Opinion
01 Civ. 9669 (MBM)
August 19, 2003
EZRA SUTTON, ESQ., Woodbridge, N.J. for plaintiff
MELISSA L. KLIPP, ESQ., Drinker Biddle Reath, New York, N.Y. and JOHN J. MARSHALL, ESQ., Reath, Berwyn, PA for Defendant
OPINION AND ORDER
Street Flyers, LLC ("Street Flyers") sues Gen-X Sports, Inc. ("Gen-X") alleging that Gen-X's Oxygen roller shoe infringes two patents assigned to Street Flyers — a utility patent for a wheel assembly for a roller shoe and, a design patent for a wave design on a shoe. Jurisdiction is based on 28 U.S.C. § 1338(a). Gen-X moves under Fed.R.Civ.P. 56 for summary judgment of non-infringement on both patents. For the reasons stated below, the motions are granted.
This court's docket also shows a related case, Street Fivers LLC v. Sears Roebuck and Co., 01 Civ. 6970. However, Sears Roebuck and Co. has not moved for summary judgment and thus this case is not considered here.
I.
A. The '964 Patent
Plaintiff Street Flyers alleges that it is the assignee of U.S. Patent No. 6,308,964 ("the '964 Patent"), which was granted on October 30, 2001, by the United States Patent and Trademark Office. (Compl. ¶ 5)
Defendant Gen-X submits a Rule 56.1 Statement setting forth certain facts relating to the '964 Patent, and Street Flyers responds with its own Rule 56.1 Statement. However, instead of pointing to facts that are in dispute, Street Flyers admits that the facts in Gen-X's statement are undisputed. (Street Flyers' '964 Patent 56.1 ¶ 1) Street Flyers does not cite any evidence in its Rule 56.1 Statement and has not submitted any affidavits or other evidence in opposition to Gen-X's motion for summary judgment of noninfringement.
Local Civil Rule 56.1 provides as follows:
(a)Upon any motion for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure, there shall be annexed to the notice of motion a separate, short and concise statement of the material facts as to which the moving party contends there is no genuine issue to be tried. . . .
(b) The papers opposing a motion for summary judgment shall include a separate, short and concise statement of the material facts as to which it is contended that there exists a genuine issue to be tried.
(c) All material facts set forth in the statement required to be served by the moving party will be deemed admitted unless controverted by the statement required to be served by the opposing party.
(d) Each statement of material fact by a movant or opponent must be followed by citation to evidence which would be admissible, set forth as required by Federal Rule of Civil Procedure 56(e).
S.D.N.Y. E.D.N.Y. R. 56.1.
Street Flyers' Rule 56.1 Statement includes also several other statements, which Street Flyers claims are undisputed. (Street Flyers' '964 Patent 56.1 ¶¶ a-f)
Thus, the following facts, taken from Gen-X's Rule 56.1 Statement and attached documents, are undisputed. The '964 Patent, entitled "Wheel Assembly for a Roller Skate," claims a priority filing date of December 19, 1998, based on an application filed in Taiwan. (Gen-X's '964 Patent 56.1 ¶ 2; Snyder '964 Patent Decl. Ex. A)
The specification of the '964 Patent refers to Taiwan Utility Model Publication No. 339688 ("Taiwan publication"), which was published on September 1, 1998. (Gen-X's '964 Patent 56.1 ¶ 3; Snyder '964 Patent Decl. Ex. A at col. 1) The specification says that the Taiwan publication discloses a roller skate, with wheels that can be pivoted into storage positions in a base, so that the skate can be worn as a shoe. (Snyder '964 Patent Decl. Ex. A, col. 1) According to the '964 Patent specification, the difficulty with the Taiwan publication is that when the user skates on an inclined surface or when the wheel hits an object on the ground, the wheel seat might pivot into the storage compartment. (Id.) According to the specification, "[t]he present invention is intended to provide a wheel assembly for a roller skate that mitigates and/or obviates the above problem." (Id.)
The '964 Patent includes two independent claims. The first claim is as follows:
1. A wheel assembly for a roller skate having a base, the wheel assembly comprising:
a pivotal seat having a first end secured to the base and a second end;
a wheel seat having a first end pivotally connected to the second end of the pivotal seat by a pin and a second end;
a wheel rotatably mounted to the second end of the wheel seat, the wheel seat further including a mounting member;
a first elastic member having a first end attached to the pivotal seat and a second end attached to the mounting member of the wheel seat for biasing the wheel seat to a storage position in the base;
a stopping means including a first end mounted to the pin and a second end through which the mounting member is extended, the stopping means further including a stop; and
a second elastic member mounted around the pin, said second elastic member being adapted to bias the stop of the stopping means to a position for releasably engaging with the wheel seat to prevent the wheel seat from moving into the storage position in the base.
(Id., col. 4) The second claim is:
2. A roller skate comprising:
a base having at least two compartments, the base further having a corresponding number of shoulders defined in said at least two compartments, respectively;
a corresponding number of wheel assemblies each of which is mounted in an associated said compartment, each said wheel assembly including:
a pivotal seat having a first end secured to the base and a second end,
a wheel seat having a first end pivotally connected to the second end of the pivotal seat by a pin and a second end,
a wheel rotatably mounted to the second end of the wheel seat, the wheel seat further including a mounting member;
a first elastic member having a first end attached to the pivotal seat and a second end attached to the mounting member of the wheel seat for biasing the wheel seat into the associated compartment in the base;
a stopping means including a first end mounted to the pin and a second end through which the mounting member is extended, the stopping means further including a stop; and
a second elastic member mounted around the pin, said second elastic member being adapted to bias the stop of the stopping means to a position for releasably engaging with the wheel seat; and
an upper mounted on the top of the base;
wherein each said wheel seat is pivotable between an operative position and a storage position in the associated compartment, and wherein when each said wheel seat is in the operative position, each said wheel seat bears against an associated said shoulder while the wheel rotatably attached to each said wheel seat extends beyond the base for skating, and wherein when each said wheel assembly is in the operative position, the stop of each said stopping means is engagable with an associated said wheel seat to prevent the associated wheel seat from entering the associated compartment.
