Geomatrix Systems, LLC v. Eljen Corporation

Filing 221

AMENDED ORDER denying 167 Eljen's Motion for Summary Judgment; granting in part and denying in part 169 Geomatrix's Motion for Summary Judgment. For the reasons described in the attached ruling, Eljen's motion for summary judgment is DENIED, and Geomatrix's motion for summary judgment is GRANTED in part and DENIED in part. Specifically, as to infringement, the Court concludes that Geomatrix is entitled to judgment as a matter of law. As to invalidity, the Court d enies Eljen's summary judgment motion seeking a determination of invalidity by anticipation and obviousness, grants in part and denies in part Geomatrix's motion for summary judgment as to no invalidity by anticipation, and grants in part a nd denies in part Geomatrix's motion for summary judgment as to Eljen's obviousness theories. Summary judgment in favor of Geomatrix regarding its reduction to practice arguments is denied due to disputed issues of material fact and issues related to witness credibility. Finally, as to inequitable conduct, the Court determines that there is a genuine dispute of material fact that precludes entry of summary judgment in favor of either party. Signed by Judge Sarala V. Nagala on 3/11/2025. (Vo, C)

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UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
GEOMATRIX SYSTEMS, LLC,
Plaintiff and Counterclaim Defendant,
v.
ELJEN CORPORATION,
Defendant and Counterclaim Plaintiff.

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3:20-CV-1900 (SVN)

March 11, 2025

AMENDED ORDER ON CROSS MOTIONS FOR SUMMARY JUDGMENT 1
Sarala V. Nagala, United States District Judge.
Plaintiff and Counterclaim Defendant Geomatrix Systems, LLC (“Geomatrix”), a
Connecticut-based company specializing in designing and selling wastewater treatment systems,
alleges that one of its competitors, Defendant and Counterclaim Plaintiff Eljen Corporation
(“Eljen”), has infringed Geomatrix’s U.S. Patent No. 9,174,863 (the “‘863 Patent”) relating to a
technology used in septic leach fields. Specifically, Geomatrix alleges that certain of Eljen’s
“Mantis” line products infringe various claims of the ‘863 Patent. In response, Eljen counters that
it has not infringed the ‘863 Patent and counterclaims that the ‘863 Patent is invalid. Both parties
have moved for summary judgment on various issues.
For the reasons described below, the Court DENIES Eljen’s motion for summary judgment,
and GRANTS in part and DENIES in part Geomatrix’s motion for summary judgment.
Specifically, as to infringement, the Court concludes that Geomatrix is entitled to judgment as a
matter of law. As to invalidity, the Court denies Eljen’s summary judgment motion seeking a
determination of invalidity by anticipation and obviousness, grants in part and denies in part

Because the Court has granted Eljen’s motion for reconsideration of the Court’s order that certain references Eljen
relied on for its invalidity defenses were not “printed publications” or in “public use or on sale” prior to the critical
date, see ECF No. 220, the original ruling has been vacated and this amended ruling is being entered in its place.
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Geomatrix’s motion for summary judgment as to no invalidity by anticipation, and grants in part
and denies in part Geomatrix’s motion for summary judgment as to Eljen’s obviousness theories.
Summary judgment in favor of Geomatrix regarding its reduction to practice arguments is denied
due to disputed issues of material fact and issues related to witness credibility. Finally, as to
inequitable conduct, the Court determines that there is a genuine dispute of material fact that
precludes entry of summary judgment in favor of either party.
I.

BACKGROUND
A. General Background
This patent case is about competing designs for wastewater leaching field technology for

residential homes. Approximately thirty percent of Connecticut’s population has no sewer
connection and must treat wastewater onsite. Geomatrix’s Opening Br., ECF No. 169-1 at 12.
Leach fields are one component of an onsite wastewater treatment system used to collect and
dispose of sewer waste. Id. at 13. A septic tank collects solid waste, while the liquid waste, or
effluent, leaves the septic tank via an outlet pipe to a leach field buried underground. Id. The
leach field is designed to treat the wastewater by dispersing it from the outlet pipe into the soil,
where microbes can break down the effluent before it percolates to the water table. Id.
B. Geomatrix’s Invention
David Potts is the founder and owner of Geomatrix. Id. at 12. On January 27, 2006, Mr.
Potts filed his original patent application, U.S. Patent Application No. 11/340,917 (the “‘917
Application”), on the subject matter of the ‘863 Patent. Geomatrix’s L.R. 56(a)2 St., ECF No. 179
¶ 5. As the ‘863 Patent explains, “[g]enerally, it is an aim to have aerobic treatment” of wastewater
in soil. ‘863 Patent, ECF No. 169-4 at col. 2:1–2. The ‘863 Patent described that prior art conduits
had limitations in aerobic treatment because their bottom surfaces typically fell well below the soil
surface, where anaerobic conditions exist, and “a biomat” often formed on the bottom and sides of
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the conduit, lessening its effectiveness at properly infiltrating wastewater into soil. Id. at cols.
1:51–56, 2:6–10. Therefore, Mr. Potts set out to design (and patent) a wastewater system “that
provides for greater aerobic conditions in leaching conduits, thereby allowing for greater
processing of the wastewater prior and during absorption into the soil.” Id. at col. 2:16–19. In its
most basic terms, the ‘863 Patent discloses a leach field wherein wastewater is delivered from the
homeowner’s septic tank into an area under their lawn through a pipe perforated with holes for
dispersion of the wastewater into specially-designed channels, which are sometimes referred to as
“geonets.” Geomatrix’s Opening Br. at 13. Between the channels are voids, or separations, that
promote oxygen infiltration and, as a result, aerobic conditions to treat the wastewater. Hearing
Tr., ECF No. 192 at 28.
The ‘863 Patent discloses a high aspect ratio conduit, meaning that the channels into which
the wastewater is dispersed have an aspect ratio—height divided by width—between 3 and 96.
See Dickson Expert Rep., ECF No. 169-41 ¶ 48. A high aspect ratio system has two commercial
advantages. First, by utilizing volumes with a high height and short width, the ‘863 Patent
maximizes the amount of oxygen to which the wastewater is exposed, resulting in efficiencies in
wastewater treatment. Geomatrix’s Opening Br. at 13. Second, a high aspect ratio system can be
more compact, requiring less land for installation in a homeowner’s yard. ECF No. 169-41 ¶ 48.
A drawing from the ‘863 Patent (Figure 16) is reproduced below.

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C. Eljen’s Invention
Eljen’s Accused Mantis Products 2 operate on the same basic principles as Geomatrix’s ‘863
Patent. The Accused Mantis Products include a series of “Filter Support Modules” that are
designed to accept wastewater from a mounted pipe called the “Support Distribution Pipe.” Eljen’s
Opening Br., ECF No. 167-1 at 11. The Support Distribution Pipe has three one-inch holes
positioned within each Filter Support Module to enable wastewater distribution. Id. Just like the
Geomatrix patent, the Accused Mantis Products have a high aspect ratio design, allowing for
highly efficient and compact leach fields. A diagram of a representative Accused Mantis Product
from Eljen’s brief is reproduced below. Id.

The allegedly infringing Mantis products are the Mantis 536-8, the Mantis Double-Wide, and the Mantis M5 (the
“Accused Mantis Products”). Geomatrix’s L.R. 56(a)2 St. ¶ 11.
2

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D. The Disputed Claims
The ‘863 Patent contains three independent claims, numbered 1, 22, and 26. Because
similar language is shared across all three independent claims, the Court reproduces only a
representative example below, with the language relevant to the parties’ present motions bolded:
1. A system for wastewater comprising:
a plurality of channels, where the channels each have a height to width aspect ratio in a
range of as high as 96 and as low as 3, each have an uppermost surface and each include a
pair of upright infiltrative surfaces,
where the paired upright infiltrative surfaces of each channel are substantially parallel to
each other along a majority of their length, and have a length of substantially one foot or
more,
where adjacent channels are separated along a majority of their length by two or more
inches, the separations comprising sand, or a granular material, or a void comprising the
majority or all of the volume of the separation,
the separations having a spacing of one foot or more along their length without an
intervening intersecting infiltrative surface that connects the adjacent channels within the
spacing,
at least two channels being interconnected to each other below their uppermost surface,
and
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a first wastewater delivery conduit with wastewater egress openings positioned such that
the area of the conduit having the wastewater egress openings traverses a majority of
the paired infiltrative surfaces at an oblique or perpendicular angle.
E. Procedural History
Geomatrix filed its first infringement action against Eljen in 2016, accusing Eljen of
infringing on the ‘863 Patent. Geomatrix’s L.R. 56(a)2 St. ¶ 1; see also Geomatrix Sys., LLC v.
Eljen Corp., No. 3:16-cv-00734-JBA (D. Conn.). After voluntarily dismissing the 2016 action,
Geomatrix obtained three additional patents: U.S. Patent Nos. 9,650,271 (the “‘271 Patent”);
10,065,875 (the “‘875 Patent”); and 10,392,278 (the “‘278 Patent”). Geomatrix’s L.R. 56(a)2 St.
¶ 3.
In 2020, Geomatrix brought the instant action against Eljen, asserting that Eljen infringed
on sixty-three claims across the four patents. Geomatrix’s L.R. 56(a)2 St. ¶ 3. Following
Geomatrix’s submission of an amended complaint, ECF No. 56, Eljen brought counterclaims of
non-infringement and invalidity of the four patents against Geomatrix. See Eljen’s Answer &
Countercl., ECF No. 61. Following proceedings under Markman v. Westview Instruments, Inc.,
517 U.S. 370 (1996), in which the Court (Arterton, J.) resolved seven disputed categories of terms,
see Markman Order, ECF No. 131, and the Court’s decision denying in part Geomatrix’s motion
for leave to supplement its infringement contentions, see Order, ECF No. 146, Geomatrix decided
not to proceed with its ‘278 Patent, ‘875 Patent, and ‘278 Patent infringement claims against Eljen.
See Geomatrix’s L.R. 56(a)2 St. ¶ 4 & n.1.
Accordingly, only the following claims and counterclaims related to the ’863 Patent remain
in this action: Geomatrix’s claims that (1) Eljen has directly infringed and is directly infringing
the ‘863 Patent by making, using, offering for sale, and selling, in the United States, the Accused
Mantis Products (Counts One and Two); (2) Eljen contributes to the infringement of the ‘863 Patent
by instructing others to infringe claims 1 and 22 of the ‘863 Patent (Count Sixteen); and (3) Eljen
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induces infringement of the ‘863 Patent by inducing others to use the Accused Mantis Products in
a manner that directly infringes claims 1 and 22 of the ‘863 Patent (Count Seventeen); and Eljen’s
counterclaims for declaratory judgment that (1) Eljen has not and is not now infringing any claim
of the ‘863 Patent under any legal or equitable theory or under any provision of 35 U.S.C. § 271
(Counterclaim Count One); (2) the claims of the ‘863 Patent are invalid because the alleged
inventions fail to satisfy the conditions for patentability specified in 35 U.S.C. § 100 et seq.
(Counterclaim Count Five); and (3) the ‘863 Patent is unenforceable due to Mr. Potts’ inequitable
conduct (Counterclaim Count Nine). See ECF Nos. 56, 61.
The parties have filed cross motions for summary judgment. Eljen’s motion argues that it
is entitled to judgment as a matter of law for four reasons, any one of which it contends would
independently support judgment in its favor: (1) Eljen’s Accused Mantis Products do not infringe
the ‘863 Patent; (2) the ‘863 Patent is invalid for lack of an adequate written description; (3) the
‘863 Patent is invalid because it was anticipated by prior art; and (4) the invention described in the
‘863 Patent was obvious from prior art.

See Eljen’s Opening Br. at 12–14.

Geomatrix,

unsurprisingly, disputes each of Eljen’s contentions. It seeks summary judgment in its favor on its
claim for infringement and the issues of invalidity by anticipation and obviousness. Geomatrix’s
Opening Br. at 9–10. Further, it seeks summary judgment on Eljen’s counterclaim alleging that
the ‘863 Patent is unenforceable because Geomatrix committed inequitable conduct before the
Patent and Trademark Office (“PTO”). Id. at 10.
As noted above, following the granting of Eljen’s motion for reconsideration of the Court’s
original decision on the cross motions for summary judgment insofar as it found in favor of
Geomatrix as to the public accessibility of certain proposed prior art references, the Court issues
this amended ruling on the parties’ cross motions for summary judgment.

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II.

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LEGAL STANDARD
Federal Rule of Civil Procedure 56(a) provides, in relevant part, that a court “shall grant

summary judgment 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.” A disputed fact is material only where the
determination of the fact might affect the outcome of the lawsuit. Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248 (1986). With respect to genuineness, “summary judgment will not lie if the
dispute about a material fact is ‘genuine,’ that is, if the evidence is such that a reasonable jury
could return a verdict for the nonmoving party.” Id.
In moving for summary judgment against a party who will bear the ultimate burden of
proof at trial, the movant’s burden of establishing there is no genuine issue of material fact in
dispute will be satisfied if the movant can point to an absence of evidence to support an essential
element of the non-moving party’s claim. Celotex Corp. v. Catrett, 477 U.S. 317, 322–23 (1986).
The movant bears an initial burden of “informing the district court of the basis for its motion, and
identifying those portions of ‘the pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any,’ which it believes demonstrate the absence
of a genuine issue of material fact.” Id. at 323. A movant, however, “need not prove a negative
when it moves for summary judgment on an issue that the [non-movant] must prove at trial. It
need only point to an absence of proof on [the non-movant’s] part, and, at that point, [the nonmovant] must ‘designate specific facts showing that there is a genuine issue for trial.’” Parker v.
Sony Pictures Ent., Inc., 260 F.3d 100, 111 (2d Cir. 2001) (quoting Celotex Corp., 477 U.S. at 324).
The non-moving party, in order to defeat summary judgment, must come forward with evidence
that would be sufficient to support a jury verdict in his or her favor. Anderson, 477 U.S. at 249.
If the non-movant fails “to make a sufficient showing on an essential element of [their] case with

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respect to which [they have] the burden of proof,” then the movant will be entitled to judgment as
a matter of law. Celotex Corp., 477 U.S. at 323.
In considering a motion for summary judgment, a court “must construe the facts in the light
most favorable to the non-moving party and must resolve all ambiguities and draw all reasonable
inferences against the movant.” Kee v. City of New York, 12 F.4th 150, 158 (2d Cir. 2021) (citation
and internal quotation marks omitted). “Only when reasonable minds could not differ as to the
import of the evidence is summary judgment proper.” Bryant v. Maffucci, 923 F.2d 979, 982 (2d
Cir. 1991) (citing Anderson, 477 U.S. at 250–51).
In a patent action, non-infringement and invalidity are separate and independent responses
to a suit for infringement. Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632, 643 (2015).
Accordingly, “an accused infringer ‘may prevail either by successfully attacking the validity of the
patent or by successfully defending the charge of infringement.’” Id. (quoting Deposit Guaranty
Nat’l Bank, Jackson, Miss. v. Roper, 445 U.S. 326, 334 (1980)).
III.

SUMMARY OF HOLDINGS
The Court first addresses the question of whether the Accused Mantis Products directly

infringe the ‘863 Patent, and concludes, as a matter of law, that they do infringe.
The Court then turns to the questions of patent invalidity because “a finding that a patent
is not infringed does not render the counterclaim for patent invalidity moot.” Pandrol USA, LP v.
Airboss Ry. Prods., Inc., 320 F.3d 1354, 1364 (Fed. Cir. 2003) (citing Cardinal Chem. Co. v.
Morton Int’l, Inc., 508 U.S. 83, 102–03 (1993)).
First, the Court determines that neither party is entitled to summary judgment on the
question of whether the ‘863 Patent is invalid for lack of written description of an “oblique angle.”

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Second, with respect to Eljen’s claims of invalidity by anticipation and obviousness, the
Court concludes that the ‘863 Patent was not anticipated by a reference that is referred to herein
as 1988 In-Drains. Eljen may not advance its anticipation or obviousness theories as to certain
references, explained below. As fact questions remain about whether certain other references
qualify as prior art, Geomatrix is not entitled to summary judgment as to no invalidity by
anticipation or obviousness regarding these other references, however.

With respect to

obviousness, the Court concludes the invention described in the ‘863 Patent was not obvious from
the teachings of 1988 In-Drains alone. The jury must decide, however, whether Eljen’s other
obviousness theories rendered the patent invalid as obvious.
Third, the Court finds that there are disputed issues of material fact concerning Eljen’s
theory that U.S. Patent No. 8,104,994 (the “Donlin ‘994 Patent”) 3 had priority over the ‘863 Patent.
Following the Court’s analysis of patent invalidity, the Court finds that questions of fact
also preclude entry of summary judgment as to whether Mr. Potts committed inequitable conduct
in his dealings with the PTO.
IV.

DIRECT INFRINGEMENT
For the reasons that follow, the Court finds that the Accused Mantis Products directly

infringe the ‘863 Patent, and thus grants Geomatrix’s motion for summary judgment as to patent
infringement.
A. Legal Standard
“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.” PC Connector Sols. LLC v.

3

“Donlin” refers to James Donlin, the inventor of the Accused Mantis Products.

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SmartDisk Corp., 406 F.3d 1359, 1364 (Fed. Cir. 2005) (citation omitted).

