Sharper Image Corp. v. Target Corp.
| Decision Date | 29 March 2006 |
| Docket Number | No. C 04-0824 CW.,C 04-0824 CW. |
| Citation | 425 F.Supp.2d 1056 |
| Parties | SHARPER IMAGE CORPORATION, a Delaware corporation, Plaintiff, v. TARGET CORPORATION, a Minnesota corporation, Ionic Pro, LLC, a Delaware corporation, Ideal Products, LLC, a Nevis (offshore) corporation, Sylmark, Inc., a Delaware corporation, Sylmark, LLC, a Delaware corporation, Qwik Cook, Inc. d/b/a Home Trends, a New York corporation, Factories2U, LLC, a California corporation, and Chaim Mark Bess, an individual, Defendants. |
| Court | U.S. District Court — Northern District of California |
Alan L. Barry, Amy Gast O'Toole, Heather A. Boice, Bell, Boyd & Lloyd, Chicago, IL, David L. Aronoff, Gayle I. Jenkins, Thelen, Reid & Priest LLP, Los Angeles, CA, e. robert (bob) wallach, Law Offices of e. robert (bob) wallach, Patrick M. Ryan, Brian P. Hennessy, Thelen Reid & Priest LLP, San Francisco, CA, for Plaintiff.
Jonathan S. Kagan, Elizabeth L. Rosenblatt, Mary Ann Novak, Morgan Chu, Irell & Manella LLP, Los Angeles, CA, for Defendants.
ORDER ADDRESSING CROSS-MOTIONS FOR SUMMARY JUDGMENT
Defendants Target Corporation, Ionic Pro, LLC, Qwik Cook, Inc. d/b/a Home Trends, Ideal Products, LLC (Ideal Products), Sylmark, Inc. (Sylmark), Sylmark, LLC, Factories2U, LLC and Chaim Mark Bess (collectively, Defendants) move for summary adjudication of Plaintiff Sharper Image Corporation's claims of patent infringement, trade dress infringement and unfair competition and of Defendants' counterclaims for non-infringement of the asserted patents. Plaintiff opposes the motion, and separately moves to strike portions of it. Defendants move to strike the opposition.1 Plaintiff separately moves to strike, under California Code of Civil Procedure § 425.16, Defendants' tort and State law counterclaims, and in the alternative moves for judgment on the pleadings of the counterclaims, and for partial summary adjudication on its utility patent infringement claim. Defendants oppose those motions, and purportedly cross-move for summary judgment.2 Plaintiff separately moves for leave to file a Third Amended Complaint (TAC) and to join additional defendants. Defendants oppose the motion.
These matters were heard on January 27, 2006. Having considered the papers filed by the parties and oral argument on the motions, the Court grants in part Defendants' motion for summary adjudication of patent and trade dress infringement, as described below. The Court grants Plaintiff s motion for summary adjudication of Defendants' tort and State law counterclaims. The Court grants Plaintiff leave to join Mr. Spiegel as a defendant, but otherwise denies the motion for leave to amend.
Plaintiff is a corporation with its principal place of business in San Francisco, California. Plaintiff manufactures its own line of consumer products, known as the Sharper Image Design products, which it sells to wholesale and retail customers through a multi-channel distribution system. One of Plaintiff's recent, highly successful products is the Ionic Breeze Quadra (IBQ) air purifier, which purports to clean air without the use of filters, by using wire electrodes to charge airborne particulates, which are then attracted to oppositely-charged plates.
Ionic Pro, LLC is the manufacturer of a cheaper, competing filter-less air purifier, the Ionic Pro. Ideal Products, LLC is a sister company, and shares some employees with Ionic Pro, LLC. Sylmark, LLC is the parent corporation of both Ionic Pro, LLC and Ideal Products, LLC. Sylmark and Sylmark, LLC (referred to collectively as "the Sylmark entities") share common owners, and both provide services to Ionic Pro, LLC. Specifically, Sylmark's employees provide customer service support for sales of Ionic Pro. Barry Decl., Ex. G, IP 5767. Chaim Mark Bess is the former President of Ionic Pro, LLC and former co-President of Sylmark. Proposed defendant Peter Spiegel is the Managing Director of Sylmark, LLC and former Chief Strategic Officer of Ionic Pro, LLC.
Defendants Target, Home Trends and Factories2U are retailers of the Ionic Pro.
Additional facts are set forth in the discussion section below.
Summary judgment is properly granted when no genuine and disputed issues of material fact remain, and when, viewing the evidence most favorably to the nonmoving party, the movant is clearly entitled to prevail as a matter of law. Fed. R.Civ.P. 56; Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Eisenberg v. Ins. Co. of N. Am., 815 F.2d 1285, 1288-89 (9th Cir.1987).
