United States District Court, E.D. Pennsylvania.
LARAMI CORPORATION, Plaintiff,
v.
Alan AMRON and Talk to Me Products, Inc., Defendants.
27 U.S.P.Q.2d 1280, 1993 WL 69581
No. CIV. A. 91-6145, March 11, 1993
MEMORANDUM
REED.
[1] This is a patent case concerning toy water guns manufactured by plaintiff Larami Corporation (“Larami”). Currently before me is Larami’s motion for partial summary judgment of noninfringement of United States Patent No. 4,239,129 [click here to view patent] (“the ‘129 patent”) (Document No. 23).1
[2] This Court has jurisdiction pursuant to 28 U.S.C. §§ 1331 & 1338. For the reasons discussed below, the motion will be granted.
I. BACKGROUND
[3] Larami manufactures a line of toy water guns called “SUPER SOAKERS.” [Click here to read a history of the SUPER SOAKER line of toy water guns.] This line includes five models: SUPER SOAKER 20, SUPER SOAKER 30, SUPER SOAKER 50, SUPER SOAKER 100, and SUPER SOAKER 200. All use a hand-operated air pump to pressurize water and a “pinch trigger” valve mechanism for controlling the ejection of the pressurized water. All feature detachable water reservoirs prominently situated outside and above the barrel of the gun. The United States Patent and Trademark Office has issued patents covering four of these models. Larami does not claim to have a patent which covers SUPER SOAKER 20.
[4] Defendants Alan Amron and Talk To Me Products, Inc. (hereinafter referred to collectively as “TTMP”) claim that the SUPER SOAKER guns infringe on the ‘129 patent which TTMP obtained by assignment from Gary Esposito (“Esposito”), the inventor.2 The ‘129 patent covers a water gun which, like the SUPER SOAKERS, operates by pressurizing water housed in a tank with an air pump. In the ‘129 patent, the pressure enables the water to travel out of the tank through a trigger-operated valve into an outlet tube and to squirt through a nozzle. Unlike the SUPER SOAKERS, the ‘129 patent also contains various electrical features to illuminate the water stream and create noises. Also, the water tank in the ‘129 patent is not detachable, but is contained within a housing in the body of the water gun.
[5] The “Background of the Invention” contained in the ‘129 patent reads as follows:
Children of all ages, especially boys, through the years have exhibited a fascination for water, lights and noise and the subject invention deals with these factors embodied in a toy simulating a pistol.
An appreciable number of U.S. patents have been issued which are directed to water pistols but none appear to disclose a unique assemble of components which can be utilized to simultaneously produce a jet or stream of water, means for illuminating the stream and a noise, or if so desired, one which can be operated without employing the noise and stream illuminating means. A reciprocal pump is employed to obtain sufficient pressure whereby the pistol can eject a stream an appreciable distance in the neighborhood of thirty feet and this stream can be illuminated to more or less simulate a lazer [sic] beam.
. . . .
[6] Larami brought this action seeking a declaration that the “SUPER SOAKER” does not infringe the ‘129 patent (Count I), that the ‘129 patent is invalid (Count II), and that the assignment of the ‘129 patent from Esposito is invalid (Count III). Larami’s amended complaint also includes claims under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and common law for damages arising from defendants’ alleged false accusations of patent and trademark infringement (Counts IV–VII). TTMP counterclaimed for infringement of the ‘129 patent.
[7] Larami has moved for partial summary judgment of noninfringement of the ‘129 patent (Count I) and for partial summary judgment on TTMP’s counterclaim for infringement of the ‘129 patent.
