The opinion of the court was delivered by: M. James Lorenz, United States District Court Judge
ORDER: (1) GRANTING IN PART AND DENYING IN PART PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT THAT DEFENDANTS' LITERALLY INFRINGE THE PATENT-IN-SUIT [# 391]; (2) GRANTING IN PART AND DENYING IN PART DEFENDANTS' CONSOLIDATED MOTION FOR AND RELATED COUNTERCLAIM SUMMARY JUDGMENT OF NON-INFRINGEMENT OR, IF DENIED, FOR INVALIDITY [#406]; (3) GRANTING PLAINTIFF'S MOTION TO STRIKE UNTIMELY EXPERT OPINIONS OF DR. VIJAY GUPTA [#390]; (4) GRANTING PLAINTIFF'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF NO LACHES AND NO ESTOPPEL [#392]; AND (5) DENYING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT ON PLAINTIFF'S STATE LAW CLAIMS [#405]
In this patent infringement action, the parties filed cross-motions for summary adjudication. Plaintiff and Counterdefendant Dimension One Spas, Inc. ("Dimension One") filed motions for summary adjudication of its infringement claim and of Defendants and Counterclaimants Coverplay, Inc.'s and E. Jess Tudor's (collectively "Coverplay") defenses of laches and equitable estoppel. Coverplay filed a motion for summary adjudication of its counterclaim for declaration of non-infringement and invalidity and of Dimension One's sate law claims. Dimension One also filed a motion to strike the invalidity opinions of Coverplay's expert Vijay Gupta. The parties opposed each other's motions. For the reasons which follow, Plaintiff's motion for summary judgment that Defendants' accused products literally infringe the patent-in-suit is GRANTED IN PART AND DENIED IN PART; Defendants' consolidated motion for summary judgment of non-infringement or, if denied, for invalidity is GRANTED IN PART AND DENIED IN PART; Plaintiff's motion to strike untimely expert opinions of Dr. Vijay Gupta is GRANTED; Plaintiff's motion for partial summary judgment of no laches and no estoppel is GRANTED; and Defendants' motion for summary judgment on Plaintiff's state law claims is DENIED.
At the relevant time, Dimension One was involved in spa sales and manufacturing. It is the assignee of U.S. Patent No. 5,131,102 ("the '102 Patent") entitled "Spa Cover Lift Assembly," which facilitates removal of a spa cover from atop a spa. Dimension One alleges that Coverplay infringed the '102 Patent by making, using, offering for sale, selling and/or importing spa cover lifts, including Cover*Up! and Forward Fulcrum spa cover lifts. (Second Am. Compl. at 4.)
Federal Rule of Civil Procedure 56 empowers the court to enter summary judgment on factually unsupported claims or defenses, and thereby "secure the just, speedy and inexpensive determination of every action." Celotex Corp. v. Catrett, 477 U.S. 317, 325, 327 (1986). "If summary judgment is not rendered on the whole action, the court should, to the extent practicable, determine what material facts are not genuinely at issue." Fed. R. Civ. P. 56(d).
Summary judgment or adjudication of issues is appropriate 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). A fact is material when it affects the outcome of the
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A "genuine issue" of material fact arises if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id.
The burden on the party moving for summary judgment depends on who bears the burden of proof at trial. For example, Dimension One bears the burden of proof on its infringement claim. See Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 819 (Fed. Cir. 1992). "When the party moving for summary judgment would bear the burden of proof at trial, it must come forward with evidence which would entitle it to a directed verdict if the evidence went uncontroverted at trial. In such a case, the moving party has the initial burden of establishing the absence of a genuine issue of fact on each issue material to its case." See C.A.R. Transp. Brokerage Co., Inc. v. Darden Restaurants, Inc., 213 F.3d 474, 480 (9th Cir. 2000) (citations omitted). On the other hand, Coverplay as the moving party with respect to the same claim would meet its burden by pointing out the absence of evidence with respect to any one element of Dimension One's claim. See Celotex, 477 U.S. at 325.
If the movant meets its burden, the burden shifts to the non-movant to show summary adjudication is not appropriate. Celotex, 477 U.S. at 317, 324. The non-movant does not meet this burden by showing "some metaphysical doubt as to material facts." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). The non-movant must go beyond the pleadings to designate specific facts showing there are genuine factual issues which "can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party." Anderson, 477 U.S. at 250.