(Id., cols. 4-5)
The '964 Patent includes several drawings in its specification. Figures 1, 2, 4, and 5 are included in the appendix to this opinion as Exhibits A through C. The specification indicates the following structures correspond with the following numbers shown in the figures: pivotal seat (340), wheel seat (330), pin (341), first elastic member (332), mounting member (331), stopping means (350), stop (351), second elastic member (353). (Id., col. 3)
Although the specification says "353" is the second elastic member, there is no "353" shown in any figure. The second elastic member is marked "352" in the figures. (Snyder '964 Patent Decl. Ex. A, figs. 1, 4, 5)
1. Prosecution History
After Street Flyers filed its initial application for the '964 Patent, the Patent Office issued an "Office Action" dated July 18, 2000, rejecting all the claims of the '964 Patent. (Gen-X's '964 Patent 56.1 ¶ 16; Snyder '964 Patent Decl. Ex. B, Office Action) The patent examiner said that each of the limitations of the '964 Patent, except the stopping means, was shown in the Taiwan publication — which was disclosed in figure 7 of the application for the patent. (Gen-X's '964 Patent 56.1 ¶ 17; Snyder '964 Patent Decl. Ex. B, Office Action at 2-3) However, the patent examiner found that a stopping means was disclosed in prior art patent U.S. 5,803,469, referred to by the examiner as "Yoham." The patent examiner said: "Yoham teaches a wheel assembly with the following: a stopping means having a stop, and a second elastic member mounts around the pin in order to pivotally move a roller skate between locked position, including a lowered, operable position and a collapsed, stowed position." (Snyder '964 Patent Decl. Ex. B, Office Action at 3 (numerical references omitted)) According to the patent examiner, "it would have been obvious to a person of ordinary skill in the art to combine the wheel assembly of Yoham with the prior art, figure 7 of the invention." (Id.)
The patent examiner said also: "Functional recitations(s) using the word "for" (e.g. "for biasing the stop of the stopping means. . . .") have been given little patentable weight because they fail to add any structural limitations and are thereby regarded as intended use language." (Id.) According to the examiner, "A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim." (Id.)
On October 18, 2000, Street Flyers filed a response to the office action. (Gen-X's '964 Patent 56.1 ¶ 19; Snyder '964 Patent Decl. Ex. B, Amendment) In the response, Street Flyers amended several words in its claims. Street Flyers changed the limitation "a second elastic member mounted around the pin for biasing the stop of the stopping mean to a position" to "a second elastic member mounted around the pin, said second elastic member being adapted to bias the stop of the stopping means to a position." (Id. at 2) Street Flyers disputed the patent examiner's view regarding the language "for biasing." According to Street Flyers, "a functional limitation must be evaluated and considered, just like any other limitation of the claim." (Id. at 5) However, Street Flyers said that it had in any event amended its claim to "more particularly define the structural characteristics" of the second elastic member. According to Street Flyers, the amended claim "recites a specific adaptation of the second elastic member." (Id. at 5)
In addition, Street Flyers argued in its response that the Yoham patent did not disclose the precise stopping means arrangement of the ' 964 Patent. Specifically, Street Flyers' response stated: "In addition, it is to be noted that the claim [of the '964 Patent] requires that the stopping means includes a first end mounted to the above-noted pin, and a second end through which the mounting member is extended." (Id. at 6) Street Flyers said: "[I]t is self-evident that the entire wheel seat along with the above-noted stopping means is positioned in the storage position or the locked position. In this regard it is to be noted that the claims utilize the second end of the first elastic member (which is attached to the mounting member 331 of the wheel seat 330) for biasing the wheel seat 330 into the storage position in base 403." (Id.) Street Flyers' response stressed:
In the absence of any teaching of a stopping means with an end being pivotally connected to the mounting member, one skilled in the art could not possibly, in the absence of hindsight analysis, conceive of using the finger elements of Yoham and the admitted prior art to achieve the wheel seat and the stopping means to be stowed in a compartment as claimed in the present invention.
Neither party has submitted a copy of the Yoham patent. However, Gen-X states in its Rule 56.1 Statement, and Street Flyers admits, that the Yoham wheel assembly does have a stopping means, but the stopping means does not have a "mounting member" extending through it, as required by the '964 Patent. (Gen-X's 56.1 ¶ 18; Street Flyers' 56.1 ¶ 1)
(Id. at 7)
Based on Street Flyers' response, the examiner mailed a Notice of Allowance and Detailed Action. (Gen-X's '964 Patent 56.1 ¶ 21; Snyder '964 Decl. Ex. B, Detailed Action) In the Detailed Action, the examiner stated as follows:
Regarding claim 1, the references do not disclose a wheel assembly for roller skate with the following: a pivotal seat having a first end mount to the base and a second end pivotally connected to a first end of a wheel seat by a pin; wherein the wheel seat having a second end and a mounting member; a stopping means including a first end mounted to the pin and a second end through which the mounting member is extended; a first and second elastic members; wherein the first elastic member attached to the pivotal seat and to the mounting member, and second elastic member mounted to the pin and being adapted to bias the stop to a position for releasably engaging with the wheel seat to prevent the wheel seat form [sic] moving into the storage position in the base. These structures in combination with other structures recited in claim 1 define over the prior art of record.
