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UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF CALIFORNIA

----oo0oo----

VINOO JAIN,

NO. CIV. S-04-0889 FCD PAN

Plaintiff,

v. MEMORANDUM AND ORDER

TRIMAS CORPORATION,

Defendant.

----oo0oo----

This matter is before the court on defendant’s motion for

summary judgment of non-infringement. For the reasons set forth

below, defendant’s motions are GRANTED. 

BACKGROUND

On May 5, 2004, plaintiff Vinoo Jain (“Jain”) sued defendant

TriMas Corporation (“TriMas”) alleging patent infringement of

Patent. No. 6,390,343 (“the ‘343 patent”). ((Pl.’s Response to

Def.’s Stmt. of Undisputed Material Facts (“UMF”), filed Oct. 13,

2005, ¶ 1). The ‘343 patent claims a cargo carrier mechanism,

which is adapted to be connected to the hitch of a vehicle. 

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(Pl’s Opp’n to Def’s Mot., filed Oct 14, 2005, at 7; UMF ¶ 2). 

Plaintiff contends that defendant’s Draw-Tite Product No. 6502

(“6502 carrier”) infringes upon the ‘343 patent either through

literal infringement or infringement by equivalence. Plaintiff

further contends that defendant is liable for inducement of

infringement. 

The ‘343 patent contains three claims that are at the heart

of plaintiff’s allegations of infringement. Claim 1 of the ‘343

patent recites that the mechanism has a “connector further

comprising a third plate and a spaced fourth plate.” (UMF ¶ 5). 

Claim 1 of the ‘343 patent recites that the bases member “further

includ[es] a first stop preventing rotation of said platform in

one direction of rotation, and a second stop for preventing

rotation of said platform in another direction of rotation. (UMF

¶ 11). Finally, the ‘343 patent recites that “the platform

further comprises at least one post (71) extending outwardly

therefrom the pose being removably held to the platform.” (UMF ¶

14). 

Defendant filed this motion for summary judgment of noninfringement on September 7, 2005. Plaintiff opposes this

motion. Plaintiff submitted an opposition, which included a

declaration of plaintiff and inventor Jain with supporting

documents attached as exhibits. Defendants move to strike the

declaration because it contends that it is an attempt by

plaintiff to offer expert testimony without having previously

disclosed himself as an expert. (Def.’s Mot. to Strike, filed

Oct. 27, 2005, at 1). Defendants also move to strike the

exhibits attached to the declaration because none of the exhibits

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were produced to defendant during discovery. (Id. at 1-2). 

STANDARD

The Federal Rules of Civil Procedure provide for summary

adjudication when “the pleadings, depositions, answers to

interrogatories, and admissions on file, together with

affidavits, if any, show that there is no genuine issue as to any

material fact and that the moving party is entitled to a judgment

as a matter of law.” Fed. R. Civ. P. 56(c). One of the

principal purposes of the rule is to dispose of factually

unsupported claims or defenses. Celotex Corp. v. Catrett, 477

U.S. 317, 325, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986).

In considering a motion for summary judgment, the court must

examine all the evidence in the light most favorable to the

non-moving party. United States v. Diebold, Inc., 369 U.S. 654,

655, 82 S. Ct. 993, 8 L. Ed. 2d 176 (1962). If the moving party

does not bear the burden of proof at trial, he or she may

discharge his burden of showing that no genuine issue of material

fact remains by demonstrating that “there is an absence of

evidence to support the non-moving party’s case.” Celotex, 477

U.S. at 325. Once the moving party meets the requirements of

Rule 56 by showing there is an absence of evidence to support the

non-moving party’s case, the burden shifts to the party resisting

the motion, who “must set forth specific facts showing that there

is a genuine issue for trial.” Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 256, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986).

Genuine factual issues must exist that “can be resolved only by a

finder of fact, because they may reasonably be resolved in favor

of either party.” Id. at 250. In judging evidence at the

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summary judgment stage, the court does not make credibility

determinations or weigh conflicting evidence. See T.W. Elec. v.

