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WHAM-O, INC. v. SPORT DIMENSION

November 9, 2005.

WHAM-O, INC, Plaintiff,
v.
SPORT DIMENSION, INC., Defendant.



The opinion of the court was delivered by: EDWARD CHEN, Magistrate Judge

ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT'S MOTION FOR SUMMARY JUDGMENT; AND GRANTING PLAINTIFF'S CROSS-MOTION FOR SUMMARY JUDGMENT (Docket No. 41)
Plaintiff Wham-O, Inc. has filed suit against Defendant Sport Dimension, Inc. for patent infringement — more specifically, for infringement of claims 1-4 of the '593 patent. Currently pending before the Court is Sport Dimension's motion for summary judgment of noninfringement. Sport Dimension argues that Wham-O's claim of infringement, which is based on the doctrine of equivalents, must fail as a matter of law because of prosecution history estoppel and the all limitations rule. Wham-O has filed a cross-motion for summary judgment on Sport Dimension's prosecution history estoppel defense.

Having considered the parties' briefs and accompanying submissions, as well as the oral argument of counsel, the Court hereby GRANTS in part and DENIES in part Sport Dimension's motion for summary judgment and GRANTS Wham-O's cross-motion for summary judgment.

  I. FACTUAL & PROCEDURAL BACKGROUND

  Only claims 1-4 of the '593 patent are at issue in this litigation. Claims 2-4 are all dependent on claim 1. The invention claimed in claim 1 of the patent is a bodyboard comprised of a foam core to which is bonded layers of thin plastic sheeting. The outer layer of plastic sheeting is nonopaque and has graphics imprinted on the side of the sheet that faces the core. See '593 patent, col. 5:27-45. Claim 1 reads in its entirety as follows:
A bodyboard for supporting a rider during travel in ocean surf, comprising:
an elongate foam plank forming the core of the bodyboard, the core being made of semi-rigid foam having a thickness generally in the range of 1-inch to 4-inches,
an expanse of skin bonded to the core, the skin including a plurality of layers bonded adhesively together, including an outer layer of nonopaque plastic sheet material having a thickness generally in the range of 1-mil to 5 mils, and
the outer layer including graphics imprinted on the side of the sheet which faces the core, the graphics being produced by means of a process for printing graphic images on plastic sheet material, whereby the graphics are viable through the nonopaque outer layer to decorate the bodyboard.
Id. According to Wham-O, one of Sport Dimension's products known as the Snow Slider infringes claim 1 (as well as the dependent claims 2-4).

  For purposes of this motion, the key element in claim 1 is the last — i.e., that the outer layer of plastic sheeting has graphics imprinted on the side of the sheet that faces the core.*fn1 The parties do not dispute that Sport Dimension's Snow Slider does not have an outer layer of plastic sheeting with graphics imprinted on the side of the sheet that faces the core. See Opp'n at 4 n. 2 (noting that there is no literal infringement as to this particular limitation). Rather, the Snow Slider has an inner layer of plastic sheeting with graphics imprinted on the side facing away from the core (i.e., the side facing the outer layer of plastic sheeting). See Mot. at 2 ("[D]efendant applies its graphics to the inner layer, on the side of that layer facing away from the core of the slider.") (emphasis in original); Opp'n at 3 ("Defendant prints graphics on the inner piece of plastic sheeting on the surface facing the outer layer. . . .").

  Because the Snow Slider has graphics imprinted on the inner layer instead of the outer layer, Wham-O has not argued literal infringement of claim 1 (and the dependent claims 2-4) but rather infringement under the doctrine of equivalents only. Sport Dimension now asserts that prosecution history estoppel and the all limitations rule bar Wham-O from relying on the doctrine of equivalents to prove infringement.

  II. DISCUSSION

  A. Legal Standard

  Federal Rule of Civil Procedure 56(c) provides that summary judgment shall be rendered "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). An issue of fact is genuine only if there is sufficient evidence for a reasonable jury to find for the nonmoving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-49 (1986). "The mere existence of a scintilla of evidence . . . will be insufficient; there must be evidence on which the jury could reasonably find for the [nonmoving party]." Id. at 252. At the summary judgment stage, evidence must be viewed in the light most favorable to the nonmoving party and all justifiable inferences are to be drawn in the nonmovant's favor. See id. at 255.

  The Federal Circuit has made clear that a determination of patent infringement requires a two-step analysis:
First, the court must construe the asserted claim. Second, the court must determine whether the accused product or process contains each limitation of the properly construed claims, either literally or by a substantial equivalent. The first step is a question of law; the second step is a question of fact.
Freedman Seating Co. v. American Seating Co., 420 F.3d 1350, 1356-57 (Fed. Cir. 2005); see also Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998) (noting the same); Wright Med. Tech., Inc. v. Osteonico Corp., 122 F.3d 1440, 1443-44 (Fed. Cir. 1997) (noting the same).
  While application of the doctrine of equivalence is generally a question of fact for the jury, summary judgment is appropriate where no reasonable fact finder could find equivalence. See Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1423 (Fed. Cir. 1997); see also Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n. 8 (1997) (stating that, "where the evidence is such that no reasonable jury could determine two elements to be equivalent, district courts are obliged to grant partial or complete summary judgment"). Moreover, the Supreme Court has observed that "various legal limitations on the application of the doctrine of equivalents are to be determined by the court." Id. In particular,
if prosecution history estoppel would apply or if a theory of equivalence would entirely vitiate a particular claim element, partial or complete judgment should be rendered by the court, as there would be no further material issue for the jury to resolve.
Id.; see also Seachange Internat'l, Inc. v. C-Cor, Inc., 413 F.3d 1361, 1378 (Fed. Cir. 2005) (noting that application of two legal doctrines that limit infringement under the doctrine of equivalents — i.e., prosecution history estoppel and "all elements" rule — is a question of law); Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003) (stating that determinations regarding prosecution history estoppel and all elements rule are made de novo).

  The Court therefore examines the two limitations on the doctrine of equivalents asserted by Sport Dimension.

  B. Prosecution History Estoppel

  Prosecution history estoppel is an affirmative defense. "[It] requires that the claims of a patent be interpreted in light of the proceedings in the PTO during the application process." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 733 (2002) [hereinafter Festo VIII]. More specifically, "[w]hen . . . the patentee originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection [by the PTO], he may not argue that ...


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