United States District Court, E.D. Michigan, Southern Division
OPINION AND ORDER DENYING DEFENDANT'S MOTION FOR
SUMMARY JUDGMENT OF NONINFRINGEMENT
ROBERT
H. CLELAND UNITED STATES DISTRICT JUDGE
Before
the court is Defendant Scholastic's Motion for Summary
Judgment of Noninfringement for its “Top Secret”
Ultraviolet Light Pens. (ECF No. 60.) The motion has been
fully briefed. (Zen Design's Response, ECF No. 63;
Scholastic's Reply, ECF No. 72; Zen Design's
Surreply, ECF No. 76.) Both parties have additionally filed
various exhibits under seal or in the traditional manner.
(ECF Nos. 64-69, 73-74.) The court held a hearing on June 20,
2019 and was given the opportunity to handle exemplars of the
pen at issue. For the reasons stated on the record at the
hearing, as well as those stated below, the court will deny
the motion.
I.
BACKGROUND
Plaintiff
Zen Design owns U.S. Patent No. 6, 860, 616,
“Ultraviolet Light Writing System, ” and filed
this infringement action against Scholastic based on
Scholastic's sale of certain invisible-ink pens. (ECF No.
6, PageID.34.) Pursuant to Markman v. Westview
Instruments, Inc., 517 U.S. 370 (1996), the parties
extensively briefed the issue of claim construction and the
court held a hearing, after which it issued an Opinion and
Order Construing Claims. (ECF No. 52.) The UV Light Writing
System patent contains 16 independent claims. (ECF No. 6-2,
PageID.48.) Claims 1, 7, 15, and 16 were construed by the
court. (ECF No. 52.) The present motion centers around the
part of Claim 1 that describes “a pen assembly having a
cap end and a pen tip end, said pen assembly mateably
attachable to said battery holder via both the cap end and
pen tip end.” (ECF No. 6-2, PageID.48.) The court
construed “mateably attachable” to mean
“configured to engage in a complementary manner.”
(ECF No. 52, PageID.1335.) Scholastic moves for summary
judgment that its Top Secret UV Light Pen does not infringe
Claim 1.
II.
STANDARD
Under
Federal Rule of Civil Procedure 56, summary judgment is
appropriate “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). The court considers “whether the evidence
presents a sufficient disagreement to require submission to a
jury or whether it is so one-sided that one party must
prevail as a matter of law.” Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 251 (1986). The evidence, and
all reasonable inferences drawn from it, must be considered
“in the light most favorable to the opposing
party.” Tolan v. Cotton, 572 U.S. 650, 657
(2014) (quoting Adickes v. S.H. Kress & Co., 398
U.S. 144, 157 (1970)).
“The
first step in the patent infringement analysis requires the
court to construe the scope and meaning of the asserted
claims.” E.I. du Pont De Nemours & Co. v.
Unifrax I LLC, 921 F.3d 1060, 1068 (Fed. Cir. 2019)
(citing Markman, Inc., 517 U.S. at 372-74). After
that, the court conducts “a comparison of the claims to
the accused device.” Id. at 1072-73 (citing
Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206,
1211 (Fed. Cir. 1998)). “[S]ummary judgment of
non-infringement can only be granted if, after viewing the
alleged facts in the light most favorable to the non-movant,
there is no genuine issue whether the accused device is
encompassed by the claims.” Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir.
1999) (citing Fed.R.Civ.P. 56(a); Liberty Lobby, 477
U.S. at 255).
III.
DISCUSSION
Scholastic,
as the party moving for summary judgment of noninfringement,
has the initial burden of showing “an absence of
evidence to support” Zen Design's infringement
claim. See Celotex Corp. v. Catrett, 477 U.S. 317,
325 (1986). The burden then shifts to Zen Design, who must
set forth enough evidence to raise at least a genuine issue
of material fact for trial. Id. at 324. The issue in
this motion is whether the pen assembly of Scholastic's
Top Secret UV Pen is “configured to engage in a
complementary manner” with its battery holder/cap on
the cap end of the pen assembly. Having reviewed the
evidence, the court finds that there are sufficient factual
disputes regarding whether the Pen infringes Claim 1 to
require submission to a jury.
