United States District Court, N.D. California
ORDER GRANTING MOTION FOR SUMMARY JUDGMENT
William H. Orrick United States District Judge
UCP International Co. Ltd. and Global United Enterprises Ltd.
(collectively, “UCP”) seek summary judgment of
non-infringement against Balsam Brands Inc. and Balsam
International Unlimited Co. (collectively,
“Balsam”) in this declaratory judgment action.
UCP argues that its collapsible artificial Christmas tree,
the Inversion Tree, does not literally infringe the
Balsam's patents and that Balsam is barred from asserting
the doctrine of equivalents as a theory of infringement. UCP
also argues that if not doctrinally barred, the Inversion
Tree does not infringe under the doctrine of equivalents. I
previously issued a claim construction order in related
litigation that collaterally estops Balsam from arguing for a
different construction of critical terms; its expert in this
case did not apply the terms as construed, and the vitiation
doctrine dooms Balsam's doctrine of equivalents claim
because the Balsam patents require a structural limitation
that UCP's Inversion Tree does not have. For the reasons
discussed below, I GRANT UCP's motion.
October 20, 2015, Balsam filed a patent infringement lawsuit
against UCP's customers, Cinmar, LLC d/b/a Frontgate /
Grandin Road and Frontgate Marketing, Inc. (collectively,
“Frontgate”), alleging that Frontgate was
advertising and selling invertible artificial Christmas trees
that infringe Balsam's patents. Balsam Brands Inc. v.
Cinmar, LLC et al, and Frontgate Marketing, Inc.,
3-15-cv-04829-WHO (N.D.Cal.)(the “Frontgate
Litigation”) (Frontgate Dkt. No. 1). UCP made the trees
that Frontgate sold. Id. As a part of the Frontgate
Litigation, I held a Markman hearing, construing all
disputed terms. Frontgate Dkt. No. 108. The construed terms
are as follows:
A joint allowing pivoting of the second trunk
relative to the first trunk by a mechanical
connection between the first trunk and the second
trunk from which the second trunk turns on a fixed
point, changing the angle between the first trunk and
the second trunk along their lengths.
Turning on a fixed point.
Attached and permitting pivoting.
Attached and permitting pivoting.
“Pivot Joint Element”
A pivot joint that is placed on a separate spacing
element to distance the pivot joint away from the end
of the second trunk.
“Rotating” and “Rotation”
Turning around a fixed point.
Id. The parties later stipulated to a dismissal with
prejudice on December 19, 2017, which I entered the next day.
Frontgate Dkt. Nos. 154, 155.
The Balsam Patents
patents at issue relate to invertible Christmas trees and the
way in which they are deployed. U.S. Patent No. 8, 062, 718
B2 (“the '718 Patent”) (Dkt. No. 69-2); U.S.
Patent No. 8, 993, 077 B2 (“the '077 Patent”)
(Dkt. No. 69-3). In order to simplify the set up and storage
of these trees, the inventor of the Balsam patents, Bruce
Schooley, designed an invertible tree with two trunks, one
fixed and the other rotating, attached by a mechanical
connection referred to as a “pivot joint.”
'718 Patent col. 2:16-24. All of the independent claims
in the '718 Patent require a “pivot joint.”
See '718 Patent claims 1, 11, 19. Additionally,
the independent claims in the '077 Patent require a
“pivot joint element, ” which includes the
requisite “pivot joint, ” or that the trunks are
“pivotably attached.” See '077
Patent claims 1, 6, 11, 17. Throughout both the '718
Patent and the '077 Patent, the motion made by these
“pivot joints” is described interchangeably as
“rotation” and “pivoting.” Bernstein
Decl., Exh. A, Frontgate Claim Construction Order
(“Frontgate Order”) at 14 (Dkt. No. 101-1)
(“The patents consistently use both “pivot”
and “rotate” in the undisputed ordinary and
customary sense of the word ‘pivot'”).
UCP's Inversion Tree
the invertible Christmas trees in the Balsam patents,
UCP's Inversion Tree contains two trunk portions.
McCarthy Decl. ¶ 50. The trunk portions are connected by
a slotted plate with “pins” or
“connectors.” Id. ¶ 59. The first
trunk is connected to the slotted plate, and the second
moving trunk is attached to the plate by the pins, which rest
inside the slot. Id. ¶ 60. In order to invert
the Inversion Tree, the pins move across the slot, deploying
the second trunk. Id. ¶ 63. All of UCP's
trees are materially identical for the purposes of
infringement. See Frontgate Dkt. No. 42 at 11, n.8.
filed this lawsuit for a declaratory judgment of
non-infringement on February 28, 2017. First Amended
Complaint (Dkt. No 26). I issued an order denying
Balsam's motion to dismiss on May 9, 2017, finding that
UCP had standing to bring this declaratory suit. Dkt. No. 60.
UCP now moves for summary judgment of non-infringment as to
all claims of the '718 Patent and the '077 Patent.
Dkt. No. 69. I heard argument on September 20, 2017.
SUMMARY JUDGMENT OF NON-INFRINGEMENT
judgment of non-infringement requires a two-step analysis.
“First, the claims of the patent must be construed to
determine their scope. Second, a determination must be made
as to whether the properly construed claims read on the
accused device.” Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir.
1999) (internal citations omitted). “The determination
of infringement, both literal and under the doctrine of
equivalents, is a question of fact.” Lockheed
Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308,
1318 (Fed. Cir. 2003); see also Kilopass Tech. Inc. v.
Sidense Corp., No. 10-cv-02066-SI, 2012 WL 3545286, at
*4 (N.D. Cal. Aug. 16, 2012). Because the ultimate burden of
proving infringement rests with the patentee, an accused
infringer may show that summary judgment of non-infringement
is proper either by producing evidence that would preclude a
finding of infringement, or by showing that the evidence on
file fails to create a material factual dispute as to any
essential element of the patentee's case. See
Novartis Corp. v. Ben Venue Labs., Inc., 271 F.3d 1043,
1046 (Fed. Cir. 2001). “Summary judgment of
non-infringement may only be granted if, after viewing the
alleged facts in the light most favorable to the nonmovant
and drawing all justifiable inferences in the nonmovant's
favor, there is no genuine issue whether the accused device
is encompassed by the patent claims.” Id.
infringement may be proven either by literal infringement or
under the doctrine of equivalents. “Literal
infringement requires the patentee to prove that the accused
device contains each limitation of the asserted
clai[m].” Bayer AG v. Elan Pharm. Research
Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). “If
any claim limitation is absent from the accused device, there
is no literal infringement as a matter of law.”
Id. “The doctrine of equivalents holds that
even if an accused product does not literally infringe the
asserted claims of a patent, the product may infringe if the
differences between the element of the accused product at
issue and the claim limitation at issue are
insubstantial.” Kilopass, 2012 WL 3545286, at
defeat a defendant's motion for summary judgment of
non-infringement under the doctrine of equivalents, the
plaintiff must provide “particularized testimony and
linking argument on a limitation-by-limitation basis that
create[s] a genuine issue of material fact as to
equivalents.” AquaTex Indus., Inc. v. Techniche
Solutions, 479 F.3d 1320, 1328-29 (Fed. Cir. 2007).
“Whether equivalency exists may be determined based on
the ‘insubstantial differences' test or based on
the ‘triple identity' test, namely, whether the
element of the accused device performs substantially the same
function in substantially the same way to obtain the same
result.” TIP Sys., LLC v. Phillips &
Brooks/Gladwin, Inc., 529 F.3d 1364, 1376 (Fed. Cir.
2008). “Whether a claim is infringed under the doctrine