1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 SIMPSON STRONG-TIE COMPANY, Case No. 3:18-cv-01188-WHO INC, 8 Plaintiff, ORDER ON CROSS-MOTIONS FOR 9 PARTIAL SUMMARY JUDGMENT v. AND MOTION TO STRIKE 10 OZ-POST INTERNATIONAL, LLC, Re: Dkt. Nos. 102, 104, 105, 106, 123, 124 11 Defendant.
13 This case involves patents and products designed to serve as cost-effective alternatives to 14 antique bolted hardware. Before me are cross-motions for partial summary judgment by 15 declaratory judgment plaintiff Simpson Strong-Tie Company, Inc. (“Simpson”) and patent-owner 16 and defendant Oz-Post International LLC dba OZCO Building Products (“OZCO”), along with 17 OZCO’s motion to strike portions of an expert report. For the reasons set forth below, I will grant 18 partial summary judgment in favor of Simpson and deny OZCO’s motion to strike. 19 BACKGROUND 20 The United States Patent and Trademark Office issued United States Design Patent 21 Number D798,701 (“the D’701 Patent” or “the design patent”) on October 3, 2017 and United 22 States Patent Number 9,957,998 (“the ’998 Patent” or “the utility patent”) on May 1, 2018. D’701 23 Patent, Declaration of J. Michael Thomas (“Thomas Decl.”)1 Ex. 2 [Dkt. No. 105-2]; ’998 Patent, 24 1 Simpson noted in its opposition that OZCO had failed to file a declaration to authenticate the 25 exhibits filed in support of its motion for summary judgment. Simpson Oppo. 2 n.2. On October 14, 2019, OZCO filed a motion for leave to file the Thomas declaration in support of its motion 26 for summary judgment. Dkt. No. 123. Simpson opposed, arguing that there was no good cause for OZCO’s failure and that I should refuse to consider the exhibits. I am interested in the merits 27 of these motions. OZCO’s motion for leave to file the tardy declaration is GRANTED; I will 1 Thomas Decl. Ex. 1 [Dkt. No. 105-1]. The ’998 Patent aims to simulate antique architectural 2 hardware (like rivet, nail, and pin or nut, bolt, and washer connectors) with mounting hardware 3 that is both easier to install and more cost effective. See ’998 Patent 1:30–31, 53–56. 4 OZCO asserts that Simpson’s Hex Head washer and Structural Wood Screw (“the Accused 5 Products”) infringe on its patents when they are used together. On March 26, 2019, I construed 6 the ’998 Patent, resolving the parties’ disputes and adopting certain agreed constructions. See 7 Claim Construction Order [Dkt. No. 86]. 8 On September 3, 2019, both parties moved for partial summary judgment. Simpson 9 Motion for Partial Summary Judgment (“Simpson MSJ”) [Dkt. No. 102]; OZCO Motion for 10 Partial Summary Judgment (“OZCO MSJ”) [Dkt. No. 105, 103-16 (unredacted)]. OZCO also 11 filed a motion to strike. Motion to Strike Fred P. Smith Expert Report (“MTS”) [Dkt. No. 106]. I 12 heard argument on October 23, 2019. Dkt. No. 128. 13 LEGAL STANDARD 14 I. SUMMARY JUDGMENT 15 A. Generally 16 Summary judgment on a claim or defense is appropriate “if the movant shows that there is 17 no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of 18 law.” Fed. R. Civ. P. 56(a). In order to prevail, a party moving for summary judgment must show 19 the absence of a genuine issue of material fact with respect to an essential element of the non- 20 moving party’s claim, or to a defense on which the non-moving party will bear the burden of 21 persuasion at trial. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Once the movant has 22 made this showing, the burden then shifts to the party opposing summary judgment to identify 23 “specific facts showing there is a genuine issue for trial.” Id. The party opposing summary 24 judgment must present affirmative evidence from which a jury could return a verdict in that 25 party’s favor. Anderson v. Liberty Lobby, 477 U.S. 242, 257 (1986). 26 On summary judgment, the court draws all reasonable factual inferences in favor of the 27 1 non-movant. Id. at 255. In deciding the motion, “[c]redibility determinations, the weighing of the 2 evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a 3 judge.” Id. However, conclusory and speculative testimony does not raise genuine issues of fact 4 and is insufficient to defeat summary judgment. See Thornhill Publ’g Co., Inc. v. GTE Corp., 594 5 F.2d 730, 738 (9th Cir. 1979). 6 B. Noninfringement 7 Summary judgment of noninfringement requires a two-step analysis. “First, the claims of 8 the patent must be construed to determine their scope. Second, a determination must be made as to 9 whether the properly construed claims read on the accused device.” Pitney Bowes, Inc. v. 10 Hewlett–Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999) (internal citations omitted). “The 11 determination of infringement, both literal and under the doctrine of equivalents, is a question of 12 fact.” Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003); see 13 also Kilopass Tech. Inc. v. Sidense Corp., No. 10–cv–02066–SI, 2012 WL 3545286, at *4 (N.D. 14 Cal. Aug. 16, 2012). Because the ultimate burden of proving infringement rests with the patentee, 15 an accused infringer may show that summary judgment of noninfringement is proper either by 16 producing evidence that would preclude a finding of infringement, or by showing that the 17 evidence on file fails to create a material factual dispute as to any essential element of the 18 patentee’s case. See Novartis Corp. v. Ben Venue Labs., Inc., 271 F.3d 1043, 1046 (Fed. Cir. 19 2001). “Summary judgment of noninfringement may only be granted if, after viewing the alleged 20 facts in the light most favorable to the nonmovant and drawing all justifiable inferences in the 21 nonmovant’s favor, there is no genuine issue whether the accused device is encompassed by the 22 patent claims.” Id. Direct infringement may be proven either by literal infringement or under the 23 doctrine of equivalents. “Literal infringement requires the patentee to prove that the accused 24 device contains each limitation of the asserted claim(s).” Bayer AG v. Elan Pharm. Research 25 Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). “If any claim limitation is absent from the accused 26 device, there is no literal infringement as a matter of law.” Id. 27 II. MOTION TO STRIKE 1 A. Patent Local Rules 2 “Patent Local Rule 3 requires patent disclosures early in a case and streamlines discovery 3 by replacing the series of interrogatories that parties would likely have propounded without it.” 4 ASUS Computer Int’l v. Round Rock Research, LLC, No. 12-CV-02099-JST, 2014 WL 1463609, 5 at *1 (N.D. Cal. Apr. 11, 2014) (internal quotation marks and modifications omitted). The 6 disclosure requirements of Rule 3 are designed “to require parties to crystallize their theories of 7 the case early in the litigation and to adhere to those theories once they have been disclosed.” 