Winn Inc. v. Eaton Corp.
| Decision Date | 17 June 2003 |
| Docket Number | No. CV 03-1568 SJO.,CV 03-1568 SJO. |
| Citation | 272 F.Supp.2d 968 |
| Parties | WINN INCORPORATED, a California Corporation and Ben Huang, an individual, Plaintiffs, v. EATON CORPORATION, et al., Defendants. |
| Court | U.S. District Court — Central District of California |
Darrell L. Olson, Esq., Lynda J. Zadra-Symes, Esq., Paul D. Tripodi II, Esq. with the law firm of Knobbe Martens Olson & Bear LLP, in Irvine, CA, Curtis C. Chen, Esq. with the firm of Curtis Chen & Associates in Huntington Beach, CA, Connie M. Anderson, Esq. with the law firm of Ropers, Majeski, Kohn & Bentley in Los Angeles, CA, for Plaintiffs Winn Incorporated and Ben Huang.
Luke Dauchot, Esq. and Nick Saros, Esq. with Kirkland & Ellis in Los Angeles, CA, Kenneth G. Cole, Esq. with Thompson Hine LLP in Cleveland, OH, for Defendant Eaton Corporation.
This case stems from the alleged infringement of patented technology for golf club grips. Plaintiffs' First Amended Complaint ("FAC") succinctly sets out a claim for infringement of patents numbered 5,695,418 ("the '418 patent") and 5,797,813 ("the '813 patent"). (First Amended Complaint, hereinafter FAC, p. 2). Specifically, Plaintiffs aver "Defendants Eaton Corporation and Kent Sports, Incorporated have infringed U.S. Letters Patent Nos. 5,695,418 and 5,797,813 by offering for sale and selling the aforementioned WHISPER golf club grips." (Complaint, ¶ 10). In its First Amended Complaint, Plaintiffs set forth the same allegation (FAC, ¶ 10) and added that "KENT SPORTS INCORPORATED has also infringed U.S. Letters Patent Nos. 5,695,418 and 5,797,813 by offering for sale and selling golf club grips marketed under the trademark `ALPHA.'" (Id. ¶ 11). The FAC also states Eaton had prior knowledge of the patents before committing these acts of infringement; and the acts of infringement were willful and wanton. (Id. ¶¶ 10, 14 and 15). The parties have come to agree that the accused product is the Whisper golf club grip. (P. & A., p. 11).
A. Facts
Plaintiffs are Winn Incorporated ("Winn") and Ben Huang. Before entering the sporting goods business, Dr. Huang was a mechanical engineer who worked as a professor and did consulting work for NASA. (Huang Decl. ¶ 3). He founded Winn in 1977. (Id. ¶ 4). Winn is a sporting goods company. In 1988 Winn started to import synthetic grips for racquets. (Id. ¶ 5). In 1990 Dr. Huang and Winn endeavored to improve the shock absorbency of their synthetic grip. (Id. ¶ 6). These efforts led to the issuance of two patents, United States Patent No. 5,695,418 ("the '418 Patent") issued to Dr. Huang on December 9, 1997, and United States Patent No. 5,797,813 ("the '813 Patent") issued to Dr. Huang on August 25, 1998. (See DUSF, 1-3). The patented products met with great commercial success. (Huang Decl. ¶ 7). Winn is the largest seller of soft synthetic after-market golf grips in the world, with sales in excess of $20 million. (Id. ¶ 10).
Defendants are Eaton Corp. ("Eaton") and Kent Sports Incorporated. Eaton is the moving party. Plaintiff alleges that in 2002, Eaton reverse-engineered the Winn grips. (See Confidential Symes Decl. Ex. 104). Eaton was then swiftly able to enter the market and compete with Winn. (See Confidential Symes Decl. Ex. 108). Consequently, Dr. Huang and Winn filed suit for patent infringement on July 3, 2002. (Complaint, p. 1). The parties tentatively reached a settlement agreement but were unable to finalize the deal. As a result, the suit continues. Trial is roughly four months away.
