UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
___________________________________
)
INTEX RECREATION CORPORATION, )
)
Plaintiff/Counterclaim-Defendant, )
)
v. ) Civil Action No. 04-1785 (PLF)
)
TEAM WORLDWIDE CORPORATION, )
)
Defendant/Counterclaim-Plaintiff. )
___________________________________ )
OPINION
Ten years ago, defendant Team Worldwide Corporation (“TWW”) accused
plaintiff Intex Recreation Corporation (“Intex”) of infringing the claims of TWW’s inflatable
product patent. This lawsuit followed, and with it, the initiation of discovery, proceedings on a
motion to dismiss, a reexamination by the U.S. Patent and Trademark Office (“PTO”), and claim
construction proceedings.
The issue that spurred this lawsuit – whether the air mattresses manufactured by
Intex infringe any of the patent claims asserted by TWW – is now before the Court on the
parties’ cross-motions for summary judgment. The question of infringement turns primarily on
whether the air mattresses manufactured by Intex contain “sockets” as that term is used in
TWW’s patent. After careful review of the patent documents, relevant legal authorities, and the
arguments made by the parties in their papers and at oral argument on February 25, 2014, the
Court concludes that Intex’s air mattresses do not contain “sockets” or their equivalents, and that
Intex’s products therefore do not infringe TWW’s patent. The Court will grant Intex’s motion
for summary judgment, deny TWW’s motion for summary judgment, and enter judgment for
Intex on the issue of non-infringement. 1
1
The papers reviewed in connection with the pending motions include the
following: plaintiff’s amended complaint (“Am. Compl.”) [Dkt. No. 4]; defendant’s answer to
plaintiff’s complaint and counterclaim (“TWW Answer and Counterclaim”) [Dkt. No. 10];
United States Patent No. 6,793,469 B2 [Dkt. No. 10-1]; Opinion and Order granting in part and
denying in part defendant’s motion to dismiss, Intex Recreation Corp. v. Team Worldwide Corp.,
390 F. Supp. 2d 21 (D.D.C. 2005); Magistrate Judge Robinson’s claim construction decision,
Intex Recreation Corp. v. Team Worldwide Corp., 541 F. Supp. 2d 113 (D.D.C. 2008); the
undersigned’s claim construction decision, Intex Recreation Corp. v. Team Worldwide
Corp., --- F. Supp. 2d ----, 2013 WL 5328372 (D.D.C. 2013); the parties’ briefs on claim
construction, including plaintiff’s motion for claim construction [Dkt. No. 141]; defendant’s
second motion for claim construction (“TWW Claim Constr. Mot.”) [Dkt. No. 140-3], plaintiff’s
objections to Magistrate Judge Robinson’s decision [Dkt. No. 147]; defendant’s opposition to
plaintiff’s objections (“TWW Obj. Opp.”) [Dkt. No. 156], and the transcript of the June 9, 2011
hearing on plaintiff’s objections (“June 9, 2011 Tr.”) [Dkt. No. 206]; declaration of Edward J.
Naidich in support of plaintiff’s previous motion for summary judgment (“Naidich Decl.”) [Dkt.
No. 155-5]; joint status report of November 12, 2010 (“Jt. Status Rpt.”) [Dkt. No. 180];
defendant’s motion for summary judgment (“TWW SJ Mot.”) [Dkt. No. 211]; defendant’s
statement of material undisputed facts (“TWW SMF”) [Dkt. No. 211-2]; declaration of Andrew
R. Kopsidas in support of defendant’s summary judgment motion (“Kopsidas Decl.”) [Dkt. No.
211-3]; plaintiff’s motion for summary judgment (“Intex SJ Mot.”) [Dkt. No. 212]; plaintiff’s
statement of material undisputed facts (“Intex SMF”) [Dkt. No. 212]; declaration of Andrew M.
McCoy in support of plaintiff’s summary judgment motion (“McCoy Decl.”) [Dkt. No. 212-3];
plaintiff’s opposition to defendant’s summary judgment motion (“Intex SJ Opp.”) [Dkt. No.
216]; plaintiff’s statement of disputed material facts in support of its opposition to defendant’s
summary judgment motion (“Intex SMF Resp.”) [Dkt. No. 216]; defendant’s opposition to
plaintiff’s summary judgment motion (“TWW SJ Opp.”) [Dkt. No. 217]; defendant’s statement
of disputed material facts in support of its opposition to plaintiff’s summary judgment motion
(“TWW SMF Resp.”) [Dkt. No. 217-2]; defendant’s reply in support of its summary judgment
motion (“TWW SJ Reply”) [Dkt. No. 219]; plaintiff’s reply in support of its summary judgment
motion (“Intex SJ Reply”) [Dkt. No. 220]; parties’ summary judgment hearing exhibit list (“Hr’g
Ex. List”) [Dkt. No. 221]; and the expert reports submitted by the parties, including the June 19,
2006 Expert Report of Dr. Steven Dubowsky (“Dubowsky Rpt.”) [Dkt. No. 211-5], the August
28, 2008 Rebuttal Expert Report of Dr. Dubowsky (“1st Supp. Dubowsky Rpt.”) [Dkt. No. 99-
8], the November 1, 2013 Expert Report of Dr. Dubowsky (“2d Supp. Dubowsky Rpt.”) [Dkt.
