Patent Category Corp. v. Target Corp. (567 F. Supp. 2d 1171, 2008)

United States District Court for the Central District of California 2008-07-16

Citations

Full opinion text

Proceedings: (IN CHAMBERS:) PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT OF INFRINGEMENT (filed 05/02/08)

DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT OF INVALIDITY OF ASSERTED CLAIMS OF U.S. PATENT NO. 6,266,904 (filed 05/06/08)

DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 6,604,537 (filed 05/06/08)

CHRISTINA A. SNYDER, District Judge.

I. INTRODUCTION

Plaintiff Patent Category Corp. (“plaintiff’ or “PCC”) owns the rights to U.S. Patent No. 6,266,904 (“the '904 patent”) issued on July 31, 2001, and U.S. Patent No. 6,604,537 (“the '537 patent”), issued on August 12, 2003. On November 15, 2006, plaintiff filed the instant suit against defendants Target Corp. (“Target”) and Franklin Sports, Inc. (“Franklin”) alleging that defendants are infringing plaintiffs patents. Defendant Franklin is a distributor of at least fifteen models of collapsible, spring-form soccer goals (“Pop-Up Goals”), which plaintiff alleges infringe its patents. Franklin purchased these accused products from The Ninja Corp. UAE (“Ninja”). Id. Defendant Target Corp. (“Target”) sells Pop-Up Goals to consumers pursuant to an agreement with Franklin.

On May 2, 2008, plaintiff filed the present motion seeking summary judgment of infringement with regard to the '537 and '904 patents. Defendants filed their opposition on May 19, 2008. On May 27, 2008, plaintiff filed its reply to defendants’ opposition. On May 6, 2008, defendants filed a motion for summary judgment seeking a determination that the '904 patent is invalid, and also a motion for summary judgment of non-infringement as to the '537 patent. On May 19, 2008, plaintiff filed oppositions to defendants’ motions for summary judgment. On May 22, 2008, defendants filed their replies to plaintiffs oppositions. A hearing was held on the parties’ motions on June 2, 2008. At the pretrial conference held on July 7, 2008, the Court gave its ruling on the instant motions. Plaintiff requested leave to file supplemental briefing in response thereto. The Court granted this request. Plaintiff filed its supplemental brief on July 8, 2008. Defendants filed their opposition to plaintiffs supplemental brief on July 10, 2008. After carefully considering the parties’ arguments the Court finds and concludes as follows.

II. BACKGROUND

A. THE '537 PATENT

The application for the '537 patent, entitled “Collapsible Structures,” was filed on March 8, 2001. Declaration of Lori V. Minassian in Supp. of Pl.’s Motion for Summary Judgment (“MSJ”) (“Minassian Decl.”), Ex. 1 ('537 patent) at 000003. The application for the '537 patent states that Yu Zheng is the inventor, and that PCC is the assignee of the '537 patent. Id. On August 12, 2003, the United States Patent and Trademark Office (the “PTO”) issued the '537 patent. Id.

The '537 discloses a collapsible structure, which may be provided in various shapes and sizes. It has a deployed configuration, and a smaller collapsed configuration. The section of the '537 patent entitled “Background of the Invention” sets forth the background of the types of collapsible structures that have been used by adults and children for such purposes as dollhouses, action figure play houses, as well as tents, cabanas, and other similar outdoor structures used for camping. Id. at 000016.

In the section headed “Summary of the Disclosure,” the '537 patent states:

The present invention provides a collapsible structure which is convenient to use, to transport, and to store, and which offers a wide variety of uses to the user.

In order to accomplish the objects of the present invention, the collapsible structures according to the present invention are provided with first and second wall panels each wall panel having a foldable frame member having a folded and unfolded orientation, a frame retaining sleeve for retaining the respective frame member, and a fabric material substantially covering each frame member to form the panel for each frame member when the frame member is in the unfolded orientation. The fabric assumes the unfolded orientation of its associated frame member. The foldable frame member of each wall panel further includes a top side and a bottom side, with the frame retaining sleeve of the wall panel stitched along the length of its top side of the second wall panel to form a hinged connection.

Id.

B. THE '904 PATENT

The application for the '904 patent, entitled “Collapsible Structures Supported on a Pole,” was filed on February 1, 1999. Minassian Deck, Ex. 2 ('904 patent) at 000022. The application for the '904 patent also states that Yu Zheng is the inventor, and that PCC is the assignee of the '904 patent. Id. On July 31, 2001, the PTO issued the '904 patent. Id.

The '904 patent discloses a collapsible object supported by a pole, which pole is attached to a foldable frame with fabric material covering portions of the foldable frame to form a panel. The background section of the '904 patent sets forth a description of the prior art:

Collapsible objects have recently become very popular. These objects have one or more panels which may be twisted and folded to reduce the overall size of the structures to facilitate convenient storage and use_One such application is for use as collapsible shelters or play structures_Another such application is for use as collapsible sunshields .... Yet another application is for use as collapsible flying structures.

Id. at 000033.

In the section headed, “Detailed Description of the Preferred Embodiments,” the '904 patent states:

The present invention provides collapsible objects that can be supported by a pole. The principles of the present invention can be applied to provide more convenient use and possible new uses for certain objects that are supported on poles, including but not limited to flags, games, umbrellas and exhibit media.

Id.

III. LEGAL STANDARD

A. SUMMARY JUDGMENT

Summary judgment is appropriate where “there is no genuine issue as to any material fact” and “the movant is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c). The moving party has the initial burden of identifying relevant portions of the record that demonstrate the absence of a fact or facts necessary for one or more essential elements of each cause of action upon which the moving party seeks judgment. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

If the moving party has sustained its burden, the nonmoving party must then identify specific facts, drawn from materials on file, that demonstrate that there is a dispute as to material facts on the elements that the moving party has contested. See Fed.R.Civ.P. 56(c). The nonmov-ing party must not simply rely on the pleadings and must do more than make “conclusory allegations [in] an affidavit.” Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871, 888, 110 S.Ct. 3177, 111 L.Ed.2d 695 (1990). See also Celotex Corp., 477 U.S. at 324, 106 S.Ct. 2548. Summary judgment must be granted for the moving party if the nonmoving party “fails to make a showing sufficient to establish the existence of an element essential to that party’s case, and on which that party will bear the burden of proof at trial.” Id. at 322, 106 S.Ct. 2548. See also Abromson v. Am. Pac. Corp., 114 F.3d 898, 902 (9th Cir.1997).