(Id. at 2)
2. The Oxygen Roller Shoe
Street Flyers alleges that Gen-X's Oxygen roller shoe ("Gen-X's shoe" or "Oxygen shoe") infringes the '964 Patent. Gen-X has filed a specimen of its shoe, along with several photographs showing the wheel assembly of the shoe. A copy of one of the photographs is included as Exhibit D of the appendix to this opinion. The following description of the Oxygen roller shoe is taken from Gen-X's Rule 56.1 Statement, which Street Flyers does not dispute, and this court's examination of the actual shoe.
The Oxygen roller shoe, like the object described by the '964 Patent, is a roller skate with wheels that can be pivoted into the base of the shoe. Also like the '964 Patent, the Oxygen shoe has a mechanism for securing the wheels in the skating position, so that the wheels do not unintentionally slide back into the storage compartments while the user is skating. (Oxygen Shoe)
Citations to "Oxygen Shoe" indicate that the description is based on this court's own examination of the shoe.
The Oxygen shoe has two storage compartments in the base of the shoe. (Id.) Each compartment has a bracket extending from it. (Gen-X's '964 Patent 56.1 ¶ 7) A wheel seat is pivotally attached at one end of the bracket by a pin. (Id. ¶ 8) Wheels are attached to the opposite end of the wheel seat. (Id.) A torsion spring (the "first spring") has its first end fixed to the base and a second end fixed to the wheel seat, and its center coils encircling the pin. (Id. ¶ 10) The spring biases the wheel seat out of the storage compartments to the skating position. (Oxygen Shoe)
There are two buttons on the side of the Oxygen shoe. (Id.) Each button is a cylinder that extends through the sole of the shoe. (Id.) When the cylinder is pushed inward, it comes into contact with the first end of the pin connecting the wheel seat to the bracket. (Id.) Around the pin is a torsion spring (the "second spring"). (Id.) The spring is mounted between the first end of the pin and the center of the pin, where the wheel seat is attached. (Id.)
The stopping means of the Oxygen shoe is mounted on the second end of the pin. (Gen-X's '964 Patent 56.1 ¶ 14) The stopping means consists of a disk-shaped washer having a single opening at its center and two posts extending from opposite ends of the disk. (Id.) When the spring is extended, the posts on the stopping means extend through notches in the wheel seat and the bracket, and prevent the wheel seat from pivoting into the storage position. (Oxygen Shoe)
Pushing the button on the side of the shoe moves the pin toward the opposite side of the storage compartment in the base of the shoe, and compresses the second spring. (Id.) This in turn moves the posts of the stopping mechanism away from where they are engaged with the wheel seat and the bracket. (Id.) If the wheels are in the storage compartment when the button is pushed, the wheels "pop" out into the skating position. (Id.) Pushing the button when the wheels are in the skating position enables the user to return the wheels to the storage compartment. (Id.) In order to pivot the wheels back into a storage position, one must press the wheel seat against the bias of the first torsion spring. (Gen-X's '964 Patent 56.1 ¶ 12)
The compartments of the Oxygen roller shoe do not have shoulders that the wheel seats can bear against when the wheels are extended. (Gen-X's '964 Patent 56.1 ¶ 13) When the wheel seat is extended, the wheel seat rests directly against the base. (Id.)
B. The '386 Patent
Plaintiff Street Flyers asserts that it is the owner of U.S. Design Patent No. D446, 386 ("the '386 Patent"), granted on August 14, 2001 by the United States Patent and Trademark Office. (Compl. ¶ 10) The '386 Patent, entitled "Wave Design For An Athletic Shoe," claims "[t]he ornamental design for a wave design for an athletic shoe, as shown and described." (Snyder '386 Patent Decl. Ex. A) The patent includes a drawing, reproduced in the appendix to this opinion as Exhibit E. Street Flyers alleges that Gen-X's Oxygen Roller shoe infringes the claimed design of its '386 Patent.
In addition to filing with its motion a specimen of its shoe, Gen-X files several photographs. (Snyder '386 Patent Decl. Ex. B) A photograph submitted by Gen-X of the Oxygen shoe, showing the wave design on the side of it shoe, is included as Exhibit F to appendix of this opinion. Gen-X also includes with its motion copies of several design patents, which it claims are prior art disclosing athletic shoes with midsole peripheries featuring wave-like appearances. (Gen-X's '386 Patent 56.1 ¶ 5-7 Snyder '386 Patent Decl. Ex. C)
II.
Summary judgment is appropriate if there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(c). In considering a summary judgment motion, "the court must resolve all ambiguities and draw all reasonable inferences in favor of the nonmoving party." Azrielli v. Cohen Law Offices, 21 F.3d 512, 517 (2d Cir. 1994). The movant for summary judgment "always bears the initial responsibility of informing the district court of the basis for its motion" and identifying which materials "demonstrate the absence of genuine issues of material fact." Celotex Corp. v.Catrett, 477 U.S. 317, 323 (1986). Once this showing has been made, the burden shifts to the non-movant who "must set forth specific facts showing that there is a genuine issue for trial."Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986).
III.
Street Flyers claims that Gen-X's Oxygen roller shoe infringes the '964 Patent. The determination of infringement is a two-step process. First, the court determines the scope and meaning of the patent claims asserted. Second, it compares the properly construed claims to the allegedly infringing device. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). Claim construction is a question of law. Id. at 1456. Infringement is a question of fact.Insituform Techs., Inc. v. Cat Contracting, Inc., 161 F.3d 688, 692 (Fed. Cir. 1998). The party claiming infringement has the burden of proving infringement by a preponderance of the evidence. See Carroll Touch, Inc. v. Electro Mech, Svs., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993).
