Professional Documents
Culture Documents
Defendants.
____________________________________/
ORDER GRANTING DEFENDANT, JL GORY LLC d/b/a THE AIR LINE BY J.SINK’S
MOTION FOR SUMMARY JUDGMENT
This Cause is before the Court upon Defendant JL Gory's Motion for Summary Judgment
as to Infringement [DE 69], filed herein on October 29, 2010. The Court has carefully
considered the Motion, Defendant’s Statement of Undisputed Facts [DE 69-6], Plaintiff’s
Memorandum in Opposition to Defendant JL Gory, LLC’s Motion for Summary Judgment [DE
92], Plaintiff’s Statement of Facts in Response to the Statement of Facts Filed by Defendant JL
Gory, LLC [DE 92-1], Defendant Gory’s Reply [DE 100], the supporting documentation, the
arguments presented before the undersigned at the hearing on December 17, 2010, and is
I. BACKGROUND
Plaintiff filed the above-styled action against Defendants JL Gory, LLC d/b/a the Air Line
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by J. Sink (“Gory”), Lamartec, Inc. (“Lamartek”)1, Sink Enterprises, Inc. (“Sink Enterprises”), S.
Janet Sink, Joseph R. Sink (collectively, “Defendants”) on February 11, 2009. [DE 1]. The
Complaint alleges two causes of action: patent infringement (U.S. Patent No. 6,132,142) (Count
I) and patent infringement (U.S. Patent No. 6,712,557) (Count II). The Court has original subject
matter jurisdiction of this action pursuant to 28 U.S.C. § 1331 and 1338(a) based upon the patent
laws of the United States contained cited in Plaintiff’s Complaint, 35 U.S.C. § 1 et seq.
According to the Complaint, Plaintiff Trebor is a Florida corporation with its principal
place of business in Fort Lauderdale, Florida. Defendant Gory is a Florida limited liability
company, doing business throughout the state of Florida under the fictitious name “The Air Line
by J. Sink.” Defendant Sink Enterprises (originally named “The Air Line by J. Sink, Inc.”) was a
Florida corporation administratively dissolved by the State of Florida on September 26, 2008.
Defendants Janet and Joseph Sink are individuals residing in the state of Florida who were
officers of Defendant Sink Enterprises and, together, controlled, authorized, and directed the
The Complaint states that, on October 17, 2000, the United States Letters Patent No.
6,132,142 (“the ‘142 patent”) was issued for an invention entitled “DROP WEIGHT DIVE
BELT,” listing Robert M. Carmichael as the inventor. Additionally on March 30, 2004, the
United States Letters Patent No. 6,712,557 (“the ‘557 patent”) was issued for an invention
entitled “DROP WEIGHT DIVE BELT,” listing Robert M. Carmichael as the inventor. On
February 9, 2009, inventor Robert M. Carmichael assigned all right, title, and interest in and to
1
Defendant Lamertek, Inc. entered into a settlement agreement with Plaintiff and was
dismissed from this action with prejudice on November 9, 2010.
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the ‘142 patent and the ‘557 patent to Plaintiff Trebor, who is the current owner of all right, title
and interest in and to the ‘142 and ‘557 patents. Plaintiff Trebor has full and exclusive rights to
bring suit to enforce these patents, including the right to recover for past infringements.
offering for sale products covered by the ‘142 patent and ‘557 patent. Specifically, Plaintiff
alleges that Defendants manufacture, sell or offer for sale ditchable weight harnesses covered by
these patents. The ditchable weight harnesses are sold under the Dive Rite trademark and have
been and continue to be sold and offered for sale by Defendant JL Gory.2 Plaintiff also alleges
that Defendant Gory and the Sink Defendants add a tow clip to the Dive Rite ditchable weight
harness.
In Count I, patent infringement (U.S. Patent No. 6,132,142), Plaintiff alleges that, in
violation of 35 U.S.C. § 271, Defendants make, use, offer to sell, and/or sell products that
infringe the ‘142 patent, including, but not necessarily limited to, the above-described ditchable
weight harness. Plaintiff also alleges that Defendants contribute to and/or induce infringement of
the ‘142 patent. Plaintiff claims that Defendants’ infringement of the ‘142 patent is willful and
deliberate and that Defendants’ acts of infringement of the ‘142 patent will continue unless
In Count II, patent infringement (U.S. Patent No. 6,712,557), Plaintiff alleges that, in
violation of 35 U.S.C. § 271, Defendants make, use, offer to sell, and/or sell products that
2
According to the Complaint, Defendant Sink Enterprises is not believed to be currently
selling infringing products. Plaintiff alleges that Sink Enterprises sold the "Air Line by J. Sink"
business to Defendant JL Gory. JL Gory has continued to sell and offer for sale the infringing
Dive Rite ditchable weight harnesses, as well as to continue to add a tow clip to such harnesses.
