Opinion
Case No. LA CV19-10092-JAK (GJSx)
09-23-2022
B & S PLASTICS, INC. v. CUSTOM MOLDED PRODUCTS, INC. et al.
Chong Wook Pak, Daniel Miles Cislo, Cislo and Thomas LLP, Los Angeles, CA, Mark D. Nielsen, Scheef and Stone, LLP, Frisco, TX, for B & S Plastics, Inc. Matthew Robert Stephens, Morrison and Foerster LLP, Austin, TX, Steven M. Hanle, Stradling Yocca Carlson and Rauth PC, Newport Beach, CA, for Custom Molded Products, Inc.
Chong Wook Pak, Daniel Miles Cislo, Cislo and Thomas LLP, Los Angeles, CA, Mark D. Nielsen, Scheef and Stone, LLP, Frisco, TX, for B & S Plastics, Inc. Matthew Robert Stephens, Morrison and Foerster LLP, Austin, TX, Steven M. Hanle, Stradling Yocca Carlson and Rauth PC, Newport Beach, CA, for Custom Molded Products, Inc.
Proceedings: (IN CHAMBERS) ORDER RE MOTION FOR SUMMARY JUDGMENT
JOHN A. KRONSTADT, UNITED STATES DISTRICT JUDGE
I. Introduction
On November 26, 2019, B & S Plastics, Inc. d/b/a Waterway Plastics ("Plaintiff") brought this action against Custom Molded Products, Inc. ("Defendant") and Does 1-9. ("Complaint" (Dkt. 1)). On August 5, 2021, Plaintiff filed the operative First Amended Complaint ("FAC"), alleging that Defendant has infringed U.S. Patent Nos. 10,145,523 ("the '523 Patent") and 10,378,707 ("the '707 Patent") (collectively, "the Asserted Patents"). ("FAC" (Dkt. 38)).
Defendant has moved for summary judgment, arguing that the Asserted Patents are invalid under 35 U.S.C. § 102(a)(1). ("Motion" (Dkt. 48)). Plaintiff filed an opposition to the Motion ("Opposition" (Dkt. 57)). Defendant filed a reply. ("Reply" (Dkt. 66)). Pursuant to the Order on June 7, 2022, the parties filed supplemental briefs. ("Plaintiff's Supplement" (Dkt. 81)); ("Defendant's Supplement" (Dkt. 83)); see also Dkt. 79 (June 7, 2022 order requesting supplemental briefing).
The earliest possible priority date to which the Asserted Patents can claim the benefit is March 24, 2014. Thus, the Asserted Patents are subject to § 102 under the America Invents Act ("AIA"). See Manual of Patent Examining Procedure § 2159.02. All references to § 102 in this Order refer to § 102 under the AIA.
Plaintiff also filed evidentiary objections, which are overruled. See Dkt. 58.
Based on a review of the filings, it was determined that the issues presented were appropriate for decision without oral argument and the hearing was taken off calendar and under submission. Dkt. 85. See Fed. R. Civ. P. 78; Local Rule 7-15. For the reasons stated in this Order, the Motion is GRANTED-IN-PART and DENIED-IN-PART.
Portions of the briefs with respect to the Motion were filed under seal. Pursuant to the parties' joint statement regarding sealing (Dkt. 89), no portion of the sealed order at Dkt. 87 should remain sealed and it is hereby publicly filed.
II. Background
Both Asserted Patents are titled "Spa Fixture Lighting System," are members of the same patent family, and claim priority to Provisional Patent Application No. 61/969,740 ("the Provisional Application"), which was filed on March 24, 2014. (See "Provisional Application" (Dkt. 48-5)). The '523 Patent was filed on March 23, 2015, and issued on December 4, 2018. The '707 Patent was filed on October 15, 2018, as a continuation application of the '523 Patent, and issued on August 13, 2019.
The Asserted Patents relate to "spa fixture lighting systems," and claim "to provide useful lighting in spa systems." '523 Patent at 1:14-20; '707 Patent at 1:17-25. The system disclosed in the Asserted Patents "provides for more uniform accent lighting of a fixture extending through a spa shell wall." '523 Patent at 3:66-4:1; '707 Patent at 4:3-5. According to the specification, "[t]he inventive system serves to diffuse light presented from discrete light sources located on the backside of a spa shell wall for transmission to a front side of the spa shell wall to accent the perimeter or decorative top of a spa fixture." '523 Patent at 4:1-4; '707 Patent at 4:5-8. The '523 Patent has 17 claims, including independent Claims 1 and 5. The '707 Patent has 19 remaining claims, including independent Claims 1, 5 and 15.
