Fisher-Price, Inc. v. Safety 1st Inc. Co., C.A. No. 01-51 (D. Del. 6/14/2002)

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FISHER-PRICE, INC., Plaintiff, v. SAFETY 1st, INC., CO., Defendants.

C.A. No. 01-51.

United States District Court, D. Delaware.

June 14, 2002.

MEMORANDUM AND ORDER

GREGORY M. SLEET, District Judge.

I. INTRODUCTION

On January 26, 2001, Fisher-Price filed an action for a declaratory judgment asserting that certain of the defendant's products, namely the 2-in1-Bouncenette ("Bouncenette") and the Magic Motion Bassinet ("Magic Motion") infringed five of Fisher-Price's patents. The patents at issue are U.S. Patent Nos. 5,660,435 (the `435 patent), 5,947,552 (the `552 patent), 6,257,659 (the `659 patent), 6,247,755 (the `755 patent), and 431,940 (the `940 patent). Safety 1st answered the complaint by asserting the affirmative defense of invalidity as to the `755, `940, `435 and `552 patents. Safety 1st's answer also presented counterclaims of invalidity on these patents. A Markman hearing was held on March 6, 2002. The court issued a Markman order construing the disputed terms of the `435, `552, and `659 patents on April 2, 2002.¹ The jury trial in this case is scheduled for July 22, 2002.

Presently before the court are Safety 1st's motions for partial summary judgment on each of the five patents. Safety 1st asserts that the `940 and `755 patents are invalid under the on-sale bar outlined in 35 U.S.C. § 102(b) because the products at issue were offered for sale in the United States more than one year before the patent application. Fisher-Price responds that there was no sale or offer for sale, and that even if there were, the sale did not take place in the United States.

Safety 1st further argues that its products do not literally infringe the `435, `552, or `659 patents and therefore summary judgment should be granted in its favor. Safety 1st also asserts that the `435 and `552 patents are invalid because they are anticipated by prior art. Fisher-Price responds that there are several genuine issues of material fact that must be resolved before summary judgment on literal infringement or invalidity of any of these three patents will be appropriate. Fisher-Price also asserts that Safety 1st failed to present any facts on infringement under the doctrine of equivalents. Safety 1st asserts that it is Fisher-Price's burden to produce evidence on the doctrine of equivalents, and that since Fisher-Price has failed to do so, summary judgment should be granted in its favor on that issue for the `435, `552, and `659 patents.

Upon review of the parties' submissions, the patents at issue, and the applicable law, the court will deny the motions for partial summary judgment of invalidity of the `940 and `755 patents. Although it seems likely that products covered by these patents were offered in the United States, there is a question of fact concerning whether Fisher-Price's conduct was sufficient to constitute an offer for sale under the on-sale bar. Thus, summary judgment on in invalidity of the `940 and `755 patents under the § 102(b) on-sale bar is inappropriate on the current record.

With respect to the infringement of the `435, `552, and `659 patents under the doctrine of equivalents, the court concludes that Fisher-Price has failed to meet its burden on this issue. Therefore, the court will grant summary judgment in favor of the defendant on the issue of infringement under the doctrine of equivalents on the `435, `552, and `659 patents.

Regarding the literal infringement of the `435 patent, the court finds that its previous ruling on claim construction precludes a finding that either of Safety 1st's products literally infringe the mechanisms disclosed in the `435 patent. However, there is a genuine issue of material fact as to whether the `435 patent is anticipated by prior art. Therefore, Safety 1st's motion for partial summary judgment will be granted as to the issue of literal infringement but will be denied as to the issue of invalidity.

Turning to the `552 patent, the court finds that there are genuine issues of material fact that preclude summary judgment on the issue of literal infringement. Additionally, there is a question of fact as to whether the patented product was anticipated by prior art. Thus, the court will deny the defendant's motion for partial summary judgment on the `552 patent as to both literal infringement and invalidity.

Finally, as to the `659 patent, the court finds that there are no genuine issues of material fact and that the evidence of record clearly demonstrates that Safety 1st's Bouncenette product does not literally infringe the `659 patent.² Thus, Safety 1st is entitled to judgment as a matter of law on the literal infringement issue. Since Fisher-Price has waived its arguments under the doctrine of equivalents, summary judgment for the defendant as to both literal and equivalent infringement of `659 patent by the Bouncenette product is appropriate. The court will now explain its reasoning.

