The opinion of the court was delivered by: Judge Caputo
Presently before the Court is the Motion for Partial Summary Judgment of Plaintiff-Counterclaim Defendant BabyAge.com, Inc. ("BabyAge"). (Doc. 84.) BabyAge moves for summary judgment on Defendant-Counterclaim Plaintiff Leachco's ("Leachco") two counterclaims (Doc. 52), alleging patent and trademark infringement. For the reasons stated below, the Court will grant in part and deny in part BabyAge's motion. The Court will grant the motion as to non-infringement of Leachco's patent and deny the motion as to Leachco's claim for trademark infringement in violation of the Lanham Act. This Court has jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338, and 15 U.S.C. § 1121.
On August 8, 2007, BabyAge brought suit against Leachco. In its answer, Leachco asserted two counterclaims against BabyAge, alleging patent infringement and trademark infringement. (Am. Countercls. ¶¶ 1-26, Doc. 52).
BabyAge is a retailer of baby and maternity-related products, which it sells on its website, BabyAge.com ("the Website"). (BabyAge Rule 56.1 Statement ¶ 6, Doc. 85.) Among the products it sells are items manufactured for BabyAge and sold under that trademark. (Kiefer Decl. ¶ 2, Doc. 85.) BabyAge also offers products from numerous other manufacturers under different trademarks, including items manufactured by Leachco. (Id. ¶ 3.) Consumers can shop for products on the Website by product category or by brand. (Id.)
Leachco is a manufacturer of baby and maternity-related merchandise, which it distributes to retailers worldwide under its "Leachco" trademark. (Leach Decl. ¶ 2, Doc. 91, Ex. 1.) One of its products is a contoured body pillow for pregnant women called the Back'n'Belly pillow. This product is covered by the claims of U.S. Patent No. 6,760,934 ("the '934 Patent") for a "Symmetrically Contoured Support Pillow" ('934 Patent, Column 1, Doc. 91, Ex. 2) of which Leachco is the exclusive licensee (Leach Decl. ¶¶ 3, 4). BabyAge ordered the Back'n'Belly pillow from Leachco and offered it for resale on its Website between the years 2003 and 2007. (Id. ¶ 5.) In January 2007, Leachco Vice President Jamie Leach learned that BabyAge also offers its own make of pregnancy pillow on the Website, known as the Cozy Comfort pillow, which competes with the Back'n'Belly pillow. (Id. ¶ 6.) Leachco asserts that the Cozy Comfort pillow infringes the '934 Patent.*fn1
In its second counterclaim, Leachco alleges that BabyAge used the Leachco trademark on its Website in a manner that constitutes trademark infringement in violation of Section 43(a) of the Lanham Act, codified at 15 U.S.C. § 1125(a). The Website includes "featured brand" webpages separately dedicated to the products each listed manufacturers. (Leach Decl. ¶ 14.) Leachco is one of the "featured brand" manufacturers on the Website and its webpage is found at http://www.babyage.com/brands/leachco.htm. (Id.) As the Leachco "featured brand" webpage existed at some point in 2007,*fn2 it displayed the "Leachco" trademark and included a section of the page entitled "Pregnancy Pillows." (Doc. 91, Ex. 11.) Under the "Pregnancy Pillow" heading was the following text:
Designed to ease the sleep discomfort associated with pregnancy. A maternity pillow helps to offer a relaxing night's rest. One of the great features on all pregnancy pillows is that they are comfortable. A mother needs her comfort and a pregnancy pillow will provide that. Most of the maternity pillows keep comfort as a top priority, but also strive to keep support at the forefront as well. A great pregnancy pillow will be able to creat [sic] support by aligning the hips, elevating the ankles and supporting the belly. One maternity pillow which can do this is the Today's Mom Cozy Comfort. It helps keep all of the major pain areas aligned, separating it from the other, older versions of maternity pillows. Prengnacy [sic] pillows come in a variety of shapes and sizes. There are different types of padding and colors available for pregnancy pillows. It is important to have breathable material in a maternity pillow. Maternity pillows should also offer up washable fabrics. A great maternity pillow is the Serenity Star from Moonlight Slumber. It is a full length pregnancy pillow which helps to regulate the body temperature with its great fabric. We offer an enormous variety of pregnancy pillows. Every mother will enjoy such a wide selection.