8 Nova Measuring Instruments Ltd. v. Nanometrics, Inc., 417 F. Supp. 2d 1121, 1123 (N.D. Cal. 9 2006). “They are also designed to provide structure to discovery and to enable the parties to move 10 efficiently toward claim construction and the eventual resolution of their dispute.” Golden Bridge 11 Tech. Inc v. Apple, Inc., No. 12-cv-04882-PSG, 2014 WL 1928977, at *3 (N.D. Cal. May 14, 12 2014) (internal quotation marks omitted). 13 Patent Local Rule 3-1 requires that a party claiming patent infringement serve a 14 “Disclosure of Asserted Claims and Infringement Contentions” no more than fourteen days after 15 the initial case management conference. This disclosure must include “[e]ach claim of each patent 16 in suit that is allegedly infringed by each opposing party, including for each claim the applicable 17 statutory subsections of 35 U.S.C. § 271 asserted.” Patent L.R. 3-1(a). The party must also 18 identify “where each limitation of each asserted claim is found within each Accused 19 Instrumentality,” and “[w]hether each limitation of each asserted claim is alleged to be literally 20 present or present under the doctrine of equivalents.” Patent L.R. 3-1(e). 21 Patent Local Rule 3-3 requires parties accused of infringement to serve invalidity 22 contentions. The invalidity contentions must identify “each item of prior art that allegedly 23 anticipates each asserted claim or renders it obvious.” Patent L.R. 3-3(a). If obviousness is 24 alleged, the invalidity contentions must contain “an explanation of why the prior art renders the 25 asserted claim obvious, including an identification of any combinations of prior art showing 26 obviousness.” Patent L.R. 3-3(b). 27 “Given the purpose behind [these] disclosure requirements, a party may not use an expert 1 report to introduce new infringement theories, new infringing instrumentalities, new invalidity 2 theories, or new prior art references not disclosed in the parties’ infringement contentions or 3 invalidity contentions.” Verinata Health, Inc. v. Sequenom, Inc., No. 12-cv-00865-SI, 2014 WL 4 4100638, at *3 (N.D. Cal. Aug. 20, 2014) (internal quotation marks omitted). “Any invalidity 5 theories not disclosed pursuant to Local Rule 3-3 are barred . . . from presentation at trial (whether 6 through expert opinion testimony or otherwise).” MediaTek Inc. v. Freescale Semiconductor, Inc., 7 No. 11-cv-05341-YGR, 2014 WL 690161, at *1 (N.D. Cal. Feb. 21, 2014). In determining 8 whether to strike some or all of an expert report for failure to comply with the patent local rules, 9 courts in this district have asked, “[W]ill striking the report result in not just a trial, but an overall 10 litigation, that is more fair, or less?” Apple Inc. v. Samsung Electronics Co., No. 11-cv-01846- 11 PSG, 2012 WL 2499929, at *1 (N.D. Cal. June 27, 2012); Verinata Health, 2014 WL 4100638, at 12 *3. 13 B. Federal Rule of Evidence 702 14 Rule 702 allows a qualified expert to testify “in the form of an opinion or otherwise” 15 where:
16 (a) the expert’s scientific, technical, or other specialized knowledge will help the 17 trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; 18 (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the 19 case. 20 Fed. R. Evid. 702. Expert testimony is admissible under Rule 702 “if it is both relevant and 21 reliable.” Cooper v. Brown, 510 F.3d 870, 942 (9th Cir. 2007). “[R]elevance means that the 22 evidence will assist the trier of fact to understand or determine a fact in issue.” Id. Under the 23 reliability requirement, expert testimony must “relate to scientific, technical, or other specialized 24 knowledge, which does not include unsubstantiated speculation and subjective beliefs.” Id. 25 “Importantly, there must be a recognized body of knowledge, learning, or expertise upon which 26 the witness relies. Where there is no field of expertise, nobody will qualify as an expert witness 27 on the subject.” Perez v. Seafood Peddler of San Rafael, Inc., No. 12-cv-00116-WHO, 2014 WL 1 proponent of the expert testimony to show, by a preponderance of the evidence, that the 2 admissibility requirements are satisfied. Fed. R. Evid. 702 advisory committee note. 3 DISCUSSION 4 I. SUMMARY JUDGMENT ON INFRINGEMENT 5 Both parties move for partial summary judgment on the question of infringement. 6 Simpson asserts that the undisputed facts show that the Accused Products neither directly nor 7 indirectly infringe on either patent. OZCO counters that the undisputed facts show the Accused 8 Products do infringe claims 1, 2, 4, and 5 of the ’998 Patent. Although OZCO asserts 9 infringement of claims 3 and 7, it does not move for summary judgment on those claims. 10 A. Direct Infringement of the ’998 Patent 11 “Once the claims have been correctly construed to determine their scope, the claims must 12 be compared to the accused device.” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 13 1316, 1330 (Fed. Cir. 2001). “[L]iteral infringement requires that each and every limitation set 14 forth in a claim appear in an accused product.” Frank’s Casing Crew & Rental Tools, Inc. v. 15 Weatherford Int’l, Inc., 389 F.3d 1370, 1378 (Fed. Cir. 2004). “Any deviation from the claim 16 precludes . . . a finding [of literal infringement]. Telemac, 247 F.3d at 1330. 