Maxill Inc. v. Loops, LLC

Case: 20-1519    Document: 42    Page: 1   Filed: 12/31/2020

        NOTE: This disposition is nonprecedential.

   United States Court of Appeals
       for the Federal Circuit




                   2020-1519, 2020-1618

    Appeals from the United States District Court for the
 Western District of Washington in No. 2:17-cv-01825-TSZ,
 Senior Judge Thomas S. Zilly.

                Decided: December 31, 2020

    MUDIT KAKAR, Choi Capital Law PLLC, Seattle, WA,
 argued for plaintiffs-appellees.

    KENT M. WALKER, Lewis Kohn Walker LLP, San Diego,
 CA, argued for defendants-appellants.

    Before MOORE, BRYSON, and CHEN, Circuit Judges.
Case: 20-1519    Document: 42      Page: 2    Filed: 12/31/2020

2                                    MAXILL INC.   v. LOOPS, LLC

 CHEN, Circuit Judge.
      Loops, LLC and Loops Flexbrush, LLC (collectively,
 Loops) appeal a decision of the United States District Court
 for the Western District of Washington sua sponte granting
 summary judgment of noninfringement in favor of Maxill,
 Inc., both the Ohio and Canadian corporations (collectively,
 Maxill), and subsequently denying Loops’s request for re-
 consideration of that decision. In granting summary judg-
 ment, the district court determined that the accused
 toothbrush’s elongated body was not “flexible throughout,”
 as required by the claims. Because the court’s noninfringe-
 ment ruling was based on an incorrect understanding of
 the “flexible throughout” claim limitation, we reverse.
      Loops owns U.S. Patent No. 8,448,285 (’285 patent),
 which is directed to toothbrushes designed for distribution
 in correctional and mental health facilities and methods of
 making such toothbrushes. ’285 patent col. 1 ll. 13–17. The
 body of the claimed toothbrush is made of a material more
 flexible than conventional toothbrushes to lessen or elimi-
 nate the possibility of fashioning it into a weapon. Id. at
 col. 6 ll. 40–52. The toothbrush body comprises a handle
 portion and head portion. The head portion of the body in-
 cludes a cavity into which a head with bristles is installed.
 Id. at col. 6 ll. 10–15. The claims explain that the body
 component is made of a material that is “less rigid” than
 the material of the head component. Claim 1 is representa-
     A toothbrush, comprising:
     an elongated body being flexible throughout the
     elongated body and comprising a first material and
     having a head portion and a handle portion;
     a head comprising a second material, wherein the
     head is disposed in and molded to the head portion
     of the elongated body; and
Case: 20-1519       Document: 42    Page: 3   Filed: 12/31/2020

 MAXILL INC.   v. LOOPS, LLC                                 3

    a plurality of bristles extending from the head
    forming a bristle brush,
    wherein the first material is less rigid than the sec-
    ond material.
 Id. at claim 1 (emphasis added).
      On December 5, 2017, Maxill filed a complaint seeking
 declaratory judgment of noninfringement and invalidity of
 the ’285 patent. J.A. 75. On February 8, 2018, Loops re-
 sponded and counterclaimed alleging that Maxill’s product
 infringed claims 1–3, 6, 9, 11–12, and 15–16 of the ’285 pa-
 tent. 1 J.A. 201. On October 3, 2019, Loops filed a motion
 for summary judgment of infringement. J.A. 709–33. On
 October 22, 2019, Maxill filed its opposition asserting that
 Loops only showed that the handle portion of the elongated
 body was flexible and, instead of filing a cross-motion for
 summary judgment, requested that the district court sua
 sponte grant summary judgment of noninfringement. J.A.
 895–914. Just three days later, on October 25, 2019, Loops
 was required to file its reply. J.A. 940–48. On November
 12, 2019, the district court requested a sample of the ac-
 cused product. J.A. 23. On November 27, 2019, after re-
 viewing the product and the briefing, the district court
 denied Loops’s summary judgment motion and sua sponte
 entered summary judgment of noninfringement. Maxill
 Inc. v. Loops, LLC, No. C17-1825 TSZ (consolidated with
 C18-1026 TSZ), 2019 WL 6341292 (W.D. Wash. Nov. 27,
 2019). On December 9, 2019, Loops filed a motion for re-
 consideration. J.A. 956–63. On February 21, 2020, the dis-
 trict court denied Loops’s motion. J.A. 12–14.

