Probatter Sports, LLC v. Sports Tutor, Inc

Filing 439

ORDER: See attached memorandum of decision ruling on the parties' 276 , 298 cross-motions for partial summary judgment on plaintiff's infringement claims. For the reasons stated in the attached memorandum, the Court DENIES defendant's motion for partial summary judgment on plaintiff's infringement claims and GRANTS plaintiff's motion for summary judgment on its infringement claims. Signed by Judge Vanessa L. Bryant on 07/15/15. (Thomas, R.)

UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
PROBATTER SPORTS, LLC,
Plaintiff,
v.
SPORTS TUTOR, INC.,
Defendant.

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CIVIL ACTION NO.
3:05-cv-01975-VLB
JULY 15, 2015

MEMORANDUM OF DECISION DENYING DEFENDANT‘S MOTION FOR PARTIAL
SUMMARY JUDGMENT [276] AND GRANTING PLAINTIFF‘S MOTION FOR
PARTIAL SUMMARY JUDGMENT [298]
Plaintiff ProBatter Sports, LLC (―ProBatter‖) and defendant Sports Tutor,
Inc. (―Sports Tutor‖) cross-move for partial summary judgment on Probatter‘s
claims that Sport‘s Tutor‘s ball-throwing machine infringes on claims 1–12, 25–
27, and 31 of plaintiff‘s United States Patent Number 6,182,649 (―the ‗649 patent‖)
and claim 1 of plaintiff‘s United States Patent Number 6,546,924 (―the ‗924
patent‖). In two separate motions, defendant moved for summary judgment on
its affirmative defense of invalidity as to both patents and on plaintiff‘s
Connecticut Unfair Trade Practices Act claim. Those motions are the subject of
two other memoranda of decision and are not discussed here. For the reasons
stated below, the Court DENIES defendant‘s motion for partial summary judgment
on plaintiff‘s infringement claims and GRANTS plaintiff‘s motion for summary
judgment on its infringement claims.1

1

Probatter also moves for ―summary judgment that Sports Tutor‘s
infringement has been willful and wanton.‖ The Court cannot make such a ruling
without first resolving defendant‘s invalidity defense.
2
Plaintiff also asserts that defendant‘s argument does not foreclose the
1

I.

LEGAL STANDARD FOR A MOTION FOR SUMMARY JUDGMENT
Summary judgment should be granted ―if the movant shows that there is

no genuine dispute as to any material fact and the movant is entitled to judgment
as a matter of law.‖ Fed. R. Civ. P. 56(a). The moving party bears the burden of
proving that no genuine factual disputes exist. See Vivenzio v. City of Syracuse,
611 F.3d 98, 106 (2d Cir. 2010). ―In determining whether that burden has been
met, the court is required to resolve all ambiguities and credit all factual
inferences that could be drawn in favor of the party against whom summary
judgment is sought.‖ Id. (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255
(1986); Matsushita Electric Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587
(1986)). ―If there is any evidence in the record that could reasonably support a
jury's verdict for the nonmoving party, summary judgment must be denied.‖ Am.
Home Assurance Co. v. Hapag Lloyd Container Linie, GmbH, 446 F.3d 313, 315–16
(2d Cir. 2006) (internal quotation marks and citation omitted).
A party who opposes summary judgment ―cannot defeat the motion by
relying on the allegations in his pleading, or on conclusory statements, or on
mere assertions that affidavits supporting the motion are not credible.‖ Gottlieb
v. Cnty of Orange, 84 F.3d 511, 518 (2d Cir. 1996). ―At the summary judgment
stage of the proceeding, [the moving party is] required to present admissible
evidence in support of their allegations; allegations alone, without evidence to
back them up, are not sufficient.‖ Welch–Rubin v. Sandals Corp., No. 3:03-cv00481, 2004 U.S. Dist. LEXIS 22112, at *4 (D. Conn. Oct. 20, 2004) (citing Gottlieb,
84 F.3d at 518); see Martinez v. Conn. State Library, 817 F.Supp.2d 28, 37 (D.

2

Conn. 2011).

Where there is no evidence upon which a jury could properly

proceed to find a verdict for the party producing it and upon whom the onus of
proof is imposed, such as where the evidence offered consists of conclusory
assertions without further support in the record, summary judgment may lie.
Fincher v. Depository Trust & Clearance Co., 604 F.3d 712, 726–27 (2d Cir. 2010).
II.

DEFENDANT‘S SUMMARY JUDGMENT MOTION
Defendant raises only one argument in support of its summary judgment

motion: it does not infringe on the ‗649 patent claims because they require the
use of a programmable controller (defined as requiring relay ladder diagram
language) and defendant‘s machine does not use a programmable controller
(with relay ladder diagram language). ECF No. 277. Plaintiff opposes on the
ground that defendant cannot argue noninfringement because defendant did not
plead noninfringement as an affirmative defense and that a programmable
controller does not require the use of relay ladder diagram language.2 ECF No.
285.

The Court denies defendant‘s summary judgment motion because it is

procedurally improper and, in the alternative, because a programmable controller
does not require the use of relay ladder diagram language. Section II addresses
whether: (a) defendant‘s summary judgment motion is procedurally improper;
(b) defendant is barred from asserting noninfringment; and (c) a programmable
controller requires the use of relay ladder diagram language.
2

Plaintiff also asserts that defendant‘s argument does not foreclose the
possibility that defendant could be found liable for infringement under the
doctrine of equivalents or for infringement of claim 1 of the ‗924 patent. ECF No.
285 at 1 n.1, 14–19. The Court need not address these issues to resolve
defendant‘s summary judgment motion because defendant‘s only argument is
meritless. The issues are discussed in Section III.
3

A. Defendant‘s Faulty 56(a)(1) Statement
As an initial matter, defendant failed to comply with the requirements of
Local Rule 56. Local Rule 56 requires that each statement of material fact ―be
followed by a specific citation to (1) the affidavit of a witness competent to testify
as to the facts at trial and/or (2) evidence that would be admissible at trial.‖ D.
Conn. Local R. 56(a)(3). Defendant provides no citations in support of its fiveparagraph statement of material facts.

