Choon's Design LLC v. Tristar Products, Inc.
2:14-cv-10848
E.D. Mich.Aug 10, 2017Background
- Choon’s Design, Inc. sued Tristar Products, Inc., alleging Tristar’s Bandaloom product and a Taffy Twist instructional video literally infringe claims 9 and 14 of U.S. Patent No. 8,485,565.
- Central dispute: the meaning of the claim term “base” as construed by the Court in a prior claim construction order; Court defined “base” as a structure separate from the pin bar(s) whose purpose is to locate or support the pin bar(s).
- Choon’s initially argued the Bandaloom was a one-piece loom; after claim construction, it shifted to arguing the Bandaloom is multi-piece because four removable rubber feet constitute the separate “base.”
- Tristar contended the rubber feet do not meet the Court’s construction because their purpose is to reduce sliding/protect surfaces, not to locate or support pin bars.
- Expert and fact testimony: Choon’s expert conceded the plastic portion locates/supports pin bars and that the loom is stable without feet; Tristar’s witnesses (including the Bandaloom developer) testified the feet provide friction/protect surfaces.
- The Court concluded the rubber feet do not perform the claimed purpose of the “base,” so the Bandaloom and video do not satisfy every limitation of the asserted claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Bandaloom’s rubber feet qualify as the claimed “base” | The rubber feet are separate, removable pieces that support and locate the pin bars and thus meet the Court’s construction of “base.” | The feet only provide friction/protect surfaces and do not locate or support pin bars; the plastic portion performs that function. | The feet do not meet the construed definition; Bandaloom lacks the claimed “base.” |
| Whether the Bandaloom literally infringes claim 9 | Because the feet constitute a separate base, the Bandaloom meets every limitation and literally infringes claim 9. | Missing the claimed “base” limitation; therefore no literal infringement. | No literal infringement of claim 9 as a matter of law. |
| Whether the Taffy Twist video literally infringes claim 14 | The illustrative loom in the video is the Bandaloom, so if Bandaloom meets claim 9, the video infringes claim 14. | Same defense: the video’s loom does not include the claimed “base.” | No literal infringement of claim 14 for the same reason as claim 9. |
| Whether summary judgment is appropriate for literal infringement | Choon’s: no genuine dispute of material fact; summary judgment should be granted. | Tristar: disputed whether the feet meet the claim construction; factual issues exist. | Court denied Choon’s motion; as a matter of law the feet do not meet the claim limitation so Choon’s fails to prove literal infringement. |
Key Cases Cited
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (claim construction is a matter of law for the court)
- Bai v. L & L Wings, Inc., 160 F.3d 1350 (Fed. Cir. 1998) (two-step infringement analysis: claim construction then comparison)
- Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) (summary judgment standard in patent infringement contexts)
- MicroStrategy Inc. v. Business Objects, S.A., 429 F.3d 1344 (Fed. Cir. 2005) (infringement requires every claim limitation either literally or under equivalents)
- Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340 (Fed. Cir. 2009) (patent owner must prove infringement by preponderance; absence of any limitation defeats literal infringement)