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infringe the ‘557 patent, including, but not necessarily limited to, the above-described ditchable
weight harness. Plaintiff also alleges that Defendants contribute to and/or induce infringement of
the ‘557 patent. Plaintiff claims that Defendants’ infringement of the ‘557 patent is willful and
deliberate and that Defendants’ acts of infringement of the ‘557 patent will continue unless
caused Plaintiff to suffer damages and that Plaintiff will continue to be injured in its business and
property rights unless such acts and practices are enjoyed by the Court. Plaintiff claims that it is
II. DISCUSSION
Summary judgment “should be rendered if the pleadings, the discovery and disclosure
materials on file, and any affidavits show that there is no genuine issue as to any material fact and
that the movant is entitled to a judgment as a matter of law.” Fed. R. Civ. P. 56(c)(2). The
stringent burden of establishing the absence of a genuine issue of material fact lies with the
moving party. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The Court should not grant
summary judgment unless it is clear that a trial is unnecessary, Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 255 (1986), and any doubts in this regard should be resolved against the moving
party, Adickes v. S.H. Kress & Co., 398 U.S. 144, 157 (1970).
The movant “bears the initial responsibility of informing the district court of the basis for
its motion, and identifying those portions of [the record] which it believes demonstrate the
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absence of a genuine issue of material fact.” Celotex Corp., 477 U.S. at 323. To discharge this
burden, the movant must point out to the Court that there is an absence of evidence to support the
nonmoving party’s case. Id. at 325. After the movant has met its burden under Rule 56(c), the
burden of production shifts and the nonmoving party “must do more than simply show that there
is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co. v. Zenith Radio
Corp., 475 U.S. 574, 586 (1986). According to the plain language of Fed. R. Civ. P. 56(e), the
non-moving party “may not rely merely on allegations or denials in its own pleadings,” but
instead must come forward with “specific facts showing a genuine issue for trial.” Fed. R. Civ.
P. 56(e); Matsushita, 475 U.S. at 587. “A mere ‘scintilla’ of evidence supporting the opposing
party’s position will not suffice; there must be a sufficient showing that the jury could reasonably
find for that party.” Walker v. Darby, 911 F.2d 1573, 1577 (11th Cir. 1990).
Defendant JL Gory, LLC filed the instant Motion for Summary Judgment as to
Infringement [DE 69] on October 29, 2010, requesting the Court enter an order (1) finding no
infringement by Defendant Gory; (2) the patents-in-suit to be invalid; (3) dismissing all claims of
Plaintiff with prejudice; (4) declaring the case exceptional; (5) granting Defendant Gory
attorney’s fees and costs; and (6) such further and other relief as the Court deems proper and just.
Defendant Gory argues that it is entitled to summary judgment in its favor on either of the
following grounds: (A) the dive belt sold by Defendant Gory does not infringe either of the
Patents-in-suit; (B) the patents at issue are invalid under 35 U.S.C. § 102(b).
1. Infringement
Defendant Gory contends that the dive belt sold by Defendant Gory does not infringe
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either of the patents-in-suit. “Each element contained in a patent claim is deemed material to
defining the scope of the patented invention. Warner-Jenkinson Co., Inc. v. Hilton Davis
Chemical Co. 520 U.S. 17, 29 (1997). Under the all-elements rule, in order for an article to
infringe a patent, all elements must be present. See Lemelson v. U.S., 752 F.2d 1538, 1551 (Fed.
Cir. 1985) (“It is also well settled that each element of a claim is material and essential, and that
in order for a court to find infringement, the plaintiff must show the presence of every element or
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572-73 (Fed. Cir. 1997).
“Direct infringement requires a party to perform each and every step or element of a
claimed method or product.” BMC Res., Inc. v. Paymentech, LP., 498 F.3d 1373, 1378 (Fed. Cir.
