ZINUS, INC., Plaintiff, v. SIMMONS BEDDING COMPANY, et al., Defendants. AND RELATED CROSS-ACTION.

Case No.: C 07-3012 PUT.United States District Court, N.D. California, San Jose Division.
March 11, 2008

ORDER GRANTING PLAINTIFF ZINUS, INC.’S MOTION FOR RECONSIDERATION; AND GRANTING PLAINTIFF’S MOTION FOR SUMMARY ADJUDICATION
PATRICIA TRUMBULL, Magistrate Judge

On October 2, 2007, Zinus, Inc. (“Zinus”) filed a motion seeking summary adjudication that its “Swirl Wrap” packaging method did not infringe, either literally or under the doctrine of equivalents, U.S. Patent Re. 36,142 (“the `142 Patent”).[1]
Defendant and Counterclaimant Dreamwell, Ltd. (“Dreamwell”) opposed the motion solely with regard to infringement under the doctrine of equivalents. In its reply, Zinus made two arguments it had not presented in its moving papers. First, it argued that the range of equivalents Dreamwell seeks is precluded by prosecution history estoppel. Second, it argued that the doctrine of equivalents cannot be used to cover the Swirl Wrap packaging method because that method was obvious from prior art, specifically U.S. Patent

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No. 4,711,067 (the “Magni Patent” or “Magni”).[2] Dreamwell moved to strike those arguments.

On December 6, 2007, the court issued an order denying Plaintiff’s motion for summary adjudication without prejudice, denying Dreamwell’s motion to strike as moot, and scheduling a Case Management Conference. At the Case Management Conference Statement the court granted leave for Zinus to file a motion for reconsideration of this court’s denial of Zinus’ motion for summary adjudication.

On December 17, 2007, Zinus filed its motion for reconsideration. Dreamwell opposed the motion. After reviewing the papers submitted by the parties, the court ordered additional briefing and calendared the motion for February 19, 2008.

On February 19, 2008, the parties appeared for hearing before Magistrate Judge Patricia V. Trumbull. Based on the briefs and arguments submitted, and the file herein,

IT IS HEREBY ORDERED that Plaintiff’s motion for reconsideration is GRANTED.

IT IS FURTHER ORDERED that Plaintiff’s motion for summary adjudication is GRANTED for the reasons set forth herein.

I. INTRODUCTION

Plaintiff Zinus is a business engaged in the manufacture of mattresses. Among other products, Zinus makes a “Mattress-In-A-Box” product using a “Swirl Wrap” method. Prior to this action, Zinus was selling its Mattress-In-A-Box through Wal-Mart Stores, Inc. (“Wal-Mart”).

Defendant Dreamwell is a wholly-owned subsidiary of Defendant Simmons Bedding Company (“Simmons”), and is the assignee of the `142 Patent. The `142 Patent covers a method of packaging a particular type of inner spring mattress assembly in a compressed state for shipment.

In May of 2007, Dreamwell sent cease and desist letters to Zinus and Wal-Mart, claiming that Zinus’ Mattress-In-A-Box infringes the `142 Patent. This action for declaratory relief ensued.

In the present motion, Zinus seeks summary adjudication that its “Swirl Wrap” packaging method does not infringe the `142 Patent.

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II. LEGAL STANDARDS
A. SUMMARY JUDGMENT

Under Rule 56 of the Federal Rules of Civil Procedure a party claiming relief or against whom relief is sought may move for summary judgment on all or part of a claim. The purpose of summary judgment “is to isolate and dispose of factually unsupported claims or defenses.” Celotex v. Catrett, 477 U.S. 317, 323-24 (1986). To obtain summary judgment, a party must demonstrate that no genuine issue of material fact exists for trial, and that based on the undisputed facts he is entitled to judgment as a matter of law. Id., at 322.

The moving party “bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of `the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any’ which it believes demonstrate the absence of a genuine issue of material fact.” Id. at 323. If the moving party meets its initial burden, then the non-moving party “must-by affidavits or as otherwise provided in this rule-set out specific facts showing a genuine issue for trial.” FED.R.CIV.PRO., Rule 56(e).

The moving party in not required to negate the elements of the non-moving party’s case on which the non-moving party bears the burden of proof. Celotex, 477 U.S. at 323. On the contrary, “regardless of whether the moving party accompanies its summary judgment motion with affidavits, the motion may, and should, be granted so long as whatever is before the district court demonstrates that the standard for the entry of summary judgment, as set forth in Rule 56(c), is satisfied.” Ibid.

The non-moving party cannot defeat a proper motion for summary judgment simply by alleging a factual dispute between the parties. To preclude summary judgment, the non-moving party must bring forth material facts, i.e., “facts that might affect the outcome of the suit under the governing law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986).

If the non-moving party cannot, for reasons stated, present by affidavit facts essential to justify the party’s opposition, the court may either deny or continue the motion to allow additional discovery. FED.R.CIV.PRO., Rule 56(f). However, “[t]he burden is on the party seeking additional discovery to proffer sufficient facts to show that the evidence sought exists, and that it would prevent summary judgment.” See Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151, 1161 n. 6 (9th Cir. 2001).

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The court must draw all reasonable inferences in favor of the non-moving party. See Masson v. New Yorker Magazine, Inc., 501 U.S. 496, 520 (1991); see also Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574, 588 (1986). However, the opposing party “must do more than simply show that there is some metaphysical doubt as to the material facts.” See Matsushita, 475 U.S. at 588. “Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no `genuine issue for trial'” and summary judgment is thus warranted. See Matsushita, 475 U.S. at 587.

In a patent case, summary judgment is appropriate: 1) where “only one conclusion as to infringement could be reached by a reasonable jury;” or 2) “when the patent owner’s proof is deficient in meeting an essential part of the legal standard for infringement, because such failure will render all other facts immaterial.” See TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002). An accused infringer is entitled to summary judgment if the patent holder fails to put forth evidence
that each limitation of the asserted claim is met in the accused device or method, either literally or by a substantial equivalent; mere assertions are insufficient to shoulder the non-movant’s burden. See, e.g., Johnston v. IVAC Corp., 885 F.2d 1574, 1577-78 (Fed. Cir. 1989) (“Mere assertion of similarity in the accused and patented devices is insufficient to create a genuine factual issue”); see also Phillips Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d 866, 876 (Fed. Cir. 1998) (patentee failed, through the conclusory statements of experts, to raise a genuine issue of material fact precluding summary judgment).

B. PATENT INFRINGEMENT

Patent infringement analysis involves two steps: 1) claim construction; and 2) application of the properly construed claims to the accused device or method. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc) aff’d, 517 U.S. 370 (1996). The first step is a matter of law Id. at 979. The second step is a factual question. See Bai v. L L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998). To prove infringement, a patent holder must show that the accused device or method meets each claim limitation, either literally or under the doctrine of equivalents. See Deering Precision Instruments, L.L.C. v. Vector Distribution Systems, Inc., 347 F.3d 1314, 1324
(Fed. Cir. 2003).

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1. Claims Construction

Claim construction is a matter of law for the court. See Markman, 52 F.3d at 979. In interpreting disputed claim terms, the court should look first to the intrinsic evidence of record Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996). Intrinsic evidence includes the language of the claims, the specification, and the file history, if in evidence Id.

“Claim language generally carries the ordinary meaning of the words in their normal usage in the field of invention” at the time of invention. See Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1367 (Fed. Cir. 2003); see also, CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (noting there is a “`heavy presumption’ that a claim term carries its ordinary and customary meaning.”) A court determines the meaning of a technical term in a patent claim “in accordance with its usage in the specification, elaborated if appropriate by the prosecution history and with due consideration to usage in the field of the invention.” Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1326 (Fed. Cir. 2004).

Dictionaries can be helpful in ascertaining the plain and ordinary meaning of claim language. Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002). However, the Federal Circuit has clarified the role of dictionary definitions in claim construction, finding that the Texas Digital
line of cases too often has been “improperly relied upon to condone the adoption of a dictionary definition entirely divorced from the context of the written description.” Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc) (“Phillips”). The Federal Circuit explained “[t]he problem is that if the district court starts with the broad dictionary definition in every case and fails to fully appreciate how the specification implicitly limits that definition, the error will systematically cause the construction of the claim to be unduly expansive.” Id.