In light of the facts presented by the nonmoving party, along with any undisputed facts, the Court must decide whether the moving party is entitled to judgment as a matter of law. See T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d 626, 631 & n. 3 (9th Cir.1987). When deciding a motion for summary judgment, “the inferences to be drawn from the underlying facts ... must be viewed in the light most favorable to the party opposing the motion.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (citation omitted); Valley Nat’l Bank of Ariz. v. A.E. Rouse & Co., 121 F.3d 1332, 1335 (9th Cir.1997). Summary judgment for the moving party is proper when a rational trier of fact would not be able to find for the nonmoving party on the claims at issue. See Matsushita, 475 U.S. at 587, 106 S.Ct. 1348.

B. INFRINGEMENT

The patentee bears the burden of establishing infringement by the accused product by a preponderance of the evidence. Kegel Co. v. AMF Bowling, Inc., 127 F.3d 1420, 1425 (Fed.Cir.1997). Patent infringement requires that an accused product have all the same elements, or substantial equivalents thereof, present in the claim of the patent. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). If even one element, or limitation, is not present, the accused product does not literally infringe as a matter of law. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1581 (Fed.Cir.1996). If an accused product does not literally infringe, it may still infringe a claim under the doctrine of equivalents if an element of the product is the substantial equivalent of the otherwise missing claim limitation. Sage Products, Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1423 (Fed.Cir.1997) (holding that a claim element is “equivalently present in an accused device if only insubstantial differences distinguish the missing claim element from the corresponding aspects of the accused device”). The doctrine of equivalents is limited by the countervailing doctrine of prosecution history estoppel, which precludes a patent holder from reviving subject matter that was surrendered in the proceedings before the Patent Examiner, even if equivalent to the subject matter expressly claimed. Warner-Jenkinson Co., 520 U.S. at 30, 117 S.Ct. 1040.

A two-step analysis is performed to determine whether a patent has been infringed. CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., KG, 224 F.3d 1308 (Fed.Cir.2000). “First, the claims must be correctly construed to determine the scope of the claims. Second, the claims must be compared to the accused device” to determine if the limitations are met. Kahn v. Gen. Motors, Corp., 135 F.3d 1472, 1476 (Fed.Cir.1998). Generally, the terms of the claim are given their ordinary meaning, unless it appears that the inventor used them differently. Vitronics, 90 F.3d at 1582. A court should interpret the language of the claims in light of the claim language itself, the specification, the relevant prior art, and the prosecution history from the perspective of a person of ordinary skill in the relevant art. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979-80 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). While claim construction is solely a matter of law for the court, id., a determination of infringement, both literal and under the doctrine of equivalents, is a question of fact. Insituform Technologies v. Cat Contracting, Inc., 161 F.3d 688, 692 (Fed.Cir.1998).

C. INVALIDITY

Pursuant to 35 U.S.C. § 282, all patents are presumed valid, and the burden of establishing invalidity, by reason of lack of novelty (anticipation) or obviousness, rests upon the party asserting invalidity. The statute presumes each claim of a patent to be valid independently of the validity of the other claims. Id. “Because dependent claims contain additional limitations, they cannot be presumed to be invalid as obvious just because the independent claims from which they depend have properly been so found.” Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1356 (Fed.Cir.2001). The presumption of patent validity may be rebutted only by a showing of “clear and convincing evidence.” Saf-Gard Products, Inc. v. Service Parts, Inc., 532 F.2d 1266, 1271 (9th Cir.1976).

IV. DISCUSSION

A. PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT OF INFRINGEMENT AND DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT OF THE '537 PATENT

Plaintiff asserts that the Franklin brand Pop-Up Goals infringe claims 1 through 4 of the '537 patent. ~ Claim 1 is an independent claim, and claims 2 through 4 are dependent claims, which depend from claim 1.

1. CLAIM CONSTRUCTION

In order to determine whether there is infringement the Court must first construe the claims at issue.

Claim interpretation begins with an examination of the intrinsic evidence of record, which includes the patent claims, the specification, and, if in evidence, the prosecution history and prior art. Vitronics, 90 F.3d at 1582, 1584; Phillips v. AWH Corp., 415 F.3d 1303, 1316-17 (Fed.Cir.2005) (en banc); V-Formation, Inc. v. Benetton Group SpA et al., 401 F.3d 1307, 1310 (Fed.Cir.2005). Courts also may use extrinsic evidence, for example expert or inventor testimony, to resolve ambiguities in the disputed claim terms, but only if the intrinsic evidence does not resolve the ambiguities. Vitronics, 90 F.3d at 1583-84; Phillips, 415 F.3d at 1317-18. Further, technically extrinsic evidence, such dictionaries, encyclopedias, and technical treatises may be consulted at any time to help determine the meaning of claim terms. Vitronics, 90 F.3d at 1584 n. 6; Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1203 (Fed.Cir.2002); Inverness Med. Switz. GmbH v. Princeton Biomeditech Corp., 309 F.3d 1365, 1368 (Fed.Cir.2002). All such evidence — both intrinsic and extrinsic — should be viewed from the perspective of a person of ordinary skill in the relevant art. Markman v. Westview Instruments Inc., 52 F.3d 967, 979-80 (Fed.Cir.1995) (en banc).

Generally, courts begin with a “heavy presumption” that “the terms in the claim are to be given their ordinary and accustomed meaning.” Johnson Worldwide Assoc., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed.Cir.1999); see also Gart v. Logitech, Inc., 254 F.3d 1334, 1341 (Fed.Cir.2001). This ordinary and customary meaning is the meaning a claim term “would have to a person of ordinary skill in the art at the time of the invention.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1116 (Fed.Cir.2004). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir.2005) (en banc).