17 The asserted claims of the ’998 Patent read: 1. An apparatus, comprising: 18 a washer/nut member comprising: 19 a plurality of outer surfaces disposed in a hexagonal shape; an inner cylindrical surface disposed radially internal to the 20 plurality of outer surfaces; an intermediate cylindrical surface disposed radially between the 21 plurality of outer surfaces and the inner cylindrical surface; and 22 an annular surface disposed radially between the inner cylindrical 23 surface and the intermediate cylindrical surface; and a cap disposed within the intermediate cylindrical surface; 24 wherein the inner cylindrical surface is configured to surround a shaft portion of a screw that contacts the annular surface; and wherein the 25 washer/nut member further comprises an upper annular surface and a flat surface of the cap is substantially flush with the upper annular 26 surface. 27 2. The apparatus of claim 1 wherein the washer/nut member further comprises a flange portion disposed radially external to the plurality of outer surfaces. portion of the screw is surrounded by the inner cylindrical surface and a head 1 portion of the screw contacts the annular surface. 2 4. The apparatus of claim 1 wherein the cap includes a tool receiving feature. 5. The apparatus of claim 4 wherein the tool receiving feature is an opening. 3 . . . 7. The apparatus of claim 5 further comprising the screw received through the 4 inner cylindrical surface and the intermediate cylindrical surface. 5 According to Simpson, the Accused Products do not infringe for two reasons: (i) there is no “cap” 6 because the screw and the cap are separate elements, and (ii) the head of the screw does not satisfy 7 the cap limitation because it is not a “closed cover.” Simpson MSJ 8-11. OZCO counters that the 8 question of separate elements is relevant only to claims 3 and 7 and that there are at the very least 9 factual disputes over whether the head of the screw is a closed cover. OZCO Oppo. 9. 10 1. Separate elements 11 Simpson first asserts that my Claim Construction Order entitles it to summary judgment 12 because the head of the screw cannot satisfy the “cap” limitation in claim 1. At claim 13 construction, I construed the “cap,” “screw,” and “washer-nut member” as separate components of 14 the invention: Here, the claim language, the claim structure, and the specification all 15 support a construction that the cap, screw, and washer/nut member are separate components of the ’998 Patent. Claim 1 lists two separate 16 elements: (1) a washer/nut member and (2) a cap. Claims 1 and 3 mention a screw, which is not claimed, and explain the relationship 17 between the washer/nut member, cap, and screw. Importantly, Claim 7 describes the apparatus as “further comprising the screw,” which 18 clearly confirms that the screw is distinct from the cap and washer/nut member. See Engel, 96 F.3d at 1404–05 (reaching the same 19 conclusion where one portion was “also provided”). Because all the elements are listed separately, the implication is that they are distinct 20 components of the ’998 Patent. See Becton, 616 F.3d at 1254. 21 Claim Construction Order 5–6. In order to establish direct infringement, OZCO must show that 22 the Accused Products meet each of the elements in the asserted claims. The requirement is not 23 necessarily that each element be physically distinct or unconnected, but each must be present to 24 the extent an asserted claim includes it.2 Cf. Becton, 616 F.3d at 1255 (“There can be no literal 25 2 See Simpson MSJ 10 (“As the undersigned counsel stated at the hearing, separate components 26 that are physically attached to one another (i.e., a cap affixed to the head of a screw) could satisfy the separate elements construction—because each element would still be mapped to different 27 components. Rather, Ozco’s infringement theory relies on the head of Simpson’s Screw (i.e., a 1 infringement where a claim requires two separate structures and one such structure is missing from 2 an accused device.”). 3 According to Simpson, my construction mandates noninfringement because the head of the 4 screw cannot also serve as the cap. I indeed construed “cap,” “screw,” and “washer/nut member” 5 as separate elements, but Simpson’s argument faces an insurmountable hurdle: the screw is not 6 part of the apparatus described in claim 1. Although the language mentions a screw, only a 7 washer/nut member and a cap are elements of claim 1. See ’998 Patent 6:22-40. The claim does 8 describe the relationship between the washer/nut member and cap on one hand and a screw on the 9 other hand, but the screw does not become part of the claimed apparatus until claim 3. Although 10 my separate elements construction stands, I cannot read a requirement into claim 1 that is only 11 found in claims 3 and 7. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1326 12 (Fed. Cir. 2003) (“[W]hen a patent claim does not contain a certain limitation and another claim 13 does, that limitation cannot be read into the former claim in determining either validity or 14 infringement.”) (internal quotation marks omitted). That the head of the screw also has a threaded 15 shaft does not preclude it from having all of the features necessary to be a cap according to the 16 limitations of claim 1. In the cases Simpson cites, each element was part of the claim at issue, and 17 yet the accused products could not satisfy them all. See Becton, 616 F.3d at 1254 (quoting a single 18 claim listing four separate elements, each one claimed); Intex Recreation Corp. v. Team 19 Worldwide Corp., 59 F. Supp. 3d 28, 41 (D.D.C. 2014) (noting that each claim of the patent 20 included the limitation at issue). 21 That said, my separate elements construction does entitle Simpson to summary judgment 22 on claims 3 and 7. Those claims—which are dependent on claim 1—provide that the apparatus 23 “further compris[es]” a screw. ’998 Patent 6:44, 54. Yet in order for the Accused Products to 24 meet the cap limitation of claim 1, the screw must be part of the apparatus described there. The 25 head of the screw cannot serve as both the cap and the screw in a claim where both are required. 