Pacific Elec. Contractors Ass’n, 809 F.2d 626, 630-31 (9th Cir.

1987) (citing Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio

Corp., 475 U.S. 574, 587, 106 S. Ct. 1348, 89 L. Ed. 2d 538

(1986)). The evidence presented by the parties must be

admissible. Fed. R. Civ. P. 56(e). Conclusory, speculative

testimony in affidavits and moving papers is insufficient to

raise genuine issues of fact and defeat summary judgment. See

Falls Riverway Realty, Inc. v. City of Niagara Falls, 754 F.2d

49, 57 (2d Cir. 1985); Thornhill Publ’g Co., Inc. v. GTE Corp.,

594 F.2d 730, 738 (9th Cir. 1979).

ANALYSIS

A. Motion to Strike

Defendant moves to strike plaintiff’s declaration as well as

the exhibits attached thereto on the grounds that plaintiff did

not disclose himself as an expert nor did plaintiff disclose any

of the attached exhibits prior to filing the declaration and

exhibits with his opposition to defendant’s motion for summary

judgment. (Def.’s Mot. to Strike). Plaintiff argues that the

declaration should not be excluded because the statements are

based upon personal factual knowledge and are not expert

testimony. (Pl.’s Opp’n to Def.’s Mot. to Strike, filed Nov. 14,

2005, at 1-3). Plaintiff further argues that the exhibits

attached to the Jain declaration should not be striken because he

obtained then in preparation for his response to defendant’s

motion for summary judgment. (Id. at 4-5). 

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Regarding the declaration, this court finds that the

opinions offered by the plaintiff in his declaration are expert

opinions. Plaintiff states that he is familiar with the ‘343

patent as well as defendant’s claims of non-infringement. 

(Declaration of Vinoo Jain (“Jain Decl.”), filed Oct. 13, 2005, ¶

3). Plaintiff then proceeds to state that defendant’s theory of

claim interpretation is incorrect and to explain the common usage

in the industry. (Id. ¶ 4). Finally, plaintiff concludes that,

after comparing defendant’s 6502 carrier to the ‘343 patent,

defendant’s carrier contains each and every element of at least

certain claims of the ‘343 patent. (Id. ¶¶ 12-13). 

Testimony that relates to “scientific, technical, or other

specialized knowledge” is expert testimony. See Fed. R. Evid.

702; Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 141

(1999). Under Rule 26(a)(2) of the Federal Rules of Civil

Procedure, “a party shall disclose to other parties the identity

of any person” who may be used to present expert evidence at

trial. “These disclosures shall be made at the times and in the

sequence directed by the court.” Id. Although plaintiff is the

inventor and has personal knowledge of the ‘343 patent, the

statements made in his declaration are still considered expert

testimony because they pertain to topics requiring scientific,

technical, and other special knowledge; an inventor is not

subject to any special exception to Rule 26. See Vitronics Corp.

v. Conceptronic, Inc., 90 F.3d 1576, 1585 (Fed. Cir. 1996) (“But

testimony on technology is far different from other expert

testimony, whether it be of an attorney, a technical expert, or

the inventor . . . .”). 

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Plaintiff failed to timely disclose himself as an expert, as

required under Rule 26(a)(2) and this court’s October 25, 2004

Scheduling Order. This court’s order set the deadline for expert

disclosure for April 8, 2005 and the deadline for expert reports

and materials disclosure for April 25, 2005. It is precisely

these types of eleventh-hour revelations by an expert that Rule

26 was designed to prevent. Pickern v. Pier 1 Imps., Inc., 339

F. Supp. 2d 1081, 1089 (E.D. Cal. 2004); see Official Comment to

1993 Amendments (Rule 26(a)(2) “requires that persons retained .

. . to provide expert testimony . . . must prepare a detailed and

complete written report, stating the testimony the witness is

expected to present during direct examination and the reasons

therefor.”). Plaintiff’s declaration was disclosed well after

defendants filed their motion for summary judgment and less than

two months before the deadline for filing dispositive motions,

leaving defendants with inadequate time to respond to the new

allegations contained therein. Pursuant to Rule 37(c),

a party that without substantial justification fails to

disclose information required by 26(a) . . . is not,

unless such failure is harmless, permitted to use as

evidence at a trial, at a hearing, or on a motion any

witness or information not so disclosed.

