Mobiloc, LLC v. Neutron Holdings, Inc.

555 F.Supp.3d 1040

MOBILOC, LLC, Plaintiff,

v.NEUTRON HOLDINGS, INC. dba Lime, Defendant.

No. 2:20-CV-1570-BJR

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

Signed August 19, 2021

Anthony E. Dowell, Pro Hac Vice, Greg N. Geiser, Pro Hac Vice, Lauren O. Devereux, Pro Hac Vice, Gutwein Law, Lafayette, IN, Philip S. McCune, Diana S. Breaux, Summit Law Group, Seattle, WA, for Plaintiff.

Jennifer D. Bennett, Pro Hac Vice, Dentons US LLP, San Francisco, CA, Katherine Ramlose McMorrow, Pro Hac Vice, Dentons US LLP, Los Angeles, CA, Kevin R. Greenleaf, Pro Hac Vice, Mark Hogge, Pro Hac Vice, Dentons US LLP, Washington, DC, Barbara J. Duffy, Joseph D. Adamson, Lane Powell PC, Seattle, WA, Kenneth Ray Davis, II, Lane Powell, Portland, OR, for Defendant.

ORDER ON DEFENDANT'S MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT AND ON MOTIONS TO SEAL

Barbara Jacobs Rothstein, United States District Court Judge

This matter is before the Court on Defendant's Motion for Summary Judgment of Non-Infringement. Dkt. No. 38. The parties have also filed two motions to seal materials submitted in connection with the summary judgment motion. Dkt. Nos. 36 and 45.

Having reviewed the materials submitted in support of and in opposition to this motion, and having heard oral argument from the parties, the Court GRANTS Defendant's Motion for Summary Judgment. The Court also GRANTS the motions to seal. The reasons for the Court's decision are set forth below.

I. Background

Plaintiff Mobiloc, LLC filed this patent infringement action on October 23, 2020, against Defendant Neutron Holdings Inc., which is doing business as "Lime." Plaintiff owns U.S. Patent No. 8,854,207 ("the '207 patent"), which is entitled "Mobile Lock with Retractable Cable." Dkt. No. 9. The '207 patent discloses a mobile lock that contains a cable that retracts from the "body component" of the lock. The mobile lock includes an "attachment component" to attach the lock to the bicycle.

Of primary importance for the purposes of this motion, the mobile lock disclosed in the '207 patent also includes "a location component inside the body component" of the mobile lock. Id. , Claim 1 (emphasis added). The "location component" includes a Global Positioning System (GPS) location chip set. Id. The abstract for the '207 patent indicates that this "integral wireless locator system ... can precisely locate the mobile device in real-time if stolen." Id. , Abstract.

Defendant operates fleets of electric bicycles ("e-bikes") that are available for rent to customers through a mobile phone application. Plaintiff's complaint alleges that Defendant's "Model 5.5 JUMP e-bike" infringes the '207 patent.

Defendant's e-bike has a lock with a retractable cable; however, the lock does not have a GPS chip inside of it. Instead, the accused e-bike has a GPS chip in an electronics module on the handlebars of the bike. The electronics module of the accused e-bike "is connected by a wire to the components ‘inside the body component’ of the mobile lock." Dkt. No. 43 at 3.

Defendant denies that the accused e-bike infringes the '207 patent, asserting that its e-bikes "do not include the claimed ‘mobile lock’ with ‘a location component inside the body component’ as required by every claim of the '207 patent." Dkt. No. 34 at 5.¹

On March 2, 2021, the parties filed a stipulation which indicated that they "have identified an issue that may be case dispositive, and agree that it would streamline matters in this case to have the Court's determination of this issue before time consuming and expensive claim construction proceedings and further exchange of discovery." Dkt. No. 37 at 1-2. The parties indicated that Defendant planned to file a motion for summary judgment asserting that its accused e-bikes do not infringe any claim of the '207 patent because all claims require "a location component inside [a] body component" of a lock, and the accused e-bike does not have a location component "inside" a body component of its lock. Id. at 2. In this stipulation, Plaintiff acknowledged that the "location component" of the accused e-bike is not located inside the "body component" of a lock; however, Plaintiff asserted that Defendant's e-bike infringed the '207 patent under the doctrine of equivalents. Id. The parties stated that they "agree that the Court may determine this disputed infringement and Doctrine of Equivalents issue without interpretation of any disputed claim terms in the asserted patent." Id. They also indicated that "the discovery and contentions exchanged thus far are more than likely sufficient for the parties to brief this disputed issue and for the Court to decide this issue." Id.

