Seirus Innovative Accessories, Inc. v. Gordini U.S.A. Inc.

• Decision Date: 03 February 2012
• Docket Number: Case No. 10–CV–0892 H (WMC).
• Citation: 849 F.Supp.2d 963
• Parties: SEIRUS INNOVATIVE ACCESSORIES, INC., Plaintiff, v. GORDINI U.S.A. INC., Defendant.
• Court: U.S. District Court — Southern District of California

849 F.Supp.2d 963

SEIRUS INNOVATIVE ACCESSORIES, INC., Plaintiff,

v.GORDINI U.S.A. INC., Defendant.

Case No. 10–CV–0892 H (WMC).

United States District Court, S.D. California.

Feb. 3, 2012.

Eric M. Jaegers, Dallas, TX, Matthew D. Murphey, San Diego, CA, Paul E. McGowan, Atlanta, GA, for Plaintiff.

Kenneth F. Florek, Florek & Endres PLLC, New York, NY, for Defendant.

AMENDED ORDER:

(1) GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT REGARDING SEIRUS' '804 AND '690 PATENTS;

(2) GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT REGARDING TRADE DRESS;

(3) GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT REGARDING FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION CAUSES OF ACTION UNDER THE LANHAM ACT AND CALIFORNIA LAW; AND

(4) GRANTING DEFENDANT'S REQUEST FOR JUDICIAL NOTICE

MARILYN L. HUFF, District Judge.

On December 30, 2011, Defendant Gordini U.S.A. Inc. (“Gordini” or “Defendant”) filed motions for summary judgment regarding Seirus Innovative Accessories, Inc.'s (“Seirus” or “Plaintiff”) Patent Nos. 5,214,804 (“the ' 804 patent”), 6,272,690 (“the '690 patent”), Seirus' trade dress claims, and requested judicial notice. (Doc. Nos. 40 & 41.) ¹ On January 16, 2012, Seirus filed a response in opposition to Gordini's motions for summary judgment. (Doc. Nos. 45 & 48.) On January 23, 2012, Gordini filed a reply. (Doc. Nos. 50 & 51.)

The Court held a hearing on January 30, 2012. Matthew Murphey and Paul McGowan appeared for Seirus, and Kenneth Florek appeared for Gordini. Based on the following, the Court grants Gordini's motions for summary judgment.

Background

Seirus filed a complaint for patent infringement, trade dress infringement, and unfair competition on April 4, 2010 against Gordini U.S.A., Inc. and Gordini Canada, Inc. (Doc. No. 1, Complaint.) Specifically, Seirus alleges infringement and inducing infringement of the '804 patent and the '690 patent by the Gordini accused products. (Complaint at 4–10.) The '804 patent was filed on January 27, 1992 and issued on June 1, 1993. The '804 claims are directed to an article of clothing that includes a mask portion to be worn about a user's mouth and nose, and a scarf portion to be worn about a user's neck. (Doc. No. 41, Ex. 1, the '804 patent). The '690 patent was filed on March 18, 1996 and issued on August 14, 2001. The '690 patent contains a single claim directed to a “combination of a sport goggle and an article of protective clothing.” (Doc. No. 41, Ex. 2, the '690 patent).

Seirus also asserts claims of trade dress infringement, false designation of origin and unfair competition under the Lanham Act, and unfair competition and unjust enrichment under California law. (Doc. No. 1, Complaint at 4–10.)

I. Motion for Summary JudgmentLegal Standard

Summary judgment is appropriate under Rule 56 of the Federal Rules of Civil Procedure if the moving party demonstrates the absence of a genuine issue of material fact and entitlement to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A fact is material when, under the governing substantive law, it could affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Freeman v. Arpaio, 125 F.3d 732, 735 (9th Cir.1997). A dispute is genuine if a reasonable jury could return a verdict for the nonmoving party. Anderson, 477 U.S. at 248, 106 S.Ct. 2505.

