Lee's Aquarium & Pet Products v. Python Pet Prod., Civil 96-0383-B (JFS).

• Decision Date: 05 February 1997
• Docket Number: No. Civil 96-0383-B (JFS).,Civil 96-0383-B (JFS).
• Citation: 951 F.Supp. 1469
• Court: U.S. District Court — Southern District of California
• Parties: LEE'S AQUARIUM & PET PRODUCTS, INC., Plaintiff, v. PYTHON PET PRODUCTS, INC., Defendant. PYTHON PRODUCTS, INC., Counter-claimant, v. LEE'S AQUARIUM & PET PRODUCTS, INC., and Lee Schultz, Counter-Defendants.

951 F.Supp. 1469

LEE'S AQUARIUM & PET PRODUCTS, INC., Plaintiff, v. PYTHON PET PRODUCTS, INC., Defendant.

PYTHON PRODUCTS, INC., Counter-claimant, v. LEE'S AQUARIUM & PET PRODUCTS, INC., and Lee Schultz, Counter-Defendants.

No. Civil 96-0383-B (JFS).

United States District Court, S.D. California.

February 5, 1997.

COPYRIGHT MATERIAL OMITTED

John J. Murphey, T. Steven Gregor, Murphey Law Offices, Carlsbad, CA, for plaintiff.

James R. Cole of Quarles & Brady, Madison, WI, Callie A. Bjurstrom of Luce, Forward, Hamilton & Scripps, San Diego, CA, for defendants.

ORDER AND JUDGMENT: (1) GRANTING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT; (2) DENYING COUNTER-CLAIMANT'S MOTION FOR SUMMARY JUDGMENT OF INFRINGEMENT; (3) DENYING PLAINTIFF'S MOTION FOR SUMMARY ADJUDICATION OF INVALIDITY; (4) DENYING PLAINTIFF'S MOTION FOR SUMMARY ADJUDICATION OF EQUITABLE ESTOPPEL; (5) GRANTING COUNTER-CLAIMANT'S MOTION FOR SUMMARY ADJUDICATION ON EQUITABLE ESTOPPEL CLAIM FINDING NO EQUITABLE ESTOPPEL; AND (6) DISMISSING BY STIPULATION COUNTER-CLAIMANT'S CLAIMS FOR UNFAIR COMPETITION and BUSINESS DISPARAGEMENT

BREWSTER, District Judge.

On Friday, January 31, 1997, the above-captioned matter came on regularly for hearing upon cross-motions for summary judgment. After due consideration of the moving and opposition papers and the arguments of counsel at hearing, the Court hereby;

(1) GRANTS Plaintiff's Motion for Summary Judgment of Non-infringement;

(2) DENIES Counter-claimant's Motion for Summary Judgment of Infringement;

(3) DENIES Plaintiff's Motion for Summary Adjudication of Invalidity;

(4) DENIES Plaintiff's Motion for Summary Adjudication of Equitable Estoppel;

(5) GRANTS Counter-claimant's Motion for Summary Adjudication on Equitable Estoppel claim finding no Equitable Estoppel and;

(6) DISMISSES BY STIPULATION Counter-claimant's Claims for Unfair Competition and Business Disparagement.

I. BACKGROUND

On March 1, 1996, Plaintiff filed a suit seeking declaratory judgment of non-infringement and patent invalidity against Python with respect to Python's U.S. Patent No. 4,610,784 ('784 Patent). Python filed an answer and counterclaim, alleging that LAPP's product (the Ultimate Gravel Vac or "UGV")¹ infringed on the '784 patent, literally and under the doctrine of equivalents. Plaintiff's complaint was amended adding a cause of action for Equitable Estoppel against Python. Defendant's counterclaim was also amended adding causes of action against LAPP and its owner Lee Schultz for unfair competition, unfair trade practice, unfair competitive practices under the Lanham Act, 15 U.S.C. § 1125(a), and business disparagement under the Lanham Act.

The claims of Python's '784 patent and LAPP's Ultimate Gravel Vac will be discussed in detail below, however, a brief background on the products will aid in better understanding the issues at hand. The '784 patent claims a device that is used for cleaning and filling fish aquariums. Python claims a faucet pump that connects at one end to the faucet and at the other end to a flexible hose. The hose is then connected to a wider clear plastic gravel tube which is immersed in the aquarium tank. When the faucet is turned on, the faucet pump creates a vacuum and gravel is sucked into the gravel tube and there churned and scrubbed allowing the sediment from the tank to be separated and carried up the flexible hose into the drain with the dirty tank water. The tank is then refilled with clean water redirected down through the faucet pump, flexible hose and gravel tube. The faucet pump is unique in that it causes the gravel to be sucked up into the gravel tube without being sucked out through the flexible hose to the drain.