"On March 13, 2020, [Defendant] petitioned the United States Patent and Trademark Office for ex parte reexamination of all claims in the '523 Patent (Control No. 90/014,473)." Dkt. 55 at 2. "On March 20, 2020, [Defendant] petitioned the PTO for ex parte reexamination of all claims in the '707 Patent (Control No. 90/014,479)." Id. "On April 8, 2020, the PTO granted [Defendant]'s request for ex parte reexamination of each claim in the '523 Patent and on April 13, 2020, for the '707 Patent." Id. at 3. During those reexamination proceedings, Plaintiff amended Claims 5 and 6 of the '523 Patent and Claims 1, 5, 10-13 and 15 of the '707 Patent, and cancelled Claims 9, 16 and 21 of the '707 Patent. ("Reexamined '523 Patent" (Dkt. 55-2); "Reexamined '707 Patent" (Dkt. 55-5)). "The PTO issued reexamination certificates on December 2, 2020 for the '707 Patent, and on December 9, 2020 for the '523 Patent[,]" upholding the claims as amended as well as affirming the patentability of Claims 1-4 of the '523 Patent. Dkt. 55 at 4 (citing Dkts. 55-8, 55-9).
Plaintiff asserts that Defendant infringes Claims 5, 6, 9, 12 and 16 of the '523 Patent, and Claims 1, 3, 4, 5, 7, 8, 11, 12, 15, 17-19 and 22 of the '707 Patent. ("the Asserted Claims"). Dkt. 55 at 2 (citing "Hanle Decl." (Dkt. 55-1)). Amended Claim 5 of the '523 Patent recites (with added limitations italicized and removed limitations bracketed):
5. A spa fixture lighting system assembly, comprising:Reexamined '523 Patent, Claim 5.
a spa shell wall having a water side and a back side;
a light transmissive grommet extending through the spa shell wall from the water side to the back side, the light transmissive grommet having a plurality of ports extending into an exterior side of the light transmissive grommet, wherein the light transmissive grommet has a lip that engages the spa shell wall and a portion adjacent the lip that forms a first friction fit with the spa shell wall;
a plurality of lights [extending] introduced into the respective plurality of ports, wherein the plurality of lights are (a) positioned closer to a radial center of the light transmissive grommet than the portion of the light transmissive grommet that forms the first friction fit with the spa shell wall, and (b) spaced distal from the portion of the light transmissive grommet that forms the first friction fit with the spa shell wall; and
a spa fixture extending through the spa shell wall and seated in the light transmissive grommet with a second friction fit.
Amended Claim 1 of the '707 Patent recites (with added limitations italicized and removed limitations bracketed):
1. A spa fixture lighting system, comprising:
a light transmissive grommet configured to extend through a spa shell wall from a water side to a backside, the light transmissive grommet having a
light reflection cavity, wherein the light transmissive grommet has a lip that engages the spa shell wall and a portion adjacent the lip that forms a first friction fit with the spa shell wall;Reexamined '707 Patent, Claim 1.
a plurality of lights disposed in the light reflection cavity of the light transmissive grommet, wherein the plurality of lights are (a) positioned closer to a radial center of the light transmissive grommet than the portion of the light transmissive grommet that forms the first friction fit with the spa shell wall, and (b) spaced distal from the portion of the light transmissive grommet that forms the first friction fit with the spa shell wall; and
a spa fixture seated in the light transmissive grommet with a [first] second friction fit; wherein the [first] second friction fit provides the light transmissive grommet with [a second] the first friction fit with the spa shell wall.
The claim construction order in this matter issued on April 28, 2022. ("Markman Order" (Dkt. 76)). In a determination directly relevant to the Motion, the term "ports" as used in Claim 5 of the '523 Patent and Claim 11 of the '707 Patent was construed to mean "elongated openings." Id. at 8. Specifically, the Order determined that the term "ports" does not include "holes," finding that the claims are directed to the embodiments in Figures 28-30 and not Figures 19-22. See id. at 7. The Order also determined that the terms "spaced distal from" and "positioned closer to" as used in the Asserted Claims required no construction. See id. at 9-10.