A party seeking summary judgment bears the initial burden of establishing the absence of a genuine issue of material fact. Celotex, 477 U.S. at 323, 106 S.Ct. 2548. The moving party can satisfy this burden in two ways: (1) by presenting evidence that negates an essential element of the nonmoving party's case; or (2) by demonstrating that the nonmoving party failed to establish an essential element of the nonmoving party's case on which the nonmoving party bears the burden of proving at trial. Id. at 322–23, 106 S.Ct. 2548. “Disputes over irrelevant or unnecessary facts will not preclude a grant of summary judgment.” T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir.1987). Once the moving party establishes the absence of genuine issues of material fact, the burden shifts to the nonmoving party to set forth facts showing that a genuine issue of disputed fact remains. Celotex, 477 U.S. at 322, 106 S.Ct. 2548. The nonmoving party cannot oppose a properly supported summary judgment motion by “rest [ing] on mere allegations or denials of his pleadings.” Anderson, 477 U.S. at 256, 106 S.Ct. 2505. “The ‘opponent must do more than simply show that there is some metaphysical doubt as to the material fact.’ ” Kennedy v. Allied Mut. Ins. Co., 952 F.2d 262, 265–66 (9th Cir.1991) (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986)). Furthermore, the nonmoving party generally “cannot create an issue of fact by an affidavit contradicting his prior deposition testimony.” Kennedy, 952 F.2d at 266;see Foster v. Arcata Assocs., 772 F.2d 1453, 1462 (9th Cir.1985), cert. denied,475 U.S. 1048, 106 S.Ct. 1267, 89 L.Ed.2d 576 (1986); Radobenko v. Automated Equip. Corp., 520 F.2d 540, 543–44 (9th Cir.1975).

When ruling on a summary judgment motion, the court must view all inferences drawn from the underlying facts in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co., 475 U.S. at 587, 106 S.Ct. 1348. The Court does not make credibility determinations with respect to evidence offered. See T.W. Elec., 809 F.2d at 630–31 (citing Matsushita, 475 U.S. at 587, 106 S.Ct. 1348). Summary judgment is therefore not appropriate “where contradictory inferences may reasonably be drawn from undisputed evidentiary facts.” Hollingsworth Solderless Terminal Co. v. Turley, 622 F.2d 1324, 1335 (9th Cir.1980).

A. Seirus' Claims for Patent Infringement

Seirus claims (i) patent infringement and (ii) inducing patent infringement of U.S. Patent Nos. 5,214,804 (“the '804 patent”) and 6,272,690 (“the ' 690 patent”) against Gordini. Gordini moves for summary judgment regarding these claims asserting that the claims of the '804 patent are invalid and that Gordini's products do not infringe the '690 patent.

1. The '804 Patent

The '804 patent describes an article of clothing that combines a mask portion to be worn about a user's mouth and nose with a scarf portion to be worn about a user's neck. Gordini argues that the claims of the '804 patent are invalid as obvious over the prior art and, therefore, cannot be infringed either directly or by inducement.Image 1 (3.16" X 3.21") Available for Offline Print

a. Legal Standard for Obviousness

A patent issued by the United States Patent and Trademark Office (“USPTO”) is presumed to be valid. Microsoft Corp. v. i4i Ltd. P'ship, –––U.S. ––––, 131 S.Ct. 2238, 2242, 180 L.Ed.2d 131 (2011). In order to overcome the presumption of validity, a party must prove invalidity by clear and convincing evidence. Id.

A claimed invention is obvious if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103(a). Obviousness is a legal question based on underlying factual determinations. Eisai Co. Ltd. v. Dr. Reddy's Lab., Ltd., 533 F.3d 1353, 1356 (Fed.Cir.2008). “The factual determinations underpinning the legal conclusion of obviousness include 1) the scope and content of the prior art, 2) the level of ordinary skill in the art, 3) the differences between the claimed invention and the prior art, and 4) evidence of secondary factors.” Id. (citing Graham v. John Deere Co., 383 U.S. 1, 17–18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)). Secondary factors include “commercial success, long felt but unsolved needs, failure of others, etc.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007) (quoting Graham, 383 U.S. at 17–18, 86 S.Ct. 684.) Summary judgment may be appropriate if “the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent.” KSR Int'l Co., at 427, 127 S.Ct. 1727.

A patent is likely to be obvious if it merely yields predictable results by combining familiar elements according to known methods. Id. at 416, 127 S.Ct. 1727. “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Id. at 418, 127 S.Ct. 1727. “If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability.” Id. at 417, 127 S.Ct. 1727. In determining obviousness, courts do not need to find “precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 127 S.Ct. 1727. A person of ordinary skill interprets the prior art “using common sense and appropriate perspective.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1361 (Fed.Cir.2011) (citing KSR Int'l Co., 550 U.S. at 421, 127 S.Ct. 1727). As the Supreme Court observed:

When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.

KSR Int'l Co., 550 U.S. at 421, 127 S.Ct. 1727. The results of ordinary innovation are not patentable. Id. at 427, 127 S.Ct. 1727.

b. Claims 1–4 and 8–15: Obviousness Analysis

Claim 1 is directed to an article of clothing...