Hebert v. Allied Rubber & Gasket Co.
| Decision Date | 30 September 2022 |
| Docket Number | 20-cv-1350-JO-MDD |
| Court | U.S. District Court — Southern District of California |
| Parties | LELAND J. HEBERT, Plaintiff, v. ALLIED RUBBER & GASKET COMPANY, Defendant. |
ORDER DENYING PLAINTIFF'S MOTION FOR PARTIAL SUMMARY JUDGMENT AND GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT
Plaintiff Leland J. Hebert (“Plaintiff') brought an action against his former business partner and employer, Defendant Allied Rubber & Gasket Company (“Defendant”) alleging patent infringement, false marking, and unfair competition surrounding Defendant's sale of adjustable wrenches. Plaintiff and Defendant filed cross-motions for summary judgment on the patent infringement claim. Dkts. 44 45. Defendant also filed a motion for summary judgment on Plaintiffs false marking and unfair competition claims. Dkt 45. The Court held oral argument on April 27,2022. For the reasons discussed below, Plaintiffs motion [Dkt. 44] is DENIED and Defendant's motion [Dkt. 45] is GRANTED.
This action arises from a failed business partnership between Plaintiff and Defendant. Plaintiff invented a wrench that adjusts to varying widths for use on fire sprinklers of different sizes. He obtained United States Patent No. 8,850,931 (the “'931 patent”), which covers a universal offset wrench with a width-adjustable head for fire sprinkler systems. Dkt. 31, Ex. 1 (“'931 Pat.”). Prior to partnering with Defendant, Plaintiff sold his adjustable wrenches on his own website.
Plaintiff and Defendant, a company that sells plumbing and fire sprinkler equipment, initially entered into a partnership that permitted Defendant to exclusively distribute Plaintiffs wrenches. In July 2015, Defendant's CEO and President, James Stoddard (“Mr. Stoddard”), began negotiating an agreement with Plaintiff to purchase Plaintiffs adjustable wrench-ultimately known as the “Recessed Wrench”-for resale. Dkt. 47 (“Plaintiffs Opp”),Ex. A. In a contract executed on April 13, 2016, the parties agreed that Defendant I would purchase unspecified “Patented Products” (presumably, the Recessed Wrench) from Plaintiff for exclusive distribution. Id., Ex. B. Pursuant to the contract, Defendant paid $25 per wrench to Plaintiff. Id. In return, Plaintiff applied Defendant's logo to the wrenches. Id. He also directed the customers on his website to click a link to Defendant's website to purchase the wrenches directly from Defendant. Id. N few months later, in July of 2016, Plaintiff and Defendant switched to a different manufacturer for the Recessed Wrench. On Defendant's recommendation, Plaintiff began working with manufacturer Wang Cong (“Mr. Wang”) to produce the Recessed Wrenches that he would sell to Defendant. Dkt. 45-4 (Declaration of James Stoddard, “Stoddard Decl.”) ¶ 13. With the consent of Defendant, see id. ¶¶ 15-16, Plaintiff instructed Mr. Wang to place the ‘931 patent number on these wrenches. Dkt. 45-5 (Declaration of Wang Cong, “Wang Deci.”) ¶ 8. Plaintiff eventually transitioned from being Defendant's business partner to working as a direct employee of Defendant. In December 2016, Defendant hired Plaintiff as an employee. Stoddard Decl. ¶ 18. As an employee, Plaintiff was responsible for working with Mr. Wang to manufacture the Recessed Wrench. Id. Defendant thereafter purchased the Recessed Wrench directly from Mr. Wang's manufacturing facility. Id. During Plaintiffs employment, Defendant also manufactured three other models of an adjustable wrench: the Offset Wrench, the Concealer Wrench, and the Socket Wrench. Id. ¶¶ 3,9, 10. Defendant did not mark or sell these models for various reasons. For example, Plaintiff worked with Mr. Wang to manufacture and mark the Offset Wrench with Plaintiffs patent number, but the wrench was ultimately defective and never sold by Defendant. Id. ¶ 22. The Concealer Wrench was also never sold because it existed only as a prototype. Id. ¶ 10. The Socket Wrench, which is a version of the Recessed Wrench without a handle, was never marked with the patent number. Id. ¶ 9; Dkt. 45-1 at 25 fii.5.