III. Analysis
A. Legal Standards
1. Summary Judgment
Summary judgment is appropriate when, viewing the evidence and drawing all reasonable inferences in the light most favorable to the nonmoving party, there are no genuine issues of material fact, and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). In considering a motion for summary judgment, a court "does not assess credibility or weigh the evidence, but simply determines whether there is a genuine factual issue for trial." House v. Bell, 547 U.S. 518, 559-60, 126 S.Ct. 2064, 165 L.Ed.2d 1 (2006). A fact is "material" if it "might affect the outcome of the suit under the governing law," such as those necessary to the proof of a defense or a claim; a dispute as to a material fact is "genuine" if there is sufficient evidence for a reasonable trier of fact to decide in favor of the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). "If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50, 106 S.Ct. 2505 (internal citations omitted).
"Summary judgment is as appropriate in a patent case as in any other." Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 835 (Fed. Cir. 1984). The moving party bears the initial burden of identifying those portions of the pleadings, discovery, and affidavits that demonstrate the absence of a genuine issue of material fact. Celotex Corp., 477 U.S. at 323, 106 S.Ct. 2548. Once the moving party meets its initial burden, the nonmoving party must set forth, by affidavit or as otherwise provided in Fed. R. Civ. P. 56, "specific facts showing that there is a genuine issue for trial." Anderson, 477 U.S. at 250, 106 S.Ct. 2505 (internal quotation marks omitted). If the non-moving party fails to produce evidence sufficient to show a genuine issue of material fact, "the moving party is entitled to a judgment as a matter of law." Celotex Corp., 477 U.S. at 322-23, 106 S.Ct. 2548.
Mere allegations or denials do not defeat a moving party's assertions. Gasaway v. Nw. Mut. Life Ins. Co., 26 F.3d 957, 959-60 (9th Cir. 1994). Thus, a nonmoving party cannot defeat a motion for summary judgment simply by proffering a conclusory opinion from an expert. See, e.g., Soremekun v. Thrifty Payless, Inc., 509 F.3d 978, 984 (9th Cir. 2007) ("Conclusory, speculative testimony in affidavits and moving papers is insufficient to raise genuine issues of fact to defeat summary judgment."); Arthur A Collins, Inc. v. Northern Telecom Ltd., 216 F.3d 1042, 1047-48 (Fed. Cir. 2000).
2. Invalidity Due to Anticipation Under § 102
A patent has a presumption of validity. See 35 U.S.C. § 282(a). The burden of establishing invalidity is on the moving party. To meet this burden, the moving party must do so with clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. 91, 95, 131 S.Ct. 2238, 180 L.Ed.2d 131 (2011); State Contracting & Eng'g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1067 (Fed. Cir. 2003). "Although an exact definition is elusive, 'clear and convincing evidence' has been described as evidence that 'place[s] in the ultimate factfinder an abiding conviction that the truth of its factual contentions are highly probable.' " Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1359 n.5 (Fed. Cir. 2007) (quoting Colorado v. New Mexico, 467 U.S. 310, 316, 104 S.Ct. 2433, 81 L.Ed.2d 247 (1984)).
Section 102(a)(1) provides that, "[a] person shall be entitled to a patent unless . . . the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention." § 102(a)(1). "A patent is invalid for anticipation if a single prior art reference discloses each and every limitation of the claimed invention." Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003). "[A] prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference." Id. For prior art to anticipate a claim, "it must be sufficient to enable one with ordinary skill in the art to practice the invention." Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002).
B. Application
In support of the Motion, Defendant argues that the Asserted Patents are invalid as anticipated by Defendant's "Simple, Quick, Reliable" ("SQR") LED grommets that it publicly displayed at the 2014 International Pool Spa Patio Expo (the "2014 trade show"). See generally Dkt. 48. Defendant contends that there is no genuine dispute of fact that the earliest effective filing date for the Asserted Claims is March 23, 2015, when the '523 Patent was filed, because the patent application that resulted in the '523 Patent added new matter not found in the Provisional Application. See id. at 2-3, 9-19. Defendant also argues that there is no genuine dispute of fact that the SQR LED grommets publicly displayed at the 2014 trade show are materially the same as Defendant's accused products and, therefore, anticipate the Asserted Claims. See id. at 3-8, 19-20.
