United States District Court, D. Nevada
M. Navarro, Chief Judge United States District Court
before the Court is the Partial Motion for Summary Judgment
on Non-Infringement, (ECF No. 362), filed by
Defendants/Counterclaimants Ian Christopher O'Connell,
Musion 3D Ltd., and Musion Events Ltd. (“UK
Defendants”). Plaintiffs Hologram USA, Inc., Uwe Maass,
and MDH Hologram Limited (“Plaintiffs”) filed a
Response, (ECF No. 378), and UK Defendants filed a Reply,
(ECF No. 393).
pending before the Court is UK Defendants' Partial Motion
for Summary Judgment on Non-Infringement Based on the
Doctrine of Equivalents, (ECF No. 376). Plaintiffs filed a
Response, (ECF No. 398), and UK Defendants filed a Reply,
(ECF No. 405).
case centers upon allegations that UK Defendants have
infringed several of Plaintiffs' patents. In their Second
Amended Complaint (“SAC”), Plaintiffs claim that
they obtained the exclusive rights to patented technology
that creates three-dimensional images which are virtually
indistinguishable from real performers (“hologram
technology”) in February 2014. (SAC ¶¶ 2, 10,
ECF No. 188).
allege that UK Defendants offer to sell and have sold an
infringing device, the Musion Eyeliner holographic projection
systems (“Eyeliner Systems”), into the United
States. (See e.g., id. ¶ 2); (Ex. O to
Pls.' Mot. Compel at 3, ECF No. 306-5). Based on these
allegations, the SAC states that UK Defendants directly and
indirectly infringed three separate patents belonging to
Plaintiffs: U.S. Patent Nos. 5, 865, 519 (“the '519
patent”); 7, 883, 212 (“the '212
patent”); and 8, 328, 361 (“the ‘361
patent) (collectively “the Asserted Patents”).
(Id. ¶¶ 59-80). The SAC also sets forth
claims for willful infringement, active inducement,
contributory infringement, injunctive relief, intentional
interference with prospective economic advantage, breach of
fiduciary duty, false advertising, and unfair competition.
(Id. ¶¶ 81-136).
instant Motions, UK Defendants seek summary judgment on
Plaintiffs' claims of infringement.
Federal Rules of Civil Procedure provide for summary
adjudication when the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the
affidavits, if any, show that “there is no genuine
dispute as to any material fact and the movant is entitled to
judgment as a matter of law.” Fed.R.Civ.P. 56(a).
Material facts are those that may affect the outcome of the
case. See Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 248 (1986). A dispute as to a material fact is genuine
if there is sufficient evidence for a reasonable jury to
return a verdict for the nonmoving party. See Id.
“Summary judgment is inappropriate if reasonable
jurors, drawing all inferences in favor of the nonmoving
party, could return a verdict in the nonmoving party's
favor.” Diaz v. Eagle Produce Ltd. P'ship,
521 F.3d 1201, 1207 (9th Cir. 2008) (citing United States
v. Shumway, 199 F.3d 1093, 1103-04 (9th Cir. 1999)). A
principal purpose of summary judgment is “to isolate
and dispose of factually unsupported claims.”
Celotex Corp. v. Catrett, 477 U.S. 317, 323-24
determining summary judgment, a court applies a
burden-shifting analysis. “When the party moving for
summary judgment would bear the burden of proof at trial, it
must come forward with evidence which would entitle it to a
directed verdict if the evidence went uncontroverted at
trial. In such a case, the moving party has the initial
burden of establishing the absence of a genuine issue of fact
on each issue material to its case.” C.A.R. Transp.
Brokerage Co. v. Darden Rests., Inc., 213 F.3d 474, 480
(9th Cir. 2000) (citations omitted). In contrast, when the
nonmoving party bears the burden of proving the claim or
defense, the moving party can meet its burden in two ways:
(1) by presenting evidence to negate an essential element of
the nonmoving party's case; or (2) by demonstrating that
the nonmoving party failed to make a showing sufficient to
establish an element essential to that party's case on
which that party will bear the burden of proof at trial.
See Celotex Corp., 477 U.S. at 323- 24. If the
moving party fails to meet its initial burden, summary
judgment must be denied and the court need not consider the
nonmoving party's evidence. See Adickes v. S.H. Kress
& Co., 398 U.S. 144, 159-60 (1970).
moving party satisfies its initial burden, the burden then
shifts to the opposing party to establish that a genuine
issue of material fact exists. See Matsushita Elec.
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586
(1986). To establish the existence of a factual dispute, the
opposing party need not establish a material issue of fact
conclusively in its favor. It is sufficient that “the
claimed factual dispute be shown to require a jury or judge
to resolve the parties' differing versions of the truth
at trial.” T.W. Elec. Serv., Inc. v. Pac. Elec.
Contractors Ass'n, 809 F.2d 626, 631 (9th Cir.
1987). In other words, the nonmoving party cannot avoid
summary judgment by relying solely on conclusory allegations
that are unsupported by factual data. See Taylor v.
List, 880 F.2d 1040, 1045 (9th Cir. 1989). Instead, the
opposition must go beyond the assertions and allegations of
the pleadings and set forth specific facts by producing
competent evidence that shows a genuine issue for trial.
See Celotex Corp., 477 U.S. at 324.
summary judgment, a court's function is not to weigh the
evidence and determine the truth but to determine whether
there is a genuine issue for trial. See Anderson,
477 U.S. at 249. The evidence of the nonmovant is “to
be believed, and all justifiable inferences are to be drawn
in his favor.” Id. at 255. But if the evidence
of the nonmoving party is merely colorable or is not
significantly probative, summary judgment may be granted.
