Banhazl v. Am. Ceramic Soc'y

TERRIE BANHAZL, doing business as HEIRLOOM CERAMICS, Plaintiff and Counter-Defendant, v. THE AMERICAN CERAMIC SOCIETY, Defendant and Counter-Claimant.

Civil Action No. 16-cv-10791-ADB

UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS

March 5, 2021

MEMORANDUM AND ORDER ON PLAINTIFF'S MOTION TO STRIKE AND DEFENDANT'S MOTION FOR SUMMARY JUDGMENT

BURROUGHS, D.J.

Inventor Terrie Banhazl ("Plaintiff") brings this patent infringement action against the American Ceramic Society ("Defendant") and alleges that Defendant's dissemination of how-to tutorials, step-by-step instructions, and instructional videos infringes all claims of U.S. Patent No. 7,622,237 ("the '237 patent"). [ECF No. 13 ¶ 29]. The '237 patent claims a method for permanently transferring an image to a ceramic or glass piece. [ECF No. 13-1]. Currently before the Court are Plaintiff's motion to strike, [ECF No. 59], and Defendant's motion for summary judgment, [ECF No. 64]. For the reasons set forth below, Plaintiff's motion is GRANTED and Defendant's motion is DENIED.

I. BACKGROUND

A. Factual Background

Except as otherwise noted, the following facts are undisputed.¹

Plaintiff is the inventor on the '237 patent, which is entitled "System, Apparatus, and Method for the Permanent Transfer of Images onto Glossy Surfaces." [ECF No. 68 ¶¶ 1, 3]. The '237 patent contains nine claims reciting a method of permanently transferring images onto glossy surfaces. [Id. ¶ 2]. Plaintiff filed the application that led to the issuance of the '237 patent on September 26, 2006. [Id. ¶ 4]. The U.S. Patent and Trademark Office initially rejected and objected to the proposed claims, Plaintiff responded by amending her claims, and the examiner then allowed those revised claims. [Id. ¶¶ 7, 18, 19, 25]. The '237 patent describes the invention at issue as "discover[ing] that when an iron oxide containing image is printed on the film layer of this type of transfer paper, adhered to a glazed ceramic surface, and subjected to the firing temperatures of a kiln, the residual adhesive, the polymer additives of the toner, and the film under the image, melts or evaporates away." [Id. ¶ 26 (quoting ECF No. 13-1 at 5 (3:4-10)].

Plaintiff, through her company Heirloom Ceramics, sells multi-surface transfer paper with instructions to create custom pieces using her patented process, books describing the process, and kits to make the decals used in the process. [ECF No. 68 ¶¶ 27, 30]. Plaintiff accuses Defendant of engaging in activities that directly infringe the '237 patent's claims through its artist employees and independent contractors, who provide demonstrations at conferences, trade shows, workshops, online, and via instructional videos and DVDs. [Id. ¶ 31].In addition, Plaintiff accuses Defendant of induced infringement through its how-to tutorials and step-by-step instructions in its magazines and trade journals, and through its instructional videos of artists on its YouTube channel, DVDs, online videos and conferences, and its website. [Id. ¶ 32].

B. Procedural Background

Plaintiff commenced this action in April 2016, [ECF No. 1], and later filed an amended complaint, [ECF No. 13]. Plaintiff's sole claim is that Defendant has directly and indirectly infringed the '237 patent. [Id. ¶¶ 28-34]. Defendant filed counterclaims. [ECF No. 15]. The parties submitted briefs on claim construction, [ECF Nos. 30-31, 34-35], and on December 12, 2017, the Court held a Markman hearing, [ECF No. 44]. The Court entered its Order on claim construction on July 26, 2019. [ECF No. 46]. On April 27, 2020, Plaintiff moved to strike portions of Defendant's expert's report, [ECF No. 59], which Defendant opposed, [ECF No. 65]. On May 8, 2020, Defendant moved for summary judgment. [ECF No. 64]. Plaintiff opposed, [ECF No. 66], and Defendant replied, [ECF No. 69].

II. LEGAL STANDARD

A. Motion for Summary Judgment

Summary judgment is appropriate where the moving party can show 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). "[A]n issue is 'genuine' if it 'may reasonably be resolved in favor of either party.'" Robinson v. Cook, 863 F. Supp. 2d 49, 60 (D. Mass. 2012) (alteration in original) (quoting Vineberg v. Bissonnette, 548 F.3d 50, 56 (1st Cir. 2008)). "A fact is material if its resolution might affect the outcome of the case under the controlling law." Cochran v. Quest Software, Inc., 328 F.3d 1, 6 (1st Cir. 2003). Thus, "[a] genuine issue exists as to such afact if there is evidence from which a reasonable trier could decide the fact either way." Id. By invoking summary judgment, "the moving party in effect declares that the evidence is insufficient to support the nonmoving party's case." United States v. Plat 20, Lot 17, Great Harbor Neck, New Shoreham, R.I., 960 F.2d 200, 204 (1st Cir. 1992) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986)).