When ruling on a summary judgment motion, all of the non-movant's evidence is to be believed, and all justifiable inferences are to be drawn in its favor. Anderson, 477 U.S. at 255. Determinations regarding credibility, the weighing of evidence, and the drawing of legitimate inferences are jury functions, and are not appropriate for resolution by the court on a summary judgment motion. Id. Only admissible evidence may be considered in deciding a motion for summary judgment. See Fed. R. Civ. P. 56(e).
CROSS-MOTIONS REGARDING INFRINGEMENT
Dimension One claims that Coverplay's products infringe the '102 Patent literally, or in the alternative, under the doctrine of equivalents. Both, literal infringement claims and claims of infringement under the doctrine of equivalents may be decided by summary judgment when the summary judgment standard is met. Bai v. L&L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).
There is patent infringement if any one of the patent's claims covers the alleged infringer's product or process. SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988.) "For literal infringement, each limitation of the claim must be met by the accused device exactly, any deviation from the claim precluding a finding of infringement." Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547 (Fed. Cir. 1994). "Determining whether a patent claim has been infringed involves two steps: (1) claim construction to determine the scope of the claims, followed by (2) determination whether the properly construed claim encompasses the accused structure." Id. The first step, claim construction, is a matter of law. Id. The court has already completed this step when it construed the claims of the '102 Patent. (See Order Construing Claims, filed Dec. 2, 2005.) "The second step, determination of infringement, whether literal or under the doctrine of equivalents, is a question of fact." Bai, 160 F.3d at 1353. The court must compare the patent claims, as construed, to the accused device to determine whether all of the claim limitations are present either literally or by a substantial equivalent. TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1371 (Fed. Cir. 2002).
Where the relevant aspects of the accused device's structure and operation are undisputed, the issue of infringement turns on claim interpretation. Johnson Worldwide Assoc., Inc. v. Zebco Corp., 175 F.3d 985, 988-89 (Fed. Cir. 1999). The structure and operation of Coverplay's products are not disputed in this case. (Pl.'s Mem. of P.&A. in Supp. of Its Mot. for Summ. J. at 4; Defs' Opp'n to Pl.'s Mot. for Summ. J. at 4.)
Dimension One alleged that Coverplay infringed one or more claims of the '102 Patent. Claim 1 is the only independent claim. (See Order Construing Claims at 4-5.) It has four elements:
(1) "a pair of pivoting supports;"
(2) "pivot means, adapted to be secured adjacent one side of a spa, and having a common pivot axis for facilitating pivoting said pair of pivoting supports about said common axis;"
(3) "each pivoting support having a first end pivotally attached to said pivot means to pivot about said common axis, and each having a second end;" and
(4) "an upper bridge arm connected to said second ends of said pair of pivoting supports, said upper bridge arm pivotable to a first position adjacent and parallel to said hinge of said spa cover when covering said spa and to a second position clear of said spa where said cover sections are folded over said upper bridge arm and said upper bridge arm is pivoted to said second position to remove said cover from said spa and support said cover to one side of said spa." (Garner Decl. in Supp. of Pl.'s Mot. for Summ. J. Ex. A.) "[I]f an accused infringer does not infringe an independent claim, it cannot infringe claims that depend on that independent claim." Streamfeeder, LLC v. Sure-Feed Sys., Inc., 175 F.3d 974, 984 (Fed. Cir. 1999).
In its motion, Dimension One presented evidence that Coverplay's devices infringed each element of Claim 1 and Claim 2. In opposition to Dimension One's motion and in support of its own motion on its non-infringement claim, Coverplay argued that it does not infringe the '102 Patent because the "pivot means" limitation is not found in its products and that its CoverPro products do not infringe because they do not have an "upper bridge arm," another element of Claim 1.*fn1 Coverplay does not dispute that all the other elements are found in its products. Pivot Means The "pivot means" limitation is a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6. (Claim Construction Order at 17.) A means-plus-function limitation recites a function to be performed rather than a defined structure. Lockheed Martin v. Space Sys. Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003). "Literal infringement of a § 112, ¶ 6 limitation requires that the relevant structure in the accused device perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification." Frank's Casing Crew & Rental Tools, Inc. v. Weatherford Int'l, Inc., 389 F.3d 1370, 1378 (Fed. Cir. 2004) (internal quotation marks and citations omitted). Accordingly, the inquiry has two elements: "an accused device must (1) perform the identical function recited in the means limitation and (2) perform that function using the structure disclosed in the specification or an equivalent structure." Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1578 (Fed. Cir. 1993).
