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Kolcraft Enterprises, Inc. v. Chicco USA, Inc.

United States District Court, N.D. Illinois, Eastern Division

September 2, 2016

KOLCRAFT ENTERPRISES, INC., Plaintiff,
v.
CHICCO USA, INC., Defendant.

          MEMORANDUM OPINION AND ORDER

          EDMOND E. CHANG JUDGE

         Kolcraft Enterprises, Inc. manufactures and sells a variety of baby products, including play gyms (comprised of arches from which toys dangle) and play yards (basically, an enclosed play pen). Kolcraft owns patent number 7, 376, 993 (the '993 patent), which covers a method for using a play gym with a mat, a bassinet (a cradle where a baby sleeps), a play yard, or any combination of the three products. Kolcraft alleges that Chicco USA, Inc. (which does business as Artsana USA, Inc.) has infringed on the patent.[1] The parties have briefed the construction of the patent's disputed claims, and the Court held an in-court claim-construction hearing where the parties presented argument. The Court's construction of those claim terms is set forth below.

         I. Background

         A. Procedural History

         This case, which has a long-winded history, involves two competitors in the baby-products industry. R. 1, Compl. ¶¶ 2, 5.[2] Kolcraft owns the '993 patent, which was issued in May 2008 and covers “play gyms and methods of operating the same.” R. 147-1, Joint App'x at JA-000001, '993 Patent. The '993 patent originally consisted of 31 claims, including apparatus claims 1-27 and method claims 28-31. Id. In June 2009, Kolcraft sued Artsana for making products that allegedly infringed the '993 patent, including “at least” apparatus claims 1-12 and 18-27. Compl. ¶ 9.[3] (Because the defense refers to Chicco as Artsana, the Court will do so as well.) Upon learning of the suit, Artsana filed a Request for Reexamination with the Patent and Trademark Office, raising challenges to all 31 claims of the '993 patent. R. 46. In December 2009, this case was put on hold pending the patent reexamination. R. 57, 12/10/09 Minute Entry.

         The PTO proceedings continued throughout 2010 and 2011, R. 77, 79, 81, 83, and even proceeded beyond then. In February 2010, the PTO rejected claims 1-12 and 18-27, which were the claims that Kolcraft asserted in its Complaint. R. 87, Def.'s Resp. to Pl.'s Mot. to Lift Stay ¶ 7. At the PTO, Kolcraft amended some claims and added claims 32-68. Id. ¶ 8. In December 2010, the PTO confirmed the patentability of claims 28-31 and deemed some of the new and amended claims patentable, while rejecting others. Id. ¶ 17. After additional challenges by the parties, the PTO issued another decision in November 2011 again confirming claims 28-31, and deeming claims 1-27, 32, 34, 37-50, 52-60, and 63-67 patentable. Id. ¶ 22; R. 84-1, Pl.'s Exh. 1, 11/2/11 PTO Action Closing Prosecution. In March 2012, even though the PTO had not yet issued a reexamination certificate or an appeal notice (meaning that the PTO proceedings were not officially complete), the Court lifted the stay because it had the benefit of the PTO's reexamination, and because waiting until the end of the appeals process “will likely require a years-long additional delay.” R. 96, 3/7/12 Minute Entry. With that, the case proceeded and discovery began. Id.

         In April 2012, Kolcraft issued its initial infringement contentions, alleging that in addition to the claims originally asserted in its Complaint, Artsana had also infringed claims 28-31, 43-49, and 68 of the '993 patent. R. 112-2, Pl.'s Exh. B, 4/3/12 Infringement Contentions ¶ a. (Remember that Kolcraft originally asserted infringement of “at least” claims 1-12 and 18-27. Compl. ¶ 9.) Artsana then moved to dismiss the action for lack of subject matter jurisdiction, arguing that claims 43-49 and 68 were not yet part of the '993 patent because the PTO had not yet issued a reexamination certificate that officially incorporated these claims into the patent. R. 127, Def.'s Mot. to Dismiss Br. The Court denied Artsana's motion, but clarified that only claims 28-31, which were originally a part of the '993 patent and were later confirmed by the PTO, could be litigated at this time. R. 142, 5/31/12 Minute Entry. In the meantime, Artsana had appealed the PTO's reexamination and was awaiting a decision from the Board of Patent Appeals.[4] R. 144, 9/19/12 Minute Entry.