The specification is the “single best guide to the meaning of a disputed term” and “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.” See Phillips, 415 F.3d at 1321, quoting Vitronics, 90 F.3d at 1582; see also, Bell Atl. Network Servs., Inc. v. Covad Comms. Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) (“[A] claim term may be clearly redefined without an explicit statement of redefinition.”)

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2. Literal Infringement

Once the claims have been correctly construed to determine their scope, the claims must be compared to the accused device See Markman, 52 F.3d at 976. “To establish literal infringement, all of the elements of the claim, as correctly construed, must be present in the accused system.” TechSearch, L.L.C., 286 F.3d at 1371. “Any deviation from the claim precludes such a finding.”Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1330
(Fed. Cir. 2001).

3. The Doctrine of Equivalents

Infringement under the doctrine of equivalents requires a showing that the difference between the claimed method and the accused method is insubstantial or that the accused method performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented method. See Aqua-Tex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320, 1326 (Fed. Cir. 2007). Infringement under the doctrine of equivalents does not require complete identity for every purpose and in every respect, but does require substantial identity of function, means, and result Graver Tank and Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 608-09 (1950).

The doctrine of equivalents cannot allow a patent to encompass subject matter existing in the prior art or which are obvious or trivial variations of the prior art. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1367 (Fed. Cir. 1999), citing Wilson Sporting Goods Co. v. David Geoffrey Assoc., 904 F.2d 677, 684
(Fed. Cir. 1990) (“[A] patentee should not be able to obtain, under the doctrine of equivalents, coverage which he could not lawfully have obtained from the PTO by literal claims.”) overruled in part on other grounds by Cardinal Chem. Co. v. Morton Int’l, 508 U.S. 83 (1993).

In order to facilitate a determination of whether an accused device or method was obvious from the prior art so as to preclude use of the doctrine of equivalents to establish infringement, courts sometimes employ an “hypothetical claim” procedure. See Wilson Sporting Goods Co., 904 F.2d at 684-685. With this procedure the patentee proposes an hypothetical patent claim which is sufficiently broad in scope to literally cover the accused device (or method). Ibid. The pertinent question is whether that hypothetical claim would have been patentable over the prior art. If not, the patentee cannot obtain that coverage under the doctrine of equivalents. Ibid.

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The hypothetical claim procedure does not give a patent holder free rein to “cut and trim, expanding here, and narrowing there, to arrive at a claim that encompasses an accused device, but avoids the prior art.” See Streamfeeder, LLC v. Sure-Feed Sys., Inc., 175 F.3d 974, 983 (Fed. Cir. 1999). “Slight broadening is permitted at that point, but not narrowing.” Ibid.
4. Prosecution History Estoppel

Reliance on the doctrine of equivalents can be foreclosed by prosecution history estoppel. See Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997). “Estoppel arises when an amendment is made to secure the patent and the amendment narrows the patent’s scope.” See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) (“Festo”). “Under this doctrine, the surrender of subject matter during patent prosecution creates a presumption that the patentee is precluded from recapturing that subject matter through the doctrine of equivalents.” See Aqua-Tex Indus., 479 F.3d at 1325 (emphasis added).

Once a court determines that a patentee made an amendment during prosecution which is narrowing, and which was made for the purpose of patentability, a presumption arises “that the patentee has surrendered all territory between the original claim limitation and the amended claim limitation.” See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1367
(Fed. Cir. 2003) (en banc) (“Festo II”). Thus, a court must determine the actual scope of subject matter that has presumably been surrendered by the patentee. See Id. at 1367 (“the third question in a prosecution history estoppel analysis addresses the scope of the subject matter surrendered by the narrowing amendment”).

A patentee can rebut the presumption of surrender by showing that: 1) “the alleged equivalent would have been unforeseeable at the time of the narrowing amendment;” 2) “the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question;” or 3) “there was `some other reason’ suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent.” See Festo II, 344 F.3d at 1368.

Whether a patentee has rebutted the presumption of surrender is a question of law. See Biagro Western Sales, Inc. v. Grow More, Inc., 423 F.3d 1296, 1301-02 (Fed. Cir. 2005). To the extent the rebuttal of the presumption is subject to underlying factual issues, those factual issues may

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properly be decided by the court. See Biagro Western Sales, Inc., 423 F.3d at 1302; see also Festo Corp. v. Shoketsu Ltd., 493 F.3d 1368, 1375 (“Festo III”) (“In our second en banc, we held that rebuttal of the presumption of surrender was a question of law to be tried by a court and not a jury.”)

III. THE PATENT IN SUIT, THE MAGNI PRIOR ART, AND THE ACCUSEDSWIRL WRAP METHOD
A. THE `142 PATENT
1. Prosecution of the Patent

On April 4, 1995, inventors C. Edward Steed and Rickey F. Gladney (the “Applicants”) filed the application on which the `142 Patent is based.[3] The original application contained four claims (one independent and three dependent), which sought broad coverage of a method of packaging “compressed articles,” rather than inner spring mattress assemblies. Each of the claims included the following element: “inserting said evacuated tube into a containment sleeve which is dimensioned and configured to retain said compressed article in a compressed state.”

In its initial Office Action, the United States Patent and Trademark Office (“Patent Office”) rejected all four claims of the original application as obvious in light of the “Broyles” prior art reference, which relates to a method for putting mattress springs into a mattress cover. (See Wallace Decl.,[4]
Exhs. W-D W-E.)

Exhibit

The Applicants submitted a response to the Office Action in which they amended the subject matter of the claims from a “a resiliently compressible article” to “an assembly of coil springs wherein each spring is contained within an individual pocket of fabric.” In arguing for the patentability of the amended claims, the Applicants noted that the patented invention “is directed to reducing the volume of coil springs and retaining them in a compressed state in a containment sleeve such that the springs can be shipped more economically to remote locations.” (See
Wallace Decl., Exh. W-E.) They also argued “[t]here is no containment sleeve

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disclosed in Broyles which is intended to maintain the innerspring in a compressed state after evacuation. The claims of the instant application all call for such a containment sleeve.”(Id.)

The Applicants also argued in this Amendment that “[i]n an effort to distinguish even more clearly over Broyles, claim 1 has been amended herein to specifically recite a method of packagingpocketed coils.” (Id.) To support their argument, the Applicants submitted the Declaration of co-inventor Ricky F. Gladney (“Gladney Declaration”). Gladney detailed the results of certain tests that he had conducted which showed that the use of pocketed coil spring assemblies with the other steps of the claimed method achieved, in his opinion, substantial and unexpected benefits over utilizing those steps with the Broyles prior art method (See Wallace Decl., Exh. W-E.)

Notwithstanding these arguments, the Patent Office issued a “final rejection” of all claims in light of the Broyles patent. The Patent Office noted that “Applicant’s arguments filed 1/22/96 have been fully considered but they are not deemed to be persuasive. . . . Broyles shows a containment sleeve 43 holding the springs in a compressed state. . . . [L]ittle patentable weight is given to the actual product since the manipulative steps of Broyle [sic] could package any type of compressible material.” (Id.)

In response, on or about July 1, 1996, the Applicants submitted an Amendment After Final Rejection in which they amended the subject matter of the claims from “an assembly of coil springs” to “a mattress assembly constructed of coil springs.” (Id.) They also added the following highlighted language to the “containment sleeve” element: “inserting said evacuation tube into a containment sleeve which is dimensioned and configured to retain said compressed mattress assembly in a compressed state forshipment.” (Id.) The Applicants then added the following two additional limitations to the one independent claim from the original application: “removing said evacuated tube from said containment sleeve;” and “puncturing said evacuated tube to allow said mattress assembly in said tube to gradually return to an uncompressed state.” (Id.) The Applicants noted that in these new elements, “the structure and functioning of applicants’ containment sleeve is more clearly and specifically defined.”(Id.) They also argued that “[t]here is no containment sleeve in Broyles which is meant to be placed over an evacuated tube of compressed springs to indefinitely retain the springs in a compressed state for shipment. . . . There is no suggestion at all in Broyles of

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using a containment sleeve to retain the springs in compression.” (Id.)

The Patent Office refused to enter the proposed Amendment for a variety of reasons, including the fact the Amendment added two entirely new steps. (Id.) As a result, on August 9, 1996, the Applicants filed a continuation application containing the four claims from the June 26, 1996 Amendment, and abandoned the original application. (Id.) On October 30, 1996, the Patent Office issued a Notice of Allowability, and on April 22, 1997, the Patent Office issued U.S. Patent No. 5,622,030 (the “`030 Patent”), which included these claims. (Id.)