1. Priority Date
Defendant contends that the Provisional Application cannot support two amendments made during the prosecution of the '523 Patent. First, Defendant argues that the limitation "ports extending into an exterior side of the light transmissive grommet" found in Claim 5 of the '523 Patent and Claim 11 of the '707 Patent is only supported by Figures 28-30, which were not included in the Provisional Application. See Dkt. 48 at 17-19. Second, Defendant argues that, "the Provisional Application as filed provides no support for the location of the 'plurality of lights' and 'light source' relative to the 'first friction fit' with the spa shell wall that is part of each" of the Asserted Claims. Id. at 12.
There is no genuine dispute of fact that the Provisional Application does not provide support for the limitation "ports extending into an exterior side of the light transmissive grommet" as construed. As stated in the Markman Order, the term "ports extending into an exterior side of the light transmissive grommet" is directed to the embodiments in Figures 28-30 and excludes "holes." Dkt. 76 at 7-8. The Provisional Application did not include Figures 28-30. Dkt. 48-1 ¶¶ 1-4. Thus, the Provisional Application cannot provide written description support for the "ports" limitation.
In Plaintiff's Supplement, it requests reconsideration of the Markman Order, arguing that Figures 19 and 20, which were included in the Provisional Application, depict "holes with depth." Dkt. 81 at 2-4. Plaintiff asserts that those "holes with depth" satisfy the construction of the term "ports," i.e., "elongated openings." Id. However, the Markman Order also explained that the intrinsic evidence distinguishes between "holes" and "ports," and Figures 19-22 depict "holes." See Dkt. 76 at 7-8. To the extent that Plaintiff amended Figures 19 and 20 to depict "holes with depth" that would satisfy the "ports" limitation, that amendment would qualify as new matter, particularly in light of the examiner's conclusion that original Figures 19-22 did not depict "ports." See Dkt. 55-8 at 4; Dkt. 55-9 at 5; Dkt. 55-10 at 30-31. Plaintiff does not otherwise present any justification for reconsidering the Markman Order. Accordingly, there is no genuine dispute that Claim 5 of the '523 Patent, Claim 11 of the '707 Patent, and the claims that depend from them have an effective filing date no earlier than March 23, 2015.
In contrast, Claims 1 and 15 of the '707 Patent, and the claims that depend from them, do not include the "ports" limitation. Instead, for those claims, Defendant argues that the Provisional Application cannot provide written description support for the limitations requiring the "plurality of lights" be "(a) positioned closer to a radial center of the light transmissive grommet than the portion of the light transmissive grommet that forms the first friction fit with the spa shell wall, and (b) spaced distal from the portion of the light transmissive grommet that forms the first friction fit with the spa shell wall." See Dkt. 48 at 13-17. Defendant asserts that none of the figures in the Provisional Application depicts the "spa shell wall" where the "grommet" forms the "friction fit." Id. at 13-14. Defendant also contends that, during prosecution of the Asserted Patents, the examiner found that Figures 28-30, which were not included in the Provisional Application, provide the written description support for those limitations. See id. at 15-17 (citing Dkts. 48-9 at 5-7, 48-10 at 5-6, 48-13 at 3-5, 48-14 at 3-4). Thus, Defendant contends there is no genuine dispute that Claims 1 and 15 of the '707 Patent, and the claims that depend from them, are also entitled to an effective filing date of March 23, 2015. Id. at 17.
Plaintiff responds that the Provisional Application discloses, "with respect to Figs. 19-22, '[t]he grommet 1915 may be inserted into a spa shell wall (not shown) with a friction fit . . . ." Dkt. 57 at 12 (emphasis in original) (quoting Dkt. 48-5 at 9:27-28). Plaintiff also argues that Claims 25 and 27 of the Provisional Application disclose a "wall fitting retention component" that is a "spa grommet" " coupled to a spa shell wall ." Id. (emphasis in original) (quoting Dkt. 48-5, Claims 25, 27). Plaintiff also asserts that the Provisional Application states "the general principle of the invention is to transmit light from the backside of the spa shell wall to the front side," which would mean the "plurality of lights" necessarily would be "spaced distal from" the "friction fit." Id. at 18 (citing Dkt. 48-5 at 4:80-32, 9:27-28; "Walworth Declaration" (Dkt. 57-2) ¶¶ 17-20). Plaintiff also disputes Defendant's argument that the prosecution history shows that the relative positions of the "plurality of lights" was not disclosed in the Provisional Application. See id. at 14-16. Specifically, Plaintiff points out that each cited prior art reference depicted the spa shell wall "placed flush against the lip of the" grommet, expert testimony supported that is where one would place the spa shell wall, and the examiner cited Figure 22 to support amending the claims to add the limitation. See id.
