United States District Court, E.D. Missouri, Eastern Division
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[Copyrighted Material Omitted]
For Sudden Valley Supply LLC, Plaintiff: David L. Ter Molen, Jacob D. Koering, Todd Joseph Ohlms, LEAD ATTORNEYS, FREEBORN AND PETERS, Chicago, IL; David B. Jinkins, Matthew A. Braunel, THOMPSON COBURN, LLP, St. Louis, MO.
For Neil P. Ziegmann, Defendant, Counter Claimant: David Lee Heinemann, LEAD ATTORNEY, SHANK AND HAMILTON, P.C., Kansas City, MO; Jeffrey D. Harty, Luke C. Holst, LEAD ATTORNEYS, MCKEE AND VOORHEES, P.L.C., Des Moines, IA.
For N.P.Z., Inc., Counter Claimant: Jeffrey D. Harty, LEAD ATTORNEY, MCKEE AND VOORHEES, P.L.C., Des Moines, IA; David Lee Heinemann, SHANK AND HAMILTON, P.C., Kansas City, MO.
For Sudden Valley Supply LLC, Counter Defendant: David L. Ter Molen, Todd Joseph Ohlms, LEAD ATTORNEYS, FREEBORN AND PETERS, Chicago, IL; David B. Jinkins, Matthew A. Braunel, THOMPSON COBURN, LLP, St. Louis, MO.
MEMORANDUM AND ORDER
RONNIE L. WHITE, UNITED STATES DISTRICT JUDGE.
This matter is before the court on Sudden Valley Supply LLC's (SVS) Motion for Partial Summary Judgment of Non-Infringement (ECF No. 85), Counterclaim-Plaintiffs Neil P. Ziegmann and N.P.Z., Inc.'s Motion for Partial Summary Judgment (ECF No. 88), Neil P. Ziegmann and N.P.Z., Inc's Motion to Exclude the Opinions and Testimony of David C. Hastings (ECF No. 90), and Defendant/Counterclaim-Plaintiffs Neil P. Ziegmann and N.P.Z., Inc.'s Motion for an Order Establishing the Order of Proof at Trial (ECF No. 97). These matters are fully briefed and ready for disposition.
NPZ is the owner of U.S. Patent No. 8,230,642 (the '642 Patent). The '642 Patent is based on a provisional patent application, originally filed on May 4, 2009. The '642 Patent was examined before the PTO. The Patent Examiner, Kathleen Iwasaki, initially rejected Mr. Ziegmann's
claims, finding that the claims were anticipated by Patent No. 6,658,787 ('787), which issued to Gary Bonnot (whose commercial products are Lil' Grizz Get'r, hereinafter referred to " LiT Grizz" ). Examiner Iwasaki later withdrew her rejection of the '642 Patent, finding that two-way trigger and latch system was not anticipated by prior patents. The patent issued on July 31, 2012.
Claims 1-5 and 9-17 of the '642 Patent are at issue in the present litigation. These claims relate to a dog-proof raccoon trap that includes a housing with a restraint that is activated by a two-way trigger and latch system, designed to prevent bait theft. The two-way trigger system catches a raccoon when it pushes down or pulls up on the trigger. Because the trap catches the raccoon coming or going, bait theft (where the raccoon takes the bait without the trigger firing) is virtually eliminated.
On January 10, 2013, SVS filed a declaratory judgment action seeking a finding of invalidity and noninfringement regarding the '642 Patent. On May 28, 2013, NPZ filed its answer and counterclaim asserting infringement of the '642 Patent against SVS, alleging that SVS's accused device--the " Coon Dagger" raccoon trap--infringes claims 5-6 and 9-10 under the doctrine of equivalents.
SUMMARY JUDGMENT STANDARD
The Court may grant a motion for summary judgment if " the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Torgerson v. City of Rochester, 643 F.3d 1031, 1042 (8th Cir. 2011). The substantive law determines which facts are critical and which are irrelevant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Only disputes over facts that might affect the outcome will properly preclude summary judgment. Id. Summary judgment is not proper if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Id.
A moving party always bears the burden of informing the Court of the basis of its motion. Celotex Corp., 477 U.S. at 323. Once the moving party discharges this burden, the nonmoving party must set forth specific facts demonstrating that there is a dispute as to a genuine issue of material fact, not the " mere existence of some alleged factual dispute." Fed.R.Civ.P. 56(e); Anderson, 477 U.S. at 248. The nonmoving party may not rest upon mere allegations or denials of his pleading. Id.
In passing on a motion for summary judgment, the Court must view the facts in the light most favorable to the nonmoving party, and all justifiable inferences are to be drawn in his favor. Celotex Corp., 477 U.S. at 331. The Court's function is not to weigh the
evidence but to determine whether there is a genuine issue for trial. Anderson, 477 U.S. at 249. " 'Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge.'" Torgerson, 643 F.3d at 1042 (quoting Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000)).