“An accused infringer may overcome this ‘heavy presumption’ and narrow a claim term’s ordinary meaning, but he cannot do so simply by pointing to the preferred embodiment or other structures or steps disclosed in the specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002) (quoting Johnson Worldwide, 175 F.3d at 989). Rather, “a court may constrict the meaning of a claim term in at least one of four ways.” Id. First, the claim term will not be given its ordinary meaning “if the patentee has chosen to be his or her own lexicographer by clearly setting forth an explicit definition for a claim term.” Johnson Worldwide, 175 F.3d at 990; see also Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193, 1204 (Fed.Cir.2002) (“Indeed, the intrinsic record may show that the specification uses the words in a manner clearly inconsistent with the ordinary meaning reflected, for example, in a dictionary definition. In such a case, the inconsistent dictionary definition must be rejected.”). Second, a claim term will not have its ordinary meaning “if the intrinsic evidence shows that the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.” CCS Fitness, 288 F.3d at 1366-67; see e.g., Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378 (Fed.Cir.1998); SciMed Life Sys., Inc. v. Adv. Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed.Cir.2001); Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1301 (Fed.Cir.1999). Third, a claim term will not receive its ordinary meaning “if the term ‘chosen by the patentee so deprive[s] the claim of clarity’ as to require resort to the other intrinsic evidence for a definite meaning.” CCS Fitness, 288 F.3d at 1367 (quoting Johnson Worldwide, 175 F.3d at 990). Fourth, if a claim is phrased in step- or mean-plus-function format, a claim term does not cover more than the corresponding structure or step disclosed in the specification, and the equivalents thereto. 35 U.S.C. § 112 ¶ 6; CCS Fitness, 288 F.3d at 1367.

Thus, although courts may look to intrinsic and extrinsic evidence, courts “perform this consultation” to determine whether any of the reasons for abandoning the ordinary meaning are applicable. Gart v. Logitech, Inc., 254 F.3d 1334, 1341 (Fed.Cir.2001). In the absence of one or more of the circumstances set forth above, courts must follow the general rule that claim terms are to be given their ordinary meaning. Id.; Inverness Med. Switz. GmbH v. Princeton Biomeditech Corp., 309 F.3d 1365, 1370-73 (Fed.Cir.2002) (holding that nothing in the patent’s claim language, specification, or prosecution history contradicted or altered the plain meaning of the unambiguous claim term “mobility” and thus it was error for the district court to construe the claim term at issue not in accordance with its plain meaning).

a. CLAIM 1

Claim 1 reads as follows:

A collapsible structure having a deployed configuration and a collapsed configuration, comprising:

a side member and a base member, each member including a portion of a foldable frame member that has a folded and an unfolded orientation, and a fabric material covering at least a portion of its frame member when the frame member is in the unfolded orientation; and

the side member having a bottom side, and the base member having a first side, with the side member and the base member connected to each other adjacent the bottom side of the side member and the first side of the base member; and

a first frame retaining sleeve for retaining the portion of the frame member for the side member, and a second frame retaining sleeve for retaining the portion of the frame member for the base member, with the first frame retaining sleeve stitched along the bottom side of the side member to the second frame retaining sleeve along the first side of the base member to form a hinged connection.

Minassian Decl., Ex. 1 ('537 patent) at 000020-21.

Plaintiff contends that the term “collapsible” should be construed to mean the “ability to be folded or reduced in size,” and the word “collapse” to mean “ ‘to fold compactly.’ ” Pl.’s MSJ at 7 (quoting The American Heritage Dictionary of the English Language 261 (1981)). Plaintiff asserts that the phrase “frame member” means “a frame.” Id. Plaintiff further contends that claim 1 contemplates that the structure has a side portion, and a bottom portion. Finally, plaintiff states that the term “sleeve” should be construed to mean “‘any encasement or shell into which a piece of equipment fits.’ ” Id. at 8 (quoting The American Heritage Dictionary of the English Language 1215 (1981)). According to plaintiff, claim 1 also requires one frame retaining sleeve to be stitched to another frame retaining sleeve to form a hinged connection. See Pl.’s Opp’n to Defs.’ MSJ of Non-Infringement at 5 (“According to defendants, ‘the first frame-retaining sleeve must be stitched to the second frame retaining sleeve to form a hinged connection.’ (Def.Br.9.) So far, PCC agrees.”). Plaintiff asserts that this hinged connection can be formed by utilizing any of the seven preferred embodiments set forth in the specification. Thus, according to plaintiff, the hinged connection can be formed by either stitching one frame retaining sleeve directly to another frame retaining sleeve as shown in Figure 3A of the '537 patent, or by stitching one frame retaining sleeve to an intermediate piece of fabric, which intermediate piece of fabric is in turn stitched to a second frame retaining sleeve, as shown in Figures 3B-3D.

Defendants take issue with plaintiffs interpretation of the phrase “stitched along the bottom side to.” Minassian Decl., Ex. 1 ('537 patent) at 000021. First, defendants argue that claim 1 must be construed to require two separate frame retaining sleeves that are stitched to one another to form a hinged connection. Specifically, defendants argue that the following language must be construed to require at least two separate frame retaining sleeves: “a first retaining sleeve for retaining the portion of the frame member for the side member, and a second frame retaining sleeve for retaining the portion of the frame member for the base member.” Id. According to defendants, the use of the words “first” and “second,” must be construed to require two separate frame retaining sleeves.

Next, defendants turn to the requirement that “the first frame retaining sleeve [be] stitched along the bottom side of the side member to the second frame retaining sleeve along the first side of the base member to form a hinged connection.” Id. According to defendants, this limitation requires the first retaining sleeve to be stitched directly to the second retaining sleeve to form a hinged connection. Defendants assert that the dictionary definition of the word “stitch” is variously defined as a “ ‘single complete in-and-out movement of a threaded needle in sewing, embroidering, or suturing,’ ” a “ ‘single complete in-and-out movement of the threaded needle in sewing,’ ” “ ‘a single loop of yarn worked off a needle in knitting, crocheting, etc.,’ ” “ ‘to fasten, join, or close with or as if with stitches,’ ” and “ ‘one complete movement of a threaded needle through fabric of material such as leave behind it a single loop or portion of thread, as in sewing, embroidering, or the surgical closing of wounds.’ ” Defs.’ Reply to Pl.’s Opp’n to Defs.’ MSJ of Non-Infringement at 3 (quoting Webster’s Third New International Dictionary (Unabridged) 2246 (2002); Webster’s New World College Dictionary (3d 1997); Webster’s Ninth New Collegiate Dictionary (1983)). Defendants contend that the phrase “stitched to” must therefore be construed to mean that “two pieces of material — in this case, the first retaining sleeve and the second retaining sleeve— are sewn directly to one another via a stitch.” Id. at 9.