Defendant replies that Figure 21 depicts neither the spa shell wall nor the lip, and "Figures 1A, 1B, 4, 7, 11, and 23 [of the Provisional Application] all depict embodiments with a threaded connection," not a "friction fit." Dkt. 66 at 3-4 (emphasis in original). Defendant also asserts that, "because the grommet is made of light-transmissive material, there is no requirement that the light source be 'behind the backside of the spa shell wall[.]' " Id. at 4.
There is a genuine dispute of material fact whether the Provision Application provides written description support for the "spaced distal from" and "positioned closer to" limitations. As Plaintiff has emphasized, for Figures 19-22, the Provisional Application discloses that "[t]he grommet 1915 may be inserted into a spa shell wall (not shown) with a friction fit[.]" Dkt. 48-5 at 9:27-28. Plaintiff's expert, Van T. Walworth, testified that a person of ordinary skill in the art ("POSA") would understand from at least Figure 22 that the grommet would form the "friction fit" with the spa shell wall when the spa shell wall is "mated against the underside of the grommet lip" located at the top of the grommet. See Dkt. 57-2 ¶¶ 17-27. Although not expressly labeled, Figure 22 depicts the grommet with a lip at the top that can create a friction fit with the spa shell wall, as seen in the following annotated figure that Defendant presented:
Image materials not available for display. Dkt. 66 at 4. A reasonable juror could find that this disclosure provides written description support for the limitation requiring that the grommet forms a friction fit with the spa shell wall.
Further, the Provisional Application also discloses that the purpose of the inventive system is "to diffuse light presented from discrete light sources located on the backside of a spa tube wall for transmission to a front side of the spa tub wall[.]" Id. at 4:30-32. That suggests that the "plurality of lights" would necessarily be "spaced distal from the portion of the light transmissive grommet that forms the first friction fit with the spa shell wall," because otherwise the inventive system would not diffuse light from one side of the wall to the other. Finally, a POSA could find that the "plurality of lights" also would necessarily be "positioned closer to a radial center of the light transmissive grommet than the portion of the light transmissive grommet that forms the first friction fit with the spa shell wall" in view of the shape of the grommet depicted in Figure 22 and the above disclosure.
For the foregoing reasons, with respect to whether the Asserted Claims are not entitled to the priority date of the Provisional Application, the Motion is GRANTED as to Claim 5 of the '523 Patent, Claim 11 of the '707 Patent, and the claims that depend from them, and the Motion is DENIED as to Claims 1 and 15 of the '707 Patent and the claims that depend from them.
2. Public Display
Defendant argues that its display of the SQR LED grommets at the 2014 trade show constitutes a public use that anticipated the Asserted Claims. In support of this position Defendant contends that, "[f]rom November 5-7, 2014, [Defendant] displayed SQR LED grommets at [the 2014 trade show] in Orlando, Florida, that were identical to the Accused Products but for a modification unrelated to the Asserted Claims." ("SUF" (Dkt. 48-1) at 9 ¶ 1). Defendant argues that the only difference between the displayed grommets and the accused grommets is that the displayed grommets had "straight sidewalls" whereas the accused grommets have "a groove/barb on the sidewall area distal from the portion of the grommet that forms the first friction fit with the spa shell wall." Id. at 10 ¶ 5. To support its position, Defendant relies on the following: (1) a declaration from Zack Vogtner, a product development and intellectual property manager for Defendant who attended the 2014 trade show ("Vogtner Declaration" (Dkt. 48-16)); (2) three photographs that Defendant contends were taken at the 2014 trade show with metadata showing the photographs were taken in 2014 in Orlando, Florida (Dkts. 48-17, 48-18, 48-20 - 48-23); (3) a "2015 Spa Feature Book and 2015 Catalog" distributed at the 2014 trade show allegedly depicting the SQR LED grommets (Dkt. 48-19); (4) two work orders dated in 2014 including engineering diagrams, one allegedly depicting the displayed grommets and one allegedly depicting the accused grommets (Dkts. 48-24, 47-1 (sealed version), 48-21, 47-2 (sealed version)); and (5) an email and a declaration from Bob Moore, a sales manager for Defendant who attended the 2014 trade show, stating that the SQR products generated the second most interest at the 2014 trade show and listing nine interested customers (Dkts. 48-26, 48-27, 47-3 (sealed version)). See Dkt. 48 at 3-8, 19-20.