Scholastic
provides the declaration of the Pen's designer (Mr. Roy
Yu), original technical drawings of the Pen, and exemplars of
the Pen itself as evidence that the pen cap is not
purposefully designed to engage with the cap end of the pen
assembly. (ECF No. 60-5.) Mr. Yu declares that while he
“purposefully designed the pen cap to engage the pen
tip end of the pen in a complementary manner, ” he
“did not purposefully design the pen cap to engage with
the back end of the pen in a complementary manner.”
(Id., ¶¶ 8-10.) He further explained that
from his own physical inspection of the Pen, “it is
clear that the inside circumference of the pen cap is smaller
than the outside circumference of the back end of the pen
barrel, such that the pen cap was not designed to be engaged
with or joined to the back end of the pen, ” and that
this is supported by the original technical specification
drawings. (Id., ¶¶ 11-13.) The court
inquired at the motion hearing whether a complementary fit
may arise between parts of a product in the absence of design
intent. Scholastic conceded it may but argued that this does
not show the parts are configured to fit together in
that way.
In
rebuttal, Zen Design argues that-regardless of Mr. Roy
Yu's subjective intent in designing it-the Pen is
configured such that the cap engages the back end of the pen
assembly in a complementary manner via a common
“friction fit.” It offers as evidence two YouTube
videos of children reviewing the Pen, which depict them
uneventfully putting the cap on the back end of the pen
assembly, and an advertisement by Scholastic for a UV Pen
depicting the cap on the back end. (ECF Nos. 63-6, 63-7,
63-8; 69.) It also offers the declaration of its expert
witness, Mr. Ralph Marciano, explaining various features of
the pen design that facilitate the friction fit. (ECF No.
63-2.) Scholastic challenges this argument with clips of its
video deposition of Mr. Marciano, which depict him handling
various commercially available pens that utilize friction
fits and comparing them to the pen at issue. (ECF No. 74.)
Viewing
the evidence in the light most favorable to Zen Design, as
the court must, it is not so one-sided as to permit summary
judgment of noninfringement. At a minimum, the YouTube videos
and advertisement proffered by Zen Design raise a genuine
triable issue regarding the configuration of the Pen. The
court's own observations of the exemplars' physical
characteristics reveal little, if anything, to the contrary.
While Scholastic briefly argues that the YouTube videos
should not be considered because they have not been properly
“authenticated” (ECF No. 72, PageID.1830), it
concedes that the videos do indeed feature the pen at issue.
The court finds that the videos are properly considered as
evidence here.
“To
satisfy the requirement of authenticating or identifying an
item of evidence, the proponent must produce evidence
sufficient to support a finding that the item is what the
proponent claims it is, ” such as the
“appearance, contents, substance, internal patterns, or
other distinctive characteristics of the item.”
Fed.R.Evid. 901(a), (a)(4). “Authentication is a
‘relatively low[] hurdle,' and may be proved
through a variety of methods, including circumstantial
evidence.” United States v. Quintana, 763
Fed.Appx. 422, 426 (6th Cir. 2019) (citing United States
v. Farrad, 895 F.3d 859, 878 (6th Cir. 2018); United
States v. Cosgrove, 637 F.3d 646, 658 (6th Cir. 2011)).
“Evidence is authentic when the proponent offers
‘sufficient proof . . . that a reasonable juror could
find in favor of authenticity.'” Id.
(quoting United States v. Jones, 107 F.3d 1147, 1150
n.1 (6th Cir. 1997)). Because the YouTube videos clearly
display the Top Secret UV Pen, identifiable by its name,
packaging, appearance, and operation, there is sufficient
evidence for a jury to find that the videos are what Zen
Design claims they are.
In
conclusion, the evidence raised by Zen Design in rebuttal to
Scholastic's motion raises genuine issues of material
fact about whether the Top Secret UV Pen infringes Claim 1 of
its patent. Accordingly, IT IS ORDERED that Defendant's
Motion for Summary Judgment of Noninfringement ...