United States District Court, D. Maryland
MEMORANDUM AND ORDER RE: SUMMARY JUDGMENT
J. Garbis United States District Judge
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.
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
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.
SUMMARY JUDGMENT STANDARD
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.
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).
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).
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).
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.”
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)).
Infringement by the Doctrine of Equivalents
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.
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.
May M-Edge Assert the DOE?
contends that the Court should preclude M-Edge from asserting
infringement by means of the DOE.
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.
with regard to a limitation of Claim 3 not here at issue,
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.
Infringement Contentions 3, ECF No. 19.
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
Expert Report ¶ 62, Def.'s Mot. Ex. H, ECF No.
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.
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).
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. 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
seeks a sanction against M-Edge that, in the context of the
instant case, would essentially constitute a default
judgment. 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.
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
‘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.
invention is a “novel mounting system with bands”
that can be used with tablets of various sizes. Opp'n 1,
ECF No. 115. Sample ...