Plaintiff responds that Defendant has not shown that the displayed grommets were "lighted" and were actually "grommets" instead of "gaskets." Dkt. 57 at 22 (citing ("SGD" (Dkt. 57-1) at 52 ¶ 2)). Plaintiff argues that it is not clear from the photographs whether the display had lighted grommets; and Vogtner confirmed that "the back side of the spa shell wall and bottom surface of the grommets (where LED lights would be inserted) were not visible" in the photographs. Id. at 22-23; Dkt. 81 at 5 (emphasis in original) (citing Dkt. 48-17 at 28:8-16, 29:7-14, 39:5-24). Plaintiff also contends that "earlier versions of [Defendant's] SQR technology lacked a lighted grommet, but rather, used a lighted gasket," as acknowledged by Defendant. Dkt. 57 at 22 (citing Dkt. 48-16 ¶ 5). Plaintiff also argues that some of the grommets depicted in the "2015 Spa Feature Book and 2015 Catalog" do not depict "ports" and are referred to as "gaskets" as confirmed by Vogtner and as required by the Claim 5 of the '523 Patent, Claim 11 of the '707 Patent, and the claims that depend from them. Id. at 23-25 (citing Dkt. 48-19); Dkt. 81 at 5 (citing Dkt. 48-17 at 33:5-37:10, 37:14-38:12).
In Plaintiff's Supplement, it raises two additional challenges. First, Plaintiff argues that Defendant cannot adequately document the chain of custody for the trade show display from the 2014 trade show until Plaintiff inspected it. Dkt. 81 at 5-6. Second, Plaintiff argues that Moore testified that Defendant assigns part numbers to its products "[a]t the very front end of a product development," but documentation shows that Defendant's SQR LED grommets lacked part numbers in 2015. See id. at 6-7 (citing Dkt. 81-3 at 26:17-27:6, 33:2-34:22, 34:25-38:6; Dkts. 81-5 - 81-7). Thus, Plaintiff asserts that there is a genuine issue of material fact whether Defendant actually displayed the SQR LED products at the 2014 trade show.
Defendant replies that Vogtner confirmed in his declaration that the displayed device was a lighted SQR LED grommet, as evidenced by the photograph of the display depicting purple lighting on the top surface of the top shelf and light reflected on the top surface of the bottom shelf. Dkt. 66 at 8 (citing Dkt. 48-17). Defendant also states that Plaintiff actually inspected the display used at the 2014 trade show, and did not dispute that it included a grommet that met the limitations of Claim 5 of the '523 Patent, Claim 11 of the '707 Patent, and the claims that depend from them. Id. at 8-9. Defendant then argues that Plaintiff does not explain the relevance of its distinction between a "gasket" and a "grommet," and that distinction bears no relevance to whether the device anticipates the claims. Dkt. 66 at 9.
In Defendant's Supplement, it contends that Plaintiff's "chain of custody argument" is "frivolous." Dkt. 83 at 5. According to Defendant, this is clear from a comparison of the photographs of the inspected display and the display at the 2014 trade show, which shows that the two are identical. Id. at 5-6 (citing Dkts. 48-2 ¶ 12, 48-16, 48-17 at 82:25-83:8, 66-1). Defendant also contends that Plaintiff's argument about the product numbers is irrelevant because Defendant displayed an actual SQR LED grommet at the 2014 trade show. Id. at 6-7.