ECF No. 278.

Defendant‘s deficient

submission alone warrants the denial of summary judgment.

See Local Rule

56(a)(3) (―[F]ailure to provide specific citations to evidence in the record as
required by this Local Rule may result in . . . denying the motion for summary
judgment.‖); Tross v. Ritz Carlton Hotel Co., 928 F.Supp.2d 498, 503–04 (D. Conn.
2013) (―In this Circuit, a movant's failure to comply with a district court's relevant
local rules on a motion for summary judgment permits, but does not require, a
court to dispose of that motion.‖ (citing Tota v. Bentley, 379 F. App‘x 31, 32–22
(2d Cir. 2010)); Traylor v. Awwa, No. 3:11-cv-132, 2014 U.S. Dist. LEXIS 20002, at
*2 (D. Conn. Feb. 10, 2014) (denying plaintiff‘s motion for summary judgment
where plaintiff failed to ―present evidence showing that there is no genuine
dispute of material fact and that facts as to which there is no genuine dispute
show that he is entitled to judgment as a matter of law.‖).
B. Defendant‘s Failure to Raise NonInfringement as an Affirmative Defense
Before again weighing in on the definition of a programmable controller,
the Court addresses whether defendant may argue noninfringement.

In its

opposition, plaintiff argues that defendant waived any noninfringement defense

4

because defendant did not plead noninfringement as an affirmative defense. ECF
No. 285 at 6–9. Defendant replies that it sufficiently pleaded noninfringement by
denying infringement and, even assuming error, leave to amend should be
granted because the error was harmless. ECF No. 290 at 2–5.
The Patent Act identifies ―noninfringement‖ as a ―defense‖ that ―shall be
pleaded.‖ 35 U.S.C. § 282(b)(1). Citing to this statute, the Federal Circuit has
noted, but never held, that noninfringement is an affirmative defense.
Monsanto Co. v. Scruggs, 459 F.3d 1328, 1334 (Fed. Cir. 2006).

See

Ordinarily, a

general denial does not sufficiently plead an affirmative defense, and ―[f]ailure to
plead an affirmative defense in the answer results in the waiver of that defense
and its exclusion from the case.‖ Satchell v. Dilworth, 745 F.2d 781, 784 (2d Cir.
1984) (internal quotation marks omitted). Patent law, however, presents a unique
application of the rule permitting waiver of nonasserted affirmative defenses:
―The distinction between negative defenses in the form of Rule 8(b)
denials and affirmative defenses pursuant to Rule 8(c) normally is
not difficult, for the former includes everything which controverts the
plaintiff‘s prima facie case whereas the latter raises matters outside
the case, those which are in the nature of an avoidance. It appears
that there is but one exception at the present time to the general rule
as thus stated, and that exception is in the field of patent litigation.‖
HORWITZ & HORWITZ, PATENT LITIGATION: PROCEDURE AND TACTICS § 3.03[2][b].
Thus, it is unclear whether a patent defendant adequately pleads
noninfringement through denial.

Id. (―The degree of particularity required by

Section 282 is not clear. The defense of noninfringement is mentioned only in
Category (1), and the use of this or an equivalent term in the answer should be
sufficient compliance with the statute); see 5A-18 CHISUM

5

ON

PATENTS § 18.06

(―[A]n accused infringer meets this pleading burden with either a denial of a
patentee's

infringement

noninfringement.‖).

allegation

or

by

a

positive

assertion

of

It is also unclear whether, even assuming that denial is

insufficient, waiver would be warranted. But see Para Gear Equip. Co. v. Square
One, N.D. Ill. 04-cv-601, doc. 236 (Min. Entry ruling that party waived any
affirmative defense of noninfringement by denying rather than affirmatively
pleading noninfringement). Other courts have declined to strike a pleading as
redundant because it both denied infringement and pleaded noninfringement as a
defense. See, e.g., Trading Technologies Int’l, Inc. v. BCG Partners, Inc., 2011 WL
3946581, at *5 (N.D. Ill. Sept. 2, 2011). However, striking a pleading as redundant
is categorically different from waiver.

Cf. Coach Inc. v. Kmart Corps., 756

F.Supp.2d 421 (S.D.N.Y. 2010) (no prejudicial harm results from redundancy).
Here,

rather

than

address

whether

defendant

adequately pleaded

noninfringement, the Court granted defendant leave to amend. ECF No. 428. The
Court now rules that the application of waiver is not warranted. The purpose of
pleading is to provide notice. In re Trilegiant Corp., Inc., 11 F.Supp.3d 82, 131 (D.
Conn. 2014) (―The purpose of the pleadings is to put the [parties] on notice.‖).
Waiver operates to prevent unfair surprise due to lack of notice.

