RICHARD D. BENNETH, District Judge.
Plaintiff Icon Outdoors, LLC ("Plaintiff" or "Icon") brings this action against Defendant Core Resources, Inc. ("Defendant" or "Core"), alleging infringement of United States Patent Number 7, 318, 239 (the "239 Patent"). Currently pending before this Court is Core's Motion for Summary Judgment (ECF No. 56). The issues have been fully briefed, and this Court held a motions hearing on May 16, 2013. For the reasons stated below, Core's Motion for Summary Judgment (ECF No. 56) is GRANTED IN PART and DENIED IN PART. Specifically, Core's Motion for Summary Judgment is GRANTED as to (1) Icon's waiver of its infringement contentions under the doctrine of equivalents and (2) the award of publication damages. Because genuine issues of material fact exist, Core's Motion for Summary Judgment is DENIED as to the following issues: (1) the validity of the 239 Patent; (2) whether Core's Redesigned Wader Shirt literally infringes the 239 Patent; (3) the potential award of damages for infringement during the period in which Icon failed to mark its patented product; and (4) the potential award of lost profits damages. Accordingly, partial summary judgment IS ENTERED in favor of Core and against Icon on Icon's allegations of infringement on the basis of the doctrine of equivalents as well as on Icon's claim for publication damages.
Plaintiff Icon Outdoors ("Plaintiff" or "Icon") is a Maryland limited liability corporation with its principal place of business in Ellicott City, Maryland. Compl. ¶ 1, ECF No. 1. Defendant Core Resources ("Defendant" or "Core") is a Minnesota corporation with its principal place of business in Burnsville, Minnesota. Id. ¶ 2. This Court has subject matter jurisdiction over this case pursuant to 28 U.S.C. § 1338(a), because the action arises under the patent laws of the United States, as well as federal question and diversity jurisdiction, pursuant to 28 U.S.C. § 1331 and § 1332. There is personal jurisdiction over the Core, because Core has a continuous and systematic business contact with the State of Maryland, where it markets and sells its products. Compl. ¶¶ 6-7.
I. The 239 Patent and Prosecution History
Plaintiff Icon owns United States Patent Number 7, 318, 239 (the "239 Patent"), which is entitled "Waterfowl Hunter's Dual-Function Top Garments." See 239 Patent, ECF No. 1-1. The 239 Patent was first filed as United States Patent Application 10/839, 000 (" 000 Application") on May 5, 2004. Id. at 1. That application was published on November 11, 2004, as United States Patent Application U.S. 2004/0221360 ("360 Patent Application Publication"). Id. Ultimately, the 239 Patent issued on January 15, 2008. Id.
The 239 Patent describes a hunter's top garment intended for use with chest waders. The garment contains upper and lower portions with distinct functions. The upper portion acts as a waterproof and windproof coat to keep a hunter warm and dry above his chest wader, while the lower portion, to be worn under the chest wader, is comprised of a breathable, layering material. See id. at col. 2, ll. 4-22.
As originally filed, the patent application identified the chest as the line at which the upper portion of the garment transitions into the lower portion (hereinafter, the "line of transition"). For example, the application describes the garment's upper and lower portions in relation to the chest, with the upper portion "above the chest" and the lower portion "beneath the chest." See Def.'s App'x D, p. 126, ll. 14-16, ECF No. 28-4. Additionally, the application's "claims" section refers to the upper portion as "positioned at chest level and above" and the lower portion "attached to said upper portion and extending downward there from." Id. at 139, ll. 9-11.
On September 8, 2005, an examiner from the United States Patent and Trademark Office, Gloria M. Hale ("the Examiner"), rejected the application for several reasons. Relevant to the issues presented in this case, the Examiner found that the claims identifying the line of transition at the chest failed for indefiniteness, as "it is not clear as to where the chest level' begins or ends." Def.'s App'x E, p. 3, ECF No. 28-5. Moreover, the Examiner rejected Claims 1 and 18 for their use of the phrase "waterproof or windproof, " because the two are not structurally equivalent characteristics. Id. at 3-4.