A. Claim Construction
The Federal Circuit has said the following regarding the sources of evidence to use in interpreting claims:
First, we look to the words of the claims themselves, both asserted and nonasserted, to define the scope of the patented invention. Although words in a claim are generally given their ordinary and customary meaning, a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history.
Thus, second, it is always necessary to review the specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning. The specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication. . . . The specification contains a written description of the invention which must be clear and complete enough to enable those of ordinary skill in the art to make and use it. Thus, the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.
Third, the court may also consider the prosecution history of the patent, if in evidence. This history contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims. As such, the record before the Patent and Trademark Office is often of critical significance in determining the meaning of the claims.Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citations omitted). Extrinsic evidence, such as expert testimony and prior art, also may be used, but only when the intrinsic evidence (the patent claims, the patent specification, and the prosecution history of the patent) fails to resolve any ambiguity in a disputed claim term. Bell Howell Document Mgmt. Prod. Co. v. Altek Sys., 132 F.3d 701, 706 (Fed. Cir. 1997).
Gen-X asserts, and Street Flyers does not dispute, that all claim terms can be understood without reference to extrinsic evidence. The specification of the '964 Patent includes several figures showing the preferred embodiment of the invention. Figure 5, reproduced in Exhibit C of the appendix to this opinion, shows the relationship among the mounting member, the stopping means, and the first elastic member. The mounting member is marked "331," the stopping means is "350," and the first elastic member is "332."
The claims are not limited to the preferred embodiment disclosed in the patent's specification. See, e.g., Amhil v. Enters. Ltd, v. Wawa, Inc., 81 F.3d 1554, 1559 (Fed. Cir. 1996) ("A preferred embodiment, however, is just that, and the scope of a patentee's claims is not necessarily or automatically limited to the preferred embodiment."). However, reference to the specification to interpret what the patentee meant by specific claim language is proper. See, e.g., Gen. Am. Transp. Corp. v. Crvo-Trans. Inc., 93 F.3d 766, 770 (Fed. Cir. 1996).
The third paragraph of claim 1 says that the wheel seat must include a "mounting member." Gen-X asserts that the fourth and fifth paragraphs of claim 1 require that this mounting member have "specific functional and spatial relationships to other defined structures." (Gen-X's '964 Patent Mem. at 6) First, one end of the first elastic member must attach to the mounting member. Second, the mounting member must extend through the "stopping means" of the wheel assembly.
The specification indicates that a torsion spring is an example of an elastic member. (See Snyder '964 Patent Decl. Ex. A at col. 3 ("An elastic member, e.g., a torsion spring 332 is attached between the pivotal seat 340 and a mounting member 331 on the wheel seat 330 for biasing the wheel seat 330 to its storage position in the associated compartment 404, 405.")
Street Flyers asserts that the term "mounting member" should be interpreted "broadly" to refer to that portion of a wheel seat to which the first elastic member is connected. According to Street Flyers, the term is not limited to the rod shown in the '964 Patent specification drawing. (Street Flyers' '964 Patent Mem. at 1)
I agree with Street Flyers that the term "mounting member" is not limited to the precise rod shown in the specification drawing. However, the language of the claim requires that the structure of the mounting member be such that it "extends through" the stopping means. The "mounting member" is a piece of, or an object attached to, the wheel seat, which extends through one end of the stopping means. The stopping means has two ends: the mounting member extends through one end, and the other end is attached to the pin. This pin is the same pin that attaches the pivotal seat to the wheel seat.
The first elastic member has a first end attached to the pivotal seat and "a second end attached to the mounting member of the wheel seat for biasing the wheel seat to a storage position in the base." (Snyder '964 Patent Decl. Ex. A, col. 4) According to Gen-X, this language indicates that the first elastic member must be arranged such that it pulls the wheel seat into the sole of the skate. I agree. The statement that the elastic member is attached to the mounting member of the wheel seat "for biasing" the wheel seat to a storage position means that the elastic member works to move the wheel seat into the storage position. In other words, when the elastic member is not met with resistance, it will move the wheel seat to the base of the skate. Street Flyers concedes this reading of the term "for biasing." (See Street Flyers' Mem. at 2 ("It is plaintiff's position that Gen-X has the same structural elements as claimed (the wheel seat and the torsion spring), and the only difference is the direction its torsion spring is biased — either toward the skate or away from the skate. Once a person skilled in this art has these structural elements, it is only a matter of choice to bias the spring in one direction or the other."))
Street Flyers might have noted that when it amended its claims it replaced the language "for biasing" with "is adapted to bias" in one limitation but not in the other. Street Flyers could have argued that the limitation "is adapted to bias" requires that the spring work in one particular direction, whereas the limitation "for biasing" covers springs working in either direction. The patent examiner had stated that the phrase "for biasing" failed to add any structural limitation and was instead "intended use language."
However, the clear language of the claim — that the elastic member has "a second end attached to the mounting member of the wheel seat for biasing the wheel seat to a storage position in the base" — requires that the spring work to pull the wheels into the base. The specification is consistent with this reading of the claim. (Snyder '964 Patent Decl. Ex. A, col. 3 ("[W]hen not skating, the stopping means 350 may be moved axially away from the side of the wheel seat 330 such that the wheel seat 330 may move into the compartment 404 under the action of the elastic member 332, as the stop 351 is on the way of the wheel seat 330 into the compartment 404.")) Moreover, Street Flyers, in this litigation, does not argue that "for biasing" means something other than what I have read it to mean here.
B. Infringement
Street Flyers states in its memorandum: "It is plaintiff's position that Claim 1 of the '964 patent is infringed under the Doctrine of Equivalents." (Street Flyers' '964 Patent Mem. at 1) Street Flyers does not argue that Gen-X's roller shoe literally infringes claim 1 of the '964 Patent, nor does Street Flyers argue that Gen-X's shoe infringes claim 2 of the '964 patent — either literally or under the doctrine of equivalents.
