Leviton Mfg. v. Universal Sec. Instruments

• Citation: 409 F.Supp.2d 643
• Decision Date: 18 January 2006
• Docket Number: No. CIV.A. AMD 03-2137.,No. CIV.A. AMD 03-1701.,CIV.A. AMD 03-1701.,CIV.A. AMD 03-2137.
• Parties: LEVITON MANUFACTURING COMPANY, INC., Plaintiff v. UNIVERSAL SECURITY INSTRUMENTS, INC., et al., Defendants. Shanghai Meihao Electric, Inc., Plaintiff v. Leviton Manufacturing Company, Inc., Defendant.
• Court: U.S. District Court — District of Maryland

409 F.Supp.2d 643

LEVITON MANUFACTURING COMPANY, INC., Plaintiff v. UNIVERSAL SECURITY INSTRUMENTS, INC., et al., Defendants.

Shanghai Meihao Electric, Inc., Plaintiff v. Leviton Manufacturing Company, Inc., Defendant.

No. CIV.A. AMD 03-1701.

No. CIV.A. AMD 03-2137.

United States District Court, D. Maryland.

January 18, 2006.

COPYRIGHT MATERIAL OMITTED

Barry George Magidoff, Brad S. Needleman, Joseph G. Lee, Joseph M. Manak, Michael A. Nicodema, Paul J. Sutton, Greenberg Traurig LLP, New York, NY, D. Christopher Ohly, Blank Rome LLP, Washington, DC, Steven Edward Tiller, Whiteford Taylor and Preston LLP, Baltimore, MD, for Leviton Manufacturing Company, Inc.

Maurice U. Cahn, William E. Bradley, Cahn and Samuels LLP, Washington, DC, for Universal Security Instruments.

Gary M. Hnath, Fei Fei Chao, Bingham McCutchen LLP, Venable Baetjer Howard and Civiletti LLP, for Shanghai Meihao Electric, Inc.

MEMORANDUM OPINION

DAVIS, District Judge.

This opinion concerns two lawsuits pertaining to a device called a ground fault circuit interrupter (GFCI).¹ In the first case, No. AMD 03-1701, plaintiff Leviton Manufacturing Company, Inc., accuses defendants Universal Security Instruments, Inc., and USI Electric, Inc. (collectively "USI"), of, among other things, patent infringement and trade dress infringement. The second case, No. AMD 03-2137, was instituted by Shanghai Meihao Electric, Inc. ("Meihao"), a Chinese corporation that manufactures GFCIs for USI's distribution in the United States. Meihao (joined by USI) seeks a declaratory judgment that, inter alia, it did not infringe any of the patents in controversy.

Leviton's patent infringement claims are based on four patents: U.S. Patent No. 6,040,967 (the "'967 patent"), U.S. Patent No. 6,246,558 (the "'558 patent"), U.S. Patent No. 6,381,112 (the "'112 patent") and U.S. Patent No. 6,437,953 (the "'953 patent"). The trade dress infringement claims, brought under Maryland law and the Lanham Act, 15 U.S.C. § 1051, et seq., concern, inter alia, the appearance of the face of the Leviton device.

Discovery has concluded and now pending are cross-motions for summary judgment; each has been exhaustively briefed by the parties and a hearing is not necessary. USI seeks summary judgment as to Leviton's claims of trade dress infringement. In addition, Meihao (joined by USI) and Leviton have filed motions for summary judgment on the patent infringement claims. For the reasons stated herein, I shall deny the motion filed by USI respecting the trade dress infringement claim as well as Leviton's motion respecting patent infringement. I shall grant the motion (seeking a declaration of non-infringement of the Leviton patents) filed by Meihao (and joined in by USI).²

I.

The cases have reached this point by a circuitous route. In an earlier action, filed on December, 13, 2001, Leviton alleged against USI claims for trade dress infringement and patent infringement based on U.S. Patent No. 4,595,894 (the "'894 patent"). See Leviton Mfg. Co., Inc. v. Universal Security Instruments, Inc., 304 F.Supp.2d 726 (D.Md.2004) ("Leviton I"). The trade dress claim from Leviton I is essentially identical to the trade dress claim asserted in the instant controversy. The '894 patent, which expired on June 17, 2003, described an invention that used sensing circuitry to detect a current imbalance created when a ground fault occurred, and a trip mechanism to separate the electrical contacts to interrupt the flow of electrical current in response to the ground fault. In Leviton I, I denied USI's motion for summary judgment as to Leviton's claim for trade dress infringement, and I granted in part and denied in part USI's motion for summary judgment as to Leviton's claim for patent infringement in respect to the '894 patent. Id. Subsequently, I continued the trial of the surviving claims in Leviton I for consolidation with the trial on the claims asserted in these cases.