Defendants maintain that in each instance in which the '537 patent describes two items as being “stitched to” each other, the two items are connected by shared pieces of thread. Defendants urge that their claim construction is supported by Figure 3A of the '537 patent. Defendants argue that because claim 1 requires that the first retaining sleeve be stitched to the second frame retaining sleeve, as disclosed in Figure 3A, claim 1 does not cover the embodiment shown in Figure 3B, which requires that an intermediate piece of fabric is used. See Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1106-07 (Fed.Cir.1996) (“[SJubject matter disclosed but not claimed in a patent application is dedicated to the public.”). Specifically, the embodiment shown in Figure 3B of the '537 patent discloses a second preferred embodiment for “hingedly connecting” two edges of wall panels. Minassian Decl., Ex. 1 ('537 patent) at 000007, 000017. In this second preferred embodiment one frame retaining sleeve is stitched to one end of an interconnecting piece of fabric, and a second frame retaining sleeve is stitched to another end of the interconnecting piece of fabric, which interconnecting piece of fabric acts as an interconnecting hinge for the panels. Id. at 000017.

Having addressed the parties’ arguments, the Court now turns to the terms used in claim 1, and, as stated above, the Court begins with the “heavy presumption” that a claim term should be construed according to its ordinary and accustomed meaning as viewed by a person skilled in the art. Johnson Worldwide Assocs. v. Zebco Corp., 175 F.3d 985, 989 (Fed.Cir.1999). In this case, the claims do not appear to require any special interpretation. See Phillips v. AWH Corp., 415 F.3d 1303, 1313-17 (Fed.Cir.2005) (en banc) (“In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges.”). In such cases, claim construction “involves little more than the application of the widely accepted meaning of commonly understood words.” Id. at 1314.

i.“COLLAPSIBLE”

Collapsible has a plain and ordinary meaning, and here, the patentee has used the term in a manner consistent with its ordinary meaning. As used in claim 1, the word “collapsible” refers to the ability to fold down. Specifically, in context, “collapsible” requires that an object be capable of folding down in order to reduce the size of the structure. Further, figures 5A-5E of the '537 patent depict an object being folded down upon itself to reduce its overall size. See Minassian Decl., Ex. 1 ('904 patent) at 000010-12. The dictionary definitions of collapsible comport with this construction. See Phillips, 415 F.3d at 1314 (noting that where claim instruction does not require elaborate interpretation, “general purpose dictionaries may be helpful”). For example, the Oxford English Dictionary defines “collapsible” as “Mapa-ble of collapsing: made to collapse or fold together.” The Oxford English Dictionary (the “OED”) (2d ed.1989). Similarly, the American Heritage Dictionary defines the word “collapse” as “to fold compactly.” The American Heritage Dictionary of the English Language (“The American Heritage Dictionary”) (4th ed.2000).

ii. “A SIDE MEMBER AND A BASE MEMBER”

Claim l’s requirement that the collapsible structure have a “side member” and a “base member” appears to require that the structure have at least two panels: a side portion, and a bottom portion. See Minas-sian Decl., Ex. 1 ('537 patent) at 000005, 000013-15.

iii. “A BOTTOM SIDE” AND “A FIRST SIDE”

Claim 1 further recites: “the side member having a bottom side, and the base member having a first side, with the side member and the base member connected to each other adjacent the bottom side of the side member and the first side of the base member.” Id. at 000021. “Bottom side” refers to the bottom edge of the side portion of the structure, while “first side” refers to an edge of the bottom portion of the structure. See id. at 000017 (“The base panel 22c has two opposing side edges 23a and 23c, each having opposing ends connected to one of two end edges 23b and 23d. The wall panel 22a has a left side edge 26a, a bottom side edge 26b, a right side edge 26c, and a top side edge 27 .... Referring to FIG. 1, the bottom side edge 27b of wall panel 22b is hingedly connected to side edge 23c of the base panel 22c, and the top side edge of 27d of wall panel 27a.”). Claim 1 therefore requires that the side portion and the bottom portion of the collapsible structure be connected to one another near these edges. See The OED (2d ed.1989) (defining “adjacent” as “[l]ying near or close (to); adjoining; contiguous; bordering,” “[n]ot necessarily touching, though this is by no means precluded”); The American Heritage Dictionary (4th ed.2000) (defining “adjacent” as “[cjlose to; lying near,” “next to; adjoining”).

iv. “FIRST FRAME RETAINING SLEEVE” AND “SECOND FRAME RETAINING SLEEVE”

A sleeve is commonly understood to be a structure that fits over and around another structure. This ordinary meaning comports with dictionary definitions of the term. According to the OED, a “sleeve” is a “close-fitting protective cover or case.” The OED (2d ed.1989). Similarly, the American Heritage Dictionary defines “sleeve” as “[a] case into which an object or device fits.” The American Heritage Dictionary (4th ed.2000).

The term “retaining,” when considered in context, requires that the sleeve hold an object, which in this case is a frame. Figure 2 of the '537 patent discloses a frame resting in the center of a protective cover. Minassian Decl., Ex. 1 ('537 patent) at 000006. According to the OED, “retaining” means “[sjerving to retain or hold by physical force or resistence.” The OED (2d ed.1989). To “retain” means “[t]o maintain possession of,” “[t]o keep or hold in a particular place, condition, or position.” The American Heritage Dictionary (4th ed.2000).

Based on the foregoing, the Court finds that a “frame retaining sleeve” is a cover made up of a fabric material that encloses a structure that offers support or structure. See Minassian Decl., Ex. 1 ('537 patent) at 000017 (describing how to create a frame retaining sleeve with fabric material). Because claim 1 calls for a “first” and “second” “frame retaining sleeve,” the Court concludes that claim 1 requires two such sleeves.

v. “STITCHED ALONG THE BOTTOM SIDE OF”

There does not appear to be significant disagreement about the construction of the aforementioned terms. Instead, the crux of the parties disagreement is with the following language of claim 1: “the first frame retaining sleeve stitched along the bottom side of the side member to the second frame retaining sleeve along the first side of the base member to form a hinged connection.” Id. at 000021.

The Court finds that, contrary to defendants’ interpretation, claim 1 does not require that two sleeves be directly stitched to one another. In fact, the words “directly to” or “touch” are never used. Instead, claim 1 states only that one frame retaining sleeve is to be “stitched along the bottom side” of another frame retaining sleeve. Id. As customarily understood, two objects do not need to be touching to run “along the bottom” of each other. The OED defines “along” as “[i]n a line with the length, parallel to the longest dimension or course (of something understood); lengthwise, longitudinally.” The OED (2d ed.1989). Merriam-Webster’s Collegiate Dictionary defines “along” as “in a line matching the length or direction of.” Merriam-Webster’s Collegiate Dictionary (“Webster’s Collegiate”) (10th ed.1996). Further, the American Heritage Dictionary defines the word “along” as “over the length of’ or “on a line or course parallel and close to; continuously beside: rowed along the shore; trees along the shore.” The American Heritage Dictionary (4th ed.2000) (emphasis in original). “Th[ese] definitionfs] and the illustrative examples [they] provide[ ] reflect that an object can be ‘along’ another object even if the two do not come in contact. Rather, the two objects need only be ‘parallel’ and ‘close to’ each other.” Lyndex Corp. v. Heartech Precision, Inc., 2004 U.S. Dist. LEXIS 24, at *10-11, 2004 WL 42373, at *4 (N.D.Ill. Jan. 5, 2004) (rejecting defendant’s interpretation of claim language requiring a groove to “extend[] along the outer circumference of the base end of [a] chuck sleeve,” as requiring the groove to touch the outer surface of the chuck sleeve).

