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A&E PRODUCTS GROUP, L.P. v. MAINETTI USA INC.

United States District Court, S.D. New York


February 5, 2004.

A&E PRODUCTS GROUP, L.P., Plaintiff, -against- MAINETTI USA INC., et al., Defendants

The opinion of the court was delivered by: ROBERT PATTERSON, Senior District Judge

OPINION AND ORDER

Plaintiff A&E Products Group, L.P., moves, pursuant to Rule 56 of the Federal Rules of Civil Procedure, for a finding of infringement of U.S. Patent Nos. 5,485,943 ("`943 patent"), Page 2 5,613,629 ("`629 patent"), and 6,145,713 ("`713 patent") by defendants Mainetti USA Inc., Mainetti S.p.A. and Mainetti (HK) Ltd. (collectively, "Mainetti").

 I. SUMMARY JUDGEMENT STANDARD

  "A patent infringement analysis involves two steps: 1) claim construction and 2) application of the properly construed claim to the accused product." TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002), cert. denied, 537 U.S. 995 (2002): see also Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986) (stating that moving party has the initial burden of demonstrating the absence of a disputed issue of material fact); Kegel Co., Inc. v. AMF Bowling, Inc., 127 F.3d 1420, 1425 (Fed. Cir. 1997) (stating that plaintiff has the burden of proving patent infringement by a preponderance of the evidence).

  In comparing the construed claim to the accused device, the Court must determine that the accused device meets each claim limitation, either literally or by a substantial equivalent. See Catalina Mktg. Int'l v. Coolsavings.com, Inc., 289 F.3d 801, 807-08 (Fed. Cir. 2002). Summary judgment is appropriate where only one conclusion as to infringement could be reached by a reasonable jury. TechSearch, 286 F.3d at 1369.

 II. DISCUSSION

  Plaintiff states that Mainetti hangers and side sizers are based upon the design disclosed in two patents owned by Mainetti, U.S. Patent Nos. 5,687,887 ("`887 patent") and 5,950,883 ("`883 patent") (collectively, "Mainetti Patents"), whose stated objectives are "to provide a side sizer marker for a hanger which can be firmly mounted in place without rocking . . . which can be mounted on a hanger in a fixed manner and cannot be removed by hand and which requires a special tool for removal, [and] which can be mounted on a hanger in a child-resistant manner." Page 3 (Pl. Mem. in Supp., dated April 8, 2003 ("Pl. Mem."), at 4 (citing the `887, `883 patents) (alterations in original).)

  A. The W157S Sample

  Plaintiff has provided the Court with a sample of the allegedly infringing hangers and tabs, Mainetti hanger and tab model W157S, which plaintiff states are based upon designs disclosed in the Mainetti Patents. (See id. at 11, 17.)

  Both sides have agreed that W157S is representative of the alleged infringing item. Defendants maintain that the structure of W157S is not the same as that shown in their `883 and `887 patents.*fn1 (Tr. of Dec. 15, 2003 Argument at 82.) W157S does not bear any patent number and the Court's examination shows that W157S does not conform to patents `887 or `883, which include as an objective "to provide a side sizer marker for a hanger which can be firmly mounted in place without rocking" (Pl. Mem. at 4). The sizer tab on the W157S tab holder can be rocked.*fn2 Accordingly, the W157S hanger differs from that objective of the `887 and `883 patents.

  Examination of W157S also reveals differences from plaintiff`s `943, `629, and `713 patents. These differences lead the Court to find: (a) plaintiff has not shown that there is no genuine issue of material fact on the issue of infringement and (b) a reasonable jury could reach the conclusion that W157S does not infringe the `943, `629, or `713 patents. Page 4