No. 215-1], the January 25, 2011 Expert Report of John F. Berninger (“Berninger Rpt.”) [Dkt.
216-2], and the December 12, 2013 Expert Report of Mr. Berninger (“Supp. Berninger Rpt.”)
[Dkt. No. 212-2].
2
I. BACKGROUND
The background of this case was summarized in the Court’s September 24, 2013
Claim Construction Opinion and is reviewed only briefly here. Intex and TWW are
manufacturers of air mattresses of the sort used in homes and on camping trips. They disagree as
to the scope of United States Patent No. 6,793,469 B2 (“the ’469 Patent”), currently owned by
TWW. The invention claimed by the ’469 Patent is an inflatable product comprised of an
inflatable body, a socket, an electric pump that includes a pump body and an air outlet, and a
battery case. See ’469 Patent col.1 lines 30-35; id. at col.7 line 24–col.8 line 60. Two
embodiments (examples) of the pump-socket connection in the claimed invention are shown
below:
’469 Patent, fig. 2 (depicting first embodiment).
3
’469 Patent, fig. 4 (depicting second embodiment).
On October 8, 2004, shortly after obtaining the ’469 Patent, TWW sent a cease-
and-desist letter to Intex in which TWW accused Intex of selling inflatable air mattresses that
infringed the ’469 Patent. TWW Answer and Counterclaim ¶ 7. In response, Intex filed this
civil action against TWW, seeking a declaration of non-infringement as to the ’469 Patent and a
declaration of its invalidity. 2 TWW, in turn, filed a counterclaim asserting that Intex has
infringed and continues to infringe the patent.
After discovery and resolution of a motion to dismiss, claim construction
proceedings were held before Magistrate Judge Deborah A. Robinson, who issued her Markman
decision on March 3, 2008. Intex Recreation Corp. v. Team Worldwide Corp., 541 F. Supp. 2d
2
Intex’s non-infringement claim is Count I of the Amended Complaint; in addition,
Intex sought a declaration that the patent was invalid under 35 U.S.C. §§ 102 and 103 (Count II)
and a declaration of invalidity as a result of inequitable conduct (Count III). See Am. Compl.
The Court dismissed Count III on September 30, 2005. See Intex Recreation Corp. v. Team
Worldwide Corp., 390 F. Supp. 2d 21 (D.D.C. 2005) (“Intex I”).
4
113 (D.D.C. 2008) (“Intex II”). 3 Intex timely objected to certain constructions in Magistrate
Judge Robinson’s decision. Proceedings on these objections, however, were stayed pending the
PTO’s reexamination of the ’469 Patent, which ultimately led to the PTO’s issuance of an ex
parte reexamination certificate, in which the PTO confirmed that the ’469 Patent claims are
patentable. See Jt. Status Rpt. 2. On September 24, 2013, the Court issued an opinion and order
adopting in part and setting aside in part Magistrate Judge Robinson’s decision. Intex Recreation
Corp. v. Team Worldwide Corp., --- F. Supp. 2d ----, 2013 WL 5328372 (D.D.C. 2013) (“Intex
III”). The parties then filed cross-motions for summary judgment: TWW moved for a finding of
literal infringement, and Intex moved for a finding of non-infringement, both literally and under
the doctrine of equivalents.
II. LEGAL STANDARDS
Determining whether a patent has been infringed involves a two-step analysis:
first, the Court must construe the relevant claim language to determine the meaning and scope of
the patent claims; and second, the Court must compare the construed claims to the accused
device to determine whether each claim element is present, either literally or equivalently.
Markman v. Westview Instr., Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996);
see also Freedman Seating Co. v. American Seating Co., 420 F.3d 1350, 1356-57 (Fed. Cir.
2005); Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F.3d 1408, 1413 (Fed. Cir. 2000).
“[L]iteral infringement requires that each and every limitation set forth in a claim
appear in an accused product.” Frank’s Casing Crew & Rental Tools, Inc. v. Weatherford Int’l,
Inc., 389 F.3d 1370, 1378 (Fed. Cir. 2004)). A product that does not literally infringe a claim,
3
See Markman v. Westview Instr., Inc., 52 F.3d 967 (Fed. Cir. 1995), aff’d, 517
U.S. 370 (1996).
5
however, nevertheless may infringe under the doctrine of equivalents “if differences between the
accused device and the claimed invention are ‘insubstantial.’” Desper Prods., Inc. v. QSound
Labs, Inc., 157 F.3d 1325, 1338 (Fed. Cir. 1998). TWW, as the patentee, has the burden of
establishing infringement at trial. See Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134
S. Ct. 843, 846 (2014).
Whether an accused product infringes the properly construed claims of a patent is
a question of fact. Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d at 1332. As with other
types of civil litigation, however, summary judgment is available and appropriate in a patent
infringement case when “there is no genuine issue as to any material fact and the movant is
entitled to judgment as a matter of law.” FED. R. CIV. P. 56(a); see Taurus IP, LLC v.
