Vita-Mix Corp. v. Basic Holding, Inc.

• Decision Date: 16 September 2009
• Docket Number: No. 2008-1479.,No. 2008-1517.,2008-1479.,2008-1517.
• Citation: 581 F.3d 1317
• Parties: VITA-MIX CORPORATION, Plaintiff-Appellant, v. BASIC HOLDING, INC. (formerly known as Back to Basics Products, Inc.), Focus Products Group, LLC, Focus Electrics, LLC, and West Bend Housewares, LLC, Defendants-Cross Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

581 F.3d 1317

VITA-MIX CORPORATION, Plaintiff-Appellant, v. BASIC HOLDING, INC. (formerly known as Back to Basics Products, Inc.), Focus Products Group, LLC, Focus Electrics, LLC, and West Bend Housewares, LLC, Defendants-Cross Appellants.

No. 2008-1479.

No. 2008-1517.

United States Court of Appeals, Federal Circuit.

September 16, 2009.

David T. Movius, McDonald Hopkins Co., LPA, of Cleveland, OH, argued for plaintiff-appellant. With him on the brief were Michael L. Snyder and David B. Cupar.

Larry R. Laycock, Workman Nydegger, of Salt Lake City, UT, argued for defendants-cross appellants. With him on the brief were David R. Wright, David R. Todd, Robert E. Aycock and Clinton E. Duke.

Before BRYSON, GAJARSA, and PROST, Circuit Judges.

Opinion for the court filed by Circuit Judge PROST. Opinion concurring-in-part and dissenting-in-part filed by Circuit Judge BRYSON.

PROST, Circuit Judge.

This case involves alleged infringement by Basic Holding ("Basic") of a patent and alleged trademark held by Vita-Mix Corporation ("Vita-Mix"). The United States District Court for the Northern District of Ohio granted summary judgment of no direct infringement, no inducement of infringement, no contributory infringement, and no trademark infringement in favor of Basic. The court also granted summary judgment of no invalidity based on anticipation, obviousness, or lack of enablement, no inequitable conduct, and no laches in favor of Vita-Mix. For the reasons set forth below, we vacate and remand the district court's judgment of no direct infringement. We affirm the judgments of no inducement, no contributory infringement, and no trademark infringement. We vacate and remand the judgments of no invalidity for anticipation, obviousness, or lack of enablement. We affirm the judgments of no inequitable conduct and no laches.

I

A

The patent at issue in this appeal is directed to a method of preventing the formation of an air pocket around the moving blades of a consumer food blender. The method involves inserting a plunger into the body of the blender. The object of the plunger is to block the air channel that creates the air pocket when ingredients are blended. The sole claim of the asserted patent, U.S. Patent No. 5,302,021 ("the '021 patent") recites:

1. A method of preventing the formation of an air pocket around rotating blades positioned in a pitcher of a blender, the air pocket being created from an air channel of a cross-sectional size defined by a member associated with the blades, comprising the steps of supplying a fluid into the pitcher, and positioning a plunger, having a cross-sectional size approximating the cross-sectional size of the member, adjacent to and above the rotating blades while maintaining the plunger free of contact with the pitcher thereby preventing the formation of an air pocket in the fluid around the rotating blades.

During prosecution, the applicant explained that the claimed method differed from the prior art due to its preventative capability. Prior art methods of combating air pockets involved stirring the contents of the blender to break up or dislodge the pockets after they have begun to form. Stirring is only a temporary solution, however, and air pockets begin to reform as soon as the stirring stops. The applicant stated that the claimed method prevents air pockets from ever forming by blocking the air channel that creates the air pockets, due to the plunger's size and position within the blender.

Vita-Mix markets one embodiment of its blender and plunger device as the VITA-MIX® 5000, which is the product relevant to Vita-Mix's trademark infringement claims. Other Vita-Mix blenders include the VITA-MIX® 3600, 4500, and 5200. According to the record before the district court, and the representations of Vita-Mix counsel during oral argument before this court, the numerical designations roughly correspond to the different wattages of the blenders. Vita-Mix markets its products as high-speed liquid food blenders, with emphasis on the plunger device.

