Green Pet Shop Enters., LLC v. European Home Design, LLC

• Decision Date: 13 March 2019
• Docket Number: 17-CV-6238 (JMF)
• Parties: THE GREEN PET SHOP ENTERPRISES, LLC, Plaintiff, v. EUROPEAN HOME DESIGN, LLC, Defendant.
• Court: U.S. District Court — Southern District of New York

THE GREEN PET SHOP ENTERPRISES, LLC, Plaintiff, v. EUROPEAN HOME DESIGN, LLC, Defendant.

17-CV-6238 (JMF)

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

March 13, 2019

OPINION AND ORDER

JESSE M. FURMAN, United States District Judge:

In this suit, the Green Pet Shop Enterprises, LLC ("Green Pet Shop") alleges that European Home Design, LLC ("European Home") infringed its patent for a cooling platform for pets. European Home counters that the patent is invalid on indefiniteness grounds. Now pending are three motions filed by European Home — a motion for summary judgment and two motions to strike — as well as the parties' briefing on claim construction of the disputed terms in the patent. For the reasons below, the motions to strike and for summary judgment are denied.

BACKGROUND

The disputed patent, U.S. Patent No. 8,720,218 ("the '218 patent"), relates to a cooling platform that can be used for pets. See Docket No. 24 ("FAC"), ¶¶ 6, 21-25; Docket 57-1 ("Patent"), at 10, col. 1. The cooling platform can be used as a pet bed — that is, "as a place to rest or sleep, for pets such as cats and dogs." Patent 10, col. 1. It can be made in different sizes and shapes. See id. at 11, col. 3. The basic makeup of the cooling platform includes different attached layers, including a "temperature regulation layer" and a "support layer," all contained within a "covering layer." Id. at 12 ¶ 1. The figures in the patent illustrate this basic design by showing a cross-sectional view of the platform:

Image materials not available for display.

Fig. 3

Patent 5, figure 3; see id. at 10, col. 1. The figures also show a "top angled perspective" of the platform in two different versions ("alternative embodiments") of the cooling platform:

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Fig. 1

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Fig. 8

Patent 3, figure 1; id. at 7, figure 8; see id. at 10, col. 1 (describing the figures).

Green Pet Shop, which owns the '218 patent, sells a product that is covered by the patent, called the "Cool Pet Pad." FAC ¶¶ 7, 14. European Home Design also sells pet cooling mats, including through Amazon. Id. ¶¶ 9, 10. Green Pet Shop alleges that at least some of European Home Design's pet cooling mats infringe on the '218 patent. Id. ¶ 11. In counterclaims, European Home contends that the '218 patent is invalid, including because it was indefinite in violation of 35 U.S.C. § 112, ¶ 2. See Docket No. 28; Docket No. 44 ("Joint Terms"), at 1.

The primary issue in front of the Court now is the proper meaning and scope of the '218 patent. It is raised in two ways. The first is through European Home's motion for summary judgment, which argues that the '218 patent is invalid because a term used throughout the patent — "predefined distance" — is indefinite.¹ See Docket No. 56 ("MSJ Mem."), at 13-19. Thesecond is through claim construction briefing submitted by both parties, in which they ask the Court to decide the proper construction of several disputed terms. See Docket No. 52 ("Pl. Claim Const."); Docket No. 62 ("Def. Claim Const."); Docket No. 71. ("Pl. Claim Reply"). In addition, European Home moves to strike two expert declarations submitted by Nathanial A. Lynd, an Assistant Professor at the University of Texas at Austin — one submitted in support of Green Pet Shop's claim construction briefing, see Docket No. 52-5 ("1st Lynd Decl."), and one submitted in opposition to European Home's motion for summary judgment, see Docket No. 61-9 ("2d Lynd Decl."). See Docket Nos. 58, 67.

THE MOTION FOR SUMMARY JUDGMENT AND MOTIONS TO STRIKE

The Court begins with the motion for summary judgment. Summary judgment is appropriate where the admissible evidence and the pleadings demonstrate, viewing the evidence in the light most favorable to the non-moving party, that there is "no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a); see also Johnson v. Killian, 680 F.3d 234, 236 (2d Cir. 2012) (per curiam). A dispute over an issue of material fact qualifies as genuine "if the evidence is such that a reasonable [fact finder] could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact, including by informing the court of the basis for its motion and identifyingthose portions of the pleadings, depositions, answers to interrogatories, and admissions on file that demonstrate the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 325 (1986); EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 620 (Fed. Cir. 2015) (confirming that these standards apply in the patent context).

