freal Foods LLC et al v. Hamilton Beach Brands, Inc. et al

Filing 246

MEMORANDUM ORDER re 169 MOTION for Summary Judgment , IT IS ORDERED that Plaintiffs' motion for summary judgment on Defendants' defenses and counterclaims regarding invalidity based on public use or sale is GRANTED. Signed by Judge Colm F. Connolly on 4/17/2019. (nmf)

Case 1:16-cv-00041-CFC Document 246 Filed 04/17/19 Page 1 of 6 PageID #: 10903

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELA WARE
F'REAL FOODS, LLC and
RICH PRODUCTS
CORPORATION,
Plaintiffs,
Civil Action No. 16-41-CFC

V.

HAMILTON BEACH
BRANDS, INC. and HERSHEY :
CREAMERY COMPANY,
Defendants.:

MEMORANDUM ORDER

In a single filing (D.I. 169), Plaintiffs have asked the Court to grant six
motions for summary judgment. Having reviewed the briefing filed by the parties
in support and opposition to D.I. 169 and heard oral argument, I address in this
Memorandum Order Plaintiffs' motion for summary judgment on Defendants'
defenses and counterclaims related to public use or sale of the inventions claimed
in the asserted self-cleaning blender patents more than one year before the nonprovisional priority date. For the reasons discussed below, I will grant the motion.
1.

Defendant Hamilton Beach Brands, Inc. asserted as defenses and

. counterclaims that f'real's self-cleaning blender patents (i.e., U.S. Patent No.
7,144,150, U.S. Patent No. 7,520,658, and U.S. Patent No. 7,520,662 (collectively,

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the "#150 family")) are invalid and unenforceable because the listed inventor, Jim
Farrell, failed to disclose to the United States Patent &Trademark Office (PTO)
that he had publicly used and offered for sale the subject matter claimed in the
#150 family more than a year prior to November 17, 2003-the first date on which
an application was filed for the # 150 family. See D.I. 10, Answer at ,r,r 65-67 &
Countercls. at ,r,r 31-52, 64-71. Hamilton Beach alleged specifically that in
October 2002 Farrell "showed [an animation] video [of a self-cleaning blender] at
the National Association of Convenience Stores (NACS) Show in Orlando, FL"
and "offered to sell [Plaintiff]

r real 's new blender to certain gas station chains

such as [Qu]ikTrip." D.I. 10 at ,r 70.
2.

In its final invalidity contentions, Hamilton Beach advanced the exact

same arguments about public use (based on a display of a video at the NACS
Show) and offer for sale (based on discussions with QuikTrip at the NACS Show)
it had alleged in its answers and counterclaims. D.I. 233, Ex. 15, Ex. E to Pis.'
Mot. at 13.
3.

During the course of this litigation, evidence was adduced that

directly contradicted Hamilton Beach's allegation that Farrell showed a video of a
self-cleaning blender at the NACS show in October 2002 and that the video in
question could constitute public use. See D.I. 232 at 6, ,r,r 32-36. Specifically, the
evidence-a Fed-Ex receipt and the video itseff-demonstrated conclusively that

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(1) Farrell could not have been in possession of the video at the October 2002
NACS conference and (2) the video in question did not show all the inventive
elements of the asserted patent claims (and therefore, as a matter of law, even if it
had been shown at the NACS conference, could not have constituted prior public
use under 35 U.S.C § 101 ). 1
4.

In their response to Plaintiffs' summary judgment motion, Defendants

made no attempt to rebut Plaintiffs' assertion that Defendants had failed to offer
any evidence of prior use of the invention more than one year before the applicable
priority date. On the contrary, and consistent with the evidence adduced during
discovery, Defendants expressly admitted in their concise counterstatement of facts
submitted in opposition to Plaintiffs' summary judgment motion that the video
they had accused Farrell of showing at the October 2002 NACS conference was in
fact "not shown to anyone at the NACS show in October 2002" and "d[id] not
show all of the inventive elements of any of the asserted claims" of the #150

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See Honeywell Int 'l Inc. v. Universal Avionics Sys. Corp., 488 F .3d 982, 998
(Fed. Cir. 2007) ("A barring public use requires a public use more than one year
before the patent filing date that employs a completed invention in public, without
confidentiality restrictions, and without permitted experimentation." (emphasis
added)); Allied Colloids Inc. v. Am. Cyanamid Co., 64 F.3d 1570, 1574 (Fed. Cir.
1995) ("A 'public use' for the purpose of barring access to the patent system is a
use more than a year before the patent filing date, whereby a completed invention
is used in the public, without restriction and in circumstances other than
'substantially for the purposes of experiment.'" (emphasis added) (quoting Smith &
Griggs Mfg. Co. v. Sprague, 123 U.S. 249, 256 (1887))).