II. FACTS

A. The Allegedly Infringing Products

Safety 1st manufactures and sells both the Bouncenette and the Magic Motion products. The products are similar to each other in several ways. Both products are canopy-covered bassinets designed to hold an infant that cannot crawl or walk. Both bassinets have a pliable seatback that can be manipulated between two different positions for baby. In the first position, the seatback is placed into an L-shape, which places the baby into a semi-upright position. In the second option, the seatback is placed in a nearly horizontal position, which allows the baby to lie down in the bassinet.

The Safety 1st products also employ similar means to maneuver the seatback from the horizontal to the seated position. The seatbacks of both bassinets are equipped with straps that have plastic buckles attached to the end of the straps. When the two ends of the buckles are engaged, the straps are pulled taut and the seatback is placed into the semi-seated position. When the buckles are unfastened, the straps are disconnected and the seatback is released into the horizontal position.

Both bassinets also have canopies. The canopies are supported by semi-circular or U-shaped rigid interior supports. The U-shaped supports are then connected to the bassinet's support frame at various points. Both bassinets also have enclosed areas, or housing assemblies, that cover or support certain parts of the support frame. The housing assembly of the Magic Motion is quite large, extending approximately fifteen inches from the floor to the upper edge of the bassinet frame. The housing is attached to the central portion of the bassinet frame. By contrast, the housing assemblies on the Bouncenette are much smaller, roughly 6.5 inches, and do not extend to the bassinet frame. The housings are attached at the rear of the bassinet frame. They are not attached to the central portion of the bassinet frame where the U-shaped supports are connected to each other.

B. The `940 and `755 Patents³

The `940 patent is a patent for the "Dome Away from Home" or "Bounce-n-Play Activity Dome." The `755 patent covers the "Carrier Harness." The application for the `940 patent was filed on May 14, 1999. The `755 patent application was filed on July 28, 1998.⁴

At some point prior to the filing of the patents at issue, Fisher-Price developed quote packages for each product. A quote package is a set of information compiled by Fisher-Price to assist it in obtaining price quotes from the vendors who will eventually manufacture the product. Fisher-Price's quote packages generally contain drawings, tool plans, parts lists, product specifications and other information that a potential vendor might use to develop a price quote for the production of the desired product.

Fisher-Price states that its quote solicitation process operates in this fashion: Once assembled, Fisher-Price sends its quote packages to two of its Asian affiliates — Mattel Asia Pacific Sourcing ("MAPS") and Mattel Vendor Operations Asia, Ltd. ("MVOA"). Both MAPS and MVOA are located in Hong Kong, China. MAPS and MVOA are responsible for sending the quote packages to Asian vendors in order to solicit price quotes for production. The vendors generally reply to the solicitations with a price quote within four weeks. Fisher-Price asserts that the vendor quotes typically do not specify the total number of products to be produced because the actual ordering is done later. Fisher-Price states that after the vendor quotes are received, MAPS and MVOA negotiate with the vendors and then provide Fisher-Price with a recommendation and details of the quotes.

When MAPS or MVOA reach a decision to negotiate with a vendor, they generate a document called an Initial In-Line Commitment form ("Initial In-Line") and send it to Fisher-Price. Fisher-Price asserts that after the Initial In-Line is signed, the product continues to be developed and a Final In-Line Commitment form ("Final In-Line") is generated and subsequently sent to Fisher-Price for approval. According to Fisher-Price, the Final In-Line must be approved by Fisher-Price before the details of production are negotiated between MVOA or MAPS and the vendor. Once the details are finalized, Fisher-Price will submit a purchase order to the vendor ordering a certain amount of product to be produced by a certain date.

In the present case, Fisher-Price sent the quote packages for the `755 and `940 patents to MAPS and MVOA. MAPS and MVOA then sent the quote packages to various vendors to solicit price quotes for production. Fisher-Price asserts (and Safety 1st does not dispute) that all of the targeted vendors were located in Asia.

As MVOA and MAPS began soliciting offers from various vendors, the vendors began to respond. A vendor named Pointsder submitted a price quote for the production of the Carrier Harness disclosed in the `755 patent. Similarly, Jetta, Kiddyco, and Qualidux submitted price quotes for the Bounce-n-Play Activity Dome. Negotiations continued after the vendors submitted price...