Opinion
Case No. 13-0116-CV-W-ODS
11-04-2015
Deflecto, LLC, Plaintiff, v. Dundas *Jafine Inc., Defendant.
Anne K. Sutton, SNR Denton US LLP, Chicago, IL, Carly Duvall, Kate Elizabeth Hart, Andrea M. Kimball, Brian Richard McGinley, Dentons US LLP, Kansas City, MO, for Plaintiff. Peter Knops, Brittany A. Boswell, Shook, Hardy & Bacon, LLP, Kansas City, MO, for Defendant.
Anne K. Sutton, SNR Denton US LLP, Chicago, IL, Carly Duvall, Kate Elizabeth Hart, Andrea M. Kimball, Brian Richard McGinley, Dentons US LLP, Kansas City, MO, for Plaintiff.
Peter Knops, Brittany A. Boswell, Shook, Hardy & Bacon, LLP, Kansas City, MO, for Defendant.
ORDER AND OPINION GRANTING IN PART AND DENYING IN PART DEFENDANT'S MOTIONS FOR SUMMARY JUDGMENT
ORTRIE D. SMITH, SENIOR JUDGE, UNITED STATES DISTRICT COURT
Pending are Defendant Dundas Jafine Inc.'s (“Defendant”) six motions for summary judgment. Doc. #112, #115, #116, #117, #118, #134. The motions are granted in part and denied in part.
I. BACKGROUND
This is a patent infringement suit. Plaintiff Deflecto LLC (“Deflecto”) is a manufacturer, seller, and distributor of dryer vents and venting-related products. It owns two patents: (1) the “Exhaust Vent with External Guard,” Patent No. 5,722,181 (“the '181 Patent”), and (2) the “Hooded Exhaust Vent,” Patent No. 5,916,023 (“the '023 Patent”). Defendant Dundas *Jafine Inc. (“Dundas Jafine”) also manufactures and sells dryer vents, including the ProMax, Modified ProMax, and ProGard (the “Accused Products”).
Deflecto filed the instant action on February 6, 2013. On June 25, 2013, it filed its Second Amended Complaint, which raises four counts. Counts I and II allege that Dundas Jafine's dryer vents infringe upon the '023 and '181 patents. Count III raises a Lanham Act claim, in which Deflecto alleges Dundas Jafine is committing acts of unfair competition and deceptive advertising by displaying illustrations and photos on the Modified ProMax packaging that are inconsistent with the visual aspects of the Product. Count IV asserts a common law unfair competition claim.
II. LEGAL STANDARD
A moving party is entitled to summary judgment on a claim only if there is a showing 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.” See generally Williams v. City of St. Louis, 783 F.2d 114, 115 (8th Cir.1986). “[W]hile the materiality determination rests on the substantive law, it is the substantive law's identification of which facts are critical and which facts are irrelevant that governs.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Thus, “[o]nly disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment.” Wierman v. Casey's Gen. Stores, 638 F.3d 984, 993 (8th Cir.2011) (quotation omitted). In applying this standard, the Court must view the evidence in the light most favorable to the non-moving party, giving the party the benefit of all inferences that may be reasonably drawn from the evidence. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 588–89, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Tyler v. Harper, 744 F.2d 653, 655 (8th Cir.1984), cert. denied, 470 U.S. 1057, 105 S.Ct. 1767, 84 L.Ed.2d 828 (1985). However, a party opposing a motion for summary judgment “may not rest upon the mere allegations or denials of the... pleadings, but...by affidavits or as otherwise provided in [Rule 56], must set forth specific facts showing that there is a genuine issue for trial.” Fed. R. Civ. P. 56(e).
III. DISCUSSION
A. Invalidity of the '181 and '023 Patents
Defendant asserts that Plaintiff's '181 and '023 patents are invalid for a variety of reasons. Patents are presumed to be valid. U.S. Gypsum Co. v. Nat'l Gypsum Co., 74 F.3d 1209, 1212 (Fed.Cir.1996). Defendant must demonstrate by clear and convincing evidence that a patent is invalid. Id.
