United States District Court, D. Hawai'i
James H. Fosbinder, Rhonda M. Fosbinder, Ivey Fosbinder Fosbinder LLC, Wailuku, HI, for Plaintiff.
Seth M. Reiss, Seth M. Reiss, AAL, ALLLC, Tracey Lynn Kubota, Michael C. Bird, Watanabe Ing LLP, Elijah Yip, Kelly G. Laporte, Keri Ann KumiShigemura Krzykowski, Cades Schutte, Honolulu, HI, for Defendants.
ORDER (1) GRANTING DEFENDANTS/COUNTERCLAIMANTS TODD DOMECK, EXPERIENTIAL RESOURCES, INC., AND GO ZIP, LLC'S MOTION FOR SUMMARY JUDGMENT AS TO COUNT I (PATENT INFRINGEMENT) OF THE COMPLAINT FILED ON AUGUST 8, 2012, DOC. NO. 47; AND (2) GRANTING DEFENDANT MAUI LAND AND PINEAPPLE COMPANY, INC.'S AND KAPALUA LAND COMPANY, LTD.'S MOTION FOR SUMMARY JUDGMENT AS TO COUNT I OF THE COMPLAINT, DOC. NO. 56
J. MICHAEL SEABRIGHT, District Judge.
This dispute stems from Cougar Mountain Adventures, Ltd.'s (" Cougar Mountain" ) efforts to enter into agreements to develop, install, and/or operate zipline adventure courses for Defendants Maui Land and Pineapple Company, Inc. (" MLPC" ) and Kapalua Land Company, Ltd. (collectively, " Kapalua Defendants" ), as well as for Baldwin Brothers, LLC dba Piiholo Ranch Zipline (" Baldwin Brothers" ). As alleged in the August 8, 2012 Complaint, Cougar Mountain disclosed its intellectual property to its proposed subcontractor, Experimental Resources, Inc. (" ERI" ), and ERI's owner Todd Domeck (" Domeck" ), who then used this information in developing and operating zipline operations for Kapalua Defendants and Baldwin Brothers without Cougar Mountain's involvement or knowledge. Cougar Mountain has since assigned the rights to its intellectual property, including its rights to
U.S. Patent No. 7,819,066 (" the '066 Patent" ), to Plaintiff Skyline Zipline Global, LLC (" Skyline" ), which brought this action.
In Count I of the Complaint, Skyline asserts a claim against all Defendants for infringement of the '066 Patent, based on their making, using, selling, and/or offering for sale ERI's zipline trolleys. Currently before the court is (1) Kapalua Defendants' and (2) ERI, Domeck, and Go Zip's (collectively, " ERI Defendants" ) Motions for Summary Judgment as to the patent infringement claim. Defendants argue that there is no genuine issue of material fact that the ERI trolleys infringe the '066 Patent because they do not include a " first spreader" or a " second spreader" as required by each claim in the '066 Patent. Based on the following, the court GRANTS the Motions for Summary Judgment.
A. Factual Background
1. The ' 066 Patent
The '066 Patent, titled " Zipline Trolley," was filed with the U.S. Patent and Trademark Office (" PTO" ) on September 29, 2008, published on September 10, 2009, and issued on October 26, 2010. See Doc. No. 47-27, ERI Defs.' Ex. B, ' 066 Patent. The named inventor on the '066 Patent is Kevin Geoffrey Smith, and Skyline asserts that Smith and his related companies (Cougar Mountain, Skyline Eco-Adventures, Ltd. and Skyline Zipline USA, LLC) assigned their rights in the '066 Patent to Skyline.