In any event, the Oxygen shoe does not literally infringe either of the claims of the '964 Patent. A finding of literal infringement requires that the asserted claims, properly construed, read on the accused product. See Johnston v. IVAC Corp., 885 F.2d 1574, 1580 (Fed. Cir. 1989) ("Where a claim does not read on an accused device exactly, there can be no literal infringement."). "To establish literal infringement, a plaintiff must demonstrate that every limitation in the claim is literally met by the accused device." Kahn v. General Motors Corp., 135 F.3d 1472, 1476 (Fed. Cir. 1998).
Gen-X asserts that its shoe does not literally infringe claim 1 because it does not have a "mounting member" as described in the '964 Patent. Street Flyers responds that the mounting member described in claim 1 simply refers to the portion of the wheel seat to which the torsion spring is attached, and because Gen-X's shoe has a portion of the wheel seat to which a torsion spring is attached, Gen-X has a mounting member.
However, claim 1 requires the mounting member to extend through the stopping means. Although Gen-X's shoe does have a stopping means (a mechanism to keep the wheel seat from pivoting unintentionally into the base of the shoe) the portion of the Gen-X wheel seat that Street Flyers alleges is Gen-X's "mounting member" does not extend through Gen-X's stopping means. Gen-X's stopping means is a washer mounted on the pin. The stops on the stopping means are two posts. The posts "releasably engage" with the wheel seat and bracket. There is nothing that could be described as "extending through" the stopping means except for the pin. Thus, the Gen-X shoe does not literally infringe claim 1.
"A device that does not literally infringe a claim may nonetheless infringe under the doctrine of equivalents if every element in the claim is literally or equivalently present in the accused device." Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1423 (Fed. Cir. 1997). "A claim element is equivalently present in an accused device if only `insubstantial differences' distinguish the missing claim element from the corresponding aspects of the accused device." Id. (quotingHilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1517-18 (Fed. Cir. 1995) (in bane), rev'd on other grounds, 520 U.S. 17 (1997));see also Schoell v. Regal Marine Indus., Inc., 247 F.3d 1202, 1209 (Fed. Cir. 2001) ("Even if an accused product does not literally infringe the asserted claims of a patent, the product may infringe under the doctrine of equivalents if the differences between the element of the accused product at issue in the product and the claim limitation at issue are insubstantial."). "One test used to determine whether differences are insubstantial is to determine whether the element performs substantially the same function in substantially the same way to obtain substantially the same result as the claim limitation." Schoell, 247 F.3d at 1209-1210.
Infringement is a question of fact. "A district court should approach a motion for summary judgment on the fact issue of infringement with great care." Amhil, 81 F.3d at 1557. However, if the dispute concerns only the meaning of claims then summary judgment may be appropriate. See Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1578 (Fed. Cir. 1996) ("Where, as here, the parties do not dispute any relevant facts regarding the accused product but disagree over which of two possible meanings of Claim 1 is the proper one, the question of literal infringement collapses to one of claim construction and is thus amenable to summary judgment."). Courts may grant summary judgment against an equivalency claim if there is no genuine issue of material fact. See Sage, 126 F.3d at 1423 ("Although equivalence is a factual matter normally reserved for a fact-finder, the trial court should grant summary judgement in any case where no reasonable fact finder could find equivalence."); see also Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n. 8 (1997) ("Where the evidence is such that no reasonable jury could determine two elements to be equivalent, district courts are obliged to grant partial or complete summary judgment."); Schoell, 247 F.3d at 1210 ("The doctrine of equivalents is not a talisman that entitles a patentee to a jury trial on the basis of suspicion; it is a limited remedy available in special circumstances, the evidence for which is the responsibility of the proponent." (citing Zelinski v. Brunswick Corp., 185 F.3d 1311, 1317 (Fed. Cir. 1999)); Pall Corp. v. Hemasure Inc., 181 F.3d 1305, 1312 (Fed. Cir. 1999) ("[U]pon review of the prosecution history, the construction of the claims, and the Hemasure structure, we have concluded that there is no reasonable basis upon which Pall can establish equivalency. Thus remand for trial of the issue of equivalency is inappropriate.").
Gen-X asserts that there can be no infringement under the doctrine of equivalents if a claim limitation is totally missing from the accused device. According to Gen-X, there are several limitations missing from the Oxygen shoe. Gen-X argues that its shoe lacks any structure that could be deemed equivalent to the stopping means or to the mounting member of the '964 Patent. In addition, Gen-X asserts that the Oxygen shoe has no structure that functions to bias the wheel seat of the shoe into a storage position. Rather, the spring on Gen-X's shoe performs the exact opposite function — the spring biases the wheels out of the storage position.