2007). “If any claim limitation is absent from the accused device, there is no literal infringement
as a matter of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir.
2000). If an accused product does not infringe an independent claim, it also does not infringe any
claim depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed.
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Cir. 1989).
In construing the meaning of claim terms, courts must first examine the patent's intrinsic
evidence. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Intrinsic
evidence includes the claim language, the specification, and the prosecution history. Id.; Housey
Pharmaceuticals, Inc. v. Astrazeneca UK Ltd., 366 F.3d 1348, 1352 (Fed. Cir. 2004). “Such
intrinsic evidence is the most significant source of the legally operative meaning of disputed
Only when the intrinsic evidence is insufficient to establish the clear meaning of the
asserted claim, does the court turn to extrinsic evidence. Zodiac Pool Care, Inc. v. Hoffinger
Industries, Inc., 206 F.3d 1408, 1414 (Fed. Cir. 2000). Extrinsic evidence includes expert
testimony, inventor testimony, dictionaries, treatises, and prior art not cited in the prosecution
history. Id. Unlike intrinsic evidence, “little or no probative weight” in claims construction is
given to extrinsic evidence, including the intended meaning of the patent applicant when he used
a particular term, e.g. the Declaration of Robert M. Carmichael [DE 92-2]. Superior Fireplace
Co. v. Majestic Products Co., 270 F.3d 1358, 1375 (Fed. Cir. 2001). See Northern Telecom Ltd.
v. Samsung Electronics Co., Ltd., 215 F.3d 1281, 1295 (Fed. Cir. 2000) (“[E]xtrinsic evidence is
rarely, if ever, probative of a special and particular definition of a limitation found in a claim.”)
“‘No inquiry as to the subjective intent of the applicant or PTO is appropriate or even possible in
the context of a patent infringement suit. The subjective intent of the inventor when he used a
particular term is of little or no probative weight in determining the scope of a claim (except as
documented in the prosecution history).’” Superior Fireplace, 270 F.3d at 1375 (quoting
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Likewise, in the legal exercise of interpreting the patent claims in this case, the Court
assigns little or no probative value to the meaning of the terms attributable to the Sink
Defendants’ responses to Plaintiff’s Request for Admissions.3 See attachments to [DE 92-1].
This is consistent with the principle that it is the claims of the patent that define the patent’s
scope and inform the public at large of what invention is claimed. See Johnson & Johnston
Associates Inc. v. R.E. Service Co., Inc., 285 F.3d 1046, 1052 (Fed. Cir. 2002).
Claim interpretation begins, as always, with the language of the claims. Tate Access
Floors, Inc. v. Interface Architectural Resources, 279 F.3d 1357, 1370 (Fed. Cir. 2002). The
claims themselves provide substantial guidance as to the meaning of particular claim terms.
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). Words in a claim are generally
given their ordinary meaning, as understood by one of ordinary skill in the art, unless the patentee
clearly defines his own terms or where the claim term would render the claim unclear. Tate
Access Floors, 279 F.3d at 1370. Claims must be read in view of the specification, of which they
Section 112 of the Patent Act, 35 U.S.C. § 112 provides explicit guidance for
3
Accordingly, the Court rejects Plaintiff’s argument that the Sink’s admissions create
factual disputes regarding the definitions of the claims terms at issue.
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35 U.S.C. § 112, ¶ 6. The Federal Circuit has held that “for a means-plus-function limitation to
read on an accused device, the accused device must employ means identical to or the equivalent
of the structures, material, or acts described in the patent specification. The accused device must
also perform the identical function as specified in the claims.” Valmont Industries, Inc. v. Reinke
Mfg. Co., Inc., 983 F.2d 1039, 1042 (Fed. Cir. 1993).
Defendant Gory submits that the ‘142 Patent contains five independent Claims 14, 95, 106,
117, and 15. Plaintiff argues that independent Claim 15 and dependent Claim 16 are being
infringed by Defendant’s accused device. The Court need only examine the independent claims
to determine infringement because the dependent claims each incorporate the independent
claims. See Wahpeton Canvas, 870 F.2d at 1553, n.10 (“[N]on-infringement of an independent
4
Claim 1 of the ‘142 patent requires a “body member” and “means for quickly
releasing.” Defendant argues that neither of these claim elements are present in the accused
device. See infra.