"To succeed in showing that there is no genuine dispute of material fact, the moving party must . . . 'affirmatively produce evidence that negates an essential element of the non-moving party's claim,' or, using 'evidentiary materials already on file . . . demonstrate that the non-moving party will be unable to carry its burden of persuasion at trial.'" Ocasio-Hernández v. Fortuño-Burset, 777 F.3d 1, 4-5 (1st Cir. 2015) (quoting Carmona v. Toledo, 215 F.3d 124, 132 (1st Cir. 2000)). Conversely, "[t]o defeat a properly supported motion for summary judgment, the nonmoving party must establish a trial-worthy issue by presenting enough competent evidence to enable a finding favorable to the nonmoving party." ATC Realty, LLC v. Town of Kingston, 303 F.3d 91, 94 (1st Cir. 2002) (quoting LeBlanc v. Great Am. Ins. Co., 6 F.3d 836, 842 (1st Cir. 1993)). That is, the nonmoving party must set forth specific, material evidence showing that there is a genuine disagreement as to some material fact. Plat 20, Lot 17, Great Harbor Neck, 960 F.2d at 204 (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986)).

In reviewing the record, the Court "must take the evidence in the light most flattering to the party opposing summary judgment, indulging all reasonable inferences in that party's favor." Cochran, 328 F.3d at 6. The First Circuit has noted that this review "is favorable to the nonmoving party, but it does not give him a free pass to trial." Hannon v. Beard, 645 F.3d 45, 48 (1st Cir. 2011). "The factual conflicts upon which he relies must be both genuine andmaterial," Gomez v. Stop & Shop Supermarket Co., 670 F.3d 395, 397 (1st Cir. 2012), and the Court may discount "conclusory allegations, improbable inferences, and unsupported speculation," Cochran, 328 F.3d at 6 (quoting Medina-Munoz v. R.J. Reynolds Tobacco Co., 896 F.2d 5, 8 (1st Cir. 1990)).

"Patent infringement analysis involves two steps: [(1)] the threshold construction of the meaning and scope of the asserted claim, followed by [(2)] the determination of whether the accused product infringes the properly construed claim." Athletic Alts., Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1578 (Fed. Cir. 1996). "The second step, determination of infringement, whether literal or under the doctrine of equivalents, is a question of fact." Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998). "To support a summary judgment of noninfringement it must be shown that, on the correct claim construction, no reasonable jury could have found infringement on the undisputed facts or when all reasonable factual inferences are drawn in favor of the patentee." Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1353 (Fed. Cir. 2001).

"Literal infringement requires that every limitation of the patent claim be found in the accused device." Durel Corp. v. Osram Sylvania, Inc., 256 F.3d 1298, 1303 (Fed. Cir. 2001) (quoting Gen. Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 981 (Fed. Cir. 1997)). "If no reasonable jury could possibly find that an accused product satisfies every claim limitation of the asserted claims . . . then summary judgment of noninfringement must be granted." EveryScape, Inc. v. Adobe Sys., Inc., 8 F. Supp. 3d 38, 45 (D. Mass. 2014). In contrast, the doctrine of equivalents

requires a showing that the difference between the claimed invention and the accused product or method was insubstantial or that the accused product or method performs the substantially same function in substantially the same way with substantially the same result as each claim limitation of the patented product or method.

Plastic Omnium Advanced Innovation & Rsch. v. Donghee Am., Inc., 943 F.3d 929, 938 (Fed. Cir. 2019) (quoting AquaTex Indus., Inc. v. Techniche Sols., 479 F.3d 1320, 1326 (Fed. Cir. 2007)). "The determination of infringement under the doctrine of equivalents is limited by two primary legal doctrines: (1) prosecution history estoppel and (2) the 'all elements' rule." Seachange Int'l, Inc. v. C-COR Inc., 413 F.3d 1361, 1378 (Fed. Cir. 2005) (quoting Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003)). "The application of these doctrines is a question of law." Id.

B. Motion to Strike²

The admissibility of expert testimony is governed by Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). Federal Rule of Evidence 702 provides that a person

who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if:

(a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;

(b) the testimony is based on sufficient facts or data;

(c) the testimony is the product of reliable principles and methods; and

(d) the expert has reliably applied the principles and methods to the facts of the case.

Fed. R. Evid. 702. The district court must "ensur[e] that an expert's testimony both rests on a...