1. Obviousness
Defendant claims Plaintiff's '181 and '023 patents are invalid because they were obvious in light of prior art. A patent is invalid due to obviousness when “the difference 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 to which said subject matter pertains.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). “Obviousness is a question of law based on underlying factual determinations,” which include, “(1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; (4) the extent of any proffered objective indicia of nonobviousness, sometimes termed secondary considerations.” Rockwell Int'l Corp. v. U.S., 147 F.3d 1358, 1362 (Fed.Cir.1998). Secondary considerations such 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., 550 U.S. at 406, 127 S.Ct. 1727.
“A flexible teaching, suggestion, or motivation test can be useful to prevent hindsight when determining whether a combination of elements known in the art would have been obvious.” Norgren Inc. v. Int'l Trade Com'n, 699 F.3d 1317, 1322 (Fed.Cir.2012). The “teaching, suggestion, or motivation” test provides that “a patent claim is only proved obvious if the prior art, the problem's nature, or the knowledge of a person having ordinary skill in the art reveals some motivation or suggestion to combine the prior art teachings.” KSR Int'l Co., 550 U.S. at 399, 127 S.Ct. 1727. However, “ ‘[t]he obviousness analysis cannot be confined’ to a rigid application of the teaching, suggestion, or motivation test.” Norgren Inc., 699 F.3d at 1322–23 (citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007)). Rather, “the common sense and ordinary creativity of a person having ordinary skill in the art are also part of the analysis.” Id.
Here, Defendant fails to demonstrate whether a person having ordinary skill in the art would find the patent obvious. While Defendant frequently states in its opening briefs what would have been obvious or well-known to one of ordinary skill in the art, Defendant does not provide any evidentiary support for this argument. Apparently recognizing this mistake, Defendant makes occasional citations to its expert, Dr. Terry Faddis (“Faddis”), in its Reply Briefs as one of ordinary skill in the art. “If a party fails to properly support an assertion of fact...the court may...give [the party] an opportunity to properly support or address the fact.” Fed. R. Civ. P. 56(c) (emphasis added). The Court declines to give Defendant this opportunity. It would be unfair to allow Defendant to omit supporting facts in its opening briefs, then to permit Defendant to correct its numerous errors in its Reply Briefs.
Consequently, Defendant has failed to satisfy its burden to provide “clear and convincing” evidence that the patents are invalid. Summary judgment is denied on this issue.
2. Written Description Requirement
Defendant contends the '181 and '023 patents are invalid because they fail to satisfy the written description requirement.
Pursuant to 35 U.S.C. § 112(a), a patent's specification must contain a written description of the invention. See Carnegie Mellon Univ. v. Hoffmann – La Roche Inc., 541 F.3d 1115, 1121 (Fed.Cir.2008). “A patentee can lawfully claim only what he has invented or described, and if he claims more, his patent is void.” Id. at 1122 (internal quotations and citations omitted). To satisfy the written description requirement, a patentee “must convey with reasonable clarity to those skilled in the art...that he or she was in possession of the invention...and demonstrate that by disclosure in the specification of the patent.” Id.; see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344–45 (Fed.Cir.2005). A patentee does not have “to describe exactly the subject matter claimed.” Union Oil Co. of California v. Atl. Richfield Co., 208 F.3d 989, 997 (Fed.Cir.2000). Nor is it necessary for the patentee “to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention and to enable such a person to make and use the invention without undue experimentation.” LizardTech, Inc., 424 F.3d at 1345. Finally, “a broad claim is invalid when the entirety of the specification clearly indicates that the invention is of a much narrower scope.” Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1323 (Fed.Cir.2002).
Here, Defendant fails to demonstrate what the patents' specifications would convey to someone with ordinary skill in the art. Defendant only cites occasionally to its expert, Faddis, as one of ordinary skill in the art in its Reply Suggestions in Support of its Motion for Summary Judgment of Invalidity of the ‘181 Patent. Doc. #159. Again, the Court exercises its discretion and declines to give Defendant the opportunity to support this assertion in its Reply Suggestions.