"[C]orroboration is required of any witness whose testimony alone is asserted to invalidate a patent, regardless of his or her level of interest." Finnigan Corp. v. Int'l Trade Comm'n, 180 F.3d 1354, 1360 (Fed. Cir. 1999). "The corroboration requirement stems from the frailty of testimony and the expectation that 'the ubiquitous paper trail of virtually all commercial activity' will yield some kind of documentary evidence." Mosaic Brands, Inc. v. Ridge Wallet LLC, No. 2:20-CV-04556 AB, 2021 WL 3519848, at *4 (C.D. Cal. May 20, 2021), on reconsideration in part, No. 2:20-CV-04556 AB, 2021 WL 4533271 (C.D. Cal. July 1, 2021) (quoting Woodland Tr. v. Flowertree Nursery, Inc., 148 F.3d 1368, 1373 (Fed. Cir. 1998)). Nevertheless, the corroboration requirement does not impose an obligation to corroborate every point of a witness's testimony with a completely independent source. Lazare Kaplan Intern., Inc. v. Photoscribe Technologies, Inc., 628 F.3d 1359, 1374 (Fed. Cir. 2010). Rather, a "rule of reason" test applies, under which all pertinent evidence is considered holistically. Adenta GmbH v. OrthoArm, Inc., 501 F.3d 1364, 1372 (Fed. Cir. 2007).
The Federal Circuit has identified eight, non-exhaustive factors that courts may consider in determining whether a witness's testimony regarding a public use or display is sufficiently corroborated:
1. the relationship between the corroborating witness and the alleged prior user,Woodland Tr., 148 F.3d at 1371. Corroborating evidence may include documents or testimony. See TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 1295, 1301 (Fed. Cir. 2016). Circumstantial evidence may also be sufficient corroboration. Id. Whether evidence sufficiently corroborates a witness's testimony under the rule of reason test is ordinarily a question of fact reserved for trial. Adenta, 501 F.3d at 1372.
2. the time period between the event and trial,
3. the interest of the corroborating witness in the subject matter in suit,
4. contradiction or impeachment of the witness's testimony,
5. the extent and details of the corroborating testimony,
6. the witness's familiarity with the subject matter of the patented invention and the prior use,
7. probability that a prior use could occur considering the state of the art at the time,
8. impact of the invention on the industry, and the commercial value of its practice.
There is a genuine dispute whether Defendant publicly displayed an anticipatory SQR LED grommet at the 2014 trade show. Two of Defendant's employees testified that Defendant displayed an SQR LED grommet at the 2014 trade show. See Dkts. 48-16, 48-26. To corroborate that testimony, Defendant produced photographs of a display with the SQR LED grommets at the 2014 trade show and allowed Plaintiff an opportunity to inspect a display that Defendant asserts was the same as the one used at the 2014 trade show. See Dkts. 48-2 ¶ 12, 48-17, 81-4 at 81:15-88:14, 66-1. Plaintiff notes that the photographs may not depict an anticipatory LED grommet because they may not be "lighted" and may be "gaskets," but Plaintiff does not assert that the SQR LED grommet display it inspected lacked any of the limitations of the Asserted Claims. Plaintiff argues that the display it inspected may not be exactly the same display used at the 2014 trade show, but it does not identify any material differences between the display used at the 2014 trade show and the display it inspected. The photograph of the display at the 2014 trade show also contradicts Plaintiff's argument that the displayed grommet was not "lighted," as the photograph shows purple lighting on top and light reflected off the top of the bottom shelf beneath the grommet. See Dkt. 48-17. For these reasons, Plaintiff's arguments are insufficient to raise a genuine issue of fact. See Thornhill's Publ'g Co. v. GTE Corp., 594 F.2d 730, 738 (9th Cir. 1979).
Nevertheless, there is a genuine dispute of material fact whether the displayed SQR LED grommets included "ports" as construed. It is not clear from the photographs whether the displayed SQR LED grommets included any "ports." As Vogtner confirmed in his deposition, the "grommets" depicted in the "2015 Spa Feature Book and 2015 Catalog" do not appear to have any "ports." See Dkts. 48-19 at CM0000206-208, 81-2 at 33:5-37:10. Defendant also produced work orders from 2014 to corroborate its employees' testimony. The orders include engineering diagrams allegedly depicting the displayed SQR LED grommet and the accused SQR LED grommet. Dkts. 48-24, 48-25. Plaintiff does not address those documents, but they also appear to depict each "grommet" without any "ports." See id. Defendant has not produced any evidence to corroborate that the displayed SQR LED grommets included "ports."
Accordingly, with respect to whether the SQR LED grommets displayed at the 2014 trade show anticipate the Asserted Claims, the Motion is DENIED.
IV. Conclusion
For the reasons stated in this Order, the Motion is GRANTED as to the effective filing date for Claim 5 of the '523 Patent, Claim 11 of the '707 Patent, and the claims that depend from them, and DENIED as to the other matters.
IT IS SO ORDERED.