Cozy, Inc. v. Dorel Juvenile Grp.

678 F.Supp.3d 225

COZY, INC., Plaintiff, v. DOREL JUVENILE GROUP, INC., Defendant.

CIVIL ACTION NO. 21-10134-JGD

United States District Court, D. Massachusetts

Signed June 22, 2023

Joel R. Leeman, Kevin R. Mosier, Lena M. Cavallo, Sharona H. Sternberg, Sunstein LLP, Boston, MA, Abby L. Parsons, Pro Hac Vice, King & Spalding LLP, Houston, TX, Angela C. Tarasi, Pro Hac Vice, King & Spalding LLP, Denver, CO, Brent P. Ray, Pro Hac Vice, King & Spalding LLP, Chicago, IL, Kenneth R. Adamo, Pro Hac Vice, Law Office of KRAdamo, Chicago, IL, Dara M. Kurlancheek, Pro Hac Vice, King & Spalding LLP, Washington, DC, Noah Stid, King & Spalding, Palo Alto, CA, for Plaintiff.

Heather B. Repicky, Robyn S. Maguire, Alison C. Casey, Barnes & Thornburg LLP, Boston, MA, Deborah Pollack-Milgate, Pro Hac Vice, Barnes & Thornburg LLP, Indianapolis, IN, Mark J. Nahnsen, Pro Hac Vice, Barnes & Thornburg LLP, Chicago, IL, for Defendant.

MEMORANDUM OF DECISION AND ORDER ON DOREL'S MOTION FOR SUMMARY DETERMINATION OF PRIORITY DATES

DEIN, United States Magistrate Judge

I. INTRODUCTION

Cozy, Inc. ("Cozy") is a company owned by Dr. Arjuna Rajasingham, the holder of numerous patents relating to safety systems designed to protect occupants of vehicles in the event of a collision. The defendant, Dorel Juvenile Group, Inc. ("Dorel"), is a manufacturer of juvenile products, including child seats for use in vehicles. Since early 2009, Dorel's child seats have incorporated its "Air Protect® technology." By this action, Cozy contends that Dorel's Air Protect® technology infringes on four of its patents, including U.S. Patent Nos. 9,902,298 (the "'298 Patent"), 9,669,739 (the "'739 Patent"), 7,156,416 (the "'416 Patent") and 8,136,835 (the "'835 Patent"). Dorel denies infringement and contends that the asserted patents are invalid and otherwise unenforceable. Additionally, Dorel has brought counterclaims, which Cozy strenuously denies, by which Dorel alleges that Cozy engaged in inequitable conduct in connection with its prosecution of the Patents before the United States Patent and Trademark Office ("PTO").

The matter is before the court on "Dorel Juvenile Group, Inc.'s Motion for Summary Determination of Priority Dates for Asserted Patents" (Docket No. 176), by which Dorel is seeking a determination, pursuant to Fed. R. Civ. P. 56(a), of the priority dates of the four patents asserted against it in this case (the "Asserted Patents"). Specifically, Dorel is seeking a determination that the '298 and '739 Patents are only entitled to priority to their application filing dates of January 20, 2015 and September 9, 2015, respectively, due to a break in the chain of patents claiming priority. It is also seeking a ruling that as a matter of law, both the '416 and '835 Patents claim priority to September 24, 1997, based on Dr. Rajasingham's original claim of priority. Cozy argues that each of the Asserted Patents is entitled to a priority date of November 8, 1999, based on later filings by Dr. Rajasingham, and that the presence of disputed facts warrants the denial of Dorel's motion. For all the reasons detailed below, this court finds that the relevant facts are not in dispute and that Dorel is entitled to judgment as a matter of law. Accordingly, Dorel's motion for summary determination of priority dates is ALLOWED.¹

II. STANDARD OF REVIEW

A. Standard of Review Under Fed. R. Civ. P. 56(a)

Dorel has brought its motion pursuant to Rule 56(a) of the Federal Rules of Civil Procedure, which governs motions for summary judgment. See Fed. R. Civ. P. 56(a). Under Rule 56(a), summary judgment is appropriate when "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Id. "A dispute is 'genuine' if the evidence 'is such that a reasonable jury could resolve the point in the favor of the non-moving party[.]' " Taite v. Bridgewater State Univ., Bd. of Trs., 999 F.3d 86, 93 (1st Cir. 2021) (quoting Ellis v. Fid. Mgmt. Tr. Co., 883 F.3d 1, 7 (1st Cir. 2018)). "[A] fact is 'material' if it 'has the potential of affecting the outcome of the case[.]' " Id. (quoting Pérez-Cordero v. Wal-Mart P.R., Inc., 656 F.3d 19, 25 (1st Cir. 2011)).