5
Claims 9 and 10 of the ‘142 patent: “elastic member. Defendant contends that this
element allows automatic tightening of the belt as the diver descends in the water by pulling the
two section members tighter. Defendant argues that the element of “elastic member” is not
present in the accused device and therefore there is no infringement of Claims 9 and 10.
Defendant also points out that the “body member” element and “quick release means”
element, discussed infra, also present in Claim 9, is not present in the accused device.
6
See fn. 6, supra. Defendant also points out that the “sleeve member” which is part of
“body member” in Claim 10 is not present in the accused device.
7
Claim 11 of the ‘142 patent: “body member” and“means for removing said weight
means.” Defendant argues that neither of these claim elements are present in the accused device.
See infra.
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claim carries with it non-infringement of all claims dependent thereon.”). The ‘557 Patent is a
continuation of the ‘142 Patent. As a continuation, the specifications and the drawings are the
same, and only the claims are different. The determination as to what constitutes the structure or
meaning of common claim elements must therefore be consistent with the ‘142 Patent. With
regard to the ‘557 Patent, Defendant Gory submits that it contains five independent Claims 19, 2,
1110, 12, and 1311. Plaintiff contends that the accused device infringes independent Claims 2 and
12 of the ‘557 Patent. The Court to compare the elements of its accused device to the elements
within the claims of the patents at issue to determine if all claims elements are present in the
accused infringing device and therefore determine if Defendant is infringing the claim. See
“Body member:” claim 1, 15, 16 of the ‘142 patent; claims 2, 12 of the ‘557 patent
Defendant argues that the element “body member” has two main sections, which are
9
Claim 1 of the ‘557 patent: requires a “body member” and “means for quickly
releasing.” Defendant argues that neither of these claim elements are present in the accused
device. See infra.
10
Claim 11 of the ‘557 patent: “air hose.” Defendant submits that this element is not
present in the accused device, making it non-infringing of Claim 11. This element, positioned
between the cylinder and mouthpiece, is clipped to the front of the dive belt for access by the
diver. Defendant argues that the reserve air cylinder that can be used with the accused device
does not contain an air hose. Rather, it has the mouthpiece attached directly to the cylinder
outlet. See Gory Declaration and attached exhibits [DE 69-2]. Additionally, Defendant argues
that a diver would not have adequate access to the cylinder in an emergency if it was mounted
behind the diver’s back, as called for in the ‘542 Patent. See id.
11
Claim 13 of the ‘557 patent - requires a “body member” and “means for securing a
cylinder.” Defendant submits that the “body member” element is not present in the accused
device. See infra. As for the “means for securing a cylinder” element, Defendant also argues that
the cylinder holder and the mounting mechanism described at length in the ‘557 Patent are absent
in the accused device.
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interconnected by an elastic member between the two main sections. The area of interconnection
and elastic member is contained within a protective sleeve member. Defendant contends that, in
contrast, the belt portion of the accused device is one continuous piece, which is contained in
prior art and is distinctly unlike the “body member” of the ‘142 Patent.
As to the term “body member,” Plaintiff submits that the term does not require the
product to have an elastic member, sleeve member, and/or multiple parts. Rather, these
that Defendant is inappropriately attempting to read features found in dependent claims of the
‘142 Patent into the definition of “body member.” Plaintiff argues that the only proper
interpretation of the term “body member” to Claims 1, 15, and 16 of the ‘142 Patent is that it is
understood as a simple, everyday term with no special meaning. See Declaration of Robert M.
Carmichael [DE 92-2]. Plaintiff claims “body member” to require “only that it has a first end
and a second end,” nothing more. Thus, Plaintiff asserts that the term “body member” is the
main, central or principal part of the whole dive belt. See Declaration of Daniel S. Polley. [DE
92-3]. Under Plaintiff’s interpretation of the term “body member,” i.e. a standard/conventional
belt that was already in use at the time of Plaintiff’s invention, Plaintiff asserts that the accused
Plaintiff’s position that “body member” should be given its everyday meaning is at odds
with the principle that the special definition given to a claim term by the patentee governs over
the general meaning it would otherwise possess. Phillips, 415 F.3d at 1315-16. The Court finds
that Plaintiff’s interpretation of the term “body member” is clearly incongruous with the patent
language’s specification, which states what comprises a body member. Where, as here, “the
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specification explains and defines a term used in the claims, without ambiguity or
incompleteness, there is no need to search further for the meaning of the term.” ATD Corp. v.