About four months after the `030 Patent issued, Applicants filed an application for a broadening reissue of the patent. The new application contained a broader version of original independent claim 1 that (among other things) eliminated the limitation of “puncturing the evacuated tube,” and added 5 new dependent claims that provided variations on the original patented method. (See Wallace Decl., Exh. W-D.) One such claim (claim 7) added back the limitation of “puncturing the evacuated tube,” while another (claim 8) specified the limitation of “severing the containment sleeve retaining the evacuated tube to allow the mattress assembly therein to gradually return to an uncompressed state.” (Id.)

The Applicants argued that while claim 1 of the `030 Patent required “puncturing said evacuated tube to allow said mattress assembly in said tube to gradually return to an uncompressed state,” this element “unnecessarily narrows the scope of the invention of the `030 patent. Specifically, while puncturing the evacuated tube certainly is one way of allowing the mattress to gradually return to an uncompressed state, it is not the only way.” (Id.)

On February 3, 1998 the Patent Office issued an Office Action rejecting claims 1-9 under 35 U.S.C. section 112 as being indefinite. The examiner noted that “[i]n claim 1 line 26, there is no manipulative step recited in `allowing said mattress assembly in said tube to gradually return to an uncompressed state’.” The examiner also rejected broadened claims 1-4 as obvious in light of Broyles, and rejected claims 5-9 as being dependent on a rejected base claim. (Id.) In response, the Applicants submitted an Amendment in which they amended claim 1 to combine the last two steps so that “allowing said mattress assembly . . . to gradually return to an uncompressed state” was recited as a result of “removing said evacuated tube from said containment sleeve.” The Applicants

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also rewrote claims 5-8 in independent form. In pointing out the differences between claim 1 and the Broyles reference, the Applicants again noted that “Broyles discloses a mattress assembly with an inner spring 9 comprised of exposed, open spring coils 13. In contrast, as stated in claim 1, applicants’ claims cover a method of packaging `a mattress assembly constructed of coil springs wherein each spring is contained within an individual pocket of fabric.'” (Id.) The Applicants also noted that “[t]here is no discussion or even remote suggestion in Broyles relating to the shipment of the compressed mattress. Consequently, Broyles does not need to use — or even suggest using — a containment sleeve `to retain said compressed mattress assembly in a compressed state for shipment,’ as required in the present claims.” (Id.)

After considering this Amendment and the argument contained therein (as well as some technical claim modifications made in a Supplemental Amendment), the Patent Office allowed the new set of claims. (Id.) On March 16, 1999, these claims issued as the `142 Patent. (Id.)
2. The Approved Claims of the `142 Patent

The `142 Patent contains five independent claims. Each claim of the `142 Patent discloses a method for packaging “a mattress assembly constructed of coil springs wherein each spring is contained within an individual pocket of fabric.” The process starts with a tube of deformable material having a predetermined length 22. The mattress assembly 10 is placed in the tube 22, and one end of the tube is sealed. In the next step, air is evacuated from the tube, causing the tube to deform around the mattress assembly and causing the mattress assembly to compress. The second end of the tube may be sealed at this point. The next step involves inserting the evacuated tube into a containment sleeve 26 which is dimensioned and configured to retain the mattress assembly 10 in a compressed state for shipment. See
`142 Patent at Fig. 3 (pictured here) and 3:10-39 and 4:5 — 6:30.

Exhibit

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Each claim goes on to recite the step of “removing said evacuated tube from said containment sleeve.” Finally, each claim discloses the step of “allowing said mattress in said tube to gradually return to an uncompressed state” or similar language, without necessarily specifying how this result is to be achieved See `142 Patent at 4:30-32, 4:66-67, 5:23-24, 6:3-4 and 6:33-34.

B. THE MAGNI PRIOR ART

The Magni Patent discloses[5] a method, along with an apparatus designed to perform the method, for compressing a mattress in an airtight wrapper, rolling it up together with a sheet[6] of film that wraps fully around the mattress, and then securing the package by applying to the outside convolution of the film two or three adhesive strings annularly disposed around the rolled mattress. See Magni Patent at 4:18 to 6:55, 7:50-53 8:30-33. Figure 13 of the Magni Patent (shown here) shows “in perspective view, a rolled-up mattress and a container for it.” See Magni Patent at 3:26-27. The outside convolution of the film is denoted “222A.” See Magni Patent at 6:30, 6:34 6:52-53. The adhesive strings are denoted “230.” See Magni Patent at 6:31-32, 6:53 6:58.

Exhibit

Magni is not limited to an embodiment that requires the use of any rolling-up machine. The

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most basic method disclosed in the Magni Patent involves:

“a method of individually packaging a mattress including the steps of inserting the mattress into a flexible and sealable wrapper, compressing the wrapped mattress by squeezing compression means to reduce the thickness of the mattress within limits compatible with the elastic structure of the mattress, and to remove air from the inside of the wrapper, thereafter sealing the wrapper, rolling up the squeezed and sealed mattress, stabilizing the rolled up shape, and placing the rolled mattress in a container therefore.” See
Magni Patent, 1:42-52.

The Magni Patent illustrates this basic method in Figures 1 through 8:

Exhibit

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C. THE ACCUSED SWIRL WRAP METHOD

Zinus’ “Swirl Wrap” method of packaging a mattress involves putting the mattress in a plastic “sheath” (similar to the Magni airtight wrapper), compressing the mattress, rolling up the compressed mattress and sheath together with a rectangular sheet of flexible film, which film is slightly wider than the mattress and long enough so that the film will wrap completely around the finished roll, and then putting bands of either adhesive tape or plastic stripping around the roll to secure it. The secured roll is then put in a box.[7]

Exhibit
VI. DISCUSSION
A. ZINUS’ MOTION IS NOT PREMATURE

Dreamwell argues that Zinus’ motion is premature.[8] If Dreamwell believed it needed time to obtain affidavits to support its opposition, or to take depositions or other discovery, it was required

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to file a Rule 56(f) affidavit. Rule 56(f) provides:

“When Affidavits Are Unavailable. If a party opposing the motion shows by affidavit that, for specified reasons, it cannot present facts essential to justify its opposition, the court may:
“(1) deny the motion;
“(2) order a continuance to enable affidavits to be obtained, depositions to be taken, or other discovery to be undertaken; or
“(3) issue any other just order.”

The closest Dreamwell comes in its papers to seeking relief under Rule 56(f) is the statement in its Opening Brief Re Hypothetical Claim Analysis that “[g]iven additional time to develop the factual record and engage experts on these issues, there can be little question that Dreamwell would be able to offer even more evidence of non-obviousness.” At the hearing Dreamwell also noted that it had not yet lined up all its experts for this case, and that in a “perfect world” it would have submitted expert testimony, but that it just had not had time.

Zinus first filed its motion for summary judgment on October 2, 2007. The “Legal Standards” section of Zinus’ Moving Brief contained the following passage:

“The application of the doctrine of equivalents, however, is limited in various ways. For example, the scope of equivalency may not encompass previously disclosed material. In Tate Access Floors, Inc. v. Interface Architectural Resources, Inc., 279 F.3d 1357, 61 USPQ2d 1647 (Fed. Cir. 2002), the Federal Circuit held that the scope of equivalency is constrained by the prior art. The court stated, “the doctrine of equivalents is an equitable doctrine and it would not be equitable to allow a patentee to claim a scope of equivalents encompassing material that had been previously disclosed by someone else, or that would have been obvious in light of others’ earlier disclosures.” Tate Access Floors, 279 F.3d at 1367. See also Wilson Sporting Goods Co. v. David Geoffrey Associates, 904 F.2d 677, 684-685, 14 USPQ2d 1942, 1948 (Fed. Cir. 1990) cert. denied, 498 U.S. 992, 111 S. Ct. 537 (1990) (scope of equivalency is limited by prior art demonstrating either anticipation or obviousness).”
(See Zinus’ Moving Brief at 17:9-20 (emphasis added)).