Here, European Home moves for summary judgment on its claim that the '218 patent is invalid on indefiniteness grounds. Federal patent law requires a patent specification to conclude with "one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2 (2006); see Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 902 n.1 (2014). A lack of definiteness in the claim renders the patent invalid. See Nautilus, 572 U.S. at 902. The definiteness requirement "strikes a 'delicate balance' between 'the inherent limitations of language' and providing 'clear notice of what is claimed.'" Sonix Tech. Co. v. Publ'ns Int'l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017) (citing Nautilus, 572 U.S. at 909 (internal citations omitted)). Under this standard, "absolute precision" is not required. Nautilus, 572 U.S. at 910. But "reasonable" certainty is: "[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Id. at 901, 910.

In evaluating whether a patent meets this standard, "definiteness is to be evaluated from the perspective of someone skilled in the relevant art" and from the perspective of that person at the time the patent was filed. Id. at 908. To determine how a person of ordinary skill in the art would understand the claim term at issue, a court looks first to "the language of the claims themselves." Trustees of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1362 (Fed. Cir. 2016). The language of the claims must be given their "ordinary and customarymeaning." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). The claims, however, "must be read in view of the specification, of which they are a part," because the "specification is the single best guide to the meaning of a disputed term." Trustees of Columbia, 811 F.3d at 1362 (internal quotation marks omitted). The claims must also "be read in light of the patent's . . . prosecution history." Nautilus, 572 U.S. at 908. A court may also rely on extrinsic evidence, such as dictionary definitions, expert testimony, treatises, and the prosecution history of related patents, so long as it does not contradict the patent documents. See Trustees of Columbia, 811 F.3d at 1362-63; Phillips, 415 F.3d at 1317. But "such evidence is generally of less significance than the intrinsic record." Profectus Tech. LLC v. Huawei Techs. Co., 823 F.3d 1375, 1380 (Fed. Cir. 2016) (citing Phillips, 415 F.3d at 1317).

Applying these standards here, the Court concludes that summary judgment must be denied. European Home argues that the '218 patent is invalid because the term "predefined distance" is indefinite in two ways. See MSJ Mem. 13, 15. First, it argues that the term is indefinite because "relative dimensions provide no objective measure of the 'predefined distance' and cannot be translated into meaningfully precise scope of the term." Id. at 15. But the Federal Circuit has repeatedly held that "relative terms — [like] 'substantial' and 'high' — [are] sufficiently definite." One-E-Way, Inc. v. Int'l Trade Comm., 859 F.3d 1059, 1063 (Fed. Cir. 2017); see also 3 Chisum on Patents § 8.03 (2018) (citing cases). The term "predefined distance" is no different. The claim states that the angled segments and channels — the things spaced "at a predefined distance," according to the patent — are contained "within a sealed perimeter of the temperature regulation layer." Patent 12 ¶ 1; see also id. 12-13 ¶¶ 14, 16, 17, 19, 20. From this, it is plain that the "predefined distance" is "relative to" (and indeed must be less than) the size of the temperature regulation layer. See Exmark Mfg. Co. v. Briggs & StrattonPower Prods. Grp., LLC, 879 F.3d 1332, 1345-46 (Fed. Cir. 2018). The rest of the specification (including the figures and diagrams that form part of the specification, see In re Skvorecz, 580 F.3d 1262, 1269 (Fed. Cir. 2009)) reveals that the temperature regulation layer is close to the same length and width as the cooling platform. See Patent 3, 5, 7, 10. Taken together, this is enough for a person of ordinary skill in the relevant art to understand the basic parameters of "predefined distance" as used in the patent.

Second, European Home contends that the term is indefinite because "predefined distance" describes both the angled segments and the channels, without clarifying when it refers to one or the other. MSJ Mem. 15-16; MSJ Reply 7. It is certainly true that "the contested language is not a model of clarity." All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 779 (Fed. Cir. 2002). At the same time, "it is also fairly simple and intelligible, capable of being understood in the context of the patent specification." Id. The claim makes clear that there are "angled segments," "channels" that form the sides of those angled segments, and a longer distance associated with the angled segments than the channels. See Patent 12 ¶ 1. The...