AMENDED ORDER: (1) DENYING PLAINTIFFS' MOTION FOR PARTIAL SUMMARY JUDGMENT; AND
(2) GRANTING IN PART AND DENYING IN PART DEFENDANT'S CROSS-MOTION FOR PARTIAL
SUMMARY JUDGMENT [Doc. Nos. 85, 94]
IRMA E. GONZALEZ, District Judge.
On June 6, 2012, Plaintiff Enel Company, LLC ("Enel") commenced this patent-infringement action against various defendants, including Defendant Lakeland Gear, Inc., which is now known as Rightline Gear, Inc. ("Rightline"). Plaintiff Lee B. Cargill later joined Enel in prosecuting this action. Presently before the Court are the parties' cross-motions for partial summary judgment. Both motions are opposed.
The Court found these motions suitable for determination on the papers submitted and without oral argument. See Civ. L.R. 7.1(d.1). For the following reasons, the Court DENIES Plaintiffs' motion for partial summary judgment, and GRANTS IN PART and DENIES IN PART Defendant's cross-motion for partial summary judgment.
On October 18, 2000, Mr. Cargill filed a provisional patent application for a "pickup truck tent camping system." (Def.'s Mot. Ex. 1.) In the provisional application, he summarized the invention as having three subsystems, "each of which removably mount to the cargo box of [a] truck": (1) a tent assembly with removal cover, (2) an elevated platform assembly, and (3) a travel cover assembly. Mr. Cargill subsequently assigned the patent to Enel. On November 19, 2002, U.S. Patent Number 6, 481, 784 ("Patent '784") was issued for Plaintiffs' pickup truck tent camping system. (Def.'s Mot. Ex. 11.)
By 2003, Mr. Cargill was aware of other truck tents available on the market, including David Schaefer and Lakeland Enterprises, LLC's "Camp-Right" truck tent. (Def.'s Mot. Exs. 3, 5.) On July 31, 2003, Plaintiffs' counsel sent Mr. Schaefer a letter identifying Enel as the owner of Patent '784 and Mr. Cargill as the inventor of a "truck tent camping system." (Def.'s Mot. Ex. 12.) He noted that Mr. Schaefer's "Camp Right" truck tent was noticed on a website and "thought that [Mr. Schaefer] should be highly interested in the '784 patent." (Id.) Sometime thereafter, Mr. Schaefer responded, stating that he was "quite confident there is no infringement what so ever, " and expressed that he was not interested in discussing licensing at that time. (Def.'s Mot. Ex. 16.) This prompted a response from Plaintiffs' counsel on August 18, 2003, demanding that Mr. Schaefer "immediately cease and desist making, having made, using, selling, offering to sell, and importing [his] infringing products or be prepared to face infringement litigation." (Def.'s Mot. Ex. 17.) On October 22, 2003, Lakeland's counsel sent a letter to Plaintiffs' counsel identifying distinctions between the parties' respective truck tents, and requesting observations and comments directed to specific elements raised. (Def.'s Mot. Ex. 19.) Plaintiffs did not respond.
The parties agree that there was no correspondence from October 2003 until this lawsuit was filed. During that time period, in August 2008, Mr. Schaefer sold "all or substantially all of the non-real property assets" of Lakeland to Defendant Rightline. (Def.'s Mot. Ex. 25; Pls.' Mot. Ex. A; Evans Decl. ¶ 3.) After the purchase, Defendant invested over $320, 000 in the business purchased from Lakeland, which included the truck-tent product line. (Evans Decl. ¶¶ 13-14.) It also increased its vendors from approximately 2 vendors in 2008 to 32 vendors as of June 2012. (Id. ¶ 16.)
On June 6, 2012, Plaintiffs commenced this action, asserting claims for the infringement of Patent '784, and injunctive relief. In response to the complaint, Defendant, Mr. Schaefer, and Lakeland assert equitable affirmative defenses, including laches and equitable estoppel. They contend that Plaintiffs' claims are barred, in whole or in part, by these equitable defenses. The parties now cross move for partial summary judgment. Both motions are opposed.
I. Legal Standard
Summary judgment is appropriate under Rule 56(c) where the moving party demonstrates the absence of a genuine issue of material fact and is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett , 477 U.S. 317, 322 (1986); Satterfield v. Simon & Schuster, Inc. , 569 F.3d 946, 950 (9th Cir 2009). 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). A dispute about a material fact is genuine if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson , 477 U.S. at 248.
A party seeking summary judgment always 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 make a showing sufficient to establish an element essential to that party's case on which that party will bear the burden of proof 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. Pac. Elec. Contractors Ass'n , 809 F.2d 626, 630 (9th Cir. 1987).
"The district court may limit its review to the documents submitted for the purpose of summary judgment and those parts of the record specifically referenced therein." Carmen v. S.F. Unified Sch. Dist. , 237 F.3d 1026, 1030 (9th Cir. 2001). Therefore, the court is not obligated "to scour the record in search of a genuine issue of triable fact." Keenan v. Allen , 91 F.3d 1275, 1279 (9th Cir. 1996) (citing Richards v. Combined Ins. Co. of Am. , 55 F.3d 247, 251 (7th Cir. 1995)). If the moving party fails to discharge this initial burden, summary judgment must be denied and the court need not consider the nonmoving party's evidence. Adickes v. S.H. Kress & Co. , 398 U.S. 144, 159-60 (1970).
If the moving party meets this initial burden, the nonmoving party cannot defeat summary judgment merely by demonstrating "that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co., v. Zenith Radio Corp. , 475 U.S. 574, 586 (1986); Triton Energy Corp. v. Square D Co. , 68 F.3d 1216, 1221 (9th Cir. 1995) ("The mere existence of a scintilla of evidence in support of the nonmoving party's position is not sufficient.") (citing Anderson , 477 U.S. at 242, 252). Rather, the nonmoving party must "go beyond the pleadings" and by "the depositions, answers to interrogatories, and admissions on file, " designate "specific facts showing that there is a genuine issue for trial." Celotex , 477 U.S. at 324 (quoting Fed.R.Civ.P. 56(e)).
When making this determination, the court must view all inferences drawn from the underlying facts in the light most favorable to the nonmoving party. See Matsushita , 475 U.S. at 587. "Credibility determinations, the weighing of evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge, [when] he [or she] is ruling on a motion for summary judgment." Anderson , 477 U.S. at 255.
Rule 56(d) provides for partial summary judgment. See Fed.R.Civ.P. 56(d) ("[T]he court... shall if practicable ascertain what material facts exist without substantial controversy and what material facts are actually and in good faith controverted."). Under Rule 56(d), the court may grant summary judgment on less than the non-moving party's whole claim. Zapata Hermanos Sucesores, S.A. v. Hearthside Baking Co., Inc. , 313 F.3d 385, 391 (7th Cir. 2002) (Posner, J.). Partial summary judgment is a mechanism through which the court deems certain issues established before trial. Lies v. Farrell Lines, Inc. , 641 F.2d 765, 769 n.3 (9th Cir. 1981). "The procedure was intended to avoid a useless trial of facts and issues over which there was really never any controversy and which would tend to confuse and complicate a lawsuit." Id . (internal quotation marks omitted).
The mere fact that the parties filed cross-motions "does not necessarily mean there are no disputed issues of material fact and does not necessarily permit the judge to render judgment in favor of one side or the other." Starsky v. Williams , 512 F.2d 109, 112 (9th Cir. 1975). "[E]ach motion must be considered on its own merits." Fair Hous. Council of Riverside Cnty., Inc. v. Riverside Two , 249 F.3d 1132, 1136 (9th Cir. 2001). Also, the ...