Claim 1 further requires the two frame retaining sleeves to be connected to each other to form a “hinged connection.” A stitch is generally understood to be a loop of thread or yarn formed by inserting a needle in and out of a some material. The American Heritage Dictionary defines “stitch” as “[a] single complete movement of a threaded needle in sewing or surgical suturing,” “[a] single loop of yarn around an implement such as a knitting needle,” “[t]he link, loop, or knot made in this way,” “[a] mode of arranging the threads in sewing, knitting, or crocheting.” The American Heritage Dictionary (4th ed.2000). Webster’s Collegiate and Webster’s Third New International Dictionary state, in relevant part, that the word “to” is “used as a function word to indicate contact or proximity.” Webster’s Collegiate (10th ed.1996); Webster’s Third New Int’l Dictionary (3rd ed.1993). Moreover, the specification defines the words “hinged connection” as meaning “permanently connecting or attaching two adjacent sides of adjacent panels in a manner in which the connection is not intended to be disconnected during normal use of the structure.” Minassian Deck, Ex. 1 ('537 patent) at 000017. Thus, the purpose of “hingedly connecting]” the two sleeves through a stitch is to ensure that two adjacent, panels will remain permanently connected to each other.

Under the circumstances, to read claim 1 in the manner urged by defendants would improperly limit the patent to just one preferred embodiment. Claim 1 does not disclaim or exclude a preferred embodiment in which two sleeves are permanently connected to each other via an intermediate piece of fabric material. The specification clearly sets forth alternative means of connecting two frame retaining sleeves, and in three of these embodiments the sleeves are connected to each other through the use of an intermediate piece of fabric. See SanDisk Corp. v. Memorex Products., 415 F.3d 1278, 1285 (Fed.Cir.2005) (“A claim construction that excludes a preferred embodiment ... is ‘rarely, if ever, correct.’ ”) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed.Cir.1996)).

Generally, claims should not be construed to exclude preferred embodiments. See e.g., SanDisk Corp. v. Memorex Products, Inc., 415 F.3d 1278, 1285 (Fed.Cir.2005); NeoMagic v. Trident Microsystems, 287 F.3d 1062, 1074-75 (Fed.Cir.2002); Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed.Cir.2008)(“[0]ur court has cautioned against interpreting a claim term in a way that excludes disclosed embodiments, when that term has multiple ordinary meanings consistent with the intrinsic record.”). In Oatey Co. v. IPS Corp., 514 F.3d 1271 (Fed.Cir.2008), the Federal Circuit stated

We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification. However, we have interpreted claims to exclude embodiments of the patented invention where those embodiments are clearly disclaimed in the specification, or prosecution history.

Id. at 1276-77. Defendants correctly point out that the Federal Circuit has explained that “Oatey is not a panacea, requiring all claims to cover all embodiments.” PSN III., LLC v. Ivoclar Vivadent, Inc., 525 F.3d 1159, 1166 (Fed.Cir.2008); see e.g., Sinorgchem Co. v. ITC, 511 F.3d 1132, 1138 (Fed.Cir.2007) (“Where, as here, multiple embodiments are disclosed, we have previously interpreted claims to exclude embodiments where those embodiments are inconsistent with unambiguous language in the patent’s specification or prosecution history.”); TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed.Cir.2008) (“However, to construe the claim term to encompass the alternative embodiment in this case would contradict the language of the claims. Indeed, read in the context of the specification, the claims of the patent need not encompass all disclosed embodiments.”).

Although a court is by no means required to construe a claim so that it includes all of the disclosed embodiments, in this case, the claim language can reasonably be interpreted to include the disputed embodiments; the language does not preclude a construction of two sleeves that are permanently connected to each other by way of an intermediate piece of fabric. Accordingly, the Court concludes that claim 1 requires only that one frame retaining sleeve be stitched near the bottom of a second frame retaining sleeve in such a way that the two sleeves are permanently connected to each other.

b. CLAIMS 2 THROUGH 4

Claim 2 is dependent on claim 1. Claim 2 recites as follows:

The structure of claim 1, wherein the side member and the base member are placed on top of each other when the structure is twisted and folded to its collapsed configuration.

Minassian Deel., Ex. 1 ('537 patent) at 000021.

Claim 3 also depends from claim 1. Claim 3 states:

The structure of claim 1, further including means for interconnecting the bottom side of the side member and the first side of the base member.

Id.

Claim 4 depends from claim 1. Claim 4 discloses the following:

The structure of claim 1, wherein the side member lies in a first uninterrupted plane and the base member lies in a second uninterrupted plane, with the first and second planes extending at different angles.

Id.

The parties do not appear to disagree about the construction of claims 2, 3, and 4.

2. COMPARING THE CLAIMS TO THE ACCUSED PRODUCTS

As stated above, once the Court has construed the claims at issue, the claims must be compared to the accused products to determine if the claim limitations are met.

Plaintiff argues that the accused products are collapsible structures, that twist and fold into a collapsed configuration, and that include both a collapsed configuration and a deployed configuration. Plaintiff argues that the accused products also have a side portion and a base portion. According to plaintiff, the accused products include a first frame retaining sleeve, and a second retaining sleeve for retaining frame members. Finally, plaintiff contends that the accused products also include a hinged connection formed by stitching two frame retaining sleeves to together.

According to defendants, unlike the collapsible structure disclosed in the '537 patent, which has two separate, foldable frame members, all of the accused products are formed using a “Figure 8” approach that was disclosed in U.S. Patent No. 4,825,892, which patent lists Lowell R. Norman as the inventor, and Pure Concept, Inc. as the assignee (the “Norman patent”). See Declaration of Pankti Patel in Support of Defs.’ MSJ of Non-Infringement (“Patel Decl. in Support of Defs.’ MSJ of Non-Infringement”), Ex. C (“Norman patent”). Defendants argue that unlike the collapsible structures described in the '537 patent, in which each panel of the structure has its own continuous foldable frame member, the accused products are formed from two discontinuous sections of a folder over, Figure 8 frame member.

