Coconut Grove Pads, Inc. v. Mich & Mich TGR, Inc.

222 F.Supp.3d 222

COCONUT GROVE PADS, INC., Plaintiff,

v.MICH & MICH TGR, INC., Michelle Ostaseski, and Michael Hayes, Defendants.

Mich & Mich TGR, Inc. and Michelle Ostaseski, Counterclaim Plaintiffs,

v.Coconut Grove Pads, Inc., Counterclaim Defendants.

15–CV–2158 (KAM)(GRB)

United States District Court, E.D. New York.

Signed September 30, 2016

Richard Stuart Ross, Fort Lauderdale, FL, for Plaintiff/Counterclaim Defendants.

Gerard F. Dunne, Joseph A. Dunne, Joseph Anthony Dunne, Law Office of Gerard F. Dunne, P.C., New York, NY, for Defendants/Counterclaim Plaintiffs.

MEMORANDUM & ORDER

MATSUMOTO, United States District Judge:

Coconut Grove Pads, Inc. ("CGP") commenced this action principally seeking a declaratory judgment that U.S. Reissue Patent No. 43,766 (the " '766 Patent" or the "patent-in-suit") is invalid and not infringed by CGP. The patent-in-suit is for a bra strap retainer, and CGP named as defendants the owner of the '766 Patent, Mich & Mich TGR Inc.; inventor Michelle Ostaseski; and Mich & Mich principal Michael Hayes (collectively, "Mich & Mich"). Mich & Mich asserted a counterclaim alleging that CGP infringed the '766 Patent.¹

CGP has moved for partial summary judgment of non-infringement and invalidity. For the reasons provided herein, CGP's motion is GRANTED in part and DENIED in part.

BACKGROUND

The facts provided below derive from the parties' Local Rule 56.1 statements, as well as from the exhibits attached by the parties to their respective summary judgment filings.² The court resolves all ambiguities and draws all reasonable inferences in favor of Mich & Mich. See Spiegel v. Schulmann , 604 F.3d 72, 77, 81 (2d Cir. 2010)

This dispute centers on Mich & Mich's patent for a bra strap retainer designed to "prevent[ ] the [bra] straps from falling from the user's shoulders." '766 Patent col.1 ll.20–21. The device "includes a retaining member having an elongate main portion and opposite end portions which are adapted to keep straps of a bra on a user's back in proximate relationship to one another." Id. col.1 ll.37–40. The '766 patent describes a device that "essentially pulls the [bra] straps on the user's back together" and provides an "easy and convenient [method] to wind the straps disposed upon the user's back through the bra strap retainer." Id. col.3, 2–3, 5–7.

The original application that eventually led to the patent-in-suit was U.S. Patent Application 11/087,929 (the " '929 Application"). The '929 Application resulted in the issuance of U.S. Patent 7,278,900 (the " '900 Patent"). A reissue application, U.S. Patent Application 12/575,600 (the " '600 Reissue Application"), followed to obtain additional claims for the '900 patent.³ The '600 Reissue Application resulted in the issuance of the '766 Patent, the patent-in-suit in the instant action. The '766 Patent is identical to the '900 Patent, with a single exception. The '766 Patent adds four method claims: claims 12, 13, 14, and 15. Claims 1 through 11 of the '766 Patent are the exact same claims present in the '900 Patent.⁴

Mich & Mich contends that CGP—by marketing and selling CGP's Racer Back Bra Clips and The Natural clips—infringes claims 1, 3, 4, 5, 6, 8, 12, 13, and 14 of the '766 Patent.⁵ (ECF No. 52, at ¶ 68; CGP Ex. 7, Amended Disclosure of Asserted Claims and Infringement Contentions with Claim Chart.) Two distinctions are relevant to the analysis that follows. The first is the distinction between "apparatus" claims (sometimes referred to as "device" claims) and "method" claims. An apparatus claim "is directed to a device's structure," Amy L. Landers, Understanding Patent Law § 4.04[B] (2012), whereas a "method claim is a series of steps of manipulation, whether the steps would be performed wholly by machine or partly by a person, so long as they are not purely mental steps." EBS Dealing Res., Inc. v. Intercontinental Exch., Inc. , 379 F.Supp.2d 521, 524 n.2 (S.D.N.Y. 2005) (internal quotation marks and citations omitted). Claims 1, 3, 4, 5, 6, and 8 of the '766 Patent are apparatus claims. Claims 12, 13, and 14 of the '766 Patent are method claims.