  First, as stated in the Court's Markman opinion and order dated December 18, 2002, the claims of the plaintiff's patents, including the `943, `629, and `713 patents, are read in the light of the Court's examination of the specification and drawings that accompanied each patent. A&E Prods. Group, L.P. v. Mainetti United States, 2002 U.S. Dist. LEXIS 24280, at *13 (S.D.N.Y. Dec. 18, 2002). The specifications and drawings are the same in all the Zuckerman patents and reveal that plaintiff's tab holder is molded onto a plane of plastic between the hook and hanger body. (Hand Supp. Decl., dated June 13, 2003, Exs. 1-6.) In general, the plaintiff's tab holders contain a free edge to receive the sizer tab and two raised sides to embrace the ends of the sizer tab within which area the tab holder consists of a plane surface*fn3 with either two longitudinal ridges or a single longitudinal ridge. These longitudinal ridges, in conjunction with a longitudinal rib on the inside of the opposing tab sides, obstruct the removal of the tab. None of the drawings, specifications, or claims in the Zuckerman patents suggest that the plane surface would contain a gap*fn4 within the tab holder area. (Decl. of Ira E. Silfin, dated May 23, 2003, Exs. 1-6.) Indeed, the drawings show no gap in the plane surface. (Id.) In the allegedly infringing article (W157S), the tab holder is also constructed on a plane of plastic between the hook and hanger body, and contains a free edge and two sides, as well as a back side with a one-eighth of an inch gap in the plane surface between the two sides of the tab holder and adjacent to the back side. (Id., Ex. 1, 3.) The Court's examination of W157S found that the gap enables the tab to be Page 5 rocked on the tab holder, thereby allowing a finger purchase on the tab for removal from the tab holder. Samples of plaintiff's patented hangers do not permit rocking of the tab on the tab holder and removal in this manner.

  Moreover, on W157S, the tab is locked to the tab holder by means of three longitudinal ribs in the inner surface of each of the tab sides, the first two ribs of which engage the two ridges on the surface of the tab holder. The third rib on the tab is somewhat larger and, when the tab sizer is attached to the tab holder, extends beyond the inner edge of the tab holder adjacent to the gap in the plane surface, at which position the foremost edges of the opposing tab sides are near to but not touching the back side of the tab holder. The two combinations of ribs and ridges — 1) the position of the third rib on the inner surface of the opposing tab sides so that it is adjacent to the inner edge of the plane surface and the second longitudinal ridge of the tab holder, and 2) the interlocking of the first two ribs with the tab holder's longitudinal ridges — tend to obstruct removal by means of pulling on the tab.

 B. Plaintiff's Motion

  Plaintiff's motion is based on the declaration of Edwin Zucker. Mr. Zucker is a professional engineer designated as an expert witness by plaintiff. (Zucker Decl. ¶ 1.) The Zucker Declaration purports to examine W157S in the light of the claims of the `943, `629 and `713 patents. (Id. ¶ 5-6.)

  1. `943 Patent

  The Zucker Declaration is accompanied by photographs of the allegedly infringing article which, due to its opaque plastic surface, do not clearly reveal that the W157S tab holder in fact has two ridges which run longitudinally across the plastic plane between the gap in the plane Page 6 surface and the free edge. (Id., Ex. 3.) Mr. Zucker's photographs designate the ridges on the W157S tab holder as the "1st Ridge" on the tab holder, and designate the back side of the W157S tab holder as the "2nd Ridge."*fn5 (Id.) Based on this analysis and reading from the claims of the `943 patent, Mr. Zucker states that on W157S "[e]ach of the tab sides has a rib for cooperatively engaging the first ridge of the tab holder in order to lock the tab onto the tab holder," and a "second ridge . . . being configured and dimensioned to obstruct access to the foremost edges of the tab sides" as claimed in the `943 patent. (Id. ¶ 13, 15; see id., Ex. C, col. 4, 11. 7-9, 14-16 (`943 patent).) He concludes that W157S infringes on claim 1 of the `943 patent. (Id. ¶ 22.)

  The `943 patent does claim that each tab side has "a rib for cooperatively engaging [the] first ridges to lock [the] tab to [the] tab holder."*fn6 (Id. Ex. C, col. 4, 11. 8-9.) W157S, however, has not one but three longitudinal ribs on the inside of each of the opposing tab sides: the first two of which interlock with the two longitudinal ridges on the tab holder and the third which interacts with the second ridge to present removal by pulling. W157S contains a gap in its plane surface; no such gap is displayed or referred to in the `943 patent's claims, specifications or drawings. Mr. Zucker's Declaration treats the two longitudinal ridges on each side of the plane surface of the W157S tab holder as a single first ridge and the back side of the tab holder as a "second ridge" instead of as a third ridge. He also treats the three ribs on the inner surface of the Page 7 tab sides of W157S as if they were the single rib on the inside surface of each of the tab sides of the `943 patent. Given these variances in W157S from Mr. Zucker's Declaration, a reasonable jury could conclude there is no infringement of the `943 patent by W157S.

