Inventist, Inc. v. Ninebot Inc.

651 F.Supp.3d 1228

INVENTIST, INC., Plaintiff, v. NINEBOT INC., et al., Defendants.

Civil Action No. 3:16-cv-5688-BJR

United States District Court, W.D. Washington, at Seattle

Signed January 18, 2023

Benjamin J. Hodges, Bianca G. Chamusco, Christopher G. Emch, Margaret Sholian, Foster Garvey PC, Seattle, WA, Yeli Zhou, Pro Hac Vice, Foster Garvey PC, New York, NY, for Plaintiff.

Al Van Kampen, Van Kampen & Crowe PLLC, Seattle, WA, Andrew C. Aitken, Pro Hac Vice, WPAT PC, Bethesda, MD, Justin I-Chih King, Pro Hac Vice, WPAT PC, Vienna, VA, Michael Christian Whitticar, Pro Hac Vice, Nova IP Law PLLC, Warrenton, VA, for Defendant Ninebot (Tianjin) Technology Co., Ltd.

ORDER GRANTING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT; GRANTING IN PART AND DENYING IN PART DEFENDANT'S MOTION FOR SUMMARY JUDGMENT; DENYING IN PART DEFENDANT'S MOTION IN LIMINE

BARBARA J. ROTHSTEIN, UNITED STATES DISTRICT JUDGE

I. INTRODUCTION

Plaintiff Inventist brought suit against Defendant Ninebot, Inc. and its affiliated companies,¹ alleging infringement of U.S. Patent No. 8,807,250 (the " '250 patent") and U.S. Design Patent Nos. D729698 (the " '698 patent") and D673081 (the " '081 patent"). Before the Court are both parties' motions for summary judgment.² Having reviewed the motions, the oppositions thereto, the record of the case, and the relevant legal authorities, the Court will grant Plaintiff's motion for summary judgment, grant in part and deny in part Defendant's motion for summary judgment, and deny in part Defendant's motion in limine. The reasoning for the Court's decision follows.

II. BACKGROUND

The '250 patent is the utility patent for a "powered, gyroscopically balanced unicycle device to be used while standing, having leg contact surfaces which are made of a yielding, slightly soft material whose mild friction against the user's legs allows stable, precise control of the device without restraining the legs in any way." 11/8/18 Hodges Decl., Exh. A, Dkt. 51-1. Other important aspects of the device include that it has a "seatless frame," does not have a "vertically ascending control handle," and has a "means for automatically adjusting speed while executing a turn." See Claim Construction Order, Dkt. 95 at 5-7. The design patents ('081 and '698) relate to the non-functional aspects of the unicycle's appearance. See generally Amended Complaint, Dkt. 38. On September 10, 2021, the Court issued a claim construction order resolving disputes over eight terms in the '250 patent. Claim Construction Order, Dkt. 95. Of those terms, the most relevant at this stage is "leg contact surface," which the Court defined as "a surface, which protrudes from the sides of the device, and which may come into contact with a user's leg, enabling the user to hold the device in place with the lower leg." Id. at 6.

Shane Chen is the alleged inventor of the patents and the creator of Inventist and its affiliated companies. Plaintiff, doing business under the name Solowheel, introduced its unicycle product in 2012. Amended Complaint, Dkt. 38 at 4 ¶ 23; 8/15/22 Aitken Decl., Dkt. 126 at PDF 103. Since 2017, Plaintiff has licensed its patents to various companies who manufacture and sell unicycles under their own names. Def. SJ Mtn., Dkt. 125 at 2.

Defendant's products first entered the market in 2014. 8/15/22 Aitken Decl., Dkt. 126 at PDF 103. Defendant has made three different generations of its unicycle, each of which contains several models. Def. Opp'n to SJ, Dkt. 139 at 3. Its first generation is sometimes referred to as "Ninebot One" and includes the C, C+, E, E+, and P models. Id. Its second generation includes the A1, A2, S1, and S2 models, and the third generation is comprised of the Z6, Z8, Z10. Id. Plaintiff claims that all of these models infringe both its utility and design patents. See Amended Complaint, Dkt. 38 at 5-9. The Court discusses the differences between the generations and models of Defendant's products in greater detail below, and a complete index can be found in Exhibit 3 to the declaration of Defendant's attorney Andrew Aitken. 9/6/22 Aitken Decl., Dkt. 140-3, Exh. 3.

Each party has moved for summary judgment on particular patent claims, defenses, and product models. There is little overlap between the parties' motions, as they each move on different grounds and issues. Accordingly, the Court will first discuss the issues raised in Plaintiff's motion before turning to Defendant's.