Lydall, Inc.,159 F.3d 534, 540 (Fed. Cir. 1998) (quoting Multiform Desiccants Inc. v. Medzam
Ltd., 133 F.3d 1473 at 1478 (Fed. Cir. 1998). Plaintiff cannot use the doctrine of claim
differentiation to broaden claims beyond the scope that is supported by the specification. ATD
Corp. v. Lydall, Inc.,159 F.3d at 541; Tandon Corp. v. United States Int'l Trade Comm'n, 831
F.2d 1017, 1023 (Fed. Cir. 1987) (“Whether or not claims differ from each other, one can not
interpret a claim to be broader than what is contained in the specification and claims as filed.”).
See also Bristol-Myers, 246 F.3d at 1376 (declining to apply the doctrine of claim differentiation
Moreover, even if the “elastic member” and “sleeve” were not essential to the “body
member,” (i.e., that the dependent claims allow for some variations of the multi-component belt)
the term “body member” in the patents at issue, at a minimum, must contain at least “a first
section” and “a second section,” which are “operatively associated with each other.”
Accordingly, “body member” is not simply a single one piece, continuous belt.
Understanding what “body member” means, the Court finds that the element is distinctly
not present in the accused device, whose belt portion is simply one continuous piece without
“Means for quickly releasing,” “means for removing:” claim 1, 15 of the ‘142 patent,
claim 2 of the ‘557 patent
“Means for quickly releasing” is defined in the claim as having two components, a pocket
and means for removing said weight means. Defendant argues that this element of Claim 1
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means that, when the handle (extending outside the pocket after the pocket opening flap is
secured closed by velcro) at the end of the double thick strap containing the weight (which is
inserted into the pocket) is pulled with a normal tugging motion by the diver, the strap pushes
open the velcro-held pocket opening flap, allowing the diver to continue pulling out the weight at
the end of the strap. In contrast, Defendant submits, its accused device does not have a “means
for quick releasing,” i.e., there is no strap-type structure or its structural equivalent for weight
removal. Rather, a diver who uses the accused device must manually remove the weight from
As to the term “means for quickly releasing,” Plaintiff submits that the act of tugging
constitutes the means for quick release or quick removal. Plaintiff states that its patents provide
the diver with instant, gravity actuated release and removal of the ballast. Plaintiff argues that,
with regard to both the patents at issue and Defendant’s accused device, a diver who needs to
evacuate the ballast immediately may accomplish this by tugging the handle sufficiently to
disengage the securement, causing the flap of the pocket to open and the weight to fall away.
Plaintiff states that, while the accused device uses a D-ring handle while Plaintiff’s uses a more
custom handle, the handle of the dive belts work in the same fashion, namely, to release and
As to the term “means for quickly releasing,” the Court agrees with the Defendant that the
term cannot simply comprise a handle on the pocket flap, but instead must include the handle,
strap, pouch or weight bag and weight, together, or its structural equivalent. Plaintiff correctly
cites that, “[u]nder § 112, ¶ 6, a court may not import functional limitations that are not recited in
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the claim, or structural limitations from the written description that are unnecessary to perform
the claimed function.” Wenger Mfg., Inc. v. Coating Machinery Systems, Inc., 239 F.3d 1225,
1233 (Fed. Cir. 2001). Nonetheless, Plaintiff’s position that the patent covers any tab or handle
attached to the edge of a pocket flap is untenable. It appears to the Court that the Plaintiff has
improperly attempted to broaden its invention to cover every pocket that can be pulled open and
the weight be “rapidly released” due to gravity if the diver happens to is in the right position
whereby gravity might passively cause the weight to exit the pocket if the pocket flap is open.
This interpretation of the element, whereby the orientation of the pockets compared to the
orientation of the diver’s body position in the water and their combined relation to the force of
gravity is not an element of the invention, neither in the specifications nor the claims. Rather, the
Court interprets the specifications of the quick release called for in the patents at issue to describe
a mechanism which affirmatively breaks open the pocket flaps and pulls the weights out of the
pockets, not merely an opening of the pocket and a passive release of the weight by gravity if the
diver’s body was oriented in a position to allow gravity to drop the weight from the pocket.