Plaintiff has not presented any justification for the

failure to disclose himself as an expert witness. Further, the

failure to disclose plaintiff as an expert is not harmless

because plaintiff’s declaration and the exhibits attached thereto

is the only evidence of any disputed issues between the parties. 

For these reasons, the court grants defendant’s motion to strike

the entirety of plaintiff’s declaration. See Pickern, 339 F.

Supp. 2d at 1089.

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Regarding the exhibits attached to the declaration,

plaintiff failed to disclose any of the documents to defendant

prior to filing his opposition motion. This failure occurred in

the face of defendant’s document requests and interrogatories

touching upon the subject matter found in plaintiff’s exhibits. 

(Def.’s Mot. to Strike, Exhs. A-B). Plaintiff’s explanation for

this failure to disclose is that “the documents complained of

were not available until the Plaintiff’s Response to the

Defendant’s Motion for Summary Judgment was submitted and which

included those documents.” (Pl.’s Opp’n to Def.’s Mot. to Strike

at 4). Plaintiff gives no explanation as to why these documents

were not previously available. Further, plaintiff provides no

explanation as to why one of the exhibits is dated June 30, 2005,

but was not turned over to defendant until Oct. 13, 2005. (See

Jain Decl., Exh. D). Because plaintiff has failed to establish a

substantial justification for his failure to disclose the

documents to defendant, and because the failure to disclose is

not harmless because it is the only evidence of disputed issues

between the parties, pursuant to Rule 37(c), defendant’s motion

to strike the exhibits attached to the Jain declaration is

GRANTED. 

B. Claim Interpretation

Determining whether a patent has been infringed requires a

two step analysis of (1) claim construction and (2) comparison of

the properly construed claims to the accused product. See

Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.

Cir. 1995). Construction of the patent terms is a question of

law determined by the court. Id.; Vitronics, 90 F.3d at 1582. 

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It is well settled that the court must first look to the

intrinsic evidence of the patent to determine the scope of the

claims. Markman, 52 F.3d at 979; Vitronics, 90 F.3d at 1582. 

The intrinsic evidence includes the words of the claims

themselves, the specification, and the prosecution history, if in

evidence. Id. In most cases, an analysis of the intrinsic

evidence alone will resolve any ambiguity in a disputed term, and

under those circumstances, consideration of extrinsic evidence

such as expert testimony is improper. Id.; Pall Corp. v. Micron

Separations, Inc., 66 F.3d 1211, 1216 (Fed. Cir. 1995).

In this case, three claim terms are disputed by the parties;

the terms (1) plate; (2) stop; and (3) post. The court will

address the interpretation of each term in turn.

1. Third Plate and Spaced Fourth Plate

One disputed issue between defendant and plaintiff is

whether defendant’s square connector on the 6502 carrier used to

attach the carrier to the base member is actually a third and

fourth spaced plate. Defendant argues that plaintiff’s claim

should be interpreted as describing third and fourth plates as a

pair of distinct flat plates attached to a square connector. 

Plaintiff responds by stating that the meaning of the term

“plate” is clear. However, plaintiff’s assertion is that a

square connector is actually a configuration of four plates, and

therefore, defendant’s square sided connector has third and

fourth plates as claimed in the ‘343 patent. (UMF ¶ 9). 

Claim 1 of the ‘343 patent states that the connector linked

to the platform comprises a “third plate and spaced fourth

plate.” (UMF ¶ 5). The plain language of the this claim offers

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little guidance for claim interpretation regarding the meaning of

the term “plate.” 

