Swimways Corporation et al v. Zuru, LLC
Filing
101
OPINION AND ORDER granting 53 Motion for Summary Judgment; denying 56 Motion for Partial Summary Judgment. Copies distributed as directed. Signed by District Judge Mark S. Davis and filed on 7/18/2014. (bgra)
UNITED
STATES
EASTERN
DISTRICT
DISTRICT
Norfolk
SWIMWAYS
CORPORATION
VAP CREATIVE,
OF
FILED
COURT
VIRGINIA
Division
JUL 1 8 2014
CLfcRK, US DISTRICT COURT
and
NORFOLK. VA
LTD.,
Plaintiffs,
Case
v.
ZURU,
No.:
2:13cv334
INC.,
Defendant.
OPINION AND
This matter
is
currently before
summary
judgment
ECF No.
53, and a motion
Vap Creative,
(collectively,
hearing
the
on
judgment
by
Zuru,
("Vap")
summary
that
is
Inc.
Court
("Zuru"
on
or
a motion
ECF No.
judgment
and
56.
motions
for
"Defendant"),
and SwimWays Corporation
follow,
GRANTED
the
for partial summary judgment
"Plaintiffs"),
the
reasons
filed
Ltd.
ORDER
filed
by
("Swimways")
The Court conducted a
on
July
15,
2014.
For
Defendant's
motion
seeking
summary
Plaintiffs'
motion
seeking
partial
summary judgment is DENIED.
I.
As
No.
38,
FACTUAL
discussed at
at
issue
in
AND
PROCEDURAL
length in
Figure,"
patent") .
The claims of the
toy
this Court's Markir.an Opinion,
this case is a single patent
Propelled
self-propelled
BACKGROUND
U.S.
figure,
Patent
No.
ECF
titled "Self-
6,860,785
("the
'785
'785 patent are directed toward "a
and
in particular,
to a
water
toy,
such
as,
liquid,
a
fish
such
as
or
a
sea
water."
"The figure includ[es]
the
torso,
and
respect
to
feature
of
a
the
appendage,
Id.
at
to
1.
invention
"configured
to the torso,"
can
at
traverse
1:5-7,
through
ECF No.
a
40-1.
a flexible appendage coupled to
configured
claimed
is
that
patent
a torso,
torso."
which
with respect
'785
drive
the
turtle,
move
The
is
to
the
and "[t]he
purportedly
the
flex
appendage
figure's
while
[it]
with
unique
flexible
is
moving
relative motion and the
flex of the appendage effectively propel the toy figure through
the liquid and provide the appendage with
Id.
at 1:23-29;
On
June
1:61-67.
14,
2013,
infringement action,
'785 patent."
Plaintiffs
filed
Complaint fl 12,
ECF No.
assert
that
[Defendant]
31-35
of
'785
Patent
Br. Supp.
the
38
Mot.
parties
the
for Summ.
filed
instant
patent
. . . that infringe one or more claims of
"[P]laintiffs
and
the
alleging that Zuru LLC "sells a variety of
robotic fish products
the
life-like movements."
cross-motions
infringes
('asserted
J. at 3,
ECF No.
for
1.1
. . .
[C]laims
claims')."
54.
summary
Specifically,
Def.'s
On May 30, 2014,
judgment on
issues
involving infringement and invalidity of the '785 patent.
1 Plaintiffs
filed
an
Amended
Complaint
on
March
14,
2014,
alleging infringement by Zuru, Inc.
ECF No. 40. At the July 15, 2014
summary judgment hearing, counsel for Defendant confirmed that Zuru,
Inc. is the only proper defendant in this case, as Zuru LLC did not
import or sell any allegedly infringing products in the Eastern
District of Virginia.
Plaintiffs
judgment
allege
that,
with
has
failed
Defendant
rebutting
in
their
respect
to
to
"come
[Plaintiffs']
motion
Claims
evidence
of
Br.
asserts
motion
in
-
because
Def.'s
Supp.
Mot.
response
that
Br.
of
Supp.
Mot.
obvious
Br.
motions
at
"cannot
be
at
7,
and
specific
ECF No.
its
own
liable
invalid
Summ.
J.
at
ECF No.
4-5,
65.
asserted
least
Supp.
have
in
is
34,
35,
evidence
and
showing
Defendant
summary
for
in
1,
57.
the
judgment
infringement
first
ECF No.
54;
place."
see
Specifically,
also
Defendant
'785 patent is invalid "because each and every
patent's
over
as
for
in Opp'n at
the
well
patent
with
summary
fact which merits a trial."
J.
as
32,
infringement
Summ.
Defendant
contends that the
Def.'s
-
[P]laintiffs'
Def.'s Br.
one
for
partial
31,
forward
that there is a genuine dispute of
Pis.'
for
Mot.
been
four
for
fully
claims
[is]
separate
Summ.
J.
briefed
at
and
anticipated
prior
2,
are
art
ECF
by
or
references."
No.
54.
therefore
Both
ripe
for
review.
II.
A.
The
Federal
STANDARD OF REVIEW
Summary Judgment Standard
Rules
of
Civil
Procedure
provide
that
a
district court shall grant summary judgment in favor of a movant
if such party "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).
The
mere
existence
of
some
alleged factual dispute between the parties "will not defeat an
otherwise
properly
supported
motion
for
summary
judgment;
the
requirement is that there be no genuine issue of material fact."
Anderson v. Liberty Lobby Inc.,
Once
entry
a
of
movant
summary
has
477 U.S.
properly
judgment,
the
242,
advanced
247-48
(1986).
evidence
non-moving
party
supporting
may
not
rest
upon the mere allegations of the pleadings,
but instead must set
forth
exhibits
specific
statements
Corp.
Civ.
v.
P.
Catrett,
to
but
trial."
in
illustrating
477
56{e) (2).
himself
matter
facts
At
weigh
to
the
a
U.S.
form
genuine
317,
evidence
issue
for
there
at 249.
is
a
sworn
Celotex
see also
Fed.
judge's
determine
and
trial.
(1986);
"the
and
whether
477 U.S.
of
322-24
that point,
determine
Anderson,
the
function
the
is
not
of
the
issue
for
truth
genuine
R.
In doing so, the judge must
construe the facts and all "justifiable inferences" in the light
most
favorable
make
credibility determinations.
v.
City
2012).
to
Council
After
the
of
non-moving party,
Newport
viewing
"the judge must
the
Id.
News,
one
side
or
the
minded jury could return a verdict
ruling
presented."
on
F.3d
in
the
summary
other
for the
U.S.
the
255;
ask himself not whether he
unmistakably favors
evidence
at
674
evidence
and
judge may not
T-Mobile Ne.
380,
385
(4th
non-movant's
thinks
but
477
at
whether
judgment
"necessarily
252.
Cir.
favor,
the evidence
[non-movant]
Anderson,
LLC
a
fairon the
Because
implicates
a
the
substantive
the
trial
on
scintilla
will
evidentiary standard
the
. . .
evidence
in
support
insufficient"
be
of
merits [,]
of proof
to
[t]he
overcome
summary judgment motion.
evidence
"is
merely
Id.
that would apply
of
mere
the
a
plaintiff's
defendant's
Accordingly,
colorable,
existence
or
at
of
a
position
well-founded
if the non-movant's
is
not
probative, summary judgment may be granted."
significantly
Id. at 24 9-50.
B. Patent Invalidity Standard
A
patent
States
is
Patent
establishing
presumed
and
valid
Trademark
invalidity of
upon
issuance
Office,
a patent
and
the
this
presumption
invalidate a patent
evidence.
U.S.
1,
the
on
Corp.
(1934)).
judgment stage.
F.3d 1374,
1378
issue
convincing
v.
This
i4i Ltd.
of
(Fed.
Cir.
of
the
v.
of
shall
§ 282.
seeking
Thus,
to
Ct.
2238,
invalidity "must
invalidity
so
the
Mfg.,
summary
L.P.,
424
summary judgment
submit
that
Cir.
2001);
at
293
in order to prevail at
party seeking
F.3d
(Fed.
131 S.
Biocrest
Eli Lilly & Co.
962
party
applies
could find otherwise."
955,
the
35 U.S.C.
P'ship,
standard
2005).
stage,
patent
evidence
"burden
of Am. v. Radio Enq'g Labs.,
Invitrogen Corp.
summary judgment
the
requires
{citing Radio Corp.
8
United
to prove invalidity by clear and convincing
Microsoft
2246 (2011)
the
or any claim thereof
rest on the party asserting such invalidity."
Overcoming
from
no
such
reasonable
v. Barr Labs.,
Apple
clear
Computer,
and
jury
Inc.,
251
Inc.
v.
Articulate
Sys.,
patent
is
U.S.C.
§ 102,
obvious
Inc.,
invalid
if
it
if
or
...
234
the
F.3d
was
14,
20
(Fed.
anticipated
claimed
by
Cir.
prior
invention
2000).
art,
"would
to a person having ordinary skill
A
see
have
35
been
in the art
to
which the claimed invention pertains," 35 U.S.C. § 103.
1. Invalidity Based on Anticipation
"A patent
claim is invalid due
'the four corners
of a single,
element
claimed
of
the
expressly or inherently,
the
art
could
1331,
prior art document
invention
the
2009)
v.
212 F.3d 1272,
order
a claimed invention,
must
enable
one
of
ordinary
"[A]
a
prior art
feature
of
characteristic
single
Pharms.,
Inc.,
1282
skill
'anticipation
339
by
545 F.3d 1312,
claimed
necessarily
anticipating
Inc.,
undue
576 F.3d
in
(Fed.
1314
Cir.
Inc.
2000)).
"In
a prior art
reference
the
make
art
to
Impax Labs.,
(Fed. Cir.
the
Inc.
v.
2008).
reference may anticipate without disclosing
the
is
v/ithout
Acushnet Co.,
invention without undue experimentation."
Aventis Pharms.,
either
(quoting Advanced Display Sys.,
v. Kent State Univ.,
to anticipate
described],
invention
Callaway Golf Co.
1346 (Fed. Cir.
[is
. . . every
such that a person of ordinary skill in
practice
experimentation.'"
to anticipation if, within
invention
present,
reference."
F.3d 1373,
inherent
1377
or
Schering
(Fed.
disclosure
is
Cir.
if
that
missing
inherent,
Corp.
2003).
appropriate
in
v.
the
Geneva
"However,
only
when
the reference discloses prior art
the
unstated
anticipate
F.3d
limitation,
the
1364,
claims.'"
1378
1373
"A
claim,'
analysis:
and
comparison
the
Omeprazole
2007)
v.
that
'the
'[t]he
of
reference]
1396,
prior
art
invoke
the
1406
Bridqewood
a
claim
first
second
is
step
step
properly
(Fed.
in
construed
Cir.
reference
and
question
MoneyIN,
Inc.
v.
2008).
Although
the
record
Enzo Biochem,
Cir.
2010)
F.3d 1349,
2004)).
a
of
claimed
Inc.,
"anticipation
reveals
Inc.
v.
(Fed.
Litig.,
in
483
original)
Inc.,
290
F.3d
anticipated
requires
the
the
the
requires
prior
a
a
a
art.'"
LLC v. Siemens AG, 378
invention,
545
is
construing
analysis
claim to
involves
not
however
slight,
anticipation."
F.3d 1359,
question
1371
of
the
Net
(Fed.
fact,"
Cir.
rather
"'it may be decided on summary judgment
no
genuine
Applera
(quoting Leqqett
1352
Servs.,
inherently
"[Differences between
obviousness,
Verisign,
than a question of law,
if
Patent
(alteration
Id. at 1332 (quoting Power Mosfet Techs.,
F.3d
cannot
2002)).
determination
two-step
re
Cir.
Corp.
(Fed. Cir.
the
In
(Fed.
(quoting Transclean
1364,
[or
that must necessarily include
Cir.
&
dispute
Corp.,
Piatt,
599
Inc.
of
F.3d
v.
material
1325,
VUTEk,
fact.'"
1331
(Fed.
Inc.,
537
"if
the
2008)).
2. Invalidity Based on Obviousness
A
patent
is
invalid
based
on
obviousness
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 to which said subject matter
pertains."
35
properly
grant,
judgment
on
U.S.C.
as
patent
a
§
103(a).
matter
"[A]
of
invalidity
law,
when
district
a
the
motion
factual
court
for
summary
inquiries
obviousness present no genuine issue of material fact[]."
Corp.
v.
2011)
(quoting Ryko Mfg.
(Fed.
Cir.
724
Easton
Enters.,
1991));
F.2d 1567,
Inc.,
(Fed.
Union
Cir.
challenge
"demonstrate
artisan
'by
would
a
have
and
had
1366
Corp.
v.
claims
as
convincing
reason
to
Am.
Can
skilled artisan would have
obvious,
evidence
combine
success
from doing so.'"
USA,
Inc.,
Inc.
v.
"The
factual
factors,
the
566
F.3d
Apotex,
Inc.,
the
of
994
480
(Fed.
F.3d
Cir.
1348,
often
2009)
1361
a
skill
in
referred
the
a
v.
must
skilled
teaching
of
the
and that
art;
v. Teva Pharms.
(quoting
to
as
Cir.
the
Pfizer,
2007)).
Graham
the prior art;
3)
between the claimed invention and the prior art;
8
Inc.
party
that
(Fed.
the scope and content of
ordinary
Co.,
reasonable expectation of
Procter & Gamble Co.
underpinnings,
include 1)
level
989,
had a
Cir.
1983).
prior art references to achieve the claimed invention,
the
Tokai
(Fed.