26 See Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) 27 (“There is nothing in the asserted claims to suggest that the hinged arm and the spring means can 1 (D.D.C. 2014) (“Because there is no genuine question that the pump housing in the accused 2 devices would be viewed as part of the pump itself, the housing cannot satisfy the separate claim 3 limitation of a socket.”). Because the Accused Products do not have a separate screw element to 4 satisfy claims 3 and 7, Simpson is entitled to summary judgment of noninfringement of those 5 claims. 6 2. Closed cover and disposed within 7 The parties also dispute whether the head of the screw can satisfy the cap limitation. 8 According to Simpson, even apart from the separate elements construction, the head of the screw 9 cannot satisfy the cap limitation because when separated from the shaft, it has a hole in it (namely, 10 the recess for use with a screw driver). Simpson MSJ 10-11. Simpson points out that OZCO’s 11 expert treats the head of the screw as distinct from the shaft—including the conical neck—in order 12 to be able to assert that the head of the screw is “situated entirely within” the intermediate 13 cylindrical surface (as is required for the cap). Id. at 11; see Expert Report of Paul Hatch, Minor 14 Decl. Ex. D [Dkt. No. 102-1] 55-56 (showing the shaft in green). 15 At claim construction, OZCO agreed to the “closed cover” construction of cap and 16 conceded that the construction means the cap does not have a hole in it.3 OZCO now argues that 17 the head of the screw is a “closed cover” because it “covers the opening made by the washer/nut 18 member’s intermediate cylindrical surface.” OZCO MSJ 14; OZCO Oppo. 2. In response to the 19 argument that the screw head has a hole when separated from the shaft, OZCO asserts that 20 Simpson’s position runs counter to its invalidity contentions and its employees’ testimony that the 21 head of a screw can be a cap.4 See OZCO Oppo. 1-7. 22 Material disputes of fact preclude summary judgment in favor of either side. A fact finder 23
24 3 OZCO wrote during claim construction briefing, “Simpson argues that the plain and ordinary meaning of ‘cap’ is ‘a closed cover.’ Response at 17-20 [Dkt. No. 79]. As OZCO now 25 understands Simpson’s concern (the cap shouldn’t have a hole in it), OZCO can accept Simpson’s proposal that the term ‘cap’ be construed as ‘a closed cover.’” OZCO Reply ISO Claim 26 Construction [Dkt. No. 80] 5.
27 4 OZCO relies on Simpson employees’ deposition testimony that the head of the screw can be a 1 must determine whether the screw head can satisfy the closed cover limitation and whether the 2 recess or the “disposed within” requirement have an impact on that question. 3 B. Direct Infringement of the D’701 Patent 4 Simpson moves for summary judgment of no indirect infringement of the ’701 Design 5 Patent, asserting that no reasonable juror could conclude that the Accused Products are 6 substantially similar to the patented design. Simpson MSJ 11-20. OZCO counters that Simpson 7 improperly isolates minor differences and that material disputes of fact preclude judgment as a 8 matter of law in Simpson’s favor.5 OZCO Oppo. 19-25. 9 A product’s design infringes a design patent when an ordinary observer would believe the 10 two designs to be “substantially the same” and thus be deceived into purchasing one, “supposing it 11 to be the other.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1335 (Fed. Cir. 12 2015) (citing Egyptian Goddess, 543 F.3d at 670). To determine infringement, “the patented and 13 accused designs are compared for overall visual similarity.” Elmer v. ICC Fabricating, Inc., 67 14 F.3d 1571, 1577 (Fed. Cir. 1995). Differences “must be evaluated in the context of the claimed 15 design as a whole, and not in the context of separate elements in isolation.” Ethicon, 796 F.3d at 16 1335; see also High Point Design LLC v. Buyer’s Direct, Inc., 621 F. App’x 632, 640–41 (Fed. 17 Cir. 2015) (concluding that the district court erred by “fail[ing] to properly consider the 18 ornamental aspects of the designs at issue”). “Summary judgment of non-infringement is 19 appropriate when no reasonable fact-finder could find the accused design substantially similar to 20 the claimed design.” High Point Design LLC v. Buyer's Direct, Inc., 621 F. App’x 632, 640–41 21 (Fed. Cir. 2015). 22 In KeyStone, the Federal Circuit affirmed summary judgment of noninfringement because 23 the plaintiff’s theory of infringement was based on improperly isolating certain features of the 24 claimed design. KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. 25 Cir. 1993) (“A patented design is defined by the drawings in the patent, not just by one feature of 26 the claimed design.”). The district court had noted that when the accused retaining wall block was 27 1 “engaged in its normal use, as a retaining wall,” its appearance “look[ed] virtually identical” to the 2 || patented block. Jd. (quoting the district court’s order). But because the features of the two blocks 3 || were not substantially similar when not embedded in a wall, there could be no infringement. □□□ 4 || The Federal Circuit affirmed, noting that the block—not a wall—was the subject of the patent. Jd. 5 “[O ]ne cannot establish design patent infringement by showing similarity of only one part of a 6 || patented design if the designs as a whole are substantially dissimilar.” KeyStone Retaining Wall 7 Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993); see also Int’l Seaway Trading 8 Corp. v. Walgreens Corp., 589 F.3d 1233, 1241 (Fed. Cir. 2009) (noting that “normal use should 9 || not be limited to only one phase or portion of the normal use lifetime of an accused product”); Po- 10 Hsun Lin y. Belkin Int'l, Inc., No. 16-cv-628, 2017 WL 2903261, at *5-6 (C.D. Cal. May 12, 11 2017) (finding designs distinct although they consisted of the same cables and connectors because 12 || the manner in which pieces were attached “[was] substantially different and result[ed] in a 5 13 substantially different visual appearance overall”). 14 No reasonable juror could find that a consumer might be deceived into purchasing the 3 15 Accused Products believing them to be the patented design. Several differences create a dissimilar 16 || overall appearance, as the images below show: ° & Sy bs e 19 Viva G 20 |) Figure | KS,
