Midwest Athletics & Sports All. v. Ricoh U.S., Inc., 2:19-cv-00514-JDW
| Decision Date | 23 August 2021 |
| Docket Number | 2:19-cv-00514-JDW |
| Parties | MIDWEST ATHLETICS AND SPORTS ALLIANCE LLC, Plaintiff, v. RICOH USA, INC., Defendant. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
After years of litigation, the Parties have whittled this patent infringement case down to five remaining patents that relate to printing in some fashion. Plaintiff Midwest Athletics and Sports Alliance LLC ("MASA") has not mustered enough evidence to demonstrate a triable factual dispute on its infringement claims, let alone that it is entitled to summary judgment. The Court will therefore enter summary judgment as to non-infringement in favor of Defendant Ricoh USA, Inc.
In January of 2018, MASA filed its Complaint against Ricoh alleging direct infringement of nineteen different patents. MASA filed an Amended Complaint on April 16, 2018. MASA also filed a second infringement suit against Ricoh in July 2019 alleging infringement of three of the same patents: Midwest Athletics and Sports Alliance, LLC v. Ricoh USA, Inc., No. 19-cv-3423. The Court has consolidated the two cases, and MASA has narrowed its infringement claims to five patents: (a) 6, 718, 285; (b) 7, 720, 425; (c) 7, 502, 582; (d) 6, 411, 314; and (e) 6, 509, 974.
The '285 Patent relates to the operation and maintenance of printing systems, including tracking the life of operator replaceable components in printers and sending alerts to the printer operator to replace those components. MASA contends that a user can use the Ricoh Aficio SP C410DN, the Ricoh Pro C52OOs/C52lOs, and the Ricoh Pro C9OO/C9OOs/C9Ol/C9Ols (the '"285 Accused Products") to infringe this patent.
The '425 Patent and '582 Patent (the "Pentachrome Patents") relate to improving the quality of color and gloss in a printed document by printing five-color images. MASA contends that one can use the Ricoh Pro C7100X and Ricoh Pro C7110X (the "Pentachrome Accused Products") to infringe these patents.
The '314 Patent and the '974 Patent (the "Workflow Patents") relate to managing the workflow process for a print job. MASA contends that one can use Ricoh's software products, TotalFlow and TotalFlow Prep, as well as input devices for TotalFlow Prep's user interface and the Ricoh Multifunction Printers/Copiers that provide scanned documents to TotalFlow Prep (the "'314 Accused Products") to infringe the '314 Patent. With respect to the '974 Patent, MASA contends that one can use additional Ricoh software products, ProcessDirector and ProcessDirector Express, along with input devices for ProcessDirector's user interface and Ricoh Printers that support ProcessDirector functionality and Ricoh Multifunction Printers/Copiers that have scan to folder functionality (the "'974 Accused Products") to infringe that patent.
Both Parties filed motions for summary judgment, which are ripe for disposition.
Federal Rule of Civil Procedure 56(a) permits a party to seek, and a court to enter, 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." Fed.R.Civ.P. 56(a). "[T]he plain language of Rule 56[(a)] mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who 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, 322 (1986) (quotations omitted). In ruling on a summary judgment motion, a court must "view the facts and draw reasonable inferences 'in the light most favorable to the party opposing the [summary judgment] motion.'" Scott v. Harris, 550 U.S. 372, 378 (2007) (quotation omitted). However, "[t]he non-moving party may not merely deny the allegations in the moving party's pleadings; instead he must show where in the record there exists a genuine dispute over a material fact." Doe v. Abington Friends Sch., 480 F.3d 252, 256 (3d Cir. 2007) (citation omitted); see also Fed. R. Civ. P. 56(c)(1)(A)-(B). Thus, a blanket denial to an asserted fact, without more, is insufficient. "If a party fails to . . . properly address another party's assertion of fact as required by Rule 56(c), the court may . . . consider the fact undisputed for purposes of the motion; [and] grant summary judgment if the motion and supporting materials-including the facts considered undisputed-show that the movant is entitled to it[.]" Fed.R.Civ.P. 56(e)(2)-(3).
