McGinley v. Luv N' Care Ltd.

Decision Date11 August 2021
Docket NumberCASE NO. 3:17-CV-00821 LEAD
Parties Michael L. MCGINLEY et al. v. LUV N’ CARE LTD.
CourtU.S. District Court — Western District of Louisiana

Michael Brian Sichter, Pro Hac Vice, Kip D. Richards, Pro Hac Vice, Walters Renwick et al., Kansas City, MO, Jan P. Christiansen, Hudson Potts & Bernstein, Monroe, LA, for Michael L. McGinley, S.C. Products Inc.

Robert Martin Chiaviello, Jr., Hartwell P. Morse, III, Pro Hac Vice, Luv n' Care, Monroe, LA, for Luv N Care Ltd.

RULING ON MOTIONS FOR SUMMARY JUDGMENT

Terry A. Doughty, United States District Judge

Pending before the Court is a Motion for Summary Judgment as to Noninfringement [Doc. No. 263] filed by Luv n’ care, Ltd. ("LNC"), Admar International, Inc. ("Admar"), BuyBabyDirect, LLC ("BBD"), Bayou Graphics and Design, LLC ("BGD"), Control Services, Inc. ("CS"), and HHHII, LLC ("HHHII") (collectively "Defendants"), and a Motion for Partial Summary Judgment as to Literal Infringement [Doc. No. 264] filed by Plaintiffs Michael L. McGinley and S C Products, Inc., (collectively "Plaintiffs"). The motions are opposed. For the following reasons, Defendant's motion is DENIED. Plaintiff's motion is GRANTED IN PART and DENIED IN PART as explained more fully below.

Background and Procedural History
A. The ’178 Patent

The ’178 patent was filed on October 22, 2008, issued on January 28, 2014, and is directed to a container or pitcher "having a flexible side wall portion and rim portion ... which can conform to the shape of an object."178 Patent, Abstract. The specification indicates that the primary purpose of the container is for rinsing shampoo or soap from the head of a child. Id. at col. 2 ll. 57–63. Figures 3 and 6 illustrate different embodiments of the container with and without a divider 40.

The specification states that the container has continuous sidewalls (12) with one of the sidewalls having a sidewall portion (24) with a flexible panel portion (28). Id. at col. 4, ll. 4–61. The specification further states that the flexible panel portion is constructed of a thin flexible plastic or a flexible rubber panel that can conform to the shape of the head of a child. Id. at col. 4, ll. 43–61. In operation, the flexible panel portion is pressed against the front of the head above the eyes and the rinse water pours over the top of the head. Id. at col. 2, ll. 57–63. The specification indicates that the flexible panel portion prevents the rinse water from flowing into the child's eyes or face. Id.

In a preferred embodiment of the invention, sidewall portion (24) is generally flat and may therefore differ in its shape as compared to the remainder of sidewall rim (12) and sidewall (20). Id. at col. 4, ll. 30–34. For example, if sidewall (12), in its construction, comprises a cylindrical container, then sidewall rim (20) will be comprised of a generally circular sidewall rim portion (26) and a generally flat sidewall rim portion or sidewall segment or rim segment (24). Id. at col. 4, ll. 34–38. The specification states, however, that generally continuous sidewall (12) can be of any convenient shape, spanning shapes from square to circular to polygonal. Id. at col. 4, ll. 5–7.

The ’178 patent has two independent claims, 1 and 6, both of which include a continuous sidewall "having a flexible portion thereof that defines a generally flat sidewall section and a generally non-flexible portion." For purposes of claim construction, claim 1 is representative and reads:

A container comprising:

a generally continuous sidewall terminating in an upper sidewall end and a lower sidewall end and defining an inward fluid holding space bounded by said continuous sidewall, said continuous sidewall having a flexible portion thereof that defines a generally flat sidewall section and a generally non flexible portion joined on either end to the flexible portion, a bottom closing said lower sidewall end with said upper sidewall end being generally open,
a generally flat inwardly flexible panel forming a portion of said generally flat sidewall section and extending to form *916 at least a portion of said upper sidewall end, the flexible panel facing outwardly and being sized, shaped and sufficiently pliable to matingly mold to the head of a person during use; said flexible panel having a generally smooth inward surface for unobstructed fluid flow out of said open upper sidewall end, and
a handle located on the non flexible portion opposite the flexible panel to allow a user to lift and pour the container when filled with liquid.

’178 Patent, claim 1 (formerly disputed claim terms in italics). See also McGinley v. Luv N’ Care Ltd. , 819 F. App'x 913, 914–16 (Fed. Cir. 2020).

