The opinion of the court was delivered by: ROBERT PATTERSON, Senior District Judge
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"),
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,
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.
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."
(Pl. Mem. in Supp., dated April 8, 2003 ("Pl. Mem."), at 4 (citing
the `887, `883 patents) (alterations in original).)
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.
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
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
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 ...