The instant actions were filed during the pendency of Leviton I. On June 10, 2003, Leviton filed its action against USI for trade dress infringement and infringement of six patents.³ On July 7, 2003, Meihao filed its own complaint requesting a declaratory judgment of non-infringement.⁴ Leviton then filed a counterclaim against Meihao alleging infringement of the patents.

The patents at issue here introduced a "reset lock-out" feature that improves consumers' safety by preventing the GFCI from being reset after it has incurred some damage and can no longer provide ground fault protection. The '894 design was modified so that the sensing circuitry and, in turn, the trip mechanism, are activated when the reset button is pushed. The "reset lock-out" feature ties the resetting of the GFCI device with the circuit interrupting feature such that everything that would have to be operating properly in order to detect a ground fault and interrupt the circuit must be operating properly in order for the user to reset (and thus, to continue employing) the device.

After holding a Markman hearing, I issued a Claims Construction Order on April 22, 2005. See 2005 WL 936990 (D.Md. April 22, 2005). The Claims Construction Order considered the following claims: claims 1, 5, 7 and 12 of the '967 patent; claims 1, 5 and 22 of the '112 patent; claims 1, 8 and 10 of the '070 patent; claims 1, 2 and 4 of the '558 patent; and claims 1, 5, 7 and 14 of the '953 patent. The contested limitations revolved around five terms and phrases, which I construed in the Claims Construction Order: (1) "reset lock-out;" (2) "reset mechanism;" (3) "activates said circuit interrupter;" (4) "operational" (and "non-operational"); and (5) "trip mechanism" (as used in the '070 patent). See 2005 WL 936990, at *8-*13.

II.

Summary judgment under Rule 56 of the Federal Rules of Civil Procedure is appropriate in a patent case as in any other case. Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 795-96 (Fed. Cir.1990). Pursuant to Rule 56(c), summary judgment is appropriate "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 that the moving party is entitled to judgment as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A fact is material for purposes of summary judgment if, when applied to the substantive law, it affects the outcome of the litigation. Id. at 248, 106 S.Ct. 2505. Summary judgment is also appropriate when a party "fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). In patent litigation, it is often the case that some dispositive issues present questions of law for the court rather than questions of fact for the factfinder. As to such issues, final resolution on summary judgment is often appropriate. Leviton Mfg. Co., Inc., 304 F.Supp.2d at 734 n. 4.

A party opposing a properly supported motion for summary judgment bears the burden of establishing the existence of a genuine issue of material fact. Anderson, 477 U.S. at 248-49, 106 S.Ct. 2505. "When a motion for summary judgment is made and supported as provided in [Rule 56], an adverse party may not rest upon the mere allegations or denials of the adverse party's pleading, but the adverse party's response, by affidavit or as otherwise provided in [Rule 56], must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e); Celotex, 477 U.S. at 324, 106 S.Ct. 2548; Anderson, 477 U.S. at 252, 106 S.Ct. 2505; Shealy v. Winston, 929 F.2d 1009, 1012 (4th Cir. 1991). Only a "genuine evidentiary conflict created by the underlying probative evidence pertinent to the claim's interpretation" can create a factual dispute that may not be resolved as a matter of law. Johnston v. IVAC Corp., 885 F.2d 1574, 1579 (Fed.Cir.1989). Of course, the facts, as well as justifiable inferences to be drawn therefrom, must be viewed in the light most favorable to the nonmoving party. Matsushita Elec. Indust. Co. v. Zenith Radio Corp., 475 U.S. 574, 587-88, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The court, however, has an affirmative obligation to prevent factually unsupported claims and defenses from proceeding to trial. Felty v. Graves-Humphreys Co., 818 F.2d 1126, 1128 (4th Cir.1987).

III.

I first consider USI's motion for summary judgment on the claim of trade dress infringement. As mentioned above, USI's challenge, via motion for summary judgment, was thoroughly examined in Leviton I, in which I ruled that Leviton had made a sufficient showing of all the elements of a trade dress claim such that USI's motion for summary judgment had to be denied. In the instant action, USI has not put forth any material facts that distinguish the new claim from the old claim. Rather, USI has relied principally on an allegedly "clarifying" decision of the Fourth Circuit, International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Estrangers a Monaco, 329 F.3d 359 (4th Cir.2003), cert. denied, 540 U.S. 1106, 124 S.Ct. 1052, 157 L.Ed.2d 891 (2004), that it says tilts the record for summary judgment in its favor.

I am not persuaded that International Bancorp, which was decided well before my decision in Leviton I, but was not cited by the parties in that case, should alter my conclusion. To the contrary, after having carefully reviewed International Bancorp and the contentions of the parties, and having considered the facts in the light most favorable to Leviton, the non-movant, I conclude that Leviton's claim for trade dress infringement survives summary judgment. USI's motion shall be denied.

A.

Leviton alleges trade dress infringement of the "non-functional appearance and arrangement" of its GFCI. Compl. ¶ 12....