However, the prosecution history, offered as exhibits by

both plaintiff and defendant, sheds significant light on the

meaning of the term “plate” in the ‘343 patent. The Examiner

rejected the originally filed claim as invalid and anticipated by

the Mehls patent. (UMF ¶ 3). The Mehls patent consists of a

square connector that locks into two distinct flat plates. 

(Pl.’s Exh. 3 at Fig. 4). Plaintiff amended his claims to

overcome the Mehls patent by adding the limitation “a third plate

and spaced fourth plate.” (UMF ¶ 5). Therefore, the third and

fourth plate cannot be interpreted as sides of a square sided

connector because that interpretation would render the ‘343

patent invalid as being anticipated by the Mehls patent. See ACS

Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed.

Cir. 1984) (holding that patent claims “should be so construed,

if possible, as to sustain their validity”). Thus, the third and

fourth plates are a pair of distinct flat plates attached to a

square connector.

2. Second Stop for Preventing Rotation of Said Platform

Claim 1 of the ‘343 patent also recites that the base member

includes “a first stop preventing rotation of said platform in

one direction of rotation, and a second stop for preventing

rotation of said platform in another direction of rotation.” 

(Pl.’s Exh. 1). In this case, the plain language of the claim is

clear. The claim specifies that there are two stops located on

the base member that prevent the rotation of the platform in two

separate directions.

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3. At Least One Post Removably Held to Said Platform

Claim 4 of the ‘343 patent recites that the vehicle hitch

contains a platform that has “at least one post being removably

held to said platform.” (Pl.’s Exh. 1). As with the stops in

claim 1, the meaning of this claim term is clear from the

language in the claim. The platform of the hitch contains at

least one post that is attached to the hitch, but capable of

being removed.

C. Infringement

1. Literal Infringement

Plaintiff contends that defendant’s 6502 carrier literally

infringes upon the ‘343 patent. Literal infringement requires

that the accused device contains each and every element of the

patent. See Key Mfg. Group, Inc. v. Microdot, Inc., 925 F.2d

1444, 1447 (Fed. Cir. 1991). If even one element of a patent’s

claim is missing from the accused product, then there can be no

infringement as a matter of law. London v. Carson Pirie Scott &

Co., 946 F.2d 1534, 1538-39 (Fed Cir. 1991).

In this case, defendant’s 6502 carrier contains a square

sided connector which locks directly into two flat plates. (UMF

¶ 9). Because this court has found that the sides of a square

connector are not plates, defendant’s carrier does not infringe

upon the ‘343 patent that claims third and fourth plates. 

Further, defendant’s 6502 carrier does not have a second stop on

the base member as required by claim 1 of the ‘343 patent. 

(Pl.’s Exh. 7). Rather, as plaintiff admits in his deposition,

the 6502 carrier has one stop on the base member and one stop on

the tray or platform. (Deposition of Vinoo Jain (“Jain Dep.”),

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Plaintiff contends that the 6502 carrier can be 1

attached to the Draw-Tite rail kit number 6955. (UMF ¶ 18). 

However, plaintiff offers no evidence to support this contention. 

Defendants point to evidence that the Rail Kit is only approved

for use with Draw-Tite Carrier product nos. 6500 and 6501,

neither of which are implicated in this action. (UMF ¶ 21). 

Plaintiff points to exhibits 5 and 9 in support of his 2

position that the 6502 carrier includes such stops. However, the

figures of defendant’s carrier does not support plaintiff’s

contention that there are two stops on the base member. Further,

even if 

11

Def.’s Exh. 9, at 80). Finally, the 6502 carrier does not

include any removably held posts as required by claim 4 of the

‘343 patent. Plaintiff offers no evidence to the contrary to 1

raise a triable issue of infringement. Therefore, with respect 2

to plaintiff’s claims of literal infringement, defendant’s motion

for summary judgment of non-infringement is GRANTED. 