Defendant also cites to Marshall Honeyman (“Honeyman”) in support of its argument, but the Court has excluded Honeyman's testimony to the extent he opines on invalidity issues that require the analysis of one of ordinary skill in the art. Doc. #174, see also Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed.Cir.2008). Thus, Honeyman's testimony does not provide any support for Defendant's position.
Defendant has not met its burden to provide “clear and convincing” evidence that the patents are invalid, and summary judgment is denied on this issue.
3. Public Use Bar
Defendant maintains Plaintiff's '023 patent is invalid because it was publicly disclosed more than one year prior to the critical date of the patent.
A person is entitled to a patent unless the invention was in public use more than one year prior to the date of the application for the patent. 35 U.S.C. § 102; see also Netscape Comms. Corp. v. Konrad, 295 F.3d 1315, 1319–20 (Fed.Cir.2002). “A public use includes any public use of the claimed invention by a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor.” Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1325 (Fed.Cir.2009) (internal quotations and citations omitted). For a use to be considered “public” within the meaning of section 102(b), the public use must be made with all claim limitations. Id. A court evaluates the totality of the circumstances to determine if there was “a public use within the meaning of section 102(b).” Netscape Comms. Corp., 295 F.3d at 1320. Some of these circumstances include “the nature of the activity that occurred in public; the public access to and knowledge of the public use; whether there was any confidentiality obligation imposed on persons who observed the use; whether persons other than the inventor performed the testing; the number of tests; the length of the test period in relation to tests of similar devices; and whether the inventor received payment for the testing.” Id.
Defendant argues Plaintiff publicly disclosed the '023 patent because Plaintiff requested a bid from a mold maker which included drawings of the '023 patent. Defendant also argues that nothing on the bid request documents indicated any confidentially obligations. Doc. #115. This is the extent of Defendant's argument. This single argument is not a sufficient analysis of “the totality of the circumstances”, and thus, Defendant has failed to provide “clear and convincing” evidence that the patent is invalid. Summary judgment is denied on this issue.
B. Non-Infringement of the '181 and '023 Patents
Defendant has incorrectly reversed the analysis. To determine infringement pursuant to the doctrine of equivalents, Defendant must demonstrate whether the ProMax performs substantially the same function as the '181 Patent—not the other way around. Accordingly, summary judgment is denied as to these claims.
i. Modified ProMax Snap On Feature
Defendant maintains that the Modified ProMax does not infringe, either literally or under the doctrine of equivalents, claims 10 and 11 of the '181 Patent, because the Modified ProMax's vent guard does not “snap-on” to its hood. In response, Plaintiff does not dispute Defendant's assertion that Plaintiff has asserted claims for infringement both literally and under the doctrine of equivalents. Doc. #150. But it appears to the Court that Plaintiff has only asserted infringement based on the doctrine of equivalents. Doc. #154-22. As such, the Court will only address whether the Modified ProMax infringes claims 10 and 11's “snap-on” requirement under the doctrine of equivalents.
Unlike most of Plaintiff's other doctrine of equivalents arguments, Plaintiff has presented other evidence aside from Honeyman's excluded opinion. Thus, the Court finds that there are disputed issues of material fact and denies summary judgment.
j. Remaining Claims
Finally, Defendant seeks summary judgment that its ProGard and Original ProMax do not infringe claims 3-9, 12-13, and 17 of the '181 Patent, and that its Modified ProMax does not infringe claims 3-9 and 12-17 of the '181 Patent. However, Plaintiff points out it is not asserting that the ProGard, the Original ProMax, and the Modified ProMax are infringing those claims of the '181 Patent. See. Doc. #154-22. Thus, Defendant is not entitled to summary judgment regarding claims Plaintiff has not asserted.
