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Wonderland Nurserygoods Co., Ltd. v. Thorley Industries, LLC

United States District Court, W.D. Pennsylvania

December 19, 2013

WONDERLAND NURSERYGOODS CO., LTD., Plaintiff,
v.
THORLEY INDUSTRIES, LLC, d/b/a 4MOMS, Defendant

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For WONDERLAND NURSERYGOODS CO., LTD., Plaintiff: Avrum Levicoff, LEAD ATTORNEY, Edward I. Levicoff, Levicoff, Silko & Deemer, Pittsburgh, PA; Daniel A. Tallitsch, LEAD ATTORNEY, PRO HAC VICE, Baker & McKenzie, Chicago, IL; David I. Roche, LEAD ATTORNEY, PRO HAC VICE, Baker & McKenzie, LLP, Chicago, IL.

For THORLEY INDUSTRIES, LLC, doing business as 4MOMS, Defendant: Anthony W. Brooks, Bryan P. Clark, Kent E. Baldauf, Jr., LEAD ATTORNEYS, Ryan J. Miller, The Webb Law Firm, Pittsburgh, PA.

For THORLEY INDUSTRIES, LLC, Counter Claimant: Anthony W. Brooks, Bryan P. Clark, Kent E. Baldauf, Jr., LEAD ATTORNEYS, The Webb Law Firm, Pittsburgh, PA.

For WONDERLAND NURSERYGOODS CO., LTD., Counter Defendant: Avrum Levicoff, LEAD ATTORNEY, Edward I. Levicoff, Levicoff, Silko & Deemer, Pittsburgh, PA; Daniel A. Tallitsch, LEAD ATTORNEY, Baker & McKenzie, Chicago, IL; David I. Roche, LEAD ATTORNEY, Baker & McKenzie, LLP, Chicago, IL.

OPINION

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Nora Barry Fischer, United States District Judge.

MEMORANDUM OPINION

I. INTRODUCTION

Plaintiff Wonderland Nursery Goods Co. (" Wonderland" ) brings this action against Defendant Thorley Industries, LLC d/b/a 4MOMS (" Thorley" ) for the alleged infringement of U.S. Patent No. 8,047,609 (the " '609 Patent" ) (filed Dec. 3, 2010), (Docket No. 1-2 at 2). The '609 Patent is entitled " Infant Rocking Chair and Driving Device for Driving the Same." Id., (Docket No. 1-2 at 2). Presently pending before the Court are three motions for summary judgment, consisting of Thorley's Motion for Summary Judgment of Invalidity of Claims 12-14 and 19-20, (Docket No. 108), and the parties' Cross Motions for Summary Judgment of Non-Infringement, (Docket No. 104), and Infringement, (Docket No. 95), of the aforementioned claims. Upon consideration of the parties' positions, and for the following reasons, these Motions are GRANTED, in part and DENIED, in part; they are GRANTED as to non-infringement of Claims 12-14 only, in favor of Thorley, and DENIED in all other respects.

II. BACKGROUND

Wonderland brings this action against Thorley based on the alleged infringement of Claims 12-14 and 19-20 of the '609 Patent by the accused mamaRoo variable motion infant rocking chair. (Docket No. 1 at 1-2). Wonderland, the assignee of the '609 Patent, is a Taiwanese company that manufactures products for infants and young children, such as baby strollers, play-yards, car safety seats, and high-chairs. See Hampton Rep. at 6, (Docket No. 114-1 at 10). Thorley is a Pennsylvania corporation based in Pittsburgh that manufactures and sells the mamaRoo and other infant products. (Docket No. 19 at 2-3). The Court provides a brief summary of the '609 Patent, the relevant prior art references, and the accused mamaRoo device.

A. The '609 Patent

The '609 Patent is directed at " infant rocking chairs," with " a driving device for driving a seat body of an infant rocking chair to move back and forth as well as up and down." See '609 Patent col. 1 ll.15-19, (Docket No. 1-2 at 19). The patent discloses that " conventional infant rocking chairs" produce only " back-and-forth" or " up-and-down" motion, whereas a " curved

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swinging motion in which a back-and-forth motion is combined with an up-and-down motion" is preferable to " impart greater comfort to the infant." Id. col. 1 ll.21-27, (Docket No. 1-2 at 19).

