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M-Edge International Corp. v. Lifeworks Technology Group LLC

United States District Court, D. Maryland

March 9, 2017

M-EDGE INTERNATIONAL CORPORATION, Plaintiff
v.
LIFEWORKS TECHNOLOGY GROUP LLC, Defendant

          MEMORANDUM AND ORDER RE: SUMMARY JUDGMENT

          Marvin J. Garbis United States District Judge

         The Court has before it Defendant Lifeworks' Motion for Summary Judgment of Non-Infringement and Renewed Motion to Strike Portions of the Malguarnera Expert Report [ECF No. 112] and the materials submitted relating thereto. The Court has considered the materials and has had the benefit of the arguments of counsel.

         I. INTRODUCTION

         Plaintiff M-Edge International Corporation (“M-Edge”) sues Defendant Lifeworks Technology Group LLC (“Lifeworks”) for infringement of United States Patent No. 8, 887, 910 “Low Profile Protective Cover Configurable as a Stand” (“the ‘910 Patent”).

         By the instant motion, Lifeworks seeks summary judgment of non-infringement of the claims of the ‘910 Patent and seeks to have the Court strike the doctrine of equivalents (“DOE”) portions of M-Edge's expert report.

         II. SUMMARY JUDGMENT STANDARD

         A motion for summary judgment shall be granted if the pleadings and supporting documents “show[] 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).

         The well-established principles pertinent to summary judgment motions can be distilled to a simple statement: The Court may look at the evidence presented in regard to a motion for summary judgment through the non-movant's rose-colored glasses, but must view it realistically. After so doing, the essential question is whether a reasonable fact finder could return a verdict for the non-movant or whether the movant would, at trial, be entitled to judgment as a matter of law. See, e.g., Celotex Corp. v. Catrett, 477 U.S. 317, 322-323 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Shealy v. Winston, 929 F.2d 1009, 1012 (4th Cir. 1991). Thus, in order to defeat a motion for summary judgment, “the party opposing the motion must present evidence of specific facts from which the finder of fact could reasonably find for him or her.” Mackey v. Shalala, 43 F.Supp.2d 559, 564 (D. Md. 1999) (emphasis added).

         When evaluating a motion for summary judgment, the Court must bear in mind that the “summary judgment procedure is properly regarded not as a disfavored procedural shortcut, but rather as an integral part of the Federal Rules as a whole, which are designed ‘to secure the just, speedy and inexpensive determination of every action.'” Celotex, 477 U.S. at 327 (quoting Rule 1 of the Federal Rules of Civil Procedure).

         III. INFRINGEMENT

         A determination of patent infringement requires a two-step analysis. Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1339 (Fed. Cir. 2016). First, the court construes the asserted claims, and second, it compares the properly construed claims to the accused product. Id. Step one, claim construction, is a question of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). Step two, comparison of the asserted claims to the accused device, requires a determination that every claim limitation or its equivalent be found in the accused device. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997).

         Whether there is infringement, either literally or under the doctrine of equivalents, is a question of fact. Akzo, 811 F.3d at 1339. “As such, it is amenable to summary judgment when no reasonable factfinder could find that the accused product contains every claim limitation or its equivalent.” Id.

         A. Literal infringement

         “To establish literal infringement, every limitation set forth in a claim must be found in an accused product, exactly.” Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1319 (Fed. Cir. 2015)(quoting Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995)).

         B. Infringement by the Doctrine of Equivalents

         1. The Doctrine

         Where literal infringement of a claim element is not found, infringement under the doctrine of equivalents (“DOE”) may be found where the “accused product or process contain[s] elements identical or equivalent to each claimed element of the patented invention.” Warner-Jenkinson, 520 U.S. at 40.

         “Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole.” Id. at 29. An element is equivalently present in an accused device if there are only minor or insubstantial differences while the essential functionality is retained. Sage Products, Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1423, 1424 (Fed. Cir. 1997). One way to determine whether differences are insubstantial is to show equivalence under the function-way-result test, i.e., “an element in the accused device is equivalent to a claim limitation if it performs substantially the same function in substantially the same way to obtain substantially the same result.” Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir. 2008). An equivalence determination is normally reserved for a factfinder. Sage, 126 F.3d at 1423.