In response to the Examiner's rejections, the garment's inventors submitted an amended 000 Patent Application. To cure the Examiner's finding of indefiniteness, the amended application specified the sternum as the line of transition between the upper and lower portions of the top garment. See New U.S. Patent Application, Def.'s App'x F, ECF No. 28-6. Additionally, Claims 1 and 18 were amended to read "waterproof and windproof, " rather than "waterproof or windproof." See id. at 94, 98. The PTO accepted the amended application, and the 239 Patent issued on January 15, 2008. See 239 Patent.
II. Icon's Infringement Allegations
On February 14, 2008, Icon sent a letter to its competitor, Core, notifying Core of the alleged infringement of the 239 Patent by Core's own hunting garment, referred to as the Wader Shirt. See Affidavit of Kevin Cook ("Cook Aff.") ¶ 14; Ex. J, ECF No. 56-83. In the letter, Icon explained that Core's Wader Shirt was "structurally identical" to the 239 Patent and demanded that Core "cease all sales" of the garment immediately. See Ex. J. Upon receipt of Icon's letter, Core halted production of its Wader Shirt (hereinafter, the "Original Wader Shirt") scheduled for importation into the United States in the summer of 2008 from manufacturers outside of the country. Cook Aff. ¶ 16.
To avoid infringement, Core redesigned the Original Wader Shirt, lowering the line of transition on the garment at least six inches. See id. ¶ 17. After issuance of the 239 Patent, Core manufactured and imported into the United States only the redesigned version of the Wader Shirt (hereinafter, "Redesigned Wader Shirt"). Id. ¶ 19. On September 27, 2010, Icon sent another letter to Core, notifying Core of the alleged infringement of the 239 Patent by Core's Redesigned Wader Shirt. See id. ¶ 20; Ex. K. Core discontinued the Redesigned Wader Shirt in 2012. Cook Aff. ¶ 19.
On October 18, 2011, Icon filed the subject Complaint in this Court against Core, alleging that Core's Wader Shirt infringed the 239 Patent in violation of 35 U.S.C. § 271. See Compl., ECF No. 1. Specifically, Icon asserts that Core's Wader Shirt infringes, "literally and/or under the doctrine of equivalents, " claims 1, 2, 4, 5, 9, 11, 13, 18, 19, and 21 of the 239 Patent. Id. ¶¶ 12-14, 16. In its prayer for relief, Icon seeks, among other requests, an award of compensatory damages for Core's infringement and an award of increased damages under 35 U.S.C. § 284 because Core's infringement was willful. See id. at 5.
III. This Court's Claim Construction of the 239 Patent
The 239 Patent contains twenty-one claims. Claims 1 and 18 are independent claims, meaning they do not "refer back to or depend on another claim." Claim 1 provides as follows:
1. A dual function hunting top garment for use with chest waders, bibs and overalls, comprising:
an upper portion, positioned at the sternum and above and including a pair of arms, all substantially comprised of a waterproof and windproof material; and a lower portion attached to said upper portion and extending downward from there, from the chest to the waist, for wear underneath said chest waders, bibs or overalls, the lower portion comprising breathable non-waterproof and non-windproof material.
239 Patent, col. 7, ll. 17-26. The other independent claim, Claim 18, reads as follows:
18. A dual function hunting top garment for hunting and fishing, comprising:
a top portion, at the sternum and above, including the arms, comprised of an outer shell made of a waterproof and windproof shell with an insulated lining;
a lower portion, from the sternum to the waist, comprised of a breathable non-laminated material.
Id. at col. 8, ll. 35-42. The 239 Patent's remaining claims are dependent claims, meaning they refer back to the independent or dependent claims that precede them. In the 239 Patent, each dependent claim refers back to, either directly or through another dependent claim, Claim 1 or Claim 18. See id. at col. 7 l. 27-col. 8 l. 51.