It is Street Flyers' burden to show equivalence. Yet Street Flyers submits no evidence. Street Flyers' memorandum — only two pages long — begins by stating that claim 1 of '964 Patent is infringed under the doctrine of equivalents. However, Street Flyers' memorandum does not articulate an argument under the doctrine of equivalents. Rather, Street Flyers responds in conclusory fashion to several arguments made by Gen-X. First, Street Flyers asserts that the Oxygen shoe does have a mounting member — the portion of the wheel seat attached to the first torsion spring. Second, Street Flyers responds to Gen-X's assertion that the spring on the Oxygen shoe biases the wheels in the opposite direction. Street Flyers says that "Gen-X's different direction of bias on the same torsion spring does not avoid infringement" because it is "only a matter of choice to bias the spring in one direction or the other." (Street Flyers' '964 Patent Mem. at 2) Finally, Street Flyers responds to Gen-X's argument that the stopping means on the Oxygen shoe does not have a mounting member extending through it. Street Flyers says: "the term `mounting member' in Claim 1 is a broad term and is broad enough to cover in the Gen-X skate a `mounting member' on the wheel seat, wherein the `mounting member' extends through the stopping means." (Id.) In addition, Street Flyers' Rule 56.1 Statement states: "The Gen-X skate has stopping means through which the `mounting member' is extended when the term `mounting member' is read broadly and is not limited to rod 331 in the drawings of the '964 Patent.'" (Street Flyers' '964 Patent 56.1 ¶ f)
Street Flyers' statement that the Gen-X shoe has a stopping means through which a mounting member is extended is simply inaccurate — even accepting the broad construction of the term "mounting member" that Street Flyers urges. The portion of the wheel seat on the Gen-X roller shoe that Street Flyers asserts is the mounting member — the part of the wheel seat attached to the first torsion spring — does not extend through the stopping means. The stopping means on the Oxygen shoe is a washer mounted to a pin. This stopping means does not come into contact with the portion of the wheel seat to which the first torsion spring is attached.
The Federal Circuit, in Sage Products, Inc. v. Devon Industries, 126 F.3d 1420 (Fed. Cir. 1997), discussed the applicability of the doctrine of equivalents to simple mechanical patent claims. At issue was whether a patent, which disclosed a disposal container that allowed a user to deposit hazardous medical waste without touching waste already in the container, was infringed. The Court said:
The claim at issue defines a relatively simple structural device. A skilled patent drafter would foresee the limiting potential of the `over said slot' limitation. No subtlety of language or complexity of the technology, nor any subsequent change in the state of the art, such as later-developed technology, obfuscated the significance of this limitation at the time of its incorporation into the claim.Id. at 1425. The Court said that "[i]f Sage desired broad patent protection for any container that performed a function similar to its claimed container, it could have sought claims with fewer structural encumbrances." Id. However, "[i]nstead, Sage left the PTO with manifestly limited claims that it now seeks to expand through the doctrine of equivalents." Id. The Court concluded:
In sum, the '728 patent claims a precise arrangement of structural elements that cooperate in a particular way to achieve a certain result. Devon achieves a similar result — restricted entry to a medical disposal container — but it does so by a different arrangement of elements. Because this issued patent contains clear structural limitations, the public has a right to rely on those limits in conducting its business activities. This court will not effectively remove such a limitation under a doctrine designed to prevent `fraud on a patent.' Accordingly, this court affirms the judgment of the district court that Devon does not infringe the '728 patent, either literally or under the doctrine of equivalents.Id. at 1425-26.
The claim at issue in the present case, as the claim in Sage, involves a "relatively simple structural device." As in Sage, the '964 Patent "claims a precise arrangement of structural elements that cooperate in a particular way to achieve a certain result." In particular, the '964 Patent explicitly describes the relationship among the mounting member, the stopping means, and the first elastic member. The Gen-X shoe achieves a similar result as the '964 Patent — the arrangement of elements in the Gen-X shoe prevent the wheels from moving unintentionally into the storage compartment. However, the structural elements of the Gen-X shoe are arranged differently from the precise arrangement claimed by the '964 Patent.
"Only if an accused product contains specific structure which meets all limitations of an asserted claim directed to structure, at least equivalently, can that product infringe under the doctrine of equivalents." Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579 (Fed. Cir. 1995); see also London v. Carson Pirie Scott Co., 946 F.2d 1533, 1539 (Fed. Cir. 1991) ("There can be no infringement as a matter of law if a claim limitation is totally missing from the accused device.").
The requirement in claim 1 of the '964 Patent that the device include a mounting member extending through the stopping means is missing in the Gen-X shoe. Street Flyers does not confront this fact. Instead, Street Flyers makes the inaccurate statement that: "The Gen-X skate has stopping means through which the `mounting member' is extended when the term `mounting member' is read broadly and is not limited to rod 331 in the drawings of the '964 Patent.'" (Street Flyers' '964 Patent 56.1 ¶ f) In addition, Street Flyers makes no attempt to show that the mounting member and the stopping means on the Gen-X shoe — the former not extending through the latter — perform substantially the same function in substantially the same way to obtain substantially the same result as the '964 claim limitation, which requires that the mounting member extend through the stopping mens.
Because claim 1 of the '964 Patent requires the stopping means to include "a second end through which the mounting member is extended," and the Gen-X shoe has no mounting member extending through its stopping means, there is no infringement under the doctrine of equivalents. See Sage, 126 F.3d at 1424 ("However, the doctrine of equivalents does not grant Sage license to remove entirely the `top of the container' and `over said slot' limitations from the claim."); Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532 (Fed. Cir. 1987) ("One must start with the claim, and, though a `non-pioneer' invention may be entitled to some range of equivalents, a court may not, under the guise of applying the doctrine of equivalents, erase a plethora of meaningful structural and functional limitations of the claim on which the public is entitled to rely in avoiding infringement. Nor, as Perkin-Elmer here requests, should a court convert a multi-limitation claim to one of two limitations to support a finding of equivalency.").
In addition, I agree with Gen-X that prosecution history estoppel prevents Street Flyers from asserting a broad scope of protection of its "stopping means" under the doctrine of equivalents.
