Black & Decker Corp. v. Positec U.S. Inc.
| Decision Date | 31 March 2015 |
| Docket Number | Case No. 11-cv-5426 |
| Court | U.S. District Court — Northern District of Illinois |
| Parties | THE BLACK & DECKER CORPORATION, BLACK & DECKER INC. and BLACK & DECKER (U.S.) INC., Plaintiffs, v. POSITEC USA INC. and RW DIRECT INC., Defendants. |
MEMORANDUM OPINION AND ORDER
Plaintiffs The Black & Decker Corporation, Black & Decker Inc., and Black & Decker (U.S.) Inc. ("B&D") have sued Defendants Positec USA Inc. ("Positec") and RW Direct Inc. ("RW") for infringement of United States Patent Nos. 5,604,954 ("the '954 patent"), 6,263,975 ("the '975 patent"), 6,612,376 ("the '376 patent"), and 6,926,090 ("the '090 patent"); for trademark infringement under 15 U.S.C.§ 1051 et seq.; for unfair competition, false designation of origin and trade dress infringement in violation of Section 43 of the Lanham Act, 15 U.S.C. § 1125(a); for dilution of Plaintiffs' trademarks under 15 U.S.C. § 1125(c); and for common law trademark infringement and state law unfair competition.
Before the Court is Defendants' motion for partial summary judgment ("MSJ") [65], which is granted in part and denied in part.1 More specifically, the Court grants Defendants' motion for partial summary judgment of non-infringement of claims 1, 2-7, and 10 of the motion for partial summary judgment of non-infringement of claims 9, 10, 13, 14, 16, and 17 of the motion for partial summary judgment with respect to infringement damages, holding that Plaintiffs may not recover damages arising from the alleged infringement of the motion with respect to the trade dilution claim and denies it with respect to the trade dress claims and trade dress damages.
The Court takes the relevant facts primarily from the parties' respective Local Rule ("L.R.") 56.1 statements.2 Local Rule 56.1 requires that statements of facts contain allegations of material fact and that factual allegations be supported by admissible record evidence. See L.R. 56.1; Malec v. Sanford, 191 F.R.D. 581, 583-85 (N.D. Ill. 2000). "All material facts set forth in the statement required of the moving party will be deemed to be admitted unless controverted by the statement of the opposing party." L.R. 56.1(b)(3)(C). The Court carefully reviews statements of material facts and eliminates from consideration any assertions unsupported by the documented evidence or arguments. See, e.g., Sullivan v. Henry Smid Plumbing & Heating Co., Inc., 2006 WL 980740, at *2 n.2 (N.D. Ill. Apr. 10, 2006); Tibbetts v. RadioShack Corp., 2004 WL 2203418, at *16 (N.D. Ill. Sept. 29, 2004). Where a party has offered a statement of fact without offering proper evidentiary support, the Court will not consider that statement. See, e.g., Malec, 191 F.R.D. at 583. It is well-established that a district court has broad discretion to require strict compliance with L.R. 56.1. See, e.g., Koszola v. Bd.of Educ. of the City of Chicago, 385 F.3d 1104, 1109 (7th Cir. 2004); Curran v. Kwon, 153 F.3d 481, 486 (7th Cir. 1998) (citing Midwest Imports, Ltd. v. Coval, 71 F.3d 1311, 1317 (7th Cir. 1995) (collecting cases)).
Plaintiffs and Defendants are competing power tool manufacturers. Plaintiffs allege that Defendants have infringed four of Plaintiffs' patents: the request for infringement damages arising before May 24, 2011.
The '954 patent, entitled "Blower Vacuum Device," relates to a lawn device that "may be used either in a vacuum mode to suck debris into the device or in a blowing mode to discharge a stream of air so that debris can be blown into piles, ready for collection." [68-2], '954 patent at 1:2-6. According to the specification, the aim of the invention is to Id. at 1:39-40; 1:57-60.
In their Final Infringement Contentions, Plaintiffs contend that Defendants' blower-vacuum model WG500 infringes various claims in the Ex. G, Neuhalfen Rpt., at ¶¶ 2, 51; [75-7], Pls. Ex. 5, Gemini Rpt., at ¶ 15; [74], Pls.' RSOF at ¶ 9. The parties agree that all of these blowers ("Accused Blowers")are identical for the purposes of the MSJ at 1, n. 2; [73], Pls.' Resp. to MSJ at 2.
Plaintiffs allege that the Accused Blowers infringe claims 1, 2-7, and 10 of the '954 patent. Claims 2-7 and 10 depend from and include each of the limitations of claim 1. Defendants move for partial summary judgment of non-infringement of the '954 patent, arguing that no reasonable tier of fact could find that the Accused Blowers embody all elements of claim 1 and therefore the remaining '954 claims at issue. Claim 1 of the '954 patent is an independent claim that reads as follows:
'954 patent, 5:41-6:4. Defendants argue that the Accused Blower lacks two elements: first, the "attachment member which covers the fan and which is releasably attachable to the housing" ("attachment member") and, second, the "actuating means responsive to the attachment member for activating the switch only when the attachment member is attached to the housing" ("actuating means").
During claim construction, the Court interpreted "attachment member which covers the fan and which is releasably attached to the housing" to mean "a structure that fits around the fanand allows air to enter and exit and that is non-permanently attachable to the housing." [57], Claim Constr. at 11. The Accused Blowers include an attachable duct ("Accused Duct") that non-permanently connects to the fan housing. Defendants offer the following photographs of the product.
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[66], Defs.' SOF at ¶ 42; [68-5], Defs.' Ex. D, Macarus Rpt., 3.
Image materials not available for display.[66], Defs.' SOF at ¶ 43; [68-5], Defs.' Ex. D, Macarus Rpt.,7.
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[68-5], Defs.' Ex. D, Macarus Rpt., 4. Defendants offer the photographs to show that when attached to the housing, the Accused Duct falls completely in front of the fan rather than around the fan and that no part of the fan is contained within it. [66], Defs.' SOF at ¶¶ 43-44. They also contend that the photographs show that the fan is unexposed when the Accused Duct is detached. Id. at ¶ 42.
In response, Plaintiffs offer an expert report by Andrew Neuhalfen, concluding that when the Accused Duct is detached, the fan is exposed, and when the Accused Duct is attached, it does fit over the fan. [74], Pls.' RSOF at ¶¶ 42, 43 ). In support of this conclusion, Neuhalfen offers the following photographs:
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[68-12], Neuhalfen Rpt., Defs.' Ex. G. at 189, Fig. 3.
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[68-12], Neuhalfen Rpt., Defs.' Ex. G. at 189, Fig. 4.
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[68-13], Neuhalfen Rpt., Defs.' Ex. G. at 1, Fig. 5.
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[68-13], Neuhalfen Rpt., Defs.' Ex. G. at 1, Fig. 6. Neuhalfen additionally provided the following deposition testimony explaining these photographs:
[79-2], Pls.' Ex. 1, Neuhalfen's Dep., at 69:13 - 73:21.
The '954 patent includes a "safety interlock located at the interface between the housing and the attachment member." [68-2], '954 patent at 1:49-59. The safety interlock comprises, in part, an "actuating means responsive to the attachment member for activating the switch only when the attachment member is attached to the housing." Id. at 1:51-53. The specification explains the role of the "actuating means" within the larger invention:
The locking means and the actuating means are preferably responsive to an actuating member on the housing which is operable by a user of the blower vacuum so that movement of the actuating member to a first...
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