On appeal of this Court's construction of the claims, the Federal Circuit upheld this Court's construction of the handle limitation, agreeing that "the intrinsic evidence does not require a ‘conventional handle,’ or preclude the handle from including a chamber to hold rinse water." McGinley , 819 F. App'x at 914–16 (citing McGinley v. Luv N’ Care, Ltd. , No. 3:17-CV-00821, 2019 WL 2150384, at *17 (W.D. La. May 15, 2019), aff'd in part, rev'd in part and remanded , 819 F. App'x 913 (Fed. Cir. 2020) ). However, the Federal Circuit provided a different construction for the term "generally flat." Id. The Federal Circuit held that the generally flat limitation means "mostly flat and not, as a whole, v shaped, round, or cylindrical." Id. However "a surface may have minor curves and imperfections while remaining, as a whole, "generally flat." Id. at 919.

B. The Defendant's Allegedly Infringing Product

LNC manufactures a rinse pail, having a flexible sidewall, referred to as the Nuby Tear Free Rinse Pail ("NTFRP"). Further, the rinse pail has a label advertising an "Easy Grip™ handle" and "Soft edges for stress-free shampooing." [Doc. No. 264-10, p. 4]. See also [Doc. No. 264-12].

On March 30, 2016, McGinley filed suit in the United States District Court for the Western District of Missouri, naming LNC as the sole defendant. McGinley alleged LNC infringed the ’178 patent based on LNC's importation into the United States, making, using, offering for sale, and selling LNC's Nuby Tear Free Rinse Pail. LNC subsequently filed its own action in the Western District of Louisiana seeking a declaratory judgment of no infringement and patent invalidity together with counts directed to various state and federal unfair competition counterclaims. These claims were later asserted as counterclaims in the original action.

In light of the Federal Circuit's claim construction ruling, Defendants and Plaintiffs have both moved for summary judgment. Defendants move for summary judgment on the issue of noninfringement both with respect to literal infringement and infringement under the doctrine of equivalents. [Doc. No. 263]. Plaintiffs move for partial summary judgment on the issue of literal infringement. [Doc. No. 264]. The motions are opposed. [Doc. Nos. 267; 270]. Both parties have filed reply briefs. [Doc. Nos. 276; 279]. Accordingly, the motions are ripe.

Law and Analysis
A. Summary Judgment Standards

Under Federal Rule of Civil Procedure 56(a), "[a] party may move for summary judgment, identifying each claim or defense--or the part of each claim or defense--on which summary judgment is sought." FED. R. CIV. P. 56(a). "The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Id. The moving party bears the initial burden of informing the court of the basis for its motion by identifying portions of the record which highlight the absence of genuine issues of material fact. Topalian v. Ehrman , 954 F.2d 1125, 1132 (5th Cir. 1992) ; see also FED. R. CIV. P. 56(c)(1) ("A party asserting that a fact cannot be ... disputed must support the assertion by ... citing to particular parts of materials in the record"). A fact is "material" if proof of its existence or nonexistence would affect the outcome of the lawsuit under applicable law in the case. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A dispute about a material fact is "genuine" if the evidence is such that a reasonable fact finder could render a verdict for the nonmoving party. Id. "The evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in [the nonmovant's] favor." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) (citing Adickes v. S. H. Kress & Co. , 398 U.S. 144, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970) )

B. Literal Infringement

A person infringes a patent when he "without authority makes, uses, offers to sell, or sells any patented invention, within the United States." 35 U.S.C.§ 271(a) ; Lexmark Int'l, Inc. v. Impression Prods., Inc. , 816 F.3d 721, 726 (Fed. Cir. 2016) ; Int'l Bus. Machines Corp. v. Booking Holdings Inc. , 775 F. App'x 674, 677 (Fed. Cir. 2019). "An infringement analysis has two steps." Indivior Inc. v. Dr. Reddy's Labs., S.A. , 930 F.3d 1325, 1336 (Fed. Cir. 2019) (citing Clare v. Chrysler Grp. LLC , 819 F.3d 1323, 1326 (Fed. Cir. 2016) ). In the first step, the Court construes the asserted claims. Id. In the second step, the Court determines whether the accused product meets each limitation of the claim as construed. See id.

Literal infringement requires the patentee to prove that the accused device contains each limitation of the asserted claim. Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc. , 289 F.3d 801, 812 (Fed. Cir. 2002) (citing Mas–Hamilton Group v. LaGard, Inc. , 156 F.3d 1206, 1211, 48 U.S.P.Q.2d 1010, 1014–15 (Fed. Cir. 1998) )(emphasis added).The comparison is only to the patent claims, not to any specific embodiment in the patent specification or to the patent holder's commercial embodiment. See Amgen Inc. v. Hoechst Marion Roussel, Inc. , 314 F.3d 1313, 1347 (Fed. Cir. 2003) ; Fleet Eng'rs, Inc....

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