Simpson Strong-Tie Company, Inc v. Oz-Post International, LLC

Background

The case concerns OZCO’s United States Design Patent No. D798,701 and United States Patent No. 9,957,998. OZCO alleged that Simpson’s Hex Head washer and Structural Wood Screw, when used together, infringed those patents. The parties filed cross-motions for partial summary judgment, and OZCO moved to strike portions of an expert report by Fred Smith.

Infringement of the ’998 Utility Patent

Both parties sought summary judgment concerning infringement. Simpson argued that its products did not directly or indirectly infringe the asserted claims. OZCO sought judgment that the products infringed claims 1, 2, 4, and 5; OZCO asserted infringement of claims 3 and 7 but did not seek summary judgment on those claims.

The court had previously construed the patent’s “cap,” “screw,” and “washer/nut member” as separate components. The court held that this construction entitled Simpson to summary judgment of noninfringement on claims 3 and 7. Those dependent claims require an apparatus that further includes a screw, but OZCO’s theory treated the head of Simpson’s screw as both the cap and the screw. Because the claims require both elements, the screw head could not satisfy both roles.

The court rejected Simpson’s argument that the separate-components construction required noninfringement on claim 1. The screw is mentioned in claim 1 but is not itself an element of that claim; it becomes part of the claimed apparatus in later claims. The court therefore would not add to claim 1 a limitation found only in claims 3 and 7.

The court found material factual disputes about whether the screw head could meet the “closed cover” and “disposed within” requirements of the cap limitation. It therefore did not grant summary judgment to either side on that issue. The court also explained that indirect infringement requires proof of direct infringement, and concluded that OZCO’s indirect-infringement claims failed because direct infringement had not been proven.

Infringement of the D’701 Design Patent

Simpson sought summary judgment of noninfringement of the D’701 design patent. The court compared the patented and accused designs as a whole, using the perspective of an ordinary observer. It concluded that no reasonable juror could find the accused products substantially similar enough to cause a purchaser to believe that one was the patented design.

The court identified several differences, including the protruding shear tube, the screw shafts extending several inches, and the accused products’ somewhat softer and more curved appearance. It rejected OZCO’s argument that the screw and shear tube should be disregarded as merely functional features because those features were important to OZCO’s infringement theory and materially affected the products’ overall appearance. Simpson was therefore granted summary judgment of noninfringement as to the D’701 Patent.

Motion to Strike the Expert Report

OZCO moved to strike portions of Smith’s report under the Patent Local Rules, which require parties to disclose their infringement and invalidity theories early in the case. The court denied OZCO’s motion to strike Smith’s opinions concerning obviousness Combination 1, Combination 3, Combination 6, and anticipation based on the Sammy X-Press. The court found that Simpson’s disclosures gave OZCO sufficient notice of those theories. Smith could use the Jaffa patent as foundational or background material, but testimony going beyond those purposes would not be allowed.

Simpson withdrew several references and obviousness combinations, including combinations relying on Jaffa, Dodds, and Chen as primary references. Simpson also agreed to withdraw a Nylock and set-screw reference concerning the D’701 Patent. The court treated the motion to strike as moot as it related to the D’701 Patent because Simpson had already obtained summary judgment of noninfringement on that patent.

Invalidity Summary Judgment

OZCO moved for summary judgment on Simpson’s invalidity claims, arguing that Simpson lacked sufficient evidence without Smith’s report and lacked evidence that certain prior-art references were publicly available before the relevant priority dates. Because the court declined to strike the relevant portions of Smith’s report, it denied OZCO’s first argument. The court also found factual disputes about when the challenged prior-art references became publicly available and denied OZCO’s motion for summary judgment on invalidity.

Sealing and Disposition

The court granted Simpson’s request to redact portions of Exhibit 13 containing a customer list for the accused products. It denied as moot the remainder of OZCO’s motion to file materials under seal and ordered the entries at docket number 104 unsealed except for docket entry 104-29.

The order granted Simpson’s motion for summary judgment of noninfringement as to claims 3 and 7 of the ’998 Patent and as to the D’701 Patent. The court denied OZCO’s motion for summary judgment on invalidity and denied the specified portions of OZCO’s motion to strike, while treating the D’701-related portion as moot.