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Majority Opinion > Pagination * BL UNITED STATES DISTRICT COURT for the SOUTHERN DISTRICT of NEW YORK INFINITY HEADWEAR & Infinity Headwear & Apparel, LLC v. Jay Franco & Sons, Inc., No. 15-CV-1259 (JPO), 2017 BL 268555 (S.D.N.Y. Aug. 02, 2017), Pagination Sons, Inc. and Jay At Play, Int'l HK Ltd. (collectively, * BL "Franco"), alleging that Franco infringes certain claims of U.S. Patent No. 8,864,544 ("the '544 patent "). (Dkt. Majority Opinion > No. 2.) On September 26, 2016, the Court granted Infinity's motion to amend its complaint (Dkt. No. 187) to add two additional claims: (1) false advertising under UNITED STATES DISTRICT COURT FOR THE the Lanham Act and/or common law; and (2) false SOUTHERN DISTRICT OF NEW YORK patent marking under 35 U.S.C. §§ 287 , 292, along with associated factual allegations. (Dkt. No. 188 ("FAC").) INFINITY HEADWEAR & APPAREL, LLC, an Arkansas limited liability company, Plaintiff, -v- JAY Currently pending before the Court are three matters: FRANCO & SONS, INC., a New York corporation, and (1) Infinity's motion for summary judgment that Franco JAY AT PLAY INT'L HK Ltd., a Hong Kong limited is liable for infringement of the '544 patent (Dkt. No. company, Defendants. 190); (2) Infinity's motion for summary judgment that Franco is liable for false patent marking and false 15-CV-1259 (JPO) advertising (Dkt. No. 216); and (3) Franco's motion objecting to United States Magistrate Judge Ronald L. August 2, 2017, Filed August 2, 2017, Decided Ellis's orders denying its requests to stay litigation of the patent infringement claim.1 For the reasons that follow, Infinity's motion for For Infinity Headwear & Apparel, an Arkansas limited summary judgment as to patent infringement is denied; liability company, Plaintiff, Counter Defendant: James Infinity's motion for summary judgment as to false Theodore Burton, Joshua S. Rupp, LEAD patent marking and false advertising is denied; and ATTORNEYS, PRO HAC VICE, Kirton McConkie, Franco's motions objecting to Magistrate Judge Ellis's SALT LAKE CITY, UT; Jeffrey A. Lindenbaum, Lisa A orders are denied. However, considering the recent McAndrews, Collen IP, The Holyoke-Manhattan decision of Patent Trial and Appeal Board ("PTAB") at Bldg.,80 South Highland Avenue, Ossining, NY; Ryan the United States Patent and Trademark Office ("PTO") R. Beckstrom, PRO HAC VICE, Kirton McConkie, (Dkt. No. 298-1), the Court sua sponte concludes that a SALT LAKE CITY, UT. stay of the patent infringement claim is warranted. For Jay Franco & Sons, a New York corporation, Jay I. Motion for Summary Judgment as to Patent At Play, a Hong Kong limited company, Defendants, Infringement Counter Claimants: Ezra Sutton, LEAD ATTORNEY, Ezra Sutton, P. A., Woodbridge, NJ; E. Scott Savage, A. Background SAVAGE YEATES & WALDRON PC, SALT LAKE The following facts—which are undisputed2—are CITY, UT. taken from the record before the Court, including materials incorporated by reference therein. (See FAC; Dkt. Nos. 191-92, 194, 199.) Familiarity with the matter, as set forth in the Court's prior opinion in this case, is presumed. See Infinity Headwear & Apparel, LLC v. J. PAUL OETKEN, United States District Judge. Jay Franco & Sons, Inc., No. 15 Civ. 1259, 2016 U.S. Dist. LEXIS 131578 , [2016 BL 316593], 2016 WL J. PAUL OETKEN 5372843 (S.D.N.Y. Sept. 26, 2016). OPINION AND ORDER The '544 patent , issued on October 21, 2014, is J. PAUL OETKEN, District Judge: entitled "Hooded Blanket and Stuffed Toy Combination" and is assigned to Infinity. [*2] The Infinity Headwear & Apparel, LLC ("Infinity") filed this invention is directed to "a blanket having a hood action on December 22, 2014, against Jay Franco & comprising an ornamental surface, wherein upon © 2017 The Bureau of National Affairs, Inc. All Rights Reserved. Terms of Service // PAGE 1 Infinity Headwear & Apparel, LLC v. Jay Franco & Sons, Inc., No. 15-CV-1259 (JPO), 2017 BL 268555 (S.D.N.Y. Aug. 02, 2017), stowing the body of the blanket within an interior Ricci, 557 U.S. at 586 (citing Celotex, 477 U.S. at 324 volume of the hood, a stuffed toy is provided." ('544 ). In addition, when deciding a motion for summary patent at col. 1 ll. 8-11.) judgment, "[t]he evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn Figure 1 of the '544 patent provides a "perspective in his favor." Anderson, 477 U.S. at 255 . A view of a hooded blanket and stuffed toy" and is a determination as to summary judgment of patent "representative embodiment" of the claimed invention: infringement requires a two-step analysis. In re Gabapentin Patent Litig., 503 F.3d 1254 , 1259 (Fed. (See id. at col. 2 ll. 13-15; Figure 1.) Cir. 2007). First, the Court construes the claims; second, the Court compares the accused product or Franco's allegedly infringing product is a "[w]earable process to the properly construed claims. Id . The first [s]tuffed [a]nimal," called "JAnimals," as depicted in the step is a question of law, and the second step is a following image: question of fact. Id . (citing Markman v. Westview Instruments, Inc., 52 F.3d 967 , 970-71 (Fed. Cir. (Dkt. No. 191-3 at 1.) 