Nano-Second Tech. Co. v. Dynaflex Int'l, Corp.

944 F.Supp.2d 855

NANO–SECOND TECHNOLOGY CO., LTD., a Taiwanese Corporation, Plaintiff,

v.DYNAFLEX INTERNATIONAL, a California Corporation., and GForce Corp. d/b/a DFX Sports & Fitness, a Nevada Corporation, Defendants.

No. CV 10–9176 RSWL (MANx).

United States District Court, C.D. California.

May 10, 2013.

Tony Ming Lu, Law Offices of Tony M. Lu, Diamond Bar, CA, Andrew D. Shupe, Rasheed McWilliams, Adli Law Group PC, Los Angeles, CA, for Plaintiff.

Alan C. Chen, James E. Doroshow, Samuel L. Alberstadt, Fox Rothschild LLP, Allison Rand Hilgers, Alderman and Hilgers LLP, Los Angeles, CA, Christopher R. Kinkade, Fox Rothschild LLP, Lawrenceville, NJ, Jeff E. Schwartz, Fox Rothschild LLP, Washington, DC, for Defendants.

ORDER Re: Defendants' Motion for Partial Summary Judgment of Invalidity [230]

RONALD S.W. LEW, Senior District Judge.

Currently before the Court is Defendants Dynaflex International and GForce Corporation's (“Defendants”) Motion for Partial Summary Judgment of Invalidity [230]. The Court having reviewed all papers submitted pertaining to this Motion and having considered all arguments presented to the Court, NOW FINDS AND RULES AS FOLLOWS:

The Court hereby GRANTS Defendants' Motion for Partial Summary Judgment.

I. BACKGROUND

Plaintiff Nano–Second Technology Co. (“Plaintiff”) brought this Action against Defendant Dynaflex International and Defendant GForce Corporation d/b/a DFX Sports & Fitness (“Defendants”) alleging infringement of Plaintiff's patent, United States Patent No. 5,800,311 (“'311 Patent”).

The patent-in-suit involves a gyroscopic wrist exerciser containing light emitting diodes, a counter, and a string used to impart rotation on the rotor. See ECF No. 230–1, Schwartz Decl., Ex. 1. (the '311 Patent).

Specifically, the wrist exerciser (10) claimed in the '311 patent includes a spherical rotor (40) mounted on a ring (30) within a hollow spherical casing (60),(11). The exerciser comes with a flexible rope (56) with a rigid end (55) that is inserted into a driving hole (45) formed in the groove (42) of the rotor (40). The rope (56) sits on the groove (42) and wraps around the rotor (40). The user can hold the exerciser (10) in one hand, while pulling the rope (56) with the other, to impart rotation to the rotor (40). Once the rotor (40) is given an initial spin, the user can gyrate the exerciser manually to cause the rotor to precess about an axis perpendicular to its spin axis.

The wrist exerciser (10) is also equipped with lighting elements (43) in the form of light emitting diodes (LEDs) arranged in the groove (42) of the rotor (40). The LEDs are energized by coils (53) that are mounted on the rotor (40) and a magnet (34) that is mounted on the ring (30). The coils rotate within the magnetic lines of force of the magnet, which induces an electric current within the coils, and provide electricity to the LEDs. Finally, the wrist exerciser contains a counter (20) that displays the number of rotations of the rotor.

Plaintiff has asserted claims 1–5, 7, 9–12, 15, and 17 (“asserted claims”) of the '311 Patent in this Action. Defendant moves for partial summary judgment of invalidity on each of these claims. Claims 1 and 15 are independent claims.

Claim 1 recites the following:

A wrist exerciser comprising a spherical casing having a first axis and a second axis substantially perpendicular to each other, a ring received within the spherical casing to be concentric with and rotatable about the first axis with respect to the casing and a spherical rotor received within the ring and having a rotational axis co-linear with the second axis to be rotatable about the second axis with respect to both the casing and the ring, the rotor having an outer surface on which a circumferential groove is formed with a driving hole formed in the groove, a flexible rope having a rigid end receivable in and engageable with the driving hole. The flexible rope being windable around the outer surface of the rotor along the groove through a top opening formed on the casing so that the rotor is driven to rotate about the second axis by pulling to unwind the rope from the rotor, light generation means mounted on the rotor to emit light during the rotation of the rotor.