    1   Loops later included claims 5 and 13 in its infringe-
 ment allegations as well.
Case: 20-1519     Document: 42     Page: 4    Filed: 12/31/2020

4                                    MAXILL INC.   v. LOOPS, LLC

                   I. “Flexible throughout”
      Claim construction is a question of law we review de
 novo. Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S.
 318, 325 (2015). “The construction of claim terms based on
 the claim language, the specification, and the prosecution
 history are legal determinations.” Trs. of Columbia Univ.
 v. Symantec Corp., 811 F.3d 1359, 1362 (Fed. Cir. 2016)
 (citing Teva, 574 U.S. at 328). We begin a claim construc-
 tion analysis by considering the language of the claims
 themselves. Phillips v. AWH Corp., 415 F.3d 1303, 1313
 (Fed. Cir. 2005) (en banc). The claims must also be read in
 view of the specification. Id. at 1314. Additionally, a court
 should consider the prosecution history. Id. at 1317.
     The district court held that no reasonable jury could
 find the accused product was flexible throughout because,
 once the head was inserted into the elongated body, the
 elongated body’s head portion did not bend like its handle
 portion. Maxill, 2019 WL 6341292, at *4–5. Loops argues
 that the accused toothbrush’s elongated body is made of or-
 ange flexible material that is flexible throughout (a posi-
 tion that Maxill does not dispute) and that this component
 is separate from the more-rigid head component. 2 Appel-
 lants’ Br. at 36. Maxill argues that because the head is
 molded into the head portion of the elongated body, Loops
 is required to show that the elongated body including the
 head is flexible throughout. Appellees’ Br. at B-2. 3 We

     2    We note that Loops also argues that the orange ma-
 terial in combination with the rigid head is also still flexi-
 ble throughout. We understand this to be an alternative
 argument and that Loops was not suggesting that this level
 of proof was necessary to establish infringement.
     3    The page numbers of Maxill’s brief restart at the
 argument section. For purposes of citing to Maxill’s brief,
Case: 20-1519       Document: 42    Page: 5    Filed: 12/31/2020

 MAXILL INC.   v. LOOPS, LLC                                  5

 agree with Loops and conclude that, based on the claim lan-
 guage and structure, as well as the specification, the dis-
 trict court misunderstood the flexibility limitation to
 pertain to the elongated body when combined with the
 head as opposed to the elongated body alone.
      As written, claim 1’s toothbrush defines three compo-
 nents: (1) the elongated body, (2) the head, and (3) the bris-
 tles. ’285 patent at claim 1. The elongated body comprises
 a head portion and a handle portion. Id. It is made of a
 “first material” and must be “flexible throughout.” Id. The
 claim does not describe the head as being a part of the elon-
 gated body; rather, the head, which is made of a “second
 material,” is identified in the claim as a separate element
 from the elongated body, just as the bristles are also a sep-
 arate element. Claim 1 also describes the physical rela-
 tionship between the head and the elongated body in which
 the head is “disposed in and molded to” the elongated
 body’s head portion. Id. This insertion, however, does not
 mean that the head loses its identity as a separately iden-
 tifiable component of the claimed toothbrush and somehow
 merges into becoming a part of the elongated body, such
 that the elements together must be “flexible throughout.”
 The language of claim 4 further confirms our view that the
 elongated body’s flexibility limitation excludes considera-
 tion of the head. Claim 4 states: “The toothbrush of claim
 1, wherein the second material is durable and has a durom-
 eter hardness of between about 75 and about 95 on the
 Shore A scale.” Id. at claim 4. As Maxill acknowledged
 during oral argument, this amount of hardness is consid-
 ered very hard. Oral Arg. at 23:26–24:01. Such a degree
 of hardness for the head component undercuts a reading of
 claim 1’s flexibility limitation as directed to a combination
 of the body component with the head component.

 we use “A” to refer to the pre-argument portion of Maxill’s
 brief and “B” to refer to the latter portion of Maxill’s brief.
Case: 20-1519     Document: 42     Page: 6    Filed: 12/31/2020

