Mich & Mich TGR, Inc. v. Brazabra, Corp., No. 14 Civ. 5758(KAM)(AKT).

• Court: United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
• Writing for the Court: MATSUMOTO, District Judge.
• Citation: 128 F.Supp.3d 621
• Parties: MICH & MICH TGR, INC., Plaintiff, v. BRAZABRA, CORP., Defendant.
• Docket Number: No. 14 Civ. 5758(KAM)(AKT).
• Decision Date: 04 September 2015

128 F.Supp.3d 621

MICH & MICH TGR, INC., Plaintiff,
v.
BRAZABRA, CORP., Defendant.

No. 14 Civ. 5758(KAM)(AKT).

United States District Court, E.D. New York.

Signed Sept. 4, 2015.

128 F.Supp.3d 625

Gerard F. Dunne, Joseph Anthony Dunne, Law Office of Gerard F. Dunne, P.C., New York, NY, for Plaintiff.

128 F.Supp.3d 626

Milton Springut, Tal S. Benschar, Springut Law PC, Scott Spencer, Scott Spencer Law, New York, NY, for Defendant.

MEMORANDUM AND ORDER

MATSUMOTO, District Judge.

Mich & Mich. TGR, Inc. ("plaintiff") commenced this action alleging that defendant Brazabra, Corp. ("defendant" or "Brazabra") are infringing upon plaintiff's "Bra Strap Retainer," U.S. Reissue Patent No. 43,766 by, inter alia, knowingly and willingly importing into the United States, selling, and causing to be sold, and offering for sale within this judicial district and elsewhere, retainers for brassiere straps that infringe upon plaintiff's patents without plaintiff's permission or authorization. (ECF No. 1, Complaint ("Compl.") ¶¶ 8–11, dated October 1, 2014.)¹ Plaintiff seeks injunctive relief requiring defendant and its agents to cease production, advertising and sale of the alleged infringing product, as well as destruction of all products infringing upon plaintiff's patents. (Compl. ¶ B.) Plaintiff also seeks an accounting of defendant's profits from the sale and resale of the allegedly infringing product, in order that plaintiff may be compensated, as well as attorney's fees and costs, and treble damages. (Compl. ¶¶ C–F.)

Presently before this court is defendant's motion for summary judgment to dismiss all of plaintiff's claims pursuant to Federal Rule of Civil Procedure ("Rule") 56, and plaintiff's opposition thereto. (ECF No. 11, Defendant's Motion for Summary Judgment and Statement of Material Facts Pursuant to Rule 56.1) ("Mot. and Rule 56.1 Stmt."); ECF No. 12, Defendant's Memorandum in Support of Motion for Summary Judgment ("Def. Mem."); ECF No 13, Declaration of Theodore Davis in Support of Motion for Summary Judgment ("Davis Decl."; ECF No. 14, Declaration of Scott Spencer in Support of Defendant's Motion for Summary Judgment ("Spencer Decl."); ECF No. 15, Plaintiff's Opposition to Defendant's Motion for Summary Judgment ("Pl. Opp."), Plaintiff's Rule 56.1 Statement ("Pl. 56.1 Stmt."), Plaintiff's Supplemental Claim Construction ("Pl. Claim Constr."), Declaration of Joseph Dunne in Support of Plaintiff's Opposition to Defendant's Motion for Summary Judgment ("Dunne Decl."); ECF No. 16, Defendant's Reply in Support of Its Motion for Summary Judgment ("Def. Reply"); Reply Declaration of Scott Spencer in Support of Defendant's Motion for Summary Judgment ("Spencer Reply Decl."); ECF 23, Defendant's Supplemental Letter re New Caselaw dated February 18, 2015("Def. Ltr."); Oral Argument Transcript dated February 12, 2015 ("Oral Arg. Tr.").) Defendant contends that its product does not literally infringe the '766 patent, that plaintiff is estopped from alleging a theory of infringement under the doctrine of equivalents and, in any event, any claim of equivalence is meritless. Upon consideration of the parties' submissions and oral argument, for the reasons set forth below, defendant's motion for summary judgment of non-infringement is granted.

BACKGROUND

Plaintiff is the owner by assignment of the U.S. Reissue ("RE") Patent No. 43,766 for a Bra Strap Retainer (the "'766 patent"), issued on October 23, 2012. The '766 patent, or the patent-in-suit, describes an invention wherein a "new bra strap retainer [is used] for preventing the straps

128 F.Supp.3d 627

from falling from the user's shoulder." (Compl. Ex. A, Col. 1.) The device "includes a retaining member having an elongate main portion and opposite end portions which are adapted to keep straps of a bra on a user's back in proximate relationship to one another." (Id., Col. 2.) The '766 patent describes a device that "essentially pulls the [bra] straps on the user's back together" and provides an "easy and convenient [method] to wind the straps disposed upon the user's back through the bra strap retainer." (Id., Col. 3)

The '766 patent is a reissue of U.S. Patent Application 12/575,600, (Spencer Decl. Ex. B, the "'600 Reissue Application"), which the original patent applicant had filed to obtain additional claims for U.S. Patent No. 7,278,900 (the "'900 patent") issued on October 9, 2007. The original '900 patent was issued from Application 11/087,929. (Spencer Decl. Ex. A, the "'929 Application.")