Chore-Time Equip.,
778-79 (Fed. Cir.
patent's
clear
1358,
into
Inc., 950 F.2d 714, 716
Carbide
1984);
Cumberland Corp., 713 F.2d 774,
To
F.3d
Co. v. Nu-Star,
accord
1571
632
can
the
2)
differences
and 4) evidence
of
secondary
factors,
nonobviousness."
1352,
383
1360
U.S.
Inc.,
A
conclusion
Hydrochloride
1063,
can
see
is
four
respect
(Fed.
also
KSR
indicia
Inc.,
655
of
F.3d
John Deere Co.,
Int'l
Co.
v.
Teleflex
Graham
to
Cir.
factors
obviousness.
Capsule
2012).
before
In
re
Patent
Although
expert
of
the
reaching
a
Cyclobenzaprine
Litig.,
676
"the district
testimony,
F.3d
court
550
ordinary
account
all
resolve or keep open certain questions of fact," KSR Int' 1,
to logic,
into
consider
may
at 427,
take
to
which
U.S.
should
v. Apotex,
required
Extended-Release
1076-77
and
the
with
Inc.
objective
406 (2007).
court
under
as
(quoting Graham v.
(1966));
398,
district
evidence
Cir. 2011)
17-18
550 U.S.
known
Unigene Labs.,
(Fed.
1,
also
the obviousness inquiry "also may include recourse
judgment,
skill,"
and common sense available to the person of
which
"do not
necessarily
require
explication
in any reference or expert opinion," Perfect Web Techs.,
InfoUSA,
Inc.,
587 F.3d 1324,
1329
(Fed. Cir.
Inc. v.
2009).
It is well-settled that "[o]bviousness requires more than a
mere
showing
that
the
prior
art
includes
separate
references
covering each separate limitation in a claim under examination."
Unigene Labs.,
655
the
showing
additional
time
prior
of
the
art
F.3d at
invention
elements
1360.
that
would
in
the
a
"Rather,
person
have
of
obviousness requires
ordinary
selected
normal
course
and
of
skill
at
combined
research
the
those
and
development
to
yield
Int' 1,
550 U.S.
skill
possesses
automaton");
at
obvious
Bayer
to
However,
Pharm.
is
persons
whether
judges
"expert
the
ordinary
it
after
is
the
at
not
an
Inc.,
575
dissenting)
would
a genuine
material
issue
of
616
F.3d
1239
not
subject to a
(Fed.
been
of
to
the
appear
made.")).
combine may
will not necessarily create
fact."
Cir.
time
to
("The
have
finally
testimony concerning motivation
even if present,
of ordinary
simple
is
KSR
is]
the
sufficiently
discovery
(citing
Labs.,
Barr
invention
skill
be unnecessary and,
1231,
v.
[and
(Newman, J.,
whether
of
AG
Id.
a person
creativity,
(Fed. Cir. 2009)
not
to
(describing that
Schering
criterion
invention,
obvious
421
claimed invention."
"ordinary
F.3d 1341, 1350
statutory
the
Wyers
2011).
v.
Master
Indeed,
Lock Co.,
"obviousness
'rigid formula,'" and "'common sense of
is
those
skilled in the art demonstrates why some combinations would have
been obvious where
F.3d at
485
F.3d
1329.
1157,
the prior art,
others would not.'"
(quoting Leapfrog
1161
(Fed.
Cir.
the scope of
Perfect Web Techs.,
Enters,
2007)).
v.
Fisher-Price,
Where
the patent claim,
ordinary skill in the art are
"the
587
Inc.,
content
of
and the level of
not in material dispute,
and the
obviousness of the claim is apparent in light of these factors,
summary
judgment
(quoting KSR Int'l,
is
appropriate."
550 U.S. at 427).
10
Wyers,
616
F.3d
at
1239
C. Patent Infringement Standard
A
patent
is
makes,
uses or
States
. . .
§ 271(a).
infringed
when
a
sells any patented
during
the
term
person
"without
invention,
of
the
within the
patent."
allegedly
138
F.3d
infringing
1448,
Westview
Corp.
1454
device."
(Fed.
Instruments,
v. Portec,
Inc.,
Cir.
"patentee's
Cybor
1998)
Inc.,
517
U.S.C.
First,
the patent claims
expert
[has]
Corp.
821
v.
banc)
(en
U.S.
970 F.2d 816,
a motion for summary judgment,
the
35
and then the properly construed claims are compared to
the
v.
United
"An infringement analysis involves two steps.
the court determines the scope and meaning of
asserted,
authority
(citing Markman
370,
372
(Fed.
Fas
Cir.
Techs.,
(1996);
Read
1994)).
On
the court must determine whether
set
forth
the
factual
foundation
for his infringement opinion in sufficient detail for the court
to be certain that features of the accused product would support
a finding of infringement
by
the
the
court",
drawing
non-movant."
Elecs.,
Arthur A.
Inc.,
589
Collins,
48 (Fed. Cir.
under the
all
reasonable
Intellectual
F.3d
Inc.
2000)).
1179,
v.
claim construction adopted
Sci.
1183
inferences
&
Tech.,
(Fed.
N. Telecom Ltd.,
Cir.
"in
favor of
Inc.
v.
2009)
Sony
(citing
216 F.3d 1042,
1047-
"[A] good faith dispute about the meaning
and scope of asserted claims does not, in and of itself,
create
a genuine dispute to preclude summary judgment in patent cases."
Phonometrics,
Inc.
v. N. Telecom Inc.,
11
133 F.3d 1459,
1463
(Fed.
Cir.
1998).
Thus,
infringement,
whether
equivalents,
is
a
although
literal
question
"[t]he
or
of
determination
the
under
fact,"
the
of
of
doctrine
determination
of
infringement "is properly decided upon summary judgment when no
reasonable jury could find that every limitation recited in the
properly
accused
construed
device
equivalents."
Cir.
claim
either
either
is
literally
Gart v. Logitech,
or
or
is
not
under
Inc.,
254
found
the
Plaintiffs
seek
infringement claims,
doctrine
F.3d 1334,
of
1339
(Fed.
on
their
34,
has
failed to rebut.
57.
summary
judgment
arguing that they have presented sufficient
32,
ECF No.
and 35" of
DISCUSSION
partial
evidence demonstrating that
the
Defendant
'785 patent,
Pis.'
Br.
has
infringed "Claims
even
Supp.
Mot.
for Summ.
Defendant responds that "[P]laintiffs'
if
the
'785
patent
"unquestionably demonstrates
the patent in suit."
that
Def.'s Br.
31,
which they claim Defendant
were
valid,
[Defendant]
does
J.
at
7,
motion lacks
merit entirely" because "an invalid patent cannot be
No.
the
2001).
III.
and,
in
infringed"
the
not
in Opp'n at 1 & n.l,
evidence
infringe
4-6,
ECF
65.
Defendant
seeks
arguing that "the
summary
'785 patent
judgment
is
on
invalidity
grounds,
invalid and unenforceable as
a
matter of law due to lack of novelty and/or obviousness under 35
12
U.S.C.
53.
the
§§ 102 and 103."
Specifically,
Def.'s Mot.
for Summ.
J.
at
1,
ECF No.
Defendant argues that independent Claim 31 of
'785 patent "is invalid as anticipated by a wide variety of
prior
art
references,"
and
anticipated or obvious in
Supp.
Mot.
omitted).
for
Summ.
J.
"dependent
Claims
32-35
light of the prior art."
at
17,
ECF No.
20,
In support of its motion,
54
and
who
identified
references" to
United States
the
(capitalization
Defendant submits an expert
Inc.,
376
accused
F.3d
Office
none of
examiner
Id. at 4.2
1339,
infringer's
separate
'785 patent,
Patent
the '785 patent."
"four
are
Def.'s Br.
invalidity report authored by Dr. Michael Triantafyllou,
54-3,
38
primary
ECF No.
prior
art
which "were before the
during
the
prosecution
of
See Glaxo Grp. Ltd. v. Apotex,
1348
(Fed.
"burden
is
Cir.
2004)
especially
(observing that
difficult
when
an
. . .
the infringer attempts to rely on prior art that was before the
patent examiner during prosecution").
references
identified by
Defendant
Plaintiffs argue that the
and
Dr.
Triantafyllou
"fail
2 The parties do not dispute that the references identified in
Dr. Triantafyllou's report "are prior art to the '785 patent."
Br. in Opp'n at 2, ECF No. 68; see also Final Pretrial Order M
ECF No.
87.
The Court notes
that "United States
Patent No.
PL's
14-19,
6,179,683
Bl" ("the Pell patent"), also identified in the Final Pretrial Order
as prior art, id. 5 15, does not appear to be included in the summary
judgment record before the Court, although Dr. Triantafyllou's reply
invalidity report indicates that the Pell patent was "attached as
Exhibit
22"
to
his
report,
Reply
Invalidity
Report
of
Dr.
Triantafyllou at 32, ECF No. 70-3.
Thus, the Court will limit its
invalidity discussion to the four primary references discussed in Dr.
Triantafyllou's
invalidity
report
Van
Ruymbeke,
Yamamoto,
Triantafyllou '750, and Hirata.
13
to anticipate or render obvious the asserted claims."
Pis.'
in
argument,
Opp'n
at
2,
ECF
No.
68.
In
support
of
their
Plaintiffs submit a rebuttal expert invalidity report by Mr.
Ayton,
Br.
Ian
ECF No. 68-4.
Before proceeding to the invalidity and infringement issues
surrounding
parties'
the
'785
patent,
the
Court
will
first
address
the
remaining dispute regarding the Court's construction of
one of the disputed claim terms,
claim language is
as a proper construction of the
vital to the Court's analysis of the parties'
invalidity and infringement arguments.
A. Proper Construction of the Claim Language
The
Court
issued
construing
five
No.
In
38.
parties
its
disputed
their
maintain
Markman
claim
briefs
some
on
Opinion
terms
in
summary
disagreement
on
the
March
'785
judgment,
with
respect
10,
2014,
patent.
ECF
however,
the
to
the
claim
term "configured to flex in response to said drive producing the
relative
motion"
AND
"configured
configuration
in
response
motion."
at
32.
Id.
to
to
flex
said drive
Specifically,
into
producing
a
non-planar
the relative
the parties disagree as
to
the scope of the terms "configured to" and "in response to said
drive producing the relative motion."
1. "configured to"
Defendant
in part,
alleges
because,
that
it
is
not
liable
for
infringement,
although the appendage of the accused product
14
"is
indeed made
of
an
capable of bending,
elastomeric material,
. . . the
configured to bend in
Br.
'[appendage]
response
to the
material
is not
that
Plaintiffs
argue
'specifically'
of
Dr.
drive motion.'"
that
into
Triantafyllou
Defendant's
the
some
special
-
Pis.' Br. Supp. Mot.
albeit
Def.'s
opinion,
claim
[claim]
to
(quoting
ECF No.
insert
65-1) .
the
construction"
language
word
is
an
'configured to'
never-clearly-defined
for Summ.
In its Markman
11,
"attempt
Court's
"apparent attempt to infuse the
at
is
specifically
in Opp'n at 7-8, ECF No. 65 (emphasis in original)
Infringement Report
with
a
-
meaning."
J. at 8-9, ECF No. 57.
the Court
discussed at
length the
term "configured to" with respect to the claim term "configured
to propel the figure through the liquid."
See,
at
Defendant's
24,
27-31.
construction
The
Court
"replacing
rejected
'configured
to'
e.g.,
with
ECF No. 38
proposed
'capable
of,"
because "a construction that an appendage is merely 'capable' of
propelling
a
figure
through
liquid
fails
to
adequately convey
that the appendage is actually 'configured to' propel the figure
through
Inc.
v.
the
liquid."
Dell,
Id.
Inc.,
at
659
28
(citing
F.3d
1376,
Typhoon
1380
Touch
(Fed.
Cir.
Techs.,
2011)
(distinguishing between a device configured to perform a certain
function and a device that is simply capable of being configured
to
perform
'configured
that
to'
function)).
as
'capable
Recognizing
of
15
would
that
render
"interpreting
[certain]
claims
'virtually devoid of meaning,"
Abb,
Inc.,
*33
No.
(E.D.
6:ll-CV-0048,
Tex.
'configured to'
the
Court
July
understands
(quoting
2012
U.S.
Sipco,
Dist.
2012)).
at
2012
instant
construing the
nothing
that
to
LLC
2012)),
require
v.
LEXIS
*147;
see
not
at
Court
claim
is
not
2010)
(noting
in
a
a device
certain
106659,
"construe[d]
way"
being
v.
LEXIS
the
Inc.,
(E.D.
the
Defendant's
in
the
2012 U.S.
Hillerich
16164,
&
id.
at
Oct.
19,
plain
and
at
"proposal
configured'
plain
Dist.
and
*16
(N.D.
to'
to
an
of
adds
ordinary
LEXIS 150940,
Bradsby Co.,
"'configured
"refer[s]
of
2:08-cv-359,
No.
C
07-
Feb.
24,
embraces
the
Cal.
intentionally and specifically made
and
which
capable
Tex.
that
'[specifically]
term
No.
at
is sufficient in the context
as
Amazon.com,
Dist.
that
merely
*147
already present
also McHugh
2010 U.S.
of
LEXIS
Court
maintains
term,
term as meaning
03677,
concept
the
Amazon.com,
150940,
the
meaning of the term."
at
Dist.
LLC v.
rather being actually configured,'"
Likewise,
the
(quoting Sipco,
U.S.
ordinary meaning of "configured to"
of
29
as having its plain and ordinary meaning,
being configured but
31
30,
id.
intentional
to
act
design"
(citation omitted)).