2. '023 Patent
a. ProGard Claim 1
Defendant argues the ProGard does not infringe claim 1 of the '023 Patent. Claim 1 describes an exhaust vent guard that has a “unitary vent hood” and a “unitary vent guard.” '023 Patent, Col. 9, II. 66; Col. 10, II. 8. The Court did not construe the term “unitary” in its April 16, 2014, Claim Construction Order. Defendant proposes that the term be construed as “one unit” or “one piece.” Plaintiff states that “a unitary vent hood” and “unitary guard” in a “snap fit assembly” should be construed as “separate components that are unitary in and of themselves which together make up an exhaust vent hood.” Doc. #149, page 19. Plaintiff's main support for this position is Marshall Honeyman's opinion. However, the Court excluded Honeyman from opining on technical issues such as infringement; and thus, his opinion provides no support for Plaintiff's position.
Regardless, Plaintiff's position is not persuasive. The Court finds that the term “unitary” does not need construction and is given its plain and ordinary meaning. Unitary means “one piece” or “one unit.” This definition is bolstered by the fact that the term “unitary” is used twice in claim 1—once to modify the hood and once to modify the guard. If “unitary” were meant to define the entire assembly system, as opposed to defining each individual component, the term likely would have been used only once.
Defendant maintains that the ProGard's vent guard and vent hood are not two separate units. Rather, Defendant asserts that the ProGard's vent guard and vent hood are all one piece; and thus, the ProGard does not infringe claim 1 of the '023 Patent. The Court agrees. Claim 1 requires a “unitary vent hood” and a “unitary vent guard.” The Court's inspection of the ProGard reveals that its hood and guard are not separate units. Doc. #117, SOF 5.
Additionally, with respect to the doctrine of equivalents, Defendant has pointed out specific ways in which the ProGard is not infringing, and the only evidence Plaintiff has presented in opposition to this assertion is Honeyman's excluded testimony. Accordingly, the Court grants summary judgment in favor of Defendant.
b. ProGard Claims 2 and 10
Defendant contends the ProGard does not infringe on claims 2 and 10 of the '023 Patent. Claims 2 and 10 describe a vent hood that has “at least one receiving aperture” for the projections on the vent guard to snap into. '023 Patent, Col. 10, II. 12-14, 44-46. The Court did not construe the term “aperture” in its April 16, 2014, Claim Construction Order, but the Court finds “aperture” needs no construction and shall be given its plain and ordinary meaning. An aperture is a hole or circular opening.
Defendant states the ProGard's “hood” does not have apertures to receive projections that are on the ProGard guard. The Court agrees. In fact, the ProGard does not have apertures at all. Rather, what Plaintiff considers apertures are actually more akin to slots. Doc. #117, SOF 5. The ProGard's slots are not completely enclosed holes, as would be required to be an aperture.
Regarding the doctrine of equivalents, Defendant has pointed out specific ways in which the ProGard does not infringe, and the only evidence Plaintiff has cited in response is Honeyman's excluded testimony. As such, the Court grants summary judgment in favor of Defendant for both literal infringement and pursuant to the doctrine of equivalents.
c. ProGard Claims 13, 14, 17, 18 – Preamble
With no analysis or citation to legal authority, Defendant contends that the preamble to claims 13 and 17 is limiting. In support of its argument, Defendant relies on deposition testimony from Plaintiff's proffered expert, Honeyman. However, the Court has excluded Honeyman as a technical expert, and thus, his opinion provides no support for Defendant's position.
Nonetheless, a preamble is considered limiting when “it recites essential structure or steps.” Catalina Marketing Int'l, Inc., 289 F.3d at 808. A preamble is not considered limiting when the claim body “defines a structurally complete invention” and “the preamble only [ ] state[s] a purpose or intended use for the invention.” Id. (citations and quotations omitted).
