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UCP International Co. Ltd. v. Balsam Brands Inc.

United States District Court, N.D. California

November 3, 2017

BALSAM BRANDS INC., et al., Defendants.


          William H. Orrick United States District Judge


         Plaintiffs 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.



         A. Frontgate Litigation

         On 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:


Court's Construction

“Pivot Joint”

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.

“Pivotably Attached”

Attached and permitting pivoting.

“Pivotably Joined”

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.

         B. The Balsam Patents

         The 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[]'”).

         C. UCP's Inversion Tree

         Like 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.


         UCP 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 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.

         Direct 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 *7.

         To 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 ...

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