The '609 Patent has three independent claims: 1, 12, and 19. Claims 1 and 19 and their dependent claims are directed at a " driving device for an infant rocking chair." Id. col. 6 l.48, col. 8 l.39, (Docket No. 1-2 at 21-22). Claim 12 and its dependent claims reach " an infant rocking chair." Id. col. 7 l.59, (Docket No. 1-2 at 22). The specification describes three preferred embodiments in a Summary of the Invention, id. col. 1 l.32 to col. 2 l.48, (Docket No. 1-2 at 19), and a Detailed Description, id. col. 3 l.15 to col. 6. l.45, (Docket No. 1-2 at 20-21).

Independent Claim 12 is reproduced below:

An infant rocking chair comprising:

a seat body;

a bottom seat;
a base disposed between said seat body and said bottom seat and movable on said bottom seat;
a supporting element connected to said base for supporting said seat body;
a first motion mechanism disposed between said base and said bottom seat for driving said base to move back and forth on said bottom seat; and
a second motion mechanism disposed between said supporting element and said bottom seat for driving said supporting element to move up and down relative to said base.

See '609 Patent col. 7 l.59 to col. 8 l.11, (Docket No. 1-2 at 22) (emphasis added). In its Claim Construction Order, (Docket No. 59), the Court defined the term " infant rocking chair" to denote " a seat or chair-like device that is designed to hold an infant and which moves or sways back and forth." The Court also construed the claim term " bottom seat" to be " a structure at the bottom of an object upon which the object sits or rests." Id. As for the claim term " motion mechanism," the parties stipulated to the definition of " a combination of machine parts." See Revised (and corrected) Joint Disputed Claim Terms Chart, (Docket No. 46). The parties also agreed that no claim construction was necessary for the claim terms: " for driving" and " between." See id.

Claim 14, which is dependent on Claim 12, further includes, among other elements, a " second pair of guiding elements spaced apart from each other." See '609 Patent col. 8 ll.18-24, (Docket No. 1-2 at 22). During claim construction, the Court construed " guiding elements" to denote " a set of tracks which direct movement." Claim Construction Order, (Docket No. 59).

Independent Claim 19 is also reproduced below:

A driving device for an infant rocking chair, the infant rocking chair including a seat body and a bottom seat, said driving device comprising:
a base adapted to be disposed between the seat body and the bottom seat;
a supporting element connected to said base and adapted to support the seat body;
a first motion mechanism including a horizontal first guide path unit adapted to be disposed at the bottom seat, and a first movable member disposed on said base and movable along said first guide path unit; and
a second motion mechanism adapted to be disposed between the seat body and the bottom seat for driving said supporting element to move up and

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down relative to said first movable member.

See '609 Patent col. 8 ll.39-59, (Docket No. 1-2 at 22) (emphasis added). As with the claim term " for driving," the parties did not seek claim construction of the term " driving device." See Revised (and corrected) Joint Disputed Claim Terms Chart, (Docket No. 46).

B. Prior Art References

Thorley first asserts that U.S. Patent No. 5,022,708 (" Nordella" ) (filed Nov. 16, 1989) anticipates the '609 Patent.[1] See Nordella, (Docket No. 111-2). Nordella is a " Mechanical Seat Apparatus for Simulating Motion" that includes a " novel spherical bearing located below each seat for providing realistic simulation of motion in the yaw, pitch and roll directions." Id. at 2, (Docket No. 111-2 at 2). The supporting structure of Nordella " enables movement of each seat in the backward and forward, side to side, and upward and downward directions." Id. Nordella provides " [c]ommon hydraulics" to " simultaneously impart motion to a plurality of seats." Id.