LAPP's product, the UGV, is very similar, yet contains differences that LAPP contends prevent it from infringing on the '784 patent. The main difference is that the UGV contains a "claw" that is attached to the bottom of the gravel tube. The claw contains teeth with tiny slots that are used to scratch the gravel on the bottom of the tank and release the sediment, which is then swept into the tube through the small slots, up through the gravel tube and flexible hose and out into the drain. According to Plaintiff, the claw prevents any gravel from entering the tube, as the slots are not wide enough to accommodate the size of gravel. Plaintiff's claim of non-infringement is based on this difference in function and design.

Python now moves this Court for summary judgment on their patent infringement counterclaim, and LAPP's equitable estoppel claim. LAPP moves this Court for summary judgment on the patent invalidity, infringement (literal and doctrine of equivalents), and equitable estoppel claims, as well as summary adjudication on the unfair competition and business disparagement counterclaims. The parties additionally requested the Court to conduct a Markman hearing construing the claims in the patent, which this Court did during the oral hearing on Friday, January 31, 1997.

II. DISCUSSION

A. Standards of Law

1. Markman Hearing

In Markman v. Westview Instruments, Inc., ___ U.S. ___, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), the United States Supreme Court held that the interpretation of patent claims is a question of law exclusively within the province of the court. When construing patent claims, a court must consider the claims themselves, the specification, and the prosecution history of the patent. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995). In addition to these sources, a court may also consider extrinsic evidence in order to determine the true meaning of the language employed in the patent. Id. at 980. However, if an analysis of the intrinsic evidence (claim language, specification and prosecution history) resolves any ambiguity in a disputed claim term, it is improper for the court to rely on extrinsic evidence. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed.Cir. 1996).

2. Summary Judgment

On a motion for summary judgment pursuant to Federal Rule of Civil Procedure 56, the moving party must first establish that there is "no genuine issue of material fact and that the moving party is entitled to judgment as a matter of law." British Airways Board v. Boeing Co., 585 F.2d 946, 951 (9th Cir.1978), cert. denied, 440 U.S. 981, 99 S.Ct. 1790, 60 L.Ed.2d 241 (1979). Summary judgment must be granted if the party responding to the motion fails "to make a sufficient showing on an essential element of her case with respect to which she has the burden of proof." Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). Although the moving party has the initial burden of demonstrating that summary judgment is proper, that burden may be discharged by pointing out to the court an absence of facts to support the nonmoving party's case. Id. at 325, 106 S.Ct. at 2552-53. The moving party is not required to produce evidence showing the absence of a genuine issue of material fact on such issues, nor must the moving party support its motion with evidence negating the nonmoving party's claim. United Steelworkers of America, et. al. v. Phelps Dodge, et. al., 865 F.2d 1539, 1542 (9th Cir.1989), cert. denied, 493 U.S. 809, 110 S.Ct. 51, 107 L.Ed.2d 20 (1989).

The burden then shifts to the nonmoving party to show that summary judgment is not appropriate. Celotex, 477 U.S. at 324, 106 S.Ct. at 2553. To make such a showing, the nonmoving party must go beyond the pleadings to designate specific facts showing that there is a genuine issue for trial. Id. Such evidence need not be in a form admissible at trial to avoid summary judgment. Id. When considering whether summary judgment is appropriate, the Court should draw all reasonable inferences in favor of the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 257, 106 S.Ct. 2505, 2514-15, 91 L.Ed.2d 202 (1986). The Court should then ask whether evidence has been presented which would allow a reasonable jury to find for the non-moving party. Id. at 249-52, 106 S.Ct. at 2510-12. If the Court finds that no reasonable fact-finder could, considering the evidence presented by the non-moving party and the inferences therefrom, find in favor of that party, summary judgment is warranted.

B. Markman Hearing — Interpreting the Claims

In order for this Court to render a decision on the pending motions for summary judgment, it must first interpret and construe the patent claims in dispute in this action. In the instant case, the meaning of the term "gravel" as used in the '784 patent and the meaning of claims 1 and 10 of the '784 patent are in dispute. The dispute centers around whether the term gravel includes sand, as Python contends. If Python's contention is correct, then LAPP's product, which has the capability of drawing sand into the gravel tube, could potentially infringe Python's patent under the doctrine of equivalents.² Under Markman v. Westview Instruments Inc., claim interpretation is a question of law; therefore it is the Court's responsibility to determine the meaning of these disputed terms and claims.

1. The Term "Gravel"

The meaning of the term "gravel" as it is used throughout the '784 patent claims is critical to determining whether LAPP's product infringes Python's '784 patent. The term gravel is used a total of 204 times throughout the patent. As discussed above, when construing patent claims, the court must consider the claims themselves, the specification, and the prosecution history of the patent. If an analysis of this intrinsic evidence resolves the ambiguity in the disputed claim term, the court should not rely on extrinsic evidence. However, if the term cannot be defined by referring to this intrinsic evidence, the court can refer to extrinsic evidence to aid in its determination of the meaning of the claim terms. The Federal Circuit has noted that prior art documents and dictionaries are more objective types of...