DaimlerChrysler Corp., 726 F.3d 1306, 1326 (Fed. Cir. 2013); Frank’s Casing Crew & Rental
Tools, Inc. v. Weatherford Int’l, Inc., 389 F.3d at 1378; C.R. Bard, Inc. v. Advanced
Cardiovascular Sys., Inc., 911 F.2d 670, 672 (Fed. Cir. 1990).
III. DISCUSSION
A. Claims 14-17 Of The ’469 Patent
The ’469 Patent sets forth 17 claims, but only Claims 14 through 17 are relevant
to this patent infringement action. See TWW SJ Mot. 1. These claims are listed in the table
below:
6
Claim Claim Language
14 An inflatable product including:
an inflatable body;
a socket built in the inflatable body;
an electric pump, including a pump body and an air outlet, connected to the
socket to pump the inflatable body, wherein the pump body is wholly or
partially located in the socket;
a connector provided on the electric pump for connecting an external
power to actuate the electric pump.
15 The inflatable product as claimed in claim 14, wherein the pump body can be
received partially or wholly in the socket in a first direction for inflating the
inflatable body, and received in a second direction for deflating the inflatable
body.
16 An inflatable product including:
an inflatable body;
a socket built in the inflatable body;
an electric pump, including a pump body and an air outlet, connected to
the socket to pump the inflatable body, wherein the pump body is
wholly or partially located in tile (sic) socket, a portion of the electric
pump is inserted into tile (sic) socket, and the portion of the electric
pump and the socket are matched with each other to prevent an air
leakage therebetween.
17 The inflatable product as claimed in claim 16, wherein the pump body can be
received partially or wholly in the socket in a first direction for inflating the
inflatable body, and received in a second direction for deflating the inflatable
body.
’469 Patent col.8 lines 29-60 (bold in original).
Of particular importance, the Court has construed the term “socket” as “a
structure that fits and holds onto an inserted part so that the structure and the part are detachably
connected to each other.” Intex III, 2013 WL 5328372, at *16. In so doing, the Court
distinguished certain inflatable products in which the electric pump could be easily inserted into
and removed from a socket in the inflatable body – which were claimed by the ’469 Patent –
from unclaimed inflatable products in which the pump was permanently housed inside the
7
mattress. See id. at *10-11 (noting that certain socket-less embodiments with permanent pumps
were disclosed but not claimed in the patent specification).
Also relevant here, the term “electric pump” is construed as “an electronically
powered machine or device for raising, compressing, or transferring fluids, including gases,”
Intex II, 541 F. Supp. 2d at 118-19, and the term “pump body” is construed as “the main part of
the electric pump and to be a separate and distinct element from the air outlet.” Intex III, 2013
WL 5328372, at *16.
B. The Accused Devices
In manufacturing its air bed products, Intex employs two types of pumps accused
of infringing the ’469 Patent. See TWW SMF ¶ 1; Intex SMF Resp. ¶ 1. The first type, referred
to as the “Pump A” models, includes model numbers 619RW and 619RL. TWW SMF ¶ 1; Intex
SMF Resp. ¶ 1. The second type, the “Pump B” models, includes model numbers AP619, 639,
and 626R. TWW SMF ¶ 1; Intex SMF Resp. ¶ 1. There is no dispute with respect to the
structure of the accused pumps. Intex SMF ¶ 13; TWW SMF Resp. ¶ 13.
The Pump A model can inflate, but not deflate, an air mattress. TWW SMF ¶ 6;
Intex SMF Resp. ¶ 6. The housing of the pump, which is built into an air mattress, serves as an
opening into which various pump components – such as the motor, impeller unit, solenoid, and
circuit board – are placed and fastened with screws. Intex SMF ¶¶ 14-15; TWW SMF Resp.
¶¶ 14-15. The faceplate of the pump also is connected to the housing with screws. Intex SMF
¶¶ 15-16; TWW SMF Resp. ¶¶ 15-16. The Pump A model requires between ten and eleven
screws, and requires substantial disassembly to remove the pump components from the air
mattress. Intex SMF ¶¶ 16-17; TWW SMF Resp. ¶¶ 16-17. The pump can be powered on by
flipping a switch located on the faceplate, or by using a tethered remote. TWW SMF ¶ 6; Intex
8
SMF Resp. ¶ 6. Male bayonet-type connectors are provided to receive power from an AC power
cord. TWW SMF ¶ 8; Intex SMF Resp. ¶ 8.
At oral argument, counsel for Intex introduced as physical exhibits for the Court’s
inspection examples of the Pump A model. See Hr’g Exs. 4, 4A, 7. The Pump A model is
depicted below in photographs 1 through 3, supplied by Intex, and in a simplified illustration, Dr.
Dubowsky’s Figure 8, prepared by TWW’s expert.