Zinus raised the issue more clearly in its reply papers. (See
Plaintiff Zinus, Inc.’s Reply to Dreamwell’s Opposition to Plaintiff’s Motion for Summary Adjudication of Non-Infringement, filed herein on November 27, 2007, at 6:5 — 9:4.) At the Case Management Conference on December 11, 2007, the court granted Plaintiff leave to move for reconsideration of the court’s denial of its motion for summary adjudication. Thus, Dreamwell was first put on notice that it would need evidence relevant to the issue of obviousness over the Magni Patent almost three months before its Opening Brief Re Hypothetical Claim Analysis was filed. And at a minimum, Dreamwell knew it would need

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such evidence seven weeks before its Opening Brief was filed. As such, Dreamwell had ample time to obtain and submit expert declarations.[9]

Under Rule 56(f), the burden is on the party seeking additional discovery to proffer sufficient facts to show that the evidence sought exists, and that it would defeat summary judgment. See Chance v. Pac-Tel Teletrac Inc., 242 F.3d at 1161 n. 6. Because Dreamwell fails to proffer facts sufficient to show that evidence exists which could defeat this motion for summary adjudication, continuance of this motion is not warranted.

B. CONSTRUCTION OF RELEVANT CLAIM TERMS
1. “Inserting . . . into”

The intrinsic evidence contained in the specification, claim language and file history constitutes a sufficient basis for construing the term “inserting . . . into,” and thus the court need not consider dictionary definitions (no expert opinions were submitted by the parties regarding construction of this term).

Zinus argues that “inserting” should be construed to mean “to put or set into or between,” such as inserting an arm into a shirt sleeve and inserting a record into a record sleeve. It argues that “inserting [A] into [B]” has no special meaning.

Dreamwell argues that the phrase “inserting said evacuated tube into a containment sleeve” is properly construed as “arranging the evacuated tube and containment sleeve such that the evacuated tube is inside or within the boundaries of the containment sleeve.”

The court construes the term “inserting . . . into” to mean “to arrange two objects so that the first object is inside of the second object.” From the specification it is clear that this method step can be performed by installing the containment sleev over the evacuated tube. Thus, the construction of “inserting . . . into” must be broad enough to cover either moving the evacuated tube into the sleeve or fitting the sleeve over the evacuated tube.

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2. “Containment sleeve”

The parties both agree that “containment” means “the act or condition of containing” and that “containing” means “holding or keeping within limits.” They also appear to agree that a “sleeve” is a part designed to fit over another part. They dispute, however, the shape of the “sleeve.” Zinus contends the shape of the sleeve must be a tube or “pocket” (meaning one end of the tube is sealed) because it is designed to fit over an object that the specification purportedly discloses as being tubular.[10]
Dreamwell contends there is nothing in the intrinsic or extrinsic record that would warrant imposing such a limitation. Dreamwell, citing the American Heritage Dictionary,[11] suggests the sleeve be construed to mean a “case” (or “cover”) into which an object or device fits. The two proposed constructions are not entirely incompatible.

The court construes the term “containment sleeve” to mean “a tube-like form with at least one open end, which holds or keeps within limits an object within it.” The term is not limited to a round shape. While the specification indicates the containment sleeve is preferably an extruded “tube” of 4 mil polyethylene, the specification also discloses a containment sleeve that appears to have an essentially rectangular shape, with perhaps some rounding at the corners. Figure 3 of the `142 Patent (see
illustration at Section III.A.2., supra) shows a “string” or row of four compressed coil springs being held within a containment sleeve. The tops and bottoms of the springs clearly would form flat surfaces. The sides of the row of springs would also form an essentially flat surface when covered by taut material. Thus, while not shown end-on, it is obvious from the shape of the object being contained that a cross-section of the “tubular” containment sleeve would have an essentially rectangular shape See `142 Patent at Figure 3 and 1:60-61 (“bolsters each having a generally rectangular cross-section”).

By “tube-like” the court means that, while not necessarily round, the form is like a tube in that it is only open at the end(s). The term “containment sleeve” is modified by the following

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language: “which is dimensioned and configured to retain said compressed mattress assembly in a compressed state.” If the containment sleeve could be something that started out being open along its length and then later was secured around the mattress assembly using some restrictive device such as adhesive tape, it would not be a sleeve that “is,” at the time that the compressed mattress assembly is inserted into it, “configured to retain said compressed mattress assembly in a compressed state.”

C. AS THE COURT ALREADY RULED, THE SWIRL WRAP METHOD DOES NOTLITERALLY INFRINGE THE `142 PATENT

Because it was undisputed that the Swirl Wrap method does not literally infringe the `142 Patent, this court granted summary adjudication with regard to literal infringement. In a footnote in its claim construction brief, Dreamwell complained that this court’s grant of summary adjudication that the Swirl Wrap method did not literally infringe the `142 Patent was improper because: 1) Zinus purportedly had not sought that relief; 2) the court had not yet construed the claims; and 3) Dreamwell had never asserted that the Swirl Wrap method literally infringed the `142 Patent.

Contrary to Dreamwell’s contention, Zinus did request summary adjudication as to literal infringement in its moving papers. See
Zinus’ Moving Brief, at 7:13-18, as well as Zinus’ [Proposed] Order Motion for Summary Adjudication of Non-Infringement, also filed herin on Ocober 2, 2007.

As to Dreamwell asserting literal infringement, Dreamwell’s counterclaim for infringement is not limited to infringement under the doctrine of equivalents. Thus, regardless of whether Dreamwell has expressly asserted literal infringement, that issue was properly raised in Zinus’ motion because it was within the scope of Dreamwell’s counterclaim.

Finally, as Dreamwell confirmed at the hearing of this matter, it had not opposed Zinus’ motion with regard to literal infringement. To the extent the court should have nonetheless construed the pertinent claim terms first, rather than simply granting as unopposed Zinus’ motion with regard to literal infringement, the court has now done so and reaches the same result. Zinus’ Swirl Wrap method does not literally infringe the `142 Patent because, at a minimum,[12] it does not

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involve a step of inserting a mattress assembly[13] into a “containment sleeve” as the court has construed that term.

D. PROSECUTION HISTORY ESTOPPEL DOES NOT BAR DREAMWELL FROMASSERTING INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS
1. Amendment-Based Estoppel Does Not Apply In This Case

In its papers, Zinus fails to identify the actual scope of subject matter presumably surrendered by the Applicants when they amended the claims. Once the scope is properly identified, it is readily apparent that the Applicants did not give up any equivalent to “inserting into. . . . a containment sleeve” that involves wrapping up an individually pocketed coil spring mattress assembly with a flexible sheet of film and securing the roll with adhesive tape or plastic stripping.

When the Applicants amended the subject matter of the claims from a “compressible article” to an “assembly of coiled springs wherein each spring is contained within an individual pocket of fabric,” the subject matter they surrendered was compressible materials, including springs, other than individually pocketed springs.

When the Applicants amended the subject matter of the claims from “an assembly of coil springs” to “a mattress assembly constructed of coil springs,” and from “inserting said evacuation tube into a containment sleeve which is dimensioned and configured to retain said compressed assembly in a compressed state” to “inserting said evacuation tube into a containment sleeve which is dimensioned and configured to retain said mattress assembly in a compressed state for shipment,” they surrendered the following subject matter: 1) assemblies of coil springs that were not mattress assemblies; and 2) containment sleeves that are not designed to keep the mattress assembly in a compressed state for shipment.

Zinus has not submitted any evidence that would support a finding that Applicants made any amendments to the claims which surrendered an equivalent of wrapping up an individually pocketed

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coil spring mattress assembly with a flexible sheet of film and securing the roll with adhesive tape or plastic stripping.

Put more simply, the only limitations added by the amendments are limitations that are also present in the accused method. Thus, the addition of those limitations did not create any presumption that Dreamwell surrendered the subject matter of the accused method, so amendment-based estoppel does not bar Dreamwell from asserting that method as an equivalent in this action.

2. Argument-Based Estoppel Does Not Apply In This Case

Zinus has also failed to show that the prosecution history evinces “a clear and unmistakable surrender” of the method of wrapping up an individually pocketed coil spring mattress assembly with a flexible sheet of film and securing the roll with adhesive tape or plastic stripping. All of the arguments Zinus cites involve the Applicants’ attempt to distinguish the patented method from the Broyles prior art, which prior art had nothing to do with wrapping up a mattress assembly with a flexible sheet of film and securing the roll with adhesive tape or plastic stripping. The Applicants’ arguments, like the amendments, all related to showing that the use of individually pocketed springs with the patented method resulted in surprisingly more compression than the use of non-pocketed springs with the Broyles method, and to showing that, unlike Broyles, the claims are directed at a containment sleeve which is only used for shipment, not as a permanent cover of the mattress.

