Australia Vision Servs. v. Diopitcs Medical Prods.

• Decision Date: 09 December 1998
• Docket Number: No. CV 98-1976 RAP (JGx).,CV 98-1976 RAP (JGx).
• Court: U.S. District Court — Central District of California
• Parties: AUSTRALIA VISION SERVICES PTY. LTD, Plaintiff, v. DIOPTICS MEDICAL PRODUCTS, INC., and Henry Lane, Defendants.

29 F.Supp.2d 1152

AUSTRALIA VISION SERVICES PTY. LTD, Plaintiff, v. DIOPTICS MEDICAL PRODUCTS, INC., and Henry Lane, Defendants.

No. CV 98-1976 RAP (JGx).

United States District Court, C.D. California.

December 9, 1998.

COPYRIGHT MATERIAL OMITTED

Steven E. Shapiro, Mitchell Silberberg & Knupp, Los Angeles, CA, for plaintiff.

Thomas B. Haverstock, Jonathan O. Owens, Haverstock & Owens, Palo Alto, CA, for defendants.

AMENDED ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT AND INVALIDITY OF THE '083 PATENT

PAEZ, District Judge.

I. Introduction

Plaintiff Australia Vision Services ("Vision Services") brought this action for damages against defendants Dioptics Medical Products and Henry Lane (collectively "Dioptics") alleging willful infringement of Design Patent No. 387,083 (" '083 patent"), issued December 2, 1997. The '083 patent claim concerns the ornamental design for a pair of sunglasses that fit over prescription glasses. Vision Services asserts claims for patent infringement and trade dress infringement in its complaint.

Pending before the Court is Dioptics' Motion for Summary Judgment of Non-Infringement and Invalidity of the '083 patent. Upon full consideration of the moving, opposition, reply papers, and oral arguments, the Court hereby GRANTS defendants' motion for summary judgment with respect to non-infringement, but DENIES summary judgment of the invalidity of the '083 patent as there are material issues of fact in dispute.

II. Material Facts

The parties do not dispute the following facts. Plaintiff Vision Services is a corporation located in New South Wales, Australia, which designs, manufactures and sells vision products, including sunglasses. Defendant Dioptics, a California Corporation, also manufactures and sells vision-related products, including sunglasses. Paul Stables, the president of Vision Services, applied for a U.S. Design Patent for his ornamental design of sunglasses that fit over prescription glasses on November 9, 1995.¹ Included in the '083 patent application was a set of required first drawings.

In the first Office Action mailed May 14, 1996, the patent examiner objected to the original drawings, under 35 U.S.C. § 112, because the attached drawings were inadequate. File History for the '083 patent ("FH"), Paper No. 2, ¶¶ 1-2. Specifically, the drawings lacked surface shading. Id. at ¶ 5. The examiner emphasized that "as the drawing constitutes the whole disclosure of the design, it is of the utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture." Id. at ¶ 6. In addition, the examiner warned that new drawings must not include any markings "which could be construed to be new matter, the same being prohibited by 35 U.S.C. § 132 and 37 C.F.R. § 1.118." Id. at ¶ 7.

Despite this warning, Vision Services submitted new amended drawings, on August 14, 1996, containing surface shading that indicated the presence of transparent lenses on the side panels. FH, Paper No. 3, Figures 1-7. The patent examiner again rejected the claim citing the addition of the transparent lenses as new matter. FH, Paper No. 4, ¶ 3. In the Office Action, dated December 5, 1996, the patent examiner specifically stated the following:

The proposed additional or amended illustration has been entered, however said amendment introduces new matter (35 U.S.C. § 132, 37 C.F.R. § 1.118). Specifically, the transparent lens shown in the side panel is new matter. Due to the differences between the original and new drawings, applicant's disclosure fails to comply with the description requirement of 35 U.S.C. § 112, first paragraph. Accordingly, the claim is rejected in that the disclosure does not satisfy the description requirement of 35 U.S.C. § 112, first paragraph. (In re Kaslow, 707 F.2d 1366, 217 U.S.P.Q. 1089 (Fed.Cir.1983) and In re Rasmussen, 650 F.2d 1212, 211 U.S.P.Q. 323 (CCPA 1981)).