Ultimately, disputes between Plaintiff and Defendant began to arise. In November 2018, Defendant terminated Plaintiffs employment. Stoddard Decl. ¶ 20. After Plaintiffs termination, Defendant did not order additional Recessed Wrenches from Mr. Wang, but it did maintain and sell a small existing inventory which had already been marked with Plaintiffs patent number during their business relationship. Id. In January 2019, Mr. Stoddard sent an email to Plaintiffs representative discussing Plaintiffs patent and their prior business arrangement. Plaintiffs Opp., Ex. D. Mr. Stoddard described his frustration with Plaintiffs work, stating that Plaintiffs original design required modifications to “really work” such that Plaintiff was not the sole inventor of any of these products. Id. In May 2020, Mr. Stoddard sent an email to another individual representing Plaintiff regarding a potential settlement offer. Id., Ex. E.
Plaintiff filed his initial complaint on July 16,2020, alleging that Defendant willfully infringed his ‘931 patent by selling the Offset Wrench after Plaintiff was terminated. Dkt. 1. On April 29, 2021, Plaintiff filed an Amended Complaint alleging that the Recessed Wrench, Socket Wrench, and Concealer Wrench, in addition to the Offset Wrench (collectively, the “Accused Wrenches”), also infringed the ‘931 patent. Dkt. 31 (FAC).
Plaintiffs Amended Complaint included additional causes of action for false marking under 35 U.S.C. § 292 and unfair competition under California Business and Professions Code § 17200. Id. These three causes of action are now the subject of the parties' motions for summary judgment.
With regard to patent infringement, the parties focus their motions for summary judgment on whether Defendant sold wrenches containing the features protected by claims 1, 8, and 2 of Plaintiff s ‘931 patent. Claims 1 and 8 are the independent claims of the ‘931 patent, which means that these claims each contain all the features of the invention. Claim 2 is a dependent claim of claim 1, which means that it describes additional features of an aspect of claim 1.
First, claim 1 of the ‘931 patent describes the protected invention as an “offset wrench with adjustable head” comprising, in relevant part, “a smooth collar comprising a smooth interior wall affixed to said shank opposite said fixed jaw; a threaded collar comprising a threaded interior wall affixed to said base member opposite said jaw member,” and “an adjustment mechanism mechanically connected between said smooth collar and said threaded collar for adjusting a distance between said fixed jaw and said adjustable jaw.” ‘931 Pat. at 7:5-49.
Second, claim 8 similarly describes the protected invention as an “offset wrench with adjustable head,” comprising, in relevant part, “a smooth collar comprising a tubular member having smooth interior wall affixed to a back surface of said shank opposite said fixed jaw; and a threaded collar comprising a tubular member having threaded interior wall affixed to a back surface said base member opposite said jaw member,” and “an adjustment mechanism mechanically connected to said smooth collar and said threaded collar for adjusting a distance between said fixed jaw and said adjustable jaw.” Id. at 8:7-28.
Finally, claim 2 of the ‘931 patent further describes the “adjustment mechanism” feature of claim 1 as follows: “The device of claim 1, wherein said adjustment mechanism comprises: an actuator wheel; a smooth shaft extending from a first side of said wheel and insertably attached within said smooth collar; and, a threaded shaft extending from an opposing second side of said wheel and threadingly[1]mated with said threaded collar.” Id. at 7:42.
The Court held a claim construction hearing on June 15, 2021. The parties disputed four terms and phrases from claims 1, 2, 8, and 9: (1) “collar,” (2) “threaded,” (3) “adjustment mechanism mechanically connected between said smooth collar and said threaded collar for adjusting a distance between said fixed jaw and said adjustable jaw,” and (4) “shaft.” Dkt. 41 (“Claim Construction Order”). The parties initially disputed the term “interior wall,” but stipulated during the hearing that the term should be construed as “inner surface.” Id.
After the hearing, the Court issued an order construing the disputed terms and phrases. The Court construed the terms “collar” and “shaft” according to their plain and ordinary meaning. Claim Construction Order at 3-4. The Court construed the term “threaded” as “having a thread, which is a helical-shaped groove or ridge.” Id. The Court construed the phrase “adjustment mechanism mechanically connected between said smooth collar and said threaded collar for adjusting a distance between said fixed jaw and said adjustable jaw” as a means-plus-function term subject to 35 U.S.C. 112(f). Id. at 4. Hence, the Court construed the function to be “adjusting a distance between said fixed jaw and said adjustable jaw,” and the structure to be “an actuator wheel, a smooth shaft extending from a first side of the wheel and attached to the smooth collar, and a threaded shaft extending from an opposing second side of the wheel and attached to the threaded collar.” Id. at 6.
Summary judgment is appropriate under Federal Rule 56 if the moving party demonstrates the absence of a genuine issue of material fact and the entitlement to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). A fact is material when, under the governing substantive law it can affect the outcome of the case. Anderson v. Liberty Lobby, Inc....
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