Wednesday, January 23, 2013

Apparently Wah Hung Did Not Reinvent the Wheel

On January 17, 2013, District Judge Ronald S.W. Lew issued two opinions in Wah Hung, Int’l Machinery, Inc., et al. v. Valley Custom Tire, Inc., et al., No. 11-cv-4178 (C.D. Cal.).  In this lawsuit, Wah Hung was asserting its Design Patent Nos. 617,720; 620,425; 620,867; 639,220; each of which was titled “Front Face of a Vehicle Wheel.”  Below is a representative figure from the ‘720 Patent:

Read our case summery after the jump. 

On May 16, 2011, Wah Hung accused Valley Custom Tire and co-defendant Wholesale Wheel & Tire, LLC of infringing the patents-in-suit by offering for sale and selling the Gitano G68, Gitano G78, Gitano G88, and Gitano G98 wheels.  On November 30, 2012, Valley Custom Tire moved for summary judgment of no-infringement and Wholesale Wheel moved for summary judgment of invalidity with respect to the ‘720, ‘425, and ‘220 Patents.

With regard to Valley Custom’s mdeotion for summary judgment of no infringement, the Court easily ruled in the defendant’s favor.   Essentially, Valley Custom submitted evidence showing that the accused products were never sold, manufactured, or offered for sale.  The evidence included Valley Custom’s product list and various catalogues dating from 2004.  Wah Hung attempted to argue that the evidence submitted by Valley Custom in support of summary judgment was a sham, created only for the motion itself.  

However, the Court found that Wah Hung’s assertion of foul play was not supported by any evidence.  Although Plaintiffs’ counsel provided a declaration stating that prior to litigation Wah Hung was able to purchase the accused products bearing the Gitano brand name. However, the declaration was merely conclusory and the Court found it to be insufficient.  (citing Villiarimo v. Aloha Island Air Inc., 281 F.3d 1054, 1061 (9th Cir. 2002) (“‘Uncorroborated and self-serving testimony,’ without more, will not create a ‘genuine issue’ of material fact precluding summary judgment.”)).   Because Wah Hung failed to demonstrate a material issue of fact as to whether the accused products had ever actually been sold, the Court ruled in Valley Custom’s favor on all counts of infringement.

With regard to Wholesale Wheel’s motion for summary judgment of invalidity, the Court began with the ‘220 Patent.  Wholesale wheel contended that this design was anticipated by a prior art product – the U2-55B wheel.  Below is Figure 1 of the ‘220 Patent alongside an image of the U2-55B wheel that is available online:

Wah Hung did not dispute that the U2-55B product was sold in 2007 and pre-dated the filing of the ‘220 Patent, only that it failed to anticipate the ‘220 Patent.  However, the Court disagreed.  After providing a brief comparison of the U2-55B to the ‘220 Patent, the Court concluded that the designs were identical and the ‘220 Patent was invalid. 

Based on a similar comparison, the Court also found the ‘867 Patent invalid as anticipated by the Bentachi B3 wheel, which was publicly available prior to the filing date of the ‘867 Patent.  Below is Figure 1 of the ‘867 Patent alongside an image of the Bentachi B3 wheel that is available online:

The court also held that “[a]lthough the Bentchi B3 contains an additional set of rivets, this slight variation would not convince an ordinary observer that the Bentchi B3 and the ‘867 Patent are different because the rivets do not change the overall visual impression of the wheel. citing Seaway, 589 F.3d at 1243 (Fed. Cir. 2009) ( “Although the ordinary observer test requires consideration of the design as a whole . . . this does not prevent the district court on summary judgment from determining that individual features of the design are insignificant from the point of view of the ordinary observer and should not be considered as part of the overall comparison.”).

Finally, the Court found that the ‘720 and ‘425 Patents were invalid under the on-sale bar of §102(b).  With regard to the ‘720 Patent, Wholesale Wheel submitted invoices showing that Wah Hung sold its U2-35S wheel more than a year prior to the filing date for the ‘720 Patent and that it sold its B15 wheel more than a year prior to the filing date for its ‘425 Patent.  Based on these sales before the critical dates and the similarity of the designs, the Court found the ‘720 and ‘425 Patents invalid for this additional reason.  Below is Figure 1 of the ‘720 Patent alongside an image of the U2-35S wheel that is available online and Figure 1 from the ‘425 Patent alongside an image of the B15 Wheel.

Based on the prior art that was uniquely within Wah Hung’s knowledge, the plaintiffs were lucky that Judge Lew mercifully denied the defendants’ requests for legal fees.  However, Wah Hung stands as a reminder to all would-be plaintiffs in design patent cases.  Steps should be taken, prior to filing a complaint, to ensure that the patents-in-suit are actually infringed and that there are no obvious invalidity arguments.  In some cases, a pre-filing investigation may reveal that it would be wiser not to assert a design patent in order to preserve its presumed validity.

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