Here, the preamble of claims 13 and 17 states “a guard for covering over the exit opening of a hooded exhaust vent...” '023 Patent, Col. 10, II. 55-57; Col. 11, II. 7-9. This phrase, quite clearly, states only an intended use or purpose for “the guard.” Additionally, the body of claims 13 and 17 describes a structurally complete invention. Finally, the preamble does not recite essential structure of the guard. Thus, the Court finds that the preamble is not limiting and summary judgment is denied.
d. ProGard Claims 13, 14, 17, and 18
Defendant asserts the ProGard does not infringe claims 13, 14, 17, and 18 of the '023 Patent. Defendant observes that claims 13 and 17 require a “plurality of attachment projections being constructed and arranged for attachment to said hood and for being positioned over said exit opening.” '023 Patent, Col. 10, II. 65-67; Col. 12, II. 5-7. Plaintiff argues that the intended meaning of claims 13 and 17 is to require the vent guard to be positioned over the exit opening, not the attachment projections. Plaintiff points to Honeyman's testimony in support of this position, but Honeyman's testimony has been excluded. Regardless, the term “guard” is not used in the body of claims 13 and 17, and the Court will not insert this missing term. Rather, claims 13 and 17 plainly require the projections to be positioned over the exit opening.
Thus, the Court finds that the ProGard does not infringe claims 13, 14, 17, and 18 for two reasons. First, the projections are not positioned over the exit opening. Instead, they are positioned on the wall that forms part of the exit opening. Doc. #117, SOF 5. Second, the plurality of projections extend from the ProGard's “hood.” These projections do not extend from the outer edge of the ProGard's “guard,” as required by claims 13, 14, 17, and 18.
With respect to the doctrine of equivalents, Defendant has pointed out specific ways in which the ProGard does not infringe, and the only evidence Plaintiff has presented in opposition is Honeyman's excluded testimony. Accordingly, the Court grants summary judgment in favor of Defendant as to these claims.
e. Original ProMax Claims 1, 2, and 10
Defendant asserts the Original ProMax does not infringe claims 1, 2, and 10 of the '023 Patent. Defendant notes that claims 1, 2, and 10 require a vent hood that has “a rear wall defining therein an exhaust aperture” and contends that this rear wall is a structure that surrounds the aperture. '023 Patent, Col. 9, II. 66-67. Defendant also notes that claims 1, 2, and 10 require “a connecting portion positioned around said exhaust aperture...” '023 Patent, Col. 9, II. 67; Col. 10, ll. 1. Defendant argues that the Original ProMax only has a rear wall defining the exhaust aperture; it does not have a connecting portion around that exhaust aperture. However, the Court's examination of the Original ProMax indicates a reasonable juror could find the Original ProMax infringes claims 1, 2, and 10 of the '023 Patent, both literally and under the doctrine of equivalents. Accordingly, the Court denies summary judgment as to these claims.
f. Original ProMax Claims 13, 14, and 15
Defendant argues the Original ProMax does not infringe claims 13, 14, and 15 of the '023 Patent. Claims 13, 14, and 15 call for a vent guard that has “a substantially planar grid portion.” '023 Patent, Col. 10, II. 58-60. Defendant alleges that because the Original ProMax's vent guard has depth, it cannot be considered “substantially planar.” Despite this assertion, the Court finds a reasonable juror could determine the Original ProMax infringes claims 13, 14, and 15 of the '023 Patent. Therefore, the Court declines to grant summary judgment in Defendant's favor.
g. Original ProMax Claims 13, 14, 17 and 18
Defendant contends the Original ProMax does not infringe claims 13, 14, 17 and 18 of the '023 Patent. Defendant observes that claims 13 and 17 requires a “plurality of attachment projections being constructed and arranged for attachment to said hood and for being positioned over said exit opening.” '023 Patent, Col. 10, II. 65-67; Col. 12, II. 5-7. Plaintiff argues that the intended meaning of claims 13 and 17 is to require the vent guard to be positioned over the exit opening, not the attachment projections. Plaintiff points to Honeyman's testimony in support of this position, but the Court has excluded Honeyman's testimony. Regardless, the term “guard” is not used in the body of claims 13 and 17, and the Court will not insert a missing term to reach Plaintiff's desired claim construction. Rather, claims 13 and 17 plainly require the projections to be positioned over the exit opening.
