Swimways Corporation et al v. Zuru, LLC, No. 2:2013cv00334 - Document 101 (E.D. Va. 2014)

Court Description: OPINION AND ORDER granting 53 Motion for Summary Judgment; denying 56 Motion for Partial Summary Judgment. Copies distributed as directed. Signed by District Judge Mark S. Davis and filed on 7/18/2014. (bgra)

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UNITED STATES EASTERN DISTRICT DISTRICT Norfolk SWIMWAYS CORPORATION VAP CREATIVE, OF FILED COURT VIRGINIA Division JUL 1 8 2014 CLfcRK, US DISTRICT COURT and NORFOLK. VA LTD., Plaintiffs, Case v. ZURU, No.: 2:13cv334 INC., Defendant. OPINION AND This matter is currently before summary judgment ECF No. 53, and a motion Vap Creative, (collectively, hearing the on judgment by Zuru, ("Vap") summary that is Inc. Court ("Zuru" on or a motion ECF No. judgment and 56. motions for "Defendant"), and SwimWays Corporation follow, GRANTED the for partial summary judgment "Plaintiffs"), the reasons filed Ltd. ORDER filed by ("Swimways") The Court conducted a on July 15, 2014. For Defendant's motion seeking summary Plaintiffs' motion seeking partial summary judgment is DENIED. I. As No. 38, FACTUAL AND PROCEDURAL BACKGROUND discussed at length in at this case is a single patent issue in Propelled Figure," patent") . The claims of the self-propelled toy U.S. figure, this Court's Markir.an Opinion, Patent No. ECF titled "Self- 6,860,785 ("the '785 '785 patent are directed toward "a and in particular, to a water toy, such as, liquid, a fish such as or a sea water." "The figure includ[es] the torso, and a respect to the feature of appendage, Id. at to 1. invention "configured to the torso," can at traverse 1:5-7, through ECF No. a 40-1. a flexible appendage coupled to configured claimed is that patent a torso, torso." which with respect '785 drive the turtle, move The is to the and "[t]he purportedly the flex appendage figure's while [it] with unique flexible is moving relative motion and the flex of the appendage effectively propel the toy figure through the liquid and provide the appendage with Id. at 1:23-29; On June 1:61-67. 14, 2013, infringement action, '785 patent." Plaintiffs filed Complaint fl 12, ECF No. assert that [Defendant] 31-35 of '785 Patent Br. Supp. the 38 Mot. parties the for Summ. filed instant patent . . . that infringe one or more claims of "[P]laintiffs and the alleging that Zuru LLC "sells a variety of robotic fish products the life-like movements." cross-motions infringes ('asserted J. at 3, ECF No. for 1.1 . . . [C]laims claims')." 54. summary Specifically, Def.'s On May 30, 2014, judgment on issues involving infringement and invalidity of the '785 patent. 1 Plaintiffs filed an Amended Complaint on March 14, 2014, alleging infringement by Zuru, Inc. ECF No. 40. At the July 15, 2014 summary judgment hearing, counsel for Defendant confirmed that Zuru, Inc. is the only proper defendant in this case, as Zuru LLC did not import or sell any allegedly infringing products in the Eastern District of Virginia. Plaintiffs allege in judgment that, with Defendant has failed rebutting [Plaintiffs'] their respect to to "come motion Claims evidence of Br. asserts motion in - because Def.'s Supp. Mot. response that Br. of Supp. Mot. obvious Br. motions at "cannot be at 7, and specific ECF No. its own liable invalid Summ. J. at ECF No. 4-5, 65. asserted least Supp. have in is 34, 35, evidence and showing Defendant summary judgment for in 1, 57. the infringement first ECF No. 54; place." see Specifically, also Defendant '785 patent is invalid "because each and every patent's over as for in Opp'n at the well patent with summary fact which merits a trial." J. as 32, infringement Summ. Defendant contends that the Def.'s - [P]laintiffs' Def.'s Br. one for partial 31, forward that there is a genuine dispute of Pis.' for Mot. been four for fully claims [is] separate Summ. J. briefed at and anticipated prior 2, are art ECF by or references." No. 54. therefore Both ripe for review. II. A. The Federal STANDARD OF REVIEW Summary Judgment Standard Rules of Civil Procedure provide that a district court shall grant summary judgment in favor of a movant if such party "shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The mere existence of some alleged factual dispute between the parties "will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby Inc., Once entry a of movant summary has 477 U.S. properly judgment, the 242, advanced 247-48 (1986). evidence non-moving party supporting may not rest upon the mere allegations of the pleadings, but instead must set forth exhibits specific statements Corp. Civ. v. P. facts illustrating Catrett, 477 56{e) (2). himself to matter but trial." in At weigh to the a U.S. form genuine 317, evidence issue for there at 249. is a sworn Celotex see also Fed. judge's determine and trial. (1986); "the and whether 477 U.S. of 322-24 that point, determine Anderson, the function the is not of the issue for truth genuine R. In doing so, the judge must construe the facts and all "justifiable inferences" in the light most favorable make credibility determinations. v. City 2012). to Council After the of non-moving party, Newport viewing "the judge must the Id. News, one side or the minded jury could return a verdict ruling presented." on F.3d in the summary other for the U.S. the 255; ask himself not whether he unmistakably favors evidence at 674 evidence and judge may not T-Mobile Ne. 380, 385 (4th non-movant's thinks but 477 at whether judgment "necessarily 252. Cir. favor, the evidence [non-movant] Anderson, LLC a fairon the Because implicates a the substantive the trial on scintilla will evidentiary standard the . . . evidence in support insufficient" be of merits [,] of proof to [t]he overcome summary judgment motion. evidence "is merely Id. that would apply of mere the a plaintiff's defendant's Accordingly, colorable, existence or at of a position well-founded if the non-movant's is not probative, summary judgment may be granted." significantly Id. at 24 9-50. B. Patent Invalidity Standard A patent States is Patent establishing presumed and valid Trademark invalidity of upon issuance Office, a patent and the this presumption invalidate a patent evidence. U.S. 1, the on Corp. (1934)). judgment stage. F.3d 1374, 1378 issue convincing v. This i4i Ltd. of (Fed. 2005). stage, the of v. of shall § 282. seeking Thus, to Ct. 2238, invalidity "must invalidity so the Mfg., summary L.P., 424 summary judgment submit that Cir. 2001); at 293 in order to prevail at party seeking F.3d (Fed. 131 S. Biocrest Eli Lilly & Co. 962 party applies could find otherwise." 955, the 35 U.S.C. P'ship, standard Cir. patent evidence "burden of Am. v. Radio Enq'g Labs., Invitrogen Corp. summary judgment the requires {citing Radio Corp. 8 United to prove invalidity by clear and convincing Microsoft 2246 (2011) the or any claim thereof rest on the party asserting such invalidity." Overcoming from no such reasonable v. Barr Labs., Apple clear Computer, and jury Inc., 251 Inc. v. Articulate Sys., patent is U.S.C. § 102, obvious Inc., invalid if it if or ... 234 the F.3d was 14, 20 (Fed. anticipated claimed by Cir. prior invention 2000). art, "would to a person having ordinary skill A see have 35 been in the art to which the claimed invention pertains," 35 U.S.C. § 103. 1. Invalidity Based on Anticipation "A patent claim is invalid due 'the four corners of a single, element claimed of the expressly or inherently, the art could 1331, prior art document invention the 2009) v. 212 F.3d 1272, order a claimed invention, must enable one of ordinary Inc., "[A] a prior art feature of characteristic single Pharms., 1282 skill 'anticipation 339 by 545 F.3d 1312, claimed necessarily anticipating Inc., undue 576 F.3d in (Fed. 1314 Cir. Inc. 2000)). "In a prior art reference the make art to Impax Labs., (Fed. Cir. the Inc. v. 2008). reference may anticipate without disclosing the is v/ithout Acushnet Co., invention without undue experimentation." Aventis Pharms., either (quoting Advanced Display Sys., v. Kent State Univ., to anticipate described], invention Callaway Golf Co. 1346 (Fed. Cir. [is . . . every such that a person of ordinary skill in practice experimentation.'" to anticipation if, within invention present, reference." F.3d 1373, inherent 1377 or Schering (Fed. disclosure is Cir. if that missing inherent, Corp. 2003). appropriate in v. the Geneva "However, only when the reference discloses prior art the unstated anticipate F.3d limitation, the 1364, 1373 "A 1378 claim,' analysis: comparison re the reference] Omeprazole 2007) v. 1396, prior art invoke the 1406 that 'the Bridqewood a claim first second is step step properly (Fed. in construed Cir. reference Inc. v. 2008). Although the record Enzo Biochem, Cir. 2010) F.3d 1349, Inc., "anticipation v. Inc., 290 F.3d anticipated requires the construing analysis claim to involves the the requires prior 545 is a a a art.'" LLC v. Siemens AG, 378 not however slight, anticipation." F.3d 1359, question 1371 of the Net (Fed. fact," Cir. rather "'it may be decided on summary judgment no genuine Applera (quoting Leqqett (Fed. original) invention, obviousness, reveals 1352 in 483 claimed of Verisign, Inc. Litig., "[Differences between a than a question of law, if Servs., inherently 2004)). and question MoneyIN, Patent (alteration Id. at 1332 (quoting Power Mosfet Techs., F.3d cannot 2002)). '[t]he of Cir. Corp. (Fed. Cir. and In (Fed. determination two-step the claims.'" (quoting Transclean 1364, [or that must necessarily include Cir. & dispute Corp., Piatt, 599 Inc. of F.3d v. material 1325, VUTEk, fact.'" 1331 (Fed. Inc., 537 "if the 2008)). 2. Invalidity Based on Obviousness A patent is invalid based on obviousness differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 properly grant, judgment on U.S.C. as patent a § 103(a). matter "[A] of invalidity law, when district a the motion factual court for summary inquiries obviousness present no genuine issue of material fact[]." Corp. v. 2011) (quoting Ryko Mfg. (Fed. Cir. 724 Easton Enters., 1991)); F.2d 1567, Inc., (Fed. Union Cir. challenge "demonstrate artisan 'by would a have and had 1366 Corp. v. claims as convincing reason to Am. Can skilled artisan would have obvious, evidence combine success from doing so.'" USA, Inc., Inc. v. "The factual factors, the 566 F.3d Apotex, Inc., the of 994 480 (Fed. F.3d Cir. 1348, often 2009) 1361 a skill in referred the a v. must skilled teaching of the and that art; v. Teva Pharms. (quoting to as Cir. the Pfizer, 2007)). Graham the prior art; 3) between the claimed invention and the prior art; 8 Inc. party that (Fed. the scope and content of ordinary Co., reasonable expectation of Procter & Gamble Co. underpinnings, include 1) level 989, had a Cir. 1983). prior art references to achieve the claimed invention, the Tokai (Fed. Chore-Time Equip., 778-79 (Fed. Cir. patent's clear 1358, into Inc., 950 F.2d 714, 716 Carbide 1984); Cumberland Corp., 713 F.2d 774, To F.3d Co. v. Nu-Star, accord 1571 632 can the 2) differences and 4) evidence of secondary factors, also known nonobviousness." Unigene Labs., 1352, Cir. 2011) 383 1360 U.S. Inc., (Fed. 1, 17-18 550 U.S. A district evidence conclusion Hydrochloride 1063, can see is four respect (Fed. KSR Inc., 655 of F.3d John Deere Co., Int'l Co. v. Teleflex Graham to Cir. factors obviousness. Capsule 2012). before In re Patent Although expert of the reaching a Cyclobenzaprine Litig., 676 "the district testimony, F.3d court 550 ordinary account all resolve or keep open certain questions of fact," KSR Int' 1, to logic, into consider may at 427, take to which U.S. should also required Extended-Release 1076-77 and the with v. Apotex, indicia 406 (2007). court under Inc. objective (quoting Graham v. (1966)); 398, as the obviousness inquiry "also may include recourse judgment, skill," and common sense available to the person of which "do not necessarily require explication in any reference or expert opinion," Perfect Web Techs., InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. Inc. v. 2009). It is well-settled that "[o]bviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination." Unigene Labs., 655 the showing additional time prior of the art F.3d at invention elements 1360. that would in the a "Rather, person have of obviousness requires ordinary selected normal course and of skill at combined research the those and development to yield Int' 1, 550 U.S. skill possesses automaton"); at obvious 421 Bayer invention, (describing that Schering Pharm. is persons not whether obvious to judges However, "expert the ordinary it after is the at not an Inc., 575 dissenting) would a genuine material issue of 616 F.3d 1239 not subject to a (Fed. been of to the appear made.")). combine may will not necessarily create fact." Cir. time to ("The have finally testimony concerning motivation even if present, of ordinary simple is KSR is] the sufficiently discovery (citing Labs., Barr invention skill be unnecessary and, 1231, v. [and (Newman, J., whether of AG Id. a person creativity, (Fed. Cir. 2009) criterion to claimed invention." "ordinary F.3d 1341, 1350 statutory the Wyers 2011). v. Master Indeed, Lock Co., "obviousness 'rigid formula,'" and "'common sense of is those skilled in the art demonstrates why some combinations would have been obvious where F.3d at 485 F.3d 1329. 