The moving party bears the burden of showing that there is no material factual dispute. Therefore, the court must regard as true the opposing party's evidence, if supported by affidavits or other evidentiary material. Celotex, 477 U.S. at 324, 106 S.Ct. 2548; Eisenberg, 815 F.2d at 1289. The court must draw all reasonable inferences in favor of the party against whom summary judgment is sought. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Intel Corp. v. Hartford Accident & Indem. Co., 952 F.2d 1551, 1558 (9th Cir.1991).
Material facts which would preclude entry of summary judgment are those which, under applicable substantive law, may affect the outcome of the case. The substantive law will identify which facts are material. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
Where the moving party does not bear the burden of proof on an issue at trial, the moving party may discharge its burden of production by either of two methods. Nissan Fire & Marine Ins. Co., Ltd., v. Fritz Cos., Inc., 210 F.3d 1099, 1106 (9th Cir. 2000).
The moving party may produce evidence negating an essential element of the nonmoving party's case, or, after suitable discovery, the moving party may show that the nonmoving party does not have enough evidence of an essential element of its claim or defense to carry its ultimate burden of persuasion at trial.
If the moving party discharges its burden by showing an absence of evidence to support an essential element of a claim or defense, it is not required to produce evidence showing the absence of a material fact on such issues, or to support its motion with evidence negating the non-moving party's claim. Id.; see also Lujan v. Nat'l Wildlife Fed'n, 497 U.S. 871, 885, 110 S.Ct. 3177, 111 L.Ed.2d 695 (1990); Bhan v. NME Hosps., Inc., 929 F.2d 1404, 1409 (9th Cir.1991). If the moving party shows an absence of evidence to support the nonmoving party's case, the burden then shifts to the non-moving party to produce "specific evidence, through affidavits or admissible discovery material, to show that the dispute exists." Bhan, 929 F.2d at 1409.
If the moving party discharges its burden by negating an essential element of the non-moving party's claim or defense, it must produce affirmative evidence of such negation. Nissan, 210 F.3d at 1105. If the moving party produces such evidence, the burden then shifts to the non-moving party to produce specific evidence to show that a dispute of material fact exists. Id.
If the moving party does not meet its initial burden of production by either method, the non-moving party is under no obligation to offer any evidence in support of its opposition. Id. This is true even though the non-moving party bears the ultimate burden of persuasion at trial. Id. at 1107.
Where the moving party bears the burden of proof on an issue at trial, it must, in order to discharge its burden of showing that no genuine issue of material fact remains, make a prima facie showing in support of its position on that issue. UA Local 343 v. Nor-Cal Plumbing, Inc., 48 F.3d 1465, 1471 (9th Cir.1994). That is, the moving party must present evidence that, if uncontroverted at trial, would entitle it to prevail on that issue. Id.; see also Int'l Shortstop, Inc. v. Rally's, Inc., 939 F.2d 1257, 1264-65 (5th Cir.1991). Once it has done so, the non-moving party must set forth specific facts controverting the moving party's prima facie case. UA Local 343, 48 F.3d at 1471. The non-moving party's "burden of contradicting [the moving party's] evidence is not negligible." Id. This standard does not change merely because resolution of the relevant issue is "highly fact specific." Id.
Defendants move for summary adjudication of non-infringement of the '484 patent. Plaintiff has affirmed that it does not allege that Defendants' second-generation Ionic Pro infringes the '484 patent, and covenants not to sue Defendants for such infringement. Barry Decl. ¶ 8. Accordingly, the Court grants Defendants' motion for summary adjudication of non-infringement and dismisses with prejudice any '484 patent infringement claims based on the second-generation Ionic Pro. With respect to the first-generation Ionic Pro, however, Plaintiff opposes Defendants' motion for summary adjudication, and separately moves for summary adjudication of its claim of infringement of the '484 patent.
Plaintiff is the assignee of U.S. Patent No. 6,709,484 (the '484 patent), issued on March 23, 2004. The '484 patent's asserted claims pertain to a method for cleaning the emitter electrodes of an "electro-kinetic electro-static air conditioner." Of the asserted claims, only Claim 29 and 32 are independent. Claim 29 discloses,
A method for cleaning an emitter electrode with an electrode cleaning mechanism, ... the method comprising:
(a) rotating the housing from the upright position so that the electrode cleaning mechanism travels, from an initial position, along the emitter electrode and frictionally removes debris from the emitter electrode; and
(b) rotating the housing generally back to the upright position so that the electrode cleaning mechanism travels back to the initial position.
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