Creative

Consumer Concepts, Inc. v. Kreisler, 563 F.3d 1070, 1076 (10th Cir. 2009)
(―Because [defendant] faced no unfair surprise, [plaintiff‘s] technical failure to
comply with Rule 8(c) is not fatal to this case.‖). In this case, plaintiff cannot
argue that defendant‘s assertion of noninfringment took plaintiff by surprise:
defendant denied infringement in its amended answer and has maintained its

6

defense of noninfringement throughout the litigation. Applying waiver in these
circumstances would be an unduly harsh remedy for failing to reiterate the same
thing twice – particularly in light of the fact that it is not even clear whether
defendant was required to do so. Cf. Amron v. Morgan Stanley Inv. Advisors Inc.,
464 F.3d 338, 343 (2d Cir. 2006) (―The fundamental command of the Federal Rules
of Civil Procedure is ‗never to exalt form over substance.‘‖ (quotation omitted)).
Accordingly, the Court declines to rule that this defense has been waived.
C. Defendant‘s NonInfringement Argument
Defendant argues that, according to this Court‘s claim construction
opinion, all of the relevant claims in the ‗649 patent require a programmable
controller and that a programmable controller requires the use the relay ladder
diagram programming language. ECF No. 277 at 3–5. Defendant concludes that
it does not infringe on any of the claims in the ‗649 patent because its device
does not use relay ladder diagram language. Id. at 5. Defendant‘s statement of
material facts establishes only that its machine does not use a relay ladder
diagram language. ECF No. 278 at ¶ 4. Plaintiff‘s counterstatement of material
facts admits that defendant‘s device does not utilize relay ladder diagram
language, ECF No. 286 at ¶ 4, but plaintiff‘s memorandum in opposition argues
that a programmable controller does not require the use of relay ladder diagram
language, ECF No. 285 at 11-12. Accordingly, to determine whether defendant is
entitled to summary judgment, the Court need only address whether a
programmable controller necessitates the use of relay ladder diagram language.
This is a question of law. See Markman v. Westview Instruments, Inc., 52 F.3d

7

967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
The Court begins by noting that, despite its March 31, 2014 ruling on claim
construction, the parties continue to dispute the definition of programmable
controller. In the claim construction ruling, the Court adopted the parties‘ agreed
upon definition, which reads as follows:
A control device, normally used in industrial control applications,
that employs the hardware architecture of a computer and a relay
ladder diagram language. Also known as a programmable logic
controller.
Programmable controllers . . . Electronic computers that are used for
the control of machines and manufacturing processes through the
implementation of specific functions such as logic, sequencing,
timing, counting, and arithmetic. They are also known as
programmable logic controllers (PLCs).
ECF No. 274 at 10. Despite having spent a great amount of resources, both those
of the Court and of the parties, the parties now dispute the meaning and scope of
this definition, in an apparent attempt to reopen claim construction with regard to
the definition of programmable controller.
Defendant argues that, under this Court‘s definition of programmable
controller, a device must utilize relay ladder diagram language. ECF No. 277 at 45. Defendant reasons that ―‗programmable controllers‘ are a distinct class of
devices‖ and that ―[programmable controllers] are distinguished from other
programmable electronic devices by, inter alia, the fact that they use a relay
ladder diagram language.‖ ECF No. 277 at 4. In support, defendant cites only the
Court‘s ruling on claim construction.

Id.

In its reply brief, defendant again

argues that ―[t]he Claim Construction Order clearly and unambiguously states
that a programmable controller employs a relay ladder diagram language.‖ ECF
8

No. 290 at 6 (internal quotation marks and alterations omitted). Defendant neither
acknowledges the definition‘s second paragraph nor provides the Court with any
guidance on how to interpret the relationship between the two paragraphs.
Plaintiff argues that the parties‘ agreed upon definition does not require the
use of relay ladder diagram language. ECF No. 285 at 11–12. Plaintiff reasons
that the agreed upon definition contains two separate definitions: the first
definition, which refers to the use of relay ladder diagram language, articulates
one type of programmable controller; the second definition, which is broader
than the first, does not require the use of relay ladder diagram language and
allows for different programming languages. Id. at 2–4. Plaintiff further argues
that the patent‘s preferred embodiment does not use relay ladder diagram
language, and, therefore, to read in such a requirement would exclude the
preferred embodiment from the scope of the claim. Id. at 11-12.
The Court agrees with plaintiff for several reasons.

First, as plaintiff

argues, construing programmable controller to require the use of relay ladder
diagram language would exclude the preferred embodiment from the scope of the
claim. The Federal Circuit has found that ―‗a claim interpretation that excludes a
preferred embodiment from the scope of the claim ‗is rarely, if ever, correct.‘‖ OnLine Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed.
Cir. 2004) (quoting Globetrotter Software, Inc. v. Elan Software Grp., Inc., 362 F.3d
1367, 1381 (Fed. Cir. 2004)). Here, the preferred embodiment would be excluded
by requiring the use of relay ladder diagram language because the preferred
embodiment relies on the MiltiPro+MC programmable controller, which does not

9

use relay ladder diagram language. ECF No. 285 at 3. Indeed, in the entire patent,
there is no reference to relay ladder diagram language. ECF 287-7.
Second, the agreed upon definition derives from Probatter Sports, LLC v.
Joyner Technologies, Inc. (“Joyner”), 518 F.Supp.2d 1051 (N.D. Iowa 2007). In
that case, the district court relied on both the definition of programmable
controller and the definition of programmable controllers from the MCGRAW–HILL
DICTIONARY

OF

SCIENTIFIC

AND

TECHNICAL

TERMS

found

on

the

website

―answers.com.‖ Id. at 1066–67. The Joyner opinion leaves out a key component
of that dictionary‘s definition of programmable controllers:
Historically, process control of a single or a few related devices has
been implemented through the use of banks of relays and relay logic
for both the control of actuators and their sequencing. The advent of
small, inexpensive microprocessors and single-chip computers, or
microcontroller units, brought process control from the age of
simple relay control to one of electronic digital control while neither
losing traditional design methods such as relay ladder diagrams nor
restricting their programming to a single paradigm.
Joyner, N.D. Iowa 05-cv-2045, doc. 159-8.

That dictionary‘s definition of

programmable controllers demonstrates that plaintiff is correct: the first
definition is but one type of programmable controller and the second definition
encompasses the first definition in addition to programmable controllers
employing other types of programming language.

Accordingly, the ordinary

meaning that persons of skill would give to the word programmable controller
would not require the use of relay ladder diagram language.
Finally, this Court‘s decision clearly stated that the term was dually
defined, indicating that the word has two meanings – one generic and one
exemplar.