"Prosecution history estoppel serves to limit the doctrine of equivalents by denying equivalents to a claim limitation whose scope was narrowed during prosecution for reasons related to patentability." Pioneer Magnetics, Inc. v. Micro Linear Corp., 330 F.3d 1352, 1356 (Fed. Cir. 2003). "As a general proposition, prosecution history estoppel is based upon a showing that an applicant amended a claim to avoid a cited prior art reference." Texas Instruments Inc. v. U.S. Int'l Trade Comm'n, 988 F.2d 1165, 1174 (Fed. Cir. 1993). However, "[u]nmistakable assertions made by the applicant to the Patent and Trademark Office (PTO) in support of patentability, whether or not required to secure allowance of the claim, also may operate to preclude the patentee from asserting equivalency between a limitation of the claim and a substituted structure or process step." Id.; see also Cybor Corp., 138 F.3d at 1460 ("The estoppel may arise from matter surrendered as a result of amendments to overcome patentability rejections, or as a result of argument to secure allowance of a claim." (citation omitted)); Desper Products, Inc. v. OSound Labs. Inc., 157 F.3d 1325, 1338 (Fed. Cir. 1998); Haynes Int'l. Inc. v. Jessop Steel Co., 8 F.3d 1573, 1579 (Fed. Cir. 1993). Prosecution history estoppel presents a question of law.Cvbor Corp., 138 F.3d at 1459-60.
Gen-X points out that Street Flyers' original application for the '964 was rejected because each limitation was shown in the prior art (the Taiwan publication), except the stopping means, and the patent examiner found that the stopping means was disclosed in the Yoham patent. The patent examiner said: "Yoham teaches a wheel assembly with the following: a stopping means (45) having a stop (46), and a second elastic member (44) mounts around the pin (42) in order to pivotally move a roller skate between locked position, including a lowered, operable position and a collapsed, stowed position." (Snyder '964 Patent Decl. Ex. B, Office Action at 3) Street Flyers filed a response to the rejection of its patent, arguing that the Yoham patent did not disclose the precise stopping means arrangement of the '964 Patent. Street Flyers stated that "it is to be noted that the claim requires that the stopping means includes a first end mounted to the above-noted pin and a second end through which the mounting member is extended." (Snyder '964 Patent Decl. Ex. B, Amendment at 6) The examiner allowed the patent, stating that one of the "reasons for allowance" was that the wheel assembly of the '964 Patent had "[a] stopping means including a first end mounted to the pin and a second end through which the mounting member is extended." (Snyder '964 Patent Decl. Ex. B, Detailed Action at 2) Thus, according to Gen-X, Street Flyers "surrendered any right to argue equivalents for a stopping means that does not have a mounting member extending through its second end." (Gen-X's Mem. at 17)
I agree. Street Flyers defined the scope of its patent narrowly, in order to distinguish it from the prior art Yoham patent. In distinguishing Yoham, Street Flyers focused on the precise arrangement of the various elements of its claim. After emphasizing the significance of the mounting member extending through the stopping means, Street Flyers cannot now argue that the Oxygen shoe — which has no mounting member extending through its stopping means — is equivalent.
Finally, Gen-X asserts that there can be no infringement under the doctrine of equivalents because the first torsion spring on the Oxygen shoe biases the wheels in the opposite direction from the direction required by the '964 Patent. Here too, Gen-X is correct. The spring on the Gen-X shoe connecting the wheel seat to the bracket works to move the wheels into the skating position — i.e., when the stop is not engaged, the spring biases the wheels into the skating position. The '964 Patent, on the other hand, requires the first elastic member to bias the wheels into the storage compartments — i.e., when the stop is not engaged, the wheels move to the storage position.
This difference precludes a finding both of literal infringement and of infringement under the doctrine of equivalents. Street Flyers argues: "It is plaintiff's position that Gen-X has the same structural elements as claimed (the wheel seat and the torsion spring), and the only difference is the direction its torsion spring is biased — either toward the skate or away from the skate. Once a person skilled in this art has these structural elements, it is only a matter of choice to bias the spring in one direction or the other." (Street Flyers' '964 Patent Mem. at 2) Street Flyers is correct that it is "a matter of choice to bias the spring in one direction or the other." However, this does not mean that the '964 Patent covers a roller skate wheel assembly that has a spring biased in the opposite direction.
Again, if Street Flyers had wanted its patent to cover a broader scope, it could have sought broader protection. Street Flyers could have written its claim to cover shoes with springs biasing the wheels in either direction. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Svs., Inc., 242 F.3d 1337, 1347 (Fed. Cir. 2001) ("[T]he patentee had an opportunity to draft the patent in a way that would make clear that dual lumens as well as coaxial lumens were within the scope of the invention, but the patentee did just the opposite, leaving competitors and the public to draw the reasonable conclusion that the patentee was not seeking patent protection for catheters that used a dual lumen configuration."); Sage, 126 F.3d at 1425 ("If Sage desired broad patent protection for any container that performed a function similar to its claimed container, it could have sought claims with fewer structural limitations."). Street Flyers wrote its claim narrowly and cannot now seek broader protection through the doctrine of equivalents. See Sage, 126 F.3d at 1424 ("[F]or a patentee who has claimed an invention narrowly, there may not be infringement under the doctrine of equivalents in many cases, even though the patentee might have ben able to claim more broadly."); Southwall Techs., 54 F.3d at 1579 ("The doctrine of equivalents, however, is not a tool for expanding the protection of a patent after examination has been completed.").
IV.
Street Flyers alleges also that the Oxygen shoe infringes its design patent, the '386 Patent.Title 35, Section 171, of the United States Code provides that a patent may be obtained for the ornamental design of an article of manufacture.See 35 U.S.C. § 371 ("Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. . . .). "A patented design is ordinarily claimed `as shown', that is, by its drawing." L.A. Gear, Inc. v. Thorm McAn Shoe Co., 988 F.2d 1117, 1122 (Fed. Cir. 1993) (citing 37 C.F.R. § 1.153 (a)); In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) ("Design patents have almost no scope. The claim at bar, as in all design cases, is limited to what is shown in the application drawings."). "A design patent protects the non-functional aspects of an ornamental design as shown in the patent." Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995) (citing KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993).)