         The parties then began the claim-construction process for claims 28-31. After the parties briefed the issue, the Court held a Markman hearing on February 19, 2013, R. 163, and accepted additional post-hearing submissions, R. 166-67. In December 2015, the Patent Trial and Appeal Board issued a new decision on several claims, and affirmed the patentability of claims 28-31. R. 206, Pl.'s Notice of Decision; R. 206-1, Pl.'s Exh. 1, 12/7/15 PTAB Decision. Artsana then filed a request for rehearing of this PTAB decision. R. 208. Recently, in August 2016, the PTAB “considered the Original Decision [from December 2015] in light of the Request for Rehearing, and [] elaborated on certain aspects of it, ” but “decline[d] to modify the Original Decision in any respect.” R. 214-1, 8/8/16 PTAB Decision. So the PTAB again confirmed the patentability of claims 28-31 of the '993 patent. Id.

         B. The '993 Patent

         The '993 patent involves play gyms, play yards, bassinets, and mats. See generally '993 Patent. A play gym is a popular baby product that has “flexible arches for suspending objects such as toys.” '993 Patent col. 1 ll. 53-57. The arches cross over each other and form a dome-like shape. Id. When the play gym is placed over a baby, “the suspended objects tend to bounce and move in response to vibrations … caused by the child batting his/her hands and/or feet at the objects.” Id. col. 1 ll. 57-62. (A drawing of a play gym appears on the next page.)

         The '993 patent explains that a play gym can be used in combination with other baby products, such as a play yard, bassinet, or mat. A play yard is an enclosed playpen that “typically include[s] a frame, a fabric supported by the frame, and removable floor board or mat.” Id. col. 1 ll. 18-20. A portable bassinet, which is a cradle where an infant sleeps, can also be placed inside the top of the play yard. Id. col. 1 ll. 28-39. The bassinet typically has the same length and width as the play yard, but it is shallower than the yard, so there is empty space between the bottom of the bassinet and the bottom of the play yard. Id. The floor mat of the play yard can also be used inside the bassinet, or it can be removed and used separately from the play yard or the bassinet. Id. col. 1 ll. 46-51.

         The play gym can be used any number of ways with the play yard, bassinet, floor mat, or with a combination of the three products. Id. col. 1 ll. 46-62. The figures below show some of the combinations:

         (Image Omitted)

         '993 Patent at Sheet 1-2. Figure 1, for example, shows the play gym placed over a bassinet, while the bassinet is sitting inside the play yard. Id. col. 1 ll. 66-67 (“FIG. 1 is a perspective view of an example play yard, an example bassinet, and an example play gym.”). In this example, the floor mat serves as the base of the bassinet. (The bottom of the bassinet is labeled 16, [5] which is the number representing the floor mat.) Although not shown in Figure 1, the play gym can also be used with the play yard (whose base is comprised of the mat), but without the bassinet. E.g., col. 1 ll. 44-46 (explaining that the play gym can be used “above any or all of the bassinet 12, the play yard 14, and the mat 16” (emphasis added)); id. col. 7 ll. 1-2 (“In operation, a user wishing to use the play gym 10 may first erect a bassinet 12 and/or a play yard 14.” (emphasis added)). Similarly, although not shown in the figures, the play gym can also be used with only the bassinet (whose base is comprised of the mat), but without the play yard. Id. Figure 2 shows a different combination-the play gym is used with only the floor mat, and is completely outside of the play yard/bassinet setup. Id. col. 2 ll. 1-3 (“FIG. 2 is a perspective view of the example play gym of FIG. 1 when removed from the play yard and bassinet, and coupled to a floor mat of the play yard and bassinet.”).