Only literal

infringement is at issue here.
Determining patent infringement is a two-step process. Niazi Licensing Corp. v. St. Jude
Med. S.C., Inc., 30 F.4th 1339, 1350 (Fed. Cir. 2022). First, the Court “determines the scope and
meaning of the claims asserted, and then the properly construed claims are compared to the
allegedly infringing device.” Id. While claim construction is a question of law, Mas-Hamilton
Grp. v. LaGard, Inc., 156 F.3d 1206, 1211 (Fed. Cir. 1998), the determination of whether an
accused device infringes a patent claim is a question of fact. IMS Tech., Inc. v. Haas Automation,
Inc., 206 F.3d 1422, 1429 (Fed. Cir. 2000). “To prove literal infringement, the patentee must show
that the accused device contains every limitation in the asserted claims. . . . If even one limitation
is missing or not met as claimed, there is no literal infringement.” Mas-Hamilton Grp., 156 F.3d
at 1211.
Because the ultimate burden of proving infringement rests with the patentee, an accused
infringer may establish that summary judgment as to noninfringement is proper “either by
providing evidence that would preclude a finding of infringement, or by showing that the evidence
on file fails to establish a material issue of fact essential to the patentee’s case.” Novartis Corp. v.
Ben Venue Lab’ys, Inc., 271 F.3d 1043, 1046 (Fed. Cir. 2001) (citation omitted). If the moving
party meets this initial requirement, the burden shifts to the party asserting infringement to set
forth, by declaration or as otherwise permitted under Fed. R. Civ. P. 56, “specific facts showing
that there is a genuine issue for trial.” Anderson, 477 U.S. at 248–49. Summary judgment of
noninfringement may only be granted “if, after viewing the alleged facts in the light most favorable
to the nonmovant and drawing all justifiable inferences in the nonmovant’s favor, there is no

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genuine issue whether the accused device is encompassed by the patent claims.” Novartis Corp.,
271 F.3d at 1046.
The parties agree there are three “independent” claims contained in the ‘863 Patent—
claims 1, 22, and 26. Geomatrix’s L.R. 56(a)2 St. ¶ 15. Although worded slightly differently in
each claim, two of the essential requirements of all of these claims are that (1) the “area” of the
conduit having the wastewater egress openings traverses a majority of the paired infiltrative
surfaces at an oblique or perpendicular angle; and (2) at least two channels are “interconnected”
to each other below their uppermost surface. The parties’ dispute about whether the Accused
Mantis Products meet these two requirements turns on the meaning of the terms “area” and
“interconnected.” The Court concludes that the Accused Mantis Products contain both the “area”
limitation and the “interconnected” limitation. A judgment of infringement as a matter of law in
Geomatrix’s favor is therefore appropriate.
B. “Area”
While the wording varies slightly, each of the disputed claims requires a wastewater
distribution or delivery conduct positioned such that the “area” of the conduit having the
wastewater egress openings traverses, in the words of the two more narrowly-worded claims
(Claims 22 and 26), the separations between adjacent channels or the opposing infiltrative surfaces.
Id. ¶¶ 17–18. The Court concludes that the conduit of the Accused Mantis Products is positioned
such that the area that has the wastewater openings does traverse the separations. The Accused
Mantis Products therefore contain this limitation of the ‘863 Patent.
As noted above, both the ‘863 Patent and the Accused Mantis Products use a support
distribution pipe to feed wastewater to the channels where the effluent is treated. The parties agree
that, in the Accused Mantis Products, the holes in the pipe (to use the ‘863 Patent’s language, the
“wastewater egress openings”) exist solely within the channels themselves; there are no openings
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for wastewater to be dispersed in the voids/separations between the channels. Id. ¶¶ 14, 25. Eljen
contends that, to satisfy the relevant limitation of the ‘863 Patent, the “area” having the holes must
traverse out of the channels and into the separations between the channels. Eljen’s Opening Br. at
18–19. Geomatrix, on the other hand, argues that the area of the conduit with water egress
openings is measured from the first to last hole on the water distribution pipe, regardless of whether
such openings allow wastewater to be fed both within and outside of the channels. See Geomatrix’s
Opp’n Br., ECF No. 178 at 14–17. The Court agrees with Geomatrix.
First, the Court rejects Eljen’s attempt to resurrect its claim construction argument that the
claims require the openings to traverse both the channels and the separations. The central question
in that claim construction dispute was “whether at least some of the water egress openings need to
cross into the separations between the channels or if they can be confined to the channels
themselves.” See ECF No. 131 at 23 (emphasis added). Rather than answering the question
directly, Judge Arterton held that because the claims do not say that wastewater egress openings
are required over the separations between the channels, “they will not limit the claimed system to
require them.” Id. This leaves open the possibility that these egress openings may traverse only
the channels or traverse both the channels and the separations. See id. (noting that Eljen conceded
in its Markman briefing that “there are probably numerous ways to adequately construe various
terms within this claim element”). Although not explicitly stated in the Markman order, it appears
Judge Arterton sided with Geomatrix that the term “area” need not be construed and should be
interpreted according to its plain and ordinary meaning, given that she declined to construe any of
the relevant terms in this group of claims. Id.; see also Joint Claim Construction Statement, ECF
No. 80 at 15–16 (Geomatrix arguing that no construction is necessary for the term “area”). In so
holding, the Court declined to adopt Eljen’s specialized construction requiring the openings to

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cross into the separations between the channels. See ECF No. 131 at 22–23. Insofar as Eljen once
again asks the Court to endorse the specialized meaning that was already rejected, the Court
declines its request.
Further, the Court holds that the “area” claim limitation is met in the Accused Mantis
Products. Both parties’ experts—Bonneau Dickson for Geomatrix and Pio Lombardo for Eljen—
appear to agree that the area having the openings is the entire length of the pipe from the first
opening to the last opening, regardless of where the openings themselves are positioned. It is
unsurprising that Mr. Dickson, as Geomatrix’s expert, takes this position; but Mr. Lombardo also
characterized the “area” having the openings this way in his deposition. See Dickson Dep., ECF
No. 169-44 at 4–5; Lombardo Dep., ECF No. 169-8 at 45 (discussing drawing providing that “L”
is the area of the pipe having egress openings). Mr. Lombardo’s drawing, identifying “L” as the
area of the pipe having egress openings, is reproduced below.

See Geomatrix’s Opp’n Br. at 17.
Eljen tries to overcome its own expert’s view by arguing that the drawing was abstract and
untethered from the actual technology at issue. See Eljen’s Opp’n Br., ECF No. 180 at 50. But its
strained efforts fail, and it takes too narrow a reading of the term “area” in this context. The Court
concludes that there is no genuine dispute that the area of the Accused Mantis Products’ Support
Distribution Pipe having wastewater egress openings traverses both the channels and the
separations, in that it includes the area from the first opening in the pipe to the last opening, and

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not simply the small one-inch openings inside each channel. Therefore, the Accused Mantis
Products infringe the “area” limitation in the disputed claims.
C. “Interconnected”
Because literal infringement requires proving that the accused device contains every
limitation from a claim, see Mas-Hamilton Grp., 156 F.3d at 1211, the Court proceeds to consider
whether at least two channels of the Accused Mantis Products are “interconnected to each other
below their uppermost surface.” It concludes they are.
The central dispute is the meaning of the word “interconnected.” Three parts of the
Accused Mantis Products are at issue: (1) cardboard corners, which appear at both the top and
bottom of the Products; (2) black plastic spacers 4; and (3) the Support Distribution Pipe itself. A
diagram from Eljen’s briefing is once again helpful for context:

The black plastic spacers were used in what the parties refer to as the “prior” versions of the Accused Mantis Products,
but are not used in the “current” versions of the Products. See Eljen’s Opening Br. at 11–12 n.2.

4

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Eljen’s Opening Br. at 24. Geomatrix argues that “interconnected” in the context of the
‘863 Patent is synonymous with “connected” in a broad sense, regardless of the purpose of the
items that join the channels. See Geomatrix’s Suppl. Br., ECF No. 197 at 8–9. 5 Thus, in
Geomatrix’s view, anything in the Accused Mantis Products that connects the channels together
beneath their uppermost surface—including the vertical leg of the top cardboard corners, the
bottom cardboard corners, the black spacers, and the distribution pipe—is considered a part that
“interconnects” the channels to each other. See Geomatrix’s Opening Br. at 55. Eljen concedes
that the vertical leg of the top cardboard corners, the bottom cardboard corners, the black spacers,
and Support Distribution Pipe connect the channels below their uppermost surface, but contends
they do not interconnect the channels to each other, as required by the claim limitation. See Eljen’s
Opening Br. at 25–26. Eljen argues that Geomatrix’s interpretation is divorced from the context
of the ‘863 Patent, and asserts that “interconnected” means, in the context of the Patent and its
prosecution history, that the channels must be “mutually joined for fluid interflow.” See Eljen’s
Suppl. Br., ECF No. 196 at 8. Eljen’s definition would not include the Support Distribution Pipe,
black spacers, and cardboard corners as parts that “interconnect” the Filter Support Modules to
each other. See Eljen’s Opening Br. at 25–26.
1. A Return to Claim Construction
During claim construction, Judge Arterton rejected Eljen’s argument that “interconnected”
means “contiguously shaped” to enable “contiguous flow between the channels apart from the
main wastewater distribution pipe.” ECF No. 131 at 24–26. Instead, she declined to construe the
term “interconnected.” Id. at 26. As is now clear, the parties continue to dispute the scope and
meaning of the term.
The Court required the parties to submit supplemental briefing on the meaning of the word “interconnected” within
the context of the ‘863 Patent. Order, ECF No. 193.

5

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“When the parties raise an actual dispute regarding the proper scope of . . . claims, the
court, not the jury, must resolve that dispute.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
521 F.3d 1351, 1360 (Fed. Cir. 2008) (citation omitted). Specifically, where “[a] determination
that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’” is “inadequate”
and “does not resolve the parties’ dispute[,]” then “claim construction requires the court to
determine what claim scope is appropriate in the context of the patents-in-suit.” Id. at 1361
(citations omitted). Thus, even where a court has determined that a claim’s terms have “common
meaning[s],” if the parties “proceed[] to dispute the scope of that claim term,” additional claim
construction may be necessary. Id. In these instances, “[d]istrict courts may engage in a rolling
claim construction, in which the court revisits and alters its interpretation of the claim terms as its
understanding of the technology evolves.” Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d
1352, 1361 (Fed. Cir. 2002); see also In re Papst Licensing Digit. Camera Pat. Litig., 778 F.3d
1255, 1261 (Fed. Cir. 2015) (“[A] district court may (and sometimes must) revisit, alter, or
supplement its claim constructions (subject to controlling appellate mandates) to the extent
necessary to ensure that final constructions serve their purpose of genuinely clarifying the scope
of claims for the finder of fact.”); Conoco, Inc. v. Energy & Env’t Int’l, L.C., 460 F.3d 1349, 1359
(Fed. Cir. 2006) (“[A] district court may engage in claim construction during various phases of
litigation, not just in a Markman order.”).
Here, the parties continue to dispute the scope of the word “interconnected” in the ‘863
Patent’s disputed claims. Accordingly, the Court must revisit claim construction to resolve the
parties’ dispute as to the plain and ordinary meaning of “interconnected” in the context of the ‘863
Patent’s independent claims.

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2. Legal Standard
“The patent system is based on the proposition that claims cover only the invented subject
matter. As the Supreme Court has stated, ‘[i]t seems to us that nothing can be more just and fair,
both to the patentee and the public, than that the former should understand, and correctly describe,
just what he has invented, and for what he claims a patent.’” Phillips v. AWH Corp., 415 F.3d
1303, 1321 (Fed Cir. 2005) (en banc) (alteration in original) (quoting Merrill v. Yeomans, 94 U.S.
568, 573–74 (1876)). Ultimately, the purpose of claim construction is to “capture the scope of the
actual invention.” Id. at 1324.
“There is a heavy presumption that claim terms are to be given their ordinary and
customary meaning.” Aventis Pharms. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir.
2013). The ordinary meaning of a claim term is not “the meaning of the term in the abstract,” but,
rather, “its meaning to the ordinary artisan after reading the entire patent.” Phillips, 415 F.3d at
1321. Ordinary meaning is not determined “in a vacuum.” Eon Corp. IP Holdings v. Silver Spring
Networks, Inc., 815 F.3d 1314, 1320 (Fed. Cir. 2016) (quoting Medrad, Inc. v. MRI Devices Corp.,
401 F.3d 1313, 1319 (Fed. Cir. 2005)). Rather, “[d]etermining the limits of a patent claim requires
understanding its terms in the context in which they were used by the inventor, considered by the
examiner, and understood in the field of the invention.” Toro Co. v. White Consol. Indus., Inc.,
199 F.3d 1295, 1299 (Fed. Cir. 1999).
“When construing claim terms [courts] first look to, and primarily rely on, the intrinsic
evidence, including the claims themselves, the specification, and the prosecution history of the
patent, which is usually dispositive.” Sunovion Pharms., Inc. v. Teva Pharms. USA, Inc., 731 F.3d
1271, 1276 (Fed. Cir. 2013). The intrinsic record takes precedence because “competitors are
entitled to review the public record, apply the established rules of claim construction, ascertain the

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scope of the patentee’s claimed invention and, thus, design around the claimed invention.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). The claims, both
asserted and unasserted, can be “valuable sources of enlightenment as to the meaning of a claim
term.” Phillips, 415 F.3d at 1314. The claims are also part of the “fully integrated written
instrument . . . consisting principally of [the] specification that concludes with the claims.” Id. at
1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (Fed. Cir. 1995)). For
that reason, the specification “is always highly relevant to the claim construction analysis. Usually,
it is dispositive; it is the single best guide to the meaning of a disputed term.” Id. (quoting Vitronics,
90 F.3d at 1582).
In addition, a court can consider the patent’s prosecution history, which can demonstrate
“how the PTO and the inventor understood the patent.” Id. at 1317. “Any explanation, elaboration,
or qualification presented by the inventor during patent examination is relevant, for the role of
claim construction is to ‘capture the scope of the actual invention’ that is disclosed, described, and
patented.” Fenner Invs., Ltd. v. Cellco P’ship, 778 F.3d 1320, 1323 (Fed. Cir. 2015) (citation
omitted). Because the prosecution history “represents an ongoing negotiation between the PTO
and the applicant, rather than the final product of that negotiation,” however, “it often lacks the
clarity of the specification and thus is less useful for claim construction purposes.” Phillips, 415
F.3d at 1317.
In most instances, analysis of the intrinsic evidence alone will resolve claim construction
disputes. Vitronics, 90 F.3d at 1583; see also Seabed Geosolutions (US) Inc. v. Magseis FF LLC,
8 F.4th 1285, 1287 (Fed. Cir. 2021) (“If the meaning of a claim term is clear from the intrinsic
evidence, there is no reason to resort to extrinsic evidence.”). But the Court may also rely on
extrinsic evidence, “which ‘consists of all evidence external to the patent and prosecution history,

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including expert and inventor testimony, dictionaries, and learned treatises.’” Phillips, 415 F.3d
at 1317 (quoting Markman, 52 F.3d at 980). “Extrinsic evidence is to be used for the court’s
understanding of the patent, not for the purpose of varying or contradicting the terms of the
claims.” Genuine Enabling Tech. LLC v. Nintendo Co., 29 F.4th 1365, 1373 (Fed. Cir. 2022)
(cleaned up; quoting Markman, 52 F.3d at 981); see also Phillips, 415 F.3d at 1324 (recognizing
that a court is not “barred from considering any particular [extrinsic] sources or required to analyze
sources in any specific sequence, as long as those sources are not used to contradict claim meaning
that is unambiguous in light of the intrinsic evidence”).
3. Analysis
The intrinsic evidence demonstrates that Eljen’s interpretation of “interconnected” in the
context of the ’863 Patent is not supportable. Rather, Geomatrix’s view that “interconnected” is
synonymous with “connected” in the context of the Patent—though broad—is correct. In light of
this finding, no reasonable juror could find that the Accused Mantis Products do not infringe the
‘863 Patent, and Geomatrix is entitled to judgment as a matter of law on direct infringement.
a. The Claims
The Court starts with the claim language, in which “interconnected” and “connected” are
used synonymously. For instance, independent claim 1 describes the absence of an “intervening
intersecting infiltrative surface that connects the adjacent channels,” ‘863 Patent at col. 17:10–13
(emphasis added); claim 2 similarly describes that the “separations between adjacent pairs do not
include interconnecting infiltrative surfaces along the length of the adjacent pairs,” id. at col.
17:21–23 (emphasis added). The words “connects” and “interconnecting” are therefore used to
describe a similar negative limitation in two different claims. Independent claim 22 and dependent
claim 28 likewise interchangeably use “connects” and “interconnected” to describe a similar

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negative limitation. See id. at cols. 18:35–40, 19:27–30. Although there is a presumption that
different terms in a patent have different meanings, see CAE Screenplates Inc. v. Heinrich Fiedler
GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000), that presumption can be overcome where
the evidence indicates the patentee used terms interchangeably, as Mr. Potts did here. Baran v.
Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010).
Eljen’s proposed construction—that “interconnected” means “mutually joined for fluid
interflow”—is found nowhere in the language of the claims themselves. Instead, Eljen cobbles
together this construction from various provisions, including the preamble for the claims, which
generally describes a “system for wastewater.” See Eljen’s Suppl. Br. at 8. But that description is
of the system as a whole and is not particularly instructive as to the specific meaning of
“interconnected.” Eljen next claims that the prefix “‘[i]nter-’ evokes the concept of back-andforth, as one would expect of an interflow or redistribution of water.” Id. But the Court’s
construction of the term is not dependent on what concepts a term evokes; the Court must instead
ground its construction in the language of the terms itself. Nor does the clause “to each other” that
follows the word “interconnected” necessarily suggest that the channels must be mutually joined
for fluid interflow; there is nothing in the plain language of the claims to support the idea that the
interconnection must be for this very specific purpose, as opposed to simple connection.
Perhaps Eljen’s strongest argument about claim language is that each of the independent
claims of the ‘863 Patent list the wastewater delivery conduit (the pipe) as an element separate
from the element containing the “interconnected to each other” limitation. Id. at 9. In Eljen’s
view, this suggests that the pipe cannot be the source of the interconnectedness. See Kyocera
Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1382 (Fed. Cir. 2022) (noting that
separate listing of claim elements creates a presumption that those components are distinct). The

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separate placement of the distribution pipe element in the claims, however, cannot overcome the
fact that the claims themselves do not speak of interconnectedness being limited to the purpose of
fluid flow, whether two-way or otherwise. And, in any event, this argument would not be relevant
to the other elements that connect the Accused Mantis Products, such as the cardboard corners and
black spacers.
In sum, Eljen urges the Court to adopt a narrow construction of “interconnected” that finds
no grounding in the language of the claims (but, not coincidentally, would result in a finding of
noninfringement). The Court concludes that the language of the claims supports not Eljen’s view,
but Geomatrix’s.
b. The Specification
The specification likewise supports Geomatrix’s construction, at least slightly.

