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Sienna, LLC v. CVS Corp.

January 3, 2007

SIENNA, LLC, PLAINTIFF,
v.
CVS CORPORATION AND EVERSTAR MERCHANDISE CO., LTD., DEFENDANTS.



The opinion of the court was delivered by: Denise Cote, District Judge

OPINION & ORDER

This patent case concerns twinkling lights. Strings of lights that "twinkle" are in fact composed of both twinkling and steady-burn light bulbs. This design is necessary since too many twinkling bulbs in a single string create a risk of fire. Addressing this danger, the plaintiff's invention prevents the consumer from substituting twinkling light bulbs for steady-burn bulbs by designing an incompatible, non-standard shape for the twinkling light bulb and its socket. The defendants have copied the invention. They contend that they have not actually infringed the plaintiff's patent, however, because they have also added a few hybrid sockets to their strings of lights, that is, sockets which accept both the standard and non-standard shaped bulbs. These additions are inadequate to escape a finding of infringement.

Plaintiff Sienna, LLC ("Sienna") brought this action in May 2006 against CVS Corporation ("CVS") and Everstar Merchandise Co., LTD. ("Everstar"), alleging that defendants have infringed Sienna's United States Reissued Patent No. RE38,909 (the "'909 Patent"), which covers a twinkle light set. Defendants bring this motion for summary judgment, arguing that the '909 Patent is invalid for indefiniteness, and that their twinkle light sets do not in any event infringe the patent. Plaintiff cross-moves for summary judgment. For the reasons stated below, plaintiff's motion for summary judgment is granted.

Background

There are few factual disputes. Where they exist, the evidence is taken in the light most favorable to the defendants.

The Problem

The '909 Patent is a reissue of United States Patent No. 6,474,841 (the "'841 Patent"), which was invented by Sienna's Chief Engineer Najeh Rahman ("Rahman"). The object of the '841 and '909 Patents was to provide a safer twinkle light set. Decorative light sets typically have some combination of three different types of light bulbs: steady-burn bulbs, flashing bulbs, and individual flashing or "twinkle" bulbs. A steady-burn bulb stays lit as long as the light set is plugged in. A flashing bulb has a filament that opens and closes as the bulb heats and cools, causing the lamp to cycle off and on. Because most light sets are wired in a series like a chain, if there is one flashing bulb in the series, that bulb causes all the bulbs in a light string to cycle on and off with the flashing bulb and flash simultaneously.

In contrast, a twinkle bulb flashes on and off individually. It has an internal shunt circuit which allows the electricity to continuously flow through the bulb so that the remaining bulbs in the circuit can stay lit even when the twinkle bulb is off. This feature, however, creates a risk of fire. Because the resistance in the shunt circuit is much lower than the resistance in a filament, if a large number of twinkle bulbs happen to flash off simultaneously, the current passing through the entire light set can increase significantly. To avoid this potentially dangerous situation, manufacturers limit the number of twinkle bulbs to less than half of the bulbs in a light set. The '841 Patent was designed to prevent consumers from increasing the number of twinkle bulbs in a set by substituting a twinkle bulb for a steady-burn bulb.

The '841 Patent

The '841 Patent included only eight claims. In a June 4, 2002 Final Office Action, the U.S. Patent and Trademark Office ("PTO") rejected the '841 application because inter alia it lacked definitions for certain terms and for obviousness. Sienna filed an Amendment that added definitions for terms such as standard bulb socket, non-standard bulb socket, and nonstandard twinkle bulb. The application was then approved and the '841 Patent was issued on November 5.

Due to the PTO's error, however, the '841 Patent as issued failed to include any of the definitions Sienna had provided. In addition, Sienna found that the claims in the '841 Patent included an unnecessary limitation because the patent required not only that standard bulb sockets only receive standard bulbs, but also that non-standard bulb sockets receive only nonstandard bulbs, when there is no harm in having a standard bulb fit into a non-standard bulb socket. Therefore, Sienna sought to reissue the patent with the definitions added and without the unnecessary limitation.

Subsequent to filing the reissue application, Sienna learned of a twinkle light set manufactured by GE (the "GE light set"). Sienna filed an Information Disclosure Statement, disclosing the GE light set as prior art. The GE light set consisted of a string of lights with both twinkle and steady-burn bulbs. The twinkle bulbs had bulb bases and sockets that were colored dark green and "coordinatingly keyed"; the steady-burn bulbs and sockets were colored light green and were round. Sienna asserted that in the GE light set, a twinkle bulb could be placed in a steady-burn bulb's socket "without the use of force," which according to Sienna's counsel Neil M. Zipkin ("Zipkin"), "defeat[ed] the safety provisions disclosed and claimed" in the Sienna invention.

In an October 26, 2004 interview with a PTO examiner, Zipkin asserted that "with extra force" he could insert a twinkle bulb into a steady-burn bulb's socket in a GE light set. The PTO examiner further noted that "ecessive [sic] force" was required for "both insertion and detachment of the bulb base from the assembly" in the GE light set. The examiner concluded that Sienna needed to claim "additional structural limitations which would make it technically infeasible to make the bulb base of one category insertable in the socket of the other category." Sienna amended its patent application accordingly.

The '909 Patent Claim 1 of the '909 Patent describes (emphasis added): A twinkle light set comprising: alternately from one end of said light set to an opposite end of said light set, at least one standard bulb socket electrically operatively receiving a standard bulb, whether a conventional steady burning or a conventional flashing bulb, and at least one non-standard bulb socket electrically operatively receiving a non-standard twinkle bulb; said standard and non-standard bulb sockets being configured and dimensioned to electrically operatively receive only standard and non-standard bulbs, respectively; said standard bulb socket being configured and dimensioned and not to electrically operatively receive a non-standard bulb because of interference of a laterally larger exterior dimension of the non-standard bulb with a laterally smaller interior dimension of said standard bulb socket, notwithstanding the use of excessive manual force to attempt to overcome such interference.

The specification provides six definitions, including definitions for a standard bulb socket, a non-standard bulb socket, and a non-standard twinkle bulb. A standard bulb socket is defined as (emphasis added): a conventional socket configured and dimensioned to operatively receive a conventional standard bulb, --whether it be a conventional flashing lamp, an individual-flashing lamp or a steady-burning lamp -- and to not operatively receive a non-standard twinkle bulb according to the present invention.

A non-standard bulb socket is defined as (emphasis added): a socket according to the present invention configured and dimensioned to operatively receive only a non-standard twinkle bulb according to the present invention and not to operatively receive a conventional bulb.

Finally, a non-standard twinkle bulb is defined as (emphasis added): a twinkle bulb according to the present invention which is configured and dimensioned to be operatively received only in a non-standard bulb socket according to the present ...


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