Photograph 1: Pump A
McCoy Decl. ¶ 8, Ex. 4 at 2 (corresponding to Hearing Exhibit 7); see Hr’g Ex. List at 2.
9
Photograph 2: Pump A
McCoy Decl. ¶ 8, Ex. 4 at 8 (corresponding to Hearing Exhibit 4); see Hr’g Ex. List at 2.
Photograph 3: Pump A
Naidich Decl. ¶ 4, Ex. 2 at 2.
10
Dr. Dubowsky’s Figure 8: Pump A Configuration, Inflating
2d Supp. Dubowsky Rpt. 8.
In contrast to the Pump A model, the Pump B model can be used to both inflate
and deflate the mattress. TWW SMF ¶ 9; Intex SMF Resp. ¶ 9. Similar to the Pump A model,
however, the Pump B model contains a housing that is built into the interior of an air mattress.
Intex SMF ¶ 19; TWW SMF ¶ 9. The housing in Pump B, like that in Pump A, serves as an
opening into which components are placed and fastened with screws. Intex ¶¶ 16-20; TWW
SMF ¶¶ 16-20. A faceplate is connected to the housing with screws. Intex SMF ¶ 21; TWW
SMF Resp. ¶ 21. Between eight and ten screws are used in the assembly of the Pump B models,
and substantial disassembly is required to remove the pump from an air mattress. Intex SMF
¶¶ 21-22; TWW SMF Resp. ¶¶ 21-22. Unlike Pump A, Pump B models include a valving
mechanism. Intex SMF ¶ 20; TWW SMF Resp. ¶ 20. Pump B products are compatible with
both AC and DC power packs, and contain male bayonet-type connectors provided on the
11
electric pump to receive the AC or DC electrical power. TWW SMF ¶ 15; Intex SMF Resp.
¶ 15.
During oral argument, counsel for Intex introduced several Pump B devices as
physical exhibits for the Court’s inspection. See Hr’g Exs. 1-3, 3A, 5, and 6. Examples of the
Pump B model are depicted below in photographs 4 through 6, supplied by Intex, and in the
illustration, Dr. Dubowsky’s Figure 3, prepared by TWW’s expert.
Photograph 4: Pump B
McCoy Decl. ¶ 9, Ex. 5 at 2 (corresponding to Hearing Exhibit 5); see Hr’g Ex. List at 2.
12
Photograph 5: Pump B
McCoy Decl. ¶ 9, Ex. 5 at 6 (corresponding to Hearing Exhibit 3); see Hr’g Ex. List at 1.
.
Photograph 6: Pump B
Naidich Decl. ¶ 7, Ex. 5 at 3.
13
Dr. Dubowsky’s Figure 3: Pump B Configuration, Inflating
2d Supp. Dubowsky Rpt. 7.
C. The Accused Devices Do Not Literally Infringe The ’469 Patent
As noted, “literal infringement requires that each and every limitation set forth in
a claim appear in an accused product.” Frank’s Casing Crew & Rental Tools, Inc. v.
Weatherford Int’l, Inc., 389 F.3d at 1378. “Any deviation from the claim precludes . . . a finding
[of literal infringement].” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316,
1330 (Fed. Cir. 2001). 4 “There can be no literal infringement where a claim requires two
separate structures and one such structure is missing from an accused device.” Becton,
Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1255 (Fed. Cir. 2010) (citing
Gaus v. Conair Corp., 363 F.3d 1284, 1288-90 (Fed. Cir. 2004))
4
An element or limitation is a “discretely claimed component of a patent claim.”
Black’s Law Dictionary 597 (9th ed. 2009). Each element or limitation 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).
14
When the parties agree on the features of the accused device, the question of
literal infringement “collapses into claim construction” and can be decided as a matter of law.
Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d at 1332-33. When construing claims, “a
court generally must give claim terms ‘their ordinary and customary meaning’ as those terms
would have been understood by ‘a person of ordinary skill in the art in question,’” – here, the
field of pneumatics. Intex III, 2013 WL 5328372, at *4 (quoting Phillips v. AWH Corp., 415
F.3d 1303, 1312-13 (Fed. Cir. 2005 (en banc)). Because each claim of the ’469 Patent includes
the limitation of a socket, and because a person of ordinary skill in the art of pneumatics would
find that no socket is present in the accused devices, there can be no literal infringement.
Intex maintains that each device introduced at oral argument and represented in
the photographs and figures above is a self-contained electric pump, and that this pump is
directly welded to the inflatable mattress. Intex SJ Opp. 21-26. According to Intex, no separate
socket is necessary or present. Id. By contrast, TWW contends that the electric pump in the
accused products is comprised solely of the inner pump components – including the motor,
impeller unit, solenoid and circuit board – and the pump’s faceplate. TWW SJ Mot. 14-18. The
housing surrounding these components is not part of the pump, TWW asserts; rather, according
to TWW, the housing itself is a separate socket. Id. Under TWW’s interpretation of the accused
products, Pump A contains all of the elements recited in Claims 14 and 16, and Pump B contains
all of the elements in Claims 14 through 17. See TWW SJ Mot. 1, 23. There are two fatal
problems with TWW’s theory.
