United States District Court, E.D. Virginia, Norfolk Division
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For Baby Jogger, LLC, Plaintiff, Counter Defendant: Dabney Jefferson Carr, IV, Robert Armistead Angle, LEAD ATTORNEYS, Stanley Wilson Hammer, Troutman Sanders LLP, Richmond, VA; Alison Ann Grounds, PRO HAC VICE, Troutman Sanders LLP, Atlanta, GA; Ethan G. Ostroff, Troutman Sanders LLP, Virginia Beach, VA.
For Britax Child Safety, Inc., Defendant: William Rueger Poynter, LEAD ATTORNEY, John Bronner Swingle, Williams Mullen (Norfolk), Norfolk, VA; Craig Thomas Merritt, Rowland Braxton Hill, IV, Christian & Barton LLP, Richmond, VA; Monica McCarroll, Williams Mullen, Richmond, VA; Robert Charles Van Arnam, PRO HAC VICE, Williams Mullen (NC-NA), Raleigh, NC.
For Britax Child Safety, Inc., Counter Claimant: William Rueger Poynter, LEAD ATTORNEY, John Bronner Swingle, Williams Mullen (Norfolk), Norfolk, VA; Craig Thomas Merritt, Rowland Braxton Hill, IV, Christian & Barton LLP, Richmond, VA; Monica McCarroll, Williams Mullen, Richmond, VA.
For Mark Zehfuss, Counter Defendant: Dabney Jefferson Carr, IV, Robert Armistead Angle, LEAD ATTORNEYS, Stanley Wilson Hammer, Troutman Sanders LLP, Richmond, VA; Alison Ann Grounds, PRO HAC VICE, Troutman Sanders LLP, Atlanta, GA; Ethan G. Ostroff, Troutman Sanders LLP, Virginia Beach, VA.
MEMORANDUM OPINION & ORDER
Raymond A. Jackson, United States District Judge.
Before this Court are cross-motions from Plaintiff and Defendant for summary judgment (ECF No. 86 and 93) pursuant to Rule 56 of the Federal Rules of Civil Procedure. Having carefully reviewed the parties' pleadings, this matter is now ripe for judicial decision. For the reasons stated herein, Plaintiff's Motion for Summary Judgment is GRANTED IN PART and DENIED IN PART. Defendant's Motion for Partial Summary Judgment is DENIED.
I. BACKGROUND & PROCEDURAL HISTORY
Plaintiff Baby Jogger, LLC (" Baby Jogger" ) alleges that Defendant Britax Child Safety, Inc. (" Britax" ) committed patent infringement and trade dress infringement of its baby strollers. Specifically, Baby Jogger accuses Britax's B-Agile and BOB Motion strollers of infringing Baby Jogger's U.S. Patent No. 6,905,548 (" the '548 Patent" ). Furthermore, Baby Jogger asserts that Britax's B-Agile stroller infringes Baby Jogger's trade dress in its City Mini strollers. In response, Britax has filed counterclaims against Baby Jogger, alleging that Baby Jogger's strollers infringe its U.S. Patent No. 6, 102,431 (" the '431 Patent" ) and that Baby Jogger and its President Mark Zehfuss engaged in tortious interference with its prospective economic
expectancy and unfair and deceptive trade practices.
Baby Jogger owns the '548 Patent, issued by the United States Patent & Trademark Office (" PTO" ) on August 1, 2000. The '548 Patent describes the invention of a compact all-terrain baby stroller that can be folded with one hand. Britax owns the '431 Patent, issued by the PTO on August 15, 2000, which discloses a baby stroller that can be folded with one hand for storage and transport. U.S. Patent No. 4,544,178 (" the '178 Patent" or " the Al-Shiekh stroller" ) was issued on October 1, 1985 and describes a collapsible stroller with a reversible handle.
