Intex Recreation Corp. v. Hasbro, Inc.
| Decision Date | 20 February 1998 |
| Docket Number | No. CV 96-0533 ABC (MCX).,CV 96-0533 ABC (MCX). |
| Parties | INTEX RECREATION CORP., Plaintiff, v. HASBRO, INC., Defendant. |
| Court | U.S. District Court — Central District of California |
David Makous, Daniel DeCarlo, Lewis, D'Amato, Brisbois & Bisgaard, Los Angeles, CA, for Plaintiff/Petitioner.
Monique Cordray, Robert Hillman, Fish & Richardson, Boston, MA, for Defendant/Respondent.
ORDER: Plaintiff's Motion for Summary Adjudication re:
(i) Invalidity of Claim 12 of U.S. Patent No. 5,575,738;
(ii) Invalidity of U.S. Design Patent No. D-366-085;
(iii) Non-Infringement of U.S. Design Patent No. D-366-085; and Plaintiff's Motion for Bifurcation
Plaintiff's Motions for Summary Adjudication re: (i) Invalidity of Claim 12 of U.S. Patent No. 5,575,738; (ii) Invalidity of U.S. Design Patent No. D-366-085; (iii) Non-Infringement of U.S. Design Patent No. D-366-085; and Plaintiff's Motion for Bifurcation came on regularly for hearing before this Court on January 12, 1998. After reviewing the materials submitted by the parties, argument of counsel, and the case file, it is hereby ORDERED that Plaintiff's Motion is GRANTED IN PART and DENIED IN PART.
This case arises from Defendant-Counterclaimant Hasbro's allegations of patent infringement against Plain tiff-Counterdefendant Intex. Specifically, Hasbro has alleged that Intex's "Jump-O-Lene" product — an inflatable, trampoline-like toy — infringes upon Hasbro's design and utility Patents, which are embodied in Hasbro's "Playschool Moonbouncer" product — another inflatable, trampoline-like toy.
On November 24, 1997, Plaintiff INTEX RECREATION CORPORATION ("Intex") filed three motions: (1) Motion for Summary Adjudication re: Non-Infringement of Claim 10 of U.S. Patent No. 5,575,738; (2) Plaintiff's Motion for Summary Adjudication re: (i) Invalidity of Claim 12 of U.S. Patent No. 5,575,738; (ii) Invalidity of U.S. Design Patent No. D-366-085; (iii) Non-Infringement of U.S. Design Patent No. D-366-085; and (3) Motion for Bifurcation. On December 15, 1997, Defendant HASBRO, INC. ("Hasbro") filed its Opposition to each of Plaintiff's motions. Intex filed its Reply briefs on December 22, 1997.1
The instant Order addresses: (1) the validity of U.S. Patent No. D-366,085 (the "`085 patent") and whether the Jump-o-Lene infringes the design patent; and (2) the validity of claim 12 of U.S. Patent No. 5,575,738 (the "`738 Patent").
On June 12, 1995, Hasbro filed its applications for both the `738 patent and the `085 patent for the same device — an inflatable jumping toy for children comprised of an inflatable trampoline jumping base with an inflated circular sidewall. The same drawings were used for both the `085 design patent and the `738 utility patent. The `085 design patent issued in January 1996 and the `738 utility patent issued in November 1996.
It is the burden of the party who moves for summary judgment to establish that there is "no genuine issue of material fact, and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c); British Airways Bd. v. Boeing Co., 585 F.2d 946, 951 (9th Cir.1978). If the moving party has the burden of proof at trial (the plaintiff on a claim for relief, or the defendant on an affirmative defense), the moving party must make a showing sufficient for the court to hold that no reasonable trier of fact could find other than for the moving party. Calderone v. United States, 799 F.2d 254, 259 (6th Cir.1986) (quoting W. Schwarzer, Summary Judgment Under the Federal Rules; Defining Genuine Issues of Material Fact, 99 F.R.D. 465, 487-88 (1984)). This means that, if the moving party has the burden of proof at trial, that party must establish beyond peradventure all of the essential elements of the claim or defense to warrant judgment in that party's favor. Fontenot v. Upjohn Co., 780 F.2d 1190, 1194 (5th Cir.1986). Furthermore, the court must view the evidence presented to establish these elements "through the prism of the substantive evidentiary burden." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
If the opponent has the burden of proof at trial, then the moving party has no burden to negate the opponent's claim. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). In other words, the moving party does not have the burden to produce any evidence showing the absence of a genuine issue of material fact. Id. at 325, 106 S.Ct. 2548. "Instead, ... the burden on the moving party may be discharged by `showing' — that is, pointing out to the district court — that there is an absence of evidence to support the nonmoving party's case." Id.