In light of this stipulation, the Court granted the parties’ request to stay discovery and claim construction briefing pending a ruling on Defendant's motion for summary judgment.

II. Discussion

A. Legal Standard

Summary judgment is appropriate when "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). In considering a motion for summary judgment, the Court views the evidence in the light most favorable to the non-moving party. Scott v. Harris , 550 U.S. 372, 378, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007).

B. Claim Vitiation and the Doctrine of Equivalents

Defendant's motion for summary judgment of non-infringement focuses on fact that its accused e-bike does not have a "location component" (i.e., a GPS chip) that is inside the "body component" of its lock. Plaintiff acknowledges that the location component on the accused device is not inside the lock, and as a result the accused device does not literally infringe the '207 patent. However, Plaintiff maintains that the accused device nonetheless infringes the '207 patent under the doctrine of equivalents.

Under the doctrine of equivalents, a product that "does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product ... and the claimed elements of the patented invention." Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co. , 520 U.S. 17, 21, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). Equivalence may be demonstrated under either: (1) the "insubstantial differences" test; or (2) the "function-way-result" test, which asks "whether the element of the accused device performs substantially the same function, in substantially the same way, to achieve substantially the same result, as the limitation at issue in the claim." Dawn Equip. Co. v. Kentucky Farms, Inc. , 140 F.3d 1009, 1015-16 (Fed. Cir. 1998).

The Supreme Court has noted that "[w]here the evidence is such that no reasonable jury could determine two elements to be equivalent, district courts are obliged to grant partial or complete summary judgment." Warner-Jenkinson , 520 U.S. at 39 n.8, 117 S.Ct. 1040. Similarly, the Federal Circuit has held that "[a]lthough equivalence is a factual matter normally reserved for a fact finder, the trial court should grant summary judgment in any case where no reasonable fact finder could find equivalence." Sage Prods., Inc. v. Devon Indus., Inc. , 126 F.3d 1420, 1423 (Fed. Cir. 1997).

Defendant argues that Plaintiff's theory of equivalence must fail as a matter of law because it would improperly "vitiate" the claim element in the '207 patent that requires a GPS chip to be located inside of the mobile lock. The Supreme Court has held that "under the particular facts of a case ... if a theory of equivalence would entirely vitiate a particular claim element, partial or complete judgment should be rendered by the court." Warner-Jenkinson , 520 U.S. at 39 n.8, 117 S.Ct. 1040.

The Federal Circuit has explained that " ‘[v]itiation’ is not an exception to the doctrine of equivalents, but instead a legal determination that ‘the evidence is such that no reasonable jury could determine two elements to be equivalent.’ " Advanced Steel Recovery, LLC v. X-Body Equip., Inc. , 808 F.3d 1313, 1320 (Fed. Cir. 2015) (citations omitted). The Federal Circuit has noted that "saying that a claim element would be vitiated is akin to saying that there is no equivalent to the claim element in the accused device based on the well-established ‘function-way-result’ or ‘insubstantial differences’ tests." Brilliant Instruments, Inc. v. GuideTech, LLC , 707 F.3d 1342, 1347 (Fed. Cir. 2013). As a result, to determine whether Plaintiff's theory of equivalence would "vitiate" a claim element in the '207 patent, the Court considers whether a reasonable jury could find equivalence under either the "insubstantial differences" test or the "function-way-result" test.

1. Insubstantial Differences Test

"Under the insubstantial differences test, ‘[a]n element in the accused device is equivalent to a claim limitation if the only differences between the two are insubstantial." Voda v. Cordis Corp. , 536 F.3d 1311, 1326 (Fed. Cir. 2008). Here, the Court finds that there are substantial differences between locating a GPS chip inside a mobile lock, as claimed in the '207 patent, and locating a GPS chip outside of the lock and connecting it to the interior of the lock by a wire.

As the Federal Circuit has noted, "courts properly refuse to apply the doctrine of equivalents ‘where the accused device contain[s] the antithesis of the claimed structure.’ In such a case, application of the doctrine of equivalents would ‘vitiate’ a claim element." Deere & Co. v. Bush Hog, LLC , 703 F.3d 1349, 1356 (Fed. Cir. 2012) (internal citations omitted). Here, "inside" is the opposite of "outside."

Therefore, finding equivalence would vitiate the claim element. See Brilliant Instruments , 707 F.3d at 1347 (noting "[t]he vitiation concept has its clearest application where ‘the accused device contain[s] the antithesis of the claimed structure.’ "); Moore U.S.A., Inc. v. Std. Register Co. , 229 F.3d 1091, 1106 (Fed. Cir. 2000) ("[I]t would defy logic to conclude that a...