Basic markets several accused blenders, including the Smoothie Elite, the Smoothie Plus™, and the Blender Solutions™ 5000. Basic also sells other products under the Blender Solutions™ name, including the Blender Solutions™ 4000 and 5500. Each of Basic's accused blenders includes a "stir stick," which resembles the plunger from Vita-Mix's patented method. The lids of Basic's blenders have an opening which can be covered with a flat cap, or can receive the stir stick. The proximal end of the stir stick forms a ball and handle. The ball is seated on the lid opening in a ball-and-socket configuration. This configuration allows a user to grip the handle and move the distal end of the stir stick around within the pitcher of the blender. A rubber o-ring mounted on the distal end of the stir stick prevents the stir stick from scratching the inner sides of the pitcher during stirring. The sides of the pitcher also include a vertical ribbing that is interrupted at the points where the o-ring may contact the sides during stirring.

B

The '021 patent issued in 1994. Basic launched its line of blenders around March of 2001. In October of 2006, Vita-Mix filed suit against Back to Basics, Inc., now Basic Holdings, its parent company Focus Products, and two other subsidiaries of Focus Products; Focus Electrics and West Bend. Vita-Mix alleged infringement of the '021 patent by dozens of Basic's blender models, and trademark infringement by the Blender Solutions™ 5000 model. Basic responded by filing declaratory judgment counterclaims of noninfringement, invalidity, inequitable conduct, and several affirmative defenses.

The district court conducted a Markman hearing to construe several disputed claim terms. During the hearing, the court examined the prosecution history and determined that the patentee expressly disclaimed any stirring operation that breaks up or dislodges air pockets after they have begun to form, and limited the scope of the claimed invention to positioning the plunger such that it prevents air pockets from forming. The court construed claim 1 to exclude "stirring to disperse, dislodge, or breakup an air pocket after it has begun to form." The court also construed the term "plunger" as a "device that can be inserted into a blender." Basic does not dispute that its stir stick is a plunger as that term was construed by the district court.

At the close of discovery in the trial phase following the Markman hearing, both parties filed multiple dispositive motions. These included summary judgment motions and cross-motions on issues of end user infringement of the patented method, inducement of infringement for Basic's product instructions, contributory infringement for Basic's products, common law trademark infringement for Basic's use of the designation "5000," invalidity of the '021 patent for anticipation and obviousness in light of the cited prior art, lack of enablement due to the patented method's alleged inability to prevent air pockets, unenforceability for inequitable conduct in making false statements to the patent examiner, and laches for delaying five and a half years before bringing suit.

On July 2, 2008, the district court entered a final order granting Basic's summary judgment motions of no direct infringement, no inducement, no contributory infringement, and no trademark infringement. The court granted Vita-Mix's summary judgment motions of no invalidity for anticipation, obviousness, or lack of enablement. The court also granted Vita-Mix's summary judgment motions of no inequitable conduct and no laches. The district court also ruled on several motions not on appeal before this court, thereby resolving on summary judgment the entire dispute between the parties.

On July 16, 2008, Vita-Mix timely filed a notice of appeal on the issues of no infringement, no inducement of infringement, and no contributory infringement of the '021 patent, and no trademark infringement of Vita-Mix's use of the designation "5000." On August 1, 2008, Basic timely filed its notice of conditional cross-appeal on the issues of no invalidity for anticipation, obviousness, and lack of enablement, and unenforceability for inequitable conduct and laches. This court has appellate jurisdiction over the appeal and cross-appeal pursuant to 28 U.S.C. § 1295(a)(1).

II

The appeal and cross-appeal challenge the district court's resolution on summary judgment of various contested issues. Summary judgment is appropriate when no genuine of issues of material fact exist, and the moving party is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Fed.R.Civ.P. 56(c). The burden of showing the absence of a genuine issue of material fact rests with the moving party. Id. A fact is material if its resolution will affect the outcome of the case. Anderson v. Liberty Lobby, 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The court must afford all reasonable inferences and construe the evidence in the light most favorable to the non-moving party. See id. at 255, 106 S.Ct. 2505. To defeat summary judgment, the evidence as properly construed must be sufficient for a reasonable jury to find for the nonmoving party; a mere scintilla of evidence will not suffice. Id. at 252, 106 S.Ct. 2505. We review a grant of summary judgment de novo, reapplying the standard that the district court employed. Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1301 (Fed.Cir.1999).

As discussed below, numerous issues are raised by Vita-Mix on appeal. These issues include direct and indirect patent infringement, and trademark infringement. We address each in turn.

A. Claim Construction

Although the district court's claim construction was not actually appealed, Vita-Mix contends that the district court erred in finding no direct infringement based, in part, on applying to the accused device a claim...