2. "in response to said drive producing the relative motion"
Defendant
Mr.
Ayton,
the
term
asserts
that
Plaintiffs,
have improperly modified the
"in
response
to
said
16
drive
through
their
expert,
Court's construction of
producing
the
relative
motion"
in
an
"attempt
to
import
additional
limitations
[C]laim 31 in a vain effort to steer clear of
prior
art
Summ. J.
that
dooms
at 16,
simply added
that
claim."
ECF No. 54.
"bracketed
Def.'s
into
the overwhelming
Br.
Supp.
Mot.
for
Plaintiffs respond that Mr. Ayton
language
[to the
Court's
construction]
for the purpose of clarity," and it is actually Defendant "that
is
misapplying
the
Court's
claim construction."
Pis.'
Br.
in
Opp'n at 6, ECF No. 68.
In their Markman briefs,
should adopt
the
term,
Markman
Pis.'
"plain
Plaintiffs proposed that the Court
and
Br.
ordinary meaning"
at
proposed the construction,
12,
ECF
No.
of
20,
the
and
disputed
Defendant
"The appendage is capable of bending
such that the entire appendage is not in a single plane," Def.'s
Markman
Br.
Plaintiffs
"not
at
12,
argued
quite
ECF
that
accurate
No.
21.
At
Defendant's
in
the
sense
the
proposed
that
it
bending,
flexing in response to the drive."
No.
Plaintiffs explained that,
35.
appendage
is
going
back
and
Markman
hearing,
construction
doesn't
refer
was
to
Hr'g Tr. at 28, ECF
"when the drive goes and the
forth,
the
forces
of
the
drive,
[and] the forces of the water are going to cause that appendage
to flex out of plane.
Defendant's
"tak[es]
when
the
proposed
So it's in response to the
construction,
drive."
Plaintiffs
Id.
contended,
it out of context of . . . its ordinary use in a liquid
drive
is
causing
that
17
flexing."
Id.
at
28-29.
A
better construction,
Plaintiffs offered,
was one that "says that
it bends out of plane in response to the
elsewhere
in the claim."
After considering
the
construction,
Id.
at
29.
Plaintiffs'
"the
argument,
appendage
motion produced by said drive,
drive that's described
bends,
the Court proposed
in
response
to
the
such that the entire appendage is
not in a single plane,"3 and Plaintiffs asserted that they "would
be pretty comfortable with that."
asked
what
Defendant
answered,
"I
Honor:
would
don't
We
think
oppose
offered to
proposed
thought
we
be
can
that."
Id.
just drop
the
construction
of
make
perfectly
Id.
"in
response
fine
"In
Defendant's
invalidity
primary prior
J.
at
4,
disclose
ECF
art
54,
appendages
3 In its
said
Markman
with
Id.
arguments
all
of
construction.
We
center
Br.
said drive'
now appears,
"an
Supp.
to
in
the
Court
id.,
"four
Mot.
to
the
we
as
separate
for
Summ.
Defendant,
response
adopted
and
however,
issue,"
around
"we
from the
inherent
according
flex
easy
continued,
which,
"configured
opinion,
Your
that's
is
Defendant
for
Defendant
It
Def.'s
pretty
that
think
drive"
references,"
No.
one
fact,"
we
When the Court
construction,
'in response to
because
to
the
this
don't think it's also an issue."
that
at 29-30.
to
the
agreed-upon
construction "with minor adjustments reflecting the grammatical form
of the original term," such that the Court's final construction read:
"configured to bend, in response to the motion produced by said drive,
such that the entire appendage is not in a single plane."
ECF No. 38
The Court extended to the parties an opportunity to "object[]
at 32.
to the construed term as adjusted by the Court."
Id. at 32-33.
Neither party filed any objection to the final construction.
18
motion of the drive," Def.'s Reply Br. at 7, ECF No. 70.
Defendant
advanced
argues
in
his
interpretation
bend,
of
the
the
is
import additional
steer
claim,"
clear
Br.
the
in
construction:
a single
into
Supp.
Mot.
plane,"
for
prior
as
Summ.
J.
improper
such that the
"attempt
to
a vain effort
that
at
to
[between the
an
in
art
Ayton,
"configured
motion
[C]laim 31
overwhelming
Mr.
following
produced by said drive,
not
the
expert,
[cyclical relative]
limitations
of
Def.'s
report
agreed-upon
torso]
entire appendage
Plaintiffs'
rebuttal
in response to the
appendage and
to
that
dooms
16,
that
ECF No.
54
(alterations and emphases in original).
Defendant contends that
Claim 31
'configured to
"states
that
the
appendage
is
response to said drive producing the relative motion,'
response
to
the
appendage
and
[cyclical
the
Court to believe."
Plaintiffs
Id.
vigorously
from either the
the claim,
torso]'
relative]
-
as
motion
[P]laintiffs
flex
- not
'in
[between
would
have
in
the
this
(alterations and emphases in original).
dispute
Court's
that
construction
their
or
construction
the
plain
varies
language
of
asserting that Mr. Ayton's "bracketed language" added
to the Court's construction "merely clarifies it by providing a
reminder
of
the
nature
said drive,"' Pis.'
The
Court
Br.
agrees
of
the
referenced
'motion
in Opp'n at 6, ECF No.
that
Mr.
Ayton's
produced
by
68.
"bracketed
language"
merely provides "clarity" to the construction agreed upon by the
19
parties
words
at
of
the
the
F.3d
1303,
Corp.
v.
Markman
claims
1312
hearing.
themselves,'"
(Fed.
Cir.
Conceptronic,
1996)),
the
plain
claimed
appendage
Id.
2005)
Inc.,
language
is
Phillips
F.3d
Claim
"configured
to
drive producing the relative motion."
ECF No.
40-1
(emphasis
added).
AWH
"'to
31
1582
(Fed.
the
the
to
said
response
preceding
Cir.
that
'785 patent at
In
415
Vitronics
indicates
in
the
Corp.,
(quoting
1576,
flex
first
v.
(en banc)
90
of
Looking
11:29-30,
paragraph
of
Claim 31, the patentee describes the "relative motion" produced
by "said drive," id.,
explaining that the drive "produce[s]
[a]
cyclical relative motion between said appendage and said torso."
Id. at 11:26-27
(emphasis added).
Nowhere in Claim 31 does the
patentee describe any other motion "produced by the drive."
The
plain
language
configured to
flex
of
into a
to said drive moving
torso,"
'785 patent
indicating that
at
Phillips,
. . .,
both
1
discloses
non-planar
said
first
8:9-11,
appendage
ECF
415
sources
of
because
"claim terms
"appendage
No.
with
40-1
in
respect
(emphasis
at
1314
and
to
enlightenment
are
as
to
the
normally
the patent").
20
that
can
meaning
used
said
added),
relative motion between
(asserting
unasserted,
being
response
torso that causes the appendage to
F.3d
asserted
an
configuration
it is specifically the
the appendage and the
See
Claim
Id.
flex.
"[o]ther claims
also
be
of
claim
a
consistently
valuable
term"
throughout
The
Court
specification,
also
considers
of which
the
[the claims]
claims
Cir.
1995)
(en banc));
(observing that
guide
to
the
the
meaning
description of
the
Inc.,
of
a
is
that
at 1315
979
90
F.3d at
1582
single
best
term").
'785 patent explains
Id.
the
"the
usually
disputed
of
52 F.3d 967,
see also Vitronics,
specification
view
are a part.'"
(quoting Markman v. Westview Instruments,
(Fed.
"'in
The
detailed
the "drive 140
is
configured to move the appendage 160 with respect to the torso
120"
and,
"[w]hen
torso 120,
bends."
the
appendage
160
flexible portion 164
'785
clear that
the
patent
the
at
patentee
2:12-16,
moves
of
ECF
intended to
During
Court
at
the
the
Markman
position that,
No.
are
disclose
discussion
to
hearing,
cause
added).
timely objection
that
the
appendage
Neither
to
the
claimed
in
flexes
Thus,
or
it
appendage
is
that
Court
the
did
Claim
31
made
and
clear
[and]
to
Hr'g Tr.
Markman
Defendant
is
the
their
and the appendage is
appendage
at
Plaintiffs
Plaintiffs
So it's in response to the drive."
(emphasis
an
the
the appendage 160 with
between
the forces of the drive,
going
40-1.
to
Id.
"when the drive goes
back and forth,
water
lengthy
respect
the appendage
"flexes or bends" when the drive "move[s]
respect to the torso 120."
with
going
the forces of the
flex
at
out
28,
hearing
ever
"configured
of
plane.
ECF No.
nor
suggest
to
in
35
a
that
flex
in
response to the motion of the drive," Def.'s Reply Br. at 7, ECF
21
No. 21, as Defendant now argues,
motion
produced
agreed
at
Defendant
the
at
argues
17,
the
Markman
"[C]laim 31's
J.
by
the
54,
the
the
parties
Moreover,
Court's
language,"
No.
as
hearing.
that
plain
ECF
drive,
rather than in response to the
the
construction
Def.'s Br.
Court
to
and
finds
Supp.
Court
extent
that
varies
Mot.
that
response to the motion produced by said drive"
the
the
from
for Summ.
phrase
"in
contained in the
Court's construction is synonymous with the phrase "in response
to said drive producing the relative motion" contained in Claim
31,
especially
Thus,
the
Court's
when
Court
Supp.
"merely
the
sees
of
in
need
confirmed the
the
to
the
Summ.
context
Mr.
claim
at
6,
further
term
the
ECF
by
alterations
are
not
No.
ECF No.
68.
construe
the
"an
claim.
of
a
but
the
express
order,"
54,
providing
'motion produced
proper construction of
entire
construction
16,
construction]
at
of
Ayton's
disputed
J.
referenced
Opp'n
the
Court's
the
the
in
that
of
for
clarif[y
Br.
no
of
Mot.
nature
Pis.'
finds
construction
misapplication
Br.
read
Pis.'
instead
reminder
of
by said drive,'"
Accordingly,
disputed
the claims,
the
term.
Court
Having
the Court next
addresses Defendant's arguments regarding the alleged invalidity
of
the asserted claims.
B. Defendant's Summary Judgment Motion based on Invalidity
Relying
Triantafyllou,
on
"an
expert
report
authored
by
Dr.
Michael
S.
a leading robotic fish expert," Defendant alleges
22
that
"the
asserted
claims
[of the
'785
anticipated by and/or obvious over
prior
art
references,"
unpatentable."
No.
54.
report
issue
Pis.'
which
prepared by
of
material
their
fact
Mot.
the
as
invalid as
"asserted
for Summ.
Mr.
to
Ayton,
rebuttal expert
"raises
preclude
claims
J. at 4, 10, ECF
arguing that the
expert,
so
are
. . . four separate primary
render
Def.'s Br. Supp.
Plaintiffs disagree,
patent]
a
summary
genuine
judgment."
Br. in Opp'n at 7, ECF No. 68.
The
Court
Defendant's
Court's
notes
that
listing of
Local
Rule
some
of
the
"Undisputed
56(B),
which
assertions
Facts"
fail
requires
a
to
contained
in
satisfy this
"listing
[of]
all
material facts as to which the moving party contends there is no
genuine
issue and citing
the
parts
of
the
record relied on
support the listed facts as alleged to be undisputed."
Loc.
Civ.
R.
56(B)
(emphasis
added).
For
example,
to
E.D. Va.
the
sixth
paragraph of Defendant's "Undisputed Facts", which appears to be
the
basis
for
Defendant's
that Defendant's expert,
asserted claims
over
Br.
four
are
separate
invalidity
Dr.
without
Report of Dr.
Triantafyllou,
assert
Triantafyllou,
question
primary prior art
Supp. Mot. for Summ, J.
does
not
as
Dr.
Triantafyllou's
arguments,
at 4,
anticipated by or
references."
obvious
See
Def.'s
ECF No. 54 (citing Invalidity
the
conclusions,
23
alleges
"concluded that the
ECF No. 54-3).
undisputed
simply
However,
"material
but
Defendant
facts"
supporting
merely
cites
Dr.
Triantafyllou's report as the "parts of the record relied on to
support" such conclusions.
The
"undisputed
E.D. Va. Loc.
fact"
of
an
Civ.
expert's
R. 56(B).
conclusions
is
not
sufficient to establish an absence of "a genuine issue necessary
to
be
litigated."
Supreme Court
can
and
resolve
has
should
or
E.D.
made
take
keep
550
U.S.
at
"dispute[]
427
that,
to
(emphasis
68.
Thus,
unsupported
expert
questions
be
"Undisputed
Facts,"
made
added).
arguments
litigated."
follows
in
turn
will
the
E.D.
fact,"
any
in
four
Pis.'
may
ultimate
KSR
event,
the
court
which
the
Int'l,
Plaintiffs
Br. in Opp'n
of
prior
Defendant's
instead
body
Va.
the organization
the
"district
the court.
In
contained
and
in
a
Indeed,
testimony,
of
by
of
Loc.
the
consider
their
determine whether the record reveals
be
56(B).
the Court will disregard all factually
conclusions
to
R.
although
account
certain
are
Civ.
Dr. Triantafyllou's conclusions."
at 2, ECF No.
specific
Loc.
clear
into
open
legal determinations
Va.
"a
Civ.
R.
experts'
art
the
briefs
genuine
of
parties'
in
order
to
issue necessary
56(B).
reports
references
listing
The
Court
and discusses
identified
by
Dr.
Triantafyllou in his invalidity report.
1. Van Ruymbeke
The
Van
application
Van
Ruymbeke
identified
Ruymbeke
reference
as
"PCT
(published
Aug.
is
an
Publication
8,
24
1991)
international
No.