The

specification describes, in the section describing low aspect ratio conduits, that multiple low aspect
conduits “may be installed in spaced apart rows, or in segments which are spaced apart, all
interconnected by suitable distribution lines.” ‘863 Patent at cols. 3:67–4:2 (emphasis added). A
natural reading of the phrase “interconnected” here is that the conduits can be “connected” by
distribution lines. The specification does not suggest that a more specialized purpose must be
ascribed to the word “interconnected” when used in this context. Eljen’s logic is that the referenced
interconnected distribution lines do “not dose wastewater from its source,” because each conduit
has its own dosing pipe; therefore, it claims, the distribution lines “mutually join the low aspect
channels to allow fluid interflow,” and that must therefore be the definition of “interconnected.”
Eljen’s Suppl. Br. at 12. But the Court sees no evidence in the specification that such a narrow
definition of “interconnected” was intended.

In particular, the Court cannot find that the

specification reveals a “special definition given to a claim term by [Mr. Potts] that differs from the

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meaning it would otherwise possess,” such that his lexicography would govern, or that Mr. Potts
intentionally disavowed the claims’ scope. See Phillips, 415 F.3d at 1316. Simply put, at least in
the context of the Patent’s discussion of low aspect ratio conduits, the Court believes the ordinary
meaning of “interconnected” is “connected.”
Although the written description of high aspect ratio conduits does not use the term
“interconnected,” the figures provided at the beginning of the Patent allow some insight into how
channels in high aspect ratio conduits may be interconnected. At oral argument, the Court probed
counsel for Geomatrix as to how Figure 16 has two channels interconnected. ECF No. 192 at 8–
9. Counsel explained that the channels in Figure 16 are interconnected via a geonet volume
running across the U-shaped channels, id., for the purpose of water distribution and redistribution,
id. at 19; see also id. at 23. When counsel for Eljen was queried on the same figure, counsel
explained that the U-shaped channels provide interconnection by allowing for water redistribution
between what would otherwise be disconnected, parallel channels. Id. at 89, 101–02.
The Court is mindful, however, to not read limitations from a preferred embodiment in the
specification into the claim, absent a clear indication that the patentee intended the claims to be so
limited. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004); see also
ECF No. 192 at 9 (counsel for Geomatrix explaining that, depending on installation, a distribution
pipe could interconnect according to the claims). Thus, the Court cannot find that the specification
necessarily supports Eljen’s view that interconnection involves wastewater distribution and
redistribution. Rather, the specification supports Geomatrix’s interpretation, slightly.
c. Prosecution History
It is in the prosecution history that Eljen finds the most support for its reading of
“interconnected.” But, as noted above, the prosecution history is less useful for claim construction

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purposes because it reflects ongoing negotiation about the scope of the Patent, rather than the “final
product of that negotiation.” Phillips, 415 F.3d at 1317.
The relevant prosecution history concerns the PTO examiner’s initial rejection, and then
acceptance, of the claims of the ‘863 Patent. By way of background, on September 8, 2013, the
PTO examiner rejected Mr. Potts’s claim to an invention with channels being interconnected at
least at the bottom of the channels. ‘863 Patent File History, ECF No. 169-25 at 311–12. The
examiner stated that Mr. Potts’s claim was unpatentable in light of the Donlin ‘994 Patent. Id.
Specifically, the examiner noted that, in the Donlin ‘994 Patent, at least two channels were
interconnected, citing the “Figures where pipe goes through the channels and positioned above the
channels; the pipe going through the channels is considered as ‘interconnecting’ the channels.” Id.
at 207. Figure 19 from the Donlin ‘994 Patent depicts the interconnecting pipe, which the Donlin
‘994 Patent describes as “support pipe” (12).

See Donlin ‘994 Patent, ECF No. 169-14 at 7. The Donlin invention referred to the
channels (14) as “interconnected,” see id. at col. 6:64–66, and its specification makes clear that the
support pipe need not be connected to the fluid source, id. at col. 6:12–14. The patent examiner
thus contemplated that the support pipe (12) could interconnect the channels without necessarily
being used for fluid interflow (at least from the wastewater source). This supports Geomatrix’s
contention that channels can be interconnected without the need for fluid interflow.
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Eljen contends that, in Mr. Potts’ response to the examiner’s rejection, he used the term
“interconnected” in the context of water distribution/fluid interflow. To be sure, there are
references in Mr. Potts’ submission to water distribution. As Mr. Potts explains in his 1.131
Declaration 6 submitted to the PTO, his Invention Disclosure (Exhibit B to his Declaration)
includes figures he drew of the bottom of high aspect ratio conduits that could be “positioned along
a shared plane of reference in order to re distribute water among them.” Potts 1.131 Decl., ECF
No. 169-25 at 255 ¶ 19 (emphasis added). Page one of Exhibit B states as follows: “A wastewater
distribution pipe(s) can be installed over the top of the high aspect ratio conduits for water
distribution. This distribution pipe can be installed over the high aspect ratio conduit or into
another low or high aspect ratio conduit that interconnects the parallel conduits.

An

interconnecting conduit can also be installed at the bottom of the high aspect ratio conduits to
redistribute water to all the high aspect ratio conduits, if necessary.” Id. at 268 (emphasis added).
Mr. Potts describes Figure 3 as showing a high aspect ratio conduit that achieves wastewater
redistribution via “interconnected ends.” Id. at 255 ¶ 19; id. at 272. But Mr. Potts also explains in
his declaration that his prototype device had “slotted pipes below to interconnect the bottoms of
the mat,” without any reference to the slotted pipes being used for water distribution. Id. at 256
¶¶ 22–23.
The patent examiner ultimately issued the ‘863 Patent, of course, but without any
elaboration of the meaning of the word “interconnected.” The Court finds convincing Geomatrix’s
argument that, had Mr. Potts truly meant for “interconnected” to mean “mutually joined for fluid
interflow,” he could have distinguished his invention from the Donlin ‘994 Patent in that manner

A declaration under 37 C.F.R. § 1.131 enables a patent applicant to establish invention of the “subject matter of the
rejected claim prior to the effective date of the reference or activity on which the rejection is based.” In essence, it is
a declaration of prior invention.

6

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when contesting the rejection. See Geomatrix’s Suppl. Br. at 18–19. He did not do so, suggesting
that both he and the examiner treated the term “interconnected” as meaning, simply, “connected.”
Nor does a single sentence in the provisional application that the ‘863 Patent claims the
benefit of—that the infiltrative surfaces “can be interconnected . . . or fed with wastewater
independently of one another”—carry the day. ‘863 Patent Provisional Application, ECF No. 7111 at 4. A provisional application can be part of the intrinsic evidence to be considered for claim
construction. See MPHJ Tech. Invs., LLC v. Ricoh Ams. Corp., 847 F.3d 1363, 1369 (Fed. Cir.
2017) (citations omitted). But the Court agrees with Geomatrix that relying on this one line in a
provisional application, by itself, is “far too slender a reed to support the judicial narrowing of a
clear claim term,” Geomatrix’s Suppl. Br. at 23–24 (quoting N. Telecom Ltd. v. Samsung Elecs.
Co., 215 F.3d 1281, 1294 (Fed. Cir. 2000)), particularly where the sentence highlighted by Eljen
does not appear in the ‘863 Patent. 7
d. Extrinsic Evidence
The Court is sufficiently convinced that the intrinsic evidence described above supports
Geomatrix’s reading of the claim term “interconnected.” The Court therefore need not rely on
extrinsic evidence. But it bears noting that the 2004 edition of the Merriam-Webster dictionary
defines “interconnect” as “to connect with one another.” See ECF No. 197-3 at 4.
e. In Sum
Because the Accused Mantis Products meet both the “area” and “interconnected”
limitations of the ‘863 Patent, the Court finds they infringe the ‘863 Patent as a matter of law.
Geomatrix is therefore entitled to summary judgment on its claim of direct patent infringement.

Having concluded that the intrinsic evidence supports Geomatrix’s reading, the Court need not address its prior art
references.

7

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WRITTEN DESCRIPTION
A finding of infringement does not end the Court’s task, however. The Court must address

both parties’ invalidity arguments, which remain live. See Pandrol USA, LP, 320 F.3d at 1364. It
begins with Eljen’s contention that the ‘863 Patent is invalid for lack of written description of the
term “oblique angle.” The Court finds that a reasonable jury could find clear and convincing
evidence that the Patent is invalid for this reason, but that such a conclusion is not appropriate for
the Court to make as a matter of law, on the present record. Accordingly, the Court denies both
Geomatrix’s motion for summary judgment and Eljen’s motion for summary judgment on the issue
of whether the ‘863 Patent is invalid for lack of an adequate written description.
The Patent Act requires that a patent specification contain “a written description of the
invention, and of the manner and process of making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the
same.” 35 U.S.C. § 112(a). A patentee “can lawfully claim only what he has invented and
described, and if he claims more his patent is void.” Carnegie Mellon Univ. v. Hoffmann-La Roche
Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008). To that end, the specification must “describe the
invention sufficiently to convey to a person of skill in the art that the patentee had possession of
the claimed invention at the time of the application, i.e., that the patentee invented what is
claimed.” LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). The
written description doctrine “prohibits new matter from entering into claim amendments,
particularly during the continuation process.” Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d
1366, 1379 (Fed. Cir. 2009). Specifically, when the scope of a claim is changed by amendment
“in such a way as to justify an assertion that it is directed to a different invention than was the

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original claim,” the Court should inquire “whether the newly claimed subject matter was described
in the patent application when filed.” In re Wright, 866 F.2d 422, 424 (Fed. Cir. 1989).
To determine if a specification contains an adequate written description, the Court must
make “an objective inquiry into the four corners of the specification from the perspective of a
person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). The written description inquiry is a question of fact. Id. Because a
patent is presumed valid upon issuance, see 35 U.S.C. § 282, a patent challenger “bears the burden
of proving the factual elements of invalidity by clear and convincing evidence.” Pfizer, Inc. v.
Apotex, 480 F.3d 1348, 1359 (Fed. Cir. 2007).
Eljen must prove by clear and convincing evidence that the written description requirement
has not been satisfied. See Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682
(Fed. Cir. 2015). Eljen’s invalidity argument centers on language in the claims requiring the “area
of the conduit having the wastewater egress openings [to] traverse[] a majority of the paired
infiltrative surfaces at an oblique or perpendicular angle.” ‘863 Patent at col. 17:17–20 (emphasis
added) (independent claim 1). Similar language appears in independent claims 22 and 26. Eljen
argues that there is no mention of an oblique angle in either the original patent application filed in
2006 or in the continuation application from which the ‘863 Patent issued and, therefore, that the
Patent is invalid. Eljen’s Opening Br. at 12–13. Geomatrix counters that (1) there is at least a
genuine dispute of material fact about whether the original patent application described an oblique
angle, pointing to its reference to a Z-shaped channel, its hand-drawn figures, and the fact that the
PTO examiner initially had the same objection but later withdrew it following Geomatrix’s appeal;
and (2) going further, Eljen has failed to provide enough support that a reasonable jury could
conclude, by clear and convincing evidence, that the Patent is invalid on this basis. Geomatrix’s

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Opening Br. at 50–53; Geomatrix’s Opp’n Br. at 25–31. The Court concludes that this issue must
be decided by a jury, and therefore denies both parties’ motions for summary judgment on this
point.
With respect to Eljen’s motion for summary judgment, the Court finds that there is a
genuine dispute about whether the ‘917 Application’s statement that the “high aspect channels may
be ‘Z’ shaped for additional surface area” sufficiently discloses the possibility of an oblique angle.
See ‘917 Application, ECF No. 169-40 at 21. First, there is a question whether a distribution pipe
would be oriented relative to the “Z” in a way that would create an oblique angle. Compare Eljen’s
Opening Br. at 30–31 (arguing that the sentence in the ‘917 Application “has nothing to do with
orientation of a pipe or oblique angles” and would require a person of ordinary skill in the art to
speculate, in contravention of the written description requirement) with Geomatrix’s Opp’n Br. at
27 (arguing that a person of ordinary skill in the art would only need to look at the figures depicting
U-shaped embodiments to determine how a pipe should be oriented in the Z-shaped embodiment).
Second, there is a question whether the sentence in the ‘917 Application is referring to a Z-shape
when viewing the embodiment from the top, side, or front. Compare Eljen’s Opening Br. at 31–
32 (asserting that even Geomatrix’s expert did not know whether the Z-shaped channel would be
Z-shaped when viewed from the top, side, or front) with Geomatrix’s Opp’n Br. at 28 (asserting
that because the Patent 8 describes the U-shaped embodiment from a top view, a person of ordinary
skill in the art would also look at the Z-shaped embodiment from the top). Third, there is a question
whether the Z-shaped channels would be shaped like the letter Z, or like a Z-shaped bracket, which
has perpendicular angles. Compare Eljen’s Opening Br. at 31–32 (arguing that there is no evidence

Although Geomatrix refers to Figures 16 and 17 of the ‘863 Patent as describing the U-shaped embodiments, the
‘917 Application also includes the same figures, albeit hand-drawn, that depict the same U-shaped embodiments. See
‘917 Application at 46–47.
8

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that even if the Z-shaped channel were viewed from the top, it would have a slant and not right
angles like a standard Z-shaped bracket) with Geomatrix’s Opp’n Br. at 28 (arguing that Eljen has
only provided arguments on how a Z-shaped channel might look, but not actual evidence). These
questions create a genuine dispute of material fact as to whether oblique angles are described in
the original patent application, through its reference to Z-shaped channels.
Additionally, the Court agrees with Geomatrix that Eljen has not met the clear and
convincing evidence standard as a matter of law, especially where Eljen’s arguments are backed
by inadequate expert evidence. As an initial matter, Eljen relies on conclusory expert analysis that
is less than a page long. See Lombardo Expert Rep., ECF No. 169-17 at 59. Mr. Lombardo
concludes that “[t]here is not a single embodiment disclosed in Mr. Potts’ application where even
an example of an oblique angle is shown or described” after making only two (also conclusory)
observations: (1) the patent application does not use the term “angle” or any similar term, and (2)
the “[f]igures of the application uniformly disclose only a perpendicular angle.” Id. ¶¶ 180–81.
Only two paragraphs actually discuss the ‘917 Application, and neither of those paragraphs discuss
the sentence about the Z-shaped embodiment that takes center stage in Eljen’s motion for summary
judgment. There is such little analysis of whether an “oblique angle” is described in the
Application that Mr. Lombardo’s recitation of the legal standards of adequate written description
is substantially longer than his discussion of the ‘917 Application. See id. at 58–59. Eljen’s
rejoinder—that if Geomatrix had issues with Mr. Lombardo’s invalidity report, it could have asked
him about it during his deposition—falls flat by impermissibly shifting the burden of proof to
Geomatrix. See Eljen’s Reply, ECF No. 186 at 6. As the party asserting invalidity of the Patent
due to inadequate written description, Eljen—not Geomatrix—is responsible for presenting
evidence to prove its claim. See Eli Lilly & Co. v. Barr Lab’ys, Inc., 251 F.3d 955, 962 (Fed. Cir.