1157, the prior art, others would not.'" (quoting Leapfrog 1161 (Fed. Cir. the scope of Perfect Web Techs., Enters, 2007)). v. Fisher-Price, Where the patent claim, ordinary skill in the art are "the 587 Inc., content of and the level of not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment (quoting KSR Int'l, is appropriate." 550 U.S. at 427). 10 Wyers, 616 F.3d at 1239 C. Patent Infringement Standard A patent is makes, uses or sells any patented States . . . § 271(a). infringed during the when term a person "without invention, of the within the patent." U.S.C. "An infringement analysis involves two steps. First, allegedly 138 F.3d infringing 1448, Westview Corp. 1454 device." (Fed. Instruments, v. Portec, Inc., Cir. "patentee's Cybor 1998) Inc., 517 expert [has] Corp. banc) (en v. (citing Markman U.S. 370, 372 821 (Fed. Fas Cir. 970 F.2d 816, a motion for summary judgment, the the patent claims and then the properly construed claims are compared to the v. United 35 the court determines the scope and meaning of asserted, authority Techs., (1996); Read 1994)). On the court must determine whether set forth the factual foundation for his infringement opinion in sufficient detail for the court to be certain that features of the accused product would support a finding of infringement by the the court", drawing non-movant." Elecs., Arthur A. Inc., 589 Collins, 48 (Fed. Cir. under the all reasonable Intellectual F.3d Inc. 2000)). 1179, v. claim construction adopted Sci. 1183 inferences & Tech., (Fed. N. Telecom Ltd., Cir. "in favor of Inc. v. 2009) Sony (citing 216 F.3d 1042, 1047- "[A] good faith dispute about the meaning and scope of asserted claims does not, in and of itself, create a genuine dispute to preclude summary judgment in patent cases." Phonometrics, Inc. v. N. Telecom Inc., 11 133 F.3d 1459, 1463 (Fed. Cir. 1998). Thus, infringement, whether equivalents, is a although literal question "[t]he or of determination the under fact," the of of doctrine determination of infringement "is properly decided upon summary judgment when no reasonable jury could find that every limitation recited in the properly accused construed device equivalents." Cir. claim either either is literally Gart v. Logitech, or or is not under Inc., 254 found the Plaintiffs seek infringement claims, doctrine F.3d 1334, of 1339 (Fed. on their 34, has failed to rebut. 57. summary judgment arguing that they have presented sufficient 32, ECF No. and 35" of DISCUSSION partial evidence demonstrating that the Defendant '785 patent, Pis.' Br. has infringed "Claims even Supp. Mot. for Summ. Defendant responds that "[P]laintiffs' if the '785 patent "unquestionably demonstrates the patent in suit." that Def.'s Br. 31, which they claim Defendant were valid, [Defendant] does J. at 7, motion lacks merit entirely" because "an invalid patent cannot be No. the 2001). III. and, in infringed" the not in Opp'n at 1 & n.l, evidence infringe 4-6, ECF 65. Defendant seeks arguing that "the summary '785 patent judgment is on invalidity grounds, invalid and unenforceable as a matter of law due to lack of novelty and/or obviousness under 35 12 U.S.C. 53. the §§ 102 and 103." Specifically, Def.'s Mot. for Summ. J. at 1, ECF No. Defendant argues that independent Claim 31 of '785 patent "is invalid as anticipated by a wide variety of prior art references," and anticipated or obvious in Supp. Mot. omitted). for Summ. J. "dependent Claims 32-35 light of the prior art." at 17, ECF No. 20, In support of its motion, 54 and who identified references" to United States the (capitalization Defendant submits an expert Inc., 376 accused F.3d Office none of examiner Id. at 4.2 1339, infringer's separate '785 patent, Patent the '785 patent." "four are Def.'s Br. invalidity report authored by Dr. Michael Triantafyllou, 54-3, 38 primary ECF No. prior art which "were before the during the prosecution of See Glaxo Grp. Ltd. v. Apotex, 1348 (Fed. "burden is Cir. 2004) especially (observing that difficult when an . . . the infringer attempts to rely on prior art that was before the patent examiner during prosecution"). references identified by Defendant Plaintiffs argue that the and Dr. Triantafyllou "fail 2 The parties do not dispute that the references identified in Dr. Triantafyllou's report "are prior art to the '785 patent." Br. in Opp'n at 2, ECF No. 68; see also Final Pretrial Order M ECF No. 87. The Court notes that "United States Patent No. PL's 14-19, 6,179,683 Bl" ("the Pell patent"), also identified in the Final Pretrial Order as prior art, id. 5 15, does not appear to be included in the summary judgment record before the Court, although Dr. Triantafyllou's reply invalidity report indicates that the Pell patent was "attached as Exhibit 22" to his report, Reply Invalidity Report of Dr. Triantafyllou at 32, ECF No. 70-3. Thus, the Court will limit its invalidity discussion to the four primary references discussed in Dr. Triantafyllou's invalidity report Van Ruymbeke, Yamamoto, Triantafyllou '750, and Hirata. 13 to anticipate or render obvious the asserted claims." Pis.' in argument, Opp'n at 2, ECF No. 68. In support of their Plaintiffs submit a rebuttal expert invalidity report by Mr. Ayton, Br. Ian ECF No. 68-4. Before proceeding to the invalidity and infringement issues surrounding parties' the '785 patent, the Court will first address the remaining dispute regarding the Court's construction of one of the disputed claim terms, claim language is as a proper construction of the vital to the Court's analysis of the parties' invalidity and infringement arguments. A. Proper Construction of the Claim Language The Court issued construing five No. In 38. parties its disputed their maintain Markman claim briefs some on Opinion terms in summary disagreement on the March '785 judgment, with respect 10, 2014, patent. ECF however, the to the claim term "configured to flex in response to said drive producing the relative motion" AND "configured configuration in response motion." at 32. Id. to to flex said drive Specifically, into producing a non-planar the relative the parties disagree as to the scope of the terms "configured to" and "in response to said drive producing the relative motion." 1. "configured to" Defendant in part, alleges because, that it is not liable for infringement, although the appendage of the accused product 14 "is indeed made of an capable of bending, elastomeric material, . . . the configured to bend in Br. '[appendage] response to the material is not that Plaintiffs argue 'specifically' of Dr. drive motion.'" that into Triantafyllou Defendant's the some special - Pis.' Br. Supp. Mot. albeit Def.'s opinion, claim [claim] to (quoting ECF No. insert 65-1) . the construction" language word is an 'configured to' never-clearly-defined for Summ. In its Markman 11, "attempt Court's "apparent attempt to infuse the at is specifically in Opp'n at 7-8, ECF No. 65 (emphasis in original) Infringement Report with a - meaning." J. at 8-9, ECF No. 57. the Court discussed at length the term "configured to" with respect to the claim term "configured to propel the figure through the liquid." See, at Defendant's 24, 27-31. construction The Court "replacing rejected 'configured to' e.g., with ECF No. 38 proposed 'capable of," because "a construction that an appendage is merely 'capable' of propelling a figure through liquid fails to adequately convey that the appendage is actually 'configured to' propel the figure through Inc. v. the liquid." Dell, Id. Inc., at 659 28 (citing F.3d 1376, Typhoon 1380 Touch (Fed. Cir. Techs., 2011) (distinguishing between a device configured to perform a certain function and a device that is simply capable of being configured to perform 'configured that to' function)). as 'capable Recognizing of 15 would that render "interpreting [certain] claims 'virtually devoid of meaning," Abb, Inc., *33 No. (E.D. 6:ll-CV-0048, Tex. 'configured to' the Court July understands (quoting 2012 U.S. Sipco, Dist. 2012)). at 2012 instant construing the nothing that to LLC 2012)), require v. LEXIS *147; see not at Court claim is not 2010) (noting in a a device certain 106659, "construe[d] way" being v. LEXIS the Inc., capable id. at Tex. Oct. 19, that the plain and Defendant's in the 2012 U.S. Hillerich 16164, & at "proposal configured' plain Dist. and *16 (N.D. to' to an of adds ordinary LEXIS 150940, Bradsby Co., "'configured "refer[s] of 2:08-cv-359, No. C 07- Feb. 24, embraces the Cal. intentionally and specifically made and which (E.D. '[specifically] term No. at is sufficient in the context as Amazon.com, Dist. that merely *147 already present also McHugh 2010 U.S. of LEXIS Court maintains term, term as meaning 03677, concept the Amazon.com, 150940, the meaning of the term." at Dist. LLC v. rather being actually configured,'" Likewise, the (quoting Sipco, U.S. ordinary meaning of "configured to" of 29 as having its plain and ordinary meaning, being configured but 31 30, id. intentional to act design" (citation omitted)). 