Because the prosecution history does not evince a clear and unmistakable surrender of the accused method, argument-based estoppel does not apply.

3. Even If the Presumption of Surrender Applied, Dreamwell HasRebutted It

Even if the presumption applied, Dreamwell has adequately rebutted it by showing that the reason for the amendments and arguments were only tangentially related, if at all, to the method of wrapping up an individually pocketed coil spring mattress assembly with a flexible sheet of film and securing the roll with adhesive tape or plastic stripping.

The reasons for the amendments and arguments involved the Applicants’ attempt to distinguish the patented method from the Broyles prior art, which prior art had nothing to do with wrapping up a mattress assembly with a flexible sheet of film and securing the roll with adhesive tape or plastic stripping. Thus, even if the presumption applied, Dreamwell has rebutted the

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presumption and is not barred from asserting the accused method is a substantial equivalent to “inserting into. . . . a containment sleeve.”

E. THE SWIRL WRAP METHOD DOES NOT INFRINGE THE `142 PATENTUNDER THE DOCTRINE OF EQUIVALENTS BECAUSE IT WOULD HAVE BEENOBVIOUS FROM THE MAGNI PRIOR ART

Zinus argues that deeming the Swirl Wrap method to be an equivalent in this case would impermissibly ensnare the prior art because it was obvious from that prior art. See 35 U.S.C. § 103 see also, Wilson Sporting Goods, 904 F.2d at 684 (barring use of doctrine of equivalents where the differences between the prior art and a proposed hypothetical claim were “so slight and relatively minor that the hypothetical claim . . . viewed as a whole would have been obvious.”)

The Supreme Court has set forth four factors to be considered in considering whether a claim is impermissibly “obvious:” 1) the scope and content of the prior art, 2) the differences between the prior art and the claims at issue, 3) the level of ordinary skill in the pertinent art, and 4) secondary considerations such as commercial success, long felt but unresolved needs, etc. See Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Obviousness is a question of law based on the factual inquiries required by th Graham factors. See Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1336 (Fed. Cir. 2005).

To facilitate a determination of whether the Swirl Wrap packaging method was obvious from the prior art so as to preclude using the doctrine of equivalents, the court is employing the “hypothetical claim” procedure of Wilson Sporting Goods (see 904 F.2d at 684-685). Dreamwell has set forth two alternate versions of three hypothetical patent claims[14] which it argues are sufficiently broad in scope to literally cover the Swirl Wrap packaging method, and which Dreamwell argues would have been allowed by the patent office. Given this court’s construction of the term “inserting . . . into,” only the first version of the proposed hypothetical claims need be evaluated.[15]

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The specific hypothetical claim element proposed by Dreamwell is (with omitted original language bracketed and new language italicized and bolded): “inserting said evacuation tube into a [containment sleeve] pre-cut, solid cover or barrier of flexiblematerial that substantially covers the exposed surface of themattress assembly and which is dimensioned or configured,including by use of tape, adhesives or fasteners, to retain said compressed mattress assembly in a compressed state for shipment.”

The court recites here only the “inserting . . . into the pre-cut, solid cover” step of the hypothetical claims. The entire hypothetical claims are set forth in Appendix A hereto (hereinafter, the “Hypothetical Claim”). There is at least one element of the Hypothetical Claim that does not appear to read literally on the accused method: the step of evacuating air from the tube causing the tube to deform around and compress the mattress assembly. There is no evidence in the record from which a rational trier of fact could find this element present in the accused method. Thus, as an alternate ground for the court’s ruling herein, the court finds that the Hypothetical Claim as drafted is improper, and cannot be used to establish that the accused method was not obvious in light of Magni. Because Dreamwell could have written its Hypothetical Claim slightly broader to refer simply to “compressing said mattress assembly in the tube,” regardless of the means used to do so, the court will nonetheless also evaluate the Hypothetical Claim as if it was properly drafted.

In connection with this motion, the burden was on Dreamwell to show that its proposed Hypothetical Claim would not have been obvious from, and thus does not ensnare, the prior art. See Wilson Sporting Goods, 904 F.2d at 685. Dreamwell has failed to make that showing.

Dreamwell argues that the proposed Hypothetical Claim would not have been obvious, and thus would have been patentable over Magni because: 1) Magni does not disclose packaging of an inner spring mattress with individually pocketed coil springs; 2) Magni does not disclose the step of inserting the compressed mattress and surrounding plastic tube into “a pre-cut, solid cover or barrier of flexible material that substantially covers the exposed surface of the mattress assembly;” and 3) neither of those would have been obvious from Magni. Dreamwell also argues there are triable

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issues of material fact with regard to secondary considerations of non-obviousness, specifically whether the use of pocketed springs resulted in unexpected superior results.

Zinus argues that the Hypothetical Claim would not have been patentable because, among other things: 1) the patent office already rejected the argument that packaging “pocketed” coil springs distinguishes the claims over packaging open spring mattresses; 2) the Magni Patent does disclose a solid cover or barrier of flexible material that substantially covers the exposed surface of the mattress (the ribbon-shaped film); and 3) the Magni Patent does disclose film that is “pre-cut,” and that limitation would be obvious in any event.

Based on the undisputed evidence in the record, as discussed more fully infra at Parts VI.E.1 through VI.E.4 (addressing th Graham factors), the court finds that the differences between the Hypothetical Claim and the methods disclosed in the Magni Patent are such that the subject matter as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was made, and thus would not have been patentable. Because the Hypothetical Claim would not have been patentable, Dreamwell cannot use the doctrine of equivalents to establish infringement and summary adjudication is warranted.

1. The Scope and Content of the Prior Art

Dreamwell has not met its burden of showing there is a genuine issue of material fact that would preclude summary adjudication with regard to the scope and content of the Magni prior art. Unlike the cases relied on by Dreamwell, there are no conflicts between expert declarations here that would require resolution by a trier of fact. See, e.g., Mars, Inc. v. Coin Acceptors, Inc., 1996 WL 34385063 (D.N.J. 1996) (unpublished case in which the court noted it could not summarily resolve the legal question of whether the hypothetical claim there was obvious in light of the prior art because there was a “disagreement among experts regarding what the relevant prior art teaches”). In any event, because the disclosures of the Magni Patent are “easily discernible from [its] drawings and written descriptions, no testimony, expert or otherwise, regarding their scope and content [is] necessary.” See Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 779 (Fed. Cir. 1983). As discussed herein, there is no genuine issue of material fact with regard to what the Magni Patent teaches.

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a. Dreamwell Has Not Shown That Use of a Solid Cover or Barrierof Flexible Material That Substantially Covers the ExposedSurface of the Mattress Is Not Disclosed by Magni

Zinus argues that the Magni Patent discloses a film approximately as wide as the mattress, and thus it does create a barrier of flexible material that substantially covers the exposed surface of the mattress. Dreamwell contends the term “ribbon-shaped film” should be construed to mean “material having a long, narrow shape resembling a thin line.”[16]

Dreamwell cites various dictionary definitions of “ribbon,” including one from the American Heritage Online Dictionary which defines “ribbon” as, among other things, “[s]omething, such as a tape measure, that resembles a ribbon” or “[a] long thin strip: a ribbon of land along the shore.”[17] Dreamwell also relies on the deposition of Zinus’ President, Scott Reeves, who testified that he understood the term “ribbon-shaped” to mean “significantly longer than it is wide.”[18] Dreamwell further argues that the Magni Patent’s use of the term “ribbon-shaped” to refer to the film even after the film has been cut shows that the film must be very narrow compared to the width of the mattress.[19] Dreamwell also argues that, for claim consistency, the phrase “ribbon-shaped” in the terms “ribbon-shaped film” and “ribbon-shaped strings” should be interpreted to mean “having a long, narrow shape resembling a thin line.”[20] None of this is sufficient evidence from which a rational trier of fact could find that Magni does not disclose the use of film as wide as the mattress.