Defendants further argue that because the accused products are not formed using distinct frame members for each panel, and because the structure of the accused devices requires a crossover of discontinuous sections, a hinged connection cannot be formed by stitching two frame retaining sleeves together. Instead, the hinge between the panels for the accused products, according to defendants, is formed by stitching portions of a single sleeve retaining the Figure 8 frame to an intermediate piece of fabric.

Defendants argue that the accused products do not literally infringe the '537 patent because the hinges in the accused products are formed by stitching two sleeves to an intermediate piece of fabric. Defendants further argue that the accused products do not infringe the '537 patent under the doctrine of equivalents. First, defendants argue that the doctrine of equivalents cannot be applied to vitiate a claim limitation, i.e., the limitation requiring two frame retaining sleeves to be stitched directly to one another. Next, defendants argue that the scope of equivalents cannot include what is disclosed in the prior art, and the prior art discloses the use of an intermediate piece of fabric to connect two pieces of fabric together. Defendants additionally argue that the doctrine of equivalents cannot be used to cover embodiments that were disclosed, but not claimed, in the patent application.

Finally, defendants argue that because the accused products do not satisfy all of the limitations of the claim 1, they do not satisfy the limitations of dependent claims 2 through 4 since these dependent claims incorporate all of the limitations of independent claim 1.

The Court previously stated that because the accused product is formed by folding a single frame into a Figure 8 shape, there can be no dispute that there is just one frame, and therefore, just one frame retaining sleeve. However, plaintiff correctly points out that in fact, there is a disputed question of fact as to whether the accused product has one or two frame retaining sleeves. For this reason, the Court finds that summary judgment is inappropriate.

B. DEFENDANTS’ MOTION FOR SUMMAJRY JUDGMENT OF INVALIDITY OF THE '904 PATENT

1. INVALIDITY OF PATENT

Defendants move for summary judgment on the affirmative defense that the asserted claims of the '904 patent are invalid by reason of anticipation or obviousness.

a. LACK OF NOVELTY (ANTICIPATION)

Invalidity based on lack of novelty, or “anticipation,” requires that all elements of a patent claim are identically set forth in a prior art reference. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed.Cir.2003); Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1367 (Fed.Cir.1999) (“A prior art reference anticipates a patent claim if the reference discloses, either expressly or inherently, all of the limitations of the claim.”). In determining invalidity due to anticipation, the “first step involves the proper interpretation of the claims.” Beachcombers, Int’l v. WildeWood Creative Prods., Inc., 31 F.3d 1154, 1160 (Fed.Cir.1994). As stated above, claim interpretation is a question of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 975 (Fed.Cir.1995) (en banc). “The second step involves determining whether the limitations of the claims as properly interpreted are met by the prior art.” Beachcombers, Int’l, 31 F.3d at 1160. Whether the prior art meets the claim limitations is a question of fact. Brown v. 3M, 265 F.3d 1349, 1351 (Fed.Cir.2001), cert. denied, 535 U.S. 970, 122 S.Ct. 1436, 152 L.Ed.2d 380 (2002).

i. CLAIM CONSTRUCTION

Defendants argue that claims 4 and 6 are anticipated by U.S. Patent No. 5,611,-380 (“the '380 patent’ ”), which patent discloses a collapsible sunshade awning structure. See Minassian Opp’n Deck, Ex. 2 (the '380 patent) at 18. In order to determine whether the prior art of the '380 patent anticipates claims 4 and 6 of the '904 patent, the Court will first construe the claim limitations at issue. In order to construe a claim term, the Court first looks to the ordinary meaning of that term. Tex. Digital Sys. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed.Cir.2002).

1. CLAIM 4

Claim 4 is a dependent claim, which depends from claim 1. Claim 4 of the '904 patent recites: “[t]he object of claim 1, further including a frame retaining sleeve for retaining the frame member, the frame retaining sleeve attached to the material.” Declaration of Lori V. Minassian in Supp. of Pl.’s Opp’n to Defs.’ MSJ of Invalidity (“Minassian Opp’n Decl.”), Ex. 1 ('904 patent) at 17.

The term “frame,” as it used in the context of the '904 patent, is a structure that offers support for or to another structure’ Figure 2 of the patent depicts a frame as a narrow, rectangular structure. Id. at 4. The specification explains that the

frame member 32 is preferably formed of flexible coilable steel, although other materials such as plastics may also be used. The frame member 32 should be made up of a material which is relatively strong and yet is flexible to a sufficient degree to allow it to be coiled.

Id. at 15. The OED defines the word “frame” as “[a] structure which serves as an underlying support or skeleton.” The OED (2d ed.1989). A “frame,” according to the American Heritage Dictionary, is a “structure that gives shape or support.” The American Heritage Dictionary (4th ed.2000).

A sleeve is commonly understood to be a structure that fits over and around another structure. See E-Pass Technologies v. 3Com, 343 F.3d 1364, 1367 (Fed.Cir.2003) (“In order to construe a disputed claim term, we first seek the ordinary meaning of the claim term.”). This ordinary meaning comports with dictionary definitions of the term “sleeve.” As stated supra, according to the OED, a “sleeve” is a “close-fitting protective cover or case.” The OED (2d ed.1989). Similarly, the American Heritage Dictionary defines “sleeve” as “[a] case into which an object or device fits.” The American Heritage Dictionary (4th ed.2000). Figure 2 of the '904 patent supports this interpretation, showing the sleeve to be a material that is wrapped around the frame, thereby covering the frame. Minassian Opp’n Decl., Ex. 1 ('904 patent) at 4.

The word “retain” is commonly understood to mean “to hold.” The specification states, in pertinent part, that “[a] continuous frame member 32 is retained or held within the frame retaining sleeve 32 to support the panel 22.” Id. at 15 (emphasis added). According to the OED, “retaining” means “[sjerving to retain or hold by physical force or resistence.” The OED (2d ed.1989). To “retain” means “[t]o maintain possession of,” “[t]o keep or hold in a particular place, condition, or position.” The American Heritage Dictionary (4th ed.2000).

