that would act directly on the gears like the lock in the '5^ 8 Patent.
Baby Jogger does not believe that Britax has demonstrated that a person of ordinary skillwould
have been motivated to modify the '178 Patent to simplify its design, resolve aspecjfic defect,
remove an unnecessary feature or change the lock mechanism.
The Court finds, just as with Claims 39, 40 and 53, that Britax has not presented clear and
convincing evidence that Claims 41, 54, 58, 65, 72-73 of the '548 Patent are anticipated or
obvious. Britax has not explained how the '178 Patent discloses every limitation of ihe '548
Patent or how the '178 Patent would have motivated one of ordinary skill to invent what Baby
Jogger patented. Anticipation has not been established. Britax fails to provide clear and
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convincing evidence that the '548 Patent presents and arranges every '178 Patent claim element
with no change in application or result.
And, obviousness has not been established. Britax does not sufficiently explain how the
'548 Patent as a whole would have been obvious in light of the prior art, but makes only
conclusory assertions of obviousness without referencing specific claims or comparing particular
limitations, with the exception of Claim 65. However, even in its explanation of the obviousness
of Claim 65, Britax does not clarify why one of ordinary skill would have replaced the Al-Shiekh
lock mechanism with the Kassai lock mechanism to resolve a problem or satisfy an apparent
motivation. Because Britax has not provided clear and convincing evidence that the '548 Patent
is anticipated or obvious in lightof the prior art, summary judgment is denied on th2 issue of
invalidity of the '548 Patent.
IV. CONCLUSION
For the foregoing reasons, BabyJogger's Motion for Summary Judgment that Britax has
infringed its '548 Patent is GRANTED. Baby Jogger's Motion for Summary Judgment that the
'548 Patent is valid and was not anticipated or obvious is GRANTED. Baby Jogger's Motion
for Summary Judgment that it has not literally infringed Britax's '431 Patent is GRANTED.
Baby Jogger's Motion for Summary Judgmentthat it has not infringed Britax's '431 Patent
under the doctrine of equivalents is DENIED. Baby Jogger's Motion for Summary Judgment
that it has not committed unfair and deceptive trade practices or tortious interference with
prospective economic expectancy is DENIED. Britax's Partial Motion for Summary Judgment
that it has not infringed Baby Jogger's City Mini stroller trade dress is DENIED. Elritax's
Partial Motion for Summary Judgment that the '548 Patent is invalid for anticipation and
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obviousness is DENIED. The Clerk is DIRECTED to provide a copy of this Memorandum
Opinion and Order to counsel for the parties.
IT IS SO ORDERED.
Norfolk, Virginia
Raymond PL Jackson
November It, 2013
United States District:Judge
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