United States District Court, D. Massachusetts
MEMORANDUM & ORDER
Talwani United States District Judge.
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
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
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.
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.
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.
‘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:
Thomas P. McNulty, Ex. A FIG. 4 [#120-1] (“‘403
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.
‘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.
‘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.
The SnapIt Screw and the Accused Product
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.
License and Assignments of the Patents-in-Suit and Procedural
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.
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].
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].
comes forward with two sets of what it asserts are prior art
that renders the Patents-in-Suit invalid.
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.
Thomas Sadler, Ex. A. [#164-1].
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
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.
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.
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.