The specification and accompanying illustrations support this understanding of the phrase “frame retaining sleeve.” Specifically, the specification for the '904 patent explains that the continuous frame member may be enclosed within the sleeve, without being attached thereto, or alternatively, the sleeve may be “mechanically fastened, stitched, fused, or glued to the frame member to retain the frame member in position.” Minassian Opp’n Deck, Ex. 1 ('904 patent) at 15. Further, Figure 2 of the '904 patent shows a rectangular prism that is covered by or enclosed in a sheet of fabric material. Id. at 4. The specification explains that the “continuous frame member 32 is retained or held within the frame retaining sleeve 30 to support the panel 22.” Id. at 15.

Based on the foregoing, the Court finds that a “frame retaining sleeve” is a cover made up of a fabric material that encloses a structure that offers support or structure.

2. CLAIM 6

Claim 6 depends from claim 5, which is in turn dependent on claim 1. Claim 6 recites: “[t]he object of claim 5, wherein the attachment mechanism includes a sleeve connected to the panel for coupling the panel to the pole.” Id. at 17.

The word “attachment” is ordinarily understood to mean the act of, or a device or method for connecting two objects. For example, the American Heritage Dictionary defines “attachment” as “[t]he act of attaching or the condition of being attached; ... [s]omething, such as a tie, band, or fastener, that attaches one thing to another.” The American Heritage Dictionary (4th ed.2000). “Attach” in turn means “[t]o fasten, secure, or join.” Id. Read in context of claim 6, it is clear that “attachment mechanism” refers to a device for connecting two objects.

The term “sleeve,” means, as stated above, an outer cover for covering a structure that is contained inside that outer cover.

The term “coupling” is commonly understood to mean linking or joining. According to the American Heritage Dictionary “coupling” is “[t]he act of linking together or forming couples,” or “a device that links or connects.” The American Heritage Dictionary (4th ed.2000).

Finally, a “pole” is typically, straight, slender, rounded or cylindrical object. See generally, Minassian Opp’n Deck, Ex. 1 ('904 patent); see also The OED (2d ed.1989) (defining “pole” as “a long, straight, slender, and more or less cylindrical piece of wood or another material, used in scaffolding, as a support, or for various other purposes”); The American Heritage Dictionary (4th ed.2000) (defining pole as a “long, relatively slender, and generally rounded piece of wood or other material”).

The aforementioned constructions are supported by the '904 patent’s specification. The '904 patent, unlike the '537 patent, requires a pole. This pole, in each of the illustrations, appears as a slender, cylindrical structure. See Minassian Opp’n Dec!., Ex. 1 ('904 patent) at 1-7, 9-13. The specification states that the collapsible panel can be connected or attached to the pole by “any conventional attachment mechanism 25, including but not limited to strings, straps, rope, opposing Velcro- pads, links and chains.” Id. at 14. According to the specification, “[t]he conventional attachment mechanism 25 can be a sleeve 70 ... that is formed by folding a piece of fabric ... and then stitched (along stitch line 72) to an edge of the panel 22, with the pole 24 retained inside the sleeve 70.” Id. Figure IB illustrates how a sleeve can be used to connect the panel to the pole. Id. at 5. In Figure IB, a sleeve, which is connected to the panel, is formed by folding a piece of fabric into a tubular shape, and then stitching the fabric together so that it maintains this tubular shape. Id. Then a pole is slipped into the space in the middle of the tube. Id. The pole is connected to the pole by using a tie, or pieces of slender, string like fabric pieces, to tie the sleeve (and its attached panel) to the pole. Id. Finally, the specification explains that the panel can “can be pivoted about its attachment mechanism(s) 25 (about an axis defined by the pole 24) so that wind or other forces will cause the panel 22 to pivot about the pole.” Id. at 15.

Thus, claim 6 requires that a sleeve be connected to the edge of the panel for linking or joining the panel to the pole by slipping the pole inside of the sleeve.

ii. ANTICIPATION BY THE PRIOR ART

Defendants argue that claims 4 and 6 of the '904 patent are anticipated by U.S. Patent No. 5,611,380 (“the '380 patent’ ”).

“Anticipation under 35 U.S.C. § 102 means lack of novelty, and is a question of fact.” Brown v. 3M, 265 F.3d 1349, 1351 (Fed.Cir.2001), cert. denied, 535 U.S. 970, 122 S.Ct. 1436, 152 L.Ed.2d 380 (2002). “However, without genuine factual disputes underlying the anticipation inquiry, the issue is ripe for judgment as a matter of law.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (Fed.Cir.2005). “In order to prove that a claim is anticipated under 35 U.S.C. § 102(b), defendants must present clear and convincing evidence that a single prior art reference discloses, either expressly or inherently, each limitation of the claim.” In re Cruciferous Sprout Litigation (“Cruciferous Sprout”), 301 F.3d 1343, 1349 (Fed.Cir.2002) (citations omitted).

“Prior art” under Section 102(b) includes a printed publication in which the invention was described that was published more than one year prior to the date of the earliest filing date of the patents at issue. 35 U.S.C. § 102(b). What is disclosed in a prior art reference when analyzed for anticipation is a question of fact that the Federal Circuit reviews for clear error. See, Tegal Corp. v. Tokyo Electron America, Inc., 257 F.3d 1331, 1345-46 (Fed.Cir.2001), cert. denied, 535 U.S. 927, 122 S.Ct. 1297, 152 L.Ed.2d 209 (2002).

“A prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it.” Cruciferous Sprout, 301 F.3d at 1349. “[I]f the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” Id. (citing MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed.Cir.1999)).

Claim 4 of the '904 patent recites: “[t]he object of claim 1, further including a frame retaining sleeve for retaining the frame member, the frame retaining sleeve attached to the material.” Minassian Opp’n Decl., Ex. 1 ('904 patent) at 17. Defendants argue that the '380 patent anticipates the “frame retaining sleeve” by describing “a flexible fabric sheet 18 attached to a flexible frame 20.” Id., Ex. 2 ('380 patent) at 24. Additionally, it appears that defendants contend that the '380 patent anticipates the “frame retaining sleeve” and the “attachment mechanism ... for coupling the panel to the pole” by disclosing “loop 24a.” Id. at 19, 25.

The application for the '380 patent, entitled “Collapsible Sunshade Awning,” was filed on November 30, 1995. Minassian Opp’n Decl., Ex. 2 ('380 patent) at 18. It lists Richard Landy as the inventor, and Auto-Shade, LLC as the assignee. Id. On March 18, 1997, the PTO issued the '380 patent. Id.

