The opinion of the court was delivered by: Marilyn L. Huff, District Judge United States District Court
ORDER: (1) GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT REGARDING SEIRUS' '690 AND '804 PATENTS; (2) GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT REGARDING TRADE DRESS; (3) GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT REGARDING FALSE DESIGNATION OF ORIGIN AND UNFAIR INC., COMPETITION CAUSES OF ACTION UNDER THE LANHAM ACT AND CALIFORNIA LAW; AND (4) GRANTING DEFENDANT'S REQUEST FOR JUDICIAL NOTICE
On December 30, 2011, Defendant Kombi Ltd. ("Kombi" or "Defendant") filed motions for summary judgment regarding Seirus' Patent Nos. 5,214,804 ("the '804 patent"), 6,272,690 ("the '690 patent"), Seirus' trade dress claims, and requested judicial notice.*fn1 (Doc. Nos. 45 & 46.) On January 16, 2012, Seirus Innovative Accessories, Inc. ("Seirus" or "Plaintiff") filed a response in opposition to Kombi's motions for summary judgment. (Doc. Nos. 50 & 53.) On January 23, 2012, Kombi filed a reply. (Doc. Nos. 57 & 58.)
The Court held a hearing on January 30, 2012. Matthew Murphey and Paul McGowan appeared for Seirus, and Kenneth Florek appeared for Kombi. Based on the following, the Court grants Kombi's motions for summary judgment.
Seirus filed a complaint for patent infringement, trade dress infringement, and unfair competition on April 4, 2010 against Kombi Ltd. and Kombi Sports, Inc. (Doc. No. 1, Complaint.) Specifically, Seirus alleges infringement and inducing infringement of the '804 patent and the '690 patent by the Kombi accused products. (Complaint at 4-10.) The '804 patent was filed on January 27, 1992 and issued on June 1, 1993. The '804 claims are directed to an article of clothing that includes a mask portion to be worn about a user's mouth and nose, and a scarf portion to be worn about a user's neck. (Doc. No. 46, Ex. 1, the '804 patent). The '690 patent was filed on March 18, 1996 and issued on August 14, 2001. The '690 patent contains a single claim directed to a "combination of a sport goggle and an article of protective clothing." (Doc. No. 46, Ex. 2, the '690 patent).
Seirus also asserts claims of trade dress infringement, false designation of origin and unfair competition under the Lanham Act, and unfair competition and unjust enrichment under California law. (Doc. No. 1, Complaint at 4-10.)
I. Motion for Summary Judgment
Summary judgment is appropriate under Rule 56 of the Federal Rules of Civil Procedure if the moving party demonstrates the absence of a genuine issue of material fact and entitlement to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). A fact is material when, under the governing substantive law, it could affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Freeman v. Arpaio, 125 F.3d 732, 735 (9th Cir. 1997). A dispute is genuine if a reasonable jury could return a verdict for the nonmoving party. Anderson, 477 U.S. at 248.
A party seeking summary judgment bears the initial burden of establishing the absence of a genuine issue of material fact. Celotex, 477 U.S. at 323. The moving party can satisfy this burden in two ways: (1) by presenting evidence that negates an essential element of the nonmoving party's case; or (2) by demonstrating that the nonmoving party failed to establish an essential element of the nonmoving party's case on which the nonmoving party bears the burden of proving at trial. Id. at 322-23. "Disputes over irrelevant or unnecessary facts will not preclude a grant of summary judgment." T.W. Elec. Serv., Inc. v. Pacific Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir. 1987). Once the moving party establishes the absence of genuine issues of material fact, the burden shifts to the nonmoving party to set forth facts showing that a genuine issue of disputed fact remains. Celotex, 477 U.S. at 322. The nonmoving party cannot oppose a properly supported summary judgment motion by "rest[ing] on mere allegations or denials of his pleadings." Anderson, 477 U.S. at 256. "The 'opponent must do more than simply show that there is some metaphysical doubt as to the material fact.'" Kennedy v. Allied Mut. Ins. Co., 952 F.2d 262, 265--66 (9th Cir. 1991) (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986)). Furthermore, the nonmoving party generally "cannot create an issue of fact by an affidavit contradicting his prior deposition testimony." Kennedy, 952 F.2d at 266; see Foster v. Arcata Assocs., 772 F.2d 1453, 1462 (9th Cir. 1985), cert. denied, 475 U.S. 1048 (1986); Radobenko v. Automated Equip. Corp., 520 F.2d 540, 543-44 (9th Cir. 1975).