Indeed, depending on the diver’s orientation in the water (whether horizontal, vertical, or
inverted), either of the prior arts discussed infra, the Stinton patent or the 1994 Zeagle dive belt,
already utilized such technology of opening a pocket flap and letting the weight fall out due to
gravity. Once this element is so construed, the Court finds that neither this structure nor its
should be summarily denied because the motion fails to address or make any arguments
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concerning the doctrine of equivalents.12 In other words, Plaintiff argues that even if Defendant
demonstrates that the accused product does not literally infringe the patents at issue, as long as
Defendant does not also prove a lack of infringement under the doctrine of equivalents, the Court
A product that does not literally infringe a patent claim may still infringe under the
doctrine of equivalents “if every element in the claim is literally or equivalently present in the
accused device.” Sage Products, Inc. v. Devon Industries, Inc., 126 F.3d 1420, 1423 (Fed. Cir.
1997). This doctrine prevents an accused infringer from making only minor, insubstantial
changes from the claimed invention to avoid infringement, while attaining the same
functionality. Id. Equivalency under 35 U.S.C. § 112, supra, differs from, and should not be
confused with, the doctrine of equivalents. Valmont Industries, Inc. v. Reinke Mfg. Co., Inc., 983
The essential inquiry under the doctrine of equivalents is whether “the accused product or
process contain[s] elements identical or equivalent to each claimed element of the patented
invention.” Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997). “An
element in the accused product is equivalent to a claim limitation if the differences between the
12
Plaintiff asks that the Court enter, sua sponte, summary judgment in favor of Plaintiff
with respect to infringement by Defendant Gory. Plaintiff also requests that the Court’s finding
of infringement against Gory be considered a finding of infringement against the Sink
Defendants.
13
Even if Plaintiff were correct that failure to address the doctrine of equivalents would
prevent the Court from entering complete summary judgment on the issue of infringement in
Defendant Gory’s favor, the Court could, however, grant partial summary judgment to Defendant
Gory on the issue of literal infringement and conduct a trial on the issue of infringement under
the doctrine of equivalents.
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two are ‘insubstantial’ to one of ordinary skill in the art.” Eagle Comtronics, Inc. v. Arrow
Commc'n Labs., Inc., 305 F.3d 1303, 1315 (Fed. Cir. 2002) (citing Warner-Jenkinson, 520 U.S.
at 40); see also Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950)
To be sure, a device that does not infringe a patent claim literally may still
infringe the very same claim under the DOE [doctrine of equivalents] if every
limitation of the claim is literally or equivalently present in the accused device.
See Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934-35 (Fed. Cir.
1987). For a claim limitation to be “equivalently present” in an accused device,
there must be only “insubstantial differences” between the missing claim
limitation and corresponding aspects of the accused device. Hilton Davis Chem.
Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1517-18 (Fed. Cir. 1995), rev'd on
other grounds, 520 U.S. 17 (1997). Although equivalence is an issue of fact
ordinarily preserved for a jury, “[w]here the evidence is such that no reasonable
jury could determine two elements to be equivalent, district courts are obliged to
grant partial or complete summary judgment.” Warner-Jenkinson, 520 U.S. at 39
n. 8.
Zodiac Pool Care, 206 F.3d at 1415. In Graver II, the Supreme Court explained: “equivalency
must be determined against the context of the patent, the prior art, and the particular
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Warner-Jenkinson, 520 U.S. at 29. Accordingly, in this case, the Court concludes that the
unequivocal absence of the elements of a “body member” and a “means for quickly releasing” in
the accused device, as explained supra, would prevent any reasonable jury from determining
those claim limitations to be “equivalently present” in an accused device. Zodiac Pool Care, 206
F.3d at 1415. The Court is thus obligated to grant summary judgment to Defendant Gory on the
issue of non-infringement.
The accused infringing device currently sold by Defendant Gory is the same device sold
by Defendants Sink Enterprises, Inc., Defendant Joseph Sink and Defendant Janet Sink
(collectively, “the Sink Defendants). See Carmichael Dec.¶ 36. Accordingly, the Court’s finding
the Sink Defendants. Therefore, Defendants are entitled to summary of judgment as to both
causes of action set forth in Plaintiff’s Complaint: infringement of the ‘142 patent (Count I) and
2. Patent invalidity
As an alternative basis for entry of summary judgment for Defendants, Defendant Gory
argues that prior art, as reflected in prior literature and in prior public use, acts as a bar to the
patentability of Plaintiff’s inventions. Defendant Gory submits that the ‘142 and ‘557 Patents are
invalid because the weight release claim elements of those patents were “anticipated” under 35
U.S.C. §102(b). Gory also contends that Plaintiff’s patents are obvious on their face and should
be declared invalid.