WO
('Van
patent
91/11235
to
Ruymbeke'),"
Invalidity Report of Dr. Triantafyllou at 10, ECF No.
Ruymbeke pertains to
the water."
a "swimming" toy that is
Van Ruymbeke at 1,
For purposes of
background,
ECF No.
the Van
54-3.
Van
"able to move in
54-7
(English trans.).
Ruymbeke
abstract
reads
as
follows:
A swimming toy comprising an elongate hollow body
to which are attached two flexible side fins
(1)
(3) whose
leading edges (3b) are provided with fin rods (4) made
The forward part
of a rigid or semi-rigid material.
of
said
hollow
body
houses
a
mechanism
(7)
for
controlling the fins (3) having at least one driving
device (100) and two oscillating levers (19a, 19b)
each
of
which
is
connected
the
fin
rods
(4),
actuated by means of
said hollow body (1)
The body (1) of said
skin (2) made from a
formed with the side
skeleton
(6-8a-8b-9)
housed
and containing the fin (3)
Id.
According
to
Van
or
connectable
to
one
of
said
control
mechanism
being
a motive device (14) housed in
and providing propulsive power.
toy includes an outer shell or
flexible material and integrally
fins (3) , and a rigid internal
in
said
shell
or
skin
(2)
control mechanism (7).
Ruymbeke's
specification,
the
"swimming
toy according to the invention can move in the water,
perfectly
imitating the swimming mode of certain fish such as Rays."
at 2.
Specifically,
movement of the
movement
of
perpendicular
alternative
Van Ruymbeke explains "that the oscillatory
levers
the
to
pivot
. . . communicates reciprocating pivotal
beams
the
[of
the]
longitudinal
generating
its
motion
for
fin[s],"
axis
flapping
. . . propelling said toy in water."
In
Id.
summary
25
of
in
a
the
movements
"plane
toy,
the
or
rippling
Defendant
contends
Id. at 4.
judgment,
that,
based
on
Triantafyllou,
the
invalidity
at 17-18,
to
the
ECF
specific
No.
its
expert,
See Def.'s Br. Supp. Mot.
21-22, ECF No.
report of its
11,
of
Dr.
Van Ruymbeke anticipates Claims 31-34 and renders
obvious Claims 35 and 38.
J.
report
arguments
expert,
68.
Mr.
The
54.
Plaintiffs disagree, pointing
advanced
Ayton.
Court
for Summ.
in
the
rebuttal
See Pis.'
considers
each
Br.
invalidity
in Opp'n at 7-
asserted
claim
in
consists
of
turn.
a. Anticipation of Claims 31-34
As
discussed
two steps,
(1)
above,
an
anticipation
analysis
"'construing the claim,'" and
(2)
conducting "'a
comparison of the properly construed claim to the prior art.'"
Enzo Biochem,
599 F.3d at 1332
Having completed the
F.3d at 1406).
construing the
"comparison
art.'"
(quoting Power Mosfet Techs., 378
disputed
of
the
claim terms,
properly
first step with respect to
the
construed
Court
claim[s]
next
to
conducts
the
Id^
i.
Claim 31
Independent Claim 31 of the '785 patent discloses:
[preamble]
A figure configured to be at least partially immersed
in
and
propelled
through
a
liquid,
said
figure
comprising:
[the "torso limitation"]
a torso
defining
a
cavity,
figure torso;
26
said torso
simulating
an
a
prior
[the "flexible appendage" limitation]
a flexible appendage disposed outside of the cavity
and coupled to said torso, said appendage configured
to propel the figure through the liquid; and
[the "drive" limitation]
a drive coupled to said torso and to said appendage,
said drive configured to produce forces on said torso
and on said appendage sufficient to produce cyclical
relative motion between said appendage and said torso
when the figure is at least partially immersed in the
liquid,
[the "configured to flex" limitation]
said appendage being configured to
flex in response
to said drive producing the relative motion,
said
appendage being configured to flex into a non-planar
configuration in response to said drive producing the
relative motion.
'785 patent at
its
expert,
Ruymbeke
Def.'s
Br.
not
31."
"Dr.
reference
Plaintiffs
does
11:16-33,
Triantafyllou
anticipates
Supp.
Mot.
disagree,
satisfy
ECF No.
for
arguing
the
40-1.
has
Defendant
established
[C]laim 31 of the
Summ.
that
J.
at
"the
Van
'configured to
flex'
17,
asserts
that
the
that
Van
'785 patent."
ECF
Ruymbeke
limitation
No.
54.
reference
of
Claim
"swimming
toy,"
Pis.' Br. in Opp'n at 7, ECF No. 68.
the preamble
The
abstract
of
Van
Ruymbeke
describes
a
which includes a "control mechanism being actuated by means of a
motive
device
Ruymbeke at 1,
states,
. . .
ECF No.
and
providing
54-7.
propulsive
power.
The description of Van
Van
Ruymbeke
"[t]he present invention relates to a toy swimming able
to move in the water."
Id.
The Court agrees,
27
and Plaintiffs do
not dispute,
that Van Ruymbeke anticipates the preamble of Claim
31.
the "torso"
The
abstract
comprising
Ruymbeke,
swimming
agrees,
an
of
elongate
reproduced
according
and
Van
Ruymbeke
hollow
below,
to
the
Plaintiffs
limitation
discloses
body."
depicts
"a
invention."
do
not
Id.
swimming
Figure
plan
Id.
dispute,
"[a]
view"
at
1
of
2.
that
of
Van
the
The
Van
toy
"toy
Court
Ruymbeke
anticipates the "torso" limitation disclosed by Claim 31.
the "flexible appendage" limitation
The
side
abstract
fins"
are
for
device
force," so that
Ruymbeke
to
Id. at 1.
controlling
housed
Van
attached
"swimming toy."
(7)
of
in
the
said
the
the
explains
"elongate
that
"two
hollow
flexible
body"
of
the
The "hollow body houses a mechanism
fins,"
hollow
which
body
and
is
"driven
providing
swimming toy "can move in the
28
by
the
a
drive
driving
water."
Id.
at 1,
Van
2.
The Court finds,
Ruymbeke
discloses
and Plaintiffs do not dispute,
the
"flexible
appendage"
that
limitation
of
Claim 31.
the "drive" limitation
Because
subparts,
of
Van
the
"drive"
limitation
of
the Court examines each in turn.
Ruymbeke
discloses
said appendage [s],"
as
a
"drive
ECF No. 40-1.
the
"hollow body"
the
"at
least
one
19b)
of
driving
31
Van
coupled
to
each of which
is
(11)
the abstract
said
the
several
torso
and
'785 patent.
Van Ruymbeke explains that
Ruymbeke
device
contains
First,
claimed in Claim 31 of
'785 patent at 11:24,
(19a,
Claim
and
"swimming
two
toy"
includes
oscillating
levers
connected or connectable to one of
the fin rods (4), said control mechanism being actuated by means
of
a
motive
device
(14)
housed
providing propulsive power."
in
said
hollow
body
Van Ruymbeke at 1,
(1)
ECF No.
and
54-7.
Second, Van Ruymbeke's description discloses a "drive configured
to produce
forces on said torso
patent
11:25-26,
at
mechanism
described
ECF
above
reciprocating pivoting
ECF No.
the
54-7.
drive
that
Third,
are
No.
[of]
and on said
40-1,
is
used
to
appendage,"
asserting
that
communicate
'785
"[t]he
the
same
the rocker arm," Van Ruymbeke at 4,
Van Ruymbeke discloses
"sufficient
to
produce
forces produced by
cyclical
relative
motion between said appendage and said torso when the figure is
at
least
partially
immersed
in
29
the
liquid."
'785 patent
at
11:26-28,
ECF
No.
40-1.
Specifically,
Van
Ruymbeke
provides,
"[i]t is understood that the oscillatory movement of the
19a,
19b
beams
communicates
fin
movements
4,
. . .
or
reciprocating
the
alternative
rippling."
Accordingly,
the
Court
pivotal
Van
finds,
pivot
Ruymbeke
and
movement
generating
at
levers
4,
Plaintiffs
ECF
do
of
flapping
No.
not
the
54-7.
dispute,
that Van Ruymbeke discloses the "drive" limitation of Claim 31.
the "configured to flex" limitation
As discussed above,
in
response
appendage
to
being
configuration
motion"
said
as
the Court construed "configured to flex
drive
producing
configured
in
response
"configured
to
to
to
the
flex
said drive
bend,
relative
in
into
motion,
a
producing
response
to
said
non-planar
the relative
the
motion
produced by said drive, such that the entire appendage is not in
a single plane."
construction,
his
ECF No.
"opinion that
Dr.
Figs.
Van
Triantafyllou
21-22).
discussion
below),
is
of
32.
Acknowledging the
Dr. Triantafyllou asserts in his
configured to flex as
of
38 at
Dr.
Ruymbeke
discloses
recited in Claim 31."
at
13,
ECF No.
Triantafyllou
Figures
an
21
and
22
54-3
of
Van
invalidity report
appendage
that
is
Invalidity Report
(citing Van
supports
Court's
his
opinion
Ruymbeke
Ruymbeke
with
a
(reproduced
contending that "Van Ruymbeke teaches that the appendage
configured
to
flex
into
a
non-planar
response to the motion of the appendage."
30
Id.
configuration
in
UsO
1.6
5t
Rp.21
Dr.
" " V a»^.
Triantafyllou
further
contained in the [Van Ruymbeke]
the
appendage
up
and
positive or negative
3d'
Van
in
the
down
causing
Id.
discloses
drive
appendage
to
have
a
Triantafyllou
"configured
to
flex"
[Van Ruymbeke]
concludes,
limitation
drive causes
fin 3, to bend such that the entire fin is not in
a single plane."
Plaintiffs
his
the
Dr.
because "the motion produced by the
the appendage,
"the
illustrated by elements 3d and
Thus,
the
that
torso moves the front portion of
'curvature,'
figures."
Ruymbeke
explains
Id.
at 13-14.
contend
invalidity report
that
Dr.
Triantafyllou's
conclusions
are based upon a "misappl[ication of]
in
the
Court's claim construction" and an "apparent misunderstanding of
the
significance
of
reference,"
Pis.'
Plaintiffs'
expert,
Figures
Br.
Mr.
in
21
Opp'n
Ayton,
and
22
of
the
Van
Ruymbeke
at
6,
7,
10,
ECF
No.
explains
that
"Figures 21
68.
and 22
depict two distinct configurations that the device can be placed
in prior to its
device
during
suggests.
No.
release," rather than "sequential states of the
operation,"
as
Dr.
Triantafyllou's
Rebuttal Invalidity Report of Mr.
68-4.
31
expert
Ayton at
report
13-14,
ECF
According to
Mr.
Ayton,
Figures
21
and 22
of
Van Ruymbeke
simply "show the results obtained by various adjustments to the
angular
position
adjusting
of
"handle
the
54
fin
to
beams."
the
rear,"
"has the
effect of bending the
the
causing
top,
handle 54
of
toy
to
the
the
concludes,
front
part
to
plunge."
rise."
toy
of
torso]
produced by said drive,
[a
single
construction."
The
explains
depicted
in
that
Figure
21,
Id.
Conversely,
Figure 22,
fin
3
moving
"has the
towards
effect
the
"Accordingly,"
bottom,
Mr.
Ayton
Figures 21 and 22 "do not depict flexing 'in response
[cyclical relative]
in
the
Id.
to the
not
as
He
front part of the fin 3 towards
"forward," as depicted in
bending
causing
the
Id.
motion [between the appendage and the
such that the entire appendage is
plane,]'
as
required
by
the
Court's
Id. at 14 (brackets and emphasis in original).
Court
acknowledges
Dr.
Triantafyllou's
"apparent
misunderstanding of the significance of Figures 21 and 22 of the
Van Ruymbeke reference."
No.
68.
Pis.'
Notwithstanding
Br. in Opp'n at 6,
such
Court determines that no genuine
issue of
regarding
discloses
flex"
could
whether
limitation
return
presented."
a
Van
of
Ruymbeke
Claim
verdict
Anderson,
31,
such
for
that
material
the
no
[Plaintiffs]
477 U.S. at 252.
10,
ECF
however,
misunderstanding,
7,
the
fact
exists
"configured
"fair-minded
on
the
to
jury
evidence
As discussed above, Van
Ruymbeke discloses "flexible appendage[s] ," which are controlled
32
by mechanisms allowing the
Ruymbeke at 1,
"oscillatory
2,
ECF No.
movement
of
reciprocating
pivotal
movements
rippling"
or
Defendant
must
figure to "move in the water."
points out
54-7.
the
Such mechanisms - namely,
levers
movement,"
19a,
which
of
its
in
the
19b"
-
reply brief,
Id.
"[f]ins
flapping
at
4.
that
ECF No.
70.
As
'ripple'
necessarily flex into a non-planar configuration."
Reply Br. at 9,
the
"communicates
"generat[es]
appendages.
Van
Def.'s
Van Ruymbeke also provides that the
"swimming toy according to the invention can move in the water,
perfectly
imitating
Rays
other
and
added),
which
report,
the
fish
Dr.
swimming mode
species
of
of
certain
raj ids,"
Triantafyllou
id.
describes
fish
at
in
2
such
as
(emphasis
his
invalidity
see Invalidity Report of Dr. Triantafyllou at 3,
ECF No.
(observing that "(f]ish and other marine animals flex their
54-3
body and use fins for propulsion and maneuvering" and "use their
tail,
flexing
undulatory
or
rigid
motion
to
body,
and
produce
their
other
propulsive
fins
force"
in
an
(emphasis
added)).