Thus, whether the first definition includes the term relay ladder
10

diagram language is irrelevant to the question of whether the second definition
requires relay ladder diagram language. A programmable controller must satisfy
only one of the definitions.

Because the second definition contains no such

restriction, any computer programming language may be used in a programmable
controller. Accordingly, to the extent that its prior definition was unclear, the
Court now clarifies that a programmable controller is a device controlling a
machine using any computer programming language. Because a programmable
controller does not require relay ladder diagram language, defendant is not
entitled to summary judgment.
III.

PLAINTIFF‘S SUMMARY JUDGMENT MOTION
Plaintiff moves for summary judgment as to all infringement claims

pertaining to the ‗649 and ‗924 patents. ECF No. 298. Plaintiff argues, in relevant
part, that no genuine factual dispute exists with respect to whether defendant
infringed (both literally and under the doctrine of equivalents) on all the relevant
patent claims at issue.3

ECF No. 300.

Defendant opposes, in relevant part:

(1) plaintiff should be estopped from claiming infringement because plaintiff
remained silent after defendant informed plaintiff that the basic design of
defendant‘s machine predated plaintiff‘s machine; (2) material questions of fact
remain as to whether defendant literally infringed because the cited admissions
were based on an understanding that programmable controller did not employ
3

Plaintiff also reiterates its argument that defendant failed to plead
noninfringement as an affirmative defense and argues that its patents are valid.
ECF No. 300 at 8, 41. The Court addresses the waiver argument in Section II(b) of
this order, ruling that waiver is inapplicable. The Court addresses defendant‘s
validity arguments in a separate order, ruling that material disputes of fact
remain.
11

relay ladder diagram language; and (3) plaintiff waived any infringement claim
based on the doctrine of equivalents. ECF No. 305.
Section III addresses whether: (a) equitable estoppel bars plaintiff‘s
infringement claims; (b) defendant literally infringed; and (c) plaintiff should be
barred from seeking relief based on the doctrine of equivalents and, if not,
defendant infringed under the doctrine of equivalents.

The Court rules that:

(a) genuine issues of material fact remain as to whether equitable estoppel bars
plaintiff‘s infringement claims; (b) defendant, as a matter of law, literally infringed
on all relevant claims; and (c) plaintiff did not waive its the doctrine-ofequivalents argument, and defendant, as a matter of law, infringed under the
doctrine of equivalents, assuming that it did not literally infringe with respect to
the use of a programmable controller.
A. Defendant‘s Equitable Estoppel Argument
Defendant argues that plaintiff cannot pursue its infringement claims
against defendant because plaintiff failed to respond to defendant‘s September
2003 letter in which defendant asserted that its machine predated plaintiff‘s
patents.

ECF No. 305 at 10.

Defendant reasons that plaintiff‘s silence led

defendant to believe that plaintiff had abandoned any infringement claim.

Id.

Plaintiff calls defendant‘s factual assertion ―a blatant lie.‖ ECF No. 321 at 13.
As an initial matter, it is unclear what relevance equitable estoppel has on
plaintiff‘s motion for partial summary judgment. Plaintiff has moved for partial
summary judgment on its infringement claims, and equitable estoppel is an
affirmative defense.

Summary judgment may be granted with respect to any

12

―claim or defense--or the part of each claim or defense.‖

Fed. R. Civ. P. 56(a)

(emphasis added). Thus, defendant‘s argument is only relevant to the extent that
defendant is entitled to summary judgment based on equitable estoppel. But
defendant has not moved, in any of its three summary judgment motions, for
summary judgment based on equitable estoppel. Nonetheless, given that both
parties have had notice and a reasonable time to respond, the Court analyses
whether defendant is entitled to summary judgment based on estoppel before
discussing the subject matter of plaintiff‘s summary judgment motion. See Fed.
R. Civ. P. 56(f). The Court rules that summary judgment is not appropriate on the
equitable estoppel defense because a material question of fact remains with
respect to whether plaintiff engaged in misleading conduct.
In a patent action, equitable estoppel is an affirmative defense ―addressed
to the sound discretion of the trial court.‖ A.C. Aukerman Co. v. R.L. Chaides
Constr. Co., 960 F.2d 1020, 1041 (Fed. Cir. 1992) (citations omitted). To warrant
estoppel, an accused infringer must show:
(1) the patentee, through misleading conduct, led the alleged
infringer to reasonably believe that the patentee did not intend to
enforce its patent against the infringer; (2) the alleged infringer
relied on that conduct; and (3) due to its reliance, the alleged
infringer would be materially prejudiced if the patentee were
permitted to proceed with its charge of infringement.
Aspex Eyewear, Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305, 1310 (Fed. Cir. 2010)
(citing Aukerman, 960 F.2d at 1028). Additionally, ―the court must consider all
evidence relevant to the equities.‖ Id. ―[W]hile the facts relied upon to establish
an equitable estoppel must be clear, positive, and unequivocal in their

13

implication, these facts need not be established by any more than a fair
preponderance of the evidence.‖ Aukerman, 960 F.2d at 1046.
With respect to the first element of an equitable estoppel defense,
misleading ―‗conduct‘ may include specific statements, action, inaction, or
silence where there was an obligation to speak.‖ Id. at 1028. ―[S]ilence alone will
not create an estoppel unless there was a clear duty to speak, . . . or somehow
the patentee's continued silence reenforces the defendant's inference from the
plaintiff's known acquiescence that the defendant will be unmolested.‖
Aukerman, 960 F.2d at 1043 (citations omitted).