2. "in response to said drive producing the relative motion" Defendant Mr. Ayton, the term asserts that Plaintiffs, have improperly modified the "in response to said 16 drive through their expert, Court's construction of producing the relative motion" in an "attempt to import additional limitations [C]laim 31 in a vain effort to steer clear of prior art Summ. J. that dooms at 16, simply added that claim." ECF No. 54. "bracketed Def.'s into the overwhelming Br. Supp. Mot. for Plaintiffs respond that Mr. Ayton language [to the Court's construction] for the purpose of clarity," and it is actually Defendant "that is misapplying the Court's claim construction." Pis.' Br. in Opp'n at 6, ECF No. 68. In their Markman briefs, should adopt the term, Markman Pis.' "plain Plaintiffs proposed that the Court and Br. ordinary meaning" at proposed the construction, 12, ECF No. of 20, the and disputed Defendant "The appendage is capable of bending such that the entire appendage is not in a single plane," Def.'s Markman Br. Plaintiffs "not at 12, argued quite ECF that accurate No. 21. At Defendant's in the sense the proposed that it bending, flexing in response to the drive." No. Plaintiffs explained that, 35. appendage is going back and Markman hearing, construction doesn't refer was to Hr'g Tr. at 28, ECF "when the drive goes and the forth, the forces of the drive, [and] the forces of the water are going to cause that appendage to flex out of plane. Defendant's "tak[es] when the proposed So it's in response to the construction, drive." Plaintiffs Id. contended, it out of context of . . . its ordinary use in a liquid drive is causing that 17 flexing." Id. at 28-29. A better construction, Plaintiffs offered, was one that "says that it bends out of plane in response to the elsewhere in the claim." After considering the construction, Id. at 29. Plaintiffs' "the argument, appendage motion produced by said drive, drive that's described bends, the Court proposed in response to the such that the entire appendage is not in a single plane,"3 and Plaintiffs asserted that they "would be pretty comfortable with that." asked what Defendant answered, "I Honor: would don't We think oppose offered to proposed thought we be can that." Id. just drop the construction of make perfectly Id. "in response fine "In Defendant's invalidity primary prior J. at 4, disclose ECF art 54, appendages 3 In its said Markman with Id. arguments all of center Br. easy construction. We continued, said drive' inherent now appears, "an Supp. id., "four Mot. for to in response adopted the the Court we as separate according flex to and however, issue," around "we from the which, "configured opinion, Your that's is Defendant for Defendant It Def.'s pretty that think drive" references," No. one fact," we When the Court construction, 'in response to because to the this don't think it's also an issue." that at 29-30. Summ. Defendant, to the agreed-upon construction "with minor adjustments reflecting the grammatical form of the original term," such that the Court's final construction read: "configured to bend, in response to the motion produced by said drive, such that the entire appendage is not in a single plane." ECF No. 38 The Court extended to the parties an opportunity to "object[] at 32. to the construed term as adjusted by the Court." Id. at 32-33. Neither party filed any objection to the final construction. 18 motion of the drive," Def.'s Reply Br. at 7, ECF No. 70. Defendant advanced argues in his interpretation bend, of the the is import additional steer claim," clear Br. the in construction: a single into Supp. Mot. plane," for prior as Summ. J. improper such that the "attempt to a vain effort that at to [between the an in art Ayton, "configured motion [C]laim 31 overwhelming Mr. following produced by said drive, not the expert, [cyclical relative] limitations of Def.'s report agreed-upon torso] entire appendage Plaintiffs' rebuttal in response to the appendage and to that dooms 16, that ECF No. 54 (alterations and emphases in original). Defendant contends that Claim 31 'configured to "states that the appendage is response to said drive producing the relative motion,' response to the [cyclical relative] appendage and the torso]' as Court to believe." Plaintiffs vigorously from either the the claim, Id. - motion [P]laintiffs flex - not 'in [between would have in the this (alterations and emphases in original). dispute Court's that construction their or construction the plain varies language of asserting that Mr. Ayton's "bracketed language" added to the Court's construction "merely clarifies it by providing a reminder of the nature said drive,"' Pis.' The Court Br. agrees of the referenced 'motion in Opp'n at 6, ECF No. that Mr. Ayton's produced by 68. "bracketed language" merely provides "clarity" to the construction agreed upon by the 19 parties at words of F.3d 1303, Corp. v. the the Markman claims 1312 hearing. themselves,'" (Fed. Cir. Conceptronic, 1996)), the plain claimed appendage Id. 2005) Inc., language is Phillips F.3d Claim "configured to drive producing the relative motion." ECF No. 40-1 (emphasis added). the Corp., AWH "'to 415 (quoting 1576, 31 flex first v. (en banc) 90 of Looking 1582 Vitronics (Fed. indicates in that the the to said response '785 patent at In preceding Cir. 11:29-30, paragraph of Claim 31, the patentee describes the "relative motion" produced by "said drive," id., explaining that the drive "produce[s] [a] cyclical relative motion between said appendage and said torso." Id. at 11:26-27 (emphasis added). Nowhere in Claim 31 does the patentee describe any other motion "produced by the drive." The plain language configured to flex of into a to said drive moving torso," '785 patent indicating that at Phillips, . . ., both 1 discloses non-planar said first 8:9-11, appendage ECF 415 sources of because "claim terms "appendage No. with 40-1 in respect (emphasis at 1314 and to enlightenment are as to the normally the patent"). 20 that can meaning used said added), relative motion between (asserting unasserted, being response torso that causes the appendage to F.3d asserted an configuration it is specifically the the appendage and the See Claim Id. flex. "[o]ther claims also be of claim a consistently valuable term" throughout The Court specification, also considers of which the [the claims] claims Cir. 1995) (en banc)); (observing that guide to the the meaning description of the Inc., of a is that at 1315 979 90 F.3d at 1582 single best term"). '785 patent explains Id. the "the usually disputed of 52 F.3d 967, see also Vitronics, specification view are a part.'" (quoting Markman v. Westview Instruments, (Fed. "'in The detailed the "drive 140 is configured to move the appendage 160 with respect to the torso 120" and, "[w]hen torso 120, bends." the appendage 160 flexible portion 164 '785 clear that the patent the at patentee 2:12-16, moves of ECF intended to During Court at the the Markman position that, No. are disclose discussion to hearing, cause an that Plaintiffs Plaintiffs made appendage [and] to flex out hearing the appendage claimed in at Court the did Claim 31 Defendant is going the forces of the Markman Neither the their and the appendage is (emphasis the is that and clear at to or it appendage Hr'g Tr. timely objection flexes Thus, So it's in response to the drive." added). the the appendage 160 with between the forces of the drive, going 40-1. to Id. "when the drive goes back and forth, water lengthy respect the appendage "flexes or bends" when the drive "move[s] respect to the torso 120." with 28, ever "configured of plane. ECF No. nor suggest to in 35 a that flex in response to the motion of the drive," Def.'s Reply Br. at 7, ECF 21 No. 21, as Defendant now argues, motion produced agreed at Defendant the at argues 17, the Markman "[C]laim 31's J. by the 54, the the parties Moreover, Court's language," No. as hearing. that plain ECF drive, rather than in response to the finds Supp. Court extent that from Mot. that response to the motion produced by said drive" the varies the construction Def.'s Br. Court to and the for Summ. phrase "in contained in the Court's construction is synonymous with the phrase "in response to said drive producing the relative motion" contained in Claim 31, especially Thus, the Court's when Court Supp. "merely the sees of in need confirmed the to context Mr. disputed claim J. at at 6, further term the ECF by ECF No. 68. construe the claim. alterations of are express not No. "an order," 54, providing 'motion produced proper construction of entire construction 16, construction] referenced of Ayton's the Summ. the Opp'n the Court's the the in that of for clarif[y Br. no of Mot. nature Pis.' finds construction misapplication Br. read a but the Pis.' instead reminder of by said drive,'" Accordingly, disputed the claims, the term. Court Having the Court next addresses Defendant's arguments regarding the alleged invalidity of the asserted claims. B. Defendant's Summary Judgment Motion based on Invalidity Relying Triantafyllou, on "an expert report authored by Dr. Michael S. a leading robotic fish expert," Defendant alleges 22 that "the asserted claims [of the '785 anticipated by and/or obvious over prior art references," unpatentable." No. 54. report issue Pis.' which prepared by of material their fact Mot. the as invalid as "asserted for Summ. Mr. to Ayton, rebuttal expert "raises preclude claims J. at 4, 10, ECF arguing that the expert, so are . . . four separate primary render Def.'s Br. Supp. Plaintiffs disagree, patent] a summary genuine judgment." Br. in Opp'n at 7, ECF No. 68. The Court Defendant's Court's notes that listing of Local Rule some of the "Undisputed 56(B), which assertions Facts" fail requires a to contained in satisfy this "listing [of] all material facts as to which the moving party contends there is no genuine issue and citing the parts of the record relied on support the listed facts as alleged to be undisputed." Loc. Civ. R. 56(B) (emphasis added). For example, to E.D. Va. the sixth paragraph of Defendant's "Undisputed Facts", which appears to be the basis for Defendant's that Defendant's expert, asserted claims over Br. four are separate invalidity Dr. without Report of Dr. Triantafyllou, assert Triantafyllou, question primary prior art Supp. Mot. for Summ, J. does not as Dr. Triantafyllou's arguments, at 4, anticipated by or references." obvious See Def.'s ECF No. 54 (citing Invalidity the conclusions, 23 alleges "concluded that the ECF No. 54-3). undisputed simply However, "material but Defendant facts" supporting merely cites Dr. Triantafyllou's report as the "parts of the record relied on to support" such conclusions. The "undisputed E.D. Va. Loc. fact" of an Civ. expert's R. 56(B). conclusions is not sufficient to establish an absence of "a genuine issue necessary to be litigated." Supreme Court can and resolve has should or E.D. made take keep 550 U.S. at "dispute[] 427 that, to (emphasis 68. Thus, unsupported expert questions be "Undisputed Facts," made added). arguments litigated." follows in turn will the E.D. fact," any in four Pis.' may ultimate KSR event, the court which the Int'l, Plaintiffs Br. in Opp'n of prior Defendant's instead body Va. the organization the "district the court. In contained and in a Indeed, testimony, of by of Loc. the consider their determine whether the record reveals be 56(B). the Court will disregard all factually conclusions to R. although account certain are Civ. Dr. Triantafyllou's conclusions." at 2, ECF No. specific Loc. clear into open legal determinations Va. "a Civ. R. experts' art the briefs genuine of parties' in order to issue necessary 56(B). reports references listing The Court and discusses identified by Dr. Triantafyllou in his invalidity report. 1. Van Ruymbeke The Van application Van Ruymbeke identified Ruymbeke reference as "PCT (published Aug. is an Publication 8, 24 1991) international No. WO ('Van patent 91/11235 to Ruymbeke')," Invalidity Report of Dr. Triantafyllou at 10, ECF No. Ruymbeke pertains to the water." a "swimming" toy that is Van Ruymbeke at 1, For purposes of background, ECF No. the Van 54-3. Van "able to move in 54-7 (English trans.). Ruymbeke abstract reads as follows: A swimming toy comprising an elongate hollow body to which are attached two flexible side fins (1) (3) whose leading edges (3b) are provided with fin rods (4) made The forward part of a rigid or semi-rigid material. of said hollow body houses a mechanism (7) for controlling the fins (3) having at least one driving device (100) and two oscillating levers (19a, 19b) each of which is connected the fin rods (4), actuated by means of said hollow body (1) The body (1) of said skin (2) made from a formed with the side skeleton (6-8a-8b-9) housed and containing the fin (3) Id. According to Van or connectable to one of said control mechanism being a motive device (14) housed in and providing propulsive power. toy includes an outer shell or flexible material and integrally fins (3) , and a rigid internal in said shell or skin (2) control mechanism (7). Ruymbeke's specification, the "swimming toy according to the invention can move in the water, perfectly imitating the swimming mode of certain fish such as Rays." at 2. Specifically, movement of the movement of perpendicular alternative Van Ruymbeke explains "that the oscillatory levers the to pivot . . . communicates reciprocating pivotal beams the [of the] longitudinal generating its motion for fin[s]," axis flapping . . . propelling said toy in water." In Id. summary 25 of in a the movements "plane toy, the or rippling Defendant contends Id. at 