II. DISCUSSION
A. Summary Judgment Standard
[8] Summary judgment is as appropriate in a patent case as it is in any other. C.R. Bard, Inc. v. Advanced Cardiovascular Systems, Inc., 911 F.2d 670, 672 (Fed. Cir. 1990). The examination to be undertaken of a summary judgment motion in federal court is set forth in Fed.R.Civ.P. 56. Rule 56(c) states that:
[t]he 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.P. 56(c). A fact is material if it might affect the outcome of the suit under the governing substantive law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). “Factual disputes that are irrelevant or unnecessary will not be counted.” Id. (citing 10A C. Wright, A. Miller & M. Kane, Federal Practice & Procedure § 2725, at 93–95 (1983)). In addition, a dispute over a material fact must be “genuine,” i.e., the evidence must be such “that a reasonable jury could return a verdict in favor of the non-moving party.” Id.
When a motion for summary judgment is made and supported as provided in … [Rule 56], an adverse party may not rest upon the mere allegations or denials of the adverse party’s pleadings, but the adverse party’s response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If the adverse party does not so respond, summary judgment, if appropriate, shall be entered against the adverse party.
[9] Fed.R.Civ.P. 56(e). The evidence proffered does not have to be in a form which would be admissible at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986). “Rule 56(e) permits a proper summary judgment motion to be opposed by any of the kinds of evidentiary materials listed in Rule 56(c), except the mere pleadings themselves, and it is from this list that one would normally expect the nonmoving party to make the showing … [required by Rule 56(e) ].” Id.
[10] The evidence of the nonmoving party is to be considered as true, and justifiable inferences arising from the evidence are to be drawn in his or her favor. Anderson, 477 U.S. at 255. If the evidence of the nonmoving party is “merely colorable,” or is “not significantly probative,” summary judgment may be granted. Id. at 249–50. For example, a nonmoving party may not successfully oppose a summary judgment motion by simply replacing “conclusory allegations of the complaint or answer with conclusory allegations of an affidavit.” Lujan v. Nat’l Wildlife Federation, 110 S.Ct. 3177, 3188 (1990). Rather, the nonmoving party must offer specific facts contradicting the facts averred by the movant which indicate that there is a genuine issue for trial. Id. at 3188.
[11] In this case, Larami seeks a declaratory judgment that the SUPER SOAKER water guns do not infringe the ‘129 patent. At trial, the patent holder would have the burden of proving infringement by a preponderance of the evidence. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1389 (Fed. Cir.1992). Accordingly, on this motion for partial summary judgment, Larami need only point out the absence of evidence supporting a finding of infringement. Id. To resist this motion, TTMP must then come forward with specific evidence showing that there is a genuine issue of material fact for trial as to whether the ‘129 patent is infringed. Id.
B. Infringement and Claim Interpretation
[12] A patent owner’s right to exclude others from making, using or selling the patented invention is defined and limited by the language in that patent’s claims. Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir.1989). Thus, establishing infringement requires the interpretation of the “elements” or “limitations” of the claim and a comparison of the accused product with those elements as so interpreted. Key Mfg. Group, Inc. v. Microdot, Inc., 925 F.2d 1444, 1448 (Fed. Cir.1991). Because claim interpretation is a question of law, it is amenable to summary judgment. Johnston v. IVAC Corp., 885 F.2d 1574, 1579–80 (Fed. Cir.1989).
[13] The words in a claim should be given their “ordinary or accustomed” meaning. Senmed, Inc. v. Richard–Allan Medical Industries, Inc., 888 F.2d 815, 819 & n.8 (Fed. Cir.1989). An inventor’s interpretations of words in a claim that are proffered after the patent has issued for purposes of litigation are given no weight. Id.; Lear Siegler, Inc. v. Aeroquip Corp, 733 F.2d 881, 889 (Fed. Cir.1984) (“The litigation-induced pronouncements of [the inventor] … have no effect on what the words of [the patent] in fact do convey and have conveyed during its term to the public.”), quoted in Intellicall, 952 F.2d at 1388.