When ruling on a summary judgment motion, the court must view all inferences drawn from the underlying facts in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co., 475 U.S. at 587. The Court does not make credibility determinations with respect to evidence offered. See T.W. Elec., 809 F.2d at 630-31 (citing Matsushita, 475 U.S. at 587).
Summary judgment is therefore not appropriate "where contradictory inferences may reasonably be drawn from undisputed evidentiary facts." Hollingsworth Solderless Terminal Co. v. Turley, 622 F.2d 1324, 1335 (9th Cir. 1980).
A. Seirus' Claims for Patent Infringement
Seirus claims (i) patent infringement and (ii) inducing patent infringement of U.S. Patent Nos. 5,214,804 ("the '804 patent") and 6,272,690 ("the '690 patent") against Kombi. Kombi moves for summary judgment regarding these claims asserting that the claims of the '804 patent are invalid and that Kombi's products do not infringe the '690 patent. (Doc. No. 46.)
The '804 patent describes an article of clothing that combines a mask portion to be worn about a user's mouth and nose with a scarf portion to be worn about a user's neck. Kombi argues that the claims of the '804 patent are invalid as obvious over the prior art and, therefore, cannot be infringed either directly or by inducement. (Id. at 5.)
a. Legal Standard for Obviousness
A patent issued by the United States Patent and Trademark Office ("USPTO") is presumed to be valid. Microsoft Corp. v. i4i Ltd. P'ship, 131 S.Ct. 2238, 2242 (2011). In order to overcome the presumption of validity, a party must prove invalidity by clear and convincing evidence. Id.
A claimed invention is obvious if "the differences 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." 35 U.S.C. § 103(a). Obviousness is a legal question based on underlying factual determinations. Eisai Co. Ltd. v. Dr. Reddy's Lab., Ltd., 533 F.3d 1353, 1356 (Fed. Cir. 2008). "The factual determinations underpinning the legal conclusion of obviousness 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, and 4) evidence of secondary factors." Id. (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). Secondary factors include "commercial success, long felt but unsolved needs, failure of others, etc." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham, 353 U.S. at 17-18.) Summary judgment may be appropriate if "the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent." KSR Int'l Co. at 427.
A patent is likely to be obvious if it merely yields predictable results by combining familiar elements according to known methods. Id. at 416. "[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." Id. at 418. "If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability." Id. at 417. In determining obviousness, courts do not need to find "precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418. A person of ordinary skill interprets the prior art "using common sense and appropriate perspective." Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1361 (Fed. Cir. 2011) (citing KSR Int'l Co., 550 U.S. at 421). As the Supreme Court observed:
When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
KSR Int'l Co., 550 U.S. at 421. The results of ordinary innovation are not patentable. Id. at 427.
b. Claims 1-4 and 8-15: Obviousness Analysis
Claim 1 is directed to an article of clothing comprising three elements: i) a mask member with an upper edge and a lower edge; ii) a scarf member secured to the mask member; and iii) a securing means associated with the scarf member. '804 patent col.6 ll.45-66. The upper edge of the mask member extends along the lower part of the user's eye socket areas contouredly over the nose. Id. The lower edge extends under the user's chin and upwardly toward the upper edge on both sides of the face rearward of the eye socket areas. Id. The upper edge extends rearwardly to the area of the temples, and the lower edge is arcuate and intersects the upper edge in the area of the temples. Id. The scarf member is secured to said mask member along the lower edge and is sized to extend from the lower edge substantially the height of the neck of the user and in width rearwardly about the neck on both sides of the user's head. Id. The securing means is used to secure the article of clothing about the head of the wearer. Id.
Claim 2 depends from claim 1, and further requires that the scarf member to have "a left side and a right side which extend rearwardly and are sized to surround the neck of the user." Id. at col.6 l.67 - col.7 l.2. Claim 3 depends from claim 2, and additionally requires that the area under the chin of the scarf member extend in height "from the lower edge of the mask member to the chest area of the user." Id. at col.7 ll.3-6.
Claim 4 includes all the limitations of claim 1, and further includes limitations relating to the scarf member. Specifically, claim 4 further limits the scarf member to include a left side and a right side that are sized to surround the neck of the user, and to require the area of the scarf member under the chin of the user to extend in height from the lower edge of the mask member to the chest area of the user. Id. at col.7 ll.7-35.
Claim 5 depends from claim 4, and additionally requires that the scarf member "extends from the lower edge at the temple area rearwardly about the head of the user." Id. at col.7 ll.36-38. Claims 8-15 ultimately depend from claims 1 or 4, and recite various limitations directed to the materials of the mask and scarf members. Id. at col.8 ll. 6-30.