1. The Pump Housing In The Accused Devices Is Part Of The Electric Pump
If the housing surrounding the inner pump components is part of the electric
pump, then it cannot satisfy the separate claim element of a socket. This conclusion flows from
15
the general rule that when a patent claim lists elements separately, as the ’469 Patent does with
the pump and the socket, those elements are considered to be “distinct component[s]” of the
patented invention. Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d at 1254
(internal quotation omitted). For example, in Becton, the Federal Circuit found that a claim
listing a “hinged arm” and a “spring means connected to said hinged arm” called for two
separate structural elements: the hinged arm and the spring means. Id. at 1253-55. These two
elements could not be present in the same structure. Id. Likewise, if the housing in Intex’s
devices is part of the electric pump, the housing cannot also satisfy the separate claim limitation
of a socket. For the reasons below, the Court finds no genuine dispute of fact as to this issue; it
is clear that a person of ordinary skill in the field of pneumatics would view the housing in the
accused devices to be part of the electric pump, not a distinct structural element. The Court
therefore must conclude that the housing does not satisfy the socket limitation.
As the Court observed in its Markman Opinion, an electric pump typically will
include a pump housing. Intex III, 2013 WL 5328372, at *15 (“[B]ecause the Court finds that
the claims require a pump that is detachably connected to a socket . . . the Court would expect
that the typical electric pump designed in accordance with the ’469 Patent would contain a
housing to cover the fan and motor.”). Indeed, TWW conceded that “in certain embodiments,
there may be a pump housing and, in certain embodiments, the housing may be a part of the main
part of the pump.” TWW’s Obj. Opp. 32.
Intex has submitted evidence that the pump housing in the accused devices would
be considered by a person of ordinary skill in the art to be part of the pump itself. The housing
naturally is considered as part of the pump, according to Intex’s expert, “because without [the
housing], the pumps would not work.” Supp. Berninger Rpt. ¶ 15. The pumps in the accused
16
devices only function within pressurized chambers; without a housing to maintain the necessary
pressure, the pump is useless. Id. Intex also points to evidence that a pump housing has been
considered to be part of a pump in related proceedings before the PTO. Berninger Rpt. ¶¶ 14-16.
Intex’s arguments are consistent with the Court’s observation that the electric pump usually will
include a housing. Intex III, 2013 WL 5328372, at *15. 5
By contrast, TWW points to no expert testimony or other evidence suggesting that
a person of ordinary skill in the art would view the pump housing as something separate from the
pump itself, and responds to Intex’s evidence only with attorney argument. TWW Reply 6-8.
TWW observes that the housing can be disconnected from other pump components during
disassembly, and then argues that this fact proves that the housing cannot be considered part of
the pump. Id. As noted, TWW does not provide any expert evidence to support this proposition.
Moreover, its argument makes no sense. Various other pump components – such as the faceplate
and the impeller unit – can be disconnected from each other during disassembly; this does not
mean that each component corresponds to a discrete limitation of the patent claim. The inquiry
is whether a person of ordinary skill in the art would view the components as together
comprising a pump – not whether the individual components can be physically taken apart.
Because there is no genuine question that the pump housing in the accused
devices would be viewed as part of the pump itself, the housing cannot satisfy the separate claim
5
Intex also draws the Court’s attention to the testimony of TWW’s expert, who
states that “[i]f an engineer or consumer were to purchase something described as an ‘electric
pump’ that only had an air compressor and attached electric motor (lacking a housing, air inlets
and outlets, appropriate power connections, etc.), it would not meet their expectations of a useful
device.” See 1st Supp. Dubowsky Rpt. ¶ V.e.iii (emphasis added). The Court draws no
inferences from this testimony, however, as it is not clear whether the housing referenced by Dr.
Dubowsky is the impeller housing within the pump or the housing surrounding the other pump
components.
17
limitation of a socket. Neither party has suggested that any other element in the accused devices
is a socket. The Court therefore concludes that the claim limitation of a socket is not present in
the accused devices.
2. Even If The Housing Is Not Part Of The Pump, It Does Not Meet The Definition Of A
Socket, As Construed By This Court
Even if the pump could logically refer only to the various inner pump components
and faceplate – such that the housing constitutes some other, non-pump element – the housing
does not meet the definition of a “socket.” As construed in the Court’s Markman opinion, the
term “socket” is “a structure that fits and holds onto an inserted part so that the structure and the
part are detachably connected to each other.” Intex III, 2013 WL 5328372, at *16. In the claim
construction proceedings, the parties and the Court used the phrase “to fit and hold onto” as
meaning “to grip,” akin to a light bulb socket that fits and holds onto a light bulb, or electric
socket that fits and holds a plug, or, as discussed at oral argument, a lid that fit and holds onto a
mason jar. See, e.g., id. at *7; TWW’s Obj. Opp. 16, 17, 43 (objecting to “fit and hold
onto/grip” construction).
