The opinion of the court was delivered by: Michael A. Telesca United States District Judge
Plaintiff Izzo Golf, Inc., ("Izzo") brings this action pursuant to federal patent law, (codified at 35 U.S.C. § 100 et. seq.), claiming that defendant King Par Golf, Incorporated ("King Par") has infringed Izzo's United States Patent No. 5,042,704 (filed March 23, 1990)(hereinafter "the '704 patent"), by manufacturing and selling golf bags with straps for carrying the bags that infringe upon claims 1, 2, 7, 8, 11 and 14 of the '704 patent. The '704 patent, entitled "Dual Strap Carrying System for Golf Bags" generally discloses a strap designed to evenly distribute the weight of a golf bag across both shoulders of the person carrying the bag. The strap system can also be used to carry a golf bag across only one shoulder.
On November 30, 2005, a hearing was held by the Honorable Charles J. Siragusa of this court pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996) for the purpose of construing the disputed claims of the '704 patent.*fn1 In a Decision and Order dated July 26, 2006, Judge Siragusa construed the meaning of the disputed claim terms found in Claims 1, 2, 7, 8, 11, and 14 of the '704 patent.
King Par now moves for summary judgment on the issues of infringement and validity of the patent claiming that there are no material issues of fact in dispute, and that as a matter of law, its golf bags do not infringe upon any of the claims of the '704 patent, and that Claim 14 of the '704 patent is invalid. For the reasons set forth below, I grant-in part and deny in-part defendant's motion for summary judgment on the issue of infringement, and deny without prejudice defendant's motion for summary judgment on the issue of the validity of Claim 14 of the '704 patent.
I. The Patented Invention
United States Patent 5,042,704 discloses a dual strap carrying system for golf bags. The crux of the invention is the utilization of two straps to carry the bag across both shoulders, rather than the use of a single strap (as traditionally found on golf bags) to carry the bag over a single shoulder. By carrying the bag across both shoulders instead of one, the weight of the bag is more evenly distributed across the entire back of the person carrying the bag, and the person carrying the bag experiences less strain and muscle fatigue which typically occurs when the entire weight of the bag is imbalanced, and borne by only one shoulder. As stated in the background section of the patent:
A disadvantage to [the single strap] system . . . results from the fact that the entire weight of the golf clubs and ba[g] . . . strains the muscles of the neck and shoulders unduly and further causes muscular strain resulting from the imbalanced nature of this method of carriage. Indeed, the imbalance can cause associated muscle soreness in the hips and the lower back due to the fact that the center of gravity of the bag is offset with respect to the spine. This is of particular concern to those golfers who experience back problems. '704 Patent at col. 2, lns. 3-15.
Although the strap disclosed in the '704 Patent is designed to be used for carrying a bag over both shoulders, a feature of the invention is that because of its design, it can also be utilized to carry the bag over a single shoulder if the user prefers to carry his or her bags in the more traditional method. '704 Patent at col. 2, lns. 43-45. Another important feature of the strap is that because of its design, it can be retro-fitted to work with existing, traditional golf bags. '704 Patent at col. 2, lns. 32-36.
There are two types of bags manufactured by the defendant that are in dispute. The parties have referred to the bags as the "new-style bags" and the "old-style bags." Illustration 1 below depicts the new-style bag, and Illustration 2 depicts the old-style bag. As can be seen from the illustrations, the new-style bag utilizes a dual-strap that is attached at four locations, two near the open-end of the bag, and two below the handle. The old style bag also contains four attachment points: one of which is near the open-end of the bag, one at the top of the handle, another at the bottom of the handle, and the final attachment point below the handle.
Plaintiff objects that the above illustrations, which were requested from the defendant by the court following briefing of the motion and argument of the motion before Judge Siragusa, on grounds that the perspective chosen for the drawings obscures some of the attachment locations, and that the drawings do not accurately depict how those attachment points can be aligned along an axis. I find, however, that the renderings are fair and accurate depictions of the new and old-style bags.