(Id.) The underlined text, "Today's Mom Cozy Comfort" and "Serenity Star," denoted clickable hyperlinks that, when selected, took the viewer to webpages containing nonLeachco products, including BabyAge's Cozy Comfort pillow, a lower-priced competitor of Leachco's Back'n'Belly pillow. (Leach Decl. ¶ 18; Doc. 91, Exs. 11, 12, 13.) Leachco argues that this webpage content constitutes an unlawful "bait and switch" whereby prospective customers are "baited" by Leachco's brand into visiting the Leachco "featured brand" webpage on the BabyAge Website, baited into pursuing a Leachco pregnancy pillow, and then "switched" to non-Leachco pregnancy pillows by the above-mentioned hyperlinks provided on the webpage. (Br. in Opp'n to Mot. for Partial Summ. J. 7, Doc. 91.)
After BabyAge filed its original complaint in this action on August 30, 2007 (Doc. 1), Leachco filed its Answer, asserting the above two counterclaims, on November 2, 2007 (Doc. 5). With leave of the Court, BabyAge filed an Amended Complaint on March 17, 2008. (Doc. 42.) In response, Leachco filed an Answer with Amended Counterclaims (Doc. 52.) against BabyAge on April 14, 2008, again asserting patent and trademark infringement counterclaims.
On September 18, 2008, this Court issued a Memorandum and Order on the claims construction of the '934 Patent, construing several claim terms disputed by the parties. (Doc. 80.) BabyAge then filed the present Motion for Partial Summary Judgment on October 7, 2008, moving for summary judgment on Leachco's two counterclaims. (Doc. 84.) It argues that the patent infringement claim was effectively resolved in its favor by the Court's construction of the '934 Patent claims and that it is also entitled to summary judgment on Leachco's trademark infringement claim. (Mem. in Supp. of Mot. for Partial Summ. J. 2, Doc. 86.) Leachco filed a brief in opposition on October 22, 2008. (Doc. 91.) BabyAge filed a reply on November 3, 2008. (Doc. 95.) This motion is fully briefed and ripe for disposition.
Summary judgment is appropriate 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 proof of its existence or nonexistence might affect the outcome of the suit under the applicable substantive law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
Where there is no material fact in dispute, the moving party need only establish that it is entitled to judgment as a matter of law. Where, however, there is a disputed issue of material fact, summary judgment is appropriate only if the factual dispute is not a genuine one. Id. An issue of material fact is genuine if "a reasonable jury could return a verdict for the nonmoving party." Id.
Where there is a material fact in dispute, the moving party has the initial burden of proving that: (1) there is no genuine issue of material fact; and (2) the moving party is entitled to judgment as a matter of law. See CHARLES ALAN WRIGHT & ARTHURR. MILLER, FEDERAL PRACTICE AND PROCEDURE: CIVIL 2D § 2727 (2d ed. 1983). The moving party may present its own evidence or, where the nonmoving party has the burden of proof, simply point out to the Court that "the nonmoving party has failed to make a sufficient showing of an essential element of her case." Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
All doubts as to the existence of a genuine issue of material fact must be resolved against the moving party, and the entire record must be examined in the light most favorable to the nonmoving party. White v. Westinghouse Elec. Co., 862 F.2d 56, 59 (3d Cir. 1988). Once the moving party has satisfied its initial burden, the burden shifts to the nonmoving party to either present affirmative evidence supporting its version of the material facts or to refute the moving party's contention that the facts entitle it to judgment as a matter of law. Anderson, 477 U.S. at 256-57.