4. judgment, that, based on Triantafyllou, the invalidity at 17-18, to the ECF specific No. its expert, See Def.'s Br. Supp. Mot. 21-22, ECF No. report of its 11, of Dr. Van Ruymbeke anticipates Claims 31-34 and renders obvious Claims 35 and 38. J. report arguments expert, 68. Mr. The 54. Plaintiffs disagree, pointing advanced Ayton. Court for Summ. in the rebuttal See Pis.' considers each Br. invalidity in Opp'n at 7- asserted claim in consists of turn. a. Anticipation of Claims 31-34 As discussed two steps, (1) above, an anticipation analysis "'construing the claim,'" and (2) conducting "'a comparison of the properly construed claim to the prior art.'" Enzo Biochem, 599 F.3d at 1332 Having completed the F.3d at 1406). construing the "comparison art.'" (quoting Power Mosfet Techs., 378 disputed of the claim terms, properly first step with respect to the construed Court claim[s] next to conducts the Id^ i. Claim 31 Independent Claim 31 of the '785 patent discloses: [preamble] A figure configured to be at least partially immersed in and propelled through a liquid, said figure comprising: [the "torso limitation"] a torso defining a cavity, figure torso; 26 said torso simulating an a prior [the "flexible appendage" limitation] a flexible appendage disposed outside of the cavity and coupled to said torso, said appendage configured to propel the figure through the liquid; and [the "drive" limitation] a drive coupled to said torso and to said appendage, said drive configured to produce forces on said torso and on said appendage sufficient to produce cyclical relative motion between said appendage and said torso when the figure is at least partially immersed in the liquid, [the "configured to flex" limitation] said appendage being configured to flex in response to said drive producing the relative motion, said appendage being configured to flex into a non-planar configuration in response to said drive producing the relative motion. '785 patent at its expert, Ruymbeke Def.'s Br. not 31." "Dr. reference Plaintiffs does 11:16-33, Triantafyllou anticipates Supp. Mot. disagree, satisfy ECF No. for arguing the 40-1. has Defendant established [C]laim 31 of the Summ. that J. at "the Van 'configured to flex' 17, asserts that the that Van '785 patent." ECF Ruymbeke limitation No. 54. reference of Claim "swimming toy," Pis.' Br. in Opp'n at 7, ECF No. 68. the preamble The abstract of Van Ruymbeke describes a which includes a "control mechanism being actuated by means of a motive device Ruymbeke at 1, states, . . . ECF No. and providing 54-7. propulsive power. The description of Van Van Ruymbeke "[t]he present invention relates to a toy swimming able to move in the water." Id. The Court agrees, 27 and Plaintiffs do not dispute, that Van Ruymbeke anticipates the preamble of Claim 31. the "torso" The abstract comprising Ruymbeke, an of Van elongate reproduced swimming according agrees, and Ruymbeke hollow below, to discloses body." do depicts Id. "a plan Id. not dispute, "[a] swimming Figure invention." the Plaintiffs limitation view" at 1 of 2. that of Van the The Van toy "toy Court Ruymbeke anticipates the "torso" limitation disclosed by Claim 31. the "flexible appendage" limitation The side abstract fins" are for device force," so that Ruymbeke to Id. at 1. controlling housed Van attached "swimming toy." (7) of in the said the the explains "elongate that "two hollow flexible body" of the The "hollow body houses a mechanism fins," hollow which body and is "driven providing swimming toy "can move in the 28 by the a drive driving water." Id. at 1, Van 2. The Court finds, Ruymbeke discloses and Plaintiffs do not dispute, the "flexible appendage" that limitation of Claim 31. the "drive" limitation Because subparts, of Van the "drive" limitation of the Court examines each in turn. Ruymbeke discloses said appendage [s]," as a "drive ECF No. 40-1. the "hollow body" the "at least one 19b) of driving 31 Van coupled to each of which is (11) the abstract said the several torso and '785 patent. Van Ruymbeke explains that Ruymbeke device contains First, claimed in Claim 31 of '785 patent at 11:24, (19a, Claim and "swimming two toy" includes oscillating levers connected or connectable to one of the fin rods (4), said control mechanism being actuated by means of a motive device (14) housed providing propulsive power." in said hollow body Van Ruymbeke at 1, (1) ECF No. and 54-7. Second, Van Ruymbeke's description discloses a "drive configured to produce forces on said torso patent 11:25-26, at mechanism described ECF above reciprocating pivoting ECF No. the 54-7. drive that Third, are No. [of] and on said 40-1, is used to appendage," asserting that communicate '785 "[t]he the same the rocker arm," Van Ruymbeke at 4, Van Ruymbeke discloses "sufficient to produce forces produced by cyclical relative motion between said appendage and said torso when the figure is at least partially immersed in 29 the liquid." '785 patent at 11:26-28, ECF No. 40-1. Specifically, Van Ruymbeke provides, "[i]t is understood that the oscillatory movement of the 19a, 19b beams communicates fin reciprocating . . . or movements 4, rippling." Accordingly, the the Court pivotal alternative Van finds, pivot Ruymbeke and movement generating at levers 4, Plaintiffs ECF do of flapping No. not the 54-7. dispute, that Van Ruymbeke discloses the "drive" limitation of Claim 31. the "configured to flex" limitation As discussed above, in response appendage to being configuration motion" said as the Court construed "configured to flex drive producing configured in response "configured to to to the flex said drive bend, relative in into motion, a producing response to said non-planar the relative the motion produced by said drive, such that the entire appendage is not in a single plane." construction, his ECF No. "opinion that Dr. Figs. Van Triantafyllou 21-22). discussion below), is of 32. Acknowledging the Dr. Triantafyllou asserts in his configured to flex as of 38 at Dr. Ruymbeke discloses recited in Claim 31." at 13, ECF No. Triantafyllou Figures an 21 and 22 54-3 of Van invalidity report appendage that is Invalidity Report (citing Van supports Court's his opinion Ruymbeke Ruymbeke with a (reproduced contending that "Van Ruymbeke teaches that the appendage configured to flex into a non-planar response to the motion of the appendage." 30 Id. configuration in UsO 1.6 5t Rp.21 Dr. " " V a»^. Triantafyllou further contained in the [Van Ruymbeke] the appendage up and positive or negative 3d' Van in the down causing Id. discloses drive appendage to have a Triantafyllou "configured to flex" [Van Ruymbeke] concludes, limitation drive causes fin 3, to bend such that the entire fin is not in a single plane." Id. at 13-14. contend Plaintiffs his the Dr. because "the motion produced by the the appendage, "the illustrated by elements 3d and Thus, the that torso moves the front portion of 'curvature,' figures." Ruymbeke explains that invalidity report Dr. Triantafyllou's conclusions are based upon a "misappl[ication of] in the Court's claim construction" and an "apparent misunderstanding of the significance of reference," Pis.' Plaintiffs' expert, Figures Br. Mr. in 21 Opp'n Ayton, and 22 of the Van Ruymbeke at 6, 7, 10, ECF No. explains that "Figures 21 68. and 22 depict two distinct configurations that the device can be placed in prior to its device during suggests. No. release," rather than "sequential states of the operation," as Dr. Triantafyllou's Rebuttal Invalidity Report of Mr. 68-4. 31 expert Ayton at report 13-14, ECF According to Mr. Ayton, Figures 21 and 22 of Van Ruymbeke simply "show the results obtained by various adjustments to the angular position adjusting of "handle the 54 fin to beams." the rear," "has the effect of bending the the causing top, handle 54 of toy to the the concludes, front part to plunge." rise." toy of torso] produced by said drive, [a single construction." The explains depicted in that Figure 21, Id. Conversely, Figure 22, fin 3 moving "has the towards effect the "Accordingly," bottom, Mr. Ayton Figures 21 and 22 "do not depict flexing 'in response [cyclical relative] in the Id. to the not as He front part of the fin 3 towards "forward," as depicted in bending causing the Id. motion [between the appendage and the such that the entire appendage is plane,]' as required by the Court's Id. at 14 (brackets and emphasis in original). Court acknowledges Dr. Triantafyllou's "apparent misunderstanding of the significance of Figures 21 and 22 of the Van Ruymbeke reference." Pis.' Br. in Opp'n at 6, No. such misunderstanding, 68. Notwithstanding Court determines that no genuine issue of regarding discloses flex" could whether limitation return presented." a Van of Ruymbeke Claim verdict Anderson, 31, such for that the no [Plaintiffs] 477 U.S. at 252. 10, ECF however, material 7, the fact exists "configured "fair-minded on the to jury evidence As discussed above, Van Ruymbeke discloses "flexible appendage[s] ," which are controlled 32 by mechanisms allowing the figure to "move in the water." Van Ruymbeke at 1, 54-7. the "oscillatory 2, ECF No. movement of reciprocating pivotal movements or rippling" Defendant points out must the Such mechanisms - namely, levers movement," 19a, which of its in the 19b" - "communicates "generat[es] appendages. reply brief, Id. "[f]ins flapping at 4. that 'ripple' necessarily flex into a non-planar configuration." Reply Br. at 9, ECF No. 70. As Def.'s Van Ruymbeke also provides that the "swimming toy according to the invention can move in the water, perfectly imitating Rays other and added), which report, the fish Dr. swimming mode species of of certain raj ids," Triantafyllou id. describes fish at in 2 such as (emphasis his invalidity see Invalidity Report of Dr. Triantafyllou at 3, ECF No. (observing that "(f]ish and other marine animals flex their 54-3 body and use fins for propulsion and maneuvering" and "use their tail, flexing undulatory or rigid motion to body, and produce their other propulsive fins force" in an (emphasis added)). Furthermore, expert, Mr. Ayton, appendage," the at Dep. of his June 13, conceded that Mr. Ayton "appendage in Van Ruymbeke at 2014 (1) deposition, "Van Ruymbeke discloses an 362:10-11, own report," id. at 365:6-7, Van contains a ECF No. is configured to [Mr. Ayton's] Ruymbeke drive," 33 Plaintiffs' which (3) 70-1, flex, (2) based on "the invention in "discloses a relative motion," id. at 365:20-25, to (5) in id. a drive producing (4) the appendage flexes "in response relative motion," id. at 366:18-21, the appendage "flexes into a non-planar configuration . . . response at to that 367:18:19, construction of finds that Van bend, in drive that 368:1-2. the produces Thus, the relative motion," in the context of the Court's "configured to flex" limitation, Ruymbeke discloses an appendage, response to the motion produced by 32. genuine issue of material limitations contained patent, Court Claim because Accordingly, the 31 on the in fact Court exists independent GRANTS ground the summary said drive, as Claim 31 ii. to Claim to is that no of the any 31 such ECF No. 38 determines judgment that the Court "configured to that the entire appendage is not in a single plane." at and of the Defendant anticipated '785 as by to Van Claim 32 Ruymbeke. Dependent Claim 32 of the of [C]laim 31, wherein said '785 patent claims "[t]he figure torso has an outer outer surface of the torso defines the cavity." 