Claims 2, 5, and 9 depend on Claim 1. Claim 2 discloses the additional limitation of “electrically driving lighting elements disposed in the groove” and an “electrical generator means.” Claim 5 discloses the additional limitation of a “counter”. Claim 9 discloses the further limitation of partition plates that generate sound during rotation of the rotor. Claim 7 depends on Claim 5, and discloses a counter attached to the bottom opening of the casing, with a proximity detector actuateable by a magnet fixed in the groove of the rotor.

Claim 15 is identical to Claim 1 except that Claim 15 recites “a counter being provided to count the rotations of the rotor about the second axis” instead of “light generation means.” Claim 17 depends upon Claim 15, and discloses the additional limitation of a counter having a proximity detector actuateable by a magnet fixed in the groove of the rotor.

Previously, the Court construed the following claim terms: “driving hole”; “light generation means”; and “electrical generator means” [97].

The Court construed “light generation means” as a means-plus-function claim. The claimed function is “to generate light and emit light during rotation of the rotor”. The Court found that the following structure corresponds to this function:

A ring magnet fixed to the ring and coaxial with the second axis and two coils fixed to the rotor and corresponding to the ring magnet for generating electrical current to power the light-emitting diodes [LEDs], which are disposed in the groove of the rotor and electrically connected to the coils.

The Court construed “electrical generator means” as a means-plus-function limitation. The claimed function is “supplying electrical current to the lighting elements.” The Court construed the corresponding structure as “coils that cut through the magnetic line of force provided by the ring magnet; and a ring magnet fixed to the ring and coaxial with the second axis and two coils fixed to the rotor and corresponding to the ring magnet for generating electrical current to power the LEDs.”

In its Motion, Defendants assert that at least five pieces of prior art render the '311 Patent obvious: U.S. Patent No. 5,353,655 (“the '655 Patent”); U.S. Patent No. 3,726,146 (“the Mishler '146 Patent”); U.S. Patent No. 3,945,146 (“the Brown '146 Patent”); U.S. Patent No. 4,150,580 (“the '580 Patent”); and U.S. Patent No. D365,612 (“the '612 Patent”).

II. LEGAL STANDARD

A. Summary Judgment

Summary judgment is appropriate when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56. A genuine issue is one in which the evidence is such that a reasonable fact-finder could return a verdict for the non-moving party. Anderson v. Liberty Lobby, 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

A party seeking summary judgment always bears the initial burden of establishing the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). “Where the moving party will have the burden of proof on an issue at trial, the movant must affirmatively demonstrate that no reasonable trier of fact could find other than for the moving party.” Soremekun v. Thrifty Payless, Inc., 509 F.3d 978, 984 (2007).

Once the moving party makes this showing, the non-moving party must set forth facts showing that a genuine issue of disputed material fact remains. Celotex, 477 U.S. at 322, 106 S.Ct. 2548. The non-moving party is required by Federal Rule of Civil Procedure 56(e)¹ to go beyond the pleadings and designate specific facts showing a genuine issue for trial exists. Id. at 324, 106 S.Ct. 2548.

B. Obviousness

A party seeking to establish that patent claims are invalid must overcome the statutory presumption of validity set forth in 35 U.S.C. § 282 by clear and convincing evidence. Impax Labs., Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1314 (Fed.Cir.2008).

A patent is invalid for obviousness under 35 U.S.C. § 103 “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” Takeda Chem. Indus. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1355 (Fed.Cir.2007).

Obviousness analysis is “objective”:

Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007) (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), and stating that the Graham factors still control).

“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. at 418, 127 S.Ct. 1727.

In other words,...