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The only rational reading of the Magni Patent shows that the “ribbon-shaped film” is significantly longer than it is wide, and that it is approximately as wide as the mattress. The width of the ribbon-shaped film is evident from the illustrations, specification and claim language of Magni. See Bell Atl. Network Servs., Inc. v. Covad Comms. Group, Inc., 262 F.3d at 1268 (a specification may “define claim terms `by implication’ such that the meaning may be `found in or ascertained by a reading of the patent documents'”).

Figures 9 and 10 of the Magni Patent show an apparatus for performing the Magni packaging method. See Magni Patent at Figs. 9 10 (shown below), 3:20-21, 4:18 — 5:9, and 8:67 — 10:34. The spool 220 of ribbon-shaped film 222 is located at the top of the rolling-up device 45. See Magni Patent at 5:5-7 Fig. 14-19. The only overhead view of the spool of film shows that the film is approximately the same width as the mattress. See Magni Patent at Figure 10.

Exhibit

The rolling-up device 45 has two side frames 201 which are perpendicular to the spool of film. See Magni Patent at Fig. 14 and 5:57-58. Other than the two side frames 201, the Magni Patent discloses only one structure that extends from the reservoir-spool 220 to the guide means 224, and that is the ribbon-shaped film 222 itself. See Magni Patent at Figs. 14 through 19 and 5:66-68.

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Thus, the two lines in the drawing of the rolling-up device 45 in Figure 10[21] which are parallel to the side frames and which run from the edges of reservoir-spool 220 to the guide means 22 must be depicting the edges of the ribbon-shaped film 222 flowing from the reseroir-spool down to the guide means. Those lines clearly show that the ribbon-shaped film 222 is approximately as wide as the mattress.

The fact that the ribbon-shaped film is not a narrow strip compared to the mattress is also evinced by the statements in the Magni Patent that “[t]he end of the film 222 can thus be made to adhere by pneumatic suction against the mandrel” (See Magni Patent at 6:4-6) with such suction coming through “holes 209 distributed along each semi-mandrel” (See Magni Patent at 5:50-52, emphasis added). The holes 209 along each semi-mandrel are depicted in Figure 14 (shown here). (See Magni Patent at 5:36-53.) The positions of the holes 209 spread out along the semi-mandrels show that the ribbon-shaped film is intended to be as wide as the cylinder 215.

Exhibit

Finally, the Magni Patent discloses that at least two adhesive ribbon-shaped strings 230 are placed at spaced apart positions over the outside convolution of one ribbon-shaped film 222A around the rolled mattress.[22] (See Magni Patent at Fig. 13 and at 6:29-35, 7:50-53 8:30-33.)

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Graph

Figure 13 (shown here) can only be interpreted as showing the three ribbon-shaped strings 230 on top of the outside convolution of a single mattress-wide ribbon-shaped film 222A. Every reference to “ribbon-shaped film” in the claims of the Magni Patent is in the singular: there is no “s” at the end of the word “film,” the phrase is always modified by “a” or “said,” and in one instance it is referred to as “it” (not “them”).[23] By contrast, each reference in the claims to “ribbon-shaped strings” is in the plural, each time referring to “at least two adhesive ribbon-shaped strings” (emphasis added).[24] These repeated references to “film” in the singular as opposed to “strings” in the plural, indicate that only one ribbon-shaped film is used in the Magni method. See, e.g., Insituform Technologies, Inc. v. Cat Contracting, Inc., 99 F.3d 1098 (Fed. Cir. 1996).[25] This construction is

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confirmed by the specifications, which also repeatedly modifies the phrase ribbon-shaped film with “a,” “the,” or “said,” and which never includes an “s” at the end of “film,” as contrasted with the specification’s consistent use of the plural form of “strings.”[26] There is also nothing in the specifications, drawings or claims of the Magni Patent that discloses the use of more than one ribbon-shaped film.[27]
b. Dreamwell Has Not Shown That the Magni Patent Teaches Awayfrom the Use of a Pre-cut, Solid Cover or Barrier

Dreamwell argues that the Magni Patent teaches away from the use of a pre-cut, solid cover or barrier because it discloses as alternatives “[t]he rolling up may be also operated starting without the film 222 and by inserting it during the rolling up, or even without using the film and applying the ribbon-shaped strings on the wrapper.”

“[I]n general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.” See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Nothing about the alternatives noted in the Magni Patent suggests that using a pre-cut, solid cover or barrier is unlikely to be productive. They are simply alternative ways to perform the Magni method. And a mere disclosure of alternatives does not “teach away.” See In re Fulton, 391 F.3d 1195, 1199-1200 (Fed. Cir. 2004).

In any event, Dreamwell has not offered any evidence to support its argument that one skilled in the art would have considered anything in the Magni Patent taught away from the use of a pre-cut, solid cover or barrier. Cf. Monarch Knitting Machinery Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 884 (Fed. Cir. 1998) (finding existence of genuine dispute of material fact regarding whether prior art taught away from the claimed invention based on express cautionary statement in prior art along with two expert declarations expressing skepticism in the art). Because the burden was on Dreamwell to

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submit evidence on the issue of non-obviousness (see Wilson Sporting Goods, 904 F.2d at 685), its failure to submit an evidence that supports its position on this issue warrants finding that, as a matter of law, the Magni Patent did not so teach.

2. The Differences Between the Prior Art and the HypotheticalClaim

Dreamwell has not met its burden of showing there is a genuine issue of material fact with regard to the differences between the Magni prior art and the Hypothetical Claim that would preclude summary adjudication.

a. The Use of Individually Pocketed Spring Mattresses in theHypothetical Claim Is an Insignificant Difference from thePossible Use of Spring Mattresses Disclosed in Magni

Magni expressly refers to “spring” mattresses (see Magni Patent at 1:17-22) and it notes that “[t]he method of packing to be described may be adopted for many types of mattresses.” (See
Magni Patent at 2:4-5 (emphasis added)). In prosecuting the `142 Patent (and the `030 Patent before it), the Applicants made various amendments to overcome rejection by the patent office. Among other things, they added the limitation that the springs be “pocketed.” The Patent Office rejected the proposed claims, noting that “Regarding the actual product that is being compressed, Broyles clearly shows the manipulative steps to package a resiliently compressible article. Broyles operation could package the product of the invention to a compressible state; therefore, little patentable weight is given to the actual product since the manipulative steps of Broyle [sic] could package any type of compressible material.” (See Wallace Decl., Exh. W-E. Emphasis added.)[28]

The use of pocketed springs is even less significant when compared to the Magni prior art than when compared to the Broyles prior art. In Broyles, suctioning air out of the end of an assembly of open springs obviously runs a risk that adjacent springs will become enmeshed or entangled. Because the Magni method involves applying pressure directly down on the springs, there is far less

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risk that springs will move laterally and become entangled.

In light of the fact the burden of persuasion is on Dreamwell to show non-obviousness, and based on the evidence of record herein, the court finds that the difference between using pocketed versus open springs or other compressible mattress materials is insignificant.

b. The use of a “pre-cut” cover or barrier in the HypotheticalClaim is an Insignificant difference from the use of a spool offilm disclosed in Magni

Dreamwell argues there is at least a triable issue of material fact as to whether Magni discloses a “pre-cut”[29] sheet of material, and that there is no evidence in the record to support a finding that it would have been obvious to one of ordinary skill in the art to use a pre-cut sheet of material. Both arguments fail.

There is no genuine issue of material fact with regard to what Magni teaches regarding whether the film is “pre-cut.” As Zinus pointed out, the ribbon-shaped film in Magni is “pre-cut” on one end before it is rolled up with the mattress, and it is also “pre-cut” on both sides. Thus, three sides of the rectangle are “pre-cut” before the mattress and film are rolled up together.[30]
Dreamwell submits no evidence, and does not even argue, that the film is not “pre-cut” on those three sides. The parties’ dispute is thus over the legal implication of that disclosure rather than the question of what is actually disclosed.