III. The Asserted Claims of the '704 Patent and Construction of the Disputed Claim Terms
Izzo contends that King Par is infringing three independent claims of the '704 patent: Claims 1, 8, and 14. Claim 1 of the '704 discloses:
In a golf bag adapted to receive a set of golf clubs which each have a club head and an elongated shaft, said golf bag being in the form of an elongated tube including a surrounding sidewall, a closed end and an open end whereby the shafts of said golf clubs may be longitudinally inserted into said golf bag through the open end so that said golf clubs are stored in a position with the club heads projecting out of said golf bag proximate the open end, the improvement comprising a strap assembly adapted to permit a person to carry said golf bag on either or both shoulders, said strap assembly including a single strap comprising a first strap portion including a first central pad, a first strap portion first end attached on one end of said first central pad and a first strap portion second end attached on another end of said first central pad whereby said first strap portion has a first strap first end secured to said golf bag at a first location proximate said open end and a first strap portion second end secured to said golf bag at a second location axially spaced from the first location so that said first strap portion defines a first strap portion opening, and including a second strap portion including a second central pad, a second strap portion first end attached on one end of said second central pad and a second strap portion second end attached on another end of said second central pad whereby said second strap portion has a second strap portion first end secured to said golf bag proximate the second location and having a second strap portion second end secured to said golf bag at a third location axially spaced from the second location between the second location and said closed end to define a second strap portion opening, said first and second strap portions being sized so that one arm of the person can be inserted through the first strap portion opening and another arm of the person can be inserted through the second strap portion opening whereby said golf bag may be supported by said first strap portion extending across one shoulder of the person and by said second strap portion extending across another shoulder of the person.
While at first glance the language of Claim 1 may appear unduly cumbersome, the claim, in its most basic terms, discloses a dual strap system for carrying a golf bag in which either one or both straps can be used to carry the bag over either shoulder or both shoulders of the person carrying the bag. As will be discussed further below, the claim also contains a number of limitations defining the scope of the dual strap system.
Claim 8 of the '407 patent discloses:
A golf bag adapted to receive a set of golf clubs for transport by a person, comprising: an elongated tubular body having a longitudinal axis and including a surrounding sidewall, a closed end and an open end such that golf clubs may be inserted into said tubular body through said open end; a shoulder strap assembly including first and second shoulder strap elements, said first strap element having a first strap end portion and a first strap element free end opposite said first strap end portion and said second strap element having a second strap element end portion and a second strap element free end opposite said first end portion; first mounting means on said golf bag at a first location, said first mounting means connected to said first strap element free end for securing said first strap free end to said golf bag at the first location; second mounting means on said golf bag at a second location axially spaced from the first location, said second mounting means connected to said first and second strap end portions for securing said end portions to said golf bag at the second location; third mounting means on said golf bag at a third location axially spaced from the second location between the second location and said closed end wherein, said third mounting means secures said second strap element free end to said golf bag at the third location; and said first and second shoulder strap elements sized to form first and second strap openings respectively when secured whereby the person may selectively carry said golf bag across one shoulder with only said first strap element and selectively carry said golf bag with both shoulders in a fully supported state by inserting his/her arms respectively through the first and second strap openings so that said golf bag is suspended from and supported by both shoulders with said golf bag oriented transversely across the back of the person.
Finally, Claim 14 of the '704 patent discloses:
In a golf bag to be carried by a person, a golf bag having an elongated enclosure including a surrounding sidewall, a closed end and an open end whereby golf clubs may be inserted lengthwise into said golf bag through the open end, the improvement comprising: a shoulder strap assembly disposed externally of said sidewall including first and second strap members, each of said strap members having opposite ends; first and second securing means for securing each of said opposite ends of said first strap member to longitudinally spaced locations on said sidewall including a first location proximate said open end and a second location longitudinally spaced from said first location whereby said first strap member defines a first strap opening through which one arm of the person can be inserted; and third and fourth securing means for securing each of said opposite ends of said second strap member to longitudinally spaced locations on said sidewall to define a second strap opening that another arm of the person can be inserted through said second strap opening whereby said golf bag can be selectively supported on one shoulder by said first strap member to incline downwardly across the back of the person carrying said golf bag and can be selectively supported on both shoulders by said first and second strap members with said golf bag extending transversely across the back of the person carrying said golf bag.
B. Construction of the Disputed Terms of the '704 Patent
Pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) ("Markman"), the parties requested that the court construe the disputed claim terms of the asserted claims. On November 30, 2005, the Honorable Charles Siragusa held a Markman hearing at which the parties set forth their respective positions as to how the claim terms at issue should be construed, and thereafter, on July 26, 2006, Judge Siragusa issued a Decision and Order construing the disputed claim terms (hereinafter "the Markman Ruling").
With respect to the disputed term "end" or "strap end," Judge Siragusa defined that term as "the point where one designated section of strap ends and another begins." Markman Ruling at pp. 13-14. A strap end need not be affixed directly to the golf bag. Id. The term "secured to said golf bag" was defined by Judge Siragusa as meaning that "a strap end is attached to the outer surface of the golf bag by a securing means." Markman Ruling at p. 15. According to Judge Siragusa's construction, a "securing means" is "any means used to secure a strap to a golf bag disclosed in the specification, i.e., rings, clips, straps, and any equivalents thereof." Markman Ruling at p. 14. A "strap opening" is defined as "an opening for the arm of a user, formed by a section of strap as it extends from one securing point to another." Markman Ruling at p. 15.