Therefore, the Court finds that the Original ProMax does not infringe claims 13, 14, 17 and 18, because the projections are not positioned over the exit opening. Instead, they are positioned through the wall that forms part of the exit opening. Doc. #117, SOF 9.
Regarding the doctrine of equivalents, Defendant has pointed out specific ways in which the ProGard does not infringe, and the only evidence Plaintiff has cited in response is Honeyman's excluded testimony. Accordingly, the Court grants summary judgment in favor of Defendant as to these claims.
h. Original ProMax Claims 13, 14, 17 and 18
Defendant maintains the Original ProMax does not infringe claims 13, 14, 17 and 18 of the '023 Patent because of where the “plurality of projections” are placed on the ProMax's guard. Claims 13 and 17 provide for a vent or basket guard comprised of a grid portion that has “a surrounding outer edge which is integral with said grid portion; and a plurality of attachment projections extending from said outer edge and being integral therewith...” '023 Patent, Col. 10, II. 63-65; Col. 12, II. 3-5. Defendant observes that the Original ProMax's surrounding outer edge has two “arms” extending from that outer edge. Defendant argues that the Original ProMax's attachment projections extend from these arms, rather than from the Original ProMax's surrounding outer edge. However, the Court finds a reasonable juror could determine that the Original ProMax infringes on these limitations found in claims 13, 14, 17 and 18 of the '023 Patent, both literally and pursuant to the doctrine of equivalents. Thus, summary judgment is denied. i. Claims 3-9, 11-12, and 15-16 of the '023 Patent
Finally, Defendant seeks summary judgment that its ProGard and Original ProMax do not infringe claims 3-9, 11-12, and 15-16 of the '023 patent. However, Plaintiff notes it is not asserting that the ProGard and the Original ProMax are infringing those claims of the '023 patent. See Doc. #154-22. Thus, Defendant is not entitled to summary judgment regarding claims Plaintiff has not asserted.
C. Lanham Act
Defendant contends it is entitled to summary judgment as to Plaintiff's Lanham Act. Doc. #112. The Lanham Act provides that:
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which –
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. §§ 1125(a)(1)(A) and (B). Section 1125(a)(1)(A) is known as the false endorsement prohibition and section 1125(a)(1)(B) is known as the false advertising prohibition. American Ass'n. of Orthodontists v. Yellow Book USA, Inc., 434 F.3d 1100, 1102 (8th Cir.2006).
In Lexmark International v. Static Control Components, Inc., the Supreme Court announced a zone of interests and proximate cause analysis would be used to determine if a plaintiff could assert a Lanham Act false advertising claim. ––– U.S. ––––, 134 S.Ct. 1377, 188 L.Ed.2d 392 (2014). The Lexmark Court determined that, “to come within the zone of interests in a suit for false advertising under § 1125(a), a plaintiff must allege an injury to a commercial interest in reputation or sales.” Id. at 1390. To establish proximate causation under § 1125(a), a plaintiff “ordinarily must show economic or reputational injury flowing directly from the deception wrought by the defendant's advertising; and that occurs when deception of consumers causes them to withhold trade from the plaintiff.” Id. at 1391.
To establish a claim for false advertising under the Lanham Act, Plaintiff must demonstrate, “(1) a false statement of fact by the defendant in a commercial advertisement about its own or another's product; (2) the statement actually deceived or has the tendency to deceive a substantial segment of its audience; (3) the deception is material, in that it is likely to influence the purchasing decision; (4) the defendant caused its false statements to enter interstate commerce; and (5) the plaintiff has been or is likely to be injured as a result of the false statement...” United Indus. Corp. v. Clorox Co., 140 F.3d 1175, 1180 (8th Cir.1998). If the plaintiff demonstrates that the defendant's statement was “literally false, a court may grant relief without considering whether the buying public was actually misled; actual consumer confusion need not be proved.” Id. To establish a claim for false endorsement under the Lanham Act, Plaintiff must establish that the defendant engaged in “false representations concerning the origin, association, or endorsement of goods or services through the wrongful use of another's distinctive mark, name, trade dress, or other device.” Am. Ass'n. of Orthodontists, 434 F.3d at 1103.