22 23 24 25 26 27 © The images of the Accused Products shown here come from the Pratt report. See Minor Decl. 28 together No. 102-1, ECF p.199]. OZCO alleges infringement only based on the products’ use
1 2 | q 3 fity, | | 4 Figure 5 5 a sd is ‘ 8 || No ordinary observer could fail to see these differences and understand that Simpson’s products 9 are not the same as the patented design. The shear tube clearly protrudes from the bottom of the 10 washer, and the shafts of the screws protrude several inches. In addition, the Accused Products 11 have a slightly softer, curved look. 12 OZCO essentially concedes that the shear tube and screw shaft are distinct from the design 5 13 but argues that I should disregard them for purposes of the infringement analysis. Contrary to 14 || OZCO’s arguments, it is not appropriate to disregard the screw as a purely functional feature. See 3 15 OZCO Oppo. 19-21. As Simpson points out, courts ignore functional features not of accused 16 || products but instead of the patented design.’ See Kao v. Snow Monster Inc., No. 17-cv-08934, 3 17 || 2019 WL 2164192, at *3 (C.D. Cal. May 16, 2019) (noting that the patented design’s slightly 18 smaller mouth size was functional and finding it insufficient to insufficient to support a finding 19 that there was no triable issue); Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1323 (Fed. 20 || Cir. 2016) (noting that the functional features of the design should not be a focus of the 21 infringement analysis, but should be considered insofar as they “contribute to the design’s overall 22 ornamentation”) Poly-Am., LP. vy. API Indus., Inc., 74 F. Supp. 3d 684, 693 (D. Del. 2014), □□□□□ 23 || sub nom. Poly-Am., L.P. v. Api Indus., Inc., 617 F. App’x 997 (Fed. Cir. 2015) (inquiring “which 24 || features, if any, should be excluded from the court’s infringement analysis by virtue of being 25 || purely functional”). 26 OZCO’s additional arguments are unpersuasive. The screw does not merely serve a 27 28 7 Here, I would ignore the threading around the cap because that is purely functional.
1 functional purpose, nor is it merely an added feature; it is fundamental to OZCO’s theory of 2 infringement of the D’701 Patent. The head of the screw is crucial to creating the visual 3 similarities between the Accused Products and the D’701 Patent. It would be improper to consider 4 the screw insofar as it makes the Accused Products appear similar to the patented design but not 5 consider it insofar as it distinguishes them. Nor is the presence of the screw a minimal difference 6 between the patented design and the Accused Products as OZCO argues. It would be impossible 7 for an ordinary observer to miss the presence of the screw in the ordinary use of the products, 8 especially given that it is sold separately from the hex head washer. A consumer might even be 9 drawn to the products for this reason. See Po-Hsun Lin, 2017 WL 2903261, at *6 (“Given the 10 functional nature of the other design elements . . . an ordinary observer is also likely to be drawn 11 to those aspects of the design that differ between similar products.”). 12 The protruding shear on the bottom of the washer is an additional difference between the 13 Accused Products and the patented design, and the washer also has a slightly more rounded look. 14 OZCO essentially concedes the shear is a dissimilarity by arguing that it is less noticeable when 15 the screw is inserted. See OZCO Oppo. 22 (noting that “if the screw is inserted, the [existence] of 16 the shear tube is further minimized in appearance”). OZCO is correct that both patents aim to 17 simulate bolted hardware, and when installed, they appear similar to such hardware and to one 18 another. But “[s]uch high-level similarities . . . are not sufficient to demonstrate infringement.” 19 See High Point Design, 621 F. App’x at 642. OZCO’s remaining arguments run counter to the 20 Federal Circuit caselaw detailed above. Compare OZCO Oppo. 21 (“[N]ormal use begins when 21 the screw is assembled with the hex head washer . . . when the accused product is assembled to 22 misappropriate the claimed design, the screw and the shear tube are only visible for a limited time 23 before they are hidden by the structure being built.”) with KeyStone, 997 F.2d at 1450 (affirming 24 summary judgment of no infringement even where the product looked “virtually identical” to the 25 patented design only when it was installed). 26 The design at issue is far from maximalist. As a result, even minor differences in a product 27 would have the potential to create a substantially dissimilar appearance—and as I have noted, the 1 described above render Simpson’s products plainly dissimilar from the D’701 Patent. 2 Accordingly, there is no need to analyze the prior art. See Colida v. Nokia, Inc., 347 F. App’x 3 568, 571 (Fed. Cir. 2009) (“[T]he dissimilarities far exceed the similarities when comparing [the 4 patents to the accused product], and no amount of extrinsic evidence can change that.”). 