Put another way, ―[t]he first

prong of the equitable estoppel test may also be satisfied by silence, provided
‗that the silence is accompanied by another factor lending to the conclusion that
the silence was sufficiently misleading to amount to bad faith.‘‖ Integrated Liner
Techs., Inc. v. Specialty Silicone Prods., Inc., 2012 U.S. Dist. LEXIS 157381, at *69
(N.D.N.Y. Nov. 2, 2012) (quoting ABB Robotics, Inc. v. GMFanuc Robotics Corp.,
52 F.3d 1062, 1064 (Fed. Cir. 1995)).
The following facts are not disputed. On August 15, 2003, to bring the
question of infringement to defendant‘s attention, plaintiff‘s counsel sent
defendant‘s CEO Bill Greene a letter in which counsel described plaintiff‘s
machine and the patents issued for that machine and asked defendant to identify
any patents covering defendant‘s machine. ECF No. 301-7 (Ex. G); see also ECF
Nos. 299 at ¶ 30; 306 at ¶ 30.

The clear tenor of the letter is that ProBatter

suspects that Sports Tutor was infringing on its patent. On September 4, 2003,
defendant responded, stating that in 1997 the patent for HomePlate was issued to

14

Jack Scott in 1997 and assigned to defendant in 2002. ECF No. 306-2 (Ex. B) at 5
(Ex. 1); see also ECF Nos. 299 at ¶ 32; 306 at ¶ 32.
The relevant dispute concerns what happened after September 4, 2003.
Defendant‘s opposition brief attached a declaration from Greene in which he
declares that ―ProBatter never responded to my September 4, 2003 letter. I did
not hear anything further from ProBatter until I received notice of their lawsuit
filed December 28, 2005.‖ ECF No. 306-2 (Ex. B) at ¶ 6. Plaintiff asserts that its
counsel placed a call to defendant on September 9, 2003 ―to discuss the
infringement claim‖ and sent defendant another letter on November 13, 2003.
ECF No. 321 at 13. Plaintiff supports its contention by attaching the November 13
letter in which counsel references the September telephone conversation and
further indicates that defendant falsely assured plaintiff that it would not be
producing video pitching machines, which were protected by another patent held
by plaintiff. ECF No. 323-11 (Ex. AA). Defendant sought and was granted leave to
file a sur-reply, ECF No. 336, but never responded to plaintiff‘s assertion
regarding the September 9, 2003 phone call and November 13, 2003 letters.
The above dispute demonstrates that a genuine issue of material fact
remains as to whether plaintiff‘s silence or statements misled defendant.
Defendant‘s entire argument is premised on plaintiff‘s silence, which must be
supported by other evidence demonstrating that the silence was misleading,
rather than any affirmative act taken by plaintiff. Defendant‘s only evidence of
plaintiff‘s silence is an affidavit from defendant‘s CEO William Green averring to
events that occurred over a decade ago. In his affidavit, William Green avers that

15

ProBatter did not respond to his communication in September of 2003.

The

affidavit is directly contradicted by plaintiff‘s November 2003 letter in which its
counsel states that he and Green had a follow-up telephone conversation. In
addition, the letter states that Green had assured plaintiff‘s counsel that
defendant was not infringing on the ProBatter patents. Finally, the letter states
that ProBatter had heard rumors to the contrary that Sports Tutor was indeed
infringing and asks Green to call him to discuss the rumors. Because both sides
have provided conflicting evidence as to whether plaintiff engaged in misleading
conduct, defendant has failed to demonstrate the absence of a material question
of fact with respect to the first element of its affirmative defense of equitable
estoppel. Accordingly, the Court denies summary judgment with respect to this
defense.
B. Literal Infringement
Plaintiff argues that no genuine issue of material fact remains as to whether
defendant literally infringed because, inter alia, defendant‘s CEO and consultant
of baseball admitted, and plaintiff‘s own expert testified, that defendant‘s
machine has all the elements of every purportedly infringed claim in patents ‗649
and ‗924. ECF No. 300 at 13-41. Defendant opposes, generally arguing that the
admissions of its employees do not prove infringement because those
admissions were based on the ―plain and ordinary meaning of the claim terms‖
rather than the Court‘s technical construction of those claims as ―means-plusfunction claims.‖ ECF No. 305 at 6–8. Defendant explains only that its employees
operated under the mistaken belief that a programmable controller does not

16

require the use of relay ladder diagram language; it provides no other explanation
for what terms its employees misunderstood. Id.
Deciding an infringement claim is a two-step process. British Telecomms.
PLC v. Prodigy Commc’ns Corp., 217 F.Supp.2d 399, 402 (S.D.N.Y. 2002). A court
first construes the patent claims at issue to determine their scope and meaning.
Id. A court then compares the allegedly infringing device against the claims as
construed to determine whether the accused device infringes on those claims.
Id. Here, the Court has already construed the claims at issue in the opinion,4 see
ECF No. 274; thus, only the question of infringement remains.
"A device literally infringes a patent, when it embodies every limitation of
the asserted claims . . . . Literal infringement of a claim exists when each of the
claim limitations reads on, or in other words is found in, the accused device.‖
See British Telecomms, 217 F.Supp.2d at 402 (internal quotation marks and
citations omitted). ―‗Summary judgment on the issue of infringement is proper
when no reasonable jury could find that every limitation recited in a properly
construed claim either is or is not found in the accused device either literally or
under the doctrine of equivalents.‘‖ U.S. Philips Corp. v. Iwasaki Elec. Co., 505
F.3d 1371, 1374–75 (Fed. Cir. 2007) (quoting PC Connector Sols. LLC v. SmartDisk

4

In plaintiff‘s opposition to defendant‘s summary judgment motion,
plaintiff appears to argue that claim 10 of patent ‗649 does not require the use of a
programmable controller. ECF No. 285 at 5 (―Finally, Sports Tutor has incorrectly
read a Programmable Controller as necessary or [sic] every asserted claim. This
is simply not true. Claim 10 of the patent recognizes . . . .‖). Plaintiff does
reiterate this bizarre assertion in its summary judgment motion. See ECF No. 300
at 30–31. In any event, this Court‘s claim construction opinion made clear that
claim 10, which is dependent on claim 9, requires a programmable controller
because claim 9 requires a programmable controller. ECF No. 274 at 37–38.
17