Furthermore,
expert,
Mr. Ayton,
appendage,"
the
at
Dep.
of
his
June
13,
conceded that
Mr.
Ayton
"appendage in Van Ruymbeke
at
2014
(1)
deposition,
"Van Ruymbeke discloses an
362:10-11,
own report," id. at 365:6-7,
Van
contains
a
ECF No.
is configured to
[Mr. Ayton's]
Ruymbeke
drive,"
33
Plaintiffs'
which
(3)
70-1,
flex,
(2)
based on
"the invention in
"discloses
a
relative
motion," id. at 365:20-25,
to
(5)
in
id.
a
drive
producing
(4)
the appendage flexes "in response
relative
motion,"
id.
at
366:18-21,
the appendage "flexes into a non-planar configuration . . .
response
at
to
that
367:18:19,
construction of
finds
that Van
bend,
in
drive
that
368:1-2.
the
produces
Thus,
the
relative motion,"
in the context of the Court's
"configured to
flex"
limitation,
Ruymbeke discloses an appendage,
response
to
the
motion
produced
by
32.
genuine
issue
of
material
limitations
contained
patent,
Court
Claim
because
Accordingly,
the
31
on
the
in
fact
Court
exists
independent
GRANTS
ground
the
summary
said
drive,
as
Claim
31
ii.
to
Claim
to
is
that
any
31
such
ECF No. 38
determines
judgment
that
the Court
"configured to
that the entire appendage is not in a single plane."
at
and
of
of
the
Defendant
anticipated
no
the
'785
as
by
to
Van
Claim 32
Ruymbeke.
Dependent Claim 32 of the
of
[C]laim
31,
wherein
said
'785 patent claims "[t]he figure
torso
has
an
outer
outer surface of the torso defines the cavity."
11:34-35,
ECF
No.
40-1.
that "[t]he body (1)
(2)
made
from
a
The
abstract
of
Van
1,
ECF
No.
flexible
54-7.
the
'785 patent at
Ruymbeke
asserts
of said toy includes an outer shell or skin
material
. . . and
skeleton . . . housed in said shell or skin
at
surface,
Van
Ruymbeke
34
further
a
(2)."
rigid
internal
Van Ruymbeke
explains
that
the
"swimming
elongate
toy
body,"
accommodated
material,"
not
according
in
id.
dispute,
Ruymbeke.
id.
the
2,
at
the
at
to
which
casing
4.
that
or
Thus,
2
and
the Court
Claim
because
comprises
"further
skin
dependent
Accordingly,
invention
the
comprises
executed
finds,
32
is
a
in
hollow
a
frame
a
rigid
and Plaintiffs do
anticipated
Court
by
determines
Van
that
no
genuine issue of material fact exists as to Claim 32 of the '785
patent,
Claim
the
32
on
Court
the
GRANTS
summary
ground
that
judgment
Claim
32
to
is
Defendant
anticipated
as
by
to
Van
Ruymbeke.
iii.
Claim 33
Dependent Claim 33 of the '785 patent claims:
[preamble]
The figure of claim 31, wherein said torso defines an
outer surface,
[the "appendage" limitation]
said appendage includes:
a
first
end
coupled
to
surface of said torso;
said
torso
along
the
outer
and
a second end,
[the "tapered cross-section" limitation]
said appendage having a tapered cross-section, with
the first end having a greater thickness than the
second end and
the
second
end
flexibility than the first end.
'785 patent at 12:1-10,
Plaintiffs,
through
Mr.
having
a
ECF No.
40-1.
Defendant
Ayton,
"raise
no
greater
asserts that
genuine
would contradict Dr. Triantafyllou's conclusion that
35
issue
that
[Claim 33]
is
anticipated
Summ.
J.
at
by
21,
Van
ECF
Ruymbeke."
No.
54.
Mr.
asserting that "Van Ruymbeke does
end]
of
the
fin
thickness/reduced
fin."
Rebuttal
[as
Def.'s
disclosed
Br.
Ayton
Claim
flexibility compared
Mot.
contends
not disclose
by
Supp.
that
33]
to
otherwise,
the
has
a
[first
greater
a second end
Invalidity Report of Mr.
Ayton at
for
14,
of the
ECF No.
68-4.
the preamble
The
elongate
figure
form
of Van
having
flexible material."
agrees,
and
Ruymbeke
an
outer
"comprises
skin
or
a hollow body
casing
Van Ruymbeke at 3, ECF No.
Plaintiffs
do
not
dispute,
2
made
54-7.
that
1 of
of
a
The Court
Van
Ruymbeke
anticipates the preamble of Claim 33.
the "appendage" limitation
The fins of the Van Ruymbeke figure have two ends that are
attached
to
(reproduced
the
torso.
below)
Van
Ruymbeke
illustrates,
that
explains,
the
"fins
generally triangular shape and are attached to
all
or
almost
all
of
their
internal
Ruymbeke at 3, ECF No. 54-7.
36
side
and
the
length
Figure
affect
2
a
casing 2 in
3a."
Van
Van Ruymbeke also explains that the fins have a "front edge
[that]
is
provided
shaped
to
be
with
fitted
through openings 26
at
2, 4.
of
the
fin
into
a
beam
(4),"
housing
reserved in
the
which
foot"
or
front
is
and
of
Van
Ruymbeke
appendage
that
limitation of
Van
Claim
corresponds
the Court agrees,
Ruymbeke
"nested
to
and
anticipates
or
"pass[es]
envelope 2."
Although the parties do not agree as
described in Claim 33,
dispute,
a
(3b)
Id.
to which portion
the
"first
Plaintiffs do
the
end"
not
"appendage"
33.
the "tapered cross-section" limitation
Dr.
"tapered
Triantafyllou
asserts
cross-section"
is more
flexible."
at 17, ECF No. 54-3.
of
Van
Ruymbeke,
Ruymbeke
because
discloses
"Van
Invalidity Report
of
Dr.
which
"has
37
a
front
larger
second
Triantafyllou
According to Dr. Triantafyllou,
to "[t]he
the "first
edge of the
than
the
Ruymbeke
first end is thicker and the
end" of Claim 33 corresponds
3b"
Van
limitation
explicitly teaches that the
end
that
the
fins
posterior
portion
remaining
Figures
4,
a degree
4A,
of
54-7.
said
4B, " and
is
flexibility
third portion
No.
third
of
The
said
fin
thickness,
"provided with
significantly
flexible
relevant
of
Van
Van
can
be
seen
in
a certain rigidity or
lower
fins."
figures
as
than
the
Ruymbeke
Ruymbeke
are
remaining
at
3,
ECF
reproduced
below.
3b-^^a._^.(,
3b.
3e-*
3e-
FiqJfA
Fjq.4
Mr.
Ayton
interpretation,
"tapered
referred
disagrees
arguing
that
cross-section"
to
in
the
with
Fiq_4B
Dr.
Triantafyllou's
the "first end" referred to
limitation
"appendage"
is
the
limitation
-
same
"the
in the
"first
end"
internal
side
length 3a that is connected to the torso of the ray."
Rebuttal
Invalidity Report
Assuming
such
interpretation
Ruymbeke
greater
of
of
the
does
not
Mr.
of
at
Claim
disclose
thickness/reduced
fin."
Ayton
14,
33,
that
ECF No.
Mr.
this
flexibility
68-4.
Ayton
portion
compared
contends,
of
to
the
a
"Van
fin has
second
a
end
Id.
Regardless
of
which
portion
38
of
the
Van
Ruymbeke
figure
corresponds to the first end of Claim 33 of the '785 patent,
Court
finds
that
Van
Ruymbeke
anticipates
section" limitation of Claim 33.
the
"tapered
the
cross-
With respect to the "first end
having a greater thickness than the second end," as described in
Claim
33,
'785
Triantafyllou's
patent
at
12:8,
ECF
No.
40-1,
"first
interpretation,
where
the
delineated by "[t]he front edge
of the
fins
expressly discloses
3b,"
under
Figures
Figures
21
4,
end"
Van
is
Ruymbeke
that the front edge "has a larger than the
posterior portion remaining third said fin thickness,
seen in
Dr.
4A,
and 22,
4B."
Van Ruymbeke at
reproduced below,
as
can be
3, ECF No.
illustrate that
54-7.
the front
edge of the fin has a "greater thickness" than the rear portion
of the fin.
'785 patent at 12:8, ECF No. 40-1.
s=^Ir
Fio.22
fiq.21
Under Mr.
Ayton's
interpretation,
where the "first end"
is
delineated by "the internal side length 3a that is connected to
the torso of the ray,"
No.
68-4,
Figure 23
Rebuttal
Report
of Van Ruymbeke,
of Mr.
Ayton at
reproduced below,
14,
ECF
clearly
illustrates that the portion of the fin located at the torso has
a "greater thickness" than the outer portion of the fin.
patent at 12:8, ECF No. 40-1.
39
'785
Fiq.23
With
respect
to
the
"second
end
having
a
greater
flexibility than the first end," as described in Claim 33, id.
at
12:9-10,
Ruymbeke
under
expressly
Dr.
Triantafyllou's
discloses
that
the
interpretation,
front
edge
"is
Van
provided
with a certain rigidity or a degree of flexibility significantly
lower than the remaining third portion
Van
Ruymbeke
at
interpretation,
is
disclosed
ECF
No.
54-7.
said flexible
Assuming
Mr.
fins."
Ayton's
although the entire "outer surface of the fins 3
as
"triangular fins
attachment,
3,
of
being
are
formed
from
bounded on two
a
flexible
68-4
the
of their sides by a rigid
limiting their ability to flex."
Mr. Ayton at 13, ECF No.
material,"
Rebuttal Report of
(emphasis added).
Consequently,
such limited flexibility where the appendage is attached at the
torso,
fins,
combined with the flexibility of the material forming the
suggests
that
the
outer
portion
of
the
fins
greater flexibility" than the portion of the fin at
'785
patent
at
12:9-10,
ECF
No.
40-1.
Thus,
the
a
torso.
regardless
whether the "first end" described in Claim 33 of the
40
"hav[e]
of
'785 patent
corresponds
to
Triantafyllou
Claim
judgment
"internal
Claim
finds that
33
is
fact exists as
33
to
or
the
of
the
fins
side
length
the
3b,"
as
Dr.
3a," as Mr.
"tapered cross-section"
anticipated
by
Van
Ruymbeke.
because the Court determines that no genuine issue
of material
in
edge
the Court
of
Accordingly,
"front
opines,
Ayton asserts,
limitation
the
of
the
Defendant
to
'785
as
any of the
patent,
limitations contained
the
to Claim 33
Court
on
the
GRANTS
ground
summary
that
it
is
anticipated by Van Ruymbeke.
iv.
Claim 34
Claim 34 of the '785 patent discloses:
The figure of claim 31, wherein the cyclical relative
motion is a reciprocating pivotal motion, when the
drive produces the reciprocating pivotal motion, said
appendage flexes in a direction opposite to that of
the motion of said appendage during at least a portion
of the reciprocating pivotal motion, the flex of the
appendage and the reciprocating pivotal motion cause
said appendage to have a wave-like, whipping motion.
'785 patent at 12:11-18,
ECF No. 40-1.
Mr.
Claim
Ayton's
report
"focuses
. . . has
Def.'s
analysis
no
Br.
Plaintiffs
on
real
Supp.
advance
of
[the Van
relevance
Mot.
no
for
34
in
Ruymbeke]
to
any
asserts
that
"Van
Ruymbeke
41
rebuttal
in
invalidity
steering mechanism that
J.
regarding Claim 34, but point to Mr.
which
his
limitation of
Summ.
argument
Defendant asserts that
at
their
22,
[C]laim 34."
ECF
No.
responsive
54.
brief
Ayton's invalidity report,
fails
to
disclose
each
and
every
limitation
described
of
above
Invalidity
addition,
in
Report
Mr.
34]
connection
of
Mr.
Ruymbeke's
states
of
the
for
at
Dr.
whipping
during
14,
at
contended in his invalidity report,
18,
this motion causes
ECF No.
the
No.
Triantafyllou's
id.
54-3
appendage
the
reasons
31."
ECF
Rebuttal
68-4.
In
interpretation
as depicting "sequential
operation,"
motion,"
least
Claim
"Figures 21 and 22"
device
Triantafyllou at
at
with
Ayton
Ayton disputes
of Van
'wave-like,
[Claim
thus
16,
as
"disclos[ing]
Dr.
a
Triantafyllou
see Invalidity Report of Dr.
("As
to
shown
have
in
Figures
21-22,
a
wave-like,
whipping
"actuating
mechanism"
that
motion.").
Van
Ruymbeke
"driven
by
a
discloses
drive
device
an
housed
providing the driving force."
The
actuating
mechanism
"is
in
[the]
hollow
body
Van Ruymbeke at 2, ECF No.
used
to
communicate
the
is
and
54-7.
same
reciprocating pivoting [of] the rocker arm 19a, 19b," as seen in
Figure
1,
reproduced
Ruymbeke,
the
"[i]t
levers
19a,
is
below.
Id.
at
understood that
the
4.
According
to
oscillatory movement
Van
of
19b communicates reciprocating pivotal movement
of the beams fin 4, in a plane perpendicular to the longitudinal
axis
of
the
toy,
the
movements or rippling."
alternative
Id.
42
pivot
generating
flapping
At his June 13,
"flapping"
described
Dep. Tr. of Mr.
consider,
Van
Ruymbeke
as
Thus,
"cyclical
motion."
Id.