Two additional terms were construed by Judge Siragusa in his Markman Ruling. Judge Siragusa defined the term "axially spaced" as referring to objects that are "located on, or around, or in the direction of an axis." Markman Ruling at p. 11. In so holding, Judge Siragusa specifically explained that the term "axially spaced" does not apply to "attachment points that are permanently circumferentially offset, such that they are incapable of being axially aligned." Markman Ruling at p. 12. Judge Siragusa further held that the term "longitudinally spaced" attachment points, as used in Claim 14, had a meaning distinct from the term "axially spaced" attachment points, and referred to attachment points that are "spaced lengthwise along the golf bag, without regard to being positioned in relation to an axis." Markman Ruling at p. 13.
I. Defendant's Motion for Summary Judgment
Based on the court's construction of the disputed Claims of the '704 patent, King Par moves for summary judgment on grounds that its golf bags and straps do not infringe the '704 patent, and that Claim 14 of the '704 Patent is invalid. Although normally the question of whether or not a product infringes on a patent is a question of fact to be determined by the trier of fact, where there are no relevant facts in dispute, the question of literal infringement collapses into one of claim construction, "and is thus amenable to summary judgment." Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1578 (Fed. Cir. 1996). See also Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 39 n. 8 (1997)(summary judgment also appropriate on issue of infringement under the doctrine of equivalents).
Izzo opposes defendant's motion and argues, inter alia, that because every element of the applicable disputed claims is present in the accused devices, the King Par bags infringe the '704 patent. Izzo also contends that defendant's motion must be denied because defendant has failed to support its motion with admissible evidence upon which a motion for summary judgment could be granted. In support of this contention, plaintiff argues that King Par: (1) has failed to submit expert testimony on the issue of infringement; (2) has submitted unauthenticated exemplars of purported King Par bags preventing the court from comparing the accused King Par bags to the '704 Patent; and (3) relies on attorney affidavits in violation of Rule 56(e) of the Federal Rules of Civil Procedure which provides that affidavits in support of or opposition to a motion for summary judgment must be made on personal knowledge.
I find however, that defendant's motion is adequately supported by admissible evidence, and does not unduly rely on attorney affidavits. Defendant has submitted actual golf bags to the court representing the accused products. Plaintiff has had an opportunity to inspect these bags and object to them as not being representative of the accused bags, and no such objection has been made. Further, plaintiff has not objected that the bags submitted to the court do not represent all of the accused products.
Accordingly, I find that the bags submitted to the court constitute admissible evidence, and are accurate and complete examples of the accused King Par products.
Moreover, I find that defendant is not required to submit expert testimony on the issue of infringement in this case. While expert testimony may be particularly useful to the court for purposes of determining the meaning of disputed claims, the state of the art in the field of the invention, and the level of ordinary skill in a particular art, in cases where the art at issue is not highly technical, the Federal Circuit Court of Appeals has "never required a party to proffer expert testimony on claim interpretation or on the application of claim language to accused devices." Moleculon Research Corporation v. CBS, INC., 793 F.2d 1261, 1270 (Fed. Cir. 1986)(emphasis in the original)(dismissing argument that expert testimony was necessary to determine infringement issues with respect to the popular "Rubik's Cube" puzzle game as "border[ing] on the frivolous.")
II. The "New Style" King Par Golf Bag does not Infringe the '704 Patent
Generally, an accused product will be found to infringe upon a patent if "each properly construed claim element reads on the accused product or process." Herbert F. Schwartz, Patent Law and Practice 167 (5th ed. 2006). If a claim is expressed in means-plus-function language, literal infringement occurs "only when the accused product (a) employs means identical to the means disclosed in the patent's specification to perform the identical function of the claim or element or (b) employs means that is the structural equivalent to the means disclosed in the patent's specification to perform the identical function of the claim element." Schwartz, Patent Law and Practice at 168 (citing Frank's Casing Crew & Rental Tools, Inc. v. Weatherford Int'l, Inc., 389 F.3d 1370, 1376, (Fed. Cir. 2004)).
In cases where an accused product does not literally infringe upon a patent claim, infringement may still be found under the doctrine of equivalents. "An accused product that does not literally infringe a claim may infringe under the doctrine of equivalents if `it performs substantially the same function in substantially the same way to obtain the same result.'" Southwall Technologies v. Cardinal IG Co., 54 F.3d 1570, 1579 (quoting Graver Tank & Manufacturing Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 608 (1950)).
In the instant case, plaintiff contend that the defendant's new-style bag infringes the '704 patent both literally and under the doctrine of equivalents. I find, however, that the new-style bag lacks several key elements of the '704 patent, ...