I. SVS Motion for Partial Summary Judgment of Non-Infringement
" Under the " all elements" rule, the accused device must contain each limitation of the claim, either literally or by an equivalent, to be infringing." TecSec, Inc. v. Int'l Bus. Machines Corp., 731 F.3d 1336, 1352, n.2 (Fed. Cir. 2013) (citing TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1379 (Fed. Cir. 2008)). " Most often, the 'all elements' rule serves to prevent vitiation of a claim limitation when the infringement theory is based on the doctrine of equivalents[.]" TecSec. Inc., 731 F.3d at 1352, n.2. " Literal infringement of a claim occurs when every limitation recited in the claim appears in the accused device, i.e., when 'the properly construed claim reads on the accused device exactly.'" DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1331 (Fed. Cir. 2001)(quoting Amhil Enters., Ltd. v. Wawa, Inc., 81 F.3d 1554, 1562, 38 U.S.P.Q.2d 1471, 1476 (Fed. Cir. 1996)). However, " [e]ven though a device does not literally infringe the claim of a patent, a patentee may invoke the doctrine of equivalents to proceed against the producer of a device if it performs substantially the same function in substantially the same way to obtain the same result." Radio Steel & Mfg. Co. v. MTD Products, Inc., 731 F.2d 840, 847 (Fed. Cir. 1984) (internal quotations omitted); Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097, 1950 Dec. Comm'r Pat. 597, 85 U.S.P.Q. 328, 330 (1950). A finding of equivalency is factual determination. Radio Steel & Mfg. Co., 731 F.2d at 847.
The court applies two articulations of the test for equivalence:
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." ... Alternatively, under the function-way-result test, an element in the accused device is equivalent to a claim limitation if it " performs substantially the same function in substantially the same way to obtain substantially the same result."
Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir. 2008)(internal citations omitted). " [K]nown interchangeability is only one factor to consider in a doctrine of equivalents analysis. It aids the fact-finder in assessing the similarities and differences between a claimed and an accused element." Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc., 467 F.3d 1370, 1382 (Fed. Cir. 2006). " An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was." Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609, 70 S.Ct. 854, 94 L.Ed. 1097, 1950 Dec. Comm'r Pat. 597 (1950).
Here, Claims 1, 5 and 11 of the '642 Patent are in independent form, while Claims 2-3, 6, 9-10, and 12-19 depend from those claims. Claim 5 recites the
claim element " tubular body," and Claim 11 recites the claim element " tubular housing." As dependent claims, Claims 6 and 9-10 incorporate the " tubular body limitation", while Claims 12-19 incorporate the " tubular housing limitation." Following a Markman hearing, the Court, agreeing with SVS's position, held that " tubular" meant " hollow and cylindrical."
On April 4, 2014, pursuant to Local Patent Rules 3-1 and 3-7, NPZ served its Disclosure of Asserted Claims and Final Infringement Contentions (" Final Contentions" ) on SVS. NPZ contended that Claims 5 and 9-17 were infringed under the Doctrine of Equivalents " based upon this Court's claim construction of the term 'tubular' meaning 'hollow and cylindrical." On May 9, 2014, NPZ served the opening report of Neil P. Ziegmann, the patentee in this case, as its expert on infringement issues. In his report, Mr. Ziegmann opined that, as to the " tubular body" limitation of Claim 5, and the " tubular housing" limitation of Claim 11, it was his opinion that the Coon Dagger includes that element under the Doctrine of Equivalents, not literally. Mr. Ziegmann applied the doctrine of interchangeability and function-way-result test. SVS argues that NPZ cannot demonstrate that Claims 5 and 9-17 were infringed under the Doctrine of Equivalents because it has not demonstrated how the body of the Coon Dagger met the " function, way, result" test, or how it was " interchangeable" with a cylindrical central body.
With respect to the issue of interchangeability, SVS argues that NPZ's expert and the patentee, Neil P. Ziegmann failed to cite to any evidence showing independent research or testing in which the housing/body of the Coon Dagger was found to be interchangeable with a hollow and cylindrical body. (ECF No. 86 at 6). In addition, Mr. Ziegmann did not explain how he would " interchange" those two structures without having to modify other parts of the trap, such as the restraint. ( Id.)
In response, NPZ contends that the insubstantial differences test shows that disputed issues of material fact exist regarding equivalency. " 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, 536 F.3d at 1326 (quoting Honeywell Int'l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1139 (Fed. Cir. 2004)). NPZ contends that it has set forth facts show that only insubstantial differences exist between the Coon Dagger's prism body/housing and the " tubular body/housing" recited in claims 5 and 11 of the '642 Patent. (ECF No. 101 at 5). NPZ relies on the expert testimony of the inventor of the '642 Patent, Mr. Ziegmann, a person of ordinary skill in the art, who contends that different tubular shapes for the body/housing were interchangeable at the time of the infringement. ( Id.) NPZ claims that Mr. Ziegmann cited evidence of independent experimentation showing that a prism-shaped and a tubular-shaped body/housing ...