The '380 patent discloses a collapsible awning structure that is designed to be temporarily attached to another structure. Id. at 24 (“An awning is disclosed which is removable and collapsible for easy storage and is also capable of being attached to many surfaces.”). The '380 patent requires, inter alia, “a flexible frame forming at least one collapsible closed lope” and “a flexible sheet disposed upon the frame to define a central region.” Id. at 27 (claim 1 of the '380 patent). The specification states that the flexible frame is constructed by taking a “spring-like metal or plastic material that can be readily twisted and folded without breaking,” and bending it to form a closed loop, which loop is ultimately joined together. Id. The “flexible fabric sheet,” which is “disposed upon the frame,” may be constructed from a thin sheet of woven material that is flexible and strong, such as “thin plastic” or “reinforced paper.” Id. at 24. The “flexible frame [is] covered with [the] ... flexible material and is supported by a structure.” Id. The collapsible awning is attached to surfaces such as buildings and windows through the use of fasteners such as suction cups or magnets. Id. Specifically, “loops” created by doubling over material to make an opening are attached to the awning covering. Id. The loop is then connected to a rod by slipping the hook end of the rod through the opening of the loop. Id. at 24-25. The other end of the rod contains a fastener, such as a suction cup, which is then used to attach the collapsible awning to some other structure. Id. at 25.

The Court finds that there is a disputed issue of fact as to whether Figure 1 of the '380 patent discloses a frame retaining sleeve as required by claim 4 of the '904 patent. While the '380 patent discloses a flexible frame that is covered by a flexible fabric, it is not clear how, or even if, the flexible frame is wholly enclosed within the fabric material. Additionally, the Court finds that defendants have not met their burden of showing that “loop 22a,” disclosed in the prior art '380 patent, anticipates claim 6 of the '904 patent. Notwithstanding defendants’ assertion that “a sleeve is nothing more than a long loop,” the Court finds that “loop 22a” is not a structure used to cover another structure. Defs.’ MSJ of Invalidity at 10. Accordingly, “loop 22a” is not a sleeve, but instead an opening formed by doubling over fabric into which opening the hook end of a rod is inserted. Based on the foregoing, the Court concludes that defendants have not shown, by clear and convincing proof, that Figure 1 or “loop 22a” anticipate claim 4 and 6, respectively, of plaintiffs '904 patent.

b. OBVIOUSNESS

A patent is considered obvious if “the differences between it and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103(a). In KSR Int’l Co. v. Teleflex Inc., — U.S. -, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007), the United States Supreme Court explained that “the principal reason for declining to allow patents for what is obvious” is that a “patent for a combination which only unites old elements with no change in their respective functions ... obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Id. at 1739 (quoting Great Atlantic & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950)).

To determine obviousness, a court must examine the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966):(1) the scope and the content of the prior art; (2) the differences between the claims at issue and the prior art; (3) the level of ordinary skill in the art; and (4) the objective evidence of nonobviousness. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1320 (Fed.Cir.2004) (citing Graham, 383 U.S. at 17-18, 86 S.Ct. 684); KSR Int’l Co., 127 S.Ct. at 1734. “While the sequence of these questions might be reordered in any particular case, the factors continue to define the inquiry that controls. If a court ... conducts this analysis and concludes the claimed subject matter was obvious, the claim is invalid under § 103.” KSR Int’l Co., 127 S.Ct. at 1734. Additionally, the Federal Circuit has also required a party seeking to invalidate a patent for obviousness to establish “some teaching, suggestion, or motivation to combine the [prior art] references” (the “TSM test”). In re Rouffet, 149 F.3d 1350, 1355 (Fed.Cir.1998).

In KSR, the Supreme Court criticized the Federal Circuit’s rigid application of the TSM test. The Court noted that while the TSM test “captured a helpful insight,” “[t]he obviousness analysis cannot be confined by a formalistic conception of the words, teaching, suggestion, and motivation.” KSR Int’l Co., 127 S.Ct. at 1741. The Court cautioned courts to avoid a “rigid approach” in determining whether an invention would have been obvious to a person skilled in the art. Id. The Supreme Court explained that “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would.” Id. Courts should therefore value “common sense” over “[r]igid preventative rules” in addressing the question of obviousness. Id. at 1742-43. Still, “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Id. “A reason for the combination is still an important consideration, even though it need not be a rigid formula.” Lucent Techs., Inc. v. Gateway, Inc., 509 F.Supp.2d 912, 933 (S.D.Cal.2007).

When determining obviousness, “neither the particular motivation nor the avowed purpose of the patentee controls.” KSR Int’l Co., 127 S.Ct. at 1741-42. Instead, courts should determine whether the “objective reach of the claim” encompasses obvious subject matter. Id. at 1742. This may include “noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims.” Id. “[T]he results of ordinary innovation are not the subject of exclusive rights under the patent laws.” Id. at 1746. However, courts must avoid “falling prey to hindsight bias,” “ex post reasoning,” and “[r]igid preventative rules that deny factfinders recourse to common sense.” Id. at 1742-43. Furthermore, “when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.” Id. at 1740.

Defendants assert that prior art references render claim 4 and 6 of the '904 patent obvious. Specifically, defendants assert that the prior art discloses ‘“a panel having a continuous frame member ... and a material covering portions’ thereof, wherein the panel is collapsible ‘by twisting and folding to form a plurality of concentric rings’ and comprising ‘a pole coupled to the panel.’ ” Defs.’ MSJ of Invalidity at 17 (footnotes omitted) (citing Patel Deck, Ex. H) (U.S. Patent No. 4,709,928); Ex. I (U.S. Patent No. 4,815,-784); Ex. J (U.S. Patent No. 5,024,262; Ex. B ('380 Patent)).

According to defendants, there are no differences between this prior art and the claims at issue here.

Defendants further assert that there is no “dispute as to the level of ordinary skill in the art.” Defs.’ MSJ of Invalidity at 17. According to defendants, because “little technical explanation” is needed, “[c]om-mon sense, if nothing else, would have allowed at least a child, much less an adult, ... to make such an association.” Id.

Finally, defendants argue that claims 4 and 6 are obvious in light of the prior art, and that none of the claims produce a “surprising result.” Id. at 20.

Plaintiff responds that there is a factual dispute as to the differences between the prior art and the claimed subject matter. First, plaintiff asserts that the '256 patent and the '372 patent lack a continuous frame member as required by the '904 patent. Second, plaintiff asserts that the '725 patent cannot be transform