The opinion of the court was delivered by: Dean D. Pregerson United States District Judge
Order (1) Granting Defendants' Motion for Summary Judgment in Part (Dkt. No. 111); (2) Denying Plaintiff's Motion for Summary Judgment in Part (Dkt. No. 103) [Motions filed on May 28, 2010]
Before the Court is Plaintiff Grand General Accessories Manufacturing ("GGAM")'s Motion for Summary Judgment as to patent validity, patent infringement, and trade dress infringement, and Defendants United Pacific Industries, Inc. ("UPI") and Lucidity Enterprise Co. ("Lucidity") (together "Defendants")' Motion for Summary Judgment on all claims.
Plaintiff owns a number of design patents related to automotive stop/tail/turn ("S/T/T") lights. The feature uniting GGAM's line of S/T/T lights is a light bulb reflector that the parties refer to as the "web comb design." The design consists of multiple facets arranged in a grid-like manner on the inner surface of a parabolic reflector, with a light bulb resting in the center of the reflector. GGAM claimed the web comb design (displayed below) in U.S. Design Patent No. 463,590 (the "'590 Patent"), issued in 2002.
According to GGAM, its entire series of S/T/T lights is an expansion of the basic design disclosed in the '590 Patent (described in the application as a "[r]ound decorative vehicle lighting reflector with segmented reflective surface.")*fn1 (Pl.'s Second Am. Compl. ("SAC") ¶ 17.) The '590 Patent itself is not directly at issue in this case; Plaintiffs instead accuse Defendants of infringing seven separate S/T/T design patents that make use of the web comb design (and one additional non-S/T/T light design patent). Plaintiffs also allege trade dress infringement under the Lanham Act.
For the reasons explained below, the Court is persuaded that Defendants are entitled to summary judgment in their favor on the grounds of patent invalidity with respect to five of Plaintiff's design patents, and on Plaintiff's trade dress infringement claim. Accordingly, the Court DENIES Plaintiff's Motion for Summary Judgment in part, and GRANTS Defendants' Motion for Summary Judgment in part. In a separate, concurrently filed order, the Court directs the parties to file supplemental briefing addressing invalidity and infringement issues related to the three design patents-in-suit that the Court does not declare invalid in this order.
Since 2002, Plaintiff has created a series of S/T/T lights incorporating the basic web comb design, and each design has a corresponding design patent. (SAC ¶ 16.) The disputed patents are listed below, along with the drawings submitted in the respective patent applications:
1) 570,012 ("'012 Patent") - "low profile round LED sealed light with spider design" - filed November 6, 2007; issued May 27, 2008 (Pl.'s Statement of Uncontroverted Facts ("SUF") ¶ 13; Rozsa Decl. Ex. 7);
2) 570,013 ("'013 Patent") - "low profile oval LED sealed light with spider design" - filed November 6, 2007; issued May, 27, 2008 (Pl.'s SUF ¶ 15; Rozsa Decl. Ex. 8);
3) 474,303 ("'303 Patent") - "rectangular decorative reflector for vehicle light with multiple LEDs" - filed September 26, 2002; issued May 6, 2003, (Pl.'s SUF ¶ 7; Rozsa Decl. Ex. 3);
4) 474,559 ("'559 Patent") - "oval decorative reflector for vehicle light with multiple LEDs" - filed September 24, 2002; issued May 13, 2003 (Pl.'s SUF ¶ 9; Rozsa Decl. Ex. 4);
5) 507,670 ("'670 Patent") - "rectangle multi-LED spider marker light for vehicle" - filed November 22, 2004; issued July 19, 2005 (Pl.'s SUF ¶ 11; Rozsa Decl. Ex. 5);
6) 511,850 ("'850 Patent") - "square multi-LED spider marker light for vehicle" - filed November 22, 2004; issued November 22, 2005 (Pl.'s SUF ¶ 17; Rozsa Decl. Ex. 9)
7) 470,970 ("'970 Patent") - "round decorative vehicle reflector for vehicle light with multiple LEDs" - filed September 24, 2002; issued February 25, 2003 (Pl.'s SUF ¶ 5; Rozsa Decl. Ex. 8);
8) 548,038 ("'038 Patent") - "screw-in knob with fanciful design" - filed June 3, 2006; issued August 7, 2007 (Pl.'s SUF ¶ 19; Rozsa Decl. Ex. 10);
The first seven patents are vehicle S/T/T or marker lights that rely on a multiplicity of faceted reflectors and an LED light in each reflector set to create the web comb effect. The eighth patent (the '038 Patent) is an air valve knob with a diamond faceted jewel; the jewel being the sole ornamental aspect of the knob. (Pl.'s SUF ¶¶ 123-25.)
Plaintiff alleges that Lucidity copied Plaintiff's patented designs with the intention of duplicating its products. (SAC ¶ 37.) It alleges that it became aware that Lucidity and Defendant United Pacific Industries, Inc. ("UPI") were selling decorative vehicle lights that infringed its design patents sometime in 2008. (SAC ¶¶ 46-47.) The patents and products related to those patents are too numerous to describe here (they comprise approximately fifty pages of Plaintiff's SAC).
In October 2008, GGAM filed suit against Defendants for patent infringement, trade dress infringement, and various other causes of action. In June and July of 2009, UPI and Lucidity counterclaimed against GGAM, raising various affirmative defenses. On May 28, 2010, GGAM moved for summary judgment as to patent validity, patent infringement, and trade dress infringement, and Defendants filed a cross-motion for summary judgment on all claims. The Court heard oral argument on August 6, 2010.
Summary judgment, in patent as in other cases, is proper when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Hodosh v. Block Drug Co., Inc., 786 F.2d 1136, 1141 (Fed. Cir. 1986). The moving party bears the burden of demonstrating the absence of any genuine issue of material fact, and all justifiable inferences must be resolved in the light most favorable to the non-movant. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). However, the moving party need not disprove matters on which the non-movant will have the burden of proof at trial. Id. at 322.
The movant can meet its burden by demonstrating "that there is an absence of evidence to support the nonmoving party's case," thus shifting the burden to the non-movant to prove otherwise. Id. at 325. However, "[t]o create a genuine issue of fact, the non-movant must do more than present some evidence on an issue it asserts is disputed." Avia Group Int'l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1560 (Fed. Cir. 1988). Rather, the non-movant must provide "specific facts showing that there is a genuine issue for trial." Fed. R. Civ. P. 56(e). If, instead, the non-movant's evidence is "merely colorable, or is not significantly probative, summary judgment may be granted." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249-50 (1986).
It is not the Court's task "to scour the record in search of a genuine issue of triable fact." Keenan v. Allan, 91 F.3d 1275, 1278 (9th Cir. 1996). Counsel have an obligation to lay out their support clearly. Carmen v. San Francisco Sch. Dist., 237 F.3d 1026, 1031 (9th Cir. 2001). The Court "need not examine the entire file for evidence establishing a genuine issue of fact, where the evidence is not ...