2. Doctrine of Equivalents

Plaintiff contends that, even if the 6502 carrier does not

literally infringe upon the ‘343 patent, defendant is still

liable for infringement under the doctrine of equivalents. Under

the doctrine of equivalents, all claims must be “met literally or

equivalently for infringement to lie.” Odetics, Inc. v. Storage

Tech. Corp., 185 F.3d 1259, 1268 (Fed. Cir. 1999). “[T]he

doctrine of equivalents must be applied to the individual

elements of the claim, not to the invention as a whole.” WarnerJenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 29

(1997). 

Plaintiff contends that the square stock connector of the

6502 carrier is equivalent to the third and fourth plates recited

in the ‘343 patent. However, where a patentee’s claim has been

narrowed during prosecution history, the patentee may be estopped

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from asserting the doctrine of equivalents. Warner-Jenkinson,

520 U.S. at 33. Where the record does not reveal the reason for

narrowing a claim, the burden is placed on the patentee “to

establish the reason for an amendment required during patent

prosecution.” Id.

When . . . the patentee originally claimed the subject

matter alleged to infringe but then narrowed the claim

in response to a rejections, he may not argue that the

surrendered territory comprised unforeseen subject

matter that should be deemed equivalent to the literal

claims of the issued patent.

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535

U.S. 722, 733-34 (2002). The patentee also bears “the burden of

showing that the amendment does not surrender the particular

equivalent in question” where the amendment cannot reasonably be

viewed as surrendering a particular equivalent. Id. at 740. 

In this case, the record of the prosecution history of the

‘343 patent reveals that the amendment of claim 1 to include “a

third plate and a spaced fourth plate” was made to overcome the

Mehl’s patent, which included a square connector and two distinct

flat plates. (UMF ¶ 5). Claim 1 was initially rejected under 35

U.S.C. § 102(b) as being anticipated by the Mehls patent, and the

subsequent amendment was made to overcome this prior art

rejection. (Pl.’s Exh. 2; Def.’s Exh. 4; UMF ¶ 5). The

configuration of the square connector and two plates in the Mehls

patent is the same configuration as defendant’s 6502 carrier. 

(UMF No. 9; compare Def’s Exh. 3, at Fig. 4 with Def.’s Exh. 6a,

6b, and 7). The equivalent asserted by plaintiff in this action

is the very equivalent that plaintiff surrendered during the

prosecution proceedings in order to overcome the Mehls patent. 

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Therefore, plaintiff is barred from asserting infringement by

equivalence regarding the 6502 carrier. See Exhibit Supply Co.

v. Ace Patents Corp., 315 U.S. 126, 136 (1942); Keystone Driller

Co. v. Northwest Engineering Corp., 294 U.S. 42, 48 (1935).

Plaintiff cannot assert an equivalence claim regarding the

four plates designated in the ‘343 patent due to prosecution

history estoppel. Thus, with respect to plaintiff’s claims of

infringement by equivalence, defendant’s motion for summary

judgment of non-infringement is GRANTED. 

3. Inducement of Infringement

Finally, plaintiff contends that defendant is liable for

inducement of infringement. In order to state a claim for

inducement of infringement, plaintiff must show (1) direct

infringement of the patent; and (2) that the defendant knowingly

induced infringement and possessed specific intent to encourage

another’s infringement. 3M Co. v. Chemque, Inc., 303 F.3d 1294,

1304-05 (Fed. Cir. 2002). 

In this case, plaintiff has produced no evidence to support

his claim that defendant induced infringement. Plaintiff has

produced no evidence of direct infringement. Further, plaintiff

has presented no evidence of an intent or knowledge by defendant

to infringe or induce infringement. Because plaintiff has

presented no evidence to establish a triable issue of fact with

respect to the inducement of infringement claim, defendant’s

motion for summary judgment of non-infringement is GRANTED.

/////

/////

/////

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CONCLUSION

For the foregoing reasons, defendant’s motion for summary

judgment of non-infringement is GRANTED. 

IT IS SO ORDERED.

DATED: December 15, 2005

/s/ Frank C. Damrell Jr. 

FRANK C. DAMRELL, Jr.

UNITED STATES DISTRICT JUDGE

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