Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

The Hilsinger Co. v. Eyeego, LLC

United States District Court, D. Massachusetts

September 26, 2016

THE HILSINGER COMPANY, Plaintiff,
v.
EYEEGO, LLC, Defendant.

          MEMORANDUM & ORDER

          Indira Talwani United States District Judge.

         I. Introduction

         The Hilsinger Company (“Hilco”) brings this declaratory judgment action asserting that two patents owned by Eyeego, LLC (“Eyeego”), U.S. Patent Nos. 8, 070, 403 (the “‘403 patent”) and 8, 375, 546 (the “‘546 patent”) (collectively, the “Patents-in-Suit”), are invalid and that Hilco does not infringe them. Eyeego brings counterclaims for infringement of the ‘403 patent and the ‘546 patent.

         Before the court are the following motions: (1) Eyeego's Motion for Summary Judgment Denying Declaratory Judgment of Invalidity of the ‘403 Patent and the ‘546 Patent [#116]; (2) Hilco's Motion for Summary Judgment [#161]; (3) Eyeego's Motion for Summary Judgment of Infringement of the ‘403 Patent [#172]; and (4) Hilco's Motion to Strike the Declarations [#191]. Hilco claims that Eyeego lacks standing to bring its infringement counterclaims because Eyeego had assigned away the rights to the Patents-in-Suit. Additionally, the parties cross move on whether the Patents-in-Suit are valid and on whether Hilco infringed the Patents-in-Suit.

         The court finds that Eyeego has standing to bring its infringement counterclaims, but that the Patents-in-Suit are invalid as anticipated in part by the prior art and as obvious in light of the prior art. Because the Patents-in-Suit are invalid, the court finds that Hilco does not infringe the Patents-in-Suit. Additionally, the court strikes certain inadmissible evidence propounded by Eyeego.

         Accordingly, Hilco's motion for summary judgment [#116] and motion to strike [#191] are ALLOWED, and Eyeego's motions for summary judgment [#161, #172] are DENIED.

         II. Background

         a. Patents-in-Suit

         The two patents-in-suit share a priority date of August 6, 2007. See Eyeego's Statement Material Facts Supp. Mot. Summ. J. of Invalidity ¶ 3 [#118] (“Eyeego's Stmt. for Eyeego's Mot. Summ. J. of Invalidity”); Hilco's Statement Material Facts Opp. Eyeego's Mot. Summ. J. of Invalidity ¶ 3 [#132] (“Hilco's Stmt. for Eyeego's Mot. Summ. J. of Invalidity”). The ‘403 Patent was issued to Nancy Tedeschi (later assigned to Eyeego) on December 6, 2011, and the ‘546 Patent was issued to Tedeschi (later assigned to Eyeego) on February 19, 2013.

         The ‘403 Patent (entitled “Screw with Breakaway and Methods of Using the Same”) is principally directed to a screw having an elongated tapered end connected to the remainder of the screw by a narrow section-a “breakaway.” The screw described by the ‘403 Patent is depicted below:

         (Image Omitted)

         Decl. Thomas P. McNulty, Ex. A FIG. 4 [#120-1] (“‘403 Patent”).

         The screw has a screw head (15) and an elongated stem (11). The screw head is adjacent to a threaded first portion of the screw (20). A small narrow section (25), a “breakaway, ” connects that first portion of the screw with a non-threaded second portion (30). The breakaway “releasably couples” the first threaded portion from the non-threaded second portion. ‘403 Patent, col. 1, ll. 37-39. Releasably coupling, as described in the patent, is “[f]orming or breaking or severing a mechanical and physical coupling.” Id at col. 3, ll. 55-59.

         The ‘403 Patent further has the following attributes:

• The non-threaded portion of the screw may be inserted into the screw hinge such that the non-threaded portion extends out of the bottom of the hole of the hinge, stabilizing the screw within the screw hole, and thus making it easier for the user to align the threaded first portion of the screw with the threaded channel of the screw hinge. Id at col. 6, ll. 56-60, 65-67. This extension of the non-threaded portion also allows the user to grip and manipulate the screw from below the hinge by hand, without the use of tools. Id at Cl. 26.
• The non-threaded portion of the screw may be removed by hand (via the breakaway) from the threaded portion of the screw once the threaded portion of the screw catches at least one thread in the threaded channel of the screw hinge, leaving what appears to be a regular screw in the hinge. Id. at col. 7 ll. 38-41.