Plaintiff alleges that defendant Brazabra's product, titled the "Bra Converter Clip" (the "accused product"), product ID: S/44021, is infringing upon the ' 766 patent in violation of the United States Patent Laws, 35 U.S.C. § 271, et seq., both literally and under the doctrine of equivalents. (Pl. Opp. at 1; Declaration of Theodore Davis in Support of Defendant's Motion for Summary Judgment ("Davis Decl.") ¶ 3.)

Defendant submitted in its Rule 56.1 Statement of Undisputed Material Fact, inter alia, that plaintiff has accused the Bra Converter Clip, product ID: S/44021 of infringing the patent-in-suit, and that the accused product appears as depicted in the Paragraph 3 of the Davis Declaration, samples of which were provided to plaintiff's counsel as Exhibit A to the Davis Declaration. Plaintiff does not dispute defendant's Rule 56.1 Statement, however plaintiff disputes a number of facts alleged by defendant in its memorandum of law in support of its motion for summary judgment. (Pl. Rule 56.1 Stmt. ¶¶ 1–2.) Thus, the parties do not dispute the physical structure of the patented device or the accused device, or their functionality, and only dispute whether the accused product infringes upon plaintiff's device—either literally or under the doctrine of equivalents. "Where ... the parties do not dispute any relevant facts regarding the accused product [and] disagree over which of [the] possible meanings of [particular claims at issue] is the proper one, the question of literal infringement collapses to one of claim construction and is thus amenable to summary judgment." Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1320 (Fed.Cir.2012) (quoting Athletic Alternatives Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1578 (Fed.Cir.1996) ); see also Wireless Ink Corp. v. Facebook, Inc., 969 F.Supp.2d 318, 333 (S.D.N.Y.2013)aff'd sub nom. Wireless Ink Corp. v. Google, Inc., 570 Fed.Appx. 941 (Fed.Cir.2014).

The court has considered whether the parties have proffered admissible evidence in support of their statements of fact and has viewed the facts in the light most favorable to plaintiff, the non-moving party. See Spiegel v. Schulmann, 604 F.3d 72, 77, 81 (2d Cir.2010) ; Topalian v. Hartford Life Ins. Co., 945 F.Supp.2d 294, 300–01 (E.D.N.Y.2013).

I. Patent Claims at Issue

The claims of a patent are the numbered paragraphs at the end of the patent that define the scope of the invention and thus the scope of the patentee's right to exclude others from making, using, or selling the patented invention. The terms and phrases within each claim define the scope of each claim.

All patent claims are either independent or dependent. Independent claims stand

128 F.Supp.3d 628

alone and do not reference any other claim. Dependent claims, which follow the independent "parent" claims, reference the independent claim and are subsets of the parent claim. For example, in the patent-in-suit, Claim 2 depends on Claim 1 because it provides: "A bra strap retainer as described in Claim 1, wherein said main portion is formed ..." (Compl. Ex. A, Col. 5.)

The following claims in the patent-in-suit are "independent" and at issue before this court: Claim 1, Claim 6, Claim 8, and Claim 12.ⁱ The independent claims contain,

128 F.Supp.3d 629

inter alia, the following key limitations: (1) "an elongate main portion and opposite end portions positioned at opposite ends of said main portion"; (2) a "pair of prongs extending outwardly from opposite sides of said main portion"; (3) a "each of said end portions [of elongate main portion] includes a pair of prongs"; and (4) "each of said prongs having an outer portion which is essentially disposed parallel to said elongate main portion." (Compl. Ex. A.)

DISCUSSION

I. Applicable Legal Standards

A. Summary Judgment Standard

The court applies the same summary judgment standards to patent infringement matters as it does to motions involving other types of claims. CA, Inc. v. Simple.com, Inc., 780 F.Supp.2d 196, 208 (E.D.N.Y.2009) ; Alloc, Inc. v. Norman D. Lifton Co., 653 F.Supp.2d 469, 473 (S.D.N.Y.2009) ; see Desper Products, Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1332 (Fed.Cir.1998) ; Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 795–96 (Fed.Cir.1990). A court may grant summary judgment only "if the pleadings, depositions, answers to...