Wonderland Nurserygoods Co. v. Thorley Indus. LLC

WONDERLAND NURSERYGOODS CO., LTD., Plaintiff, v. THORLEY INDUSTRIES LLC (d/b/a 4MOMS), Defendant.

Civil Action No. 2:13-cv-00387

UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA

August 21, 2015

Judge Mark R. Hornak

OPINION

Mark R. Hornak, United States District Judge

This is a patent case about a baby crib. Plaintiff, Wonderland Nurserygoods Co., Ltd. ("Wonderland"), has a patent entitled "Baby Crib," which is United States Patent No. RE 43,919 ("the '919 patent"). Wonderland alleges that Thorley Industries LLC d/b/a/ 4moms ("Thorley") infringed the '919 patent with its own product, the Breeze, a foldable child enclosure. Wonderland says that the Breeze impermissibly infringes the '919 patent. Thorley disagrees. Both parties ask for summary judgment on the issue of infringement. Wonderland also asks for summary judgment on the issue of validity, requesting that the Court determine as a matter of law that the '919 patent is not invalid.

The parties are also preparing for trial and have filed several Motions in Limine. Thorley filed two such motions, one of them to exclude part of the testimony of Jerry Drobinski, Wonderland's technical expert, and the other to exclude the entire testimony of Wonderland's damages expert, Michael Chase. Wonderland has made one motion in limine to exclude the testimony of Thorley's damages expert, Mark Gleason.

For the reasons that follow, the Court will deny the cross Motions for Summary Judgment on the issue of infringement; deny Wonderland's Motion for Summary Judgment on the issue of validity; grant Thorley's motion to exclude part of the testimony of Jerry Drobinski; grant Thorley's motion to exclude the testimony of Michael Chase; and deny Wonderland's motion to exclude the testimony of Mark Gleason.

I. BACKGROUND

This civil action for infringement involves Wonderland's United States Patent No. RE 43,919 ("the '919 patent"), which is entitled Baby Crib. ECF No. 75-1. On March 1, 2005, U.S. Patent No. 6,859,957 (the '957 patent) was granted. ECF No. 74, at ¶2; ECF No. 93, at ¶2. Thereafter, on October 26, 2006, Wonderland filed an application to reissue the '957 patent, in order to seek broader claims. ECF No. 74, at ¶3; ECF No. 93, at ¶3. The Baby Crib is what it sounds like: a foldable child enclosure or a play yard or playpen.

Thorley, the Defendant, makes, uses, sells, and offers to sell a product called the Breeze, which is a foldable child enclosure. ECF No. 71, at ¶1; ECF No. 92, at ¶1. The Breeze is the accused product in this case. Id. Wonderland asserts that accused product infringes the '919 Patent in violation of 35 U.S.C. § 271. ECF No. 1, at ¶¶9-10.

Wonderland claims that it is entitled to an entry of a permanent injunction against Thorley, pursuant to 35 U.S.C. § 283, to prevent further infringement. Id. Moreover, Wonderland asserts that it is entitled to damages plus interest, pursuant to 35 U.S.C. § 284, for past and current infringement. Id. Finally, Wonderland believes it should be awarded costs and fees under 35 U.S.C. § 285. Id. Thorley denies that it has infringed the '919 patent, ECF No. 15, and brings counterclaims for (1) a declaration of non-infringement of the '919 patent and (2) a declaration of invalidity of the '919 patent, id. at 4-6; ECF No. 29, at 5-7.

The primary disagreement between the parties with relation to the infringement issue is whether the Breeze literally infringes independent claim number 8 of the '919 Patent. Claim number 8 reads as follows:

A baby crib comprising:

A bed frame structure including a plurality of upright tubes, wherein each of the upright tubes, respectively, includes an outer wall and a receiving hole extending along a length of the upright tube, the outer wall having an outwardly facing surface and defining an outer contour shape of the upright tube;

an enclosure member surrounding an enclosed space adapted for receiving a baby therein; and

a plurality of positioning posts provided on the enclosure member at locations corresponding to the upright tubes, wherein the positioning posts are configured to lodge into the receiving holes of the upright tubes for supporting the enclosure member between the upright tubes, whereby the enclosure member extends from one upright tube generally in directions of other of the upright tubes substantially out of contact with the outwardly facing surfaces of the upright tubes, such that the outwardly facing surface of each of the upright tubes is exposed on an outside of the enclosure member.

ECF No. 1-2, at 10.