[14] A patent holder can seek to establish patent infringement in either of two ways: by demonstrating that every element of a claim (1) is literally infringed or (2) is infringed under the doctrine of equivalents. To put it a different way, because every element of a claim is essential and material to that claim, a patent owner must, to meet the burden of establishing infringement, “show the presence of every element or its substantial equivalent in the accused device.” Key Mfg. Group, Inc., 925 F.2d at 1447 (emphasis added). If even one element of a patent’s claim is missing from the accused product, then “[t]here can be no infringement as a matter of law … “ London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538–39 (Fed. Cir.1991).
[15] Larami contends, and TTMP does not dispute, that twenty-eight (28) of the thirty-five (35) claims in the ‘129 patent are directed to the electrical components that create the light and noise. Larami’s SUPER SOAKER water guns have no light or noise components. Larami also contends, again with no rebuttal from TTMP, that claim 28 relates to a “poppet valve” mechanism for controlling the flow of water that is entirely different from Larami’s “pinch trigger” mechanism. Thus, according to Larami, the six remaining claims (claims 1, 5, 10, 11, 12 and 16) are the only ones in dispute. Larami admits that these six claims address the one thing that the SUPER SOAKERS and the ‘129 patent have in common—the use of air pressure created by a hand pump to dispense liquid. Larami argues, however, that the SUPER SOAKERS and the ‘129 patent go about this task in such fundamentally different ways that no claim of patent infringement is sustainable as a matter of law.
[16] In its memorandum of law in opposition to Larami’s motion for partial summary judgment, TTMP points to evidence to support its assertion that only SUPER SOAKER 20 literally infringes claim 1 and that SUPER SOAKERS 20, 30, 50, 100 and 200 infringe claim 10 under the doctrine of equivalents. TTMP’s Memorandum of Law in Opposition to Larami’s Motion for Partial Summary Judgment, at 2 & 6–9 (“TTMP’s Memorandum of Law”). TTMP has neither produced nor referred to evidence contradicting facts averred by Larami on all other claims of the ‘129 patent. I conclude, therefore, that TTMP has not met its burden of coming forward with specific evidence showing that there is a genuine issue of material fact as to these claims. Accordingly, this memorandum will address only claims 1 and 10.
1. Literal Infringement of Claim 1
[17] TTMP claims that SUPER SOAKER 20 literally infringes claim 1 of the ‘129 patent. Claim 1 describes the water gun as:
[a] toy comprising an elongated housing [case] having a chamber therein for a liquid [tank], a pump including a piston having an exposed rod [piston rod] and extending rearwardly of said toy facilitating manual operation for building up an appreciable amount of pressure in said chamber for ejecting a stream of liquid therefrom an appreciable distance substantially forwardly of said toy, and means for controlling the ejection.
U.S. Patent No. 4,239,129 (bracketed words supplied; see Diagram A, the ‘129 patent, attached hereto).
Diagram A (cover page drawing)
[18] Claim 1 requires, among other things, that the toy gun have “an elongated housing having a chamber therein for a liquid.” The SUPER SOAKER 20 water gun, in contrast, has an external water reservoir (chamber) that is detachable from the gun housing, and not contained within the housing. TTMP argues that SUPER SOAKER 20 contains a “chamber therein for a liquid” as well as a detachable water reservoir. It is difficult to discern from TTMP’s memorandum of law exactly where it contends the “chamber therein” is located in SUPER SOAKER 20. Furthermore, after having examined SUPER SOAKER 20 (Exhibit L to Declaration of Robert S. Bramson, Document No. 24), I find that it is plain that there is no “chamber” for liquid contained within the housing of the water gun. The only element of SUPER SOAKER 20 which could be described as a “chamber” for liquid is the external water reservoir located atop the housing. Indeed, liquid is located within the housing only when the trigger causes the liquid to pass from the external water reservoir through the tubing in the housing and out of the nozzle at the front end of the barrel. SUPER SOAKER 20 itself shows that such a transitory avenue for the release of liquid is clearly not a “chamber therein for liquid.” Therefore, because the absence of even one element of a patent’s claim from the accused product means there can be no finding of literal infringement, London, 946 F.2d at 1538–39, I find that SUPER SOAKER 20 does not infringe claim 1 of the ‘129 patent as a matter of law.