The structure of the pivot means disclosed by the '102 Patent is "(1) one pivot block and a pair of lower corner bars; (2) a pair of pivot blocks and a pair of lower corner bars; (3) equivalents of structures (1) and (2)." (Claim Construction Order at 20.) According to the '102 Patent specification, "[a] pivot block 27 is typically a two piece or one piece structure having a bore 37, when assembled, extending completely therethrough. The diameter of bore 37 will be greater than the outside diameter of corner bar 29 in order that one portion of corner bar 29 may extend through and be rotatably supported by pivot block 27." (Garner Decl. in Supp. of Pl.'s Mot. for Summ. J. Ex. A, '102 Patent at col. 4:21-26.) The pivot block is attached to the spa or the ground with screws, while the corner bar (an elbow shaped bar) is connected to the pivoting support (a side arm) either by fitting the pivoting support into the corner bar or fitting the corner bar into the pivoting support. (See id. at col. 3:25-col. 4:49.) The relevant components of the pivot means structure are a pivot block and a corner bar.
Coverplay has used two relevant structures. The VersaMount assembly has been used since 1998, and the flange assembly was used before that time. (Tudor Decl. in Supp. of Defs' Consol Mot. for Summ. J.*fn2 at 2.) Each of these structures consists of two components.
The flange assembly consisted of a threaded female flange which accepted a male threaded elbow. (Id. at 3 & Ex. 6.) The other end of the elbow was female and threaded to accept a threaded nipple, which fit into the end of the side arm. (Id.)
The VersaMount assembly consists of an angled plate with a threaded nipple and a threaded elbow. (Id. at 2 & Ex. 4& 5.) The cast iron plate is angled at 90 degrees, which permits it to be stood upright. (Id. at 2-3 & Ex. 4, 5.) Screw holes are machined into the plate to permit it to be attached to either side of the spa or the deck. (Id.) The upright part of the plate has a post sticking out at a 90 degree angle. (Id. at 3 & Ex. 4 & 5.) The post has machined threads at the end of it. (Id.) The elbow piece has a threaded female end which threads around the threaded nipple and onto the threaded post of the angled plate. (Id.) The un-threaded male end fits into the end of the side arm and is held in place by a screw. (Id.)
The court interpreted the function of the pivot means limitation of the '102 Patent to be "facilitating pivoting the pivoting supports about a common axis." (Claim Construction Order at 18.) Coverplay distinguishes its products arguing that they are not limited to a single pivot means and that its flange and VersaMount assemblies do not pivot the pivoting supports, i.e., side arms, about a common axis.
Regarding the single pivot means limitation, Coverplay argues that "[i]n contrast to the single pivot means limitation of Claim 1, all of Coverplay's products include either two of the earlier [flange] assembly, or two of the VersaMounts. Each of either the earlier [flange] assembly or the VersaMount pivots a single pending arm, not the pair of pending arms, of the accused products." (Defs' Opp'n to Pl.'s Mot. for Summ. J. at 9.) Coverplay's products use a pair of either flange or VersaMount assemblies to rotate a pair of elbows attached to the pending arms. (Tudor Decl. in Supp. of Defs' Consol Mot. for Summ. J. Tudor at 3 & Ex. 7 (assembly instructions).) Each assembly rotates one pending arm on each side of the spa. (Id. at 3 & Ex.
The court construed "pivot means" as "one 'pivot means' structure" "made up of multiple components. For example, the entire pivot means structure can be made up of a pair of pivot blocks and a pair of lower corner bars." (Claim Construction Order at 21.) This follows the court's definition of the "pivot means" structure as including "a pair of pivot blocks and a pair of lower corner bars." (Id. at 20.) Accordingly, Coverplay's argument that its products do not infringe because each of its assemblies pivots only one side arm on each side of the spa is rejected. There is no genuine issue of fact whether the accused products meet the single pivot means limitation.
Regarding the common pivot axis, Coverplay argues that its flange and VersaMount assemblies do not pivot the side arms about a common axis when they are attached to opposite sides of the spa. (Defs' Opp'n to Pl.'s Mot. for Summ. J. at 9.) Coverplay acknowledges that while the axes of the side arms may be similar, they are not the same. (Id.)