Ruymbeke
an
relative
discloses
at
Ayton agreed that the
is
"a
pivotal
ECF No.
70-1.
Mr.
engineer,
Ayton
motion
pivotal
cyclical
conceded,
[that]
387:17-24.
or
a
Mr.
is
a
a
and
"what
motion."
Ruymbeke
drive
that
"agree[d]
that
the
[he]
Id.
discloses
reciprocating
Ayton also
exhibits
motion"
Van
motion."
Mr. Ayton
"the flapping back and forth" is
387:11-14.
reciprocating
in
Mr.
Ayton at 386:25-387:7,
also admitted that
would
2014 deposition,
a
pivotal
that Van
produces
Van
at
a
Ruymbeke
"appendage flexes in a direction opposite to that of the motion
of said appendage during at least a portion of the reciprocating
pivotal
motion."
Id.
at
388:5-17.
Mr.
Ayton
also
"agree[d]
that that flexing of the appendage and the reciprocating pivotal
motion
caused
said
appendage
to
43
have
a
wave-like
whipping
motion."
IcL_ at 389:21-25.
Mr.
respect
Ayton's
to
the
only
phrase
like whipping motion,"
"cause []
dispute
"cause []
which
regarding
Claim
said appendage
the
Court
34
to
was
have
previously
with
a
wave
construed as
said appendage to move in a whipping fashion such that
a portion of the appendage lags behind the movement of
another
portion of the appendage that is closer to the torso."
Id. at
390:17-20,
discloses
391:14-19.
"waves
Mr.
[that]
are
Ayton
asserted
operated
rather than the lateral fashion,
in
"flapping"
in
whipping,"
as
Van
hearing,
Ruymbeke
described
in
was
Van
Ruymbeke
longitudinal
fashion
which would be the case if they
were to be coming closer to the torso."
At the July 15, 2014
a
that
Plaintiffs conceded that the
not
Claim
Id. at 391:20-23.
necessarily
34,
but
"different
asserted
that
than
"the
anchoring of the wing along the length changes you know how it,
how it flaps."
Plaintiff explained that the Van Ruymbeke fin is
"not a tail that's anchored at
flex back and forth,
one point and allowed to
it's a wing anchored along an entire length
with a rigid member across the side,
is flapped."
the
freely
However,
and only the
front portion
Plaintiffs also conceded that the tail in
'785 patent whips "because it's flexible," and Van Ruymbeke
clearly
discloses
that
the
Van
Ruymbeke
flexible material," Van Ruymbeke at
2,
figure
ECF No.
is
54-7.
"made
of
a
Moreover,
Van Ruymbeke expressly discloses that the swimming toy "ripples"
44
its fins
"like the
fish of the
family rajids like rays," id. at
1,
"perfectly imitating the swimming mode
as
Rays
and other
added).
fish
species
of
rajids,"
certain fish such
id.
at
2
(emphasis
Thus, the Court finds that Claim 34 is anticipated by
Van Ruymbeke.
genuine
Accordingly,
issue
of
because the Court determines that no
material
fact
exists
limitations contained in Claim 34 of the
GRANTS
of
summary
judgment
to
Defendant
as
to
any
'785 patent,
as
to
Claim
of
the
the Court
34
on
the
ground that it is anticipated by Van Ruymbeke.
b.
Obviousness over Claims
Curiously,
neither
Defendant
nor
35 and 38
Plaintiffs
included
their briefs any discussion of the Graham factors,
Court's
Graham
obviousness
factors."
inquiry
Siemens
Gobain Ceramics
383
Med.
& Plastics,
(citing Graham,
"requires
U.S.
Solutions
Inc.,
at
analysis
although the
under
17-18).
USA,
(Fed.
the
Inc.
F.3d 1269
637
Although the
in
four
v.
Saint-
Cir.
2011)
Court
is
not
required to scour the record in search of evidence [relevant to]
a motion for summary judgment," Ritchie v. Glidden Co.,
713,
its
723
(7th
analysis
evidence
United
Cir.
of
2001)),
the
the
Court
States
v.
the
Graham
can
Court
factors,
will
Dunkel,
("Judges are not like pigs,
927
F.2d
nonetheless
considering
readily ascertain
955,
242 F.3d
from the
956
all
conduct
relevant
record.
(7th
Cir.
Cf.
1991)
hunting for truffles buried in" the
record.).
45
i.
Claim
claim
said
35
31,
of
wherein
appendage
12:19-20,
the
'785
said
patent
torso
simulates
ECF No.
Claim 35
a
40-1.
discloses
simulates
tail
of
Defendant
a
a
"[t]he
tcrso
of
fish."
asserts
a
'785
not
dispute
that
Van
Ruymbeke
simulates a torso of a fish."
Triantafyllou at
19,
ECF No.
discloses
Id.;
54-3
of
fish,
and
patent
a
The experts
"torso
[that]
see Invalidity Report of Dr.
(asserting that "Van Ruymbeke
teaches a figure where the torso simulates a fish torso");
Tr.
of Mr.
that
"the
Ayton at
invention
"that
the
Van
Thus,
the
sole
415:7-8,
in
Van
Ruymbeke
obviousness
415:13-14,
Ruymbeke
torso
ECF No.
to
70-1
. . . depicts
simulates
issue
at
that dependent Claim
35 is obvious in light of the prior art references.4
do
figure
torso
of
(agreeing
fish"
and
a
fish") .
determined with
be
a
a
Dep.
respect
to Van Ruymbeke and Claim 35 is whether the appendage claimed in
Claim 35, simulating the tail of a fish,
to
a person of
invention,
based
ordinary
upon
skill
the
in
fins
the
would have been obvious
art,
described
4 In two headings of its initial brief,
at
and
the
time
of
the
depicted
in
Van
Defendant also asserts
that "Independent Claim 31 is Anticipated or Obvious In Light of the
Prior Art," and that "Dependent Claims 32-35 and 38 are Anticipated or
Obvious In Light of the Prior Art." Def.'s Br. Supp. Mot. for Summ. J.
at 15, 20, ECF No. 54 (emphasis added).
However, Defendant fails to
present any obviousness argument regarding Claims 31-34, presumably
relying on Dr. Triantafyllou's conclusions in his expert report, which
asserts only that Claims 35 and 38 are obvious over prior art.
See
Invalidity Report of Dr. Triantafyllou at 2, 10, 19-20, 28, 37, ECF
No. 54-3.
At the July 15, 2014 hearing, Plaintiffs represented that
they "are not going to dispute the obviousness on Claim 38 at trial."
46
Ruymbeke or upon a combination of the prior art references.
Dr.
Triantafyllou asserts
"that
it
would be obvious
to one
of ordinary skill in the art that the flexible appendages taught
[by]
Van Ruymbeke could also be
Invalidity Report of Dr.
Triantafyllou
understand
asserts
that
the
used
[as]
Triantafyllou at
that
drive
"one
of
mechanism
the tail of
19.
fish."
Specifically,
ordinary
of
a
Van
skill
Ruymbeke
Dr.
would
could
be
readily altered such that the appendage would function as a tail
rather
than
arguing
side
that,
fin."
because
Id.
at
"[t]he
19-20.
Mr.
flapping
side
Ayton
fins
disagrees,
of
the
Van
Ruymbeke device operate in a fundamentally different manner than
the tail of a fish," "[i]t would not have been obvious to apply
the
teachings
of
Van
simulates a fish tail."
at 15,
ECF No.
Ruymbeke
to
create
an
appendage
Rebuttal Invalidity Report of Mr.
that
Ayton
68-4.
Scope and Content of the Prior Art
The scope of prior art includes "references that are within
the field of the inventor's endeavor," as
[that]
a
person
consulted
problem
of
ordinary
. . . and applied
that
the
...
inventor
1068,
that Van
1071
Ruymbeke
(Fed.
Cir.
47
reasonably
have
attempting
to
solve."
Hantscho Commercial Prods.,
1994).
is within the
would
in seeking a solution to the
was
Heidelberger Druckmaschinen AG v.
F.3d
skill
well as "analogous art
Plaintiffs
scope
of
do
prior art
not
21
dispute
within the
meaning of 35 U.S.C.
§ 102,
68
(acknowledging
that
of
references
his
patent");
Van
Final
Ruymbeke
dispute
in
the
see Pis.'
Defendant's
report
Br.
in Opp'n at 2, ECF No.
expert
that
are
"identified
prior
Pretrial Order SI 16, ECF No.
as
a
prior
content
of
art
87
reference) .
Van
Ruymbeke,
art
to
number
the
'785
(stipulating to
Nor
which
a
do
Plaintiffs
the
Court
has
discussed at length with respect to anticipation of the asserted
claims
by
Van
Ruymbeke,
although
Mr.
Ayton
vigorously disputes
some of Dr. Triantafyllou's conclusions drawn from Van Ruymbeke.
Thus,
the Court
finds
no
genuine dispute
of
material
fact with
respect to the first Graham factor.
Level of Ordinary Skill in the Art
The
level
is
second
of
factor
ordinary skill
conducted
Relevant
the art
Graham
from
factors
include:
the
in
in
requires
the
art,
perspective
determining
"(1)
a
as
of
the
a
(5)
of
(4)
sophistication of
active
Apotex,
Envtl.
Cir.
workers
Inc.,
Designs,
501
in
of
of
the
inquiry
such
skill.
ordinary skill
level of the inventor;
(3)
in
(2)
prior art solutions
rapidity with which innovations are made;
the
technology;
the
field."
F.3d
Ltd.
person
level
the educational
of
the obviousness
type of problems encountered in the art;
to those problems;
consideration
v.
1254,
Daiichi
1256
Union Oil
1983)).
48
and
(Fed.
Co.,
713
(6)
educational
Sankyo
Cir.
F.2d
Co.,
2007)
693,
level
Ltd.
v.
(quoting
696
(Fed.
Although
the
parties
disagree
as
to
the
proper
level
of
ordinary skill in the art, neither party presents any discussion
regarding
such
opinions
of
level
the
of
experts
skill,
in
presumably
their
relying
invalidity
on
the
reports.
Dr.
Triantafyllou asserts that the proper level of ordinary skill in
the
art
is
possessed
Engineering or
by
Mechanical
a
person
"in
the
Engineering with a
field
4-year
Degree or equivalent industrial experience."
of Dr. Triantafyllou at 2, ECF No. 54-3.
the
proper
years'
of
ordinary
skill
Ocean
Bachelor's
Invalidity Report
Mr. Ayton asserts that
in
the
art
is
"at
least
2
experience in designing mechanical toys" or "a Bachelor's
degree
in
Rebuttal
Neither
level
of
Mechanical
Engineering
Invalidity Report of Mr.
expert
provides
the
basis
or
similar
Ayton at 3,
for
his
discipline."
ECF No.
conclusion,
68-4.5
but
Mr.
Ayton proffers that his "conclusions in this report are the same
regardless of which party's description of the level of ordinary
skill in the art" the Court employs.
5 At his
deposition,
Mr.
Ayton
Id. at 4.6
indicated
At the July 15,
that,
although
his
opinion in his report indicates two years of experience in designing
mechanical toys or a bachelor's degree, "that probably should have
said 'in addition to.'"
Dep. Tr. of Ian Ayton at 225:25-226:5, ECF
No. 70-1.
However, Mr. Ayton declined to change his opinion as to the
level of ordinary skill in the art because his answers during the
deposition did not "reveal[]
what
[he]
really feels
about this."
Id.
at 227:3-4.
6 Dr.
Triantafyllou
asserts
his opinion regarding
the
proper
level of ordinary skill in the art with no discussion whatsoever.
See
Invalidity Report of Dr. Triantafyllou at 2, ECF No. 54-3.
Plaintiffs
identify six "[f]actors that can be considered in determining the
49
2014
summary judgment motion
hearing,
Defendant
asserted
that,
although its position was that it would require "a person of at
least
four
having
years
that
experience in
degree,
to
be
terms
able
of
to
mechanical
determine
engineering
these
issues,
particularly infringement," the Court "could still resolve
invalidity issues]
it
appears
that
under
the
remain the same,
[Plaintiffs']
obviousness
regardless of
the Court adopts,
standard."
opinions
of
the
which level of
motion,
inferences"
by
the art
the
light
However,
drawing
most
favorable
477 U.S.
at 255,
to
the
for the purposes of the instant summary judgment
that the level of
advanced
in
the non-moving party, Anderson,
Court assumes,
would
the Court finds no genuine dispute of material
justifiable
Plaintiffs,
because
experts
skill in
fact with respect to the second Graham factor.
"all
Thus,
(the
Mr.
Ayton
ordinary skill in the art is the one
-
"at
least
2
years'
experience
in
designing mechanical toys" or "a Bachelor's degree in Mechanical
Engineering or
of
Mr.
Ayton
Cleveland
similar discipline,"
at
Golf
3,
Co.,
ECF
242
No.
68-4.
F.3d
1376,
Rebuttal
See
Invalidity Report
Karsten
1384-85
Mfg.
(Fed.
Corp.
Cir.
v.
2001)
("The issue of obviousness may be decided on motion for summary
judgment when the
the movant must
underlying facts are not in dispute,
prevail
even
if disputed
facts
and
or when
inferences
level of ordinary skill in the art," Rebuttal Invalidity Report of Mr.
Ayton at 4, ECF No. 68-4, but presents no discussion regarding any of
those
factors.
50
therefrom are resolved in favor of the non-movant.").
Differences between Claimed Invention and Van Ruymbeke
As
discussed
anticipated
discloses
by
all
above,
Van
of
independent
Ruymbeke.
the
In
elements
other
claimed
underlying dependent Claim 35.