5 C. Indirect Infringement 6 Simpson asserts that OZCO’s indirect infringement claims fail because it cannot show 7 direct infringement. “[T]he patentee always has the burden to show direct infringement for each 8 instance of indirect infringement.” DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1303 (Fed. Cir. 9 2006). Because OZCO has not proven direct infringement by Simpson or anyone else, its indirect 10 infringement claims necessarily fail. 11 II. MOTION TO STRIKE 12 OZCO moves to strike the expert report of Fred Smith on the grounds that it includes 13 theories that were not properly disclosed in Simpson’s invalidity contentions. See Expert Report 14 of Fred Smith (“Smith Rpt”), Thomas Decl., Ex. 10, Minor Decl. ISO Oppo. MTS, Ex. B [Dkt. 15 Nos. 105-10, 115-3]; Invalidity Contentions, Minor Decl. ISO Oppo. MTS, Ex. A [Dkt. No. 115- 16 2]. 17 A. Opinions on the ’998 Patent 18 Acknowledging that it mistakenly omitted charts for two patent references—Jaffa and 19 Dodds—Simpson withdraws them as primary references and withdraws obviousness 20 Combinations 2 and 4, which rely on them. Oppo. MTS 2, 19-20. Simpson also withdraws 21 Combination No. 5, which relies on Patent No. CN 2013820634 to Chen. Oppo. MTS 2 n.2. It 22 argues that I should deny OZCO’s motion to strike the remaining parts of Smith’s report. 23 1. Obviousness Combination 1 24 Smith opines that “Item 84 and the knowledge of a POSITA, either by itself or in 25 combination with Item 83, Item 85, Item 229 and/or Camisasca [Item 314]” renders all claims in 26 the ’998 Patent obvious. Smith Report 16. Simpson’s invalidity contentions read as follows: 27 “Item 84: In combination with one or more of the following references: 75, 82, 83, 85, 86, 224, 1 The parties’ disputes over this combination boil down to whether Simpson’s invalidity 2 contentions were sufficient to give OZCO notice of its theory of obviousness related to Item 84. 3 OZCO argues that the contentions misled it into understanding that Simpson’s theory was that 4 Item 84 satisfied certain claim elements on its own, without any prior art references.8 Reply MTS 5 5-6. By now asserting in the Smith report that Item 84 must be altered—with other prior art 6 references and the knowledge of a POSITA—to satisfy these elements, Simpson improperly 7 introduces a new theory of obviousness. Id. 8 OZCO’s argument essentially relies on characterizing Item 84 as an undisclosed prior art 9 reference. It reaches too far. Simpson’s invalidity contentions clearly communicated that it 10 intended to rely on Item 84 in combination with nine other references, and Smith’s report relies on 11 84 in combination with four of those same references. OZCO cites to no authority suggesting that 12 Simpson’s disclosures needed to be more detailed than they were; in fact, as I have noted in the 13 past, courts have applied Rule 3-3(b) with more flexibility rather than less. See Fujifilm Corp. v. 14 Motorola Mobility LLC, No. 12-cv-03587-WHO, 2015 U.S. Dist. LEXIS 21413, at *90-91 (N.D. 15 Cal. Feb. 20, 2015) (“Courts in this district have held that Rule 3-3(b) does not always require the 16 accused infringer to spell out in exact detail every particular combination it intends to assert.”). 17 Simpson’s contentions met the requirements of Rule 3-3(b); OZCO’s motion to strike 18 Combination 1 is DENIED. 19 2. Obviousness Combination 3 20 OZCO argues that I should strike Smith’s opinions on Combination 3 “at least to the extent 21 [he] relies on Jaffa,” the patent Simpson acknowledges it failed to chart. MTS 12. Simpson 22 counters that it voluntarily withdrew the combinations that in fact rely on Jaffa, and Combination 23 3 instead uses it as background information rather than a primary reference. Oppo. MTS 14-15. 24 “Several courts in this district have declined to strike from an expert report an undisclosed 25 8 Specifically, OZCO asserts that the contentions failed to give it notice of Simpsons theory that 26 the following elements were not met by Item 84: “an annular surface disposed radially between the inner cylindrical surface and the intermediate cylindrical surface” and “wherein the inner 27 cylindrical surface is configured to surround a shaft portion of a screw that contacts the annular 1 reference if the reference is only being used as background material.” Verinata Health, Inc. v. 2 Sequenom, Inc., No. C 12-00865 SI, 2014 U.S. Dist. LEXIS 116382, at *16 (N.D. Cal. Aug. 20, 3 2014) (citing cases and concluding that the expert could “use the reference for foundational or 4 background material”). I will adopt that approach here. Smith may rely on the Jaffa patent as 5 foundational or background material.9 Any testimony that veers beyond those purposes will not 6 be allowed; the parties can address specifics as necessary in motions in limine. OZCO’s motion to 7 strike Combination 3 is DENIED. 8 3. Obviousness Combination 6 9 The parties’ dispute of Combination 6 relies on the same disclosures of Item 84 quoted 10 above.10 OZCO argues that Smith’s report improperly adds theories because it includes an image 11 that was not provided in Simpson’s infringement contentions. MTS 14-15. Simpson counters that 12 the report merely provides “a demonstrative illustration that shows what the disclosed 13 combination would look like.” Oppo. MTS 16. OZCO’s arguments mirror those I addressed 14 above, and they are meritless for the same reasons. I agree with Simpson that this illustration is 15 not a new theory; rather, Simpson’s infringement contentions disclose the combination of Item 84 16 and Camisasca, and the Smith report merely provides more detail about how a POSITA would 17 arrive at that combination and what it would look like. OZCO’s motion to strike Combination 6 is 18 DENIED. 19 4. Anticipation 20 OZCO challenges Smith’s opinions on anticipation of the ’998 Patent on the grounds that 21 his theories related to the Sammy X-Press are completely different than those Simpson included in 22 its invalidity contentions. MTS 5-7; compare Invalidity Contentions B-9 with Smith Rpt 12-16. 23 9 OZCO raises the same arguments here that it did for Combination 1, asserting that Simpson is 24 improperly using the Camisasca prior art reference in a way that was not disclosed in its infringement contentions. For the same reasons described above, I will not strike Smith’s 25 opinions on Combination 3 on that basis.