A patent is presumed to be valid, 35 U.S.C. § 282, and this presumption can only be
overcome by clear and convincing evidence to the contrary. See, e.g., WMS Gaming Inc. v. Int'l
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Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999). If possible, claims are construed to preserve
public use or on sale in this country, more than one year prior to the date of the application for
patent in the United States.” The Federal Circuit has held that the public use bar applies to
obvious variants of the demonstrated public use. Netscape Commc'ns Corp. v. Konrad, 295 F.3d
1315, 1321 (Fed. Cir. 2002) (“Section 102(b) may bar patentability by anticipation if the device
used in public includes every limitation of the later claimed invention, or by obviousness if the
differences between the claimed invention and the device used would have been obvious to one
of ordinary skill in the art.”); Minnesota Min. & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301
(Fed. Cir. 2002) (“In order to invalidate a patent under the on-sale bar of 35 U.S.C. § 102(b), an
accused infringer must demonstrate by clear and convincing evidence that there was a definite
sale or offer to sell more than one year before the application for the patent and that the product
sold or offered for sale anticipated the claimed invention or rendered it obvious.”). This
To prove obviousness, a defendant must show that a person of ordinary skill in the art
would have had a reason in the relevant field to combine the particular elements or technologies
in the way the claimed new invention does. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). A person of ordinary skill in the art is a person presumed to think “along the line of
conventional wisdom in the art and is not one who undertakes to innovate, whether by patient,
and often expensive, systematic research or by extraordinary insights.” Standard Oil Co. v. Am.
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With regard to anticipation, “[a] claim is anticipated if each and every limitation is found
either expressly or inherently in a single prior art reference.” Bristol-Myers Squibb Co. v. Ben
Venue Laboratories, Inc., 246 F.3d 1368, 1374 (Fed. Cir. 2001) (quoting Celeritas Techs. Ltd. v.
Rockwell Intl. Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998). The Federal Circuit has held that “it
is axiomatic that that which would literally infringe if later anticipates if earlier.” Bristol-Myers,
246 F.3d at 1378 (citing Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed. Cir.
1987).14 “[I]nvalidity by anticipation requires that the four corners of a single[ ] prior art
document describe every element of the claimed invention, either expressly or inherently.”
TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1343 (Fed. Cir. 2010) (quoting Advanced Display
Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000); see also Silicon Graphics,
Inc. v. ATI Technologies, Inc., 607 F.3d 784, 796 (Fed. Cir. 2010) (“To show that a patent claim
is invalid as anticipated, the accused infringer must show by clear and convincing evidence that a
single prior art reference discloses each and every element of a claimed invention.”).
Thus, to establish that the patents at issue were obvious, Defendant Gory must show by
“clear and convincing evidence” that before the filing of the applications for the patents at issue,
a person of ordinary skill in the art would have had a reason to take what was known in the art at
With regard to the body member component, the prior art clearly contains a continuous
piece belt with two ends and a clamp-style belt. The dive belt demonstrated in the Stinton Patent
14
Anticipation is a question of fact, and its determination is reviewed on appeal for
substantial evidence. Minnesota Min., 303 F.3d at 1301.
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No. 5,205,672 is prior art considered by the U.S. Patent Office.15 When comparing Defendant’s
accused dive belt to the Stinton dive belt, Defendant Gory submits that the accused belt is more
similar in design to the Stinton belt than it is to Plaintiff’s patented belt. First, Defendant notes
that the basic design of the accused dive belt is the same as the dive belt shown in the Stinton
Patent, i.e. the belt is constructed of a one-piece continuous configuration with a pocket
positioned at each side and a clamp-type buckle to fasten the belt end to a location along the belt
as set by the diver, allowing adjustment of the belt fit by re-buckling the belt as needed. There is
Plaintiff argues that the Stinton design did not include any means for quickly or
accurately releasing the ballast in a task-loaded (stressful situation), nor did it include means for
quickly releasing the weight without releasing the weight pocket. While the Stinton system
includes a weight holding pocket with a velcro closure flap, the pocket flap does not have a pull,
handle, or tabbed edge. The Stinton quick release mechanism also differs from Plaintiff’s
invention because the Stinton rip cord handle detaches the entire pocket member from the
harness/belt. Plaintiff is correct regarding these distinctions between its patent and the Stinton
patent with regard to the means for quick release of the weights. However, Defendant has
provided the Court with evidence of other prior art with regard to the means for quickly releasing
15
The Stinton patent is listed on both the ‘142 Patent and the ‘557 Patent as prior art
considered by the Examiner when the Examiner granted and allowed the claims of the ‘142 and
‘157 patents.