Dreamwell has not submitted any evidence from which a rational trier of fact could find that it would not have been obvious to one of ordinary skill in the art to pre-cut the forth side of the rectangle as well. It argues only that there is no record evidence to support a finding of obviousness. However, in this motion the burden was on Dreamwell to come forward with evidence that the use of sheets of film which were “pre-cut” on all four sides would not have been obvious to one of ordinary skill in the art. See Wilson Sporting Goods, 904 F.2d at 685. Despite having access to Simmons’ employees skilled in the art, such as Michael DeFranks, Dreamwell offers no evidence

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whatsoever that would support a finding that one of ordinary skill in the art would not have found use of such a pre-cut sheet of film obvious.[31] In any event, obviousness is a question of law which is to be determined by the court based on the factual considerations set forth in Graham, including the extent of differences between the claim at issue and the prior art. See Graham, 383 U.S. at 17

In the Magni method, when the ribbon-shaped film is completely rolled up with and around the compressed mattress, the fourth side of the rectangle is cut. Both the Magni method and the method of the Hypothetical Claim result in the compressed mattress being wrapped up in exactly the same size and shape of flexible material. The court finds that the Hypothetical Claim’s use of a “pre-cut” sheet of material is not significantly different from Magni’s use of a spool of ribbon-shaped film which is cut to size as it is rolled up with the compressed mattress.

3. Level of Ordinary Skill in the Pertinent Art

It is well-established that in certain situations, such as with relatively simple and understandable technology, a factual determination of the level of skill in the art is unnecessary because the prior art itself is representative of the relevant level of ordinary skill. See Chore-Time, 713 F.2d at 779 n. 2. The court finds that the technology at issue falls on the simple end of the complexity spectrum,[32] and the prior art reflects the relevant level of ordinary skill. Accordingly, no factual determination regarding the level of ordinary skill in the art is necessary. Dreamwell has

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submitted no evidence to the contrary.[33]
4. Secondary Considerations

The Gladney Declaration is the only evidence, as opposed to argument, Dreamwell offers on the issue of whether the method of the Hypothetical Claim would have been obvious. That declaration contains an expert’s opinion finding, based on actual testing, that the use of pocketed springs achieved “unexpected” results. Dreamwell argues this evidence should be considered as a secondary consideration that would support a finding that the Hypothetical Claim would not have been obvious.

However, the Gladney Declaration does not discuss the Magni prior art or the Hypothetical Claim at all. Instead, Gladney attested that the use of pocketed springs assemblies with the other steps of the method claimed in the application for the patent-in-suit achieved a result that “was unexpected and would not have been obvious” when compared with the Broyles method. (See Wallace Decl., Exh. W-E.) The Gladney Declaration thus has little, if any, relevance to the question of whether the Hypothetical Claim would have been non-obvious in light of Magni. There is no evidence in the record that would support a finding that the use of pocketed springs would produce an unexpected superior result when used with the Hypothetical Claim method as compared to the use of springs or other compressible mattress materials with the methods disclosed in Magni.

The court has given the Gladney Declaration due consideration. However, because it does not address either the Magni prior art or the Hypothetical Claim, it is of little assistance in determining whether the Hypothetical Claim would have been obvious in light of Magni.

VII. CONCLUSION

As noted above, it is undisputed that the Swirl Wrap method does not literally infringe the `142 Patent. Having now construed the claim terms the parties identified as relevant, the court reiterates its finding that summary adjudication of no literal infringement is warranted.

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As to infringement under the doctrine of equivalents, Zinus made essentially three main arguments in its motion for summary adjudication: 1) that its Swirl Wrap method is not a substantial equivalent to the patented method; 2) that prosecution history estoppel precludes resort to the doctrine of equivalents to prove infringement; and 3) the doctrine of equivalents cannot be used in any event, because to do so in this case would impermissibly ensnare the prior art.

As discussed herein, prosecution history estoppel does not apply. However, because based on the evidence herein no rational trier of fact could find the existence of a set of facts which would support a legal conclusion that the Hypothetical Claim wasnot obvious in light of Magni, Dreamwell is precluded from asserting infringement under the doctrine of equivalents.[34]

For all the reasons stated herein, Thus, summary adjudication of non-infringement is warranted with regard to Zinus’ Swirl Wrap method.

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APPENDIX A Claim 1. A method of packaging a mattress assembly constructed of coil springs wherein each spring is contained within an individual pocket of fabric, comprising the steps of:

providing a tube of deformable material, said tube having a predetermined length;

inserting a mattress assembly constructed of pocketed coil springs into said tube, said mattress assembly having a length which is less than the length of said tube, thereby defining first and second tube ends of excess material;

sealing a first end of said tube;

evacuating air from said tube through said second end thereby deforming said tube around said mattress assembly and causing said mattress assembly to compress;

inserting said evacuated tube into a [containment sleeve]pre-cut, solid cover or barrier of flexible material thatsubstantially covers the exposed surface of the mattress assemblyand which is dimensioned or configured, including by use of tape,adhesives or fasteners, to retain said compressed mattress assembly in a compressed state for shipment;

removing said evacuated tube from said [containment sleeve]cover or barrier of flexible material;

whereby said mattress assembly in said tube gradually returns to an uncompressed state.

Claim 5. A method of packaging a mattress assembly constructed of coil springs wherein each spring is contained within an individual pocket of fabric, comprising the steps of:

providing a tube of deformable material, said tube having a predetermined length;

inserting a mattress assembly constructed of pocketed coil springs into said tube, said mattress assembly having a length which is less than the length of said tube, thereby defining first and second tube ends of excess material;

sealing a first end of said tube;

evacuating air from said tube through said second end thereby deforming said tube around said mattress assembly and causing said mattress assembly to compress;

sealing said second end of said tube after evacuating said tube to a predetermined state;

inserting said evacuated tube into a [containment sleeve]pre-cut, solid cover or barrier of flexible material thatsubstantially covers the exposed surface of the mattress assemblyand which is dimensioned or configured, including by use of tape,adhesives or fasteners, to retain said compressed mattress assembly in a compressed state for shipment;

removing said evacuated tube from said [containment sleeve]cover or barrier of flexible material; and

allowing said mattress assembly in said tube to gradually return to an uncompressed state.

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Claim 7. A method of packaging a mattress assembly constructed of coil springs wherein each spring is contained within an individual pocket of fabric, comprising the steps of:

providing a tube of deformable material, said tube having a predetermined length;

inserting a mattress assembly constructed of pocketed coil springs into said tube, said mattress assembly having a length which is less than the length of said tube, thereby defining first and second tube ends of excess material;

sealing a first end of said tube;

evacuating air from said tube through said second end thereby deforming said tube around said mattress assembly and causing said mattress assembly to compress;

inserting said evacuated tube into a [containment sleeve]pre-cut, solid cover or barrier of flexible material thatsubstantially covers the exposed surface of the mattress assemblyand which is dimensioned or configured, including by use of tape,adhesives or fasteners, to retain said compressed mattress assembly in a compressed state for shipment;

removing said evacuated tube from said [containment sleeve]cover or barrier of flexible material; and

allowing said mattress assembly in said tube to gradually return to an uncompressed state; and

said evacuated tube is punctured to allow said mattress assembly in said tube to gradually return to said uncompressed state.

