Vita-Mix Can’t Smooth(ie) Over Missing Claim Elements

Posted on | September 5, 2008 | No Comments

2008-1479/1517 Vita-Mix v. Basic Holding
ND/OH 06-CV-2622
Judge Patricia A. Gaughan

Vita-Mix has appealed from Judge Patricia A. Gaughan’s judgment of noninfringment and denial of Vita-Mix’s cross-motion for summary judgment of infringement.  Defendants (Basic Holding, West Bend Houswares, Focus Electrics, and Focus Products Group) have cross-appealed the Court’s grant of summary judgment on validity and enforceability and the corresponding denial of their cross-motions on those issues.

Whew!  Let’s just get this out of the way up front (since Judge Gaughan did the same in her opinion)–this case had a ton of motions.  In sharp contrast to Kyle’s on-going series about sealed documents in the Eastern District of Texas, I had more than enough reading material to keep me up late.  (Note to self:  the next opinion that begins "[t]his matter is before the Court upon 15 motions–ten motions for summary judgment and five related motions" goes to Kyle.)   

So what prompted this brief-a-palooza? Smoothies. Well, more accurately, "high-end kitchen blenders."  Vita-Mix is a leading manufacturer of high-end blenders.  And in the interest of full disclosure, I own one.  It’s great for smoothies.  I can pummel any combination of fruit, dairy, and ice into a healthy frozen drink and pawn it off on my kids as a milkshake.  But I digress. 

Perhaps the most interesting factoid about this case is that a dispute over one claim from one Vita-Mix patent–a method for eliminating "air pockets" from a blender–sparked 10 separate summary judgment motions. 

A Little Blending History:

Early Vita-Mix blenders used a
"tamper"–a wooden stick in my vintage
model–to break up air pockets (apparently a detriment to blenders everywhere).  But Vita-Mix was not satisfied with this solution because it was fleeting  Air pockets kept forming; users kept tamping.

Enter Vita-Mix’s U.S. Patent No. 5,302,021.  While looking for a better solution to the air pocket problem, Vita Mix determined that air channels
formed by a "member" associated with the blades caused these dreaded air-pockets.  To block those air channels, Vita-Mix devised and patented a method using a "plunger" inserted into the pitcher of the blender.  In prosecuting the ’021 patent, however, Vita-Mix made it clear that "any action to ‘stir the contents of the pitcher’ is a ‘materially different process" than using its new plunger method for eliminating air pockets.

Claim Construction:

This "stirring" distinction was essential to the Court’s claim construction.  Judge Gaughan construed the disputed claim to exclude any stirring (a method for eliminating air pockets "not including a method of stirring to disperse, dislodge, or break-up an air pocket after it has begun to form.")  In addition, the claim required two other key elements: (1) the device inserted in the blender must be adjacent and above the rotating blades and (2) the device must be free of contact with the blender’s pitcher.  (Click Here to view the entire claim construction.) 

Noninfringement: 

Defendants, including a former Vita-Mix dealer, manufactured and sold a number of blenders with a "Stir Stick" that is inserted into the blender during use.  Setting aside the obvious semantic challenges, Vita-Mix argued that Defendants’ blenders infringed the claimed method when the Stir Stick is inserted into the blender but not used to stir–i.e., the Stir Stick is held stationary or not touched at all.  Vita-Mix alternatively argued that the user could use the Stir Stick as intended and still infringe if all the other elements were practiced.

Judge Gaughan dispensed with the latter argument first–making clear that Vita-Mix disclaimed all stirring operations.  The Court also noted the inconsistency of Vita-Mix’s "stir" theory–it required the user to stir with the Stir Stick  to satisfy one claim element (eliminating "air pockets") but required the user to hold the Stir Stick steady or not at all to satisfy the others ("adjacent and above the blades" and "free from contact").

Vita-Mix’s other argument–I’ll call it the Hold Steady theory–required it to show that using the Stir Stick, without stirring, would eliminate air pockets.  To support its theory, Vita-Mix took a multifaceted approach. 

• Vita-Mix offered expert opinion that the Stir Stick, when inserted in the blender but not held by the user, infringes the claim.  The Court concluded that Vita-Mix’s opinion was hypothetical and, thus, insufficient to overcome a motion for summary judgment. 

• Vita-Mix offered video of the accused blenders on QVC to support infringement.  Judge Gaughan was not moved.  In fact, her opinion notes that the video shows the Stir Stick being used to stir and, at one point, shows the formation of an air pocket. 

• Vita-Mix claimed that the accused blenders’ operation manual teaches the customer to infringe.  The Court again disagreed, citing instructions to "turn," "rotate," and "move" the Stir Stick during blending.

• Finally, without proof of infringement by actual customers, Vita-Mix conducted a survey to determine if users were "likely to infringe."  Vita-Mix’s counsel constructed a survey with categories such as "held stir stick stationary," "didn’t hold stir stick," and "used stir stick to mix a lot."  These categories were used to record how 100+ people used the accused blenders.  Vita-Mix then secured an expert report interpreting that data.  The Court concluded the report should be stricken based on relevancy–in part, because the expert had no way of knowing if the claim limitations were met based on the survey and survey data. 

With no proof of direct infringement, the Court granted Defendant’s motion for summary judgment of noninfringement on Vita-Mix’s direct and indirect infringement claims.

Validity And Enforceability:

The Court dispensed with Defendants’ invalidity defense largely for lack of proof.  It’s not that Defendant’s didn’t have evidence–they had an expert opinion and testimony.  They just didn’t want to cite to it.  This was not lost on the Court.  In denying Defendant’s motion for summary judgment on validity, the Court noted that Defendants’ choice not to cite their expert’s report or testimony "cannot be ignored." 

Judge Gaughan also rejected Defendants’ inequitable conduct claim based largely on the fact that there was simply no evidence of intent and the allegedly withheld reference was cited in another reference before the Patent Office.

Notes:

All said, my 35,000-foot review doesn’t do justice to Judge Gaughan’s mammoth efforts in this case.  For more information, including some very interesting details throughout the footnotes, I strongly recommend reading Judge Gaughan’s opinion.

And, yes, in case you were wondering, there has been a flurry of post-judgment motions, including a motion for attorney fees.  Check back for updates. 

More Reading:

Judge Gaughan’s Summary Judgment Opinion

Counsel:

For Vita-Mix: McDonald Hopkins, Cleveland, OH (Michael Snyder, David Movius, David Cupar, and Ryan Fitzgerald)

For the Basic Holding Defendants: Workman Nydegger,  Salt Lake City, UT (Larry Laycock, David Wright, Robert Aycock, and Clinton Duke), Calfee, Halter & Griswold, Cleveland, OH (Charles Lyon, George Hoskins, and Jennifer Wick) 

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