[19] It is also important to note that TTMP expressly admitted in its answers to Larami’s requests for admissions that “[c]laim 1 [of the ‘129 patent] is not literally infringed by any of the ‘SUPER SOAKER’ water guns.” Larami’s Reply in Support of its Motion for Partial Summary Judgment, Exhibit 9, at 1. Even in the absence of this admission, however, Larami would be entitled to summary judgment of noninfringement with respect to claim 1 for the reasons discussed above.
[20] Accordingly, I conclude that the SUPER SOAKER 20 water gun does not literally infringe claim 1 of the ‘129 patent.3
2. Infringement by Equivalents of Claim 10
[21] TTMP claims that all five of the SUPER SOAKER water guns infringe claim 10 of the ‘129 patent. Claim 10 describes the arrangement of several components of the water gun as follows:
A toy simulating a pistol comprising wall structure forming an elongated barrel of appreciable cross-section dimensions [case], a tank in the barrel for a liquid [water tank] and a hollow handle, a cylinder disposed axially in said tank and provided with a check valve, a piston mounted in said cylinder for manual reciprocation for pumping air into said tank [air pump], conduit means [discharge tube] connected to said tank and having an outlet located at the front of said barrel [outlet nozzle], valve means interposed in said conduct means, and a trigger operable independently of said piston carried by said handle for operating said valve means [trigger-operated valve] for controlling the forced flow of liquid through said outlet.
U.S. Patent No. 4,239,129 (bracketed words supplied; see Diagram A, the ‘129 patent, attached hereto).
[22] To show infringement under the doctrine of equivalents, the patent owner bears the burden of proving that the accused product has the “substantial equivalent” of every limitation or element of a patent claim. Intellicall, 952 F.2d at 1389. Put another way, the patent owner must show that the accused product “performs substantially the same overall function or work, in substantially the same way, to obtain substantially the same overall result as the claimed invention.” Wilson Sporting Goods Co. v. David Geoffrey & Assoc., 904 F.2d 677, 683 (Fed. Cir.1990) (quoting Pennwalt Corp. v. Durand–Wayland, Inc., 833 F.2d 931, 934 (Fed. Cir.1987)).
[23] The doctrine of equivalents is used to hinder “the ‘unscrupulous copyist’ who could otherwise imitate a patented invention as long as [s/he] was careful not to copy every inconsequential detail of the claimed inventions, or to make some ‘unimportant and insubstantial’ change to the claimed invention.” Lear Siegler, Inc. v. Sealy Mattress Company, 873 F.2d 1422, 1425 (Fed. Cir.1989). The doctrine is reserved for the exceptional case. As the U.S. Court of Appeals for the Federal Circuit, recently stated:
[I]f the public comes to believe (or fear) that the language of patent claims can never be relied on, and that the doctrine of equivalents is simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims, then claims will cease to serve their intended purpose. Competitors will never know whether their actions infringe a granted patent.
[24] London, 946 F.2d at 1538. Thus, failure to produce evidence on any one of a claim’s elements can result in a grant of summary judgment against the patent owner on the infringement claim. Intellicall, 952 F.2d at 1389.
. . . .
[25] [E]ven if claim 10 were to require that the outlet nozzle be placed on the same axis as the water tank and air pump, at least one other element of the ‘129 patent is absent from the SUPER SOAKER water guns. Claim 10 requires, among other things, “a tank in the barrel for a liquid.” As discussed above with regard to claim 1, the SUPER SOAKER water guns have external water reservoirs that are detachable from the gun housing, and not contained within the housing or barrel. No SUPER SOAKER water gun has a “tank in the barrel for a liquid” as described in claim 10 of the ‘129 patent. To establish that a water tank outside of the housing or barrel is the substantial equivalent of a water tank inside the housing or barrel, TTMP must muster evidence which would create a genuine issue of material fact as to whether the outside tank would have a substantially similar function and use substantially similar means to yield a substantially similar result as the inside tank. Wilson Sporting Goods, 904 F.2d at 683.