See Id. at 249-50.
Patent Infringement Principles
claim construction is a question of law, infringement is a
question of fact. Freedman Seating Co. v. Am. Seating
Co., 420 F.3d 1350, 1357 (Fed. Cir. 2005). “Thus,
summary judgment of non-infringement can only be granted if,
after viewing the alleged facts in the light most favorable
to the non-movant, there is no genuine issue whether the
accused device is encompassed by the claims.”
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1304 (Fed. Cir. 1999).
are two types of infringement: literal infringement . . . and
infringement under the doctrine of equivalents.”
Pozen Inc. v. Par Pharm., Inc., 696 F.3d 1151, 1167
(Fed. Cir. 2012). “To establish literal infringement,
every limitation set forth in a claim must be found in an
accused product, exactly.” Southwall Techs., Inc.
v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995).
Alternatively, “[t]o find infringement under the
doctrine of equivalents, any differences between the claimed
invention and the accused product must be
insubstantial.” Brilliant Instruments, Inc. v.
GuideTech, LLC, 707 F.3d 1342, 1346-47 (Fed. Cir. 2013)
(citing Graver Tank & Mfg. Co. v. Linde Air Products
Co., 339 U.S. 605, 608 (1950)). “One way of
proving infringement under the doctrine of equivalents is to
show, for each claim limitation, that the accused product
‘performs substantially the same function in
substantially the same way with substantially the same result
as each claim limitation of the patented product.'”
Id. at 1347 (quoting Crown Packaging Tech., Inc.
v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed.
application of the doctrine of equivalents is limited,
however, by prosecution history estoppel. Conoco, Inc. v.
Energy & Envtl. Int'l, L.C., 460 F.3d 1349, 1363
(Fed. Cir. 2006). It does so “by barring an equivalents
argument for subject matter relinquished when a patent claim
is narrowed during prosecution.” Id. (citing
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
535 U.S. 722, 733-34 (2002)). The Federal Circuit has
recognized two types of prosecution history estoppel: (1)
amendment-based estoppel, which occurs when the patentee
makes “a narrowing amendment to the claim, ” and
(2) argument-based estoppel, which occurs when the patentee
“surrender[s] claim scope through argument to the
patent examiner.” Id. (citing Deering
Precision Instruments, LLC v. Vector Distrib. Sys.,
Inc., 347 F.3d 1314, 1324 (Fed. Cir. 2003)).
amendment-based estoppel, “[w]hen a patentee makes a
narrowing amendment to a claim, the patent holder has the
burden to demonstrate that the reason for the amendment was
unrelated to patentability (e.g., to avoid prior art).”
Id. (citing Warner-Jenkinson Co. v. Hilton Davis
Chem. Co., 520 U.S. 17, 33 (1997)). “When the
record lacks explanation for the amendment, [courts] presume
that the PTO had a substantial reason related to
patentability for including the limiting element added by
amendment.” Id. The presumption is rebuttable.
See Id. at 1363-64.
argument-based estoppel, the party invoking that doctrine
must show “a clear and unmistakable surrender of
subject matter.” Id. at 1364 (quoting
Deering, 347 F.3d at 1326). Unlike with
amendment-based estoppel, no presumption of surrender
applies. Id. “The relevant inquiry is whether
a competitor would reasonably believe that the applicant had
surrendered the relevant subject matter.” Id.
(quoting Cybor Corp. v. FAS Techs., Inc., 138 F.3d
1448, 1457 (Fed. Cir. 1998) (en banc)). Whether
amendment-based or argument-based estoppel is invoked,
“[p]rosecution history estoppel is a legal question . .
. .” Cybor Corp., 138 F.3d at 1460.
Defendants' two Motions seek partial summary judgement of
non-infringement on different grounds. In their First Motion,
UK Defendants contend that summary judgment is appropriate on
Plaintiffs claims that UK Defendants infringe the Asserted
Patents through: (1) direct infringement; (2) indirect
contributory infringement; and (3) indirect induced
infringement. (Defs.' First Mot. Summ. J. (“First
MSJ”) 3:3-19, ECF No. 362). The second Motion seeks
summary judgment on Plaintiffs' claims of infringement
through the doctrine of equivalents. (See Defs.'
Second Mot. Summ. J. (“Second MSJ”) 2:1-9, ECF
No. 376). The Court considers each Motion in turn.
First MSJ (ECF No. 362)
Defendants argue that Plaintiffs' claims of infringement
fail “because the apparatuses identified in the
infringement contentions were all sourced, constructed, and
used outside of the United States.” (First MSJ 7:1-3).
A person who, without a license, “makes, uses, offers
to sell, or sells any patented invention within the United
States or imports into the United States” is liable for
direct patent infringement. 35 U.S.C. § 271(a). Direct
infringement liability is therefore “limited to
infringing activities that occur within the United
States.” MEMC Elec. Materials, Inc. v. Mitsubishi
Materials Silicon Corp., 420 F.3d 1369, 1375 (Fed. Cir.
argue in their Supplemental Response that new discovery
conducted after UK Defendants filed the instant Motions has
revealed five embodiments of the accused Eyeliner System that
were sold to customers in the United States and installed in
the United States, including:
(1) an Eyeliner System in a Reverse Setup with Mirror
configuration for Artistry in Motion Holographic, Inc.'s
(“AIM”) Demonstration Suite in West Palm Beach,
Florida on or about November 2015;
(2) an Eyeliner System in a Reverse Setup with Mirror
configuration for Fisher Price in East Aurora, New York on or
about August 2014;
(3) an Eyeliner System in a Reverse Setup with Mirror
configuration for Media Stage at the 2015 Emerge Americas
Conference in ...