The parties requested construction of four terms in the '431 Patent. On August 26, 2013, this Court found construction of the terms " two meshing geared components," " secured to" and " fixed component" was unnecessary because the terms are clear based on their plain and ordinary meaning. This Court adopted a construction of " means of retracting said piston against said spring" defining the term as a means-plus-function involving " knife blade followers" that retracts the piston against the spring.
The parties filed cross-motions for summary judgment on issues involving the validity of the '548 Patent, infringement of the '548, '431 and '178 Patents, the trade dress of the City Mini stroller, and the unfair trade practices and tortious interference claims. In its Motion for Summary Judgment, Baby Jogger asserts that the '548 Patent has been infringed, the '548 Patent is valid as a matter of law, it has not infringed the '431 Patent, and it has not unfairly competed or tortiously interfered with Britax. In its Motion for Partial Summary Judgment, Britax asserts that the '548 Patent is invalid and that the City Mini stroller's trade dress is not protected under the Lanham Act. On October 7, 2013, the Court conducted a hearing on these motions.
II. LEGAL STANDARDS
A. Patent Infringement
Determining whether a patent has been infringed requires a two-step analysis: first, the court construes the claim to determine its meaning and scope, and second, the fact finder compares each limitation of the construed claim to the accused infringing product. Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365, 1372 (Fed. Cir. 2006); Fellowes, Inc. v. Michilin Prosperity Co., Ltd., 491 F.Supp.2d 571, 584 (E.D. Va. 2007). If the comparison does not reveal any genuine issue of material fact regarding each element of the accused product's presence in an asserted claim literally or under the doctrine of equivalents, there is no infringement and summary judgment must be granted. Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1357 (Fed. Cir. 2005).
Literal infringement requires that the accused claim contain every limitation in the asserted claim. V-Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1312 (Fed. Cir. 2005). Infringement under the doctrine of equivalents may be found if the accused product does not literally infringe the express terms of the previously patented asserted invention but there is " equivalence" between the elements of the accused claim and the asserted claim. Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 21, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997) (citing 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)); Abbott Labs., Inc. v. Novopharm Ltd., 323 F.3d 1324, 1329 (Fed. Cir. 2003). The Federal Circuit has identified the proper analysis of infringement
under the doctrine of equivalents:
A finding of infringement under the doctrine of equivalents requires a showing that the difference between the claimed invention and the accused product or method was insubstantial or that the accused product or method performs the substantially same function in substantially the same way with substantially the same result as each claim limitation of the patented product or method.
AquaTex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320, 1326 (Fed. Cir. 2007). As a matter of law, the doctrine of equivalents must be applied on an element-by-element basis and does not apply where its application would vitiate a claim limitation. Warner-Jenkinson, 520 U.S. at 18; W.L. Gore & Assocs., Inc. v. Medtronic, Inc., 874 F.Supp.2d 526, 565 (E.D. Va. 2012).
B. Invalidity of a Patent based on Anticipation and Obviousness
In order to receive patent protection, a claimed invention must be of patentable subject matter, novel, nonobvious, and fully and particularly described. 35 U.S.C. § § 101, 102, 103, 112. Patents are presumed valid in their entirety and each claim of a patent is presumed valid independently. 35 U.S.C. § 282. To successfully defend against an infringement claim on a motion for summary judgment, an accused infringer must provide clear and convincing evidence of invalidity " so that no reasonable jury could find otherwise." Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001). See also Kahn v. Gen. Motors Corp., 135 F.3d 1472, 1480 (Fed. Cir. 1998) (noting that it is the defendant's burden to prove by clear and convincing evidence that the plaintiff's claimed invention would have been obvious in light of the prior art to support a defense of invalidity); Active Video Networks, Inc. v. Verizon Commc'ns, Inc., 807 F.Supp.2d 563, 566 (E.D. Va. 2011) (" An accused infringer challenging the validity of a patent claim must prove anticipation by clear and convincing evidence." ). Although he would not have the burden of proof ...