  2. `629 Patent

  The Zucker Declaration compares W157S to the `629 patent and designates the back side of the W157S tab holder as the single "longitudinal ridge which extends from the two opposite sides" and "spaced from the free edge," as described in the claims of the `629 patent. (Id. ¶ 27; Id., Ex. 10; see id., Ex. D, col. 3, 11. 66 to col. 4, 11. 2 (`629 patent).) The Zucker Declaration again fails to take note of the gap in the plane surface of the W157S tab holder; as a result of this gap, his "longitudinal ridge" is not spaced back on the plane surface "from [the] free edge" of the tab holder as described in the claims of the `629 patent when read in light of the specifications and drawings. (See id., Ex. 10; Id., Ex. D, col. 3, 11. 66 to col. 4, 11. 4 (`629 patent).) The Declaration also fails to take note of the two longitudinal ridges on each side of the plane surface of the tab holder of the W157S tab holder which "extend[] from [the] two opposing sides" and are "spaced" on the plane surface closer "from [the] free edge" (id., Ex. D, col. 4, 11. 1-2 (`629 patent)); these two longitudinal ridges also act to interlock with the two smaller ribs on the inner side of its opposing tab sides. (See id., Exs. 3, 5(b).) The Declaration also fails to demonstrate any means by which the tab of the `629 patent is locked to its tab holder as claimed in the `629 patent. (See id., Ex. D, cols. 4-5 (`629 patent).) Accordingly, a reasonable jury could conclude that W157S does not infringe the `629 patent. Page 8

  3. `713 Patent

  The Zucker Declaration again designates the back side of the W157S tab holder (Id. ¶ 38; Id., Ex. 15), as the single "longitudinal ridge" "extending from [the] two exposing [sic] sides and spaced from [the] free edge" described in the claims of the `713 patent (Id., Ex. E, col. 4, 11. 10-11). The Zucker Declaration also states that the W157S tab holder has two ridges (Id. ¶ 38), but then does not identify these ridges as longitudinal ridges but instead identifies the "longitudinal ridge" as the back side of the tab holder.*fn7 (Id., Ex. 15.) The Zucker Declaration fails to note that the two longitudinal ridges on W157S are "spaced" closer "from [the] free edge of the tab holder" than his designated longitudinal ridge. (Id., Ex. 15; Id., Ex. E, col. 4, 11. 12-13 (`713 patent).) Thus, if the back side of the tab holder is counted as a longitudinal ridge, Mr. Zucker fails to note that W157S has three longitudinal ridges extending from each side of the tab holder while the `713 patent claims a single "longitudinal ridges extending from [the] exposing [sic] sides" of the tab holder (Id., ex E, col. 4, 11. 10-11). The Zucker Declaration also fails to note that the two longitudinal ridges on each side of the W157S tab holder interlock with the two small ribs on the inner side of the opposing sides of the tab (see id., Ex. 3a, 5b), and also fails to demonstrate any means by which the tab of the `713 parent is "locked onto [the] tab holder" as claimed in the `713 patent (id., Ex. E, col. 4, 11. 24-29). In Exhibit 15, Mr. Zucker notes the gap in the plane surface of W157S, but in his comparison with the claims of the `713 patent, the Declaration fails to mention that the gap in the plane surface interrupts the space on the plane surface such that his single "longitudinal ridge" is not "spaced " on the plane surface "from the Page 9 free edge" of the tab holder as described in the claims of the `713 patent, read in conjunction with the specifications and drawings. (Id., Ex. E, col. 4, 11. 10-11.)

  Accordingly, a reasonable jury could conclude that W157S does not infringe the `713 patent.

 III. CONCLUSION

  Accordingly, plaintiff's motion pursuant to Rule 56 of the Federal Rules of Civil Procedure for a finding of infringement of the `973, `629, and `713 patents is denied.

  IT IS SO ORDERED.


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