Kombi cites a number of prior art references to demonstrate the scope and content of the prior art. Kombi asserts that various combinations of these references render the '804 patent invalid for obviousness. (Doc. No. 46-1 at 7-10.) Six of the references cited by Kombi were not before the USPTO when the '804 patent application was examined, including U.S. Patent Nos. 5,025,507 ("the '507 patent"), 4,718,123 ("the '123 patent"), 2,686,317 ("the '317 patent"), 5,109,548 ("the '548 patent"), 202,262 ("the '262 patent"), and 4,768,235 ("the '235 patent"). The cited references that were before the USPTO were analyzed under pre-KSR obviousness standards, and include U.S. Patent Nos. 4,300,240 ("the '240 patent"), 4,825,474 ("the '474 patent"), 772,148 ("the '148 patent"), 4,941,211 ("the '211 patent"), and 766,963 ("the '963 patent"). Representative figures of the prior art references are pictured below:
'240 '474 '507 '123 '148 '317
A patent is likely to be obvious if it merely yields predictable results by combining familiar elements according to known methods. KSR Int'l Co., 550 U.S. at 418. The claimed elements of the '804 patent are familiar elements as shown by the many prior art patents cited by Kombi. The record shows that combining the various elements using known methods, as shown in the prior art, would yield predictable results for cold weather head gear. For example, the '317 patent, which was not before the USPTO, discloses head wearing apparel for protecting a wearer against severe weather conditions. '317 patent col.1 ll.1-4. The '317 patent discloses all elements of claims 1-5 of the '804 patent except the "securing means" of claims 1 and 4. Representative figures of the '804 and '317 patents are pictured below for reference:
The '317 patent teaches a mask member as claimed in claims 1 and 4. Specifically, flaps 8 and 9 make up the mask portion and extend from the opposite sides 4 and 5 of the hood. '317 patent col.2 ll.52-55. The flaps are described as "namely face covering portions of cupped formation and generally triangular in shape." Id. The prior art patent further describes an upper edge 13 of the mask portion that has a relatively horizontal position in front of the face slightly below the eyes, and a lower edge of the mask portion that is positioned under the chin that extends toward the horizontal edge. Id. at fig. 2, item13, col.2 ll.21-31, and col.3 ll.33-40. The upper edge 13 extends along the lower part of the eye socket areas and over the nose. The upper edge 13 also extends rearwardly to the area of the temples. Figure 2 shows that the upper edge 13 intersects the lower edge of the mask portion in the area of the temples. Id. at fig. 2, item 13.
The '317 patent teaches a scarf member as claimed in claims 1 and 4. For example Figure 1 of the '317 contains a scarf portion 6 that extends from the lower edge of the mask member rearwardly to surround the neck of the wearer on both sides of the head. Id. at fig. 1, item 6, and col.2 ll.31-40. The scarf member 6 has left and right sides that extend to surround the user's neck, as claimed by the '804 patent in claims 2 and 4. Id. at fig. 1, item 6. The scarf portion 6 covers the chest of the wearer and has two sides that come together to surround the neck of the wearer, as required by claims 3 and 4 of the '804 patent. Id. at fig. 1, item 6, and col.2 ll.35-37. The scarf portion 6 extends from the mask portion at the wearer's temples to surround the wearer's head, as claimed by the '804 patent in claim 5. Id.
The '317 patent describes a fastening device that operates to open or close the entire mask and scarf portions in the front portion of the garment. '317 patent figs. 1 and 3, item 15. Other prior art references disclose the claimed securing means of claims 1 and 4 of the '804 patent. For example, U.S. Patent No. 4,718,123 ("the '123 patent") teaches a garment for covering the neck of a wearer that has appendages that wrap around the neck and fasten to one another at the ends using a releasable fastener, such as Velcro, buttons, zippers, or snaps. '123 patent fig. 1, items 2-3, fig. 2, item 10, and col.1 ll.52-57. Further, U.S. Patent No. 4,300,240 ("the '240 patent") discloses a mask with securing means, such as adjustable velcro strips, for securing the mask around the wearer's head. '240 patent fig. 1, items 88 and 90, and col.4 ll.52-57.
A patent that is merely a combination of familiar elements combined using known methods that produces predictable results is likely obvious. KSR Int'l Co., 550 U.S. at 418. Here, modifying the scarf portion of the '317 patent to include the fasteners of the '123 patent would yield predictable results. The Supreme Court noted in KSR that, when determining obviousness, "neither the particular motivation nor the avowed purpose of the patentee controls." Id. at 419.