         2. May M-Edge Assert the DOE?

         Lifeworks contends that the Court should preclude M-Edge from asserting infringement by means of the DOE.

         Rule 804.1 of the Rules of the United States District Court for the District of Maryland (“Local Rules”) requires disclosure of “[w]hether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents.” Moreover, the Scheduling Order, issued January 20, 2015, required an Initial Disclosure of Infringement Contentions to be filed within 30 days that stated:

Whether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents in the Accused Instrumentality; Scheduling Order C.1.e., ECF No. 17.

         Except with regard to a limitation of Claim 3 not here at issue, [1] M-Edge's compliance with the Order consisted of generally stating that it might rely on the DOE if it turned out that it had to do so. Its Initial Disclosure [ECF No. 19] states:

To the extent the Defendant contends that a claim limitation in claims 1, 2, and 6 is not literally present in an Accused Product, Plaintiff contends that such limitation is met by the doctrine of equivalents.

         Initial Infringement Contentions 3, ECF No. 19.

         On May 23, 2016, M-Edge served its expert report that stated:

To the extent that the fact finder finds that in order to literally infringe, the holding sheet cannot consist of four separate corner pieces, then this limitation is infringed under the doctrine of equivalents. The holding sheet in the Accused Products performs substantially the same function (holding the electronic device) in substantially the same way (using elastic bands that lie in the same plane and apply a force towards the center of the device) to obtain substantially the same result (to make it easier for the user to install his or her device, to avoid covering the electronic elements of the electronic device, to allow devices of various sizes to be utilized by a single case, and to allow the case to have a low-profile) as the claim limitation.

         Malguarnera Expert Report ¶ 62, Def.'s Mot. Ex. H, ECF No. 112-11.

         This statement expressly disclosed that M-Edge intended to rely upon the DOE in regard to a specified limitation of the asserted claims and further stated the basis upon which it would rely for its DOE assertion.

         The local patent rules “are designed to require the parties to crystallize their theories of the case early in the litigation so as to prevent the shifting sands approach to legal argument.” Changzhou Kaidi Elec. Co. v. Okin Am., Inc., 112 F.Supp.3d 330, 332 (D. Md. 2015). The rules “seek to balance the right to develop new information in discovery with the need for certainty as to legal theories.” Paice LLC v. Hyundai Motor Corp., Civil No. WDQ-12-499, 2014 WL 3725652, at *3 (D. Md. July 24, 2014) (quoting O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006)). As such, the rules serve as tools to ensure that theories of infringement and invalidity are provided early enough to permit adequate preparation for trial. Id. (citing O2 Micro, 467 F.3d at 1365-66).

         M-Edge may have been in literal, albeit minimal, compliance with the Scheduling Order and Local Rule DOE disclosure requirement with its essentially meaningless “placeholder” statement. M-Edge was, by no means, in compliance with the spirit of the Rule and Order.[2] The parties may debate whether Lifeworks should have sought a more specific DOE disclosure by motion or through discovery. However, the Court finds that the appropriate course of action is to determine whether Lifeworks has suffered any substantial harm by virtue of M-Edge's actions and, if so, provide for any appropriate remedy.

         Lifeworks seeks a sanction against M-Edge that, in the context of the instant case, would essentially constitute a default judgment.[3] Lifeworks has not shown any prejudice resulting from the delay in M-Edge's disclosure that cannot be remedied at this time if, indeed, any remedy is needed. Since the M-Edge expert report was served in May of last year, Lifeworks was on notice of M-Edge's detailed DOE contention regarding the “sheet or mat” limitation of the claims at issue and the alleged factual basis for that contention. Lifeworks has taken the deposition of the M-Edge expert witness and may seek leave to conduct any further discovery that may be appropriate.

         The Court will not prohibit M-Edge from seeking to rely upon the DOE as set forth in its expert report. Nor will the Court strike any portion of Dr. Malguarnera's expert report.[4]

         IV. DISCUSSION

         The ‘910 Patent “relates generally to a protective casing or cover for an electronic device having a display, the protective casing or cover having a very low profile that can be unfolded to be configured as a stand for the electronic device.” ‘910 Patent 1:6-10.

         The invention is a “novel mounting system with bands” that can be used with tablets of various sizes. Opp'n 1, ECF No. 115. Sample ...


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