On December 4, 2013, the Court held a hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). Thereafter, on December 9, 2013, the Court issued an order construing the disputed terms in the '919 Patent. ECF No. 41. The resulting independent claim number 8 reads as follows, given the Court's construction (construed terms are noted in bold):

A baby crib comprising:

a bed frame structure including more than one (1) upright tube, wherein each of the upright tubes, respectively, includes an outer wall and a receiving hole existing along all, or substantially all, of the full length of the tube of the upright tube, the outer wall having an outwardly facing surface and defining an outer contour shape of the upright tube;

an enclosure member surrounding an enclosed space adapted for receiving a baby therein; anda plurality of positioning posts provided on the enclosure member at locations corresponding to the upright tubes, wherein the positioning posts are shaped so as to remain of their own force in the receiving holes of the upright tubes for supporting the enclosure member between the upright tubes, whereby the material forming the enclosure extends from one upright tube generally in directions of other of the upright tubes in a manner that does not substantially bear against the outwardly facing surfaces of the upright tubes, such that the outwardly facing surface of each of the upright tubes is exposed on an outside of the material forming the enclosure.

Id. at 1-2.

With the claim construed in this way, each party argues that it is the clear winner on the issue of infringement. On the issue of validity, Thorley has not moved for summary judgment that the '919 patent is invalid, but Wonderland has made a Motion for Summary Judgment of No Invalidity, ECF No. 72, and filed a supporting brief, ECF No. 73.

Despite believing that they are each entitled to summary judgment in some form, each party has also filed at least one motion in limine to exclude one or more of the other side's experts from testifying at trial. Thorley seeks to preclude parts of the testimony of Jerry Drobinski, Wonderland's technical expert, that relate to secondary considerations of nonobviousness, specifically his opinion that commercial success, instances of copying, industry praise, and licensing serve as evidence that the asserted claims of the '919 patent are not obvious. ECF No. 63; ECF No. 64, at 5. The other two motions in limine deal with each side's damages expert. Thorley wants to exclude the entire testimony of Wonderland's damages expert, Michael Chase. ECF No. 65. Wonderland has made one motion in limine to exclude testimony of Thorley's damages expert, Mark Gleason. ECF No. 67. On February 18, 2015, the Court heard extensive oral argument on all six (6) pending Motions.

II. APPLICABLE LEGAL STANDARDS

A. Summary Judgment

Summary judgment is proper "if 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." Fed. R. Civ. P. 56(a). An issue is genuine only if the evidence is such that a reasonable jury could return a verdict for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986). "On summary judgment, the evidence must be viewed in the light most favorable to the party opposing the motion, with doubts resolved in favor of the nonmovant." Crown Operations Int'l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1375 (Fed. Cir. 2002) (citations omitted). Summary judgment is available in patent cases as in other areas of litigation. Continental Can Co. USA, v. Monsanto Co., 948 F.2d 1264, 1265 (Fed. Cir. 1991). In a patent case, "[t]he patentee has the burden of proving infringement by a preponderance of the evidence." Centricut, L.L.C. v. Esab Group, Inc., 390 F.3d 1361, 1367 (Fed. Cir. 2004).

"An infringement issue is properly decided upon summary judgment when no reasonable jury could find that every limitation recited in the properly construed claim either is or is not found in the accused device either literally or under the doctrine of equivalents." Gart v. Logitech, Inc., 254 F.3d 1334, 1339 (Fed. Cir. 2001). "In particular, a trial court cannot reach a conclusive finding of noninfringement if the record shows some evidence supporting a finding of noninfringement and some evidence to the contrary." AFG Indus., Inc. v. Cardinal IG Co., 375 F.3d 1367, 1371 (Fed. Cir. 2004). "To support a summary judgment of noninfringement it must be shown that, on the correct claim construction, no reasonable jury could have found infringement on the undisputed facts or when all reasonable factual inferences are drawn in favor of the patentee." Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1353 (Fed. Cir. 2001)."Because the determination of infringement is a question of fact, summary judgment of infringement is improper if a reasonable jury could find that not every limitation of the claim in question would be met by the [alleged infringer's] product." Abbott Labs. v. TorPharm, Inc., 300 F.3d 1367, 1373 (Fed. Cir. 2002) (internal citation omitted).

B. Patent Infringement

A patent is infringed when a person "without authority makes, uses or sells any patented invention, within the United States . . . during the term of the patent." 35 U.S.C. § 271(a). "Determining infringement is a two-step process. First, the court determines the scope and meaning of the asserted claim. Then, the court...