         The ‘546 Patent is a divisional application of the ‘403 Patent, and it discloses a kit comprising a hinge and the screws of the ‘403 Patent.

         b. The SnapIt Screw and the Accused Product

         In October 2009, Nancy Tedeschi met with Hilco's Director of Marketing Bob Woyton and Paula Fazio, another employee of Hilco, in hopes of setting up a distribution agreement with Hilco for her SnapIt Screw, a screw that embodied the claims of the ‘403 Patent. See Eyeego's Stmt. for Eyeego's Mot. Summ. J. of Invalidity ¶¶ 9-10; Hilco's Stmt. for Eyeego's Mot. Summ. J. of Invalidity ¶¶ 9-10. Tedeschi showed Woyton and Fazio the SnapIt Screw. Id. ¶ 10. Hilco conducted a product evaluation and initial patent review of the screw, but decided not to distribute the SnapIt Screw. Id. ¶ 12. Soon after, Hilco began to produce the Thread Seeker XLT screw, a screw with a non-threaded bottom portion below a breakaway. Id. ¶13.

         c. License and Assignments of the Patents-in-Suit and Procedural History

         In December 2012, Eyeego executed an exclusive license agreement with OptiSource International (“OptiSource”). Hilco's Statement Material Facts Supp. Mot. Summ. J. ¶ 61 [#163] (“Hilco's Stmt. for Hilco's Mot. Summ. J.”) (citing Decl. James L. Tuxbury, Ex. Z [#166-18]); Eyeego's Resp. Hilco's Statement Material Facts Supp. Mot. Summ. J. ¶ 61 [#206] (“Eyeego's Stmt. for Hilco's Mot. Summ. J.”). Under the agreement, Eyeego granted OptiSource the “exclusive right and license to make, have made, use, sell, offer to sell and import” products using the Patents-in-Suit in the United States and Canada, and the “right to grant sublicenses” within that territory “consistent with [the] Agreement.” Decl. James L. Tuxbury, Ex. Z ¶ 2(a) [#166-18]. Eyeego, however, retained the right and obligation to bring suit against Hilco and collect all or some of the proceeds from that action. Id. ¶ 14(a). OptiSource could not bring or settle any claims of infringement of the Patents-in-Suit without the written consent of Eyeego. Id. ¶ 14(b). And, if OptiSource and Eyeego could not come to an agreement on whether to bring claims against third party infringers, Eyeego could bring suit against them if OptiSource chose not to do so. Id. ¶ 14(b)(1).

         In March 2013, Hilco brought suit against Eyeego for declaratory judgment on two counts: that Hilco was not infringing the ‘403 Patent owned by Eyeego, and that the ‘403 Patent was invalid. See Compl. [#1]. Hilco later amended its Complaint to include two additional counts for declaratory judgment: that Hilco was not infringing upon the ‘546 Patent owned by Eyeego, and that the ‘546 Patent was invalid. See Am. Compl. [#8]. Eyeego brought counterclaims against Hilco for infringing the ‘403 patent and infringing the ‘546 Patent. Answer & Countercl. [#4].[1]

         In August 2013, Eyeego assigned its rights to SnapIt Screw, LLC (an entity created by Tedeschi), which in turn transferred those rights to FBB Asset Management, LP (“FBB”) (another entity created by Tedeschi) in September 2013. Third Decl. James L. Tuxbury, Ex. BB [#188-19] (assignment from Eyeego to SnapIt Screw, LLC on August 7, 2013) & CC [#188-20] (assignment from SnapIt Screw, LLC to FBB on September 3, 2013). FBB transferred the rights back to Eyeego in March 2016. Decl. Thomas P. McNulty Supp. Eyeego, LCC's Reply, Ex. A & B [#197-1, #197-2].

         d. Prior Art

         Hilco comes forward with two sets of what it asserts are prior art that renders the Patents-in-Suit invalid.

         The Sadler Screw, as seen in catalogs starting in 1999, has the attributes of a threaded portion separated from a non-threaded second portion by a breakaway.

         (Image Omitted)

         Decl. Thomas Sadler, Ex. A. [#164-1].

         The CentroStyle Screw, depicted in a catalog from 2003, appears to have a threaded portion of a screw separated from an elongated non-threaded portion of the screw by a narrower breakaway:

         (Image Omitted)

         See Decl. James L. Tuxbury, Ex. M. [#166-5] (CentroStyle 2003 catalog). The catalog instructs users to “[s]nap-off the end when in place” and includes a picture, reproduced and discussed below, demonstrating how this is to be done. Id. at 8.

         III. Discussion

         A. Standing

         “Federal courts are courts of limited jurisdiction and, thus, we must begin by ensuring that we have jurisdiction to reach the questions presented . . . .” Hochendoner v. Genzyme Corp., 823 F.3d 724, 730 (1st Cir. 2016). Thus, the court must first address the threshold issue of whether Eyeego has standing to pursue its infringement counterclaims.

         Hilco alleges that Eyeego lacks standing to pursue its infringement claim based on two grounds: that Eyeego licensed substantially all rights in the Patents-in-Suit to OptiSource; and that Eyeego relinquished any remaining interest in the ‘403 patent when Eyeego assigned its rights under its licensing agreement with OptiSource to FBB. Neither of these arguments prevail. As to the OptiSource license, Eyeego did not transfer all substantial rights, as it maintained the right to sue. As to the FBB assignment, FBB has transferred all of its interest in the ‘403 back to Eyeego during this litigation, and Eyeego now holds the rights in that patent.

         i. ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.