The second relevant distinction is between independent and dependent claims. Independent claims stand alone and do not reference any other claim, whereas dependent claims reference broader independent or dependent claims and commonly express particular embodiments. See 35 U.S.C. § 112. Claims 1, 6, 8, and 12 of the '766 Patent are independent claims, whereas claims 3, 4, 5, 13, and 14 are dependent claims. The court need only construe the independent claims—claims 1, 6, 8, and 12, which contain all of the disputed language—in order to resolve the issues presented in this action. See Cognex Corp. v. Int'l Trade Comm'n , 550 Fed.Appx. 876, 881 (Fed. Cir. 2013) ("[A] dependent claim necessarily cannot be infringed if the independent claim is not infringed...." (citation omitted)).

On August 20, 2014, CGP brought an action against Mich & Mich seeking a declaratory judgment of non-infringement and invalidity of the '766 Patent. (ECF No. 1.) CGP twice amended its complaint (ECF Nos. 24, 56), asserting additional counts not relevant here, and Mich & Mich counterclaimed alleging that CGP is infringing the '766 Patent. (ECF No. 52.) CGP has moved for partial summary judgment on the grounds that it does not infringe the '766 patent and that the '766 patent is invalid, and has filed a memorandum in support of its motion. (ECF No. 75, CGP's Memorandum in Support of Motion for Partial Summary Judgment ("CGP Mem.").) Mich & Mich filed an opposition memorandum, to which CGP replied. (ECF No. 76, Mich & Mich's Memorandum in Opposition to CGP's Motion for Partial Summary Judgment ("Mich & Mich Opp'n"); ECF No. 77, CGP's Reply in Support of Partial Motion for Summary Judgment ("CGP Reply").)

LEGAL STANDARD

Summary judgment is appropriate "only where there is no genuine issue of material fact to be tried, and the facts as to which there is no such issue warrant the entry of judgment for the moving party as a matter of law." Kaytor v. Electric Boat Corp. , 609 F.3d 537, 545 (2d Cir. 2010). A dispute of material fact is genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In deciding a motion for summary judgment, the court must resolve all ambiguities and draw all reasonable inferences in favor of the nonmovant. See Zalaski v. City of Bridgeport Police Dep't , 613 F.3d 336, 340 (2d Cir. 2010).⁶

Summary judgment on the issue of infringement is proper only when "no reasonable jury could find that every limitation recited in a properly construed claim either is or is not found in the accused device either literally or under the doctrine of equivalents." Spiel Assocs., Inc. v. Gateway Bookbinding Sys., Ltd. , No. 03-CV-4696, 2010 WL 546746, at *6 (E.D.N.Y. Feb. 16, 2010) (citing PC Connector Solutions LLC v. SmartDisk Corp. , 406 F.3d 1359, 1364 (Fed. Cir. 2005) (citation omitted)).

DISCUSSION

"A two-step process is used in the analysis of patent infringement: first, the scope of the claims are determined as a matter of law, and second, the properly construed claims are compared to the allegedly infringing device to determine, as a matter of fact, whether all of the limitations of at least one claim are present, either literally or by a substantial equivalent, in the accused device." Teleflex, Inc. v. Ficosa N. Am. Corp. , 299 F.3d 1313, 1323 (Fed. Cir. 2002).

The court's analysis proceeds in the following manner. First, the court provides an explanation of relevant claim construction principles. Second, the court addresses claim construction and infringement regarding independent apparatus claims 1, 6, and 8. Third, the court addresses claim construction and infringement regarding independent method claim 12. Finally, the court addresses the limited invalidity concern that arises as a result of the court's determination that genuine issues of material fact preclude summary judgment of non-infringement on the method claims.

I. General Claim Construction Principles

"[T]he construction of a patent, including terms of art within its claim, is exclusively within the province of the court." Markman v. Westview Instrs., Inc. , 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). "Courts are permitted on summary judgment to construe the claims of the patent at issue to determine their meaning and scope, followed by a determination of whether evidence offered raises a triable issue of fact with regard to infringement." Mich & Mich. TGR, Inc. v. Brazabra, Corp. , 128 F.Supp.3d 621, 631–32 (E.D.N.Y. 2015).

"[T]he words of a claim are generally given their ordinary and customary meaning." Phillips v. AWH Corp. , 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (internal quotation marks and citation omitted). "When construing claims, the claims and the rest of the patent, along with the patent's prosecution history (together, the intrinsic evidence of the meaning of the claims) are the primary resources." Finisar Corp. v. DirecTV Grp., Inc. , 523 F.3d 1323, 1328 (Fed. Cir. 2008).

Courts first "look to the words of the claims themselves, both asserted and nonasserted, to define the scope of the patented invention." Semitool, Inc. v. Dynamic Micro Sys. Semiconductor Equip. GmbH , 444 F.3d 1337, 1346 (Fed. Cir. 2006) (internal quotation marks and citation omitted). Claim terms "are generally given their ordinary and customary meaning." Phillips , 415 F.3d at 1312 (internal quotation marks and citation omitted). "[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention...." Id. at 1313.

"[S]econd, 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." Vitronics Corp....