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family. See D.I. 171 at ,r,r 32-36; 0.1. 232 at 1,r 32-36. Accordingly, I will grant
Plaintiffs' motion for summary judgment on Defendants' defenses and
counterclaims to the extent they are based on the use of the inventions claimed in
the #150 family more than one year before the non-provisional priority date. See
. Dempsey v. Del. Dept. ofPub. Safety, 359 F. App'x 347,349 (3d Cir. 2009) ("If a

party fails to assert a legal reason why summary judgment should not be granted,
that ground is waived and cannot be considered or raised on appeal." (quoting
Grenier v. Cyanamid Plastics, Inc., 70 F.3d 667, 678 (1st Cir. 1995))).2

2

The Court makes note of Defendants' failure to acknowledge in its summary
judgment briefing what they effectively admitted in their concise counterstatement
of facts-namely, that there is no genuine issue of material fact with respect to the
public use of the inventions covered by the asserted claims prior to November
2002. The Court notes further that at oral argument, Defendants' counsel persisted
in arguing that the Court should not grant summary judgment on Defendants' prior
public use defenses and counterclaims because
[t]here's some testimony that shows that a Fed-Ex package with
a video didn't get to Mr. Farrell, but he admitted he had the
video before, before the priority date, and he was trying to show
it to customers. So that's the evidence right now.
Tr. of Apr. 11, 2019 Hr'g, at 155:18-22 (emphasis added). See also id. at 156:6-9
("MR. FOSTER: ... I think our allegation is he was trying to show the video.
THE COURT: Not that he actually did show it? MR. FOSTER: It's not clear.").
Defendants have cited no authority for the proposition that an unsuccessful attempt
to use publicly an invention bars the inventor from patenting the invention under
35 U.S.C. § 102(a).
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5.

Defendants did attempt in their summary judgment briefing to rebut

Plaintiffs' assertion that Defendants had failed to offer any evidence of a prior sale
of the invention more than one year before the applicable priority date. Defendants
insist that there is a genuine issue to be litigated with respect to whether "f real
offered for sale its FRLB2 self-rinsing blender to QuikTrip before November
2002." See D.I. 232 at 7, ,r 3. They cite in support of their position: (1) paragraph
20 of the declaration of freal's 30(b)(6) witness; (2) two pages from the deposition
of the same 30(b)(6) witness; (3) five pages from Farrell's deposition; (4) one page
of a power point presentation; and (5) an email with handwritten notes. See id.
Although it is true that the 30(b)(6) witness refers in paragraph 20 of his
declaration to "f real' s negotiations with QuikTrip in the 2001 time frame," he
expressly avers in the same paragraph that "QuikTrip made it clear that they would
only purchase freal's blenders and place them in QuikTrip's over 500 convenience
stores if/'real could invent and build a self-serve blender." See D.I. 171-2, Ex. D
at ,r 20 (emphasis added). The remaining record evidence cited by Defendants
does not support Defendants' contention that Plaintiffs commercially offered for
sale before November 17, 2002 a blender that satisfied each limitation of one of the
patented inventions, let alone provide a sufficient basis for a reasonable jury to
conclude by clear and convincing evidence that Plaintiffs had made such an offer
before that date. Accordingly, I will grant Plaintiffs' motion for summary

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judgment on Defendants' defenses and counterclaims to the extent they are based
on the sale of the inventions claimed in the # 150 family more than one year before
the non-provisional priority date. See Microsoft Corp. v. 141 Ltd. P 'ship, 564 U.S.
91, 95 (2011) (holding that"§ 282 [of the Patent Act] requires an invalidity
defense to be proved by clear and convincing evidence"); Pfaff v. Wells Elecs.,
Inc., 525 U.S. 55, 67 (1998) (explaining that the on-sale bar requires "a

commercial offer for sale" after an invention is "ready for patenting" an_d more
than one year before filing a patent application); Plumtree Software, Inc. v.
Datamize, LLC, 473 F.3d 1152, 1163 (Fed. Cir. 2006) ("[T]he invention that is the

subject matter of the offer for sale must satisfy each claim limitation of the patent."
(internal quotation marks and citation omitted)).
WHEREFORE, on this Seventeenth day of April in 2019, IT IS HEREBY
ORDERED that Plaintiffs' motion for summary judgment on Defendants'

defenses and counterclaims regarding invalidity based on public use or sale is
GRANTED.
IT IS SO ORDERED.

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