11:34-35, ECF No. 40-1. that "[t]he body (1) (2) made from a The abstract of Van 1, ECF No. flexible 54-7. the '785 patent at Ruymbeke asserts of said toy includes an outer shell or skin material . . . and skeleton . . . housed in said shell or skin at surface, Van Ruymbeke 34 further a (2)." rigid internal Van Ruymbeke explains that the "swimming toy elongate body," accommodated material," not according in id. dispute, Ruymbeke. id. the 2, at the at to which casing 4. that or Thus, 2 and the Court Claim because comprises "further skin dependent Accordingly, invention the comprises executed finds, 32 is a in hollow a frame a rigid and Plaintiffs do anticipated Court by Van determines that no genuine issue of material fact exists as to Claim 32 of the '785 patent, Claim the 32 on Court the GRANTS summary ground that judgment Claim 32 to is Defendant anticipated as by to Van Ruymbeke. iii. Claim 33 Dependent Claim 33 of the '785 patent claims: [preamble] The figure of claim 31, wherein said torso defines an outer surface, [the "appendage" limitation] said appendage includes: a first end coupled to surface of said torso; said torso along the outer and a second end, [the "tapered cross-section" limitation] said appendage having a tapered cross-section, with the first end having a greater thickness than the second end and the second end flexibility than the first end. '785 patent at 12:1-10, Plaintiffs, through Mr. having a ECF No. 40-1. Defendant Ayton, "raise no greater asserts that genuine would contradict Dr. Triantafyllou's conclusion that 35 issue that [Claim 33] is anticipated Summ. J. at by 21, Van ECF Ruymbeke." No. 54. Mr. asserting that "Van Ruymbeke does end] of the fin thickness/reduced fin." Rebuttal [as Def.'s disclosed Br. Ayton Claim flexibility compared Mot. contends not disclose by Supp. to otherwise, that the has a 33] [first greater a second end Invalidity Report of Mr. Ayton at for 14, of the ECF No. 68-4. the preamble The elongate figure form of Van having flexible material." agrees, and Ruymbeke an outer "comprises skin or a hollow body casing Van Ruymbeke at 3, ECF No. Plaintiffs do not dispute, 2 made 54-7. that 1 of of a The Court Van Ruymbeke anticipates the preamble of Claim 33. the "appendage" limitation The fins of the Van Ruymbeke figure have two ends that are attached to (reproduced the torso. below) Van Ruymbeke illustrates, that explains, the "fins generally triangular shape and are attached to all or almost all of their internal Ruymbeke at 3, ECF No. 54-7. 36 side and the length Figure affect 2 a casing 2 in 3a." Van Van Ruymbeke also explains that the fins have a "front edge [that] is provided shaped to be with fitted through openings 26 at 2, 4. of the fin into a beam (4)," housing reserved in the which foot" or front is and of Van Ruymbeke appendage that limitation of Van Claim corresponds the Court agrees, Ruymbeke "nested to and anticipates or "pass[es] envelope 2." Although the parties do not agree as described in Claim 33, dispute, a (3b) Id. to which portion the "first Plaintiffs do the end" not "appendage" 33. the "tapered cross-section" limitation Dr. "tapered Triantafyllou asserts cross-section" is more flexible." at 17, ECF No. 54-3. of Van Ruymbeke, Ruymbeke because discloses "Van Invalidity Report of Dr. which "has 37 a front larger second Triantafyllou According to Dr. Triantafyllou, to "[t]he the "first edge of the than the Ruymbeke first end is thicker and the end" of Claim 33 corresponds 3b" Van limitation explicitly teaches that the end that the fins posterior portion remaining Figures 4, a degree 4A, of 54-7. said 4B, " and is flexibility third portion No. third of The said fin thickness, "provided with significantly flexible relevant of Van Van can be seen in a certain rigidity or lower fins." figures as than the Ruymbeke Ruymbeke are remaining at 3, ECF reproduced below. 3b-^^a._^.(, 3b. 3e-* 3e- FiqJfA Fjq.4 Mr. Ayton interpretation, "tapered referred disagrees arguing that cross-section" to in the with Fiq_4B Dr. Triantafyllou's the "first end" referred to limitation "appendage" is the limitation - same "the in the "first end" internal side length 3a that is connected to the torso of the ray." Rebuttal Invalidity Report Assuming such interpretation Ruymbeke greater of of the does not Mr. Ayton at of Claim 33, disclose thickness/reduced fin." that 14, ECF No. Mr. this 68-4. Ayton portion contends, of the a "Van fin has flexibility compared to second portion the Ruymbeke a end Id. Regardless of which 38 of Van figure corresponds to the first end of Claim 33 of the '785 patent, Court finds that Van Ruymbeke anticipates section" limitation of Claim 33. the "tapered the cross- With respect to the "first end having a greater thickness than the second end," as described in Claim 33, '785 Triantafyllou's patent at 12:8, ECF No. 40-1, "first interpretation, where the delineated by "[t]he front edge of the fins expressly discloses 3b," under Figures Figures 21 4, end" is Van Ruymbeke that the front edge "has a larger than the posterior portion remaining third said fin thickness, seen in Dr. 4A, and 22, 4B." Van Ruymbeke at reproduced below, as can be 3, ECF No. illustrate that 54-7. the front edge of the fin has a "greater thickness" than the rear portion of the fin. '785 patent at 12:8, ECF No. 40-1. s=^Ir Fio.22 fiq.21 Under Mr. Ayton's interpretation, where the "first end" is delineated by "the internal side length 3a that is connected to the torso of the ray," No. 68-4, Figure 23 Rebuttal Report of Van Ruymbeke, of Mr. Ayton at reproduced below, 14, ECF clearly illustrates that the portion of the fin located at the torso has a "greater thickness" than the outer portion of the fin. patent at 12:8, ECF No. 40-1. 39 '785 Fiq.23 With respect to the "second end having a greater flexibility than the first end," as described in Claim 33, id. at 12:9-10, Ruymbeke under expressly Dr. Triantafyllou's discloses that the interpretation, front edge "is Van provided with a certain rigidity or a degree of flexibility significantly lower than the remaining third portion Van Ruymbeke at interpretation, is disclosed ECF No. 54-7. said flexible Assuming Mr. fins." Ayton's although the entire "outer surface of the fins 3 as "triangular fins attachment, 3, of being are formed from bounded on two a flexible 68-4 the of their sides by a rigid limiting their ability to flex." Mr. Ayton at 13, ECF No. material," Rebuttal Report of (emphasis added). Consequently, such limited flexibility where the appendage is attached at the torso, combined with the flexibility of the material forming the fins, suggests that the outer portion of the fins greater flexibility" than the portion of the fin at '785 patent at 12:9-10, ECF No. 40-1. Thus, the a torso. regardless whether the "first end" described in Claim 33 of the 40 "hav[e] of '785 patent corresponds to Triantafyllou Claim judgment "internal Claim finds that 33 is fact exists as 33 to or the of the fins side length the 3b," as Dr. 3a," as Mr. "tapered cross-section" anticipated by Van Ruymbeke. because the Court determines that no genuine issue of material in edge the Court of Accordingly, "front opines, Ayton asserts, limitation the of the Defendant to '785 as any of the patent, limitations contained the to Claim 33 Court on the GRANTS ground summary that it is anticipated by Van Ruymbeke. iv. Claim 34 Claim 34 of the '785 patent discloses: The figure of claim 31, wherein the cyclical relative motion is a reciprocating pivotal motion, when the drive produces the reciprocating pivotal motion, said appendage flexes in a direction opposite to that of the motion of said appendage during at least a portion of the reciprocating pivotal motion, the flex of the appendage and the reciprocating pivotal motion cause said appendage to have a wave-like, whipping motion. '785 patent at 12:11-18, ECF No. 40-1. Mr. Claim Ayton's report "focuses . . . has Def.'s analysis no Br. Plaintiffs on real of [the Van relevance Supp. Mot. advance no for 34 in Ruymbeke] to any asserts that "Van Ruymbeke 41 rebuttal in invalidity steering mechanism that J. regarding Claim 34, but point to Mr. which his limitation of Summ. argument Defendant asserts that at their 22, [C]laim 34." ECF No. responsive 54. brief Ayton's invalidity report, fails to disclose each and every limitation described of above Invalidity addition, in Report Mr. 34] connection of Mr. Ruymbeke's states of the for at with Ayton Ayton disputes of Van 'wave-like, [Claim at Dr. Claim 14, whipping during ECF No. thus id. as at reasons Rebuttal 68-4. In interpretation as depicting "sequential operation," motion," the 31." Triantafyllou's "Figures 21 and 22" device least 16, "disclos[ing] Dr. a Triantafyllou contended in his invalidity report, see Invalidity Report of Dr. Triantafyllou at ("As 18, this motion causes ECF No. the 54-3 appendage to shown have in Figures 21-22, a wave-like, whipping "actuating mechanism" that motion."). Van Ruymbeke "driven by a discloses drive device an housed providing the driving force." The actuating mechanism "is in [the] hollow body Van Ruymbeke at 2, ECF No. used to communicate the is and 54-7. same reciprocating pivoting [of] the rocker arm 19a, 19b," as seen in Figure 1, reproduced Ruymbeke, the "[i]t levers 19a, is below. Id. at understood that the 4. According to oscillatory movement Van of 19b communicates reciprocating pivotal movement of the beams fin 4, in a plane perpendicular to the longitudinal axis of the toy, the movements or rippling." alternative Id. 42 pivot generating flapping At his June 13, "flapping" described Dep. Tr. of Mr. consider, Van Ruymbeke as Thus, "cyclical motion." Id. Ruymbeke an relative discloses at Ayton agreed that the is "a pivotal ECF No. 70-1. Mr. engineer, Ayton motion pivotal cyclical conceded, [that] 387:17-24. or a Mr. is a a and "what motion." Ruymbeke drive that "agree[d] that the [he] Id. discloses reciprocating Ayton also exhibits motion" Van motion." Mr. Ayton "the flapping back and forth" is 387:11-14. reciprocating in Mr. Ayton at 386:25-387:7, also admitted that would 2014 deposition, a pivotal that Van produces Van at a Ruymbeke "appendage flexes in a direction opposite to that of the motion of said appendage during at least a portion of the reciprocating pivotal motion." Id. at 388:5-17. Mr. Ayton also "agree[d] that that flexing of the appendage and the reciprocating pivotal motion caused said appendage to 43 have a wave-like whipping motion." IcL_ at 389:21-25. Mr. respect Ayton's to the only phrase like whipping motion," "cause [] dispute "cause [] which regarding Claim said appendage the Court 34 to was have previously with a wave construed as said appendage to move in a whipping fashion such that a portion of the appendage lags behind the movement of another portion of the appendage that is closer to the torso." Id. at 390:17-20, discloses 391:14-19. "waves Mr. are [that] Ayton operated rather than the lateral fashion, asserted in "flapping" in whipping," as Van hearing, Ruymbeke described in was Van Ruymbeke longitudinal fashion which would be the case if they were to be coming closer to the torso." At the July 15, 2014 a that Plaintiffs conceded that the not Claim Id. at 391:20-23. necessarily 34, but "different asserted that than "the anchoring of the wing along the length changes you know how it, how it flaps." Plaintiff explained that the Van Ruymbeke fin is "not a tail that's anchored at flex back and forth, one point and allowed to it's a wing anchored along an entire length with a rigid member across the side, is flapped." the freely However, and only the front portion Plaintiffs also conceded that the tail in '785 patent whips "because it's flexible," and Van Ruymbeke clearly discloses that the Van Ruymbeke flexible material," Van Ruymbeke at 2, figure ECF No. is 54-7. "made of a Moreover, Van Ruymbeke expressly discloses that the swimming toy "ripples" 44 its fins "like the fish of the family rajids like rays," id. at 1, "perfectly imitating the swimming mode as Rays and other added). fish species of rajids," certain fish such id. at 2 (emphasis Thus, the Court finds that Claim 34 is anticipated by Van Ruymbeke. genuine Accordingly, issue of because the Court determines that no material fact exists limitations contained in Claim 34 of the GRANTS of summary judgment to Defendant as to any '785 patent, as to Claim of the the Court 34 on the ground that it is anticipated by Van Ruymbeke. b. Obviousness over Claims Curiously, neither Defendant nor 35 and 38 Plaintiffs included their briefs any discussion of the Graham factors, Court's Graham obviousness factors." inquiry Siemens Gobain Ceramics 383 Med. & Plastics, (citing Graham, "requires U.S. Solutions Inc., at analysis although the under 17-18). USA, (Fed. the Inc. F.3d 1269 637 Although the in four v. Saint- Cir. 2011) Court is not required to scour the record in search of evidence [relevant to] a motion for summary judgment," Ritchie v. Glidden Co., 713, its 723 (7th analysis evidence United Cir. of 2001)), the the Court States v. the Graham can Court factors, will Dunkel, ("Judges are not like pigs, 927 F.2d nonetheless considering readily ascertain 955, 242 F.3d from the 956 all conduct relevant record. (7th Cir. Cf. 1991) hunting for truffles buried in" the record.). 