This argument flies in the face of Coverplay's own assembly instructions. Coverplay instructs its customers to position the side arms on opposing sides of the spa, at the base, approximately seven inches from the corner. (Id.) Although the distance from the corner is just a suggestion, Coverplay's instructions do not indicate the possibility of positioning them at a different distance on each side of the spa. (See id.) To the contrary, in a later version of the instructions, applicable to the lifters with VersaMount assemblies, the instructions warn to "mak[e] sure [the VersaMounts] are equa-distant from each corner." (Tudor Decl. in Supp. of Defs' Consol Mot. for Summ. J. Ex. 7.) If the flanges or VersaMount assemblies are located equidistant from each corner of the spa, the pivoting supports necessarily pivot about a common axis. (Nixon Decl. in Opp'n to Defs' Consol. Mot. for Summ. J. ("Nixon Decl.") at 2-3.)
Coverplay makes a number of factual arguments in a attempt to show that its products do not have a pivot means which rotates the side arms about a common pivot axis. First, Coverplay contends that the Forward Fulcrum feature and the possible adjustment of the side arms' length compensate for the lack of a common axis or alignment. (See Tudor Decl. in Supp. of Defs' Consol Mot. for Summ. J. at 3-4; Gupta Decl. in Supp. of Defs' Consol. Mot. for Summ. J. at 3 (length of each side arm can be adjusted by use of two horizontal bar assemblies).) According to Coverplay's expert Vijay Gupta, the purpose is to allow the user to attach the flange or VersaMount assemblies either on the deck or directly on the opposite sides of the spa or a combination thereof. (Gupta Decl. in Supp. of Defs' Consol. Mot. for Summ. J. at 3.) This assertion is unsupported by the record. According to Coverplay's inventor Jess Tudor and the assembly instructions, the choice is for both assemblies to be attached on the side of the spa or the deck, not on the deck on one side and on the side of the spa on the other side. (See Tudor Decl. in Supp. of Defs' Consol Mot. for Summ. J. at 3 & Ex. 7.) Expert testimony unsupported by sufficient facts or date is inadmissible and therefore cannot properly oppose a summary judgment motion. See Fed. R. Evid. 702 & Fed. R. Civ. P. 56(e).
Furthermore, Dr. Gupta asserts that Coverplay's products are "purposely designed to operate with two independent pivot axes" and "allow proper rotation . . . with completely misaligned pivoting axes of the two pending arms." (Gupta Decl. in Supp. of Defs' Consol. Mot. for Summ. J. at 3.) Again, these assertions are unsupported and, again, they contradict Coverplay's own assembly instructions. Dr. Gupta had to acknowledge that the instructions indicate to the installer to make sure that the VersaMounts are equidistant from each corner. (Garner Decl. in Supp. of Pl.'s Mot. for Summ. J. Ex. I, Gupta Depo. ("Gupta Depo.") at 232; see also id. at 143.) Dr. Gupta's unsupported assertions cannot properly oppose a summary judgment motion. See Fed. R. Evid. 702 & Fed. R. Civ. P. 56(e).
The Forward Fulcrum feature referenced by Coverplay appears to concern the curved nature of the side arms and the placement of the flange or VersaMount assemblies not at the back corner of the spa but approximately seven inches forward from the back corner. (Tudor Decl. in Supp. of Defs' Consol Mot. for Summ. J. at 4 & Ex. 6.) The bend in the side arms does not affect the placement of the pivot axis. (Garner Decl. in Opp'n to Defs' Consol. Mot. for Summ. J. Ex. H, Delson Rebuttal Report ("Delson Rebuttal Report") at 2.) Furthermore, the location of the flange or VersaMount assemblies forward from the back corners of the spa also does not affect the alignment of the two assemblies relative to each other so as to impact the
Second, Coverplay relies on the deposition testimony of Dimension One's expert Nathan J. Delson, who testified that "[t]he orientation of the mounting plate on the elbow flange in the Coverplay product relative to the pivot axis is different than on the pivot block of the '102 Patent." (Grabell Decl. in Opp'n to Pl.'s Mot. for Summ. J. Ex. 3, Delson Depo. at 158.) Neither the deposition excerpts nor Coverplay's briefs explain in any way this cryptic statement. It appears that the statement does not address the alignment of the pivot axes as between the pivot means, i.e., flange or VersaMount assemblies, on each side of the spa, but to the alignment of the parts within the same assembly. The statement is therefore irrelevant to Coverplay' common pivot axis argument.