Thorley also believes that Nordella, in combination with U.S. Patent No. 5,711,045 (" Caster" ) (filed Feb. 28, 1996), make the '609 Patent obvious to a person of ordinary skill in the art. See Caster, (Docket No. 111-7). Caster is an " apparatus for inducing relaxation or sleep in infants including a base, [and] a platform mounted on the base such that the platform is movable with at least three degrees of freedom of motion relative to the base." Id. at 2, (Docket No. 111-7 at 2). Caster includes " a child retainer provided on the platform, a device for moving the platform in the at least three degrees of freedom of motion and a driving source for driving the device for moving the platform in the at least three degrees of freedom of motion." Id.

C. The Accused mamaRoo Device

The accused mamaRoo [2] is an infant rocking chair " designed to hold an infant" that " moves and sways back and forth." (Docket No. 123 at 2-3). It contains a seat body, a bottom seat, and a base, with " a driving device comprising a base adapted to be disposed between the seat body and the bottom seat." Id. at 3, 13. The bottom seat is " at the bottom of the mamaRoo upon which other objects sit or rest." Id. at 3. The base is " disposed between said seat body and said bottom seat and movable on said bottom seat." Id. at 4. Connected to the base is a " supporting element" identified as a " double scissor mechanism," which supports the seat. Id.

The mamaRoo has a " first motion mechanism," including " wheels and rails," which is " disposed between the base and the bottom seat," and which is " part of what cause[s] the base to move back and forth on the bottom seat." Id. at 4-5. The mamaRoo further contains " gearing and linkage," which are " for driving the base to move back and forth on the bottom seat." (Docket No. 142 at 2-3). The parties do not agree, however, on whether the first motion mechanism requires the gear and linkage, (Docket No. 130 at 10-11), and on whether the gear and linkage are " disposed between the base and the bottom seat," (Docket No. 142 at 3).

The mamaRoo also has a " second motion mechanism," which is identified as a " double

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scissor mechanism and bearing surfaces upon which the wheels ride," and which is " disposed between the supporting element and the bottom seat." (Docket No. 123 at 6). As with the first motion mechanism, however, the parties disagree on the function of the double scissor mechanism. (Docket No. 142 at 4-5). They contest whether the double scissor mechanism is " for driving" the platform containing the seat body to move up and down and whether a " coil spring" constitutes part of the second motion mechanism. Id. at 4-7.

Additionally, the parties dispute whether the mamaRoo has a " second pair of guiding elements." Id. at 7. Although the mamaRoo has " indication lines" that " are spaced apart from each other," (Docket No. 123 at 11), these lines " do not serve any functional purpose with respect to guiding or directing movement of the wheel," (Docket No. 142 at 8). Thus, the indication lines do not " constitute the second pair of guiding elements." Id. However, the parties continue to contest whether the " top surface of the base" constitutes a second pair of guiding elements that " direct[s] movement of the wheels" or " provide[s] any horizontal (side to side) restraint on the movement of the wheels." Id. at 8-9.

Having briefly summarized the '609 Patent, the Nordella and Caster prior art references, and the accused mamaRoo device, the Court now turns to the procedural history of this case.

D. Procedural History

Wonderland filed its complaint against Thorley for infringement of the '609 Patent by the accused mamaRoo device on February 12, 2012. (Docket No. 1). On January 11, 2013, the Court issued a Memorandum Opinion and Claim Construction Order, (Docket Nos. 58-59), following the receipt of the Revised Claim Construction Chart, the transcript of the Markman Hearing, and the Pre-Hearing and Post-Hearing Briefs. (Docket Nos. 39-43, 45-47, 51, 53-54). On March 13, 2013, the parties entered into a stipulation of non-infringement of Claims 1-3 of the '609 Patent, (Docket No. 66), based on the Court's Claim Construction, for which the Court granted entry of Partial and Non-Final Judgment of Non-Infringement, (Docket No. 67).

Meanwhile, on March 14, 2013, Wonderland filed an early Motion for Summary Judgment of Infringement of Claims 12-14 and 19-20, (Docket Nos. 68-72, 76-79, 81-83), which the Court denied without prejudice to be re-filed on July 1, 2013, (Docket No. 84). On April 12, 2013, Wonderland also filed a Motion to Strike Portions of the Expert Report of William W. Clark, (Docket Nos. 73-75, 80, 88, 91), which the Court denied, (Docket No. 93).