The Court need not accept mere conclusory allegations, whether they are made in the complaint or a sworn statement. Lujan v. Nat'l Wildlife Fed'n, 497 U.S. 871, 888 (1990). In deciding a motion for summary judgment, "the judge's function is not himself to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." Anderson, 477 U.S. at 249.
I. Patent Infringement Claim
BabyAge argues it is entitled to summary judgment on Leachco's claim of patent infringement because, as a result of the Court's construction of the '934 Patent, there remains no genuine issue of material fact and it is entitled to a determination of non-infringement. "A determination of infringement requires a two-step analysis. First, the court construes the asserted claims in order to determine their proper meaning and scope." Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., 308 F.3d 1167, 1176-77 (Fed. Cir. 2002) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996)). "After the court construes the claims, these claims are compared to the accused device."Id. (citing Bell Atl. Network Servs. v. Commc'ns Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001)). Claim construction is a question of law for the court, whereas the determination of whether the accused product infringes is a question of fact. Id. Whether the product infringes the construed claims literally, or under the doctrine of equivalents, is a question of fact. Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1332 (Fed. Cir. 1998). However, the construction of the claims may resolve some or all of the infringement issues. Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1351 (Fed. Cir. 2001) (citing Vivide Techs., Inc. v. Am. Science & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
In order to establish infringement, "every limitation set forth in the patent claim must be found in an accused product or process exactly or by a substantial equivalent." Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991) (citing Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1259 (Fed. Cir. 1989)).
This Court completed the first step of the analysis in its Memorandum and Order of September 18, 2008. BabyAge.com, Inc. v. Leachco, Inc., No. 07-cv-1600, slip. op. (M.D. Pa. Sept. 18, 2008) (Caputo, J.) In that opinion, the Court construed three disputed claim terms of the '934 Patent, including (1) "semi-circular crown;" (2) "a pair of spaced symmetrical legs extending downwardly and outwardly divergently away from the crown;" and (3) "each leg having a convex bulge between the two legs, the bulges extending towards each other ...." Id. at 2. Only the first term, "semi-circular crown," is at issue in this motion. The Court rejected Leachco's argument that "semi-circular crown" means a section of the pillow having a "semi-circular base against which a user's head can rest," construing it instead to include the entire top or closed end of the pillow. Id. at 7,8. The Court held that "[t]he semi-circular crown means the top of the pillow is shaped like a semi-circle." Id. at 8.
Moving to the second step of the infringement determination, the Court will consider whether summary judgment is appropriate on either a theory of literal infringement or under the doctrine of equivalents.
For a finding of literal infringement, each limitation of the claim must be present in the accused device. Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1330 (Fed. Cir. 2001). BabyAge argues that, given the Court's construction of the term "semi-circular crown," there is no dispute the Cozy Comfort pillow does not literally infringe the '934 Patent. The top or closed end of the Cozy Comfort pillow is not shaped like a semi-circle. (Doc. 91, Ex. 4.) Rather, it has a semi-circular base and squared corners at the top of the crown. (Id.) Because a limitation of claim 1 of the patent requires that the crown be shaped like a semi-circle, there can be no literal infringement. Leachco concedes that under the Court's construction of "semi-circular crown," this limitation is not literally satisfied by the accused product.
Because there is no dispute that each limitation of the asserted claim is not present in the Cozy Comfort pillow, there can be no finding of literal infringement as a matter of law.
B. Doctrine of Equivalents
Leachco argues that, while there is no literal infringement, a finding of infringement is appropriate under the doctrine of equivalents because the crown of the accused product is the equivalent of the semi-circular crown limitation and the accused product includes every other element of claims 1,2, and 3 of the '934 Patent.
"A device that does not literally infringe a claim may nonetheless infringe under the doctrine of equivalents if every element in the claim is literally or equivalently present in the accused device." Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1423 (Fed. Cir. 1997). A finding of equivalency is appropriate where:
... only 'insubstantial differences' distinguish the missing claim element from the corresponding aspects of the accused device.... Whether a component in the accused subject matter performs substantially the same function as the claimed limitation in substantially the same way to ...