As explained in the '066 Patent, a zipline trolley is a device that " rolls along a suspended length of cable" and can attach to a rider. See id. at col. 1, lines 18-25. The '066 Patent discloses that a zipline trolley typically includes (1) a cylindrical frame enclosing two wheels that roll along the top of the cable; (2) a handlebar that is suspended from the bottom of the cylindrical frame by four lines, and to which slings may attach to connect the trolley to the user; and (3) a braking mechanism. Id. at col. 1, lines 19-28. The '066 Patent describes that the conventional zipline trolley " is bulky and heavy, making it difficult to transport it from one end of the cable to the other. The design of the trolley also makes it difficult to remove and replace the wheels, lines, and slings, which is periodically necessary to allow for replacement due to wear and tear." Id. at col. 1, lines 29-34. As described in the specification, the invention of the '066 Patent " comprises a trolley that is lighter and more compact than the conventional trolley. This trolley also allows for the easier removal and replacement of the wheels, lines, and slings." Id. at col. 2, lines 25-28.
The '066 Patent recites one independent claim, and fourteen dependent claims. At issue for purposes of the present Motions is the meaning of the term " spreader," as used in Claim 1, the only independent claim. The court recites and discusses the
claim language in its claim construction analysis.
2. ERI's Trolleys
Skyline asserts that ERI's trolleys, some of which are used in Kapalua Defendants' and Baldwin Brothers' zipline courses, infringe various claims of the '066 Patent. According to Todd Domeck, the chief executive officer of ERI and managing member of Go Zip, ERI Defendants have made, used, sold, and/or offered for sale seven different models of zipline trolleys. Doc. No. 47-2, Domeck Decl. ¶ 4. ERI designed four of these models, and the other three models were designed and manufactured by third parties and then offered for sale and sold by ERI Defendants. Id.
ERI trolley model 1, as depicted in ERI Exhibits 1-5, Doc. Nos. 47-3-47-7, was designed and manufactured by ERI and was sold for use in Kapalua Defendants' zipline course, as well as another zipline on Oahu. Doc. No. 47-2, Domeck Decl. ¶¶ 5-6. Go Zip uses and operates both these zipline courses. Id. ¶¶ 7-8.
ERI trolley model 2, as depicted in ERI Exhibits 6-10, Doc. Nos. 47-8-47-12, was designed and manufactured by ERI and sold for use in Baldwin Brothers' zipline course. Doc. No. 47-2, Domeck Decl. ¶¶ 17-18.
ERI trolley model 3, as depicted in ERI Exhibits 11-13, Doc. Nos. 47-13 47-15, was designed and manufactured by ERI, and was sold in 2009 for use in the Flying Hawaiian Zipline course in Maui. Doc. No. 47-2, Domeck Decl. ¶¶ 28-29.
ERI trolley model 4, as depicted in ERI Exhibits 14-18, Doc. Nos. 47-16-47-20, was designed by ERI, manufactured by Indianapolis Fabrications, and sold by ERI for use in zipline courses in West Virginia, California, and Oahu. Doc. No. 47-2, Domeck Decl. ¶¶ 39-40. Go Zip operates the zipline courses in California and Oahu. Id. ¶ 41.
For each of ERI trolley models 1-4, there are two pairs of lines that run from the upper part of the device (the part of the device through which the cable runs), and attach to either side of the handlebar. Specifically, each pair of lines attaches to a single point on either side of the handlebar.
As to ERI trolley models 5-7, as shown in ERI Exhibits 19-22, Doc. Nos. 21-24, Skyline concedes that they are not at issue because they do not include a " first spreader" or " second spreader," under any reasonable interpretation of these terms. See Doc. No. 63, Pl.'s Concise Statement of Facts.
B. Procedural Background
On August 8, 2012, Skyline filed its Complaint asserting claims for (1) patent infringement against all Defendants (Count I); (2) breach of contract against Domeck and ERI (Count II); (3) trade secret misappropriation against all Defendants (Count III); (4) fraudulent concealment against all Defendants except Go Zip (Count IV); and (5) tortious interference against Domeck and ERI (Count V).
On December 6, 2012, ERI Defendants filed their Motion for Partial Summary Judgment. Doc. No. 47. On December 7, 2012, Baldwin Brothers joined ERI ...