Claim
31
words,
in
the
Furthermore,
the
only
respect
'785 patent at
difference
to
Claim 35
relevant
is
that
to
12:19-20,
the
invalid
Van
the
claim
parties do not
[that]
ECF No.
simulates a
40-1.
obviousness
Thus,
inquiry
the invention claimed
discloses an appendage that "simulates a tail
as
Ruymbeke
independent
dispute that Van Ruymbeke discloses a "torso
torso of a fish."
is
of
with
in Claim 35
a fish,"
id.,
while the invention claimed in Van Ruymbeke discloses appendages
that simulate the "side fins" of a fish,
No.
Van Ruymbeke at
1, ECF
54-7.
Objective Indicia of Nonobviousness
Plaintiffs
brief
regarding
indicated
they
have
at
"intend
success
of
presented
the
fourth
the
July
15,
at
trial
to
[their]
considerations."
Thus,
entitled
the
Court
finds
Graham
2014
product,"
Plaintiffs
to
in
of
"would
represent,
responsive
although
judgment
evidence
which
their
factor,
summary
did
go
hearing
the
to
however,
they
that
commercial
secondary
that
they
put forth the analysis to show that
summary
no
evidence
present
"don't think [Defendant has]
they're
no
judgment
of
obviousness."
genuine dispute of material
51
Id.
fact with
respect to the fourth Graham factor.
Evaluation of Graham Factors
The
Graham
factors
evidence that Claim 35
discussed
content
above,
of Van
the
establish
is
do
pectoral
Ruymbeke at
beams
fin
fins
3,
4]
of
[the]
ECF No.
dispute
fish
order
[of]
appendage
that,
the
that
Ruymbeke
simulates
using the "logic,
the
rajids
movements
said toy
does
not
tail
judgment,
person of ordinary skill,"
1329,
the
scope
like
in
of
or
rays."
Van
fish
Mr.
Ayton
of a
observed,
is
disclose
the
Court
both
fin,"
the
id.
fins
an
finds
587
at
of
F.3d at
to apply the teachings
Indeed,
as Mr. Ayton
the ray depicted in Van
fish has fins,"
a
the
"perfectly
Ruymbeke "is a fish," Dep. Tr. of Mr. Ayton at 415:6-11,
tail
[of the
Id. at 2, 4.
Perfect Web Techs.,
agreed at his June 13, 2014 deposition,
"the
that
like
water,"
fish,
of Van Ruymbeke to the tail fin of a fish.
Ruymbeke
the
and common sense available to
such person would find it obvious
70-1, "the Van
or
rippling,"
expressly
a
As
large,
"[T]he alternative pivot
flapping
propelling
Van
convincing
a "swimming toy"
imitating the swimming mode of certain fish."
Although
and
lateral fins 3 soft,
54-7.
generat[es]
"fins providing
not
which discloses
is "formed integrally with two
the
clear
rendered obvious by Van Ruymbeke.
parties
Ruymbeke,
by
id_;_ at 415:18-19,
416:17-19.
a
ECF No.
ray
and
and
Moreover,
the
tail
of
as
a
fish "propel their respective creature . . . through the water,"
52
although the "tail of a fish . . . [has]
half
a
cycle
of
multiple cycles
at
of
rolling
whereas,
there
are
. . .
rolling motion associated with a fin."
Id.
420:3-421:16.
Alternatively,
of Van Ruymbeke
Ruymbeke
even if Claim 35 were not obvious in light
alone,
F.3d
1396,
"knowledge
that
(discussed in greater
See OddzOn Prods., Inc. v. Just Toys, Inc.,
1402
is
(Fed.
Cir.
available,
1997)
(defining
including
what
prior
would
art
as
be obvious
at a given time, to a person of ordinary skill in the
art" (emphasis added)
Johnson,
is certainly rendered obvious by Van
which the parties agree is a prior art reference
to the '785 patent.
from it,
it
in light of the Yamamoto patent
detail below),
122
motion;
[o]nly sort of like one
(quoting Kimberly-Clark Corp. v. Johnson &
745 F.2d 1437, 1453 (Fed. Cir. 1984)).
Yamamoto describes
a "submersible vehicle
The abstract of
. . . having swinging
wings," which "swing in a flexible manner like the tail fin of a
fish,
thereby
producing
a
desired
propelling
performing a steering operation."
Yamamoto at 1,
(emphasis
Yamamoto,
added).
Figure
2
of
illustrates such "swinging wings."
FIG. 2
53
Id.
force
and
ECF No.
54-8
reproduced
below,
Yamamoto also explains that the swinging wings can be "arranged
on the side of the main body,
of
a
fish
and
thus
permit[ting]
underwater position."
6
of
Yamamoto,
. . . work[ing]
Id.
at
reproduced
the
6:58-61
below,
like pectoral fins
vehicle
to
change
(emphasis added).
illustrates
this
in
Figure
alternative
embodiment.
28'
25
FIG. 6
Thus,
the
Court
finds that "a
person of
ordinary skill
the art," in possession of the "knowledge that
from Yamamoto at the time of the
F.3d at
1402,
would have
figure
could
be
"swing
in
flexible
a
The
Court
also
available"
OddzOn Prods.,
122
found it obvious that the Van Ruymbeke
modified
Yamamoto at 1, ECF No.
'785 patent,
[was]
in
to
display
manner
like
an
the
appendage
tail
fin
that
of
a
would
fish,"
54-8.
determines
that
Claim
35
would
have
been
rendered obvious by Van Ruymbeke in light of the Hirata article
(discussed in greater detail below),
a prior
art
discussing
reference
the
to
the
"turning modes"
'785
of
patent.
fish,
turn skillfully using not only tail
54
which the parties agree is
Hirata,
notes
that
an
article
"real
fish
fin but also pectoral fins
or ventral fins."
Hirata at
1,
ECF No.
54-12.
finds that "a person of ordinary skill
the
Thus,
in the art,"
"knowledge that is available" in Hirata at
'785 patent,
OddzOn
Prods.,
122
F.3d
at
the
1402,
the Court
possessing
time of
would have
the
found
it obvious that the Van Ruymbeke figure could be modified to be
maneuvered by "pectoral fins."
Accordingly,
scope of the
because
patent
Hirata at 1, ECF No.
"the
claim,
content
and the
of
level
the art are not in material dispute,
the
of
54-12.
prior
ordinary skill
(quoting
KSR
Int'l,
550
U.S.
the
in
and the obviousness of the
claim is apparent in light of these factors," Wyers,
1239
art,
at
427),
the
616 F.3d at
Court
GRANTS
summary judgment to Defendant as to Claim 35 on the ground that
it
is
rendered
obvious
by
Van
Ruymbeke
or,
alternatively,
Ruymbeke in light of Yamamoto or, alternatively,
Van
Van Ruymbeke in
light of Hirata.
ii.
Claim
claim 31,
38
of
wherein the
neutrally buoyant."
Triantafyllou
time the
the
'785
Claim 38
patent
figure
discloses
is configured to
'785 patent at 12:27-28,
asserted
in
'785 patent was
his
invalidity
filed,
Dr. Triantafyllou at 20, ECF No.
that
even
the
'785
patent
be
figure
substantially
ECF No. 40-1.
report
of
that,
at
Dr.
the
"it was well known that aquatic
figures could be made neutrally buoyant."
out
"[t]he
54-3.
itself
55
Invalidity Report of
Dr. Triantafyllou points
"provides
no
teaching
of
how
the
toy
fish
would
be
configured
to
be
'substantially
neutrally buoyant,'" because "[o]ne of ordinary skill in the art
would have recognized the advantages of making the figure of Van
Ruymbeke neutrally buoyant and would have readily understood how
to do
so."
The
Id.
at
Court
21.
now
conducts
an
obviousness
Claim 38, considering the evidence,
four Graham factors.
discussed above,
there
with respect to
skill
is
no
as it must,
Solutions,
genuine
the
637 F.3d 1269.
of material
Regarding the second Graham factor,
art
advanced
by
As
fact
the scope and content
for the purposes of this motion,
in
regarding
in light of the
dispute
the first Graham factor,
of the prior art.
assumes,
Siemens Med.
inquiry
the Court
the level of ordinary
Plaintiffs
through
Mr.
Ayton.
Considering the third Graham factor, the differences between the
claimed
invention
difference
relevant
and
the
to
the
Van
Ruymbeke
obviousness
figure,
inquiry
the
is
that
only
the
figure claimed in Claim 38 is "configured to be substantially
neutrally
buoyant,"
'785
patent
at
12:27-28,
ECF
No.
40-1,
whereas the Van Ruymbeke figure does not expressly disclose such
"substantially
above,
neutral []
Plaintiffs
nonobviousness,
Moreover,
buoyan[ce],"
present
no
id.
And,
objective
as
indicated
indicia
of
the fourth Graham factor.
neither
Plaintiffs
nor
Mr.
Ayton
evidence to rebut Dr. Triantafyllou's opinion and,
56
offer
any
at the
July
15,
2014
summary judgment
hearing,
Plaintiffs
represented
that
they would not dispute at trial the obviousness of Claim 38 with
respect
to
Van
Ruymbeke.
the prior art,
the
Accordingly,
scope of the
because
patent claim,
"the
content
of
and the level of
ordinary skill in the art are not in material dispute,
and the
obviousness of the claim is apparent in light of these factors,"
Wyers,
616
F.3d
at
1239
(quoting KSR
Int'l,
550
U.S.
at
427),
the Court GRANTS summary judgment to Defendant as to Claim 38 on
the ground that it is rendered obvious by Van Ruymbeke.
Although
the
Court
has
determined
that
Van
Ruymbeke
anticipates Claims 31, 32, 33, and 34, that Claim 35 is rendered
obvious
Hirata,
by
Van
Ruymbeke,
alone
or
in
light
of
Yamamoto
or
and that Claim 38 is rendered obvious by Van Ruymbeke,
the Court will nonetheless briefly address whether the remaining
prior art references anticipate any of the asserted claims,
in
order to provide a complete analysis to the parties, as well as
to
any
appellate
court
that
may
consider
this
case
in
the
Patent
No.
future.
2.
The
Yamamoto
6,089,178
to
Invalidity
Yamamoto
wings."
reference
Yamamoto
is
identified
(issued
Report
of
Dr.
pertains
to
a
Yamamoto
Yamamoto
at
July
18,
Triantafyllou
"submersible
1,
ECF
57
No.
as
"U.S.
2000)
at
21,
vehicle
54-8.
('Yamamoto')."
ECF
having
For
No.
54-3.
swinging
purposes
of
background, the Yamamoto abstract reads as follows:
A submersible vehicle is a type having swinging wings.
The vehicle is provided with a vehicle main body, a
plurality of swinging wings provided for the main body
and arranged in series, rotatable shafts located at
front
edges of
the
swinging wings,
respectively,
actuators for driving the shafts independently of one
another, and a wing controller for controlling the
actuators in such a manner that the wings enable to
swing in a flexible manner like the tail fin of a
fish, thereby producing a desired propelling force and
performing a steering operation.
Id.
According
to
Yamamoto's
specification,
"an
object
of
the
present invention is to provide a submersible vehicle which can
be
not
only
oscillating
moved
or
forward
swinging
move like the fins of a
or
the
backward
wings
fish."
in
Id.
at
but
such
also
a
steered
manner
that
by
they
1:26-30.
a. Anticipation of Claims 31-38
In
that,
its
motion
based on
Dr.
for
summary
judgment,
Triantafyllou's
Defendant
invalidity
anticipates all of the asserted claims of the
Def.'s Br.
Supp. Mot. for Summ. J.
Plaintiffs disagree,
report.
contends
report,
Yamamoto
'785 patent.
at 19-20, 21-23,
See
ECF No. 54.
pointing to Mr. Ayton's rebuttal invalidity
See Pis.' Br. in Opp'n at 11, ECF No. 68.
i. Claim 31 - the "configured to flex" limitation
The only limitation of Claim 31 disputed by the parties is
the "configured to flex" limitation.
at 352:2-6,
that
ECF No. 70-1.
Yamamoto discloses
the
However,
See Dep. Tr. of Mr.
Dr.
Triantafyllou's opinion
"configured to
58
Ayton
flex"
limitation of
Claim
31
appears
to
rely
upon
his
incorrect,
limitation,
reading of the "configured to flex"
discussed.
Court's
as previously
Dr. Triantafyllou asserts that,
claim
appendage
overly
be
construction,
'configured
this
in
"[a]ccording to the
element
bend,
to
broad,
requires
response
to
that
the
the
motion
produced by said drive, such that the entire appendage is not in
a
single
reproduced
plane.'"
Id.
below,
motion
causes
single
plane,"
Dr.
the
between
drive," Rebuttal
68-4
23.
id.,
the
Citing
Triantafyllou
appendage
motion produced by
motion
at
to
although
the
concludes
bend such
he
makes
Yamamoto drive
appendage
Figure
and
the
is
of
that
that
no
2
it
Yamamoto,
"the
is
assertion
a "cyclical
torso
produced
Invalidity Report of Mr. Ayton at 17,
(brackets and
emphasis
omitted).
Defendant
drive
not
that
in
a
the
relative
by
said
ECF No.
sums up
its
argument this way: "The drive moves; the tail flexes - it is as
simple as that."
Def.'s Reply Br. at 7, ECF No. 70.
FIG. 2
Plaintiffs
argue
that
Yamamoto
"configured to flex" limitation
forced flexing
of the tails
fails
to
disclose
the
found in Claim 31 because "the
[in Yamamoto]
does not occur in
response to the motion produced by the drive, as required by the
59
Court's claim construction."