Because there are disputed issues of material fact, summary judgment is denied as to the Lanham Act claims against Defendant.
D. Common Law Unfair Competition
Defendant asserts that to the extent Plaintiff's common law unfair competition claim relies on its allegations of infringement, federal patent law preempts this claim. Defendant points to Dow Chemical Co. v. Exxon Corp., which states “a state law tort claim is not preempted by the federal patent law, even if it requires the state court to adjudicate a question of federal patent law, provided the state law cause of action includes additional elements not found in the federal patent law cause of action and is not an impermissible attempt to offer patent-like protection to subject matter addressed by federal law.” 139 F.3d 1470, 1473 (Fed.Cir.1998). Plaintiff's unfair competition claim would be based on state substantive law. Neither Plaintiff nor Defendant provides the Court with an analysis of what state's substantive law would be applicable to this claim. Therefore, the Court cannot determine whether Plaintiff's common law unfair competition claim is, in fact, preempted by patent law. At this juncture in the proceedings, Defendant has the burden to establish that it is entitled to judgment as a matter of law. Defendant has not met its burden on this issue, and therefore, summary judgment is denied as to this claim.
However, Defendant notes Plaintiff should not be able to seek double recovery based on the same actions by Defendant under an unfair competition claim and under infringement claims. The Court agrees. Thus, while Plaintiff's unfair competition claim is not disposed of at this juncture, Plaintiff will not be permitted to obtain double recovery based on the same actions by Defendant.
Finally, Defendant asserts that to the extent Plaintiff's common law unfair competition claim relies on allegations regarding Defendant's packaging, summary judgment should be granted in favor of Defendant. Again, Plaintiff's unfair competition claim would be based on state substantive law, and because neither Plaintiff nor Defendant provides the Court with an analysis of what state's substantive law would be applicable to this claim, the Court cannot assess the merits of Defendant's argument. Accordingly, summary judgment is denied.
E. Limiting Damages
1. Marking
Defendant asserts Plaintiff's pre-suit damages should be limited due to the patent marking statute.
The Patent Act limits the amount of damages Plaintiff can recover “to those acts of infringement that occurred after the patentee gave the alleged infringer ‘notice of infringement.’ ” Gart v. Logitech, Inc., 254 F.3d 1334, 1345 (Fed.Cir.2001) (citing 35 U.S.C. § 287). Notice occurs either by “constructive notice, which is accomplished by marking the article with the patent number, or [by] actual notice.” Id. Actual notice requires “ ‘affirmative communication to the alleged infringer of a specific charge of infringement by a specific accused product or device.’ ” Id. (citing Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed.Cir.1994)); see also 35 U.S.C. § 287. “[M]ere ‘notice of the patent's existence or ownership’ is not ‘notice of infringe ment’...” Id. (citing Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed.Cir.1994)). In analyzing actual notice, the Court “must focus on the action of the patentee, not the knowledge of the infringer.” Lans v. Digital Equipment Corp., 252 F.3d 1320, 1327 (Fed.Cir.2001) (internal quotations and citations omitted). Plaintiff's communication must provide “sufficient specificity regarding its belief that the recipient may be an infringer...” Gart v. Logitech, Inc., 254 F.3d at 1346. In the context of certain parties' relationships, “knowledge of a specific infringing device is not a legal prerequisite” to determine whether a communication sufficiently provided actual notice. Minks v. Polaris Industries, Inc., 546 F.3d 1364, 1377 (Fed.Cir.2008). Filing an infringement lawsuit also constitutes actual notice. 35 U.S.C. § 287.
Here, Plaintiff does not dispute it did not provide constructive notice to Defendant by marking its patented products. Doc. #151, page 31. Thus, Plaintiff's damages are limited based on the date it provided actual notice to Defendant of the alleged infringement.