1995) (en banc), aff'd, 517 U.S. 370 , 116 S. Ct. 1384 , 134 L. Ed. 2d 577 (1996); Warner-Jenkinson Co. v. The '544 patent has twenty claims, and Infinity seeks Hilton Davis Chem. Co., 520 U.S. 17 , 29 , 117 S. Ct. damages and a permanent injunction against Franco 1040 , 137 L. Ed. 2d 146 (1997)). for infringement of claims 1-2, 6, 8, 10-11, 15-16, and 18-20. (Dkt. No. 192 ¶ 3.) "[I]nfringement is assessed by comparing the accused device to the claims[;] the accused device infringes if it B. Legal Standard incorporates every limitation of a claim, either literally Summary judgment is appropriate when "there is no or under the doctrine of equivalents." MicroStrategy genuine dispute as to any material fact and the movant Inc. v. Bus. Objects, S.A., 429 F.3d 1344 , 1352 (Fed. is entitled to judgment as a matter of law." Fed. R. Civ. Cir. 2005) (alterations in original) (quoting Nazomi P. 56 . A fact is "material" if it "might affect the outcome Commc'ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364 , of the suit under the governing law." See Anderson v. 1372 (Fed. Cir. 2005)) (internal quotation marks Liberty Lobby, Inc., 477 U.S. 242 , 248 , 106 S. Ct. omitted). "An infringement issue is properly decided 2505 , 91 L. Ed. 2d 202 (1986). A dispute is "genuine" upon summary judgment when no reasonable jury if, considering the record as a whole, a rational jury could find that every limitation recited in [*3] the could find in favor of the non-moving party. Ricci v. properly construed claim either is or is not found in the DeStefano, 557 U.S. 557 , 586 , 129 S. Ct. 2658 , 174 accused device either literally or under the doctrine of L. Ed. 2d 490 (2009) (citing Matsushita Elec. Indus. equivalents." Gart v. Logitech, Inc., 254 F.3d 1334 , Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574 , 587 , 1339 (Fed. Cir. 2001). 106 S. Ct. 1348 , 89 L. Ed. 2d 538 (1986)). C. Discussion "[A] party seeking summary judgment always bears the On September 26, 2016, the Court completed the first initial responsibility of informing the district court of the step of summary judgment on infringement, issuing an basis for its motion," Celotex Corp. v. Catrett, 477 U.S. order construing the disputed claim terms of the '544 317 , 323 , 106 S. Ct. 2548 , 91 L. Ed. 2d 265 (1986), patent . The Court adopted the following constructions: and must identify "particular parts of materials in the record, including depositions, documents, electronically Disputed Court's Construction stored information, affidavits or declarations, stipulations (including those made for purposes of the Term motion only), admissions, interrogatory answers, or other materials," Fed. R. Civ. P. 56(c)(1)(A) , which it Blanket a blanket, a comforter, a sheet, a believes demonstrate the absence of a genuine issue of material fact. To preclude summary judgment, the jacket, a windbreaker, a parka, a non-moving party must then respond with specific facts demonstrating that there are remaining issues for trial. poncho, a towel, a beach towel, a bath © 2017 The Bureau of National Affairs, Inc. All Rights Reserved. Terms of Service // PAGE 2 Infinity Headwear & Apparel, LLC v. Jay Franco & Sons, Inc., No. 15-CV-1259 (JPO), 2017 BL 268555 (S.D.N.Y. Aug. 02, 2017), product, and (2) other images of the accused product. towel, a coat, a wrap, a scarf, a shawl, (Dkt. No. 191 at 8-13, Exs. 2-3.) Infinity argues that its "element-by-element" comparison of the asserted a cloak, a shirt, a sweatshirt, a hooded claims of the '544 to the accused products, accompanied by depictions of the accused shirt, a hooded sweatshirt, or similar products provided by Franco, are sufficient to prove infringement in this case. (See id. at 14-15 piece of clothing (citing In re Gabapentin Patent Litig., 503 F.3d at 1259 ).) Franco argues that Infinity's proffer on summary Perimeter / the outer limits of an area judgment is legally insufficient. (Dkt. No. 194 at 2.) Perimeter The evidence supplied by Infinity, without more, is Edge insufficient to meet its initial burden of production on summary judgment. See Celotex, 477 U.S. at 323 . Positioned relating to, existing on, or connected Infringement contentions are not "particular parts of with materials in the record, including depositions, documents, electronically stored information, affidavits Externally the outside or an outer part or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory Continuous an uninterrupted border answers, or other materials," which a patent owner must put forth in order to demonstrate that there is no Edge Surface genuine issue as to any material fact.
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