         When the play gym is in use, it is secured in an arched position to the play yard, bassinet, or the mat with some type of “connector.” Id. col. 5 ll. 39-43 (noting “connectors” of some kind on the bassinet or the play yard). The force of the connection keeps the play gym's legs bent into the arched position shown above in Figures 1 and 2; otherwise, without some force applied, the legs will spring back into a straight position shown here in Figure 3:

         (Image Omitted)

See Id. col. 3 ll. 61-65 (“[T]he legs 22 of the play gym 12 are flexible such that they can be bent into the arched position shown in FIGS. 1 and 2, but will spring back to the generally planar position shown in FIG. 3 when released from the mat 16, the bassinet 12, and/or the play yard 14.”); id. col. 5 ll. 15-20 (“As shown in FIG. 1 … the legs must be bent into an accurate shape thereby causing the play gym to form a pair of arches crossing one another at the hub 20 … .”); id. col. 6 ll. 56-58 (“When the legs 22 are released, they will attempt to move from their bent position toward a straight position … .”). To secure the play gym in this arched position, a user can attach it to the bassinet or the play yard “in any number of ways.” Id. col. 5 ll. 4-9. For example, the play gym's legs may be inserted into fabric pockets in the corners of the bassinet or the play yard; the legs try to push out but the pockets keep them in place. Id. col. 5 ll. 26-38. In other words, “[t]hese forces act to … bias the free ends of the legs 22 into tight engagement with the sides of the pockets 50 (and, thus, with the frame of the bassinet 12 and/or play yard 14) to thereby securely hold the play gym 10 above the bassinet 12 and/or the play yard 14.” Id. col. 5 ll. 32-38. But if the bassinet or play yard lacks pockets or other connectors, the play gym can instead be directly “coupled to the corners of a rectangular mat via snaps or the like.” Id. col. 1 ll. 52-56; see also Id. col. 5 ll. 43-47 (“Alternatively, no connectors 50 may be located on the bassinet 12 and/or the play yard 16, and the play gym 10 can instead be coupled to the bassinet 12 and/or the play yard 14 via direct connection to the mat 16.”). Another possibility is that the play gym can be wedged into the play yard or bassinet and held there by friction alone, such as by the resistance from the walls of the bassinet or play yard. Id. col. 5 ll. 26-38 (explaining that the play gym's legs will be “bias[ed] … into tight engagement … with the frame of the bassinet 12 and/or the play yard 14[] to thereby securely hold the play gym 10 above the bassinet 12 and/or the play yard 14”).

         Finally, when the child is done using the play gym, the caretaker can store the gym by folding the legs into a parallel position. The play gym's legs are attached directly to each other or to a central hub; for example, the legs may be “pivotably coupled to a hub 20 such that they can be pivoted between a stored position wherein the legs 22 are positioned generally parallel to each other as shown in FIG. 4, and an extended position herein the legs 22 extend generally radially outward from the hub 20 as shown in FIG 3.” Id. col. 4 ll. 5-10. Below, Figure 3 shows the legs in an extended position when they are disconnected from a play yard, bassinet, or mat. And Figure 4 shows the legs in a closed position for storage.

         (Image Omitted)

         C. Claims 28-31

         The parties dispute the meaning of Claims 28-31, all of which are process claims. As explained above, these are the only finalized claims that can be litigated at this juncture, because the PTO has not yet issued a reexamination certificate finalizing the other relevant claims. The Court recites Claims 28-31 below, emphasizing the disputed terms in italics. First, Claim 28 describes

A method comprising:
securing a play gym at least partially above at least one of a bassinet and a play yard;
removing the play gym from the at least one of the bassinet and the play yard;
securing the play gym to a mat apart from the play gym and the bassinet;
removing the play gym from the mat; and collapsing the play gym, wherein collapsing the play gym comprises:
pulling a leg of the play gym in a direction away from a hub; and pivoting the leg into a stored position.

'993 Patent col. 10 ll. 6-18. The remaining claims 29-31 elaborate on the process for collapsing and storing the play gym:

29. A method as defined in claim 28 wherein pulling the 20 leg of the play gym comprises pulling the leg of the play gym against a spring force.
30. A method as defined in claim 28 further comprising moving the leg of the play gym toward the hub to secure ...

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