Unlike a light bulb socket, electric socket or mason jar lid, the housing in the
accused devices does not fit and hold onto the pump components. As demonstrated at oral
argument, if the pump components are placed inside the housing, and the housing is turned
upside down, the pump components fall out of the housing. See Supp. Berninger Rpt. ¶¶ 21-22.
The eight to eleven screws, which attach the inner pump components to the housing, are
necessary to create a tight fit. Id.; see also Dubowsky Rpt. ¶ VI(a)(iii), (b)(iii); 2d Supp.
Dubowsky Rpt. ¶ IV(d).
18
Nor are the pump components “detachably connected” to the housing. For
example, to detach the impeller unit from the housing in a Pump A product, a user must first
remove the faceplate by unscrewing the six screws that attach the faceplate to the housing. Intex
SMF ¶ 17; TWW SMF Resp. ¶ 17. The user must then remove four screws attaching the
impeller unit to the housing. Id. The user cannot remove the pump components from the
inflatable body without effectively disassembling the pump. And while counsel for TWW insists
that being “detachably connected” is no different from the ability to be “disassembled” – a
“semantic” difference rather than one of substance, see TWW SJ Opp. 10 – the Court cannot
agree. Removing eight to eleven screws with a screwdriver is quite different in form from
turning the lid of a mason jar or unscrewing a light bulb; the one constitutes a time-consuming
disassembly while the other is a seconds-long turning of a lid or bulb.
TWW also contends that the distinction between a socket and a housing is purely
semantic and not substantive. TWW Opp. at 2. But the Court rejected TWW’s virtually
identical argument that a socket was equivalent to a chamber in its Markman Opinion. Intex III,
2013 WL 5328372, at *9-12. For the same reasons, it rejects TWW’s argument here. Equating a
socket and a housing would require the Court to ignore entirely the “fit and hold” and
“detachably connected” aspects of a socket as already construed.
In sum, the Court finds that the accused products do not contain a “socket,” as
construed by the Court, and therefore do not literally infringe Claims 14 through 17 of the ’469
Patent.
D. The Accused Devices Do Not Infringe Under The Doctrine Of Equivalents
TWW next argues that even if the housing is not literally a socket, it is equivalent
to a socket, and thus falls within the patent’s scope under the doctrine of equivalents. The
19
doctrine of equivalents holds that a patent’s scope “is not limited to its literal terms but instead
embraces all equivalents to the claims described.” Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., Ltd., 535 U.S. 722, 732 (2002) (citing Winans v. Denmead, 56 U.S. 330, 347
(1854)).
The purpose of the doctrine of equivalents is to “prevent[] an accused infringer
from avoiding infringement by changing only minor or insubstantial details of a claimed
invention while retaining their essential functionality.” Sage Prods., Inc. v. Devon Indus., Inc.,
126 F.3d 1420, 1424 (Fed. Cir. 1997) (citation omitted). It should be noted, however, that a
finding of infringement under the doctrine of equivalents is “the exception and not the rule.”
EPOS Techs. Ltd. v. Pegasus Techs. Ltd., 916 F. Supp. 2d 88, 92 (D.D.C. 2013) (citing London
v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991)). The doctrine’s reach is
limited by the recognition that it “necessarily adds uncertainty to the scope of patent claims, and
thereby detracts from the public-notice function of patent claims and risks deterring
non-infringing and potentially innovative endeavors.” Freedman Seating Co. v. American
Seating Co., 420 F.3d at 1358.
1. Claim Vitiation
Equivalence is an issue of fact ordinarily preserved for a jury. Charles Machine
Works, Inc. v. Vermeer Mfg. Co., 723 F.3d 1376, 1380-81 (Fed. Cir. 2013). But summary
judgment may be awarded to an alleged infringer if the patentee fails to point to “particularized
testimony and linking argument” of equivalence. American Calcar, Inc. v. American Honda
Motor Co., Inc., 651 F.3d 1318, 1338-39 (Fed. Cir. 2011) (internal quotation omitted). Where
the record evidence “is such that no reasonable jury could determine two elements to be
equivalent,” a finding that an accused product infringes a claim under the doctrine of equivalents
20
would vitiate that claim element and is erroneous as a matter of law. Charles Machine Works,
Inc. v. Vermeer Mfg. Co., 723 F.3d at 1380 (internal quotation omitted); accord Taurus IP, LLC
v. DaimlerChrysler Corp., 726 F.3d at 1326; Freedman Seating Co. v. American Seating
Co., 420 F.3d at 1358.
The Federal Circuit has articulated two tests for determining equivalence. One is
to inquire whether the differences between an element in an accused device and an element in the
patent claim are “insubstantial.” Mirror Worlds, LLC v. Apple Inc., 692 F.3d 1351, 1357 (Fed.
Cir. 2012) (quoting Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir. 2008)). Another is to
examine whether the disputed feature “performs substantially the same function in substantially
the same way to obtain substantially the same result” as the feature in the claimed invention. Id.