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2001) (only the party seeking to invalidate a patent at summary judgment bears the burden of
proof, whereas a moving party seeking to have a patent held not invalid at summary judgment only
needs to show that the nonmoving party bearing the burden of proof failed to meet its burden).
Further, Mr. Lombardo’s analysis of the written description issue is based on an incomplete
file history of the ‘863 Patent prosecution. Eljen is incorrect that Mr. Lombardo reviewed the
entire file history, see Eljen’s Reply at 6, when his “Information Reviewed In Support of My
Opinions” document clearly shows that he reviewed only “USPT Office Action, dated September
13, 2013” and “Response to the September 13, 2013 Office Action, dated February 14, 2014,” to
the exclusion of the rest of the file history. See ECF No. 169-17 at 71–72. Thus, it appears Mr.
Lombardo did not consider Geomatrix’s patent appeal brief dated January 8, 2015, in which
Geomatrix presented arguments that persuaded the PTO examiner to reverse his written description
rejection based on the purported lack of support for an “oblique angle” in the ‘917 Application.
See Patent Appeal Br., ECF No. 169-25 at 71–72. In that brief, Geomatrix asserted that: (1) the
‘917 Application describes channels as comprising various materials such as stringy mats, stone,
hollow flat pipes, and other materials, which would lead a person of ordinary skill in the art to
understand that the pipes overlying the channels would not necessarily traverse them at 90°; (2)
because the channels may be constructed in various ways, including by bending geonet into the
desired shape, a person of ordinary skill in the art would understand that, in practice, a pipe would
not necessarily cross each channel at exactly 90°; and (3) the hand-drawn figures in the ‘917
Application demonstrate oblique angles. Id. Although the PTO examiner did not articulate why
he decided to overturn his original rejection on the oblique angle point, there is a possibility that
at least one of Geomatrix’s arguments was convincing to him. Mr. Lombardo’s report does not
explain why any of these arguments fail.

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With respect to Geomatrix’s motion for summary judgment, the Court concludes Eljen has
pointed to evidence from which a reasonable jury could conclude, by clear and convincing
evidence, that the written description requirement was satisfied, rendering judgment as a matter of
law in Geomatrix’s favor inappropriate. The parties agree that the original patent application made
no explicit reference to oblique angles, which a reasonable jury could find weighs in Eljen’s favor.
Geomatrix highlights that the ‘917 Application contains two hand-drawn figures that depict
conduits traversing infiltrative surfaces at non-perpendicular angles. See Geomatrix’s Opening Br.
at 52 (referencing Figures 16 and 19 of the ‘917 Application); Geomatrix’s Opp’n Br. at 30 (same).
Geomatrix’s expert concurs these drawings show oblique angles. ECF No. 169-11 ¶¶ 784–85; see
also Geomatrix’s Reply, ECF No. 185 at 17–18. But, as Eljen points out, because these figures
were drawn by hand, it is not demonstrably clear whether the lines representing the infiltrative
surfaces are intentionally crooked or if they are crooked simply due to the imprecision of drawing
by hand. See Eljen’s Opp’n Br. at 44–46. The Court also notes that Mr. Potts later replaced handdrawn Figures 16 and 19 with digitally-rendered versions that appear to demonstrate wastewater
distribution conduits that traverse the channels at only perpendicular angles. Id. at 45. From this
evidence—and, depending on its resolution of the Z-shaped channel issue—a reasonable jury
could conclude that there is clear and convincing evidence that the written description requirement
had not been satisfied. 9

Eljen also argues that, even if it concedes that Figures 16 and 19 describe angles that are one to two degrees off from
90°, they do not sufficiently demonstrate that Mr, Potts possessed the “full scope” of the claimed invention, i.e., all
oblique angles, and thus the Court must find for Eljen as a matter of law. Eljen’s Opp’n Br. at 46; Eljen’s Reply at 7–
8. Eljen’s insistence that the written description must possess the “full scope” of the invention is misplaced. Cases
that require such specificity in the written description usually arise in the context of pharmaceutical patents, which
naturally require particularity and precision. See, e.g., AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech,
Inc., 759 F.3d 1285, 1301 (Fed. Cir. 2014) (upholding jury verdict of invalidity for lack of adequate written description
because the pharmaceutical patents did not describe representative examples “to support the full scope of the claims”);
cf. Eljen’s Opp’n Br. at 46–47 (citing only cases in the pharmaceutical context).
9

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In sum, because the evidence presented by both parties regarding the Z-shaped channel and
the hand-drawn figures create a genuine dispute of material fact on whether the ‘863 Patent is
invalid for lack of written description, the Court denies both parties’ motions for summary
judgment on this issue.
VI.

INVALIDITY
Next, the Court evaluates the parties’ motions for summary judgment as to Eljen’s

invalidity theories of anticipation and obviousness under 35 U.S.C. §§ 102 and 103, respectively. 10
As noted above, because the burden of establishing invalidity of a patent rests on the party
asserting invalidity, 35 U.S.C. § 282, “a moving party seeking to invalidate a patent at summary
judgment must submit such clear and convincing evidence of invalidity so that no reasonable jury
could find otherwise. Alternatively, a moving party seeking to have a patent held not invalid at
summary judgment must show that the nonmoving party, who bears the burden of proof at trial,
failed to produce clear and convincing evidence on an essential element of a defense upon which
a reasonable jury could invalidate the patent.” Eli Lilly, 251 F.3d at 962.

Sections 102 and 103 were amended by the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, § 3,
125 Stat. 284, 285–89 (2011). Because the original application for the ‘863 Patent was filed in 2006, the Court applies
the pre-AIA version of these statutes throughout this opinion.
10

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In its Amended Invalidity Contentions, Eljen argues that the ‘863 Patent is invalid because
there are twelve prior art references 11 that anticipate one or more of its claims, and a combination
of one or more of fifteen prior art references 12 renders its claims obvious to a person of ordinary
skill in the art. Amended Invalidity Contentions, ECF No. 169-10 at 18–21. Eljen now moves for
summary judgment that the ‘863 Patent is invalid because 1988 In-Drains, by itself, anticipates the
Patent by disclosing all the elements of its independent claims 1, 22, and 26 and renders its claims
obvious to a person of ordinary skill in the art. Eljen’s Opening Br. at 32–40. Eljen also moves
for summary judgment that 1992 In-Drains, combined with 1988 In-Drains or the Glasser ‘333
Patent, invalidates the ‘863 Patent by making its claims obvious to a person of ordinary skill in the
art. Id. at 40–44.
In turn, Geomatrix moves for summary judgment that the ‘863 Patent is valid because Eljen
has not provided clear and convincing evidence that 1988 In-Drains, 1992 In-Drains, Ruck L Fins,
the Mini/Max Brochure and the Mini/Max Letters (collectively, “Mini/Max References”), 1987

Only nine of the twelve references are at issue in the parties’ motions for summary judgment as to anticipation: (1)
a paper authored by Dr. Rein Laak titled “Using In-Drains at Soil Clogging Infiltration Surface” for presentation at
the 1988 International Summer Meeting of the American Society of Agricultural Engineers (“1988 In-Drains”); (2) a
promotional publication authored by Dr. Laak in 1992 titled “In-Drains: Sand Filled 6” x 4’ W x 18” Long” (“1992
In-Drains”); (3) a product manual dated March 31, 1997 and written by Dr. Laak called, “Ruck L Fins”; (4) a brochure
(“Mini/Max Brochure”) and (5) letters from 2003 between Eljen’s agent and the Connecticut Department of Public
Health regarding an Eljen product called the Mini/Max Absorption System (“Mini/Max Letters”); (6) a paper authored
by Dr. Laak titled, “On-Site Wastewater Drain Fields Using Light Weight In-Drains,” for the Second International
Conference on Cold Regions Environmental Engineering in 1987 (“1987 In-Drains”); (7) an undated “Eljen In-Drain”
brochure (“In-Drain Brochure”); (8) a pre-1990 Eljen memorandum titled, “Procedure for Assembling a Ruck System
In-Drain Unit” (“In-Drain Memo”); and (9) a paper authored by Dr. Laak titled, “Using In-Drain Geosynthetics in
Soil Infiltration Systems” for presentation at the 1989 International Summer Meeting of the American and Canadian
societies for agricultural engineering (“1989 In-Drains”). Geomatrix also moves for summary judgment that Eljen
has not demonstrated by clear and convincing evidence that Eljen’s Mini/Max product (“Mini/Max”), which was not
included in Eljen’s Amended Invalidity Contentions, is prior art that anticipates the ‘863 Patent. Geomatrix’s Opening
Br. at 24.
12
The fifteen prior art references are: (1) the Donlin ‘994 Patent; (2) Ruck L Fins; (3) the Mini/Max Brochure; (4)
the Mini/Max Letters; (5) 1987 In-Drains; (6) the In-Drain Brochure; (7) In-Drain Memo; (8) 1988 In-Drains; (9)
1989 In-Drains; (10) 1992 In-Drains; (11) U.S. Patent No. 4,880,333 (the “Glasser ‘333 Patent”); (12) U.S. Patent No.
6,048,131 (the “Laak ‘131 Patent”); (13) U.S. Patent No. 5,597,264 (the “Laak ‘264 Patent”); (14) U.S. Patent No.
4,824,287 (the “Tracy ‘287 Patent”); and (15) Dr. Rein Laak, Wastewater Engineering Design for Unsewered Areas
(1st ed. 1986).
11

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In-Drains, the In-Drain Brochure, the In-Drain Memo, 1989 In-Drains, and the Mini/Max are prior
art references that anticipate the ‘863 Patent.

Geomatrix’s Opening Br. at 19–31. As to

obviousness, Geomatrix argues that Eljen’s Amended Invalidity Contentions are fatally deficient
for untimeliness and for lacking specificity and support, id. at 32–35, and contends, on the merits,
that Eljen has failed to present evidence on essential elements of its obviousness defense, id. at
37–45.
For the reasons described below, the Court denies Eljen’s motion for summary judgment
as to invalidity by anticipation and obviousness, grants in part and denies in part Geomatrix’s
motion for summary judgment as to no invalidity by anticipation, and grants in part and denies in
part Geomatrix’s motion for summary judgment as to Eljen’s obviousness theories.
A. Threshold Issues: Printed Publication and the Public Use/On-Sale Bars
Patents enjoy a presumption of validity. Iovate Health Scis., Inc. v. Bio-Engineered
Supplements & Nutrition, Inc., 586 F.3d 1376, 1380 (Fed. Cir. 2009). But a patent may be invalid
if the challenger shows, by clear and convincing evidence, that the claimed invention was
“described in a printed publication . . . or in public use or on sale . . . more than one year prior to
the date of the application for patent in the United States.” 35 U.S. § 102(b); accord Iovate Health
Scis., 586 F.3d at 1380. These bars to patentability are “grounded on the principle that once an
invention is in the public domain, it is no longer patentable by anyone.” In re Lister, 583 F.3d
1307, 1311 (Fed. Cir. 2009).
If a printed publication described the invention or if the invention was in public use or on
sale prior to the critical date, the relevant prior art can fully anticipate the claimed invention or
render it obvious, provided that other requirements for anticipation and obviousness are met. See,
e.g., ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 865 (Fed. Cir. 2010); Tec Air, Inc. v. Denso
Mfg. Mich. Inc., 192 F.3d 1353, 1358 (Fed. Cir. 1999). Thus, the Court first addresses the threshold
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questions of whether certain references were either printed publications or show that the invention
was in public use or on sale in the relevant period.
1. Printed Publication
Here, the parties first dispute whether certain proposed prior art references are “printed
publications” under Section 102(b), such that they could be considered prior art for anticipation
and obviousness purposes. See Riverwood Int’l Corp. v. R.A. Jones & Co., Inc., 324 F.3d 1346,
1354 (Fed. Cir. 2003) (recognizing that the term “prior art,” as used in Section 103, refers to at
least “the statutory material named” in Section 102). Whether a reference is a printed publication
“involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s
disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)
(citations omitted). “Because there are many ways in which a reference may be disseminated to
the interested public, ‘public accessibility’ has been called the touchstone in determining whether
a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC
v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99
(Fed. Cir. 1986)). “A reference will be considered publicly accessible if it was ‘disseminated or
otherwise made available to the extent that persons interested and ordinarily skilled in the subject
matter or art exercising reasonable diligence, can locate it.’” Id. (quoting Kyocera Wireless Corp.
v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)). “Whether an anticipatory document
qualifies as a ‘printed publication’ under § 102 is a legal conclusion based on underlying factual
determinations.” Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014) (quoting
SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed. Cir. 2008)).

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a. 1988 In-Drains
First, the Court holds that 1988 In-Drains is a “printed publication,” such that Eljen may
rely on it for its anticipation and obviousness arguments.
The parties agree that 1988 In-Drains is a paper authored by Dr. Laak, an inventor and
frequent collaborator of Eljen. 1988 In-Drains, ECF No. 169-19. The paper states on its face that
it was “[w]ritten for presentation at the 1988 International Summer Meeting of the American
Society of Agricultural Engineers.” Id. at 2. In a 2016 declaration, however, Dr. Laak simply
states that he authored the 1988 In-Drains paper, without reference to it being presented. Dr. Laak
2016 Decl., ECF No. 168-16 ¶ 16. According to Eljen’s expert (Mr. Lombardo), Dr. Laak
presented the paper to 30 to 50 members of the Society of Agricultural Engineers. ECF No. 16917 ¶ 38. Mr. Lombardo states that the paper was spiral bound, assigned a paper number, and freely
distributed amongst conference-goers and anyone else who requested a copy. Id. Mr. Lombardo
makes these conclusions based on “a discussion with Dr. Laak,” as well as Dr. Laak’s declarations
and deposition testimony. Id. ¶ 36. 13
The Court previously held that Dr. Laak’s statements to Mr. Lombardo were inadmissible
hearsay, and therefore 1988 In-Drains was not a printed publication, see Geomatrix, 2024 WL
4753310, at *15–17; but it has granted Eljen’s motion for reconsideration of that ruling. See Order
on Eljen’s Mot. Reconsideration, ECF No. 220. Eljen has overcome the evidentiary hurdle, in that
it has demonstrated that it could present the evidence in an admissible form at trial, through the
testimony of Dr. Laak. Specifically, it is anticipated Dr. Laak would testify that he personally
publicly presented 1988 In-Drains to 30 to 50 members of the American Society of Agricultural
Engineers at the International Summer Meeting of this Society in 1988, and that he freely
The Court expresses no opinion on whether Mr. Lombardo is qualified to provide an expert opinion that 1988 InDrains is a printed publication.
13

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distributed copies of the paper to the people who attended the presentation. Laak Suppl. Decl.,
ECF No. 202-2 ¶ 3. 14
This anticipated testimony strongly suggests 1988 In-Drains is a printed publication. The
Federal Circuit considers various factors in evaluating whether an oral presentation and
accompanying publication qualify as a printed publication. One factor is “the size and nature of
the meetings and whether they are open to people interested in the subject matter of the material
disclosed.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1382 (Fed. Cir. 2018). “Another factor is
whether there is an expectation of confidentiality.” Id. In assessing these factors, the Federal
Circuit has found that a paper delivered orally at a conference for somewhere between 50 and 500
attendees who were persons of ordinary skill in the art, offered freely for distribution, and then
distributed to at least six attendees, qualifies as a printed publication. Mass. Inst. of Tech. v. AB
Fortia, 774 F.2d 1104, 1108–10 (Fed. Cir. 1985). Therefore, Dr. Laak’s testimony concerning
1988 In-Drains being presented and distributed at the conference likely qualifies it as a printed
publication, such that it can be considered as a prior art reference.
The Court must thus take up Geomatrix’s argument that Finnigan Corp. v. International
Trade Commission, 180 F.3d 1354 (Fed. Cir. 1999), requires corroboration when a party’s evidence
of invalidity relies on a single witness’s testimony. See Geomatrix’s Opening Br. at 21. It is an
open question whether the corroboration requirement applies to the present situation. Compare
Netscape Commc’ns Corp. v. ValueClick, Inc. (Netscape III), 704 F. Supp. 2d 544, 553 (E.D. Va.
2010) (“Until the Federal Circuit further clarifies this issue, the safest course, in the circumstances,
While Geomatrix has its doubts about Dr. Laak’s ability to testify at trial, see ECF No. 209 at 24–25, and generally
alludes to Dr. Laak’s working relationship with Eljen, it has not made a frontal attack to his credibility with any
specificity. See Geomatrix’s Opp’n Br. at 31–32; Geomatrix’s Opening Br. at 15–16, 20–21. As a result, the Court
does not believe that Eljen’s summary judgment motion must be denied on the basis that the jury must evaluate Dr.
Laak’s credibility. Cf. TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1158 (Fed. Cir. 2004) (finding
summary judgment inappropriate where the opposing party offered “specific facts that call[ed] into question the
credibility of the movant’s witnesses”).
14

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is to apply the Finnigan corroboration requirement broadly.”) with Stored Value Sols., Inc. v. Card
Activation Techs., Inc., 796 F. Supp. 2d 520, 548 n.33 (D. Del. 2011), aff’d 499 F. App’x 5 (Fed.
Cir. 2012) (holding that witness’s testimony that prior art was publicly known by a certain date
need not be corroborated under Finnigan).
The Court does not believe that Finnigan’s corroboration requirement applies here, with
respect to 1988 In-Drains. The Federal Circuit has explained that the corroboration requirement
is imposed “when a witness’s ‘testimony alone is asserted to invalidate a patent.’” Philip Morris
Prods. S.A. v. Int’l Trade Comm’n, 63 F.4th 1328, 1352 (Fed. Cir. 2023) (quoting Finnigan, 180
F.3d at 1369); see also Woodland Tr. v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir.
1998) (“[T]here is a very heavy burden to be met by one challenging validity when the only
evidence is the oral testimony of interested persons.” (emphasis added)). That is not the case here,
as Eljen is proffering more than simply the oral testimony of one witness to assert the invalidity of
the ‘863 Patent: it also relies on the indicia of public distribution apparent on the copy of 1988 InDrains itself. See Norian Corp. v. Stryker Corp., 252 F. Supp. 2d 945, 957 (N.D. Cal. 2002), aff’d
in part, rev’d in part and remanded on other grounds, 363 F.3d 1321 (Fed. Cir. 2004) (explaining
that the Finnigan corroboration requirement does not apply to testimony about activities where
corroborating records would ordinarily not be expected, such as whether a printed publication was
disseminated at a conference). Thus, the Court does not believe that Finnigan would mandate
corroborating evidence. Because the jury may reasonably find—based on the copy of 1988 InDrains and Dr. Laak’s trial testimony, if he does testify—that the clear and convincing standard is
met, further corroboration is not required.
To the extent that corroboration of Dr. Laak’s anticipated testimony is required under
Finnigan, however, 1988 In-Drains itself bears indicia of public distribution that supports Dr.