45 i. Claim claim said 35 31, of wherein appendage 12:19-20, the '785 said patent torso simulates ECF No. Claim 35 a 40-1. discloses simulates tail of Defendant a a "[t]he tcrso of fish." asserts a '785 not dispute that Van Ruymbeke simulates a torso of a fish." Triantafyllou at 19, ECF No. discloses Id.; 54-3 of fish, and patent a The experts "torso [that] see Invalidity Report of Dr. (asserting that "Van Ruymbeke teaches a figure where the torso simulates a fish torso"); Tr. of Mr. that "the Ayton at invention 415:7-8, in Van "that the Van Ruymbeke Thus, the sole obviousness 415:13-14, Ruymbeke torso ECF No. to 70-1 . . . depicts simulates issue at that dependent Claim 35 is obvious in light of the prior art references.4 do figure torso of (agreeing fish" and a fish") . determined with be a a Dep. respect to Van Ruymbeke and Claim 35 is whether the appendage claimed in Claim 35, simulating the tail of a fish, to a person of invention, based ordinary upon skill the in fins the would have been obvious art, described 4 In two headings of its initial brief, at and the time of the depicted in Van Defendant also asserts that "Independent Claim 31 is Anticipated or Obvious In Light of the Prior Art," and that "Dependent Claims 32-35 and 38 are Anticipated or Obvious In Light of the Prior Art." Def.'s Br. Supp. Mot. for Summ. J. at 15, 20, ECF No. 54 (emphasis added). However, Defendant fails to present any obviousness argument regarding Claims 31-34, presumably relying on Dr. Triantafyllou's conclusions in his expert report, which asserts only that Claims 35 and 38 are obvious over prior art. See Invalidity Report of Dr. Triantafyllou at 2, 10, 19-20, 28, 37, ECF No. 54-3. At the July 15, 2014 hearing, Plaintiffs represented that they "are not going to dispute the obviousness on Claim 38 at trial." 46 Ruymbeke or upon a combination of the prior art references. Dr. Triantafyllou asserts "that it would be obvious to one of ordinary skill in the art that the flexible appendages taught [by] Van Ruymbeke could also be Invalidity Report of Dr. Triantafyllou understand asserts that the used [as] Triantafyllou at that drive "one of mechanism the tail of 19. fish." Specifically, ordinary of a Van skill Ruymbeke Dr. would could be readily altered such that the appendage would function as a tail rather than arguing side that, fin." because Id. at "[t]he 19-20. Mr. flapping side Ayton fins disagrees, of the Van Ruymbeke device operate in a fundamentally different manner than the tail of a fish," "[i]t would not have been obvious to apply the teachings of Van simulates a fish tail." at 15, ECF No. Ruymbeke to create an appendage Rebuttal Invalidity Report of Mr. that Ayton 68-4. Scope and Content of the Prior Art The scope of prior art includes "references that are within the field of the inventor's endeavor," as [that] a person of ordinary consulted . . . and applied problem that the ... inventor 1068, that Van 1071 Ruymbeke (Fed. Cir. 47 reasonably have attempting to solve." Hantscho Commercial Prods., 1994). is within the would in seeking a solution to the was Heidelberger Druckmaschinen AG v. F.3d skill well as "analogous art Plaintiffs scope of do prior art not 21 dispute within the meaning of 35 U.S.C. § 102, 68 (acknowledging that of references his patent"); Van Final Ruymbeke dispute in the see Pis.' Defendant's report Br. in Opp'n at 2, ECF No. expert that are "identified prior Pretrial Order SI 16, ECF No. as a prior content Ruymbeke, 87 reference) . Van of art art to number the '785 (stipulating to Nor which a do Plaintiffs the Court has discussed at length with respect to anticipation of the asserted claims by Van Ruymbeke, although Mr. Ayton vigorously disputes some of Dr. Triantafyllou's conclusions drawn from Van Ruymbeke. Thus, the Court finds no genuine dispute of material fact with respect to the first Graham factor. Level of Ordinary Skill in the Art The level is second of factor ordinary skill conducted Relevant the art Graham from factors include: the in in requires the art, perspective determining "(1) a as of the a (5) of (4) sophistication of active workers Apotex, Inc., Envtl. Designs, Cir. 501 in of of the inquiry such skill. ordinary skill level of the inventor; (3) in (2) prior art solutions rapidity with which innovations are made; the technology; the field." F.3d Ltd. person level the educational of the obviousness type of problems encountered in the art; to those problems; consideration v. 1254, Daiichi 1256 Union Oil 1983)). 48 and (Fed. Co., 713 (6) educational Sankyo Cir. F.2d Co., 2007) 693, level Ltd. v. (quoting 696 (Fed. Although the parties disagree as to the proper level of ordinary skill in the art, neither party presents any discussion regarding such opinions of level the of experts skill, in presumably their relying invalidity on the reports. Dr. Triantafyllou asserts that the proper level of ordinary skill in the art is possessed Engineering or by Mechanical a person "in the Engineering with a field 4-year Degree or equivalent industrial experience." of Dr. Triantafyllou at 2, ECF No. 54-3. the proper years' of ordinary skill Ocean Bachelor's Invalidity Report Mr. Ayton asserts that in the art is "at least 2 experience in designing mechanical toys" or "a Bachelor's degree in Rebuttal Neither level of Mechanical Engineering Invalidity Report of Mr. expert provides the basis or similar Ayton at 3, for his discipline." ECF No. conclusion, 68-4.5 but Mr. Ayton proffers that his "conclusions in this report are the same regardless of which party's description of the level of ordinary skill in the art" the Court employs. 5 At his deposition, Mr. Ayton Id. at 4.6 indicated At the July 15, that, although his opinion in his report indicates two years of experience in designing mechanical toys or a bachelor's degree, "that probably should have said 'in addition to.'" Dep. Tr. of Ian Ayton at 225:25-226:5, ECF No. 70-1. However, Mr. Ayton declined to change his opinion as to the level of ordinary skill in the art because his answers during the deposition did not "reveal[] what [he] really feels about this." Id. at 227:3-4. 6 Dr. Triantafyllou asserts his opinion regarding the proper level of ordinary skill in the art with no discussion whatsoever. See Invalidity Report of Dr. Triantafyllou at 2, ECF No. 54-3. Plaintiffs identify six "[f]actors that can be considered in determining the 49 2014 summary judgment motion hearing, Defendant asserted that, although its position was that it would require "a person of at least four having years that experience in degree, to be terms able of to mechanical determine engineering these issues, particularly infringement," the Court "could still resolve invalidity issues] it appears that under the [Plaintiffs'] obviousness standard." opinions of the which level of Thus, because experts skill in (the would remain the same, regardless of the Court adopts, the Court finds no genuine dispute of material fact with respect to the second Graham factor. "all justifiable Plaintiffs, the light by drawing most favorable to 477 U.S. at 255, the for the purposes of the instant summary judgment that the level of advanced in the non-moving party, Anderson, Court assumes, motion, inferences" However, the art Mr. Ayton ordinary skill in the art is the one - "at least 2 years' experience in designing mechanical toys" or "a Bachelor's degree in Mechanical Engineering or of Mr. Ayton Cleveland similar discipline," at Golf 3, Co., ECF 242 No. 68-4. F.3d 1376, Rebuttal See Invalidity Report Karsten 1384-85 Mfg. (Fed. Corp. Cir. v. 2001) ("The issue of obviousness may be decided on motion for summary judgment when the the movant must underlying facts are not in dispute, prevail even if disputed facts and or when inferences level of ordinary skill in the art," Rebuttal Invalidity Report of Mr. Ayton at 4, ECF No. 68-4, but presents no discussion regarding any of those factors. 50 therefrom are resolved in favor of the non-movant."). Differences between Claimed Invention and Van Ruymbeke As discussed anticipated discloses by all above, Van of independent Ruymbeke. the In elements other claimed underlying dependent Claim 35. Claim 31 words, in the Furthermore, the only respect '785 patent at difference to Claim 35 relevant is that to 12:19-20, the invalid Van the claim parties do not [that] ECF No. simulates a 40-1. obviousness Thus, inquiry the invention claimed discloses an appendage that "simulates a tail as Ruymbeke independent dispute that Van Ruymbeke discloses a "torso torso of a fish." is of with in Claim 35 a fish," id., while the invention claimed in Van Ruymbeke discloses appendages that simulate the "side fins" of a fish, No. Van Ruymbeke at 1, ECF 54-7. Objective Indicia of Nonobviousness Plaintiffs brief regarding indicated they have at "intend success of presented fourth the July 15, 2014 at trial to present [their] entitled Plaintiffs the Court to finds Graham product," "don't think [Defendant has] Thus, evidence the considerations." they're no represent, go hearing the to however, they that commercial secondary that they put forth the analysis to show that summary no of "would responsive although judgment evidence which their factor, summary did in judgment of obviousness." genuine dispute of material 51 Id. fact with respect to the fourth Graham factor. Evaluation of Graham Factors The Graham factors evidence that Claim 35 discussed content above, of Van the establish is do pectoral Ruymbeke at beams fin fins 3, 4] of [the] ECF No. dispute fish order [of] appendage that, the that Ruymbeke simulates using the "logic, the rajids movements said toy does not tail judgment, person of ordinary skill," 1329, the scope like in of or rays." Van fish Mr. Ayton of a observed, is disclose the Court both fin," the id. fins an finds 587 at of F.3d at to apply the teachings Indeed, as Mr. Ayton the ray depicted in Van fish has fins," a the "perfectly Ruymbeke "is a fish," Dep. Tr. of Mr. Ayton at 415:6-11, tail [of the Id. at 2, 4. Perfect Web Techs., agreed at his June 13, 2014 deposition, "the that like water," fish, of Van Ruymbeke to the tail fin of a fish. Ruymbeke the and common sense available to such person would find it obvious 70-1, "the Van or rippling," expressly a As large, "[T]he alternative pivot flapping propelling Van convincing a "swimming toy" imitating the swimming mode of certain fish." Although and lateral fins 3 soft, 54-7. generat[es] "fins providing not which discloses is "formed integrally with two the clear rendered obvious by Van Ruymbeke. parties Ruymbeke, by id_;_ at 415:18-19, 416:17-19. a ECF No. ray and and Moreover, the tail of as a fish "propel their respective creature . . . through the water," 52 although the "tail of a fish . . . [has] half a cycle of multiple cycles at of rolling whereas, there are . . . rolling motion associated with a fin." Id. 420:3-421:16. Alternatively, of Van Ruymbeke Ruymbeke even if Claim 35 were not obvious in light alone, F.3d 1396, "knowledge that (discussed in greater See OddzOn Prods., Inc. v. Just Toys, Inc., 1402 is (Fed. Cir. available, 1997) (defining including what prior would art as be obvious at a given time, to a person of ordinary skill in the art" (emphasis added) Johnson, is certainly rendered obvious by Van which the parties agree is a prior art reference to the '785 patent. from it, it in light of the Yamamoto patent detail below), 122 motion; [o]nly sort of like one (quoting Kimberly-Clark Corp. v. Johnson & 745 F.2d 1437, 1453 (Fed. Cir. 1984)). Yamamoto describes a "submersible vehicle The abstract of . . . having swinging wings," which "swing in a flexible manner like the tail fin of a fish, thereby producing a desired propelling performing a steering operation." Yamamoto at 1, (emphasis Yamamoto, added). Figure 2 of illustrates such "swinging wings." FIG. 2 53 Id. force and ECF No. 54-8 reproduced below, Yamamoto also explains that the swinging wings can be "arranged on the side of the main body, of a fish and thus permit[ting] underwater position." 