(internal quotation omitted); see also Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520
U.S. 17, 39 (1997). Thus, “saying that a claim element would be vitiated is akin to saying that
there is no equivalent to the claim element in the accused device based on the well-established
‘function-way-result’ or ‘insubstantial differences’ tests.” Brilliant Instruments, Inc. v.
GuideTech, LLC, 707 F.3d 1342, 1347 (Fed. Cir. 2013) (internal quotation omitted). The
inquiry into equivalence must be performed “on an element-by-element basis.” Warner-
Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. at 40; see also Freedman Seating Co. v.
American Seating Co., 420 F.3d at 1358.
Although TWW asserts that there are genuine questions of material fact as to the
issue of equivalence, the Court disagrees and finds that summary judgment of non-infringement
under the doctrine of equivalents is appropriate here. The two-part analysis tracks the Court’s
earlier discussion of literal infringement. First, for the reasons discussed supra at 15-17, the
housing surrounding the pump components in Intex’s products is part of the electric pump itself,
21
and there simply is no element that corresponds to the socket element in the patent claims. The
accused devices therefore cannot be held to infringe as equivalent, as “an accused product or
process is not infringing unless it contains each limitation of the claim, either literally or by an
equivalent.” Freedman Seating Co. v. American Seating Co., 420 F.3d at 1358 (emphasis
added).
Second, even if permitted to view the housing as distinct from the pump, a jury
could not reasonably conclude on the record evidence that the housing performs “substantially
the same function in substantially the same way to obtain substantially the same result” as the
socket in the ’469 Patent. See Mirror Worlds, LLC v. Apple Inc., 692 F.3d at 1357. The
function-way-result analysis of TWW’s expert, Dr. Dubowsky, consists of a single, albeit
lengthy sentence:
[T]he [housing] in the accused products performs substantially the
same function as the socket recited in the claims and as construed
by the Court (i.e., allowing the pump to be disposed wholly or
partially inside the inflatable body, and yet be detachable if
necessary, such as for servicing, cleaning, inspection or otherwise);
in substantially the same way (i.e., by providing a compartment
inside the flexible inflatable element that fits and holds the pump,
so that the two are detachably connected to each other); to achieve
substantially the same result (i.e., allowing the electric pump to
stably pump the inflatable body without being held manually,
providing a configuration that is compatible with conventional
bedding and bed frames, and allowing for a more compact
configuration that is functionally and aesthetically appealing, and
yet be detachable if desired or necessary.)
2d Supp. Dubowsky Rpt. ¶ IV(g) (emphasis added).
Dr. Dubowsky gives no explanation of how he arrived at his conclusions about
the “function,” “way,” or “result” of the socket. The function-way-result analysis requires “an
examination of the claim and the explanation of it found in the written description of the patent.”
Aquatex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320, 1326 (Fed. Cir. 2007) (internal
22
quotation marks omitted). But Dr. Dubowsky does not link his analysis to the patent claims or
specification. He does not explain his conclusion that the socket’s function is “allowing the
pump to be disposed wholly or partially inside the inflatable body, and yet be detachable if
necessary, such as for servicing, cleaning, inspection or otherwise,” and he certainly does not
connect this purported function to anything in the specification. Dr. Dubowsky makes no
attempt, for example, to reconcile his theory of the socket’s function with the requirement in
Claims 15 and 17 that the socket permit detachment for purposes of deflating the mattress. See
’469 Patent col.8 lines 29-60 (emphasis added).
Dr. Dubowsky also asserts that the housing operates in the same way as the
socket, “by providing a compartment inside the flexible inflatable element that fits and holds the
pump, so that the two are detachably connected to each other.” 2d Supp. Dubowsky Rpt. ¶ IV(g)
(emphasis added). This statement does not suffice to raise an inference that the housing in the
accused products operates in the same way as a socket in the claimed invention. Not only does
Dr. Dubowsky merely paraphrase the Court’s construction of the term “socket,” but he
misinterprets the phrases “fit and hold” and “detachably connected” as used by the Court. Dr.
Dubowsky concedes that the housing remains attached to the pump components only through the
use of screws. Id. ¶ IV(d). This is not a “fit and hold” connection. Dr. Dubowsky also notes
that in order to remove the pump, a user cannot do so manually, but must take the pump apart
with a screw driver. Id. This is not “detachably connected.” Where an expert’s statements “rest
on an incorrect claim interpretation . . . they do not create a factual dispute.” Wiener v. NEC
23
Electronics, Inc., 102 F.3d 534, 542 (Fed. Cir. 1996), abrogated on other grounds, Cybor Corp. v.
FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998). 6
Construing the housing as equivalent to the socket would render meaningless the
“fit and hold” and “detachably connected” aspects of this element – which the Court found
critical in its Markman Opinion. This is untenable. “It is important to ensure that the application
of the doctrine [of equivalents] . . . is not allowed such broad play as to effectively eliminate that
element in its entirety.” Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. at 29.
2. Additional Defenses To Infringement Under The Doctrine Of Equivalents
Intex also argued in its papers that its devices do not infringe under the doctrine of
equivalents because the structures contained in the accused devices were foreseeable at the time
of the invention. See Intex SJ Mot. 31-34; see also Johnson & Johnston Assocs., Inc. v. R.E.