Third, Coverplay argues that its products with the Forward Fulcrum feature do not work with in-ground spas if the flange or VersaMount assemblies are moved too far forward.*fn3 (Tudor Decl. in Supp. of Defs' Consol Mot. for Summ. J. at 5; Defs' Opp'n to Pl.'s Mot. for Summ. J. at 10.) Coverplay does not explain how the possibility of assembling its products so as to operate improperly presents a defense to infringement. The fact that Coverplay's products do not work with in-ground spas when the pivot axes are moved too far forward does not shield Coverplay from infringement. Its products can be, and are instructed to be, assembled in a way that aligns the pivot axes and assures proper functioning. Coverplay's argument that its products do not work with in-ground spas when the pivot axes are too far forward is irrelevant. Its own evidence shows that the pivot axes of its products can be sufficiently aligned to assure proper functioning, and can even be perfectly aligned. (Tudor Decl. in Supp. of Defs' Consol Mot. for Summ. J. Ex. 7 & Gupta Depo. at 143.) The assembly instructions show that it is desirable for the proper assembly to align the pivot axes, although it is not necessary for them to be aligned perfectly for the cover lifter to operate properly.
According to Dr. Gupta, one of the reasons why the flange or VersaMount assemblies do not have a common axis is that the installation instructions direct that the flange or VersaMount assemblies on each side be located "approximately" seven inches from the back corner of the spa and that the "true corner" of the spa is not defined because the spas allegedly have circular corners. (Gupta Depo. at 140-42.) According to Dr. Gupta, this makes it "next to impossible" to achieve a 100% accurate alignment without using sophisticated measuring equipment. (Id. at 142.) With sophisticated measuring equipment it is possible to perfectly align the axes. (Id. at 143.) Without the equipment, following the instructions to affix the flange or VersaMount assemblies equidistant from the back true corners of the spa, the axes will "be off by a little bit." . at 142.) Being off a little bit does not prevent the device from operating properly. (Delson Decl. in Opp'n to Defs' Consol. Mot. for Summ. J. ("Delson Decl.") at 7.)
Dr. Gupta contradicts his deposition testimony in that he states in his subsequent declaration that the axis of one VersaMount or flange assembly "cannot be aligned with the other." (Gupta Decl. at 3.) The court may strike and disregard tactical corrections or "rewrites" of a deposition transcript "tailored to manufacture an issue of material fact . . . to avoid a summary judgment ruling." Hambleton Bros. Lumber Co. v. Balkin Enter., Inc., 397 F.3d 1217, 1225 (9th Cir. 2005). This is because "[a] deposition is not a take home examination." Id. (quoting Garcia v. Pueblo Country Club, 299 F.3d 1233, 1242 n. 5 (10th Cir. 2002)). The court can strike all or a portion of an affidavit for purposes of opposing a summary judgment motion. See e.g., Kennedy v. Allied Mut. Ins. Co., 952 F.2d 262, 266 (9th Cir.1991) ("a party cannot create an issue of fact by an affidavit contradicting his prior deposition testimony"); Block v. City of Los Angeles, 253 F.3d 410, 419 n.2 (9th Cir. 2001) ("A party cannot create a genuine issue of material fact to survive summary judgment by contradicting his earlier version of the facts."); see also Hambleton Bros. Lumber Co., 397 F.3d at 1225. The court therefore strikes the assertion in Dr. Gupta's declaration that the axes cannot be aligned.
According to Dr. Delson, "[i]t is practically impossible to align two axes of a mechanical device with absolute mathematical precision. All mechanical devices have tolerances of assembly which allow for proper function of the device with permissible misalignment." (Delson Decl. at 6.) It is undisputed that it is nearly impossible to assemble a cover lifter so as to perfectly align the axes. (Id.; Gupta Depo. at 142.) Accepting Dr. Gupta's opinion that the '102 Patent requires perfect alignment of the pivot axes, would therefore, as a practical matter, eliminate at least the embodiments of the '102 Patent which do not include a lower bridge arm.
Delson Decl. at 6.) The embodiments of the '102 Patent, just like Coverplay's products, operate properly even when the axes are "a little bit off." (See id. at 6-7 (The pivots "share the pivot axis even when they are not perfectly aligned, unless the pivot points were significantly misaligned to the degree where the mechanism would no longer function as designed.").
Based on the foregoing, Coverplay cannot raise a genuine issue of fact regarding the alignment of the pivot axes of its products as compared to the '102 Patent.
At the summary judgment stage, facts must be viewed in the light most favorable to the nonmoving party only if there is a 'genuine' dispute as to those facts. As we have emphasized, '[w]hen the moving party has carried its burden under Rule 56(c), its opponent must do more than simply show that there is some metaphysical doubt as to the material facts . . .. Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no genuine issue for trial.' '[T]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact.' When opposing parties tell two different stories, one of ...