6                                    MAXILL INC.   v. LOOPS, LLC

     Further, the specification describes the head and elon-
 gated body as two separate components, explaining that
 the elongated body is made of a flexible material whereas
 the head is made of a hard material. ’285 patent col. 4 ll.
 36–39 (“The elongated body 102 may be made of a flexible
 material as described previously. The head 104 may be
 made of a more rigid material to facilitate attachment of
 the bristle brush 106.”). Thus, the head component is de-
 signed to be rigid compared to the flexible elongated body.
 Finally, we note that the prosecution history does not con-
 tain any disclaimer requiring that the head be considered
 in evaluating the flexibility of the elongated body. In sum,
 the correct reading of the claims is that the elongated body
 needs to be flexible throughout, and that flexibility require-
 ment does not extend to the rigid head—even when the
 head is molded to the head portion of the elongated body.
      Because the district court incorrectly viewed the flexi-
 bility limitation as directed to the combination of the elon-
 gated body and head, rather than the accused product’s
 elongated body alone, the district court erred in determin-
 ing that the accused product lacks an elongated body that
 is flexible throughout. 4
         II. Sua sponte grant of summary judgment
     We review a district court’s decision concerning sum-
 mary judgment under the law of the regional circuit. Mi-
 croStrategy, Inc. v. Bus. Objects, S.A., 429 F.3d 1344, 1349
 (Fed. Cir. 2005). The United States Court of Appeals for
 the Ninth Circuit reviews a grant of summary judgment
 without deference. Burke v. Cnty. of Alameda, 586 F.3d
 725, 730 (9th Cir. 2009).

     4    Neither party disputes that the orange material,
 which makes up the elongated body of the accused product,
 is flexible throughout. Oral Arg. at 13:45–14:02.
Case: 20-1519       Document: 42   Page: 7   Filed: 12/31/2020

 MAXILL INC.   v. LOOPS, LLC                               7

     Generally, a district court may not sua sponte grant
 summary judgment unless the losing party had “notice and
 a reasonable time to respond.” Fed. R. Civ. P. 56(f). The
 Ninth Circuit has held that sua sponte summary judgment
 may be granted as long as the losing party has had a “full
 and fair opportunity to ventilate the issues involved in the
 motion.” United States v. Grayson, 879 F.2d 620, 625 (9th
 Cir. 1989) (internal quotation marks omitted); see also In
 re Harris Pine Mills, 44 F.3d 1413, 1439–40 (9th Cir. 1995)
 (entering summary judgment for the non-movant).
      Loops did not have a full and fair opportunity to argue
 and present its case against summary judgment of nonin-
 fringement. Because Maxill first requested that the court
 sua sponte grant summary judgment in its favor in its op-
 position to Loops’s motion, Loops was limited by both time
 and page length with respect to its response. After receiv-
 ing Maxill’s opposition, Loops had just three days to re-
 spond and twelve pages. W.D. Wash. Local R. 7. Had
 Maxill filed its own summary judgment motion, Loops
 would have had about three weeks to respond and twenty-
 four pages. Id. Further, the local rules provide that mo-
 tions requesting permission to file overlength briefs are
 due “no later than three days before the underlying motion
 or brief is due.” Id. Therefore, even if Loops had wanted
 to file a request for an overlength brief, it would not have
 had time. And although the district court indicated that it
 would give full consideration to any reconsideration re-
 quest, the court refused to consider any additional evidence
 and quickly dismissed Loops’s reconsideration motion as
 “merely rehashing” its prior arguments. Under the circum-
 stances, we conclude, Loops did not have a full and fair op-
 portunity to respond to Maxill prior to the district court’s
 sua sponte grant of summary judgment.
    We have considered the parties’ remaining arguments
 and find them unpersuasive. The district court’s sua
Case: 20-1519    Document: 42      Page: 8   Filed: 12/31/2020

8                                   MAXILL INC.   v. LOOPS, LLC

 sponte order of noninfringement was premised on a misun-
 derstanding of which components of the accused tooth-
 brush to which the flexibility limitation is directed. Thus,
 we reverse.
    Costs to the appellants.

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