In the instant motion Defendant Eaton is moving for summary judgment on four grounds: (1) the complaint does not adequately set forth claims for inducement and contributory infringement under 35 U.S.C. § 271(b) and (c); (2) Eaton's products do not infringe claim 1 of the '418 Patent; (3) its products do not infringe claims 1-3, 5-8, 10-11, 13, and 14-15 of the '813 Patent; and (4) the claims of the '813 Patent are invalid under 35 U.S.C. § 112, ¶ 2. (Notice & Motion, ¶ 1). In order to reach these issues, the Court must construe the meaning of various claim terms. (P. & A., pp. 4-5) and Markman v. Westview Instruments, Inc., 52 F.3d 967, 977 (Fed.Cir.1995)(en banc)[claim construction is a matter of law for the Court to decide].
Rule 56(c) of the Federal Rules of Civil Procedure sets forth the standard for granting a motion for summary judgment. It states in part:
The judgment sought shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.
Fed. R. Civ. Pro. 56(c) (2003).
This standard has been explained by the Supreme Court of the United States in Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986), Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986), and Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
When the moving party bears the burden of persuasion on the issue at trial, its showing must sustain that burden as well as demonstrate the absence of a genuine dispute. See Celotex Corp., supra, 477 U.S. at 331-32, 106 S.Ct. 2548. When the moving party does not bear the burden of proof at trial, it must point out to the district court that there is an absence of evidence to support the nonmoving party's case. Id. at 325, 106 S.Ct. 2548. In Anderson, the Court set out the requisites needed to show there is no genuine issue as to a material fact.
As to materiality, the substantive law will identify which facts are material. Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment. Factual disputes that are irrelevant or unnecessary will not be counted.
Anderson, 477 U.S. at 248, 106 S.Ct. 2505. The Court also held that "it is the substantive law's identification of which facts are critical and which facts are irrelevant that governs." Id.
Regarding the existence of a genuine issue of material fact, the Court held that, summary judgment is not appropriate if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. However, the Court also noted that "there is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party." Id. at 249, 106 S.Ct. 2505. The nonmoving party has the burden of producing operative facts, and the "mere existence of a scintilla of evidence in support of the plaintiff's position will be insufficient; there must be evidence on which the jury could reasonably find for the plaintiff." Id. at 252, 106 S.Ct. 2505. If the operative facts are not presented, summary judgment is appropriate.
Once the moving party has met its burden under Rule 56(c), the nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586, 106 S.Ct. 1348. However, any inferences from the underlying facts must be viewed in light most favorable to the nonmoving party. Id. at 587, 106 S.Ct. 1348.
In Celotex, the Court explained that the nonmoving party must designate specific facts showing a genuine issue for trial. Summary judgment is appropriate if a party, after adequate time for discovery, "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, 477 U.S. at 322, 106 S.Ct. 2548. The moving party is not required to prove the absence of a genuine issue of fact, even with respect to an issue on which the nonmoving party bears the burden of proof. Id. at 325, 106 S.Ct. 2548. "Instead ... the burden on the moving party may be discharged by `showing'-that is, pointing out to the district court-that there is an absence of evidence to support the nonmoving party's case." Id. The Celotex court also stated that "[o]ne of the principal purposes of the summary judgment rule is to isolate and dispose of factually unsupported claims or defenses," id. at 323-24, 106 S.Ct. 2548, and that the summary judgment procedure should not be regarded as a "disfavored procedural shortcut" but should be viewed as an "integral part of the Federal Rules as a whole, which are designed `to secure the just, speedy and inexpensive determination of every action.'" Id. at 327, 106 S.Ct. 2548.
Keenan v. Allan, 91 F.3d 1275, 1279 (9th Cir.1996). See also Carmen v. San Francisco Unified Sch. Dist., 237 F.3d 1026, 1031 (9th Cir.2001) [].
1. Defendant is Fully Cognizant of All Alleged Infringement and Accused Products
Defendant Eaton argues that the allegations in the complaint and FAC are insufficient. Eaton is applying an argument for dismissal to a motion for summary judgment. The Defendant admits that Plaintiffs set forth their claim for inducement of infringement and contributory infringement in an interrogatory response. (P. & A., p. 2, II.15-20). However, Eaton argues that summary judgment should be granted because Plaintiffs failed to adequately aver inducement and contributory infringement in the FAC, citing Gen-Probe, Inc. v. Amoco Corp., 926 F.Supp. 948, 962 (S.D.Cal.1996). In its...
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