6 of Yamamoto, . . . work[ing] Id. at reproduced the 6:58-61 below, like pectoral fins vehicle to change (emphasis added). illustrates this in Figure alternative embodiment. 28' 25 FIG. 6 Thus, the Court finds that "a person of ordinary skill the art," in possession of the "knowledge that from Yamamoto at the time of the F.3d at 1402, would have figure could be "swing in flexible a The Court also available" OddzOn Prods., 122 found it obvious that the Van Ruymbeke modified Yamamoto at 1, ECF No. '785 patent, [was] in to display manner like an the appendage tail fin that of a would fish," 54-8. determines that Claim 35 would have been rendered obvious by Van Ruymbeke in light of the Hirata article (discussed in greater detail below), a prior art discussing reference the to the "turning modes" '785 of patent. fish, turn skillfully using not only tail 54 which the parties agree is Hirata, notes that an article "real fish fin but also pectoral fins or ventral fins." Hirata at 1, ECF No. 54-12. finds that "a person of ordinary skill the Thus, in the art," "knowledge that is available" in Hirata at '785 patent, OddzOn Prods., 122 F.3d at the 1402, the Court possessing time of would have the found it obvious that the Van Ruymbeke figure could be modified to be maneuvered by "pectoral fins." Accordingly, scope of the because patent Hirata at 1, ECF No. "the claim, content and the of level the art are not in material dispute, the of 54-12. prior ordinary skill (quoting KSR Int'l, 550 U.S. the in and the obviousness of the claim is apparent in light of these factors," Wyers, 1239 art, at 427), the 616 F.3d at Court GRANTS summary judgment to Defendant as to Claim 35 on the ground that it is rendered obvious by Van Ruymbeke or, alternatively, Ruymbeke in light of Yamamoto or, alternatively, Van Van Ruymbeke in light of Hirata. ii. Claim claim 31, 38 of wherein the neutrally buoyant." Triantafyllou time the the '785 Claim 38 patent figure discloses is configured to '785 patent at 12:27-28, asserted in '785 patent was his invalidity filed, Dr. Triantafyllou at 20, ECF No. that even the '785 patent be figure substantially ECF No. 40-1. report of that, at Dr. the "it was well known that aquatic figures could be made neutrally buoyant." out "[t]he 54-3. itself 55 Invalidity Report of Dr. Triantafyllou points "provides no teaching of how the toy fish would be configured to be 'substantially neutrally buoyant,'" because "[o]ne of ordinary skill in the art would have recognized the advantages of making the figure of Van Ruymbeke neutrally buoyant and would have readily understood how to do so." The Id. at Court 21. now conducts an obviousness Claim 38, considering the evidence, four Graham factors. discussed above, there with respect to skill is no as it must, Solutions, genuine the 637 F.3d 1269. of material Regarding the second Graham factor, art advanced by As fact the scope and content for the purposes of this motion, in regarding in light of the dispute the first Graham factor, of the prior art. assumes, Siemens Med. inquiry the Court the level of ordinary Plaintiffs through Mr. Ayton. Considering the third Graham factor, the differences between the claimed invention difference relevant and the Van Ruymbeke to the obviousness figure, inquiry the is that only the figure claimed in Claim 38 is "configured to be substantially neutrally buoyant," '785 patent at 12:27-28, ECF No. 40-1, whereas the Van Ruymbeke figure does not expressly disclose such "substantially above, neutral [] Plaintiffs nonobviousness, Moreover, buoyan[ce]," present no id. And, objective as indicated indicia of the fourth Graham factor. neither Plaintiffs nor Mr. Ayton evidence to rebut Dr. Triantafyllou's opinion and, 56 offer any at the July 15, 2014 summary judgment hearing, Plaintiffs represented that they would not dispute at trial the obviousness of Claim 38 with respect to Van Ruymbeke. the prior art, the Accordingly, scope of the because patent claim, "the content of and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors," Wyers, 616 F.3d at 1239 (quoting KSR Int'l, 550 U.S. at 427), the Court GRANTS summary judgment to Defendant as to Claim 38 on the ground that it is rendered obvious by Van Ruymbeke. Although the Court has determined that Van Ruymbeke anticipates Claims 31, 32, 33, and 34, that Claim 35 is rendered obvious by Van Ruymbeke, alone or in light of Yamamoto or Hirata, and that Claim 38 is rendered obvious by Van Ruymbeke, the Court will nonetheless briefly address whether the remaining prior art references anticipate any of the asserted claims, in order to provide a complete analysis to the parties, as well as to any appellate court that may consider this case in the Patent No. future. 2. The Yamamoto 6,089,178 to Invalidity Yamamoto wings." reference Yamamoto is identified as July 2000) (issued Report of Dr. pertains to a Yamamoto Yamamoto at 18, Triantafyllou "submersible 1, ECF 57 No. at 21, vehicle 54-8. "U.S. ('Yamamoto')." ECF having For No. 54-3. swinging purposes of background, the Yamamoto abstract reads as follows: A submersible vehicle is a type having swinging wings. The vehicle is provided with a vehicle main body, a plurality of swinging wings provided for the main body and arranged in series, rotatable shafts located at front edges of the swinging wings, respectively, actuators for driving the shafts independently of one another, and a wing controller for controlling the actuators in such a manner that the wings enable to swing in a flexible manner like the tail fin of a fish, thereby producing a desired propelling force and performing a steering operation. Id. According to Yamamoto's specification, "an object of the present invention is to provide a submersible vehicle which can be not only oscillating moved or forward swinging move like the fins of a or the backward wings fish." in Id. at but such also a steered manner that by they 1:26-30. a. Anticipation of Claims 31-38 In that, its motion based on Dr. for summary judgment, Triantafyllou's Defendant invalidity anticipates all of the asserted claims of the Def.'s Br. Supp. Mot. for Summ. J. Plaintiffs disagree, report. contends report, Yamamoto '785 patent. at 19-20, 21-23, See ECF No. 54. pointing to Mr. Ayton's rebuttal invalidity See Pis.' Br. in Opp'n at 11, ECF No. 68. i. Claim 31 - the "configured to flex" limitation The only limitation of Claim 31 disputed by the parties is the "configured to flex" limitation. at 352:2-6, that ECF No. 70-1. Yamamoto discloses the However, See Dep. Tr. of Mr. Dr. Triantafyllou's opinion "configured to 58 Ayton flex" limitation of Claim 31 appears to rely upon his incorrect, limitation, reading of the "configured to flex" discussed. Court's as previously Dr. Triantafyllou asserts that, claim appendage overly be construction, 'configured this in "[a]ccording to the element bend, to broad, requires response to that the the motion produced by said drive, such that the entire appendage is not in a single plane.'" reproduced below, motion causes single plane," Id. Dr. the between drive," Rebuttal 68-4 23. id., the Citing Triantafyllou appendage motion produced by motion at to although the concludes bend such he makes Yamamoto drive appendage Figure and the is of that that no 2 it Yamamoto, "the is assertion a "cyclical torso produced Invalidity Report of Mr. Ayton at 17, (brackets and emphasis omitted). Defendant drive not that in a the relative by said ECF No. sums up its argument this way: "The drive moves; the tail flexes - it is as simple as that." Def.'s Reply Br. at 7, ECF No. 70. FIG. 2 Plaintiffs argue that Yamamoto "configured to flex" limitation forced flexing of the tails fails to disclose the found in Claim 31 because "the [in Yamamoto] does not occur in response to the motion produced by the drive, as required by the 59 Court's claim construction." 68 (emphasis in PL's Br. in Opp'n at 11, original). Mr. Ayton explains that ECF No. "[t]he Yamamoto fish uses a segmented tail with two pivotally-connected wings that are driven into a bent configuration by the operation of two separate actuators." Ayton at Mr. 18, Ayton, ECF No. the 68-4 "Yamamoto different manner than Although that Yamamoto Rebuttal Invalidity Report of Mr. (emphasis in original) . fish thus operates in a According to fundamentally of the claimed invention." does appear to disclose Id. some of the elements of independent Claim 31, it is not clear that Yamamoto discloses Claim 31's "configured to flex" limitation. With respect to Figure 2, Yamamoto explains that "the tail portion of the main body" houses Yamamoto at 4:1-2, 3, "two wings ECF No. reproduced below, and lb of Figure 2. which 54-8. (swinging wings) la and lb." Yamamoto also refers to Figure clearly depicts the "two wings" la Id. 200 In describing the motion of wings Yamamoto explains forward end of that the la and a "rotating shaft swinging wing 60 la, so lb of Figure 2, 4 is arranged at the as to oscillate (or swing) the swinging wing la. . . . Another rotating shaft 5 is arranged at the forward end of the swinging wing lb . . ., so as to oscillate In other (or swing) words, another." the swinging wing lb." "the wings Id. at 6:50-51. la and However, lb Id. at 4:3-10. cooperate with one Yamamoto does not appear to describe any relative motion between the swinging wings and the figure's torso, nor does Dr. Triantafyllou assert that any such relative motion Yamamoto. See 1349 Cir. the (Fed. prior includes, "inherent" in In re Cruciferous art the is 2002) ("Under Sprout principles in limitations, it jury could return presented." the Court Anderson, determines for 477 U.S. that a F.3d anticipates." Thus, at 252. its if or (citations the Court cannot no "fair-minded on the evidence of because material exists as to whether Yamamoto anticipates Claim 31 of patent, 1343, with, Accordingly, dispute by inherency, accordance [Plaintiffs] genuine 301 of stage of the litigation that a verdict described Litig., the and internal quotation marks omitted)). determine at this motion functions necessarily claimed the the fact '785 Defendant is not entitled to summary judgment based on argument that independent Claim 31 of the '785 patent is anticipated by Yamamoto. ii. Because the Court Claims finds that 32-38 genuine issues of material fact exist regarding whether independent Claim 31 is anticipated 61 by Yamamoto, Defendant is likewise not entitled to summary judgment of invalidity with respect to dependent Claims 32, 34, 35, or 38 of the '785 patent, upon independent Claim Data Sys., 730 that Inc., dependent 31. F.2d claim as See 1440, 33, those claims are dependent RCA Corp. v. Applied Digital 1446 (Fed. Cir. 1984) (holding "cannot be anticipated" where the independent claim "is not anticipated"). 