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The document was spiral bound, states it was written specifically for

presentation at the 1988 conference, bears the dates of the conference (June 26–29, 1988), and was
assigned a paper number. See ECF No. 169-19 at 2. This is unlike a situation where a document
is undated and witness testimony fills the gaps regarding date of publication and public
accessibility more generally. See TypeRight Keyboard Corp., 374 F.3d at 1158–59 (noting
corroboration required where testimony of interested witnesses were used to support dissemination
of an undated one-page document containing unlabeled photos).
The Court concludes that Eljen has demonstrated, by clear and convincing evidence, that
1988 In-Drains is a “printed publication” for purposes of Section 102(b). Thus, it proceeds to
consider below whether 1988 In-Drains anticipated or rendered obvious the invention described
in the ‘863 Patent.
b. 1992 In-Drains
Both Geomatrix and Eljen move also for summary judgment regarding whether 1992 InDrains is a printed publication, although Eljen raises the issue in support of its obviousness theories
only while Geomatrix discusses 1992 In-Drains in relation to both anticipation and obviousness.
The Court holds that there are disputed questions of material fact regarding whether 1992 InDrains is a printed publication.
As with 1988 In-Drains, in arguing that 1992 In-Drains is a printed publication, Eljen relies
almost exclusively on a conversation Dr. Laak had with Mr. Lombardo. See ECF No. 169-17
¶¶ 36, 40. The Court previously held that 1992 In-Drains, like 1988 In-Drains, was not a printed
publication because Dr. Laak’s comments, offered only through Mr. Lombardo, were inadmissible
hearsay. See Geomatrix, 2024 WL 4753310, at *17. Eljen now asserts that Dr. Laak would testify
that he authored and published 1992 In-Drains as a promotional publication, which he freely and

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publicly disseminated to various state governmental agencies and “other participants in the
industry such as engineers and installers.” ECF No. 202-2 ¶¶ 4, 6. Thus, Eljen has surmounted
the hearsay hurdle.
As with 1988 In-Drains, the Court does not believe that Finnigan’s corroboration
requirement strictly applies for 1992 In-Drains because there is a written copy of 1992 In-Drains
in the record. See 1992 In-Drains, ECF No. 169-20. Thus, Eljen does not solely rely on Dr. Laak’s
oral testimony concerning public distribution of 1992 In-Drains. But the question of whether Eljen
has demonstrated, by clear and convincing evidence, that 1992 In-Drains is a printed publication
is a much closer one than it was for 1988 In-Drains.
First, although Dr. Laak says that he disseminated it to governmental agencies and others,
the copy in the record bears indicia of distribution to only one person—a far cry from the
conference presentation indicia on the cover of 1988 In-Drains. See id. at 2 (bearing stamp for one
person in Sacramento, California). The paper itself also bears no indicia of use as a promotional
document. See id.; cf. Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1373–74 (Fed. Cir.
2021) (finding that a product review article was promotional because it made clear where the
product could be purchased). Moreover, 1992 In-Drains is undated. See ECF No. 169-20. The
only date in the document, “May 1992,” appears on the second page above a photograph of a sand
filled in-drain installation in Connecticut. Id. at 3. The date ascribed to the photograph, however,
says nothing about when the document was distributed or publicly accessible. See TypeRight
Keyboard Corp., 374 F.3d at 1158–59.
But Eljen, for its part, notes that the photograph of the installation suggests that the
technology described in 1992 In-Drains was already put to commercial use in 1992. See Eljen’s
Opp’n Br. at 19; ECF No. 169-20 at 3; Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d

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1365, 1376 (Fed. Cir. 2018) (noting a date on a document, while not dispositive of the date of
public accessibility, is relevant to this question). In addition, the document appears to provide an
overview of installation instructions, and comments such as “the manufacturer will supply full
instructions” and “units shipped partially assembled” could possibly suggest that 1992 In-Drains
was written to be a promotional document. ECF No. 169-20 at 7, 8; cf. Valve Corp., 8 F.4th at
1374.
In the end, the Court cannot conclude on this record that a reasonable jury must conclude
1992-In Drains was a printed publication; though a reasonable jury could so conclude. See Nobel
Biocare Services AG, 903 F.3d at 1378 (“Sufficiency of corroboration is a question of fact.”).
Given that the status of 1992 In-Drains as a printed publication cannot be resolved as a matter of
law based on the record before it, the Court is likewise unable to conclude as a matter of law that
1992 In-Drains does not anticipate the ‘863 Patent. Accordingly, the Court denies Geomatrix’s
motion for summary judgment insofar as it seeks judgment of no invalidity by anticipation
regarding 1992 In-Drains and denies Eljen’s motion insofar as it seeks summary judgment on
obviousness based on 1992 In-Drains. These issues must be decided by the jury.
c. Geomatrix’s Motion: Other References
Although Eljen moves for summary judgment as to anticipation regarding 1988 In-Drains
and as to obviousness regarding 1992 In-Drains, Geomatrix also seeks summary judgment in its
favor of no invalidity by anticipation as to seven other references as well: Ruck L Fins, the
Mini/Max References, 1987 In-Drains, the In-Drain Brochure, the In-Drain Memo, and 1989 InDrains. The Court holds that there are disputed questions of fact as to whether Ruck L Fins
qualifies as a printed publication, but concludes that the Mini/Max References, 1987 In-Drains,
the In-Drain Brochure, the In-Drain Memo, and 1989 In-Drains are not printed publications as a

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matter of law. Thus, the Court grants in part and denies in part Geomatrix’s motion for summary
judgment as to these issues.
i.

Ruck L Fins

Similar to 1992 In-Drains, questions of material fact remain as to whether Ruck L Fins,
which Eljen contends is a product manual published on March 31, 1997, was “freely disseminated
to the public, including engineers and installers,” Eljen’s Opp’n Br. at 19, and thus qualifies as a
printed publication. As with 1988 and 1992 In-Drains, the Court believes that the Finnigan
corroboration requirement does not strictly apply here given that Dr. Laak’s testimony about the
document is corroborated by the existence of the document itself, bearing the March 31, 1997, date
and installation instructions. See Ruck L Fins, ECF No. 169-21. Again, however, the extent and
date of public dissemination of this document is a close question not conclusively answered by the
face of the document. The Court concludes there are genuine questions of material fact precluding
a finding in Geomatrix’s favor that Ruck L Fins is not a printed publication. Accordingly,
Geomatrix’s motion for summary judgment as to no anticipation based on Ruck L Fins is denied.
ii.

The Mini/Max References

Geomatrix also moves for summary judgment as to no invalidity by anticipation for the
Mini/Max References, on two grounds: that the Mini/Max References are not printed publications
and the Mini/Max product was not in public use or on sale 15 more than a year before January 27,
2005, the critical date. The Court agrees with Geomatrix that the Mini/Max References are not
printed publications, and addresses the public use/on-sale bar below.

Geomatrix and Eljen dispute whether the Mini/Max product was “in public use, on sale, or otherwise available to
the public.” See Geomatrix’s Opening Br. at 24 (emphasis added); Eljen’s Opp’n Br. at 20. The Court intentionally
does not refer to the clause “otherwise available to the public” because it does not appear in the pre-AIA version of
§ 102(b) applicable here. Compare 35 U.S.C. § 102(b) (2002) (amended 2011) with 35 U.S.C. § 102(a)(1) (2011).
15

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Regarding the Mini/Max Brochure, ECF No. 169-22, and Mini/Max Letters, ECF No. 16923, Eljen does not respond directly to Geomatrix’s contention that these are not printed
publications because their public accessibility is unknown. The only evidence in the record that
the Mini/Max References were publicly available is Mr. Lombardo’s conversation with Mark
Bram, Eljen’s owner and former president, about the public accessibility of these documents. ECF
No. 169-17 ¶ 37.
The Mini/Max Brochure itself bears no date or indicia of public accessibility; therefore, as
to that document, Eljen appears to rely only on Mr. Bram’s testimony, and corroboration would
likely be required under Finnigan to find that the document is a printed publication. Eljen has not
provided any corroboration for Mr. Bram’s statements. Based on this record, where Finnigan
would require corroborating evidence, no reasonable jury could find in its favor that the Mini/Max
Brochure is a printed publication.
As for the Mini/Max Letters, they bear dates in 2003, which is relevant to the potential date
of public accessibility, so Eljen does not rely solely on Mr. Bram’s testimony. Nonetheless,
although the Mini/Max Letters were addressed to the Connecticut Department of Public Health in
December of 2003, there is no evidence, direct or circumstantial, that they were publicly available.
See Eljen’s Opp’n Br. at 20 (claiming, without citing to any evidence or rule, that the Mini/Max
Letters are “publicly available”). The Court therefore concludes that no reasonable juror could
conclude that the Mini/Max Brochure or Mini/Max Letters are printed publications, so Eljen may
not use these documents to support its invalidity by anticipation or obviousness defenses. The
Court addresses the public use/on-sale bar issue below.

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The Remaining Proposed Prior Art References

Finally, Geomatrix has moved for summary judgment on the issue of whether 1987 InDrains, the In-Drain Brochure, the In-Drain Memo, and 1989 In-Drains are printed publications.
The Court finds that no reasonable juror could find that the foregoing references are printed
publications. While Mr. Lombardo did not base his anticipation opinions directly on these
documents, and while Geomatrix’s arguments are, admittedly, cursory, see Eljen’s Opp’n Br. at
20–21, Eljen has not provided a document-by-document analysis as to why each document could
be considered a printed publication. See In re Klopfenstein, 380 F.3d at 1350. Eljen’s passing
reference to Dr. Laak’s 2017 declaration is insufficient. Eljen’s Opp’n Br. at 20–21 (citing Dr.
Laak 2017 Decl., ECF No. 169-34 ¶¶ 3–5). In his declaration, Dr. Laak explains his marketing
and production of the In-Drain system at a high level and in general terms. ECF No. 169-34 ¶¶ 3–
5. But he explains none of the details from which it is possible to glean whether any of these
documents are printed publications. There is no evidence of their public accessibility through
presentation, archiving, indexing, or any other form of public accessibility.

Accordingly,

Geomatrix is entitled to summary judgment that 1987 In-Drains, the In-Drain Brochure, the InDrain Memo, and 1989 In-Drains are not printed publications, and thus cannot form the basis of
Eljen’s invalidity by anticipation or obviousness defenses.
2. Public Use/On-Sale Bar
The second threshold question the Court addresses is whether the invention described in
the ‘863 Patent was in public use or on sale before the critical date of January 27, 2005. This issue
is raised only as to the Mini/Max in Geomatrix’s motion for summary judgment. See Geomatrix’s
Opening Br. at 24–25. The Court finds that Geomatrix’s motion must be denied on this issue, as a
reasonable jury could conclude that the Mini/Max was in public use or on sale at the relevant time.

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“Section 102(b)’s on-sale bar is triggered when a claimed invention is: (1) ready for
patenting; and (2) the subject of a commercial offer for sale prior to the critical date.” Merck &
Cie v. Watson Lab’ys, Inc., 822 F.3d 1347, 1351 (Fed. Cir. 2016) (citations omitted). “The public
use bar is triggered where, before the critical date, the invention is in public use and ready for
patenting.” Barry v. Medtronic, Inc., 914 F.3d 1310, 1320 (Fed. Cir. 2018); see also Invitrogen
Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1380 (Fed. Cir. 2005) (holding that the “ready for
patenting component” is “another necessary requirement of a public use bar”). The public use
prong of the public use bar is met if the purported use “(1) was accessible to the public” or “(2)
was commercially exploited.” Invitrogen, 424 F.3d at 1380. The accused infringer has the burden
of showing by clear and convincing evidence that there was public use or a sale or offer to sell of
a product more than one year before the relevant date, and the product “must satisfy each claim
limitation of the patent.” Scaltech, Inc. v. Retec/Tetra, LLC, 269 F.3d 1321, 1329 (Fed. Cir. 2001);
Quest Integrity USA, LLC v. Cokebusters USA Inc., 924 F.3d 1220, 1227 (Fed. Cir. 2019) (citing
id. at 1328–29); Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1376, 1377 (Fed. Cir.
2011).
As a preliminary matter, the Court notes that Geomatrix only analyzes the public
accessibility of the Mini/Max under the public use bar, even though it claims that Eljen has not
established that the Mini/Max was either in public use or on sale. Geomatrix’s Opening Br. at 24–
25. “[T]here are differences in the analysis of the two bars: the public use bar focuses on the
public’s reliance on an invention that is thought to be in the public domain, while the on-sale bar
centers on any commercialization beyond the one year grace period.” Honeywell Int’l, Inc. v.
Universal Avionics Sys. Corp., 343 F. Supp. 2d 272, 290 (D. Del. 2004), aff’d, 488 F.3d 982, 996–
1001 (Fed. Cir. 2007).

Because Geomatrix makes no attempt to show that Eljen has not

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demonstrated by clear and convincing evidence that the Mini/Max was on sale before January 27,
2005, the Court denies summary judgment to Geomatrix as to the on-sale bar.
Next, the Court concludes that genuine disputes of material fact preclude summary
judgment on whether the Mini/Max was in public use before the critical date. “A public use under
Section 102(b) includes any public use of the claimed invention by a person other than the inventor
who is ‘under no limitation, restriction, or obligation of secrecy to the inventor.’” Star Sci., Inc.,
655 F.3d at 1377. Commercial exploitation does, however, include “the sale of the device or a
charge for its use of the invention within the confidential confines of the company to generate
commercial benefits.” Invitrogen, 424 F.3d at 1382. Eljen points to the Mini/Max Letters, through
which Eljen had sought approval of the Mini/Max from the Connecticut Department of Public
Health in December of 2003, and presents evidence that the Mini/Max was apparently first sold in
September of 2004.

See Eljen’s Opp’n Br. at 20; ECF No. 169-23; Eljen’s Response to

Interrogatory No. 38, ECF No. 181-3 at 3 (referring to the first invoice for a sale of the Mini/Max
dated September 16, 2004). Eljen alleges that the product described in the Mini/Max Letters and
the Mini/Max Brochure is the product that was first sold on September 16, 2004, and cites as
support Mr. Bram’s discussions with Mr. Lombardo. Eljen’s Opp’n Br. at 20. Taken together,
Eljen’s evidence could provide a sufficient basis for a reasonable factfinder to find that the
Mini/Max was commercially exploited, and therefore in public use, prior to January 27, 2005.
Thus, Geomatrix’s motion for summary judgment as to no public use of the Mini/Max is denied.
Given that neither party attempts to analyze the “ready for patenting” prongs of the on-sale
and public use bars, the Court need not consider the issue. The parties may present their arguments
as to whether the Mini/Max was in public use or on sale before the critical date to the jury.

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B. Anticipation
To summarize, the only prior art reference that has, as a matter of law, satisfied the
threshold requirements discussed above is 1988 In-Drains. Thus, the Court moves to considering
Eljen’s argument that 1988 In-Drains renders the ‘863 Patent invalid by anticipation. It concludes
that it does not. As the Court has found there are questions of fact concerning whether 1992 InDrains, Ruck L Fins, and the Mini/Max meet the threshold requirements described above, it denies
Geomatrix’s motion for summary judgment insofar as it seeks judgment of no invalidity by
anticipation through those references.
“A claim is anticipated if each and every element as set forth in the claim is found, either
expressly or inherently, in a single prior art reference.” Arbutus Biopharma Corp. v. ModernaTX,
Inc., 65 F.4th 656, 662 (Fed. Cir. 2023). To be anticipatory, a prior art reference must satisfy
particular requirements. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). “First, the reference
must disclose each and every element of the claimed invention, whether it does so explicitly or
inherently.” Id. While the Federal Circuit has held that a prior art reference anticipates a claim
only if it discloses all the claimed limitations “arranged or combined in the same way as in the
claim,” it has also stated that a reference can anticipate a claim “even if it does not expressly spell
out all the limitations arranged or combined as in the claim, if a person of skill in the art, reading
the reference, would at once envisage the claimed arrangement or combination.” Kennametal, Inc.
v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (cleaned up). In that vein, an
anticipatory reference must “clearly and unequivocally disclose the claimed [invention] or direct
those skilled in the art to the [invention] without any need for picking, choosing, and combining
various disclosures not directly related to each other by the teachings of the cited reference.”
Sanofi-Synethelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008) (quoting In re Arkley,

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455 F.2d 586, 587 (C.C.P.A. 1972)). 16 Second, the reference must “enable one of ordinary skill in
the art to make the invention without undue experimentation.” In re Gleave, 560 F.3d at 1334
(internal quotation marks omitted).
Although anticipation is a question of fact, “it may be decided on summary judgment if the
record reveals no genuine dispute of material fact.” Encyclopaedia Britannica, Inc. v. Alpine Elecs.
of Am., Inc., 609 F.3d 1345, 1349 (Fed. Cir. 2010).