On October 26, 2012, this Court held a hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), on seven disputed claim terms in Claims 1, 2, and 18. Afterward, this Court issued a Memorandum Opinion setting forth its construction of the claim language. The following seven claim terms were construed as follows:
As a result of the Court's claim construction, the claims of the 239 Patent more closely correspond to the inventors' amendment of the patent application to claim a garment whose line of transition occurs at the sternum. See, e.g., Claim Construction Mem. Op. 11-15, ECF No. 39. The invention described in Claim 1 involves an upper portion "positioned at the sternum and above, " and a lower portion attached to the upper portion and extending downward "from the sternum" to the waist. See id. 11-15, 22-23. Likewise, Claim 18 describes an invention the upper portion of which "begins over the sternum and extends upward from there, " while its lower portion "begins over or immediately adjacent to the sternum and extends downward from there." See id. at 21-22, 23.
IV. Core's Motion for Summary Judgment
Core moves for summary judgment on several grounds, asking this Court to find that the 239 Patent is invalid, that Core's Redesigned Wader Shirt does not infringe, and that, assuming Icon were successful on the merits, its award of damages would be severely limited. In particular, Core asserts that the 239 Patent is invalid, because Claims 1 and 2 are anticipated under 35 U.S.C. § 102(b) and Claims 4, 5, 9, 11, 13, 18, 19, and 21 are obvious under 35 U.S.C. § 103(a). As to infringement, Core argues that the evidence in this case conclusively shows as a matter of law that Core's Redesigned Wader Shirt does not infringe the 239 Patent. Finally, Core argues that the following matters regarding an award of damages are without dispute: (1) that Icon is not entitled to damages for infringement by Wader Shirts on the market prior to the issuance of the 239 Patent; (2) that Icon should not receive publication damages, arising from the 360 Patent Application, under 35 U.S.C. § 154(d); (3) that Icon is precluded from recovering damages prior to at least September 27, 2010, because Icon failed to mark its patented product during that time; and (4) that Icon is precluded from recovering lost profits due to the availability of noninfringing alternatives.
For the reasons that follow, Core's Motion for Summary Judgment (ECF No. 56) is GRANTED IN PART and DENIED IN PART. Specifically, Core's Motion is GRANTED as to (1) Icon's waiver of its infringement contentions under the doctrine of equivalents and (2) the award of publication damages. However, Core's Motion for Summary Judgment is DENIED as to the following issues, as they involve genuine disputes of material facts: (1) the validity of the 239 Patent; (2) whether Core's Redesigned Wader Shirt literally infringes the 239 Patent; (3) the potential award of damages for infringement during the period in which Icon failed to mark; and (4) the potential award of lost profits damages. Accordingly, partial summary judgment IS ENTERED in favor of Core and against Icon on Icon's allegations of infringement under the doctrine of equivalents as well as on Icon's claim for publication damages.
STANDARD OF REVIEW
Rule 56 of the Federal Rules of Civil Procedure provides that a 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(c). A material fact is one that "might affect the outcome of the suit under the governing law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Thus, summary judgment is proper "only when no reasonable jury could return a verdict for the nonmoving party.'" Monon Corp. v. Stoughton Trailers, Inc., 239 F.3d 1253, 1257 (Fed. Cir. 2001) (quoting Anderson, 477 U.S. at 255)). In considering a motion for summary judgment, a judge's function is limited to determining whether sufficient evidence exists on a claimed factual dispute to warrant submission of the matter to a jury for resolution at trial. Id. at 249.
In undertaking this inquiry, this Court must consider the facts and all reasonable inferences in the light most favorable to the nonmoving party. Scott v. Harris, 550 U.S. 372, 378 (2007). However, this Court must also abide by its affirmative obligation to prevent factually unsupported claims and defenses from going to trial. Drewitt v. Pratt, 999 F.2d 774, 778-79 (4th Cir. 1993). If the evidence presented by the nonmoving party is merely colorable, or is not significantly probative, summary judgment must be granted. Anderson, 477 U.S. at 249-50. A party opposing summary judgment must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986); see also In re Apex Express Corp., 190 F.3d 624, 633 (4th Cir. 1999). This Court has ...