The opinion of the court was delivered by: Present: The Honorable Philip S. Gutierrez, United States District Judge
Wendy K. Hernandez Not Present n/a Deputy Clerk Court Reporter Tape No. Attorneys Present for Plaintiff(s): Attorneys Present for Defendant(s): Not Present Not Present
Proceedings: (In Chambers) Order DENYING Defendant's motion for summary judgment. Pending before the Court is Defendant Wal-Mart Stores, Inc.'s ("Wal-Mart" or "Defendant") motion for summary judgment of non-infringement and invalidity of U.S. Patent No. D579,570. See Dkt. # 42. After considering the moving papers, opposing papers, and the arguments of counsel, the Court DENIES the motion for summary judgment as to both non-infringement and invalidity.
This case concerns the alleged infringement of U.S. Patent Nos. 7,093,593 (the "'593 Patent"), a utility patent, and D579,570 (the "'570 Patent"), a design patent for a "Floating Spa Cover" used to heat the water in a swimming pool. SUF 1. Solar Sun Rings ("SSR" or "Plaintiff") filed a Complaint (Dkt. # 1) against Wal-Mart alleging that "Solar Pad," a floating solar pool heater sold by Wal-Mart (the "Accused Product") infringes on the claims of the '593 patent and the '570 patent. Compl. ¶¶ 9, 15-16. Wal-Mart answered the Complaint, asserting affirmative defenses of non-infringement and invalidity, among other defenses. Dkt. # 13; Ans. 10:25-11:6. On the same day, former Defendant General Foam Plastics Corp. ("General Foam") filed its Answer, asserting counterclaims for declaratory relief as to non-infringement and invalidity. Dkt. # 16. The parties stipulated to the dismissal of Defendant General Foam on June 22, 2012. Dkt. # 37. Because General Foam was the only party that had asserted counterclaims, General Foam's dismissal led to the dismissal of the counterclaims as well.
In August, Wal-Mart filed a motion for summary judgment as to non-infringement and invalidity of the'593 Patent. Dkt. # 40. The motion was granted as to non-infringement and deemed moot as to invalidity because Wal-Mart had pled invalidity as an affirmative defense only and not as a counterclaim. See Dkt. # 52. Wal-Mart then filed this motion for summary judgment, alleging that the Accused Product did not infringe on the '570 Patent, and that the '570 Patent is invalid because it would have been anticipated by one of ordinary skill in the art and was obvious. Dkt. # 42; Mot. 22-25.
Federal Rule of Civil Procedure 56(a) establishes that a "court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). A party may move for summary judgment not only as to an entire case, but also as to a claim, defense, or part of a claim or defense. Id. The movant bears the initial burden to demonstrate the lack of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the movant satisfies the burden, the non-movant must set forth specific evidence showing that there remains a genuine issue for trial, and "may not rest upon mere allegation or denials of his pleading." See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986).
An issue of fact is a genuine and material issue if it cannot be reasonably resolved in favor of either party and may affect the outcome of the suit. See id. at 249-50. A party asserting that a fact cannot be genuinely disputed must support that assertion by citing to "materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials." Fed. R. Civ. P. 56(c)(1)(A). A party may object that material cited would not be admissible in evidence. See id.; 56(c)(2). Admissible declarations or affidavits must be based on personal knowledge, must set forth facts that would be admissible in evidence, and must show that the declarant or affiant is competent to testify on the matters
Because the '570 patent is a design patent, this Court must follow a two-step analysis in determining infringement. "[F]irst, as with utility patents, ... the claim [must] be properly construed to determine its meaning and scope. Second, the claim as properly construed must be compared to the accused design to determine whether there has been infringement." Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995) (citations omitted).
In construing design patents, courts consider the patent's claims, the specification, and the prosecution history. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc) (citations omitted). Courts may also consider "expert testimony, including evidence of how those skilled in the art would interpret the claims," as well as other extrinsic evidence. Id. (citation omitted). As design patents typically are claimed as shown in drawings, without any written description, the court's claim construction must be adapted accordingly. See 37 C.F.R. § 1.153(a).
Once the court has construed the patent's claims, it must compare the accused item to the patented design for overall visual similarity, to determine whether infringement has occurred.
67 F.3d at 1577 (citing Markman, 52 F.3d at 976. The test for infringement has long been known as the "ordinary observer" test:
[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.
Gorham Co. v. White, 81 U.S. 511, 528 (1871). Complete similarity is not required to find infringement, and "minor changes in a design are often readily made without changing its overall appearance." Id. at 1117.
Likewise, if the overall impression of the designs is that they are dissimilar, infringement cannot be found based on similarity of specific features. OddzOn Products, Inc. v. Just Toys, 122 F.3d 1396, 1405 (Fed. Cir. 1997). In applying the ordinary observer test, the court's analysis "is not limited to the ornamental features of a subset of the [design patent's] drawings, but instead must encompass the claimed ornamental features of all figures of a design patent." Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1379 (Fed. Cir. 2002), abrogated by Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed Cir. 2008). In Egyptian Goddess, the Court ...