FH, Paper No. 4, ¶ 3 (emphasis in original). To overcome this rejection, Vision Services re-submitted the amended drawings but this time, it indicated the removal of the transparent lenses. FH, Paper No. 5, Figure 2. In light of this correction, the patent examiner allowed the claim and the '083 patent was issued December 2, 1997. FH, Paper No. 8.

Vision Services manufactures, advertises and sells sunglasses labeled Fitovers ® which are based on the '083 patent. In March of 1998, Vision Services learned that Dioptics was manufacturing, selling and advertising sunglasses allegedly similar to the Fitovers ® under the name of Solar Shield ® Ultra. Consequently, Vision Services filed this complaint on March 19, 1998, seeking monetary damages and injunctive relief.

III. Discussion

A. Standard for Summary Judgment

Summary judgment is appropriate when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). In a trilogy of 1986 cases, the Supreme Court clarified the applicable standards for summary judgment. See Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Matsushita Electric Industry Co. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact. Anderson, 477 U.S. at 256, 106 S.Ct. 2505. Whether a fact is material is determined by looking to the governing substantive law; if the fact may affect the outcome, it is material. Id. at 248, 106 S.Ct. 2505. If the moving party seeks summary adjudication with respect to a claim or defense upon which it bears the burden of proof at trial, its burden must be satisfied by affirmative, admissible evidence. By contrast, when the non-moving party bears the burden of proving the claim or defense, the moving party can meet its burden by pointing out the absence of evidence submitted by the non-moving party. The moving party need not disprove the other party's case. See Celotex, 477 U.S. at 325, 106 S.Ct. 2548.

If the moving party meets its initial burden, the "adverse party may not rest upon the mere allegations or denials of the adverse party's pleadings, but the adverse party's response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e).

In assessing whether the non-moving party has raised a genuine issue, its evidence is to be believed, and all justifiable inferences are to be drawn in its favor. Anderson, 477 U.S. at 255, 106 S.Ct. 2505 (citing Adickes v. S.H. Kress and Co., 398 U.S. 144, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970)). Nonetheless, "the mere existence of a scintilla of evidence" is insufficient to create a genuine issue of material fact. Id. at 252, 106 S.Ct. 2505. As the Supreme Court explained in Matsushita, [w]hen the moving party has carried its burden under Rule 56(c), its opponent must do more than simply show that there is some metaphysical doubt as to the material facts.... Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no "genuine issue for trial."

Id., 475 U.S. at 586-87, 106 S.Ct. 1348.

To be admissible for purposes of summary judgment, declarations or affidavits must be based on personal knowledge, must set forth "such facts as would be admissible in evidence," and must show that the declarant or affiant is competent to testify concerning the facts at issue. Fed.R.Civ.P. 56(e). Declarations on information and belief are insufficient to establish a factual dispute for purposes of summary judgment. Taylor v. List, 880 F.2d 1040, 1045 (9th Cir.1989).

Summary judgment is not treated as "a disfavored procedural shortcut" but as "an integral part of the Federal Rules as a whole, which are designed `to secure the just, speedy and inexpensive determination of every action.'" Celotex, 477 U.S. at 327, 106 S.Ct. 2548 (quoting Fed.R.Civ.P. 1).

B. Infringement of the '083 Design Patent

1. Standard for Design Infringement

Over a hundred years ago, the Supreme Court established the test for assessing infringement of a design patent:

If, in the eye of the 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, 14 Wall. 511, 81 U.S. 511, 528, 20 L.Ed. 731 (1871).² When evaluating the similarity between the two items, the trier of fact must consider the design taken as a whole rather than focus on isolated portions of the design. "We do not say that in determining whether two designs are substantially the same, differences in the lines [or] the configuration ... are not to be considered; but we think the controlling consideration is the resultant effect." Gorham, at 526.³ Accordingly, a list of design differences is relevant but does not end the substantial similarity inquiry. Arner v. Sharper Image Corp., 39 U.S.P.Q.2d 1282, 1293 (C.D.Cal.1995).⁴ Patent infringement is a "question of fact, to be proven by a preponderance of evidence." Braun, Inc. v. Dynamics Corp. Of America, 975 F.2d 815, 819 (Fed.Cir.1992); see also, Arner, supra, at 1293; Burger Train Systems, Inc., v. Ballard, 552 F.2d 1377, 1381 (10th Cir.1977) (same).

2. Prosecution History Estoppel and Design Patents

Although the standard for determining whether an accused product infringes a design patent is well recognized, we do not literally apply the test to conclude that defen...