“The dispositive question regarding

anticipation is whether one skilled in the art would reasonably understand or infer from the prior
art reference’s teaching that every claim limitation was disclosed in that single reference.” Akamai
Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003).
As an initial matter, there appears to be a fundamental dispute between the parties’ experts
about whether embodiments disclosed in 1988 In-Drains may be combined. See BlephEx, LLC v.
Myco Indus., Inc., 24 F.4th 1391, 1400–01 (Fed. Cir. 2022) (expert testimony needed as to whether
a person of ordinary skill in the art would combine teachings in a prior art reference to show
anticipation). Mr. Dickson, Geomatrix’s expert, is clear that he believes 1988 In-Drains contrasts
“two different embodiments: what the document calls ‘Existing In-Drain Fields’ (Fig. 4) and the
author’s ‘New In-Drain Unit’ (Fig. 5-7).” Dickson Rebuttal Rep., ECF No. 169-11 ¶ 39. Mr.
Lombardo, on the other hand, does not explicitly address whether there are two different
embodiments, although he does refer to the “new” in-drain unit as the “spacer embodiment” and
the “existing” in-drain unit as the “no-spacer embodiment.” See, e.g., ECF No. 169-17 ¶¶ 123(a)–
(b). He uses the embodiments’ features interchangeably: for instance, the dimensions of Figures
5 and 6 (depicting the “new” in-drain unit) are used to find that 1988 In-Drains discloses the ‘863

As the Federal Circuit noted in Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008),
“differences between the prior art reference and a claimed invention, however slight, invoke the question of
obviousness, not anticipation.”
16

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Patent’s claimed aspect ratio, but otherwise he uses Figure 4 (depicting the “existing” in-drain
fields) to opine that the Patent’s other claimed elements are disclosed. See Lombardo 1988 InDrains Claims Chart, ECF No. 168-17; ECF No. 169-17 ¶ 47; see also ECF No. 169-11 ¶¶ 84–85
(Mr. Dickson’s rebuttal report describing this discrepancy). Mr. Lombardo appears to assume,
without explaining, that one of skill in the art would understand that the two embodiments may be
combined. See, e.g., ECF No. 169-11 ¶ 85 (Mr. Dickson opining that “Mr. Lombardo improperly
mixes and matches different embodiments when analyzing whether the 1988 IN DRAIN discloses
all of the limitations of Claim 1”). Eljen argues that it relies on Figure 7 to bring its anticipation
defense based on 1988 In-Drains, which it characterizes as the “‘new’ system.” 17 See Eljen’s Reply
at 9 (“Eljen is not relying on what Geomatrix calls the ‘old unit’ in 1988 In-Drains.”); Eljen’s
Opp’n Br. at 21–22.
Even taking Mr. Lombardo’s view that the embodiments in 1988 In-Drains can be
combined, however, the Court finds that 1988 In-Drains does not disclose at least one element of
Claims 1, 22, and 26 of the ‘863 Patent. These three claims each claim systems wherein channels
are “separated along a majority of their length by two or more inches.” See ‘863 Patent at cols.
17:5–6, 18:36–37, 19:11–12. Mr. Lombardo argues that Figure 4 18 of 1988 In-Drains (reproduced
below) discloses the element of the claims requiring the channels to be separated by two or more
inches, pointing to a measurement at the bottom of the figure identifying a distance of 9.1
centimeters, which is 3.6 inches. ECF No. 169-17 ¶ 63; ECF No. 168-17 at 2–3. But, as Mr.
Dickson notes, that distance appears to measure the distance between the centerlines of the

The Court notes that Eljen also appears to argue that the Figures show optionality rather than separate embodiments.
See Eljen’s Opening Br. at 35.
18
Again, Eljen does not explain the apparent inconsistency between its position that it is relying on Figure 7 and the
“new” in-drain unit to argue anticipation, and Mr. Lombardo’s use of Figure 4 to illustrate what 1988 In-Drains teaches
regarding the spacing between channels.
17

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channels, not the distance between the channels themselves, and it is unclear whether the distance
between the channels would actually measure two inches or more. See ECF No. 169-11 at ¶¶ 88–
89.

Characterizing this issue as “ultimately irrelevant,” Eljen argues that the 1988 In-Drains
discloses separations of two or more inches elsewhere in Table III, which showed that Dr. Laak
tested spacings of 9, 18, and 27 centimeters. See Eljen’s Opp’n Br. at 22. The Court finds this
contention, which rests on attorney argument alone, unpersuasive. Mr. Lombardo does not offer
Table III as a basis for his opinion that the distance between the channels was at least two inches.
See ECF No. 168-17 at 2–3. Although expert testimony is not always required in patent cases,
“[t]ypically, testimony concerning anticipation must be testimony from one skilled in the art and
must identify each claim element, state the witnesses’ interpretation of the claim element, and
explain in detail how each claim element is disclosed in the prior art reference.” Schumer v. Lab’y
Computer Sys., Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002). Here, Eljen does not point to any
evidence from one skilled in the art that explains in detail how channel spacings of two inches or
more is disclosed in 1988 In-Drains. Thus, Eljen advances only attorney argument, rather than

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evidence, on this issue. See Parkervision, Inc. v. Vidal, 88 F.4th 969, 982 (Fed. Cir. 2023) (finding
attorney argument failed to undermine evidence provided by the opposing party’s expert).
Geomatrix’s expert’s purported agreement with Eljen’s assertion is similarly insufficient.
Mr. Dickson agreed during his deposition that Table III shows Dr. Laak ran tests “at those depths
or spacing and he seems to have concluded that the system would work.” Dickson Dep., ECF No.
181-1 at 19 (emphasis added). Yet when asked whether Table III suggests that the “new” in-drains
illustrated in Figure 5 could be fitted with spacers larger than 2 centimeters, Mr. Dickson
responded: “From this, I would say that he tested spacings no greater than 2 centimeters.” Id. at
29. These statements are not enough to satisfy Eljen’s burden of showing clear and convincing
evidence of invalidity, as Mr. Dickson was at best equivocal in his first statement and his second
statement conflicted with the first.
For these reasons, the Court concludes that no reasonable jury could conclude that 1988
In-Drains discloses all of the elements of Claims 1, 22, and 26 of the ‘863 Patent. Having found
that 1988 In-Drains does not disclose all of these elements, the Court need not reach Geomatrix’s
other arguments on this point, as a prior art reference must disclose all claim limitations of an
invention in order to anticipate it. See In re Gleave, 560 F.3d at 1334.
Thus, Eljen’s motion for summary judgment that 1988 In-Drains anticipates the ‘863 Patent
is denied, and Geomatrix’s cross motion for summary judgment of no invalidity by anticipation
through 1988 In-Drains is granted.
C. Obviousness
Eljen argues that, even if the ‘863 Patent is not invalid for anticipation, it is at least invalid
for obviousness, because either 1988 In-Drains on its own or, alternatively, 1992 In-Drains,
combined with 1988 In-Drains or the Glasser ‘333 Patent, made the invention described in the
‘863 Patent obvious. As noted above, since 1988 In-Drains is a printed publication as a matter of
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law, the Court reaches the arguments in Eljen’s motion for summary judgment that 1988 In-Drains
made the invention of the ‘863 Patent obvious. Since the jury must decide whether 1992 In-Drains
is a printed publication and thus appropriately considered prior art, however, the Court leaves for
the jury the question of whether 1992 In-Drains, combined with 1988 In-Drains or the Glasser
‘333 Patent, renders the ‘863 Patent obvious.
Under the pre-AIA version of § 103(a) of the Patent Act, a patent “may not be obtained
. . . if the differences between the subject matter sought to be patented 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 to which said subject matter pertains.” Under Section 103,
“[a]n invention which has been made, and which is new in the sense that the same thing has not
been made before, may still not be patentable if the difference between the new thing and what
was known before is not considered sufficiently great to warrant a patent.” Graham v. John Deere
Co. of Kan. City, 383 U.S. 1, 14 (1966). Section 103 ensures that “the results of ordinary
innovation are not the subject of exclusive rights under the patent laws.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 427 (2007). “Were it otherwise patents might stifle, rather than promote, the
progress of useful arts.” Id. (citing U.S. Const. art. I, § 8, cl. 8).
1. Geomatrix’s Procedural Arguments
Before reaching the merits of obviousness, the Court addresses Geomatrix’s procedural
objections concerning Eljen’s obviousness theories under 35 U.S.C. § 103. The Court denies
Geomatrix’s motion to the extent that Geomatrix argues that summary judgment should enter
because Eljen’s Amended Invalidity Contentions are inadequate and Mr. Lombardo’s expert report
is conclusory.

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a. Invalidity Contentions Disclosures
The Court finds that Eljen’s “bucket” approach to its Amended Invalidity Contentions is
appropriate to the extent it discloses references that the parties do not dispute qualify as prior art
for invalidity purposes.
Invalidity contentions require patent infringement defendants to disclose the invalidity
theories the defendant plans to assert in its defense. See Chapco, Inc. v. Woodway USA, Inc., 282
F. Supp. 3d 472, 489 (D. Conn. 2017) (citing O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
467 F.3d 1355, 1364 (Fed Cir. 2006)). Unlike many other federal district courts, the District of
Connecticut has not adopted local patent rules governing the disclosure of invalidity theories. See
id. 19 Other districts, like the Northern District of California, have adopted rules around the
disclosure of invalidity contentions. See id. While the Court understands that the local patent
rules from other districts are not binding, the Court finds it useful to reference them to the extent
they elucidate the purposes served by invalidity contentions. The rules “seek to balance the right
to develop new information in discovery with the need for certainty as to the legal theories.”
Monolithic Power Sys., 467 F.3d at 1366 & n.12.
Geomatrix asserts that Eljen’s Amended Invalidity Contentions, ECF No. 169-10, are
inadequate because Eljen has not proposed specific combinations of the five “primary” references
with the three “secondary” references. Geomatrix’s Opening Br. at 32–33. Generally, “[b]road or
general disclosures are ‘insufficient’” to put a patent infringement plaintiff on notice as to the legal
theories upon which a defendant may rely. Mitsubishi Elec. Corp. v. Sceptre, Inc., No. 2:14-cv04994-ODW (AJWx), 2015 WL 2369557, at *2 (C.D. Cal. May 18, 2015) (applying N.D. Cal.
Patent L.R. 3-3(c)). Courts that have addressed the “bucket” approach to invalidity contentions—
While the District has not adopted local rules for patent cases, as part of its scheduling order, this Court ordered
Eljen to serve invalidity contentions by May 28, 2021. ECF No. 55.
19

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the approach adopted by Eljen, with one “bucket” of primary references and another of
“secondary” references—have found it appropriate where the defendant “reasonably specifies” the
possible combinations of prior art, including by “organiz[ing] prior art references into groups and
articulat[ing] an overarching theory of obviousness that applied to ‘each and every possible
combination[ ]’ of prior art within the groups.” 0912139 B.C. Ltd. v. Rampion USA Inc., No. C181464JLR, 2019 WL 3082290, at *6 (W.D. Wash. July 15, 2019) (alteration in original) (collecting
cases).
The Court finds that Eljen’s Amended Invalidity Contentions are adequate to provide notice
to Geomatrix of Eljen’s obviousness theories. First, Eljen has proposed a relatively modest number
of prior art references as the basis for its proposed combinations (five primary sources that render
the ‘863 Patent obvious on their own, along with three secondary references that render the ‘863
Patent obvious in combination). This counsels in favor of finding the disclosure appropriate—it
is not as if Eljen has proposed “literally billions” of possible combinations. Avago Techs. Gen. IP
PTE Ltd. v. Elan Microelectronics Corp., No. C04-05385 JW (HRL), 2007 WL 951818, at *4
(N.D. Cal. Mar. 28, 2007). Second, Eljen’s Amended Invalidity Contentions do provide an
“overarching theory of obviousness” that applies to each and every possible combination of prior
art. After listing each and every prior art reference that Eljen intends to rely on, Eljen explains the
reasons why a person of ordinary skill in the art would be motivated to combine the prior art—as
applied to each and every reference. See ECF No. 169-10 at 22–24.
Third, Eljen is correct that the specific two-reference combinations in Mr. Lombardo’s
report were disclosed in Eljen’s Amended Invalidity Contentions. See Eljen’s Opp’n Br. at 33.
Geomatrix’s only example of Eljen’s alleged nondisclosure of the specific two-reference
combinations in Mr. Lombardo’s report is the combination of Ruck L Fins as the primary reference

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and “Sand Filled In Drains” as the secondary reference. Geomatrix’s Opening Br. at 36–37.
Geomatrix misses the fact that “Sand Filled In Drains” and “1992 In-Drains” are the same
reference—1992 In-Drains is clearly listed as a secondary reference in Eljen’s Amended Invalidity
Contentions. ECF No. 169-10 at 25.
Finally, Eljen included a claims chart that explained how a person of ordinary skill in the
art would use the listed reference to achieve the ‘863 Patent’s claims limitations. Id. at 21
(incorporating by reference the claims charts found in Exhibits A through D to Eljen’s initial
invalidity contentions); see also ECF No. 169-9 at 28–204 (Exhibit A to the initial invalidity
contentions explaining how the various disclosed art references meet the claim limitations). Courts
applying the Northern District of California’s local patent rules have found that claims charts are
“sufficient where the charts contain written descriptions of each element of each asserted claim
found in the particular prior art reference.” Avago, 2007 WL 951818, at *2. But see Slot Speaker
Techs., Inc. v. Apple, Inc., No. 13-CV-01161-HSG (DMR), 2017 WL 235049, at *3–4 (N.D. Cal.
Jan. 19, 2017) (finding claims chart inadequate where it left “too much to guesswork”). The claims
charts here are sufficient. Accordingly, the Court does not address Geomatrix’s arguments that Mr.
Lombardo uses a “mix-and-match” approach and that Eljen did not disclose the various
combinations on which Mr. Lombardo would rely. Geomatrix’s Opening Br. at 36–37. As the
Court has already explained, Eljen was not required to explain each and every obviousness theory
and combination. Mr. Lombardo properly relied on various combinations within the “buckets”
that Eljen has already adequately disclosed.
Thus, Eljen’s Amended Invalidity Contentions provide adequate notice and Eljen may rely
on the disclosed combinations to the extent the Court has not otherwise found that the prior art
references cannot support an invalidity claim.

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b. Mr. Lombardo’s Expert Report
The Court also finds that Mr. Lombardo’s expert report adequately disclosed Eljen’s
obviousness theories, such that these sections of his report should not be excluded. 20 The Court
disagrees with Geomatrix’s basic argument against Mr. Lombardo’s report. This argument takes
many forms, but remains consistent in theme across its permutations: Mr. Lombardo’s report
analyzing obviousness is conclusory, so it must be excluded.
As both parties recognize, in conducting an obviousness analysis that relies on the
combination of two or more references, “[t]here must be some suggestion or motivation to combine
the references.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1368
(Fed. Cir. 2016) (citations and internal quotation marks omitted). The motivation of a person of
ordinary skill in the art to combine references “may be found in many different places and forms.”
PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197 (Fed. Cir. 2014) (quoting Allergan,
Inc. v. Sandoz, Inc., 726 F.3d 1286, 1292 (Fed. Cir. 2013)). For instance, the art itself may teach
the motivation. Also, “it often may be the case that market demand, rather than scientific literature,
will drive design trends.” KSR, 550 U.S. at 419. As for the reasonable expectation of success, the
law does not require “conclusive proof of efficacy.” Acorda Therapeutics, Inc. v. Roxane Lab’ys,
Inc., 903 F.3d 1310, 1333 (Fed. Cir. 2018). But cautious optimism is not sufficient, Sanofi v.
Watson Lab’ys Inc., 875 F.3d 636, 650 (Fed Cir. 2017), nor is mere “hope,” OSI Pharms., LLC v.
Apotex Inc., 939 F.3d 1375, 1385 (Fed. Cir. 2019).