68
(emphasis
in
PL's Br. in Opp'n at 11,
original).
Mr.
Ayton
explains
that
ECF No.
"[t]he
Yamamoto fish uses a segmented tail with two pivotally-connected
wings that are driven into a bent configuration by the operation
of two
separate actuators."
Ayton at
Mr.
18,
Ayton,
ECF No.
the
68-4
"Yamamoto
different manner than
Although
that
Yamamoto
Rebuttal
Invalidity Report of Mr.
(emphasis in original) .
fish
thus
operates
in
a
According to
fundamentally
of the claimed invention."
does
appear
to
disclose
Id.
some
of
the
elements of independent Claim 31, it is not clear that Yamamoto
discloses
Claim
31's
"configured
to
flex"
limitation.
With
respect to Figure 2, Yamamoto explains that "the tail portion of
the main
body"
houses
Yamamoto at 4:1-2,
3,
"two wings
ECF No.
reproduced below,
and lb of Figure 2.
which
54-8.
(swinging wings)
la and
lb."
Yamamoto also refers to Figure
clearly
depicts
the
"two wings"
la
Id.
200
In describing the motion of wings
Yamamoto explains
forward
end
of
that
the
la and
a "rotating shaft
swinging
wing
60
la,
so
lb of
Figure
2,
4 is arranged at the
as
to
oscillate
(or
swing) the swinging wing la. . . .
Another rotating shaft 5 is
arranged at the forward end of the swinging wing lb . . ., so as
to oscillate
In
other
(or swing)
words,
another."
the swinging wing lb."
"the
wings
Id. at 6:50-51.
la
and
However,
lb
Id.
at 4:3-10.
cooperate
with
one
Yamamoto does not appear to
describe any relative motion between the swinging wings and the
figure's torso,
nor does Dr. Triantafyllou assert that any such
relative
motion
Yamamoto.
See
1349
Cir.
the
(Fed.
prior
includes,
"inherent"
in
In re Cruciferous
art
the
is
2002)
("Under
necessarily
claimed
the
Sprout
the
in
it
jury could
return
presented."
the
Court
of
Anderson,
determines
for
477 U.S.
that
a
Thus,
at 252.
its
if
with,
or
(citations
no "fair-minded
on
the evidence
of
because
material
exists as to whether Yamamoto anticipates Claim 31 of
patent,
1343,
inherency,
Accordingly,
dispute
by
the Court cannot
[Plaintiffs]
genuine
F.3d
accordance
stage of the litigation that
a verdict
301
anticipates."
and internal quotation marks omitted)).
determine at this
described
Litig.,
principles
functions
limitations,
motion
the
fact
'785
Defendant is not entitled to summary judgment based on
argument
that
independent
Claim 31 of
the
'785 patent
is
anticipated by Yamamoto.
ii.
Because
the
Court
Claims
finds
that
32-38
genuine
issues
of
material
fact exist regarding whether independent Claim 31 is anticipated
61
by
Yamamoto,
Defendant
is
likewise
not
entitled
to
summary
judgment of invalidity with respect to dependent Claims 32,
34,
35, or 38 of the
'785 patent,
upon
independent
Claim
Data
Sys.,
730
that
Inc.,
dependent
31.
F.2d
claim
as
See
1440,
33,
those claims are dependent
RCA
Corp.
v.
Applied
Digital
1446
(Fed.
Cir.
1984)
(holding
"cannot
be
anticipated"
where
the
independent claim "is not anticipated").
3. Triantafyllou '750
The
Triantafyllou
Patent No.
1998)
5,740,750 to
('Triantafyllou
'750
reference
is
Triantafyllou et
'750)."
Triantafyllou at 28, ECF No.
identified
al.
Invalidity
54-3.
as
"U.S.
(issued April
Report
Triantafyllou
of
28,
Dr.
'750 pertains
to a "method and apparatus for reducing drag on a moving body."
Triantafyllou
'750
at
1,
ECF
No.
54-11.
For
purposes
background, the Triantafyllou '750 abstract reads as follows:
A method and apparatus for providing reduced drag on a
body moving in a direction D through a selected fluid
medium at a speed U which is normally sufficient to
cause
turbulence.
Reduced
drag
is
generally
accomplished by flexing at least the outer surface of
at least the rear third of the body to produce a wave
like motion of the body having a wavelength of between
0.5 and 2.0 times the length of the body, a reduced
frequency value Q between 0.1 and 0.5 and a time delay
between successive points on the body reaching peaks
for their flex motion which is directly proportional
to the distance Xi in the direction D of the point from
a
reference
point
on
the
body
and
inversely
proportional to the phase speed cp of the wave.
A
variety of techniques are described for achieving the
desired wave-like motion.
62
of
Triantafyllou
'750
at
1.
Triantafyllou
'750
asserts
that
the
claimed "invention reduces drag on a body moving through a fluid
medium
...
accomplished
in
by
much
a
the
swimming
lateral body flexing."
same
way
fish;
that
namely
this
by
objective
active
control
is
of
Id. at 2:32-36.
a. Anticipation of Claims 31-35
In its motion for summary judgment,
Triantafyllou
'750
anticipates Claims 31-35 of
See Def.'s Br. Supp.
Plaintiffs
Mr.
Ayton in his
Mot.
for Summ.
disagree,
54.
Defendant contends that
pointing
rebuttal
Opp'n at 11, ECF No.
J. at
to
the
19-20,
'785
patent.
21-23,
ECF No.
the opinions
invalidity report.
See
advanced by
Pis.'
Br.
in
68.
i. Claim 31 - the "configured to flex" limitation
The only limitation of Claim 31 disputed by the parties is
the "configured to flex" limitation.
at
352:2-6,
ECF
No.
70-1.
See Dep.
However,
as
Triantafyllou's conclusion hinges upon his
"configured
motion in
that
it
to
flex"
limitation,
[Triantafyllou
is not
Triantafyllou
with
of Mr. Ayton
Yamamoto,
Dr.
broad reading of the
asserting
that
"the
drive
'750] causes the appendage to bend such
in a single plane,"
'750's
Tr.
"drive
but
motion"
is
failing to
a
assert that
cyclical
relative
motion between the appendage and the torso of
the Triantafyllou
'750 figure.
1,
Triantafyllou
Dr. Triantafyllou cites Figures
'750,
reproduced
63
below,
in
6A, and 6B of
support
of
his
conclusion that Triantafyllou
flex"
'750 discloses the "configured to
limitation.
! A
s*>
Fig. 6B
Figure 1 of Triantafyllou '750 depicts a "body 20
[that]
is
divided into six sections or links L1-L6, plus a rigid front cone
section
A."
Id.
at
5:12-14.
"There
are
six
motors,
each of the joints Ji-Jt/" which "cause flexing of
Id. at 5:17-20.
to
impart
20."
one
for
[the] joints."
Specifically, the joints "are rotated or flexed
a wave-like motion
Id^ at 5:28-29.
view and a top view,
the embodiment of Fig.
to
the
rear portion
of
the
body
"Figs. 6A and 6B are a side perspective
respectively,
for a particular species of
5," which is a "simplified diagram for an
embodiment . . . generally of the type shown in Fig.
4:14-19.
64
1."
Id. at
Plaintiffs
dispute
that
Triantafyllou
'750
satisfies
the
"configured to flex" limitation of Claim 31 for the same reasons
as discussed regarding Yamamoto,
again referring to Mr.
rebuttal
Mr.
invalidity
"Triantafyllou
into
a
bent
report.
Ayton
asserts
Ayton's
that
the
'750 device uses a segmented tail that is driven
configuration
by
the
operation
of
six
separate
motors operating on six joints."
Rebuttal Invalidity Report of
Mr.
Mr.
Ayton
at
21,
"Triantafyllou
ECF No.
'750
different manner
device
than
of the '785 patent.
68-4.
thus
Ayton
operates
concludes
in
a
that
the
fundamentally
that of the claimed invention"
in Claim 31
IcL at 21-22.
The Court cannot determine at this stage of the litigation
that
no
"fair-minded
[Plaintiffs]
252.
or
portion of
flexed
Triantafyllou
to
'750,
"cyclical
torso,"
26-27,
relative
causing
configuration"
a
verdict
Anderson,
a
wave-like
that
such
motion
'750 at
motion,
at
joints "are
to
the
5:28-29,
as
for
477 U.S.
'750 explains that the
impart
conclude
rear
a jury
described
in
is significantly different from the relative
motion described in
at
return
the body 20," Triantafyllou
reasonably
patent
could
on the evidence presented."
Although Triantafyllou
rotated
could
jury
Claim 31 of the
ECF
No.
40-1
(claiming
motion
between
appendage
"to
(emphasis
added)),
65
'785 patent.
said
flex
with
drive
Compare
that
appendage
into
a
'785
produces
and
said
non-planar
Triantafyllou
'750
at
10:60-63,
said
ECF No.
sections
adjacent
54-11
are
(claiming "method . . . wherein all
connected
thereto"
to
flex
relative
(emphasis added));
id.
at
to
each
11:30-32
of
section
(claiming
"body . . . wherein at least the sections in the rear third of
said
body
(emphasis
that
are
connected
added)).
a genuine
dispute
'750
Defendant
not
argument
that
flex
Accordingly,
Triantafyllou
is
to
of
independent
because
material
anticipates
entitled
relative
fact
Claim
to
31
summary
Claim
31
to
the
Court
exists
of
as
the
judgment
of
each
the
other"
determines
to whether
'785
patent,
based
'785
on
its
patent
is
anticipated by Triantafyllou '750.
ii.
Because
the
Court
Claims
finds
32-35
that
genuine
issues
of
material
fact exist regarding whether independent Claim 31 is anticipated
by
Triantafyllou
'750,
summary judgment of
32,
33,
34,
or
35
Defendant
is
likewise
not
invalidity with respect to
of
the
'785
patent,
dependent upon independent Claim 31.
as
entitled
to
dependent Claims
those
See RCA Corp.,
claims
are
730 F.2d at
1446.
b.
Plaintiffs
Obviousness over Claim 38
asserted
at
the
July
15,
2014
summary
judgment
hearing that there was no dispute as to the obviousness of Claim
38
as
that
to
the
Van
Ruymbeke.
parties
did
Thus,
not
especially in
include
66
any
light
analysis
of
of
the
the
fact
Graham
factors
in
their
obviousness
briefs,
analysis
of
the
Court
Claim 38 with
declines
respect
to
to
conduct
an
Triantafyllou
'750.
4.
Hirata
The Hirata reference is identified as an article written by
Koichi
Hirata,
et
of a Fish Robot,'
pp.
287-292,
al.,
Proc.
2000
entitled "'Study on
at
"[u]nderwater
robots
are
development,
ocean
investigation
and
ECF
Invalidity
Triantafyllou
protection,"
that
propulsive
performance
at
No.
1,
ECF
Performance
of 1st Int. Sym. On Aqua Bio-Mechanisms,
('Hirata')."
37,
Turning
No.
54-3.
widely
used
such
and
54-12.
robots
Hirata
in
the
and
"need
includes
of
explains
fields
marine
good dynamics
Hirata
Report
higher
Dr.
that
of
ocean
environmental
efficient
of
performance."
Hirata
a
about]
"discuss[ion
turning modes for the fish robot that uses only tail swing," as
well
as
"a
small
prototype
"[b]ased on the discussion."
fish
robot"
that
was
developed
Id.
Hirata describes "three turning modes" that can be achieved
"with only swing of
tail
fin."
Id.
First,
"[t]he
swings its tail only to one side during a turning."
Second,
Next,
the
posture
Id.
"the fish robot swims straight,
Third,
the
side,"
"[t]he
then
fish
"[t]urns
robot
67
robot
Id. at 2.
and gets kinetic energy.
fish robot turns its tail to one side,
to
fish
by
swings
and keeps the
hydrodynamics
its
tail
to
force."
one
side
rapidly
from
stationary
state,"
such
that
"inertia
force
and
friction force of the moving tail and a body are changed to the
moment of rotation."
Id.
a. Anticipation of Claims 31-38
In its motion for summary judgment,
Hirata
anticipates
patent.
ECF
all
of
the
See Def.'s Br. Supp.
No.
54.
Plaintiffs
Defendant contends that
asserted
Mot.
claims
for Summ.
disagree,
of
the
J. at 19-20,
pointing
to
Mr.
opinions advanced in his rebuttal invalidity report.
'785
21-23,
Ayton's
See Pis.'
Br. in Opp'n at 11, ECF No. 68.
i. Claim 31 - the "configured to flex" limitation
The only limitation of Claim 31 disputed by the parties is
the "configured to flex" limitation.
at
352:2-6,
discussed
hinges
ECF
prior
upon
limitation,
No.
art
his
70-1.
However,
contending
that
"the
with
of Mr. Ayton
the
previously
Triantafyllou's
conclusion
of
reading
as
Tr.
Dr.
references,
broad
See Dep.
the
"configured
[Hirata]
drive
to
motion
flex"
causes
the appendage to bend at the joint between the tail peduncle and
tail
fin
plane."
assertion
such
Id.
that
that
at
the
40.
Hirata's
entire
appendage
Furthermore,
"drive
Dr.
motion"
is
not
in
a
single
Triantafyllou makes
is
a
cyclical
no
relative
motion between the appendage and the torso of the Hirata figure.
Dr. Triantafyllou cites Figure 4 of Hirata,
reproduced below,
in
support of his conclusion that Hirata discloses the "configured
68
to flex" limitation,
['linx angle. |1
Ul\ 10
0
!M
lSl)
Z70
:«t
Cnnirul iiugli'. V|i/ Mvf)
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?