Serv. Co., Inc., 285 F.3d 1046, 1056-59 (Fed. Cir. 2002) (en banc) (Rader, J., concurring)
(proposing foreseeability limitation to doctrine of equivalents). As Intex conceded at oral
argument, however, this defense is foreclosed by the Federal Circuit’s recent decision in Ring &
Pinion Serv. Inc. v. ARB Corp. Ltd., --- F.3d ----, 2014 WL 627623 (Fed Cir. 2014), where a
unanimous panel held that “[t]here is not, nor has there ever been, a foreseeability limitation on
the application of the doctrine of equivalents.” Id. at *2.
Intex instead presented an alternative argument that the principle of disclosure-
dedication bars TWW from alleging infringement. The disclosure-dedication principle holds that
“when a patent drafter discloses but declines to claim subject matter . . . this action dedicates that
unclaimed subject matter to the public.” Johnson & Johnston Assocs., Inc. v. R.E. Serv. Co.,
Inc., 285 F.3d at 1054. Intex contends that the accused devices are analogous to the so-called
6
As discussed at oral argument, Intex does not challenge Dr. Dubowsky’s “result”
analysis. See also Intex SJ Opp. 24-25.
24
“chamber” embodiments disclosed but not claimed in the ’469 Patent specification. Because this
argument has not been fully briefed, and because the Court finds non-infringement under the
doctrine of equivalents on the ground of claim vitiation, the Court does not reach the question of
whether disclosure-dedication provides an alternative basis for a finding of non-infringement.
E. The Court Finds No Reason To Revisit Its Construction of Socket
As discussed above, the Court has construed the term socket to require a “fit and
hold” connection with the pump – i.e., the socket must grip the pump like a light bulb socket,
electric socket or top of a mason jar. TWW asks this Court to interpret the “fit and hold”
requirement more broadly. In support of its argument, TWW asserts that certain embodiments
disclosed in the patent specification have sockets that do not firmly grip or immobilize a pump
and invokes the principle that “an interpretation which ‘excludes a [disclosed] embodiment from
the scope of the claim is rarely, if ever, correct.’” SJ Reply 9 (quoting Accent Packaging, Inc. v.
Leggett & Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013)). TWW’s argument is meritless.
TWW points to the third disclosed embodiment, in which a pump is inserted into
a socket, and a cover may be placed on top of the pump. TWW SJ Reply 9; see ’469 Patent col.
4 lines 3-65. TWW argues that this cover can serve a holding function similar to the function
performed by the screws in the accused devices. TWW SJ Reply 9; see also 2d Supp. Dubowsky
Rpt. ¶ IV(f). But this argument is directly contradicted by the patent specification, which states
that the cover is used to protect the pump from water – not to hold the pump in place. ’469 Patent
col. 4 lines 55-60; see also June 9, 2011 Tr. 47:8-16 (argument of TWW counsel) (explaining
that cover is used to protect socket from wet environment). In the third embodiment, the socket
clearly fits and holds onto (attaches to or grips) the pump. See ’469 Patent col. 4 lines 27-54
25
(describing flanges on pump and corresponding grooves on the socket that permit the pump and
socket to be “firmly connected together”).
At oral argument, TWW asserted for the first time that the first embodiment
disclosed in the specification lacks an immobilizing or gripping socket-pump connection.
Counsel for TWW posited that the first embodiment requires the user to hold the pump in place
while inflating the mattress. This interpretation of the first embodiment is plainly incorrect.
TWW has previously asserted that the claimed invention allows the user to inflate or deflate the
mattress without having to manually hold the electric pump in place, see TWW Claim Constr.
Mot. 3, and its new reading of the first embodiment conflicts with these earlier assertions.
Moreover, the Court reads the description of the first embodiment as requiring that the pump and
socket be attachable, since the specification notes that the user must “detach[] the electric pump
from the socket” in order to deflate the airbed. See ’469 Patent col. 3 lines 4-6 (emphasis added;
citations to drawings omitted).
In its Markman opinion, the Court rejected TWW’s assertion that a socket should
be broadly construed as an “opening or holder for something.” Intex III, 2013 WL 5328372, at
*12-13, 16. TWW renews this argument in disguised form by arguing for a broad reading of the
phrases “fit and hold” and “detachably connected” as used in the Court’s Opinion. TWW has
failed to persuade the Court that there is any reason to reconsider its construction.
26
IV. CONCLUSION
For the foregoing reasons, the Court will grant plaintiff Intex’s motion for
summary judgment of non-infringement and will deny defendant TWW’s motion for summary
judgment.
An Order consistent with this Opinion will issue this same day.
/s/___________________________
PAUL L. FRIEDMAN
DATE: March 10, 2014 United States District Judge
27
Intex Recreation Corporation v. Team Worldwide Corporation
Court: District Court, District of Columbia
Date filed: 2014-03-10
Citations: 59 F. Supp. 3d 28
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