Corp., 406 F.3d 1359, 1364 (Fed. Cir. 2005)). Summary judgment is appropriate
when ―defendant's employees, defendant‘s counsel, and the [device‘s] designer
all acknowledged infringement, and where [the accused infringer] does not
dispute that the accused device is in all material respects a [patent]
embodiment.‖ Toro Co. v. Deere & Co., 355 F.3d 1313, 1322 (Fed. Cir. 2004).
In its statement of material facts, plaintiff asserts that defendant‘s CEO and
consultant of baseball generally admitted, and plaintiff‘s own expert testified, that
defendant‘s machine has all the elements of every purportedly infringed claim in
patents ‗649 and ‗924. ECF No. 299 at ¶¶ 18–20, 22. Although defendant ―denied‖
these general statements, defendant‘s denial is based solely on the use of a
programmable controller.

ECF No. 306 at ¶¶ 18–20, 22.

More specifically,

defendant admits that its machine is a ball-throwing machine, includes at least
one rotating wheel for propelling the ball forward, uses dynamic breaking means
for rapidly decorating the speed of at least one rotating wheel, and has at least
one propulsion motor for powering the propulsion of balls toward a batter. ECF
Nos. 299 at ¶¶ 21, 24–25, 29; 305 at ¶¶ 21, 24–25, 29. Defendant also implicitly
admits that its machine includes means to interchangeably deliver pitches of
different types to different locations at different speeds to the extent that its
machine has a power head, a motor drive, drive motor controls and companion
motor drives with dynamic breaking circuits, horizontal and vertical linear
actuator and controls. ECF Nos. 299 at 22 at ¶ 22; 305 at ¶ 22. It denies that its
machine uses a programmable controller. Id.

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The Court rules that no genuine issue of material fact remains as to
whether

defendant

literally

infringed.

Defendant‘s

admissions

in

its

counterstatement of material facts, combined with this Court‘s own independent
examination of the evidence in support of plaintiff‘s statement of material facts,
leads to the conclusion that defendant‘s machine: (1) is a ball-throwing machine,
ECF Nos. 301-8 (Green Dep.) at 145; 301-9 (Henderson Dep.) at 3; 301-10 (Request
for Admissions) at 2; (2) includes three rotating wheels for propelling a ball
forward, wherein said wheels are positioned at equal distances and angles
relative to one another, ECF Nos. 301-8 (Green Dep.) at 14–15; 301-9 (Henderson
Dep.) at 4–6, 8–9; 301-10 (Request for Admissions) at 4–5; (3) uses dynamic
breaking means for rapidly changing, including decelerating, the speed of each
rotating wheel/propulsion motor, ECF Nos. 299-3 (Suba Decl.) at ¶¶ 6–8; 301-8
(Green Dep.) at 15; and (4) has a propulsion motor for powering the propulsion of
balls toward a batter, ECF No. 301-9 (Henderson Dep.) at 8.
Similarly, defendant‘s implicit admission in its counterstatement of material
facts, combined with this Court‘s own independent examination of the evidence
in support of plaintiff‘s statement of material fact, leads to the conclusion that
defendant‘s machine includes means to interchangeably deliver pitches of
different types to different locations at different speeds in less than ten-second
intervals in that its machine: (a) has a power head that is pivotedly mounted on a
base at a center pivot about which the power head may be pivoted in both

5

The Court uses the .pdf pagination for the deposition transcripts because
it cannot decipher where the original pagination begins or ends as two original
pages appear on the same page as the exhibit as submitted.
19

horizontal and vertical directions; (b) a motor drive and drive motor controls and
companion motor drives with dynamic breaking circuits; and (c) horizontal and
vertical linear actuators and controls. ECF Nos. 299-3 (Suba Decl.) at ¶¶ 6-8; 301-8
(Green Dep.) at 6, 15–17, 27–28; 301-9 (Henderson Dep.) at 3–6, 10–11; 301-10
(Request for Admissions) at 6, 8–9, 17.
Finally, although defendant denied that its machine uses a programmable
controller in its counterstatement of material facts, no material dispute of fact
remains with respect to this issue.

Defendant‘s denial was based on a

misreading of this Court‘s claim construction opinion, which, as noted above,
adopted the ―plain and ordinary meaning‖ of programmable controller. Thus,
when defendant‘s employees admitted, and plaintiff‘s expert declared, that
defendant‘s machine uses a programmable controller, this evidence proves that
this particular element (present in all claims in the ‗649 patent) is met. See ECF
Nos. 299-3 (Suba Decl.) at ¶ 9; 301-8 (Green Dep.) at 27–28; 301-9 (Henderson
Dep.) at 11.

The programmable controller in defendant‘s machine includes a

programmable microprocessor. Id. That programmable microprocessor includes
a data table that includes the speed of each wheel and horizontal and vertical
positions of the power head for each pitch type at each speed and location. ECF
No. 301-10 (Request for Admissions) at 18. That programmable microprocessor
can be operated in manual or automatic mode. Id. at 19. Accordingly, this Court
grants summary judgment on plaintiff‘s infringement claims based on the
undisputed evidence of literal infringement.
C. Doctrine of Equivalents

