Half-Zipped: Judge Chen Grants Summary Judgment of Non-Obviousness and Partial Summary Judgment of Non-Infringement on Garment Zipper Patent Claims | Patterson Belknap Webb & Tyler LLP
United States District Judge Pamela K. Chen (E.D.N.Y.) recently granted Plaintiff Shaf International, Inc. (“Shaf”)’s motion for summary judgment of validity of U.S. Patent No. 10,433,598 (the “’598 Patent”) and Defendant First Manufacturing Co., Inc. (“FMC”)’s motion for summary judgment of non-infringement for claims 1-10 of the ’598 Patent. Slip Op. at 1. The Court also denied Shaf’s motion for summary judgment of infringement and FMC’s motions for summary judgment of invalidity and non-infringement of claims 11-18 of the ’598 Patent. Id. at 1-2.
Shaf “designs, manufactures, and sells leather goods, including jackets and vests.” Id. at 2. It owns the ’598 Patent, which is directed to garments having a liner with “an opening, such as a zipper, that makes it easy to access the garment’s fabric . . . without detaching the liner from the outer layer.” Id. FMC manufactures and sells leather goods including motorcycle vests “that have ‘easy access panels’ that permit access to the inner portion of the leather on the back panel of the vest.” Id. at 6.
Prior to deciding summary judgment motions, the Court construed the term “coupled” as used in the three asserted independent claims. Id. at 12-13. Shaf argued that “coupled to” “does not limit the claim language to a direct attachment,” while FMC argued that “coupled” “should not be defined to include ‘joinder via an indirect link’” but instead “should be construed to mean ‘directly attached.’” Id. at 12. The Court agreed with FMC, noting that “claim differentiation require[d] that the Court” distinguish “coupled” from “operably coupled” as they were used in the patent. Id.
In its motion for summary judgement of invalidity, FMC argued that “the only difference between the prior art . . . and the Patent . . . is the placement of the zipper,” which “is merely a nonfunctional design choice that ‘a person of ordinary skill’ could have made.” Id. at 15. The Court found that there were “no questions of material fact as to any of the underlying factual considerations—i.e., the content of prior art, the scope of the patent, and the POSA definition—” making summary judgement appropriate. Id. at 16. However, the Court denied FMC’s motion, because of Shaf’s expert’s uncontroverted testimony “that zipper placement was not a design choice, but instead was a ‘functional’ choice.” Id.
The Court then turned to the cross-motions on infringement and found that “[t]here is a question of material fact as to whether the Accused Products infringe on Patent claims 11 through 18, but not as to claims 1 through 10.” Id. at 18. Specifically, the Court found that “no reasonable jury could find that the Accused Products contain a fastener that is coupled to the outer layer” as required by “claim 1, as well as claims 2 through 10 which depend thereon.” Id. at 18. As a result, it granted “summary judgment of noninfringement . . . as to claims 1 through 10.”
The case is Shaf Int’l, Inc. v. First Mfg. Co., Inc., No. 20-cv-1242 (PKC) (E.D.N.Y. Sept. 26, 2024).