26 10 Smith opines that “Item 84 and the knowledge of a POSITA, either by itself or in combination with Item 83, Item 85, Item 229 and/or Camisasca [Item 314]” renders all claims in the ’998 27 Patent obvious. Simpson’s invalidity contentions read as follows: “Item 84: In combination with 1 Simpson counters that its invalidity contentions point to examples of an inner cylindrical surface 2 and an annular surface rather than pointing to all such surfaces, and while this oversight is 3 “regrettable,” it does not mean that Smith’s report constitutes a new theory of liability. Oppo. 4 MTS 17-19. According to Simpson, it is not appropriate to strike the report because OZCO— 5 which had months to raise this inconsistency with Simpson—is not prejudiced by it. Id. at 18-19. 6 In reply, OZCO asserts that Smith’s report presents a new theory because “[i]t is the relation of 7 [the inner cylindrical and annular surface] elements to each other and other elements that must be 8 considered for an invalidity theory.” Reply MTS 1-4. By identifying the wrong elements, 9 Simpson failed to give OZCO fair notice. 10 The parties’ dispute boils down to whether knowing that Simpson intended to assert 11 anticipation based on the Sammy X-Press gave OZCO sufficient notice of Simpson’s theory of 12 anticipation. While OZCO is correct that the relationship of the elements is key to the patented 13 claims, I will not strike Smith’s anticipation opinions. See Finjan, Inc. v. Symantec Corp., No. 14- 14 cv-02998-HSG (JSC), 2018 U.S. Dist. LEXIS 14952, at *18 (N.D. Cal. Jan. 29, 2018) (“District 15 courts have wide discretion in enforcing the patent local rules.”) (internal quotation marks and 16 citation omitted). The invalidity contentions made clear to OZCO that Simpson intended to use 17 the Sammy X-Press to assert an anticipation theory of invalidity. OZCO’s motion to strike this 18 opinion is DENIED. 19 B. Opinions on the D’701 Patent 20 OZCO first challenges Smith’s opinion on anticipation of the D’701 Patent on the grounds 21 that it relies on a Nylock and set screw, which was not asserted as prior art to the patent. Simpson 22 agrees to withdraw that reference, and OZCO has not challenged Smith’s opinions based on Items 23 30 and 31. Oppo. MTS 20. 24 OZCO next challenges Smith’s opinion on the invalidity of the D’701 Patent on the 25 grounds that he failed to apply a proper methodology. MTS 15-16. Smith opines that if the jury 26 finds that the Accused Products infringe the D’701 Patent, then the Patent is invalid because “hex- 27 head washers with protruding screw shafts have existed for decades.” Oppo. MTS 21-22. OZCO 1 jury. The motion to strike is moot as it relates to the D’701 Patent because Simpson is entitled to 2 summary judgment of noninfringement on that patent. 3 III. SUMMARY JUDGMENT ON INVALIDITY 4 OZCO moves for summary judgment on Simpson’s invalidity claims. First it asserts that 5 without the expert report of Fred Smith, Simpson has no evidence to support its anticipation and 6 obviousness arguments. OZCO MSJ 20-22. Second, it asserts that Simpson fails to provide clear 7 and convincing evidence that the prior art references Smith relied on were publicly available 8 before the Asserted Patents’ respective priority dates. Id. at 22-26. Simpson counters that 9 material disputes of fact preclude judgment as a matter of law on the question of the patents’ 10 validity. 11 “If the claimed invention was ‘described in a printed publication’ either before the date of 12 invention, 35 U.S.C. § 102(a), or more than one year before the U.S. patent application was filed, 13 35 U.S.C. § 102(b), then that prior art anticipates the patent.” Finisar Corp. v. DirecTV Grp., Inc., 14 523 F.3d 1323, 1334 (Fed. Cir. 2008). “[T]he anticipation inquiry proceeds on a claim-by-claim 15 basis.” Id. “The way in which the elements are arranged or combined in the claim must itself be 16 disclosed, either expressly or inherently, in an anticipatory reference.” Therasense, Inc. v. Becton, 17 Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). A party asserting this defense must 18 establish invalidity with clear and convincing evidence. See Core Wireless Licensing S.A.R.L. v. 19 Apple Inc., No. 15-CV-05008 NC, 2016 WL 6427850, at *3 (N.D. Cal. Oct. 31, 2016) (granting 20 summary judgment where the only evidence of invalidity was not enough to “leave[] the fact 21 finder with a firm belief or conviction” that the patent was obvious or anticipated). 22 35 U.S.C. § 103(a) prohibits the issuance of a patent when “the differences between the 23 subject matter sought to be patented and the prior art are such that the subject matter as a whole 24 would have been obvious at the time the invention was made to a person having ordinary skill in 25 the art to which said subject matter pertains.” 35 U.S.C. § 103(a). Obviousness is a question of 26 law based on underlying factual determinations. Insite Vision Inc. v. Sandoz, Inc., 783 F.3d 853, 27 858 (Fed. Cir. 2015). The underlying factual inquires include: (i) “the scope and the content of 1 claimed invention and the prior art.” Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 2 (1966). Secondary indicators such as “commercial success, long felt but unsolved needs, [and] 3 failure of others,” that can “give light to the circumstances surrounding the origin of the subject 4 matter sought to be patented” should also be considered. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 5 398, 399 (2007) (internal citations and quotation marks omitted). Evidence of secondary 6 considerations “may often be the most probative and cogent evidence [of nonobviousness] in the 7 record.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). To invalidate a 8 patent on the basis of obviousness, the moving party must prove obviousness by clear and 9 convincing evidence. Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003). 10 OZCO first argues that if I strike the Smith report, it is entitled to summary judgment that 11 (i) claims 1 and 2 of the ’998 Patent were not anticipated by the Sammy X-Press, (ii) claims 1, 2, 12 3, 4, 5, and 7 of the ’998 Patent were not rendered obvious, (iii) the ’701 Patent is not invalid. 13 OZCO MSJ 20-22. Because OZCO’s argument is contingent on the absence of the Smith report— 14 which I have declined to strike—it is DENIED. 15 OZCO next argues that Simpson lacks sufficient evidence for a jury to rely on to find that 16 the following prior art references were available before the relevant priority dates of the patents: 17 Item 80 - Sammy X-Press; Item 83; Item 84; Item 85; Item 30 - ARP Model No: ARP-123-4003 18 (“ARP”); Item 31- Lambretta Model No. 530679788 (“Lambretta”).11 OZCO MSJ 22-26. 19 I agree with Simpson that factual disputes preclude summary judgment in OZCO’s favor 20 on this question. Smith may opine on the prior art references even if he lacks personal knowledge 21 of whether they were available prior to June 15, 2012 (the ’998 Patent’s priority date) or June 14, 22 2013 (the D’701 Patent’s priority date). See MobileMedia Ideas, LLC v. Apple Inc., 907 F. Supp. 23 2d 570, 605 (D. Del. 2012), vacated in part on other grounds, 780 F.3d 1159 (Fed. Cir. 2015) 24 (“An expert may reasonably rely on a copyright date on documentation to determine an 25 approximate date of public availability and, absent any evidence to the contrary, the court may 26
27 11 Simpson has withdrawn the following reference, which OZCO also challenged: Item 72 1 rely on that prior art date.”) (permitting expert testimony based on a printed copyright date where 2 there was no evidence to the contrary); Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 592, 3 113 S. Ct. 2786, 2796, 125 L. Ed. 2d 469 (1993) (“[A]n expert is permitted wide latitude to offer 4 opinions, including those that are not based on firsthand knowledge or observation.”). OZCO’s 5 motion for summary judgment on invalidity is DENIED. 6 IV. MOTIONS TO SEAL 7 Requests to seal associated with motions for summary judgment are subject to the 8 “compelling reasons” standard. See Kamakana v. City & Cty. of Honolulu, 447 F.3d 1172, 1179 9 (9th Cir. 2006). OZCO filed a motion to seal portions of its motion summary judgment, 10 supporting exhibits, and exhibits supporting its motion to strike. Dkt. No. 104. OZCO’s motion is 11 based on Simpson’s designation of the information as confidential during discovery. Simpson 12 then filed a declaration in support of the motion, wherein it consented to unsealing OZCO’s 13 motion for summary judgment along with Exhibits 4, 5, 6, 7, 8, 9, 14, 15, 16, 17, and 19. Dkt. No. 14 108. 15 Simpson only requests sealing of portions of Exhibit 13, its responses to OZCO’s Second 16 Set of Interrogatories, because its answer to Interrogatory 13 includes a customer list for the 17 Accused Products. Id. ¶¶ 5-6. There are compelling reasons to seal this information. See True 18 Health Chiropractic Inc. v. McKesson Corp., No. 13-cv-02219-HSG, 2019 U.S. Dist. LEXIS 19 136654, at *5 (N.D. Cal. Aug. 13, 2019) (“[C]ustomer lists generally constitute trade secrets, 20 which the Ninth Circuit has held is sealable under the heightened ‘compelling reasons’ 21 standard.”). Simpson’s request to redact portions of Exhibit 13 is GRANTED; the remainder of 22 OZCO’s motion to file under seal is DENIED AS MOOT. The Clerk shall UNSEAL all of the 23 entries at Dkt. No. 104 excluding Dkt. No. 104-29. A public redacted version of Dkt. No. 104-29 24 can be found at Dkt. No. 108. 25 CONCLUSION 26 For the reasons set forth above, Simpson’s motion for summary judgment of 27 noninfringement is GRANTED as to claims 3 and 7 of the ’998 Patent and as to the D’701 Patent. 1 This case is referred to the Hon. Thomas S. Hixson for settlement purposes only. 2 IT IS SO ORDERED. 3 Dated: November 14, 2019
5 ® William H. Orrick 6 United States District Judge 4 8 9 10 11 12
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