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The Court‘s analysis need not go any further than granting summary
judgment on the grounds of literal infringement: if defendant‘s device literally
infringes, it must also infringe under the doctrine of equivalents because that
doctrine ―enlarge[s] the scope of a claim beyond its literal meaning.‖ Custer v.
United States, 224 Ct. Cl. 140, 160 (1980). However, defendant vigorously asserts
that the definition of programmable controller requires the use of relay diagram
language. ECF No. 305 at 7. In the interests of finality and certainty, the Court
considers plaintiff‘s alternative argument that defendant‘s machine infringes
under the doctrine of equivalents even if the Court adopts defendant‘s preferred
definition of programmable controller.
In support of its doctrine-of-equivalents argument, plaintiff argues, that the
use of a different programming language in the programmable controller would
be an insubstantial substitution because there is nothing unique about the use of
relay ladder diagram language in a programmable controller. ECF No. 300 n.62
(citing ECF No. 285 (Plaintiff‘s Opp‘n) at 14–18). Defendant opposes, arguing, in
relevant part, that plaintiff waived its entitlement to rely on the doctrine of
equivalents by failing to raise that argument in its answer and discovery
requests, thereby preventing defendant from performing discovery on this issue.6

6

Defendant also: (1) argues that the doctrine of equivalents does not
eliminate claim elements; and (2) challenges the sufficiency of plaintiff‘s
statement of material facts with respect to whether defendant‘s programmable
controller is equivalent. ECF No. 305 at 9–10. These arguments are meritless. As
to the first, this is a general principle of law rather than an argument as to why the
doctrine of equivalents does not apply in this circumstance; plaintiff has not
made any statements that contradict this principle. See, e.g., ECF No. 285 at 15
(―‗The doctrine of equivalents prohibits one from avoiding infringement liability
by making only insubstantial changes and substitutions.‘ Graver Tank, 339 U.S. at
21

ECF No. 305 at 8. The Court first addresses defendant‘s waiver argument and
then discusses whether summary judgment is appropriate under the doctrine of
equivalents. The Court concludes that no material dispute of fact remains with
respect to whether the programmable controller in defendant‘s machine is
equivalent to the programmable controller as patented.
1. Waiver
As an initial matter, it is of no consequence that plaintiff did not use the
words

―doctrine

of

equivalents‖

in

its

complaint:

―the

nature

of

the

infringement—whether literal or under the doctrine of equivalents—need not be
pleaded.‖ Revlon Consumer Prods. Corp. v. Estee Lauder Companies, Inc., 2003
WL 21751833, *32 (S.D.N.Y. July 30, 2003) (citation omitted); see also Auburn
Univ. v. Int’l Bus. Machs., Corp., 864 F.Supp.2d 1222, 1225 (M.D. Ala. 2012) (citing
McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1356–57 (Fed. Cir. 2007). ―[T]he
specifics of how [defendant‘s] purportedly infringing device works is something
to be determined through discovery.‖ McZeal, 501 F.3d at 1358. Therefore, the
relevant question to be determined is whether, during discovery, plaintiff shirked
its duty to disclose the basis for its direct infringement claims.
Defendant‘s argument that plaintiff waived its doctrine-of-equivalents
argument is based entirely on the plaintiff‘s response to the following
interrogatory:

732.‖). As to the second argument, equivalence is a question of law rather than
fact. Thus, it would be improper for plaintiff‘s Rule 56(a) statement to state that
the programmable controller in defendant‘s machine is equivalent to the patent‘s
use of programmable controller.
22

For each of the asserted claims, please explain the basis for your
contention that the HomePlate machine infringes. In so doing, please
be sure to include the following information:
a) For each limitation of each claim, identify the part(s) of the
HomePlate Machine that you contend satisfies the limitation;
b) For each limitation of each claim, identify all evidence upon which
you intend to rely to establish that the HomePlate machine infringes.
ECF No. 290-2 at 3.

This interrogatory mirrors this Court‘s standing order

requirement in which:
Unless otherwise specified by the Court, not later than forty-two (42)
days after the filing of the parties‘ 26(f) report, a party claiming
patent infringement must serve on all parties a ‖Disclosure of
Asserted Claims and Infringement Contentions,‖ which identifies for
each opposing party, each claim of each patent-in-suit that is
allegedly infringed and each product or process of each opposing
party of which the party claiming infringement is aware that allegedly
infringes each identified claim.
ECF No. 117. Plaintiff responded with each limitation of each claim and identified
the part of defendant‘s machine that satisfied the limitation.

Id. at 4–12 (.pdf

pagination). The response did not specifically identify the doctrine of equivalents
and, with respect to programmable controller, did not disclose any evidence
other than the programmable controller in defendant‘s machine.
Neither defendant‘s interrogatory nor this Court‘s standing order required
plaintiff to specifically articulate its legal theory, but plaintiff‘s doctrine-ofequivalents contention would have been evident had plaintiff disclosed evidence
other than the part of defendant‘s machine on which plaintiff intended to rely in
support of its infringement contention.

Nonetheless, at that stage in the

litigation, there was no explicit dispute as to the meaning of programmable
controller.

Therefore, plaintiff would have had no idea of knowing whether it
23

would rely on the doctrine of equivalents; it reasonably assumed that it would
prove literal infringement with respect to that element of the claims. Rather, the
first time plaintiff would have reasonably assumed that it would argue the
doctrine of equivalents was in April 2014 when defendant moved for summary
judgment on the basis that a programmable controller must use relay ladder
diagram language. Accordingly, plaintiff‘s argument for the application of the
doctrine of equivalents is timely.
Even assuming that plaintiff did not timely assert the doctrine of
equivalents, defendant has made no showing of prejudice. It cursorily argues
that it was prevented from seeking discovery.

The problem with defendant‘s

argument is two-fold. First, defendant could have moved to reopen discovery on
the basis that a new issue unexpectedly arose on a showing of good cause.
Indeed, the Court reopened discovery on an unrelated issue after the present
issue arose. ECF No. 388. Second, defendant does not identify what evidence it
would have sought if it had been permitted to conduct discovery on this issue.
The Court cannot make a finding of prejudice if defendant does not explain what
discovery it was prevented from doing.
Finally, defendant offers no persuasive authority to convince the Court that
waiver is appropriate. Defendant relies solely on Realtime Data, LLC v. Morgan
Stanley, 554 F. App‘x 923, 937 (Fed. Cir. 2014). However, Realtime Data is
distinguishable from the instant case because the plaintiff in that case was
explicitly required by the local rule of the districts in which the case was litigated
to disclose its theories of infringement.