III. DISCUSSION

A. Plaintiff's Motion for Summary Judgment

1. Claims 1 and 18 of the Utility Patent

Plaintiff argues that Defendant has not raised a genuine dispute of fact as to claims 1 and 18 of the '250 patent. The crux of those claims is the presence of "leg contact surfaces" used for balance. At claim construction, the Court defined "leg contact surfaces" as "a surface, which protrudes from the sides of the device, and which may come into contact with a user's leg, enabling the user to hold the device in place with the lower leg." Claim Construction Order, Dkt. 95 at 6. Defendant argues that its products do not have leg contact surfaces. E.g., 8/15/22 Hodges Decl., Exh. A-I, Dkt. 128-1 at PDF 55. In its motion for summary judgment, Plaintiff contends that comparing images of Defendant's first-generation product (Ninebot One) and the patented design makes clear that Defendant's product possesses a leg contact surface, and that no reasonable jury could find otherwise.³ Pl. SJ Mtn., Dkt. 127 at 6. Furthermore, Plaintiff argues that Defendant's expert's testimony (to the extent it has been proffered) will not be enough to contradict what is obvious from the images. Id. at 7-8.

Plaintiff offers the following side-by-side comparison of the patented design (the Solowheel product) and Defendant's Ninebot One:

Solowheel Product Image

Ninebot's Product Image (Ninebot One)

Image materials not available for display.

Image materials not available for display.

Image materials not available for display.

Image materials not available for display.

Pl. SJ Mtn., Dkt. 127 at 6.

Defendant contends that its first-generation models do not have leg contact surfaces within the meaning of the patent because the contact surfaces on Defendant's products do not extend "substantially" longitudinally in the direction of travel, even if they admittedly extend in that direction to some lesser degree. Def. Opp'n to SJ, Dkt. 139 at 2. Defendant concedes that it has no expert testimony to counter Plaintiff's position but states that "understanding this limitation does not require expert testimony." Id. at 3. Defendant intends to rely on the language of the patent and fact witnesses who will "testify from personal knowledge" and offer non-scientific opinions. Id.

The Court finds that Defendant has not raised a genuine dispute of fact as to claims 1 and 18. The difference in the measurements of the two contact surfaces is scarcely visible. More importantly, Defendant has not made any argument as to why this difference is material to whether its products functionally possess leg contact surfaces. To rebut Plaintiff's infringement claims, Defendant would need to establish that a small difference in measurement functionally changes the contact surface, likely with the aid of expert testimony that Defendant undisputedly does not have. Accordingly, the Court grants summary judgment as to the infringement of Defendant's first-generation products on claims 1 and 18 (and dependent claims) of the '250 patent.

2. Invalidity Theories Not Pled in Defendant's Invalidity Contentions (Anticipation, Obviousness, Functionality of Design Patents, Enablement, and Improper Inventorship)

Plaintiff asks the Court to strike Defendant's defenses of anticipation, obviousness, functionality of design patents, enablement, and improper inventorship—all subcategories of invalidity—because they were not properly disclosed in Defendant's invalidity contentions and were thus waived. Defendant claims that it gave Plaintiff sufficient notice of its defenses in its invalidity contentions, during discovery, and in its Answer. Def. Opp'n to SJ, Dkt. 139 at 5.

This district's local rules set forth a mandatory procedure by which both parties must "crystallize [their] disputes early in the case." Polaris PowerLED Techs., LLC v. Vizio, Inc., 2020 WL 4258663, at *5 (C.D. Cal. May 14, 2020) (discussing identical rules); see also FullView, Inc. v. Polycom, Inc., 2021 WL 5584766 (N.D. Cal. Nov. 30, 2021) (same). A plaintiff must serve a "Disclosure of Asserted Claims and Infringement Contentions," and the defendant responds with "Non-Infringement and Invalidity Contentions." Local Patent Rule 121. A defendant must set out its invalidity defenses in detail in its invalidity contentions, and it is bound by the disclosures it makes. Id.; Polaris PowerLED Techs., LLC v. Nintendo Co., Ltd., 623 F.Supp.3d 1132, 1139 (W.D. Wash. Aug. 24, 2022) (noting that local rules "require defendants to provide . . . detailed notice of non-infringement and invalidity contentions"); Genentech, Inc. v. Trustees of University of Pennsylvania, 2012 WL 424985, at *1 (N.D. Cal. Feb. 9, 2012) (analyzing identical rule); Beco Dairy Automation, Inc. v. Global Tech Sys., 2015 WL 925588, at *9 (E.D. Cal. Mar. 3, 2015) (noting some districts require detailed invalidity contentions to satisfy notice requirement). For some defenses—such as anticipation and obviousness—the local rules require that a defendant identify "[e]ach item of prior art that allegedly anticipates each Asserted Claim or renders it obvious. Prior art patents shall be identified by number, country of origin, and date of issue." Local Patent Rule 121(b). The parties' disclosures in their opposing contentions set the boundaries of discovery. Local Patent Rule 122.

Prior to discovery, Defendant mentioned the defenses of anticipation, obviousness, functionality of design patents, enablement, and improper inventorship only in its Answer (filed February 16, 2017) to Plaintiff's initial complaint. The...