K-Tec, Inc. v. Vita-Mix Corp.

• Decision Date: 27 May 2010
• Docket Number: Case No. 2:06-CV-108
• Citation: 729 F.Supp.2d 1312
• Parties: K-TEC, INC., Plaintiff, v. VITA-MIX CORPORATION, Defendant.
• Court: U.S. District Court — District of Utah

729 F.Supp.2d 1312

K-TEC, INC., Plaintiff,

v.VITA-MIX CORPORATION, Defendant.

Case No. 2:06-CV-108.

United States District Court,

D. Utah,

Central Division.

May 27, 2010.

L. Grant Foster, Brett L. Foster, Mark A. Miller, Holland & Hart, Salt Lake City, UT, Timothy P. Getzoff, Holland & Hart, Boulder, CO, for Plaintiff.

Michael L. Snyder, David B. Cupar, David T. Movius, McDonald Hopkins LLC, Cleveland, OH, Thomas D. Walk, Dax D. Anderson, Todd E. Zenger, Kirton & McConkie, Salt Lake City, UT, for Defendant.

MEMORANDUM DECISION and ORDER

TENA CAMPBELL, District Judge.

K-TEC and Vita-Mix filed cross motions for summary judgment on the validity of U.S. Patent No. 6,979,117 (the '117 Patent) and U.S. Patent No. 7,218,842 Patent (the '842 Patent) (collectively the K-TEC Patents). At the May 12, 2010 hearing, K-TEC narrowed its infringement contentions and now contends that Vita-Mix infringes claim 4 of the '117 Patent and claims 1 and 9 of the '842 Patent ("the Disputed Claims"). (Summ. J. Hr'g Tr., May 12, 2010, 10:4-6, 11:18-12:2.) The court has previously found that Vita-Mix infringes these claims. (Mem. Dec. and Order, April 6, 2010, 2010 WL 1417862) ("Infringement Order"). Based on K-TEC's representation that it will not raise claim 11 of the '842 Patent at trial, the court vacates as moot the portion of the Infringement Order pertaining to that claim. The court now addresses whether the Disputed Claims are valid.¹

K-TEC seeks an order of summary judgment that the Disputed Claims are not invalid as anticipated or obvious. (Dkt.Nos.464, 468.) K-TEC argues that no prior art references contain every claim of the K-TEC Patents, that many of the prior art references cited by Vita-Mix are outside the scope of prior art, and that the references that are within the scope of prior art do not render the K-TEC Patents obvious to one skilled in the art. Vita-Mix contends that the Disputed Claims are invalid because they are anticipated by and obvious as a matter of law (Dkt. No. 475).

To prove invalidity, Vita-Mix points to U.S. Patent No. 7,063, 456 to Miller (Miller); U.S. Patent No. 6,431,744 to Ash (Ash), U.S. Patent No. D227,535 to Grimes (Grimes); U.S Patent No. 5,129,419 to Prothe (Prothe); and the K-TEC Square Jar and related promotional material (K-TEC Square Jar). K-TEC does not limit its arguments to these five prior art references but instead addresses all prior art asserted by Vita-Mix during the course of these proceedings. In support of its arguments, K-TEC's primary contention is that neither Miller or Ash discloses the truncated wall found in the Disputed Claims. K-TEC maintains that several of the asserted references do not fall within the scope of relevant prior art because they are not connected in any way with blending. K-TEC further contends that Miller does not disclose a generally rectangular shape found in the Disputed Claims. Moreover, K-TEC points out that Ash does not disclose the handle limitation of claim 4 of the ' 117 Patent and Claim 1 of the '842 Patent. (Claim 9 of the '842 Patent does not disclose a handle.) Finally, K-TEC points out that Vita-Mix has presented only conclusory evidence on the issue of obviousness.

Although the court agrees with K-TEC that certain prior art references do not fall within the scope of the relevant prior art and also agrees that claim 4 of the '117 Patent and claim 1 of the '842 are not anticipated by Ash, the court finds that disputed issues of material fact preclude the granting of summary judgment of either K-TEC's or Vita-Mix's motion. Accordingly, the court DENIES Vita-Mix's motion for summary judgment and GRANTS in part and DENIES in part K-TEC's motion for summary judgment.

ANALYSIS

Standard of Review and Burden of Proof

Rule 56 of the Federal Rules of Civil Procedure permits the entry of summary judgment "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.' " Fed.R.Civ.P. 56(c); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250-51, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A genuine issue of material fact exists when there is "sufficient evidencefavoring the non-moving party for a jury to return a verdict for that party." Id. at 249, 106 S.Ct. 2505.

When deciding a motion for summary judgment, the court considers the record evidence using the same evidentiary standard of proof that would apply at trial. Id. at 252-53, 106 S.Ct. 2505. Only clear and convincing evidence can overcome the presumption of validity that attaches to issued patents. See United States Surgical Corp. v. Ethicon, 103 F.3d 1554 (Fed.Cir.1997).