In 35 U.S.C. § 289, infringement is defined as unauthorized manufacture or sale of "the patented design, or any colorable imitation thereof." 35 U.S.C. § 289. "Determining whether a design patent claim has been infringed requires, first, as with utility patents, that the claim be properly construed to determine its meaning and scope. Second, the claim as properly construed must be compared to the accused design to determine whether there has been infringement." Elmer, 67 F.3d at 1577 (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 975 (Fed. Cir. 1995)).
Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent. In the present case, there are no functional aspects of the design; it is purely ornamental.
A copy of the drawing from the '386 Patent is included in the appendix of this opinion as Exhibit E. The claim is limited to what is shown in the solid, unbroken lines of the drawing. See 37 C.F.R. § 1.152; see also Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1378 (Fed. Cir. 2002) ("If features appearing in the figures are not desired to be claimed, the patentee is permitted to show the features in broken lines to exclude those features from the claimed design. . . .").
Gen-X's description of Street Flyers' design is accurate:
The midsole design has a rolling wave-like appearance, with an upper periphery resembling two wave crests with a trough between them, and a lower periphery reflecting the two wave crests and trough of the upper edge. The upper and lower periphery also turn upward to meet at a point near the front of the show, and rise in parallel to circle above and around the heel of the shoe, to create the impression additional wave crests leading and trailing the two full wave crests.
(Gen-X's '386 Patent 56.1 ¶ 4)
"Comparison of the accused product includes two distinct tests, both of which must be satisfied in order to find infringement: (a) the `ordinary observer' test, and (b) the `point of novelty' test." See Contessa, 282 F.3d at 1377. Under the "ordinary observer" test, the fact finder must determine,
if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871); accord Contessa, 282 F.3d at 1377; see also L.A. Gear, 988 F.2d at 1124 ("Design patent infringement requires a showing that the accused design is substantially the same as the claimed design. The criterion is deception of the ordinary observer, such that one design would be confused with the other. . . ."). "The `point of novelty' test is distinct from the `ordinary observer' test and requires proof that the accused design appropriates the novelty which distinguishes the patented design from the prior art." Contessa, 282 F.3d at 1377.
"Proper application of the Gorham test requires that an accused design be compared to the claimed design, not to a commercial embodiment."Payless Shoesource, Inc. v. Reebok Intern. Ltd., 998 F.2d 985, 990 (Fed. Cir. 1993). It is the appearance of the design as a whole that is controlling in determining design patent infringement. Braun Inc. v.Dynamics Corp. of America, 975 F.2d 815, 820 (Fed. Cir. 1992) ("In evaluating a claim of design patent infringement, a trier of fact must consider the ornamental aspects of the design as a whole and not merely isolated portions of the patented design."). "[P]atent infringement can be found for a design that is not identical to the patented design." Id. at 820 (citing Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1190 (Fed. Cir. 1988)).
Design patent infringement presents a question of fact, and must be proved by a preponderance of the evidence. L.A. Gear, 988 F.2d at 1124. However, courts have granted summary judgment when no reasonable fact finder could find infringement based on the undisputed facts. See, e.g., OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1406 (Fed. Cir. 1997); cf. Elmer, 67 F.3d at 1578 ("Thus, because no reasonable jury could have concluded that the overall visual appearance of the claimed design is substantially similar to the accused design, the jury verdict of design patent infringement was not supported by substantial evidence.").
I conclude that no reasonable fact finder could conclude that the Gen-X design and the '386 Patent are substantially the same under the Gorham ordinary observer test. A photograph of the Oxygen shoe is included in the appendix of this opinion as Exhibit F. There are, of course, several similarities between the designs. The '386 Patent and Gex-X design both show a wave design on the midsole portion of a shoe. In each design, there is an upper and lower line that form a wave pattern. In addition, in each design, the lines come together to form a point near the toe of the shoe. However, the designs differ in two obvious respects. First, the '368 Patent design is more wavy than the Gen-X design. In the '368 Patent, there are two crests — two places where the lines rise and then fall — along the length of the side of the shoe. On the Gen-X design, there is only one crest. In addition, the heel designs on the two shoes differ. On the '368 Patent, at the heel, the upper and lower lines rise toward the top of the shoe, and come close together. On the Gex-X design, the upper line rises and the bottom line falls. The lines extend further apart, and there are several other lines forming a design at the heel. As the overall design is simple, the difference in the heel design is obvious. These two differences — the heel design and the difference in the number of crests — significantly change the over-all appearance of the designs such that no reasonable fact finder could conclude that the Gen-X shoe infringes the '386 Patent under the ordinary observer test.See Elmer, 67 F.3d at 1578 ("Under Gorham, the focus is on the overall ornamental appearance of the claimed design, not selected ornamental features. The overall ornamental appearance of the '620 design, as shown in the patent drawings, is too different from ICC's design for an ordinary observer to be induced into purchasing ICC's product thinking it was HTH's design.").
Street Flyers admits that the wavy lines in the Gen-X design "do not `come substantially close to each other at the rear'" but asserts that in all other respects the Gen-X design meets the "entire verbal description of plaintiff's wave design." (Street Flyers' 56.1 ¶ c) Street Flyer's memorandum conclusorily states that "the overall appearance of both wave designs is `substantially the same.'" (Street Flyers' '386 Patent Mem. at 2)
Because no reasonable fact finder could find infringement under the Gorham test, there is no need to consider whether there is infringement under the point of novelty test.
* * *
For the reasons stated above, Gen-X's motions for summary judgment of noninfringement of the '964 and the '386 Patents are granted.
SO ORDERED:
EXHIBIT A
EXHIBIT B
EXHIBIT C
EXHIBIT D
EXHIBIT E
EXHIBIT F