To the extent that Geomatrix also initially moved to exclude Mr. Lombardo’s report because it did not contain claims
charts for the Glasser ‘333 Patent, the Laak ‘264 Patent, or the Donlin ‘994 Patent, Geomatrix’s Opening Br. at 43–
44, Geomatrix’s reply brief recognizes that claims charts are not legal requirements, Geomatrix’s Reply at 16 n.3
(citing Nazomi Commc’ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1373 (Fed. Cir. 2005)). Thus, the Court does
not address this argument as it is not a valid basis on which to exclude Mr. Lombardo’s report.
20

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Mr. Lombardo’s report sufficiently discusses motivation and reasonable expectations of
success, for purposes of evaluating whether his report should be excluded at the summary
judgment stage. For example, Mr. Lombardo explains that a person of ordinary skill in the art
would be motivated to limit the space between channel separations because the prior art teaches
that it can be advantageous to fit a leach field into a smaller area of land. ECF No. 169-17 ¶ 122(d).
A person of ordinary skill in the art would have reasonable expectations of success because the
prior art successfully tested those channel separations. Id. Similarly, Mr. Lombardo explains that
a person of ordinary skill in the art would be motivated to modify and experiment the prior art so
as to use majority-void spacers to make the separations between channels because of the costssavings associated with using less backfill. Id. ¶ 123(a). A person of ordinary skill in the art would
have reasonable expectations of success because the prior art successfully used those channel
spacers. Id. Mr. Lombardo’s analysis that the prior art teaches various cost and land saving
measures certainly provides more than mere conclusory opinion that a person of ordinary skill in
the art would have reason or motivation to combine the various prior art references and would
have a reasonable expectation of success in doing so. See Elbrus Int’l Ltd. v. Samsung Elecs. Co.,
738 F. App’x 694, 699–700 (Fed. Cir. 2018) (affirming Patent Trial and Appeal Board finding that
a space saving feature is a reason to combine prior art).
Geomatrix’s reference to InTouch Technologies, Inc. v. VGO Communications, Inc. is
misplaced. Geomatrix’s Opening Br. at 39 (citing 751 F.3d 1327, 1353–54 (Fed. Cir. 2014)). This
case does not stand for the proposition that a district court must exclude expert testimony that fails
to address motivation to combine—which Mr. Lombardo’s report does in fact address. Rather, the
Federal Circuit reversed a jury verdict based on expert testimony that an inventor could combine
prior art without explaining why. An opinion discussing the weight and persuasiveness of

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evidentiary support is qualitatively different than an opinion standing for the proposition that a
court must exclude expert testimony that is not as fulsome as a theoretically perfect expert report.
In any event, as the Court has explained, Mr. Lombardo’s report in fact explains why a person of
ordinary skill in the art would be motivated to combine prior art and would have a reasonable
expectation of success in doing so.
Thus, the Court finds that Mr. Lombardo’s expert report should not be excluded.
2. Merits of Obviousness Defense
On the merits, though, Eljen’s obviousness defense related to 1988 In-Drains alone fails.
The “ultimate judgment of obviousness is a legal determination” based on “underlying
factual inquiries” of various factors: “(1) the scope and content of the prior art; (2) the differences
between the claims and the prior art; (3) the level of ordinary skill in the pertinent art; and (4) any
secondary considerations of non-obviousness.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371
(Fed. Cir. 2018) (citing Graham, 383 U.S. at 17–18). “[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.” KSR, 550 U.S. at 418. Rather, it must be shown “by clear and convincing
evidence that a skilled artisan would have had reason to combine the teaching of the prior art
references to achieve the claimed invention, and that the skilled artisan would have had a
reasonable expectation of success from doing so.”

In re Cyclobenzaprine Hydrochloride

Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012).
The Court denies Eljen’s motion seeking summary judgment that 1988 In-Drains alone
renders obvious the invention that is the subject of the ‘863 Patent, as Eljen has not shown, by
clear and convincing evidence, why a person of ordinary skill in the art would be motivated to
modify 1988 In-Drains or that there would be a reasonable expectation of success in doing so.

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Eljen moves for summary judgment that 1988 In-Drains on its own renders the ‘863 Patent obvious
for the following reasons: (1) 1988 In-Drains teaches channels can be interconnected in a
serpentine fashion; (2) it teaches using 9, 18, or 27 centimeter separations between channels; and
(3) it teaches that sand or spacers could be used between channels. See Eljen’s Opening Br. at 39.
As a preliminary matter, Eljen is correct that the document contains all of the foregoing
information. Figure 7 of 1988 In-Drains clearly shows an in-drain unit with a serpentine channel
configuration, ECF No. 169-19 at 10, which Mr. Lombardo understands to be “interconnected”
channels under the plain meaning of the term. See ECF No. 169-17 ¶¶ 77–78. Table III
demonstrates Dr. Laak tested separations of 9, 18, and 27 centimeters, ECF No. 169-19 at 7,
although Mr. Lombardo never refers to Table III in his report to assert that 1988 In-Drains discloses
spacings of 2 inches or more between channels. Finally, Figures 4 and 5 show that sand or spacers,
respectively, may be used in between channels. Id. at 6, 8. Mr. Lombardo opines that a person of
ordinary skill in the art would know that the spacers used in 1988 In-Drains allow for majority
void space. ECF No. 169-17 ¶ 117.
Merely observing that these specifications or features appear in 1988 In-Drains, however,
is not enough to prove obviousness. As noted above, “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.” KSR, 550 U.S. at 418. The experts appear to agree that Figures 4 and 5 are
different embodiments of the in-drain unit. See ECF No. 169-17 ¶¶ 123(a)–(b) (Mr. Lombardo
referring to Figure 4 as the “no-spacer embodiment” and Figure 5 as the “spacer embodiment”);
ECF No. 169-11 ¶¶ 39–42 (Mr. Dickson describing the differences between Figures 4 and 5). Eljen
fails to adequately explain why a person of ordinary skill in the art would be motivated to combine
the serpentine interconnection found in Figure 7 with one of the separation distances tested in

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Table III and also use one of the fills indicated in Figures 4 and 5. Mr. Lombardo’s report lacks a
detailed discussion on the motivation of combining various elements in 1988 In-Drains
specifically, and Eljen admits as much. Eljen claims that “Mr. Lombardo explained in depth why
a person of ordinary skill in the art would be motivated to make the minor substitutions proposed
within the narrow set of Dr. Laak’s in-drain products,” rather than just 1988 In-Drains, “with a
reasonable expectation of success.” Eljen’s Reply at 10–11 (emphasis added). As Mr. Dickson
explains, “[t]he size and length of various components in a wastewater system have a profound
effect on the suitability of the wastewater system as a whole because they impact core
considerations.” ECF No. 169-11 ¶ 375. Without expert evidence as to the motivation to combine
certain elements found throughout 1988 In-Drains, the Court cannot find that Eljen has shown by
clear and convincing evidence that 1988 In-Drains alone renders the ‘863 Patent obvious.
Even assuming, however, that the features of Figures 4, 5, and 7 may be combined because
it would not require “a leap of inventiveness” to incorporate embodiments “disclosed adjacent to
each other in a prior art patent,” see Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 992
(Fed. Cir. 2009), Eljen has not demonstrated that a person of ordinary skill in the art would have
reasonable expectations of success in using the spacings from Table III. Mr. Lombardo never
mentions the spacings in Table III in his report, and Eljen does not cite to any part of his report to
support its claims on this issue. Moreover, there is no indication that Dr. Laak concluded that the
separation distances noted in Table III would work with both channel separations filled with sand
and with channel separations filled with spacers. The Court only has enough information before
it to conclude that Dr. Laak tested those separation distances on in-drain units with unidentified
fills. As with Eljen’s anticipation theory based on 1988 In-Drains, Mr. Dickson’s deposition
testimony is insufficient to supports its obviousness theory here. While Mr. Dickson agreed that

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Dr. Laak tested the 9, 18, and 27 centimeter spacings in Table III, he sounded uncertain that Dr.
Laak concluded that those spacings would actually work. Nor did he specify whether those
spacings would work with both sand and spacers. Moreover, Mr. Dickson never admitted that an
embodiment using spacers would work with spacings of 9, 18, or 27 centimeters.
As a result, Eljen’s motion for summary judgment on obviousness related to 1988 In-Drains
alone is denied. Eljen may, however, pursue its invalidity by obviousness defense as to the
combination of 1992 In-Drains with 1988 In-Drains or the Glasser ‘333 Patent at trial. As
Geomatrix’s cross motion for summary judgment on obviousness takes issue with Eljen’s singlereference theories in general, it is granted in part to the extent that it is related to 1988 In-Drains.
As to Geomatrix’s remaining arguments concerning obviousness, Geomatrix’s motion for
summary judgment is denied. Geomatrix argues generally that the single-reference theories and
the two-reference combination theories in Mr. Lombardo’s report are insufficiently supported, as
it contends the report provides only conclusory explanations of the motivations to modify and
reasonable expectations of success of such modifications for each specific theory. See Geomatrix’s
Opening Br. at 37–43. The single-reference obviousness theories include 1988 In-Drains, the
Donlin ‘994 Patent, 1992 In-Drains, Ruck L Fins, and the Mini/Max. See ECF No. 169-17 ¶ 139.
The two-reference combination theories include: (1) Ruck L Fins in view of 1992 In-Drains; (2)
Ruck L Fins in view of the Glasser ‘333 Patent; (3) Ruck L Fins in view of 1988 In-Drains; (4)
1992 In-Drains in view of the Glasser ‘333 Patent; (5) 1992 In-Drains in view of 1988 In-Drains;
(6) the Laak ‘264 Patent in view of 1992 In-Drains; (7) the Laak ‘264 Patent in view of the Glasser
‘333 Patent; (8) the Laak ‘264 Patent in view of 1988 In-Drains; (9) the Mini/Max in view of 1992
In-Drains; (10) the Mini/Max in view of the Glasser ‘333 Patent; (11) the Donlin ‘994 Patent in

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view of 1992 In-Drains; and (12) the Donlin ‘994 Patent in view of the Glasser ‘333 Patent. See
id. ¶140.
The Court first notes that the majority of the seventeen obviousness theories that Geomatrix
moves on depend on references for which genuine disputes of material fact exist as to whether
they qualify as prior art references. As explained above, there are genuine questions of material
fact precluding a determination as to whether 1992 In-Drains and Ruck L Fins are printed
publications and as to whether the Mini/Max was on sale or in public use. In addition, for the
reasons described below, the Court finds that there is a genuine issue of material fact as to the
priority of the Donlin ‘994 Patent over the ‘863 Patent. Thus, the status of the references in fifteen
obviousness theories still need to be determined at trial.
Moreover, the parties’ arguments regarding the remaining theories are too broad for the
Court to make specific determinations as to whether each obviousness theory is supported by clear
and convincing evidence. The Court is mindful that it is ultimately Eljen’s burden to show, by
clear and convincing evidence, that the combinations render the invention described in the ‘863
Patent obvious. But as the moving party on summary judgment, Geomatrix must discharge its
burden by “‘showing’—that is, pointing out to the district court—that there is an absence of
evidence to support the nonmoving party’s case.” Biotec Biologische Naturverpackungen GmbH
& Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1354 (Fed. Cir. 2001) (citing Celotex, 477 U.S. at 325).
Geomatrix concedes that it is unable to address each obviousness theory separately in its motion,
Geomatrix’s Opening Br. at 38 n.16, but it asks the Court to nonetheless make findings as to factual
inquiries that underlie the obviousness determination. See Commonwealth Sci. & Indus. Rsch.
Org. v. Buffalo Tech. (USA), Inc., 542 F.3d 1363, 1375 (Fed. Cir. 2008) (recognizing obviousness
analysis requires factual inquiries, including determining the scope and content of the prior art and

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the differences between the prior art and the claims at issue). Geomatrix does not analyze the
alleged deficiencies of each specific theory, and instead proclaims generally that “Mr. Lombardo
never articulates any motivation to modify” and that his “discussion of reasonable expectation of
success . . . is also superficial” by picking out various sentences from the report out of context.
See Geomatrix’s Opening Br. at 38, 42. As the moving party, Geomatrix is only required to show
that Eljen has failed to produce clear and convincing evidence supporting Eljen’s obviousness
theories—but pointing to a few sentences that appear to be conclusory does not support that every
obviousness theory in Mr. Lombardo’s report is conclusory. While it may certainly be true that all
seventeen obviousness theories are indeed unsupported by clear and convincing evidence, “it is
not the trial judge’s burden to search through lengthy technologic documents for possible
evidence” or lack of evidence supporting Eljen’s remaining obviousness theories. See Biotec
Biologische, 249 F.3d at 1353. Neither Geomatrix’s surface-level briefing nor its chart showing
which paragraphs of Mr. Lombardo’s report discuss which references satisfy this burden.
As to the one “example” Geomatrix uses to illustrate its point—Ruck L Fins in view of
1992 In-Drains—the Court is unable to conclude that Geomatrix is entitled to summary judgment.
The Court agrees with Geomatrix that paragraph 140(a) of Mr. Lombardo’s report does not fully
explain why it would have been obvious to modify Ruck L Fins in light of 1992 In-Drains. See
ECF No. 169-17 ¶ 140(a). But, as Geomatrix concedes, Mr. Lombardo generally explains
motivations to combine and reasonable expectations of success elsewhere in his report. See id.
¶¶ 119–26. A reasonable jury could conclude, considering Mr. Lombardo’s report and opinions as
a whole, that Eljen has met its burden of demonstrating obviousness.
For these reasons, the Court declines to award summary judgment of no invalidity to
Geomatrix as to such a broad swath of Eljen’s obviousness theories simply based on Geomatrix’s

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assertion that the theories overall are unsupported. The jury must decide whether Eljen has met
its burden as to its obviousness theories. Of course, if Mr. Lombardo fails to adequately explain
the theories to the jury, Eljen’s defense may fail. See InTouch Techs., 751 F.3d at 1351–52 (finding
expert’s trial testimony insufficient to justify judgment of obviousness).
VII.

PRIORITY: ACTUAL AND CONSTRUCTIVE REDUCTION TO PRACTICE
Next, the Court denies Geomatrix’s motion for summary judgment of no invalidity by

obviousness to the extent it seeks a finding, as a matter of law, that Mr. Donlin did not reduce his
invention to practice prior to Mr. Potts. Eljen does not move for summary judgment that the Donlin
‘944 Patent has priority over the ‘863 Patent in its own motion.
A person is entitled to a patent unless “before such person’s invention thereof, the invention
was made in this country by another inventor who had not abandoned, suppressed, or concealed
it.” 35 U.S.C. § 102(g)(2). In determining priority, the Court must consider “not only the
respective dates of conception and reduction to practice of the invention, but also the reasonable
diligence of one who was first to conceive and last to reduce to practice, from a time prior to
conception by the other.” 35 U.S.C. § 102(g). Thus, priority of invention “goes to the first party
to reduce an invention to practice unless the other party can show that it was the first to conceive
of the invention and that it exercised reasonable diligence in later reducing that invention to
practice.” Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). “A reduction to practice can
be either a constructive reduction to practice, which occurs when a patent application is filed, or
an actual reduction to practice.” Id. “Priority of invention is a question of law, based on findings
of evidentiary fact directed to conception, reduction to practice, and diligence.” Scott v. Koyama,
281 F.3d 1243, 1246 (Fed. Cir. 2002).

