Ave. Innovations, Inc. v. E. Mishan & Sons Inc., 16 Civ. 3086 (KPF)
| Decision Date | 10 September 2019 |
| Docket Number | 16 Civ. 3086 (KPF) |
| Parties | AVENUE INNOVATIONS, INC., Plaintiff, v. E. MISHAN & SONS INC., Defendant. |
| Court | U.S. District Court — Southern District of New York |
SEALED OPINION AND ORDER
Plaintiff and patentholder Avenue Innovations, Inc., brought this action against Defendant E. Mishan & Sons Inc., alleging infringement of U.S. Patent No. 6,340,189 (the "'189 Patent"). The '189 Patent was issued in 2002, assigned to Plaintiff in 2003, and is embodied in a device produced by Plaintiff known as the HandyBar, which is used for assistance in getting into or out of a vehicle. In 2015, Defendant brought to market a device called the Car Cane, which is also used to assist individuals with entering and exiting a vehicle. This litigation ensued.
In 2018, the Court determined that Claims 1 and 2 of the '189 Patent were invalid due to indefiniteness. See Avenue Innovations, Inc. v. E. Mishan and Sons Inc., 310 F. Supp. 3d 457 (S.D.N.Y. 2018). Plaintiff persisted, claiming that Defendant's device infringed Claims 3-8 and 20 of the cross-motions for summary judgment as to infringement. For the reasons that follow, the Court grants Defendant's motion for summary judgment and denies Plaintiff's cross-motion for summary judgment.
On January 22, 2002, the '189 Patent, titled "Universal Device for Facilitating Movement into and out of a Seat," was issued to Dr. William Pordy; it was later assigned to Plaintiff on January 8, 2003. ('189 Patent; Pl. Ctr. 56.1 ¶ 1). The patent is for a "universal device" that can be used to facilitatemovement into and out of a car seat. (Pl. Ctr. 56.1 ¶ 10). The patent is composed of 23 claims. As relevant here, Claims 3-8 and 20 provide as follows:
('189 Patent columns 14-16).
The Car Cane was developed by Defendant to assist elderly or infirm individuals in safely exiting cars. (Pl. Ctr. 56.1 ¶ 12). After the '189 Patent had been issued — and, indeed, even after the '189 Patent had been called to its attention by Defendant — the Patent and Trademark Office issued two utility patents and four design patents to Defendant for functional and ornamental aspects of the Car Cane. (Id. at ¶ 16).
As relevant here, the Car Cane device consists of two joined pieces: a handle to be gripped, and a "window breaker." (Glass Decl., Ex. B). The pieces are joined such that the window breaker extends at a near-right angle from one end of the handle, as shown in the following image:
Image materials not available for display.
(Id.).
The Car Cane device was designed so that the window breaker could be inserted into a car's "striker," the U-shaped metal mechanism attached to the frame of a car to which a car door latches to close and lock. (Pl. Ctr. 56.1 ¶¶ 13-15). According to Defendant, the Car Cane should be inserted into thestriker of a car such that its handle runs parallel to the car seat. (Id. at ¶ 13). When inserted in this orientation, a notch between the handle and the window breaker of the Car Cane rests on the striker, securing it so that a person can reliably place their weight on the handle when exiting the vehicle. (Glass Decl., Ex. B).2 The Car Cane's handle extends out from the frame of a car door at approximately a 180-degree angle; no part of the device extends beyond the exterior metal paneling of the car. (Id.; Pl. Ctr. 56.1 ¶ 21). Defendant includes a set of instructions with each Car Cane sold that counsels purchasers to use the device in this way:
Image materials not available for display.
(Glass Decl., Ex. B; Pl. Ctr. 56.1 ¶¶ 19-21).
Plaintiff does not contest that the Car Cane's instructions tell users to orient the device in this manner, with the handle running parallel to the car seat. (Pl. Ctr. 56.1 ¶¶ 19-21). Instead, Plaintiff alleges that the Car Cane may also be turned, so that the window breaker is partially inserted into a vehicle's striker and the handle runs perpendicular to the car seat. (Id. at ¶ 13). When used in this manner, the Car Cane handle would extend away from the car, with a portion of it protruding outside the car. (Def. Ctr. 56.1 ¶ 8).
Plaintiff contends that Defendant's Car Cane teaches each limitation of each of the Disputed Claims, and, further, that Defendant has induced its retail partners to violate the '189 Patent by selling the Car Cane. Thus, Plaintiff alleges that Defendant has willfully infringed, both directly and indirectly, the '189 Patent in violation of 35 U.S.C. § 271(a)-(b). Defendant responds that the record establishes the converse: The Car Cane does not infringe any of the claims of the '189 Patent, and, indeed, was purposely designed, with the assistance of patent counsel, to avoid infringement.
Plaintiff initiated this action on October 9, 2015, in the United States District Court for the Eastern District of Texas. (Dkt. #1). The case was transferred to this District on April 26, 2016. (Dkt. #47). The Court held a claims construction hearing under Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), on June 22, 2017. (Dkt. #71 (transcript of hearing)). On September 16, 2017, the parties submitted a proposed order to the Courtregarding their agreed-upon construction of certain disputed claim language. (Dkt. #73). On May 11, 2018, the Court entered an Opinion and Order concluding that Claims 1 and 2 of the '189 Patent were invalid for indefiniteness. (Dkt. #77). On that same day, the Court entered a claim construction order. (Dkt. #78). On October 15, 2018, Plaintiff filed an amended set of asserted claims and infringement contentions, claiming that Defendant had violated Claims 3-8 and 20 of the '189 Patent. (Dkt. #85).
On October 30, 2018, Plaintiff and Defendant submitted their cross-motions for...
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