Moreover, during prosecution of the '804 patent application, the patent examiner noted in the Notice of Allowance that, "[n]one of the cited references alone or in combination disclose an article of clothing comprising a mask and an attached scarf member where the mask has an upper edge and a lower edge and where the upper edge extends rearwardly to the area of the wearers [sic] temples and where the lower edge is arcuate and intersects the upper edge in the area of the temples." '804 patent, Notice of Allowance of Feb. 19, 1993, at 2. The undisclosed '317 patent describes a lower edge and a horizontal upper edge 13 of a mask portion that intersect approximately at the wearer's temples. '317 patent fig. 2, item 13. Significantly, the '317 patent was not before the examiner. Therefore, the examiner's reasons for allowing the '804 patent are undercut by the existence of the '317 patent.
The ultimate judgment of obviousness is a question of law for the Court. KSR Int'l Co., 550 U.S. at 427. Considering the prior art, the scope of the patent claims, and the level of skill in the art,*fn2 the Court concludes that the record demonstrates no triable issue of material fact on obviousness for claims 1-5 of the '804 patent. See, e.g., Media Tech. Licensing, LLC v. Upper Deck Co., 596 F.3d 1334, 1339 (Fed. Cir. 2010) (affirming a district court's summary judgment of obviousness for claims directed to a piece of memorabilia attached to a trading card); Rothman v. Target Corp., 556 F.3d 1310, 1322 (Fed. Cir. 2009) (affirming a jury verdict of obviousness for claims directed to a nursing garment containing an invisible breast support).
Dependent claims 8-12 recite various limitations directed to the materials of the mask and scarf members. '804 patent col.8 ll.6-18. The '804 patent indicates that materials within the scope of claims 8-12 were known in the art. For example, POLAR TECTM is a flexible, stretchable, fleece-like material that was previously known in the art that falls within the material of claims 8-12. Id. at col.4 ll.42-55. Additionally, stretchable mask material of claim 8, such as nylon covered close sponge neoprene is disclosed by the '240 patent. '240 patent col.5 ll.45-50. A mask made of the fleece layer and water resistant layer of claims 9-10, such as a mask made of nylon covered close cell sponge neoprene, is disclosed by the '240 patent. Id. at col.5 ll.45-67. A scarf made of the soft stretchable fleece-like material of claims 11-12, such as a laminated fabric made of spandex and polyurethane laminate bound to an insulating fleece-knit polyester fabric, is disclosed by the '548 patent. '548 patent col.1 ll.64-68, and col.4 ll.1-18, 53-58. Thus, the materials of claims 8-12 were available at the time the '804 patent was filed. Accordingly, the Court concludes that there is no triable issue as to whether the types of materials recited in the claims were well known in cold weather apparel design. As a result, the Court determines that it would have been obvious to use these materials to produce the article of clothing of claims 8-12.
Dependent claims 13-15 recite limitations directed to a "middle edge" of the mask member "for positioning under the user's nose and sized to extend substantially the width of the user's nose." '804 patent col.8 ll.19-30. The '240 patent discloses all of the features of the middle edge recited in claims 13-15. '240 patent fig. 3, item 32 and col. 3 ll.27-67. For example, the '240 patent discloses, "a middle edge 32 in the area above the upper lip. The middle edge 32 extends essentially the width 33 of the nose piece 26, as best seen in fig. 3. The nose piece 26, together with the middle edge 32, form a breathing aperture 34 for the nostrils." Id. Therefore, the Court concludes that the record shows that it would have been obvious to add a middle edge to a mask member. Accordingly, the Court grants Kombi's summary judgment motion with respect to the invalidity of claims 1-4 and 8-15 from the '804 patent for obviousness.
c. Claims 1-4 and 8-15: Collateral Estoppel
When a court has decided an issue of fact or law necessary to its judgment, collateral estoppel may preclude relitigation of the issue. Hydranautics v. FilmTec Corp., 204 F.3d 880, 885 (9th Cir. 2000). The use of collateral estoppel is permitted to prevent relitigating the validity of a patent after a court has already declared the patent to be invalid. Blonder-Tongue Lab., Inc., v. Univ. of Ill. Foundation, 402 U.S. 313, 350 (1971). Collateral estoppel applies only where it is established that:
(1) the issue necessarily decided at the previous proceeding is identical to the one which is ...