Once the moving party satisfies this initial burden, Fed.R.Civ.P. 56(e) (emphasis added). A "genuine issue" of material fact exists only when the nonmoving party makes a sufficient showing to establish an essential element to that party's case, and on which that party would bear the burden of proof at trial. Celotex, 477 U.S. at 322-23, 106 S.Ct. 2548. "The mere existence of a scintilla of evidence in support of the plaintiff's position will be insufficient; there must be evidence on which a reasonable jury could reasonably find for plaintiff." Anderson, 477 U.S. at 252, 106 S.Ct. 2505. The evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in his favor. Id. at 248, 106 S.Ct. 2505; Griffeth v. Utah Power & Light Co., 226 F.2d 661, 669 (9th Cir.1955).
The standard for summary judgment in a patent case is no different; summary judgment is appropriate where no genuine issue of material fact exists and the movant is entitled to judgment as a matter of law. See Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831 (Fed. Cir.1984) (); Townsend Eng'g Co. v. HiTec Co., 829 F.2d 1086, 1089 (Fed.Cir.1987) ().
Intex has moved for summary adjudication on three grounds. First, Intex contends that the '085 patent is invalid because the design is primarily functional rather than ornamental. Second, Intex argues that the Jump-o-Lene does not infringe the '085 patent. Finally, Intex asserts that both the '085 patent and the '738 patent are invalid based on obviousness. In its Opposition, Hasbro contends that genuine issues of material fact preclude summary adjudication because an ordinary observer could be deceived into believing the Jump-o-Lene is the same as the design claimed in the '085 patent.
"A design patent protects the nonfunctional aspects of an ornamental design as shown in the patent." Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed.Cir. 1995). In Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528, 20 L.Ed. 731 (1871), the Supreme Court established the test for design patent infringement: "[I]f, in the eye of an 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 sets forth the standard of infringement of an ornamental design." Read Corp., 970 F.2d at 825 (emphasis added). Where, as in this case, however, "a design is composed of functional as well as ornamental features, to prove infringement a patent owner must establish that an ordinary person would be deceived by reason of the common features in the claimed an accused designs which are ornamental." Id. (emphases added).
Thus, in this case, design patent infringement depends on: "(1) the similarity of the ornamental features of the [accused] device and the patented design, and (2) the likelihood that an ordinary person would be confused because of such ornamental similarity." Read Corp. v. Portec, Inc., 970 F.2d 816, 826 (Fed.Cir.1992); see also L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125 (Fed.Cir.1993) ().2
The similarity must be attributed to the features protected by the patent — the nonfunctional features that distinguish the patented device from the prior art. Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed.Cir.1984). "In analyzing the visual similarity, a court may only consider whether an ordinary consumer would be deceived by the nonfunctional aspects of the design patent." Herbko, 916 F.Supp. at 326 (citing Elmer, 67 F.3d at 1577). "[T]he accused design must appropriate the novel ornamental features of the patented design that distinguish it from the prior art." Elmer, 67 F.3d at 1577; see also Litton, 728 F.2d at 1444 (same). Thus, "even though the court compares two items through the eyes of the ordinary observer, it must nevertheless, to find infringement, attribute their similarity to the novelty which distinguishes the patented device from the prior art." Litton, 728 F.2d at 1444.
In this case, Intex contends that Hasbro has identified two points of novelty in the patented device which distinguish it from prior art. Intex points to: (1) the '085 patent's bottom wall consisting of "concentric rings"; and (2) the concentrically stacked rings which make up the sidewall. Plf's. Mot. at 25-26 & n.15. Hasbro, on the other hand, contends that the '085 patent's point of novelty is: "An enticing...
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