The filing of cross-motions does not change this analysis. See Transportes Ferreos de Venezuela II CA v. NKK Corp., 239 F.3d 555, 560 (3d Cir. 2001). It "does not constitute an agreement that if one is rejected the other is necessarily justified or that the losing party waives judicial consideration and determination whether genuine issues of material fact exist." Id. at 560 (quotation omitted). Rather, "[w]hen confronted with cross-motions for summary judgment 'the court must rule on each party's motion on an individual and separate basis, determining, for each side, whether a judgment may be entered in accordance with the Rule 56 standard.'" Canal Ins. Co. v. Underwriters at Lloyd's London, 333 F.Supp.2d 352, 353 n.l (E.D. Pa. 2004), aff'd, 435 F.3d 431 (3d Cir. 2006).
"[W]hoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent." 35 U.S.C. § 271(a). For method claims, "[d]irect infringement under § 271(a) occurs where all steps ... are performed by or attributable to a single entity." Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015). Under a divided or joint infringement theory, a defendant will be held responsible for third parties' infringement where the defendant directs or controls those third parties' performance. See Id. Divided or joint infringement applies only to method claims. See Lyda v. CBS Corp., 838 F.3d 1331, 1339 (Fed. Cir. 2016).
Sufficient direction or control occurs where the alleged infringer '"conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method' and 'establishes the manner or timing of that performance.'" Travel Sentry, Inc. v. Tropp, 877 F.3d 1370, 1376 (Fed. Cir. 2017) (quotations omitted). While "conditioning" is not limited to legal obligations or technological prerequisites, Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., 845 F.3d 1357, 1367 (Fed. Cir. 2017), "mere guidance or instruction is insufficient ...." Travel Sentry, 877 F.3d at 1379 (quotation omitted). And the mere existence of some contractual relationship is not enough unless the contract "impose[s] an obligation on the allegedly 'controlled' party to perform the infringing steps." Grecia v. VUDU, Inc., No. 14-cv-775, 2015 WL 538486, at *4 (N.D. Cal. Feb. 9, 2015); see also Deep9 Corp. v. Barnes & Noble, Inc., No. 11-cv-35, 2012 WL 4336726, at *I2 (W.D. Wash. Sept. 21, 2012), aff'd, 504 Fed.Appx. 923 (Fed. Cir. 2013).
Ultimately, what is significant is whether the defendant has "'delineat[ed] the steps' that customers would have to perform 'if [they] wish[ed] to use [defendant's] product.'" Eli Lilly, 845 F.3d at 1367 n.5; see also Travel Sentry, 877 F.3d at 1380. "The 'direction or control' test requires the controlling party to be, in effect, the 'mastermind'of the entire process." Midwest Energy Emissions Corp. v. Vistra Energy Corp., No. 19-cv-1334, 2020 WL 3316056, at *9 (D. Del. June 18, 2020), report and recommendation adopted, 2020 WL 8265330 (D. Del. July 15, 2020). Under this test, general instruction manuals, tip sheets, or other guidance that illustrate how to do something but do not require or control it will generally not exert the requisite control. These types of materials can demonstrate sufficient direction or control only if they instruct (that is mandate or require) end users to use a defendant's products in an infringing manner. See, e.g., Kolcraft Enterprises, Inc. v. Chicco USA, Inc., No. 09-cv-3339, 2019 WL 4242482, at *6 (N.D. Ill. Sept. 6, 2019), appeal dismissed, No. 2020-1053, 2019 WL 12042053 (Fed. Cir. Oct. 31, 2019), and affd sub nom., Kolcraft Enterprises, Inc. v. Artsana USA, Inc., 819 Fed.Appx. 939 (Fed. Cir. 2020).
A defendant may be liable for indirect infringement under a theory of induced infringement or contributory infringement. See 35 U.S.C. §§ 271(b), (c). To prove induced infringement, a plaintiff must show that: "(1) with knowledge of or willful blindness to the existence of the patent-in-suit; (2) the defendant engaged in affirmative acts to induce (e.g., by persuading, leading, or influencing) a third party to perform acts that; (3) the defendant knew constituted infringement of the patent-in-suit (or was willfully blind to that fact); (4) with the specific intent to cause such infringement; and which (5) resulted in the third party directly infringing the patent -at-issue." Bonutti Skeletal Innovations, LLC v. Globus Med. Inc., No. 14-cv-6650, 2015 WL 3755223, at *5 (E.D. Pa. June 15, 2015). To prove contributory infringement, a plaintiff must establish: "1) that there is direct infringement, 2) that the accused infringer had knowledge of the patent, 3) that the component has no substantial noninfringing uses, and 4) that the component is a material part of the invention." Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1326 (Fed. Cir. 2010) (citation omitted).
The Parties' summary judgment briefs discuss both direct and...
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