On July 1, 2013, the parties filed four (4) Cross-Motions for Summary Judgment on the issues of invalidity based on anticipation and obviousness, invalidity under 35 U.S.C. § 112, infringement, and non-infringement, as well as a Motion to Strike the Expert Report of Scott D. Hampton. (Docket Nos. 95, 100, 104, 108, 112). The Court denied Thorley's Motion to Strike the Expert Report of Mr. Hampton on December 5, 2013, (Docket Nos. 150-51), and denied Thorley's Motion for Summary Judgment of Invalidity under § 112 on December 16, 2013, (Docket Nos. 155-56). The Court now turns to the parties' remaining three motions.

Thorley filed its Motion for Summary Judgment of Invalidity on July 1, 2013, (Docket Nos. 108-11), to which Wonderland filed an Opposition, (Docket Nos. 126-28), and Thorley filed a Reply, (Docket Nos. 138-39). The parties also filed their

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Cross-Motions for Summary Judgment of Non-Infringement, (Docket Nos. 104-07), and Infringement, (Docket Nos. 95-98), on July 1, 2013. They filed their Opposition papers on July 29, 2013, (Docket Nos. 122-25, 129-31), and their Reply papers on August 14, 2013, (Docket Nos. 135, 140-42), and on August 26, 2013, the Court heard oral argument on said Motions,[3](Docket Nos. 143-45).

III. LEGAL STANDARD

" The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). Under Rule 56, a district court must enter summary judgment against a party " who 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 Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). " Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Summary judgment may be granted when no " reasonable jury could return a verdict for the nonmoving party." Id. The Court must " view the evidence in a light most favorable to the party opposing the motion with doubts resolved in favor of the opponent." Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998). In addition, an issued patent " is presumed valid, 35 U.S.C. § 282, and this presumption can be overcome only by clear and convincing evidence to the contrary." Innovention Toys, LLC v. MGA Entm't, Inc., 637 F.3d 1314, 1320 (Fed. Cir. 2011).

When a non-moving party would have the burden of proof at trial, the moving party has no burden to negate the opponent's claim. Celotex, 477 U.S. at 323. The moving party need not produce any evidence showing the absence of a genuine issue of material fact. Id. at 325. " 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. After the moving party has satisfied this low burden, the adverse party must provide facts showing that there is a genuine issue for trial to avoid summary judgment. Id. at 324.

IV. DISCUSSION

The Court addresses anticipation in view of Nordella, obviousness in light of the combination of Nordella and Caster, and infringement by the accused mamaRoo device, in turn.

A. Anticipation

Thorley moves for summary judgment of invalidity of the '609 Patent based on anticipation by way of the Nordella reference. (Docket No. 109 at 5). Under 35 U.S.C. § 102, " [a] person shall be entitled to a patent unless--(1) the claimed invention was patented ... before the effective filing date of the claimed invention." 35 U.S.C. § 102(a). " Anticipation requires clear and convincing proof that a single prior art reference 'not only disclose[s] all of the elements of the claim within the four corners of the document,

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but ... also disclose[s] those elements arranged as in the claim.'" Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1351 (Fed. Cir. 2013) (quoting Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)).

" In order to anticipate a claimed invention, a prior art reference must enable one of ordinary skill in the art to make the invention without undue experimentation." Impax Labs., Inc. v. Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008). " [W]hen an accused infringer asserts that a prior art patent anticipates specific patent claims, the infringer enjoys a presumption that the anticipating disclosure also enables the claimed invention." Id. at 1316. " However, the patentee may overcome that presumption with persuasive evidence showing that the prior art patent does not enable the claimed invention." Id. " Whether a prior art reference is enabling presents a question of law based upon underlying factual findings. Id. at 1315.

In the instant case, Thorley argues that Nordella " discloses an apparatus for imparting motion in the backward and forward, side to side, and upward and downward directions to a seat." (Docket No. 109 at 23). Thorley asserts that Nordella anticipates Claim 12 of the '609 Patent because it contains each of the following seven limitations, ( see Figures 1 and 2, infra ):

(1) An infant rocking chair;
(2) A seat body;
(3) A bottom seat;
(4) A base disposed between said seat body and said bottom seat and movable ...

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