24

See Realtime Data, LLC v. Morgan

Stanley, No. 11Civ.6696, et al., 2012 U.S. Dist. LEXIS 109954 (S.D.N.Y. Aug. 12,
2012). Here, there are no local rules on point, and, as the Court already noted,
plaintiff complied with its standing order.
2. Legal Standards Governing the Doctrine of Equivalents
The doctrine of equivalents ―prohibits one from avoiding infringement
liability by making only ‗insubstantial changes and substitutions . . . which,
though adding nothing, would be enough to take the copied matter outside the
claim, and hence outside the reach of law.‘‖ Am. Calcar, Inc. v. Am. Honda Motor
Co., 651 F.3d 1318, 1340 (Fed. Cir. 2011) (quoting Graver Tank & Mfg. Co. v. Linde
Air Prods. Co., 339 U.S. 605, 607 (1950)). The Federal Circuit has provided two
different articulations of the analysis a court must perform in considering the
doctrine of equivalents. See Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir.
2008) (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39–40
(1997)). Under the first, referred to as the ―insubstantial differences test,‖ ―"[a]n
element in the accused device is equivalent to a claim limitation if the only
differences between the two are insubstantial.‖ Id. (quoting Honeywell Int’l Inc. v.
Hamilton Sundstrand Corp., 370 F.3d 1131, 1139 (Fed. Cir. 2004)).

Under the

second test, referred to as the ―function-way-result‖ test, ―an element in the
accused device is equivalent to a claim limitation if it ‗performs substantially the
same function in substantially the same way to obtain substantially the same
result.‘‖ Id. (quoting Schoell v. Regal Marine Indus., Inc., 247 F.3d 1202, 1209-10
(Fed. Cir. 2001)). The Supreme Court has observed that ―[t]here seems to be
substantial agreement that . . . the triple identity test may be suitable for

25

analyzing mechanical devices,‖ but it has nonetheless indicated that ―the
particular linguistic framework used is less important than whether the test is
probative of the essential inquiry: Does the accused product or process contain
elements identical or equivalent to each claimed element of the patented
invention?‖ Warner-Jenkinson, 520 U.S. at 40.
―‗[W]hile many different forms of evidence may be pertinent, when the
patent holder relies on the doctrine of equivalents, as opposed to literal
infringement, the difficulties and complexities of the doctrine require that
evidence be presented to the jury or other fact-finder through the particularized
testimony of a person of ordinary skill in the art, typically a qualified expert, who
(on a limitation-by-limitation basis) describes the claim limitations and
establishes that those skilled in the art would recognize the equivalents.‘"
Eastcott v. Hasselblad USA, Inc., 564 F. App‘x 590, 595 (Fed. Cir. 2014) (quoting
AquaTex Indus. Inc. v. Techniche Sol’ns, 479 F.3d 1320, 1328 (Fed. Cir. 2007)).
3. Application of Standards
Plaintiff argues that, even if the Court adopts defendant‘s preferred
definition of programmable controller, defendant‘s machine infringes under the
doctrine of equivalents. ECF No. 300 n.62 (citing ECF No. 285 (Plaintiff‘s Opp‘n)
at 14–18). Specifically, plaintiff asserts that ―[a] relay ladder diagram language is
only one of many computer languages known at the time the application was filed
that could accomplish the same function in a Programmable Controller.‖ ECF No.
285 at 4. Plaintiff further asserts that:
A relay ladder diagram language is certainly not, however, the only
language that can be used for this purpose in a PLC, now or in 1999
26

when the application that matured into the ‗649 patent was filed.
There is nothing unique about a relay ladder diagram language. Id. It
is one of many comparable programming languages used in the
industry to accomplish substantially the same function, in
substantially the same way, to yield substantially the same result in a
Programmable Controller for either embodiment.
Id. at 16 (internal citation omitted). In support, plaintiff offers the declaration of
Michael Suba, who is employed by plaintiff as its Vice President of Engineering.
ECF No. 287-3. Suba states:
[A] relay ladder diagram language is certainly not the only language
that can be used for a [programmable controller], now or in 1999
when the patent was filed. It is one of many comparable
programming languages used in the industry to accomplish the
exact same function, in the exact same way. The programming
language chosen for a [programmable controller] is merely a design
choice.
11. This follows a basic and fundamental principal [sic] of
engineering that the type of computer programming language
utilized to control a device can be easily substituted at any given
time by many equivalent languages.
Id. at ¶¶ 10-11.
The record in this case lends essential authenticity to Suba‘s contention,
which defendant does not challenge. As noted above, the ―advent of small,
inexpensive microprocessors and single-chip computers, or microcontroller
units, brought process control from the age of simple relay control to one of
electronic digital control while neither losing traditional design methods such as
relay ladder diagrams nor restricting their programming to a single paradigm.‖
Joyner, N.D. Iowa 05-cv-2045, doc. 159-8. Put another way, various computer
programming languages perform substantially the same function, in substantially
the same way, to achieve substantially the same result. The use of a different

27

computer programming language is an insubstantial change. Accordingly,
plaintiff would prevail on its infringement claims even if the Court misconstrued
the parties‘ stipulated definition of programmable controller not to require relay
ladder diagram language.
CONCLUSION
For the reasons stated above, defendant‘s motion for partial summary
judgment on infringement is DENIED and plaintiff‘s motion for partial summary
judgment on infringement is GRANTED.

IT IS SO ORDERED.
_________/s/_____________
Hon. Vanessa L. Bryant
United States District Judge
Dated at Hartford, Connecticut: July 15, 2015.

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