16
Defendant also notes difference between its dive belt and the Stinton belt, including
that (1) the pocket members of the accused dive belt do not release and fall off the belt, unlike
the Stinton belt, and (2) the pockets of the accused dive belt are oriented in a horizontal rather
than a vertical plane, resulting in the flaps for opening the pockets being positioned at the front
portion of the pocket rather than the top.
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component. In particular, Defendant has filed a Declaration of Dennis Bulin, president and
founder of Zeagle Systems, Inc., a Florida corporation that manufactures, designs, and supplies
scuba diving equipment. [DE 69-3]. Mr. Bulin states that he has been selling through his
business a pull-out pocket system for releasing weights since before November 14, 1994. The
system includes a pocket that could be attached to a dive vest or belt, a flap for closing the
pocket, a removable weight located within the pocket and a handle strap attached to said
removable weight. The weight system releases with a tug on a handle mounted on the weight
pouch. Attached to Mr. Bulin’s Declaration is an excerpt of Zeagle’s 1994 catalog, depicting and
offering for sale a pull-out weight release system. Plaintiff points out in its opposition to
summary judgment that Defendant Gory has failed to show where each and every element of
every claim in the ‘142 Patent and the ‘557 Patent appears in the Stinton patent and/or the Zeagle
1994 product.17 Nonetheless, even “[i]f a single prior art reference does not “anticipate” each
and every element of the claimed invention, the invention still might be rendered invalid if it is
proven to have been “obvious” under § 103(a).” Avocent Huntsville Corp. v. ClearCube
Technology, Inc., 443 F.Supp.2d 1284, 1328 n.169 (N.D. Ala. 2006). Plaintiff would have the
Court construe the claims of the ‘142 and ‘557 Patents as narrow and limited for purposes of
validity with regard to the elements of “body member” and “means for quickly releasing,” but as
encompassing all instances of belt pieces and any means of opening a pocket flap for purposes of
Because the Court has already determined that Defendants’ accused device does not
17
Plaintiff also points out that the weight pockets of Plaintiff’s dive belt are positioned
90-degrees counterclockwise from the Stinton and the Zeagle 1994 weight system.
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infringe Plaintiff’s patents, the Court need not find the patents at issue to be invalid in order to
enter final summary judgment in favor of Defendants. As explained earlier in the Court’s
infringement analysis, the Court disagrees with the Plaintiff’s position regarding the construction
of the claim terms “body member” and “means for quickly releasing” in the patents at issue.
However, if the Court were to assign the broad meaning of these terms presently asserted by
Plaintiff, i.e., that a “body member” is any continuous piece belt with two ends and that “means
for quickly releasing” is any sort of tab or handle to allow a user to more easily open the flap of
the pocket containing a weight, it appears to the Court that Plaintiff’s ‘142 and ‘557 patents
would be invalid in light of prior art described herein and the case law regarding “obviousness.”
Moreover, the Court agrees with Defendant that to the extent that Plaintiff now contends its
patent is nothing more than opening a pocket and relying on gravity to hopefully cause the weight
to drop out, it would also be obvious on its face under § 103(a) and, as such, would be invalid.
III. CONCLUSION
Based upon the foregoing, it is ORDERED AND ADJUDGED that Defendant JL Gory's
Motion for Summary Judgment as to Infringement [DE 69] is hereby GRANTED as to both
causes of action set forth in Plaintiff’s Complaint [DE 1]: patent infringement (U.S. Patent No.
6,132,142) (Count I) and patent infringement (U.S. Patent No. 6,712,557) (Count II). Pursuant to
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DONE AND ORDERED in Chambers at Fort Lauderdale, Broward County, Florida, this
Counsel of record
23