Plaintiff contends Defendant was aware of Plaintiff's patents as early as 2002 and attempted to design around Plaintiff's patents at that time. Similarly, Plaintiff maintains it has evidence that Defendant was aware of Plaintiff's patents as early as the 1990s. While these factual assertions may or may not be true, Defendant's knowledge alone does not constitute actual notice. In determining whether Defendant received actual notice, the inquiry focuses on Plaintiff's actions, and whether Plaintiff affirmatively communicated to Defendant “a specific charge of infringement by a specific accused product or device.” Gart v. Logitech, Inc., 254 F.3d 1334, 1345 (Fed.Cir.2001); see also Lans v. Digital Equipment Corp., 252 F.3d 1320 (Fed.Cir.2001); Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178 (Fed.Cir.1994). While the alleged infringer's knowledge of the patent may be relevant given the history of the parties' relationship, the patentee still must take steps to notify the alleged infringer. Minks, 546 F.3d at 1376–77. Here, Plaintiff does not identify any communications it made to Defendant in the 1990s or 2000s. Thus, Defendant's knowledge of Plaintiff's patents, without more, is insufficient to establish actual notice.
Plaintiff asserts it sent a Cease and Desist Letter to Defendant accusing Defendant of infringing Plaintiff's patents. Doc. #134-3. The Cease and Desist Letter provides “sufficient specificity regarding [Plaintiff's] belief that [Defendant] may be an infringer...,” as it unequivocally accuses Defendant of infringing the '023 patent by manufacturing, selling, and distributing various exhaust vents and pest barricades. Gart v. Logitech, Inc., 254 F.3d at 1346. Accordingly, Plaintiff provided actual notice to Defendant of its allegedly infringing activity regarding the '023 patent on August 1, 2012; and thus, Plaintiff is limited to damages starting on August 1, 2012.
However, there are disputed issues of material fact as to what products the Cease and Desist Letter identified as infringing. Further, while Plaintiff has presented no evidence demonstrating it provided Defendant actual notice regarding the '181 patent prior to the August 1, 2012 Cease and Desist Letter, there are disputed issues of material fact as to whether the Cease and Desist Letter provided actual notice regarding Defendant's alleged infringement of the '181 patent.
2. Laches
Defendant argues Plaintiff's pre-suit damages should be barred due to the laches doctrine.
To establish a laches defense, Defendant must demonstrate: (1) Plaintiff's delay in bringing suit was unreasonable and inexcusable, and (2) Defendant suffered material prejudice attributable to Plaintiff's delay. A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020, 1028 (Fed.Cir.1992). A presumption of laches arises if the patentee delays filing suit for more than six years from the time the plaintiff knew or reasonably should have known of the defendant's alleged infringing activities. Id. at 1035. However, if a patentee files suit within six years, no presumption arises. Id. at 1038.
Without the presumption, the alleged infringer must prove unreasonable delay and prejudice. In determining whether Plaintiff's delay was unreasonable and inexcusable, the Court may consider whether Plaintiff was involved in other litigation, negotiations with the accused infringer, the extent of the alleged infringement, possible poverty and illness under limited circumstances, wartime conditions, and dispute over ownership of the patent. Id. at 1033. Additionally, “the equities may...require that the plaintiff communicate its reasons for delay to the defendant.” Id.
Material prejudice to Defendant may be either evidentiary or economic. Id. Evidentiary prejudice occurs when Defendant is unable “to present a full and fair defense on the merits due to the loss of records, the death of a witness, or the unreliability of memories of long past events, thereby undermining the court's ability to judge the facts.” Id. Economic prejudice occurs when Defendant and “possibly others will suffer the loss of monetary investments or incur damages which likely would have been prevented by earlier suit.” Id. “Such damages or monetary losses are not merely those attributable to a finding of liability for infringement.” Id. Rather, courts “must look for a change in the economic position of the alleged infringer during the period of delay.” Id.
Because there are disputed issues of material fact, summary judgment is denied as to Defendant's laches defense.
IV. CONCLUSION
For the foregoing reasons, Defendant's Motions for Summary Judgment are granted in part and denied in part.
IT IS SO ORDERED.
Attachment Appendix