"[T]he moving party bears the initial burden of presenting evidence to show the absence of a genuine issue of material fact." Trainor v. Apollo Metal Specialties, Inc., 318 F.3d 976, 979 (10th Cir.2002). To show that no genuine issue of material fact exists, the moving party has "the initial burden of production ... and the burden of establishing that summary judgment is appropriate as a matter of law." Pelt v. Utah, 539 F.3d 1271, 1280 (10th Cir.2008). The burden of production is the burden of "both producing additional evidence and presenting persuasive argument based on new evidence or evidence already of record, as the case may require." Tech. Licensing Corp. v. Videotek, 545 F.3d 1316, 1327 (Fed.Cir.2008). If the moving party bears the ultimate burden of persuasion at trial on the issue for which summary judgment is sought, it cannot shift the burden of production "merely by pointing to parts of the record that it believes illustrate the absence of a genuine issue of material fact." Id. Rather, the burden of production on such an issue shifts to the nonmoving party only after the moving party has "establish[ed], as a matter of law, all essential elements of the issue." Id. "[W]hen a party has failed to introduce evidence sufficient to establish the existence of an essential element of that party's case in accordance with the applicable standard of proof, summary judgment is properly granted against that party." Optium Corp. v. Emcore Corp., 603 F.3d 1313, 1319-20 (Fed.Cir.2010).

At trial, the plaintiff has the burden to prove each of its claims against an alleged infringer, while the defendant has the burden to "prove all elements of the [affirmative] defense." Stockton E. Water Dist. v. United States, 583 F.3d 1344, 1360 (Fed.Cir.2009). A moving party seeking to invalidate a patent through summary judgment, here Vita-Mix, must submit such clear and convincing evidence of invalidity that no reasonable jury could find otherwise. Eli Lilly and Co. v. Barr Laboratories, Inc., 251 F.3d 955, 962 (Fed.Cir.2001). Because Vita-Mix has the burden of proof on this affirmative defense at trial, it must put forth all of the elements of invalidity in order to shift the burden to K-TEC to show that its patents are valid. K-TEC, as the moving party asking the court to hold that its patents are not invalid, must demonstrate that Vita-Mix has failed to produce clear and convincing evidence of invalidity. Id. When determining whether a genuine issue of material fact exists, the court views the evidence in the light most favorable to the nonmoving party and resolves all doubts in its favor. Anderson, 477 U.S. at 255, 106 S.Ct. 2505.

The Disputed Claims

The Disputed Claims each disclose a generally rectangular blending jar with a fifth truncated wall positioned closer to the central axis than the intersecting corners formed by the two side walls. Claim 4 of the '117 Patent and claim 1 of the '842 patent require a handle affixed to the fifth truncated wall.

Claim 4 of the '117 Patent is dependent on claim 1. A dependent claim incorporates all of the elements of the claim on which it depends. See 35 U.S.C. § 112 ("A claim in dependent form shall be construed to incorporate by reference all the limitationsof the claim to which it refers."). Claim 1 of the '117 Patent reads:

An apparatus, comprising: a movable blending member; a blending jar, the blending jar comprising: a bottom wall with a ventral axis; four side walls extending from the bottom wall that form intersecting corners; a fifth truncated wall disposed between two of the four side walls; a handle secured to the blending jar at the truncated fifth wall; wherein the fifth truncated wall is positioned closer to the central axis than the intersecting corners formed by the four side walls.

('117 Patent (attached as Ex. A to Mem. Summ. J. No Invalidity '117 Patent, Dkt. No. 465) (emphasis added).) Claim 4 adds, "An apparatus according to claim 1 wherein the four walls are arranged in a generally rectangular, tapered shape." ( Id. (emphasis added).)

Claim 1 of the '842 Patent reads:

A blending jar apparatus, comprising: a blending jar having a blending element which rotates on a central axis, the jar to hold at least one foodstuff to be blended, the blending jar comprising: a bottom wall; four side walls extending from the bottom wall, the four side walls defining an opening having a generally rectangular shape, the opening being configured to receive the [sic] at least one foodstuff; a fifth truncated wall disposed between two of the four side walls; a handle secured to the blending jar adjacent to the fifth truncated wall; wherein the fifth truncated wall is positioned closer to the central axis than corners formed by the four side walls.

('842 Patent (attached as Ex. A to Mem. Summ. J. No Invalidity '842 Patent, Dkt. No.469) (emphasis added).) Claim 9 of the '842 Patent reads:

A blending jar apparatus comprising: a blending jar having a blending element which rotates on an axis, the jar to hold at least one foodstuff to be blended, the blending jar comprising: four planar side walls extending upward from a bottom wall, the four side walls defining a generally rectangular area, the axis being centrally

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