3. Triantafyllou '750 The Triantafyllou Patent No. 1998) 5,740,750 to ('Triantafyllou '750 reference is Triantafyllou et '750)." Triantafyllou at 28, ECF No. identified al. Invalidity 54-3. as "U.S. (issued April Report Triantafyllou of 28, Dr. '750 pertains to a "method and apparatus for reducing drag on a moving body." Triantafyllou '750 at 1, ECF No. 54-11. For purposes background, the Triantafyllou '750 abstract reads as follows: A method and apparatus for providing reduced drag on a body moving in a direction D through a selected fluid medium at a speed U which is normally sufficient to cause turbulence. Reduced drag is generally accomplished by flexing at least the outer surface of at least the rear third of the body to produce a wave like motion of the body having a wavelength of between 0.5 and 2.0 times the length of the body, a reduced frequency value Q between 0.1 and 0.5 and a time delay between successive points on the body reaching peaks for their flex motion which is directly proportional to the distance Xi in the direction D of the point from a reference point on the body and inversely proportional to the phase speed cp of the wave. A variety of techniques are described for achieving the desired wave-like motion. 62 of Triantafyllou '750 at 1. Triantafyllou '750 asserts that the claimed "invention reduces drag on a body moving through a fluid medium ... accomplished in by much a the swimming lateral body flexing." same way fish; that namely this by objective active control is of Id. at 2:32-36. a. Anticipation of Claims 31-35 In its motion for summary judgment, Triantafyllou '750 Defendant contends that anticipates Claims 31-35 of See Def.'s Br. Supp. Plaintiffs Mr. Ayton in his for Summ. J. at disagree, 54. Mot. pointing to rebuttal Opp'n at 11, ECF No. the 19-20, '785 patent. 21-23, ECF No. the opinions invalidity report. See advanced by Pis.' Br. in 68. i. Claim 31 - the "configured to flex" limitation The only limitation of Claim 31 disputed by the parties is the "configured to flex" limitation. at 352:2-6, ECF No. 70-1. See Dep. However, as Triantafyllou's conclusion hinges upon his "configured motion in that it to flex" limitation, [Triantafyllou is not Triantafyllou with of Mr. Ayton Yamamoto, Dr. broad reading of the asserting that "the drive '750] causes the appendage to bend such in a single plane," '750's Tr. "drive but motion" is failing to a assert that cyclical relative motion between the appendage and the torso of the Triantafyllou '750 figure. 1, Triantafyllou Dr. Triantafyllou cites Figures '750, reproduced 63 below, in 6A, and 6B of support of his conclusion that Triantafyllou flex" '750 discloses the "configured to limitation. ! A s*> Fig. 6B Figure 1 of Triantafyllou '750 depicts a "body 20 [that] is divided into six sections or links L1-L6, plus a rigid front cone section A." Id. at 5:12-14. "There are six motors, each of the joints Ji-Jt/" which "cause flexing of Id. at 5:17-20. to impart 20." one for [the] joints." Specifically, the joints "are rotated or flexed a wave-like motion Id^ at 5:28-29. view and a top view, the embodiment of Fig. to the rear portion of the body "Figs. 6A and 6B are a side perspective respectively, for a particular species of 5," which is a "simplified diagram for an embodiment . . . generally of the type shown in Fig. 4:14-19. 64 1." Id. at Plaintiffs dispute that Triantafyllou '750 satisfies the "configured to flex" limitation of Claim 31 for the same reasons as discussed regarding Yamamoto, again referring to Mr. rebuttal Mr. invalidity "Triantafyllou into a bent report. Ayton asserts Ayton's that the '750 device uses a segmented tail that is driven configuration by the operation of six separate motors operating on six joints." Rebuttal Invalidity Report of Mr. Mr. Ayton at 21, "Triantafyllou ECF No. '750 different manner device than of the '785 patent. 68-4. thus Ayton operates concludes in a that the fundamentally that of the claimed invention" in Claim 31 IcL at 21-22. The Court cannot determine at this stage of the litigation that no "fair-minded [Plaintiffs] 252. or portion of flexed Triantafyllou to '750, "cyclical torso," 26-27, relative causing configuration" a verdict Anderson, a wave-like that such motion '750 at motion, at joints "are to the 5:28-29, as for 477 U.S. '750 explains that the impart conclude rear a jury described in is significantly different from the relative motion described in at return the body 20," Triantafyllou reasonably patent could on the evidence presented." Although Triantafyllou rotated could jury Claim 31 of the ECF No. 40-1 (claiming motion between appendage "to (emphasis added)), 65 '785 patent. said flex with drive Compare that appendage into a '785 produces and said non-planar Triantafyllou '750 at 10:60-63, said ECF No. sections adjacent 54-11 are (claiming "method . . . wherein all connected thereto" to flex relative (emphasis added)); id. at to each 11:30-32 of section (claiming "body . . . wherein at least the sections in the rear third of said body (emphasis that are connected added)). a genuine to flex Accordingly, dispute Triantafyllou '750 Defendant is not argument that of independent because material anticipates entitled relative fact Claim to 31 summary Claim 31 to the Court exists of as the judgment of each the other" determines to whether '785 patent, based '785 on its patent is anticipated by Triantafyllou '750. ii. Because the Court Claims finds 32-35 that genuine issues of material fact exist regarding whether independent Claim 31 is anticipated by Triantafyllou '750, Defendant is likewise not summary judgment of invalidity with respect to 32, of 33, 34, or 35 the '785 patent, dependent upon independent Claim 31. as entitled to dependent Claims those See RCA Corp., claims are 730 F.2d at 1446. b. Plaintiffs Obviousness over Claim 38 asserted at the July 15, 2014 summary judgment hearing that there was no dispute as to the obviousness of Claim 38 as that to the Van Ruymbeke. parties did Thus, not especially in include 66 any light analysis of of the the fact Graham factors in their obviousness briefs, analysis of the Court Claim 38 with declines respect to to conduct an Triantafyllou '750. 4. Hirata The Hirata reference is identified as an article written by Koichi Hirata, et of a Fish Robot,' pp. 287-292, al., Proc. 2000 entitled "'Study on at "[u]nderwater robots are development, ocean investigation and ECF Invalidity Triantafyllou protection," that propulsive performance at No. 1, ECF Performance of 1st Int. Sym. On Aqua Bio-Mechanisms, ('Hirata')." 37, Turning No. 54-3. widely used such and 54-12. robots Hirata in the and "need includes of explains fields marine good dynamics Hirata Report higher Dr. that of ocean environmental efficient of performance." Hirata a about] "discuss[ion turning modes for the fish robot that uses only tail swing," as well as "a small prototype "[b]ased on the discussion." fish robot" that was developed Id. Hirata describes "three turning modes" that can be achieved "with only swing of tail fin." Id. First, "[t]he swings its tail only to one side during a turning." Second, Next, the posture Id. "the fish robot swims straight, Third, the side," "[t]he then fish "[t]urns robot 67 robot Id. at 2. and gets kinetic energy. fish robot turns its tail to one side, to fish by swings and keeps the hydrodynamics its tail to force." one side rapidly from stationary state," such that "inertia force and friction force of the moving tail and a body are changed to the moment of rotation." Id. a. Anticipation of Claims 31-38 In its motion for summary judgment, Hirata anticipates patent. ECF all of the See Def.'s Br. Supp. No. 54. Plaintiffs Defendant contends that asserted Mot. claims for Summ. disagree, of the J. at 19-20, pointing to Mr. opinions advanced in his rebuttal invalidity report. '785 21-23, Ayton's See Pis.' Br. in Opp'n at 11, ECF No. 68. i. Claim 31 - the "configured to flex" limitation The only limitation of Claim 31 disputed by the parties is the "configured to flex" limitation. at 352:2-6, discussed hinges ECF prior upon limitation, No. art his 70-1. However, contending that "the with of Mr. Ayton the previously Triantafyllou's conclusion of reading as Tr. Dr. references, broad See Dep. the "configured [Hirata] drive to motion flex" causes the appendage to bend at the joint between the tail peduncle and tail fin such plane." Id. assertion that that at the 40. Hirata's entire appendage Furthermore, "drive Dr. motion" is not in a single Triantafyllou makes is a cyclical no relative motion between the appendage and the torso of the Hirata figure. Dr. Triantafyllou cites Figure 4 of Hirata, reproduced below, in support of his conclusion that Hirata discloses the "configured 68 to flex" limitation, ['linx angle. |1 Ul\ 10 0 !M lSl) Z70 :«t Cnnirul iiugli'. V|i/ Mvf) <b) Amplitutlo fiicior. K.-O.b and tanning factor. /v'=1.0 Utl lu "C i ¢**"*" so :"i n 1/ ' / T|4;-:::r ¢a s ¢5 * ii 5^2^ uo isu 270 acd C'uoiPit iinyk'. Jx/ (dm) (o) AmpltUulu fito(«n\ A',=0.2 and lcaninn factor. A',=l.O Hs. 4 Fundamental moving pattern Plaintiffs dispute that Hirata satisfies the "configured to flex" limitation regarding to Mr. the of Claim 31 for the previously discussed rebuttal invalidity Ayton's same reasons report. discussed again references, as referring Mr. that, like the previously discussed references, Ayton asserts Hirata discloses "a segmented tail with two pivotally-connected portions (a tail peduncle tail a and a configuration by Rebuttal Invalidity rather than "a in the response appendage and fin) that operation Report of of Mr. are driven two separate Ayton flexible appendage that to the the [cyclical torso] is relative] at into 22, servomotors," ECF No. concludes that motion produced by said drive, the "Hirata 69 fish 68-4, 'configured to bend, [between thus the such that the entire appendage is not in a single plane,'" id. at 22-23. Ayton bent operates Mr. in a fundamentally different manner than that invention" in Claim 31 of the '785 patent. The Court cannot determine at this that no "fair-minded [Plaintiffs] on 252. appendage The segments, and (referred to peduncle is the a set in could of the segment servomotor), return the and tail fin is set in the tail peduncle." 54-12. turns] Although Hirata states the appendage Triantafyllou See In the drives drive "fish re allege and that Cruciferous the such drive tail "driv[ing] robot a ECF No. swings [or Hirata does produces a cyclical motion torso. motion Sprout at two a See Hirata at 3, the (or drives) has corresponding "that for 477 U.S. its tail" during all three modes of turning, not state that the drive between that verdict prototype own drive body part," a Anderson, fish its the claimed stage of the litigation Hirata has the Id. at 23. evidence presented." each as jury of Id. is Litig., Nor inherent 301 does in F.3d Dr. Hirata. at 1349. Accordingly, because the Court determines that a genuine dispute of material fact 31 of the '785 exists patent, as to whether Hirata Defendant is not anticipates entitled to Claim summary judgment based on its argument that independent Claim 31 of the '785 patent is anticipated by Hirata. b. Dependent Claims 32-35 and 38 Because the Court finds that genuine issues of material fact exist regarding whether independent Claim 31 is anticipated 70 by Hirata, Defendant is likewise judgment of invalidity with respect 34, 35, or 38 of the x785 patent, upon independent Claim 31. C. Plaintiffs' not entitled to summary to dependent Claims 32, 33, as those claims are dependent See RCA Corp., 730 F.2d at 1446. Motion for Partial Summary Judgment on Infringement In light of asserted claims the Court's determination are invalid due to the Court finds that the parties' motion for partial all anticipation or of the obviousness, arguments and evidence fail to demonstrate any genuine issue of material infringement claims. that Accordingly, summary judgment the fact as to Plaintiffs' Court claiming DENIES that Plaintiffs' Defendant has infringed Claims 31, 32, 34, and 35 of the '785 patent. IV. For summary the reasons judgment CONCLUSION stated is above, GRANTED, and Defendant's motion seeking Plaintiffs' motion seeking partial summary judgment is DENIED. The Order Clerk to all IT IS SO is DIRECTED counsel to send a copy of this ORDERED. UNITED July and of record. Mark Norfolk, Opinion Virginia 19, , 2014 71 /s/ S. STATES Davis DISTRICT JUDGE

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