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Case 0:09-cv-60214-WPD Document 110 Entered on FLSD Docket 12/30/2010 Page 1 of 23

UNITED STATES DISTRICT COURT


SOUTHERN DISTRICT OF FLORIDA

CASE NO. 09-60214-CIV-DIMITROULEAS


TREBOR INDUSTRIES, INC., a Florida
corporation,
Magistrate Judge Snow
Plaintiff,
vs.

JL GORY, LLC, d/b/a THE AIR LINE BY


J. SINK, a Florida limited liability company,
LAMARTEK, INC., d/b/a DIVE RITE, a
Florida corporation, SINK ENTERPRISES,
INC., a Florida corporation, JANET S. SINK,
an individual, and JOSEPH R. SINK, an
individual,

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

otherwise fully advised in the premises.

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

activities of Defendant Sink Enterprises. (collectively, “Sink Defendants”).

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.

According to the Complaint, Defendants engaged in manufacturing, selling, and/or

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

enjoyed by the Court.

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

enjoyed by the Court.

Plaintiff contends that the above-described acts of infringement by Defendants have

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

entitled to relief under 35 U.S.C. §§ 283 and 284.

II. DISCUSSION

A. Summary Judgment Standard

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).

B. Defendants’ Motion for Summary Judgment

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

its substantial equivalent in the accused device.”).

Literal patent infringement

Determining whether a patent claim has been infringed requires a two-step


analysis: “First, the claim must be properly construed to determine its scope and
meaning. Second, the claim as properly construed must be compared to the
accused device or process.” Carroll Touch, Inc. v. Electro Mechanical Sys., Inc.,
15 F.3d 1573, 1576 (Fed. Cir. 1993). Claim construction is to be determined by
the court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996)
(“We hold that the construction of a patent, including terms of art within its claim,
is exclusively within the province of the court.”). In construing the claims, the
court looks to the claims, the specification, the prosecution history, and, if
necessary, extrinsic evidence. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996). Application of the properly construed claim to the accused
device is a question of fact.

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

claim language.” Vitronics Corp., 90 F.3d at 1582.

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

Markman, 52 F.3d at 985).

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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

are a part. Vitronics Corp., 90 F.3d at 1582; Markman, 52 F.3d at 979.

The specification contains a written description of the invention which must be


clear and complete enough to enable those of ordinary skill in the art to make and
use it. Thus, the specification is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning of a
disputed term.

Vitronics Corp., 90 F.3d at 1582.

Section 112 of the Patent Act, 35 U.S.C. § 112 provides explicit guidance for

interpretation of claim elements expressed in means-plus-function terms:

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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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An element in a claim for a combination may be expressed as a means or step for


performing a specified function without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.

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

Warner-Jenkinson, 520 U.S. at 29; Lemelson, 752 F.2d at 1551.

“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.
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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

permutations or limitations or “enhancements” only apply to particular claims. Plaintiff contends

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

device includes a body member.

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

where it would supplant other canons of claim construction).

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

separate associated sections.

“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

the pocket after opening the pocket.

As to the term “means for quickly releasing,” Plaintiff submits that the act of tugging

open of the pocket (which is configured in a horizontal position) by pulling on a handle

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

remove the weight.

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

equivalent is present in the accused device.

Infringement analysis under the doctrine of equivalents

Plaintiff argues that Defendant Gory’s summary judgment motion as to infringement

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

cannot grant summary judgment in Defendant’s favor as to the issue of infringement.13

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

F.2d 1039, 1042-43 (Fed. Cir. 1993).

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)

(“Graver II”). As with literal infringement, infringement by equivalents is a question of fact.

Warner-Jenkinson, 520 U.S. at 38. However, in appropriate circumstances, the issue of

infringement by equivalents may be resolved by the court on summary judgment:

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

circumstances of the case.” 339 U.S. 605, 609 (1950).

Significantly, the doctrine of equivalents must be applied on an element-by-element basis,

not to the device as a whole:

Each element contained in a patent claim is deemed material to defining


the scope of the patented invention, and thus the doctrine of equivalents must be
applied to individual elements of the claim, not to the invention as a whole. It is
important to ensure that the application of the doctrine, even as to an individual
element, is not allowed such broad play as to effectively eliminate that element in
its entirety.

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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

of non-infringement against Gory must also be considered a finding of non-infringement against

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

infringement of the ‘557 patent (Count II).

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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Case 0:09-cv-60214-WPD Document 110 Entered on FLSD Docket 12/30/2010 Page 18 of 23

Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999). If possible, claims are construed to preserve

validity. Tate Access Floors, 279 F.3d at 1369.

Pursuant to 35 U.S.C. §102(b), “A person shall be entitled to a patent unless . . . the

invention was patented or described in a printed publication in this or a foreign country or in

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

determination is “a conclusion of law based on underlying findings of fact.” Id.

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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Case 0:09-cv-60214-WPD Document 110 Entered on FLSD Docket 12/30/2010 Page 19 of 23

Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985).

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

the time and modify it to arrive at the patents at issue’s specifications.

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

no elastic member portion of the belt.16

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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Case 0:09-cv-60214-WPD Document 110 Entered on FLSD Docket 12/30/2010 Page 21 of 23

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

infringement. Plaintiff cannot have it both ways.

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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Case 0:09-cv-60214-WPD Document 110 Entered on FLSD Docket 12/30/2010 Page 22 of 23

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

Fed. R. Civ. P. 58, a final judgment shall be entered separately.

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Case 0:09-cv-60214-WPD Document 110 Entered on FLSD Docket 12/30/2010 Page 23 of 23

DONE AND ORDERED in Chambers at Fort Lauderdale, Broward County, Florida, this

30th day of December, 2010.

Copies furnished to:

Counsel of record

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