When a properly supported motion for summary judgment is presented, the non-moving party can avoid summary judgment only by providing properly supported evidence of a genuine dispute about material facts. See Theriault v. Genesis HealthCare LLC, 890 F.3d 342, 348 (1st Cir. 2018). Accordingly, "the nonmoving party must . . . 'set forth specific facts showing that there is a genuine issue for trial[.]' " Carrozza v. CVS Pharmacy, Inc., 992 F.3d 44, 56-57 (1st Cir. 2021) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 2510, 91 L. Ed. 2d 202 (1986)). In evaluating a motion for summary judgment, the Court must review the record "in a light most favorable to the non-moving party[.]" Lima v. City of E. Providence, 17 F.4th 202, 206 (1st Cir. 2021). Rule 56 "mandates the entry of summary judgment . . . against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Popular Auto, Inc. v. Reyes-Colon (In re Reyes-Colon), 922 F.3d 13, 20 (1st Cir. 2019) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S. Ct. 2548, 2552, 91 L. Ed. 2d 265 (1986)). In the instant case, Dorel has shown that it is entitled to the entry of summary judgment with respect to the priority dates for each of the Asserted Patents.

B. Patent Priority -- In General

"A patent's effective filing date, the 'priority date,' is usually the date on which the patent application is filed with the [PTO], unless the patentee claims the benefit of an earlier-filed application." Worlds, Inc. v. Activision Blizzard, Inc., Civil Action No. 12-10576-DJC, 2014 WL 972135, at *4 (D. Mass. Mar. 13, 2014). In the instant case, Cozy is claiming the benefit of earlier-filed applications with respect to each of the Asserted Patents. With respect to the '298 and '739 Patents, the parties dispute whether Dr. Rajasingham properly claimed priority back to 1999, or whether a defect in the claimed priority chain limits the priority dates of those Patents to their application filing dates. With respect to the '416 and '835 Patents, it is undisputed that Dr. Rajasingham initially attempted to claim priority back to September 24, 1997. At issue is whether his later efforts to amend his priority claims for those Patents properly limited their priority dates to November 8, 1999.

There is no requirement that a patentee claim priority to an earlier patent. See Nat. Alts. Int'l, Inc. v. Iancu, 904 F.3d 1375, 1383 (Fed. Cir. 2018) (noting that patent applicants may "disclaim the benefit of earlier filing dates."). However, "[w]hen inventors file patent applications, they may, at their option, claim priority to a previous patent in the same patent family." (Thomas Decl. ¶ 19).² "[F]or a patent's claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120." Nat. Alts. Int'l, Inc., 904 F.3d at 1380 (emphasis in original) (quoting In re NTP, Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011)). That statute provides in relevant part as follows:

An application for patent for an invention disclosed in the manner provided in section 112(a) . . . in an application previously filed in the United States, . . . which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application . . . .

35 U.S.C. § 120. Accordingly, a patentee claiming priority to an earlier application must establish that (1) the invention described in the new application was disclosed in accordance with 35 U.S.C. § 112(a) "in an application previously filed in the United States[,]" (2) the new application was filed by one or more inventors named "in the previously filed application[,]" (3) the new application is co-pending with the earlier application, or "filed before the patenting or abandonment of or termination of proceedings on the first application[,]" and (4) the new application contains or is "amended to contain a specific reference to the earlier filed application." Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1349-50 (Fed. Cir. 2010) (quoting 35 U.S.C. § 120). "Entitlement to priority under § 120 is a legal determination based on underlying fact findings." Nat. Alts. Int'l, Inc., 904 F.3d at 1379. "When the underlying facts are undisputed, priority date determination is purely a legal question." Id.

An issue in the present case is whether the '298 and '739 Patents comply with the disclosure requirement of Section 120. To satisfy this requirement and "gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112."³ Hollmer v. Harari, 681 F.3d 1351, 1355 (Fed. Cir. 2012) (quoting Zenon Env't, Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007)) (additional citation omitted). In other words, "continuity of disclosure must have been maintained throughout [the] chain of patents" from the earliest patent to which the patentee is claiming priority up to the present claims. See Zenon Env't, 506 F.3d at 1378 ("in order for the '319 patent to be entitled to priority from the '373 patent, continuity of disclosure must have been maintained...