[26] TTMP claims that the “movement of the water reservoir upwardly simply serves as a cosmetic alteration for the aesthetic looks of the water gun, and does not alter the novel operational characteristics of the water gun [covered by the ‘129 patent].” TTMP’s Memorandum of Law, at 9. The evidence, however, is to the contrary. The SUPER SOAKER design improved on the ‘129 patent and other prior art by locating the tank outside the housing. First, the external and detachable tank makes manufacturing the device simpler because it is not necessary to make the entire housing pressure tight. See Larami Corp. v. Lanard Toys Ltd., 22 U.S.P.Q.2d. 1440, 1442, 1992 U.S. Dist. LEXIS 769, at *4 (E.D.Pa.1992). Second, this design makes it easier for the consumer to fill the tank because it is detachable. Id. Third, the size and volume of the external water reservoirs are not limited by the size of the housing. Fourth, the external tanks are replaceable if they should become damaged without replacing the entire toy. Finally, users of the SUPER SOAKERS can carry additional, filled tanks on a belt or backpack and replace an empty tank without going back to a source of water. Thus, the external tanks at least function in a very different manner from the ‘129 patent.
[27] For these reasons, I conclude that there remains no genuine issue of material fact as to whether SUPER SOAKERS 20, 30, 50, 100 and 200 infringe claim 10 of the ‘129 patent under the doctrine of equivalents.
III. CONCLUSION
[28] In patent cases, summary judgment is appropriate where the accused product does not literally infringe the patent and where the patent owner does not muster evidence that is “sufficient to satisfy the legal standard for infringement under the doctrine of equivalents.” London, 946 F.2d at 1538. Thus, and for the foregoing reasons, Larami’s motion for partial summary judgment of noninfringement of the ‘129 patent will be granted.
[29] An appropriate Order follows.
ORDER
[30] AND NOW, this 11th day of March, 1993, upon consideration of the motion of plaintiff Larami Corporation for partial summary judgment of noninfringement of United States Patent No. 4,239,129 (Document No. 23), the responses of the parties thereto, and for the reasons set forth in the attached memorandum, having determined based upon the pleadings, depositions, requests for admissions, and affidavits of record that there remains no genuine issue of material fact and that Larami Corporation is entitled to judgment as a matter of law on the issue of noninfringement of United States Patent No. 4,239,129, it is hereby ORDERED that the motion is GRANTED.
[31] JUDGMENT IS HEREBY ENTERED in favor of plaintiff Larami Corporation and against defendants Alan Amron and Talk To Me Products, Inc. on plaintiff’s claim of noninfringement of United States Patent No. 4,239,129 (Count I) and on defendants’ counterclaim of infringement of United States Patent No. 4,239, 129.
[32] It is FURTHER ORDERED that, because resolution of Count I of plaintiff’s complaint renders moot Counts II and III of plaintiff’s complaint, Count II and III are hereby DISMISSED without prejudice.
[33] This is not a final adjudication.
FN1. Larami also seeks partial summary judgment on defendants’ counterclaim for infringement of the ‘129 patent.
FN 2. In a letter to the Court dated January 16, 1993, Esposito claims that ownership of the ‘129 patent has reverted back to him from TTMP. However, TTMP filed a complaint against Esposito in New York state court requesting a declaration that TTMP is the rightful owner of the ‘129 patent. Esposito has removed that action to the United States District Court for the Eastern District of New York. This memorandum does not address the question of ownership of the ‘129 patent.
FN 3. As stated above, TTMP does not argue that SUPER SOAKER 20 infringes claim 1 of the ‘129 patent under the doctrine of equivalents. Furthermore, TTMP has produced no evidence which would support a finding that there remains a genuine issue of material fact as to whether the SUPER SOAKER 20 infringes claim 1 under the doctrine of equivalents.