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For the reasons that follow, the Court finds that summary judgment in Geomatrix’s favor
is not warranted as to Eljen’s priority defenses of actual and constructive reduction to practice.
A. Actual Reduction to Practice
The Court finds that there are disputed issues of material fact concerning Eljen’s theory of
actual reduction to practice, which is based on Mr. Donlin building prototypes before Mr. Potts.
Thus, summary judgment in Geomatrix’s favor is inappropriate as to this theory.
“In order to establish an actual reduction to practice, the inventor must prove that: (1) he
[or she] constructed an embodiment or performed a process that met all the limitations of the
interference count; and (2) he [or she] determined that the invention would work for its intended
purpose.” Cooper, 154 F.3d at 1327. An inventor must also show “(3) the existence of sufficient
evidence to corroborate inventor testimony regarding these events.” Medichem, S.A v. Rolabo,
S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006) (citing id. at 1330). The corroborative evidence may
take the form of “[d]ocumentary or physical evidence that is made contemporaneously with the
inventive process,” which is the “most reliable proof,” or post-invention oral testimony of someone
other than the alleged inventor—though the latter category is “more suspect, as there is more of a
risk that the witness may have a litigation-inspired motive to corroborate the inventor’s testimony,
and that the testimony may be inaccurate.” Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264
F.3d 1344, 1350–51 (Fed. Cir. 2001). An inventor may also introduce circumstantial evidence
about the inventive process. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1461 (Fed. Cir.
1998).
As both parties agree, Mr. Donlin’s health precludes him as a testimonial witness. See
Geomatrix’s Opening Br. at 48 n.21; Eljen’s Opp’n Br. at 39 n.10. Thus, the parties dispute the
sufficiency of non-inventor testimony offered by Eljen to support its view that Mr. Donlin reduced
the invention to practice before Mr. Potts, by making prototypes in the weeks after he (Mr. Donlin)
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recorded his conception of the idea in his laboratory notebook on July 8, 2004. Specifically, Eljen
offers testimony of two longtime Eljen employees: Linette Streete, an Eljen plant manager who
served as the witness on Mr. Donlin’s laboratory notebook and who Eljen says was engaged to
make the prototypes, and Zijada Hamzabegovic, whom Eljen represents was made the “Mantis
team leader” to help commercialize the product after her prototyping work. See Eljen’s Opp’n Br.
at 38. Both witnesses can be considered “interested” witnesses, in the sense that they may stand
to gain if Mr. Donlin’s invention is found to have priority over the ‘863 Patent’s claims. See
Thomson, S.A. v. Quixote Corp., 166 F.3d 1172, 1176 (Fed. Cir. 1999). As corroboration, Eljen
offers indicia of credibility of the witnesses’ testimony and documentary evidence in the form of
Ms. Streete’s signature as a witness on Mr. Donlin’s laboratory notebook pages from July 2004
and a fax from Mr. Donlin to his patent attorney in August of 2004 containing the relevant
laboratory notebook pages. Eljen’s L.R. 56(a)2 St., ECF No. 181 ¶ 40 (first citing Signed
Laboratory Notebook Pages, ECF No. 181-5; and then citing Fax, ECF No. 181-6). Thus, Eljen
has proffered, at the very least, some documentary evidence tending to corroborate the testimony
of the two interested witnesses. Geomatrix counters by asserting that the witnesses are longtime
employees of Eljen, suggesting that they may have a motive to testify in favor of Mr. Donlin’s
invention having priority. The probative value of the corroborating evidence and the credibility of
interested witnesses (and the extent to which their interest even raises the specter of incredibility),
are issues for the jury, not the Court on summary judgment. See TypeRight Keyboard Corp., 374
F.3d at 1159 & n.8.
Thus, summary judgment as to Eljen’s claim of actual reduction to practice is inappropriate.
B. Constructive Reduction to Practice
As an alternative ground, Eljen argues that Mr. Donlin’s filing of a patent application on
February 28, 2005, serves as a constructive reduction to practice that demonstrates Mr. Donlin
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invented before Mr. Potts. For the moment, the Court puts aside the parties’ dispute as to the date
that Mr. Potts reduced to practice a prototype of the ‘863 Patent; the Court addresses these
arguments in the inequitable conduct section below. The Court only addresses the parties’ dispute
as to whether the filing of Mr. Donlin’s patent application on February 28, 2005, serves as a
constructive reduction to practice that gives him priority. The Court finds that there are disputed
issues of material fact and issues related to witness credibility on this issue, such that Geomatrix’s
motion for summary judgment should be denied.
As noted above, “priority of invention goes to the first party to reduce an invention to
practice unless the other party can show that it was the first to conceive the invention and that it
exercised reasonable diligence in later reducing that invention to practice.” Monsanto Co. v.
Mycogen Plant Sci., Inc., 261 F.3d 1356, 1362 (Fed. Cir. 2001). A showing of diligence “is
necessary for a party who was first to conceive but the second to reduce to practice.” Id. at 1362–
63. The party alleging prior invention must be able to show diligence during the “critical period,”
which is between the “date just prior to the other party’s conception to the date of reduction to
practice by the party first to conceive.” Id. at 1363 (cleaned up).
Assuming for purposes of this discussion that Mr. Donlin was the first to conceive of the
invention, the parties only dispute whether Mr. Donlin was reasonably diligent in reducing his
conception to a patent during the critical period between August 15, 2004, when Mr. Potts allegedly
conceived of his invention, and February 28, 2005, when Mr. Donlin filed the patent application
directed to his invention that eventually became the Mantis product. Geomatrix’s Opening Br. at
49. “Reasonable diligence” is “reasonably continuous diligence.” Perfect Surgical Techs., Inc. v.
Olympus Am., Inc., 841 F.3d 1004, 1009 (Fed. Cir. 2016). “Under this standard, an inventor is not
required to work on reducing his invention to practice every day during the critical period. . . .

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And periods of inactivity within the critical period do not automatically vanquish a patent owner’s
claim of reasonable diligence.” Id. (citing Monsanto, 261 F.3d at 1369). Furthermore, there is no
rule requiring a specific type of activity to determine whether the applicant was reasonably diligent
in proceeding toward a constructive reduction to practice from the date of conception. See Brown
v. Barbacid, 436 F.3d 1376, 1380 (Fed. Cir. 2006) (“[D]iligence and its corroboration may be
shown by a variety of activities.”). “[T]he point of the diligence analysis . . . is to assure that, in
light of the evidence as a whole, ‘the invention was not abandoned or unreasonably delayed.’”
Perfect Surgical Techs., 841 F.3d at 1009 (quoting Barbacid, 436 F.3d at 1379).
There are two disputed periods of “inactivity.” The first is from August 4, 2004, when Mr.
Donlin faxed his invention disclosure to Attorney Jim Piotrowski, to January 7, 2005, when Eljen
completed the Design and Installation Guidelines for the Mantis product. Geomatrix’s Opening
Br. at 49–50. The second is from the completion of the guidelines on January 7, 2005, to Eljen’s
filing of U.S. Patent Application No. 60/657,308 on February 28, 2005. Id.
Summary judgment is inappropriate on the question of Mr. Donlin’s diligence because
assessing his diligence during this period requires making findings as to witness credibility that
the Court cannot make on summary judgment. For both periods, the key witness testimony comes
from Ms. Hamzabegovic, who was team lead for designing and testing Mantis products during the
critical period of its development from Mr. Donlin’s conception to the first sale of the Mantis
product.

Hamzabegovic Dep., ECF No. 181-11 at 18–22.

During her deposition, Ms.

Hamzabegovic stated that during this critical period, she made many sample products at Mr.
Donlin’s request and that the samples were of various designs and sizes. Id. at 20–22. During this
same period, Mr. Donlin put together a detailed Design and Installation Guidelines for this
developing product. See ECF No. 181-7. While the parties agree that the document was completed

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on January 7, 2005, the parties dispute what, if any, effort Mr. Donlin exerted before that date to
finalize the guidelines.

Relying on Ms. Hamzabegovic’s testimony and the corroborating

guidelines, a reasonable juror could conclude that during the critical period, Mr. Donlin directed
Ms. Hamzabegovic to test various versions of the Mantis product, the results of which informed
the creation of the Design and Installation Guidelines. Similarly, in a letter dated March 18, 2005,
Mr. Donlin wrote to the Connecticut Department of Public Health to discuss the Mantis product’s
design and Mr. Donlin’s calculations of the product based on the designs. ECF No. 181-10 at 2–
5. A reasonable juror could infer that the calculations in Mr. Donlin’s letter were a direct result of
the sample products Ms. Hamzabegovic produced during the critical time period—whether
through testing or production. Eljen need not demonstrate the day-to-day activities that took place
during the critical period. See ATI Techs. ULC v. Iancu, 920 F.3d 1362, 1369–70 (Fed. Cir. 2019).
A reasonable juror could take the evidence presented on the whole and conclude that Mr. Donlin
was reasonably diligent in proceeding towards a constructive reduction to practice.
Thus, the Court denies Geomtarix’s motion for summary judgment as to Eljen’s defense of
priority through constructive reduction to practice.
VIII.

INEQUITABLE CONDUCT
Finally, the Court denies Geomatrix’s motion for summary judgment as to Eljen’s claims

that Mr. Potts committed inequitable conduct during the prosecution of the ‘863 Patent. Eljen does
not move for summary judgment on inequitable conduct in its own motion.
Applicants for patents are required to prosecute patent applications in the PTO with candor,
good faith, and honesty.” Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995) (internal
footnote omitted). “Inequitable conduct is an equitable defense to patent infringement that, if
proved, bars enforcement of a patent.” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d

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1276, 1285 (Fed. Cir. 2011) (collecting cases). It derives from Supreme Court cases that applied
the doctrine of unclean hands to dismiss patent cases involving egregious misconduct. Id. The
remedy for inequitable conduct has been deemed the “‘atomic bomb’ of patent law,” because
inequitable conduct as to any individual claim renders the entire patent unenforceable. Id. at 1288
(quoting Aventis Pharma S.A. v. Amphastar Pharms., Inc., 525 F.3d 1334, 1349 (Fed. Cir. 2008)
(Rader, J., dissenting)).
Eljen’s theory is two-fold. First, Eljen argues that Mr. Potts intended to deceive the PTO
in his description of the prototype he constructed, to prove that Mr. Potts invented before Mr.
Donlin. Eljen’s Opp’n Br. at 52. It is Eljen’s position that Mr. Potts falsely swore that a device
shown in photographs submitted to the PTO was “an example of a wastewater leaching system,”
a “leach field system,” and/or “worked as a wastewater treatment system” and that the PVC pipes
above the device did not “serve[] as the dosing pipe.” Id.; see also ECF No. 169-25 at 253 ¶¶ 5–
8; id at 256 ¶¶ 22–24. Second, Eljen argues that Mr. Potts lied when he stated in his declaration to
the PTO that the photographs of his prototype were taken before February 28, 2005. Eljen’s Opp’n
Br. at 55; see also ECF No. 169-25 at 253 ¶ 9 (describing metadata showing date before February
28, 2005); Hochman Rep., ECF No. 169-47 at 8 ¶ 20 (stating that the photographs were taken on
October 26, 2004, and copied to a Windows computer system on October 28, 2004).
For the reasons that follow, the Court denies Geomatrix’s motion for summary judgment
as to both theories.
A. Legal Standard
“Inequitable conduct includes affirmative misrepresentation of a material fact, failure to
disclose material information, or submission of false material information, coupled with an intent
to deceive.” Bd. of Educ. ex rel. Bd. of Trs. of Fla. State Univ. v. Am. Bioscience, Inc., 333 F.3d
1330, 1343 (Fed. Cir. 2003) (citing Molins, 48 F.3d at 1178). The standard for establishing
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inequitable conduct is a demanding one. “To prevail on the defense of inequitable conduct, the
accused infringer must prove that the applicant misrepresented or omitted material information
with the specific intent to deceive the PTO.” Therasense, 649 F.3d at 1290. “The accused infringer
must prove both elements—intent and materiality—by clear and convincing evidence.” Id. at
1287.
“Information is ‘material’ when there is a substantial likelihood that a reasonable examiner
would have considered the information important in deciding whether to allow the application to
issue as a patent.” Molins, 48 F.3d at 1179. In Therasense, the Supreme Court held that in making
the materiality determination, “the court should apply the preponderance of the evidence standard
and give claims their broadest reasonable construction.” 649 F.3d at 1291–92. Therasense held
further that “but-for materiality generally must be proved to satisfy the materiality prong of
inequitable conduct,” although there is an exception for “cases of affirmative egregious
misconduct,” which do not require such proof. Id. at 1292. Thus, “[w]hen the patentee has
engaged in affirmative acts of egregious misconduct, such as the filing of an unmistakably false
affidavit,” the misconduct is unquestionably material. Id.
To bring an inequitable conduct defense, the accused infringer must also show the plaintiff
had the specific intent to mislead or deceive the PTO.

Molins, 48 F.3d at 1181.

In a

misrepresentation or omission case, a “gross negligence” or “should have known” standard does
not satisfy the requirement; instead, an accused infringer must show the patentee “made a
deliberate decision to withhold a known material reference.” Therasense, 649 F.3d at 1290
(quoting Molins, 48 F.3d at 1181). “Because direct evidence of deceptive intent is rare, [the Court]
may infer intent from indirect and circumstantial evidence. . . . However, to meet the clear and
convincing evidence standard, the specific intent to deceive must be ‘the single most reasonable

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inference able to be drawn from the evidence.’” Id. (citations omitted) (quoting Star Sci. Inc. v.
R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed Cir. 2008)).
Because this is Geomatrix’s motion, Eljen need only demonstrate that there are disputed
issues of material facts that preclude summary judgment.
B. Description of Device
The Court cannot enter summary judgment in favor of Geomatrix as to Eljen’s theory that
Mr. Potts’ description of his reduction to practice constituted inequitable conduct, because there
are disputed issues of fact as to whether the prototype could in fact function as Mr. Potts described.
The two experts, Mr. Lombardo and Mr. Dickson, disagree as to whether the prototype that
Mr. Potts produced could function as “an example of a wastewater leaching system,” or a “leach
field system,” and/or “worked as a wastewater treatment system” and that the PVC pipes above
the device “served as the dosing pipe.” See Geomatrix’s Opening Br. at 63–64; Eljen’s Opp’n Br.
at 52–53.

Mr. Dickson created a prototype reconstruction of Mr. Potts’ prototype in the

photographs he submitted to the PTO and determined that the prototype using these materials
would function as a wastewater system. ECF No. 169-11 ¶¶ 714–18, 731–41. In Mr. Lombardo’s
opinion, on the other hand, a person of ordinary skill in the art would understand the Mr. Potts’
prototype could not work as explained for two reasons. First, the pipes could not be used as a
dosing pipe for the dispersion of water, but were simply intended for use as support in holding the
channels in place. ECF No. 169-17 ¶¶ 149–50. Second, a person of ordinary skill in the art would
understand that the prototype could not work as described because the filament mats used in the
test were inserted halfway through the pipe, meaning that water would flow directly into the soil,
rather than into the mat for treatment. Id. ¶ 151.
It is not appropriate through this motion for the Court to resolve the expert dispute over
whether in fact Mr. Potts’ prototype could operate as described. Where the factual record supports
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opposing expert views, as it does here, then summary judgment is inappropriate because there is a
disputed issue of material fact. See Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1338–
39 (Fed. Cir. 2000) (overturning grant of summary judgment due to conflicting expert testimony
that was supported by the factual record); Edwards Sys. Tech., Inc. v. Digit. Control Sys., Inc., 99
F. App’x 911, 921–22 (reversing grant of summary judgment because “a classic battle of the
experts . . . creates a genuine issue of material fact”). The Court finds that there is a genuine
dispute of material fact, as the evidence in the record appears to support both Mr. Lombardo and
Mr. Dickson’s opinions.
Thus, the Court cannot enter summary judgment as to this theory.
C. The Metadata
Finally, the Court denies Geomatrix’s motion for summary judgment as to Eljen’s theory
of inequitable conduct based on the metadata issue because there remain issues related to Mr. Potts’
memory and credibility that requires resolution by the trier of fact.
The Court reiterates that because this is Geomatrix’s motion, the Court does not consider
whether Eljen has met its burden of proof in demonstrating that, by clear and convincing evidence,
that Mr. Potts committed inequitable conduct in his declaration to the PTO that the metadata of the
photographs and computer files showed that the photographs were taken before February 28, 2005.
Rather, the Court only assesses whether there is a genuine issue of disputed fact that should
preclude granting the motion.
The Court finds that Mr. Potts’ credibility is at the heart of Eljen’s theory of inequitable
conduct based on the metadata, and that the issue is therefore inappropriate for summary judgment.
See, e.g., TypeRight Keyboard Corp., 374 F.3d at 1158 (“[S]ummary judgment was improper
because genuine issues remain as to the credibility of [defendant’s] witnesses.”); Mosaic Brands,
Inc. v. Ridge Wallet LLC, 55 F.4th 1354, 1365 (Fed. Cir. 2022) (“Where an issue as to a material
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fact cannot be resolved without observation of the demeanor of witnesses in order to evaluate their
credibility, summary judgment is not appropriate.” (quoting Fed. R. Civ. P. 56 Notes of Advisory
Committee on Rules to 1963 Amend.)).
Mr. Potts’ contemporaneous and subsequent recounting of when the photographs were
taken are contradictory and must be weighed for credibility by the trier of fact. On December 17,
2013, Mr. Potts emailed his patent attorney, Attorney Fred Grasso, that he had taken photos of a
prototype he created in “March” without noting the year. Email from D. Potts, ECF No. 181-18
at 2. Starting in “December” of that unidentified year, Mr. Potts writes, he was testing the
performance of the high aspect ratio systems with standard systems. Id. A draft of Mr. Potts’ 1.131
declaration says that he reduced his invention to practice “no later than March ___, 2005” and that
he was “diligent from before February 28, 2005 until the reduction to practice shown in [the
attached photograph].” Potts 1.131 Decl. Draft, ECF No. 181-22 at 3.
Then, in the actual declaration that was filed with the PTO, Mr. Potts explained that the
“[t]he metadata of the photograph as well as the computer file it was stored to confirm that the
photo was taken before February 28, 2005, which is consistent with [his] recollection that [he]
built the example shown in the photograph before February 28, 2005.” ECF No. 169-25 at 253
¶ 7. In his deposition, Attorney Grasso explained that Mr. Potts’ statement in his email that the
photographs were from “March” (presumably of 2005) was merely an oversight or
misremembering of the facts. Grasso Dep., ECF No. 181-23 at 10–11. A trier of fact could believe
Attorney Grasso’s explanation as for the date discrepancy, or, alternatively, could believe that Mr.
Potts did not accurately recount to the PTO when the photo was taken. This question goes squarely
to whether Mr. Potts intended to deceive the PTO.

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The report by Geomatrix’s computer science expert Jonathan Hochman does not change
the Court’s conclusion that disputed facts remain. Mr. Hochman opined that the photograph was
taken on October 26, 2004, and copied to a Windows computer system on October 28, 2004. ECF
No. 169-47 ¶ 20. However, as Eljen points out, Mr. Hochman’s expert analysis is undercut by the
fact that he based his opinion on a screenshot of the photograph and computer file, not the actual,
native database file. Eljen’s Opp’n Br. at 59. In fact, neither Mr. Potts nor his wife, Elizabeth
Potts, can account for the origin of the screenshot with which Mr. Potts based his declaration of
when the photograph of the prototype was taken. Id. Despite considering filing suit based on this
Patent as early as 2008, Mr. Potts disposed of the camera, memory card, and computer. Id. at 58.
Given these genuine and material factual disputes and issues of credibility, summary
judgment must be denied, and this issue must be presented to the jury.
IX.

CONCLUSION
For the reasons discussed herein, Eljen’s motion for summary judgment is DENIED in its

entirety, and Geomatrix’s motion for summary judgment is GRANTED in part and DENIED in
part.

SO ORDERED at Hartford, Connecticut, this 11th day of March, 2025.
/s/ Sarala V. Nagala
SARALA V. NAGALA
UNITED STATES DISTRICT JUDGE

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