[1] Zinus’ Motion for Summary Adjudication of Non-Infringement, filed herein on October 2, 2007 at docket # 33, is referred to herein as “Zinus’ Moving Brief.”
[2] Zinus had vaguely alluded to this argument in the “Legal Standards” section of its motion, but it failed to actually make the argument in the “Application of the Law to the Facts” section.
[3] The description of the prosecution history is based on Dreamwell’s papers along with the pertinent file wrappers (attached as exhibits to the Wallace Declaration) to which Dreamwell cites.
[4] “Wallace Decl.” refers to the Declaration of Darien K. Wallace in Support of Zinus, Inc.’s Motion for Summary Adjudication of Non-Infringement, filed herein on October 2, 2007.
[5] As discussed in section VI.E., infra, the disclosures of the Magni Patent are easily discernible on the face of the Patent, and there is no genuine issue of material fact with regard to what the Magni Patent teaches.
[6] See Section IV.E.1.a., infra.
[7] The statement of the accused method is based on Dreamwell’s description and its supporting evidence. The photos were put in evidence by Zinus, without objection by Dreamwell.
[8] Dreamwell also complains that it was given inadequate time to prepare its Opening Brief Re Hypothetical Claim Analysis. The interim order gave Dreamwell twelve calendar days to file a brief regarding the hypothetical claim analysis. If it needed more time to prepare its papers, Dreamwell was free to file either a stipulation or request for additional time pursuant to Local Rule 6. Dreamwell did not seek any such additional time.
[9] In opposing Zinus’ original motion for summary adjudication, Dreamwell filed a declaration by Michael S. DeFranks, Simmons’ Director of Engineering. DeFranks is clearly skilled in the relevant art. He has worked for Simmons for twelve years in a variety of engineering and leadership roles related to Simmons’ bedding products. He is named as an inventor on seven patents and several patent applications related to springs, mattresses and other bedding products. Dreamwell does not explain why it could not have obtained a declaration from DeFranks for use in connection with its briefing on its proposed hypothetical claim.
[10] The `142 Patent actually refers to a “tube of deformable material” the evacuation of which causes it to deform around the string of coils (i.e., the mattress assembly). See
`142 Patent at 3:10-39. Thus, the object the sleeve fits over is a deformed
tube, which has taken on the shape of the row of coils.
[11] Again, the intrinsic evidence contained in the specification, claim language and file history is a sufficient basis for construing this term, and thus dictionary definitions are unnecessary.
[12] There appear to be other differences between the Swirl Wrap method and the `142 Patent as well. For example, it appears that the Swirl Wrap method does not include a step of “evacuating air from said tube through said second end thereby deforming said tube around said mattress assembly and causing said mattress assembly to compress.” However, the court does not rely on those other differences in ruling on the motion, it notes them only as a possible explanation of why Dreamwell did not oppose the motion with regard to literal infringement.
[13] The court has not found it necessary to interpret the term “mattress assembly” because it finds summary adjudication of no literal infringement warranted without regard to the meaning of that term.
[14] Dreamwell has proposed a set of three hypothetical claims, all of which contain as a common claim element, a modified version of the “inserting . . . into a containment sleeve” element of the `142 Patent. It is that specific claim element on which the parties have focused in their briefs.
[15] The second hypothetical claim element proposed by Dreamwell was (with omitted original language bracketed and new language italicized and bolded): “[inserting] positioning said evacuation tube [into] within a [containment sleeve] pre-cut, solid cover orbarrier of flexible material that substantially covers theexposed surface of the mattress assembly and which is dimensioned or configured, including by use of tape, adhesives or fasteners,
to retain said compressed mattress assembly in a compressed state for shipment.” The court’s analysis would be essentially the same for this hypothetical.
[16] Although the court asked the parties to brief the meaning of “ribbon-shaped film” as a matter of claim construction, Dreamwell appears to be correct that interpreting prior art is a factual determination of what one of ordinary skill in the art would understand the prior art disclosed. Thus, the court is applying the latter standard rather than “construing” the term.
[17] The fact the dictionary definitions include a reference to a “ribbon of land along the shore” shows that the term “ribbon” is not limited to widths substantially narrower than a mattress.
[18] Reeves’ testimony is not inconsistent with the ribbon-shaped film being as wide as the mattress in the Magni Patent.
[19] Magni’s continued use of the term “ribbon-shape” after the film has been cut to size is of little or no import. One does not stop calling ribbon “ribbon” simply because it has been cut into small pieces. Moreover, changing the term by which the same film was referenced in the patent after it had been cut to size would have introduced unnecessary inconsistency into the patent claims.
[20] This argument fails because there would be no reason to use two different phrases to refer to exactly the same thing. The fact that the patent uses these two phrases is actually further evidence that the term “ribbon-shaped” refers only to the fact the object is substantially longer than it is wide. Viewed in the context of the Magni Patent as a whole, the only reasonable
inference is that the use of the terms “string” and “film” distinguish between the two items based on their actual width.
[21] The copy of Figure 10 on this page has the words “Film Edge” and a red (if viewed on screen or printed in color) arrow added to show the location of one of the two lines discussed herein.
[22] The fact the mattress cover is visible in Figure 13 is fully consistent with the ribbon-shaped film being as wide as the mattress, because at least one definition of the word “film” is a “thin, flexible, transparent sheet, as of plastic, used in wrapping or packaging.” See The American Heritage(r) Dictionary of the English Language, Fourth Edition (accessed online at Dictionary.com) (emphasis added).
[23] See Magni Patent at 7:37 (“a ribbon-shaped film”), 7:44 (“said
ribbon-shaped film”), 7:49 (“said film”); 7:51-52 (“on said at least one convolution of ribbon-shaped film”); 8:25 (“a
ribbon-shaped film”); 8:27 (“said ribbon-shaped film”), 8:2 (“said film”), 8:31-32 (“on said at least one convolution of ribbon-shaped film”); 9:13-14 (“a ribbon-shaped film”), 9:15-17 (“and means for feeding said ribbon-shaped film for rolling it
together with the flattened mattress”) and 10:10 (“said
ribbon-shaped film”) (emphasis added).
[24] See Magni Patent at 7:50-51; 8:30-31; 8:61-62; 9:18-20; 10:29-30.
[25] Insituform dealt with claim language and a specification that strongly suggested that the claim language “a cup” was meant to encompass only one cup. There, the asserted claim repeatedly described a single cup, using the term “the cup” and describing a process in terms of a single cup. Insituform, 99 F.3d at 1105-06. The claim at issue in Insituform also used the phrase “region of vacuum application” in a “manner indicating that only one such region exists at any given time” and was thus “inconsistent with the use of more than one cup at any given time, as each cup creates its own associated region of vacuum application.” Id.
Moreover, the court in Insituform found that “neither the specification nor the drawings discloses the use of more than one cup,” and in fact repeatedly described or depicted “the cup.” Id.
Thus, the court in Insituform found that the claims were properly limited to a single cup. Id.
[26] See Magni Patent at 5:66-6:65.
[27] Dreamwell’s argument that on Figure 13 the criss-crossed lines of the mattress cover or the hash marks of the shading could somehow instead disclose multiple convolutions of ribbon-shaped film is untenable viewed in context of the rest of the patent. No rational juror could so find.
[28] There is no reason to give the limitation of “pocketed” any more “patentable weight” with regard to Magni than the Patent Office did with regard to Broyles. While the court is not bound by the Patent Office’s prior finding (one way or the other), it is relevant to the question of how significant or insignificant the difference is between the Hypothetical Claim and the Magni Patent. While the question of what the differences actually are between the Hypothetical Claim and the Magni Patent is a question of fact, the question of how significant those differences are is part of the court’s legal determination of obviousness. See Wilson Sporting Goods, 904 F.2d at 685 (assessing significance of differences between hypothetical claim and prior art as a matter of law.)
[29] The court has construed “containment sleeve” in such a way that it does not include a sheet of material that is either dimensioned or configured after the tube is “inserted.” Thus, the added limitation “pre-cut” does not impermissibly narrow the claim. See Streamfeeder, 175 F.3d at 983.
[30] And, in fact, for the last mattress rolled up using a particular spool of film, if the remaining length of film is approximately the right length, the film is “pre-cut” on all four sides.
[31] Even aside from the lack of evidence, Dreamwell’s argument is unpersuasive. Dreamwell argues it is “hard to imagine” someone skilled in the art would think to replace the spool of film with a pre-cut sheet of film and eliminate the rolling up — and pressing machine. (Its argument regarding changing the width is inapplicable given the court’s ruling herein.) However, the Magni Patent itself discloses an embodiment that does not use any rolling-up machine. It is easy to imagine someone of ordinary creativity, let alone skill in the art, wondering how to use the non-mechanized method depicted in Figures 1 through 8 along with the flexible film 222. The obvious answer would be to first cut the film to the right length, put it on the floor with the compressed mattress on top of it, and then simply follow the rest of the method expressly disclosed in Figures 4 through 8 of the Magni Patent. See also, Magni Patent at 3:35 — 4:17.
[32] The Hypothetical Claim involves simply compressing a mattress assembly, positioning the compressed mattress assembly together with a solid cover so that the mattress assembly is inside of the solid cover, securing the resulting package with tape or other fasteners to keep the mattress assembly compressed for shipment, and then, after shipment, removing the compressed mattress from the cover and allowing the compressed mattress to gradually return to an uncompressed state.
[33] In any event, the burden was on Dreamwell to show that one of ordinary skill in the art would not have found the Hypothetical Claim to be obvious. Dreamwell’s decision not submit evidence as to the level of ordinary skill cannot defeat summary adjudication on an issue for which it bears the burden of proof.
[34] Whether the Swirl Wrap method is a substantial equivalent to the patented method is a closer question that does not appear to be amenable to summary adjudication. In light of the court’s finding that the allowing use of the doctrine of equivalents in this case would impermissibly ensnare the prior art, it does not reach that question.

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