Glowner v. Muller Martini Mailroom Systems, Inc.
Filing
48
ORDER denying 33 Motion for Partial Summary Judgment; denying 34 Motion to strike ; denying 35 Motion for summary judgment; denying 38 Motion for summary judgment. See order for details. Both parties have requested a trial by jury. The Court will set that trial by separate notice. Signed by Judge Elizabeth A. Kovachevich on 1/31/2012. (SN)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
DWAYNE GLOWNER,
Plaintiff,
Civil No. 8:09-cv-01768-EAK-TG\V
v.
MULLER-MARTINI
MAILROOM SYSTEMS, INC.,
Defendant.
/
ORDER ON PLAINTIFF'S MOTION TO STRIKE, PLAINTIFF'S MOTION FOR
PARTIAL SUMMARY JUDGMENT, AND DEFENDANT'S MOTIONS FOR
SUMMARY JUDGMENT
This cause is before the Court on Plaintiffs Motion for Partial Summary Judgment as to
Defendant's Counterclaim of Invalidity for Lack of Enablement (Doc. 33). Plaintiffs Motion to
Strike the Expert Report of Robert Erbstein (Doc. 34), Defendant's Motions for Summary
Judgment of Non-Infringement (Doc. 35) and Patent Invalidity (Doc. 38), and the various
responses thereto (Docs. 43, 44, 45, 46). Forthe reasons set forth below. Plaintiffs Motion to
Strike, Plaintiffs Motion for Partial Summary Judgment, and Defendant's Motions for Summary
Judgment of Non-Infringement and of Patent Invalidity are DENIED.
BACKGROUND AND PROCEDURAL HISTORY
The following facts are gleaned from the motions currently before this Court, and the
Court recognizes them as "facts" only with regard to resolution of the particular motions at issue.
Plaintiff, Dwayne Glowner ("Glowner"), patentee of United States Patent No. 6,755,412
Bl (the "'412 Patent"), sued Defendant, Muller-Martini Mailroom Systems, Inc. ("MMMS"), for
infringement on August 28, 2009. Glowner accuses MMMS of infringing Claims I, 9, and 17 of
1
the '412 Patent by making, using, selling, and offering to sell its SLS 3000 XL inserter machine,
which includes a high-speed insert feeding assembly, the Universal Feeder ("XL Feeder").
MMMS counterclaimed for non-infringement, invalidity, and bad faith. Doc. 13.
The patent-in-suit discloses a "High Speed Overlapping Insert Feeding Assembly" for
use in preparing newspapers for distribution. Doc. I, Ex. A. The invention facilitates the feeding
of "inserts" (such as coupon booklets, advertising sheets, etc.) into newspapers. It was designed
to provide an insert feeding assembly that can feed crumpled inserts without jamming, to feed
inserts having different thicknesses without adjusting suction level, and, perhaps most important,
to operate at printing press speed. '412 Patent, col. 2,11.33-37. The invention is also designed to
be easier to operate, comprise fewer parts, require less greasing during operation, and be less
sensitive to timing errors than those insert feeding assemblies preexisting it. '412 Patent, col. 2,
11.38-40. It consists of an insert supporting assembly for supporting a stack of inserts, a
converting assembly for converting the stack of inserts into an overlapping stream of inserts, a
conveying assembly for moving the overlapping stream of inserts through the feeding assembly,
and an overlapping stream separating and ejecting assembly for separating inserts from the
overlapping stream and ejecting them out of the feeding assembly and into the pockets of the
newspapers. '412 Patent, col. 2,11.44-56.
The '412 Patent provides only one preferred embodiment of the invention, but cautions
that this embodiment "is not intended [toj be construed as [a] limitation[] upon the scope of the
invention as set forth in" the claims of the patent. '412 Patent, col. 9,11.16-21. Glowner asserts
three independent claims against MMMS in this case: Claims 1, 9, and 17. Claim 1 of the '412
Patent exemplifies the asserted claims:
1. An insert feeding assembly, comprising:
supporting means for supporting a stack of inserts;
converting means for converting the stack of inserts into an overlapping stream of
inserts with a lap roller assembly that guides each insert down into the
overlapping stream of inserts;
conveying means for conveying the overlapping stream through the feeding
assembly; and
overlapping stream separating and ejecting means for separating individual inserts
from the overlapping stream of inserts and for ejecting separated individual
inserts from the feeding assembly.
'412 Patent, col. 9,11.23-35.
Glowner began selling feeder machines in 2004, and approached MMMS about licensing
or purchasing the technology; MMMS declined. Doc. 43. MMMS subsequently developed and
brought to market its own inserter machine, the SLS 3000 XL, and it is this machine that forms
the basis for Glowner's infringement allegations and, accordingly, the instant suit.
Both parties submitted expert reports: Glowner produced the report of Dr. William S.
Howard (the "Howard Report"), Doc. 33, Ex. C, and MMMS entered the report of Mr. Robert
Erbstein ("Erbstein Report" or "Report"), Doc. 34. Ex. A. Glowner then moved to strike the
Erbstein Report (Doc. 34), and for partial summaryjudgment as to MMMS' counterclaim of
invalidity for lack of enablement (Doc. 33). MMMS subsequently moved for summaryjudgment
of non-infringement (Doc. 35) and of patent invalidity (Doc. 38).
Because resolution of the various motions for summaryjudgment hinges on the outcome
of Glowner's Motion to Strike the Erbstein Report (Doc. 34), the Court will begin its discussion
there and, upon disposition of the Motion to Strike, turn its attention to the dispositive motions at
issue. See Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1364 (Fed. Cir. 2011).
Plaintiffs Motion to Strike the Erbstein Report
Plaintiff moves to strike the expert report of Robert Erbstein for failure to comply with
Rule 26(a)(2)(B) of the Federal Rules of Civil Procedure. Rule 26(a)(2)(B) provides that an
expert witness's report must contain "a complete statement of all opinions and to be expressed
and the reasons therefor," as well as "the facts or data considered by the witness in forming"
those opinions. Expert reports can be stricken if they "offer conclusory opinions" and do not
"contain some discussion of [the expert's] reasoning and [the] thought process that lead to the[]
ultimate opinions." Elder v. Tanner, 205 F.R.D. 190, 193 (E.D. Tex. 2001); see STSSoftware
Sys., Ltd., No. L04-CV-2111-RWS, 2008 WL 660324, at *2 (N.D. Ga. Mar. 6, 2008 ) (striking
expert report that "stated hundreds of unsupported conclusory opinions" and contained "a
summary of prior art references, claims charts containing quotes excerpted from these references,
and a conclusion that a combination of references renders the patent claims obvious"); Dataquill
Ltd. v. Handspring, Inc., No. 01 C 4635, 2003 WL 737785, at *4 (N.D. III. Feb. 28, 2003)
(striking expert report for failure to comply with Rule 26(a)(2)(B)). The decision to strike an
expert report is within the sound discretion of the trial judge. Glowner claims that the Erbstein
Report fails to disclose the basis of Mr. Erbstein's opinions, and that it must therefore be
stricken. Doc. 34.
The Erbstein Report begins with an introductory section setting forth Mr. Erbstein's
qualifications. Mr. Erbstein notes that in preparing the Report, he reviewed "all documents
referred to in this report, including" the "412 Patent, its file history, and any prior art cited therein
or otherwise referred to throughout the Report. The Report then surveys Mr. Erbstein's
understanding of the '412 Patent and the XL Feeder, before proceeding to explain why the XL
Feeder does not infringe the '412 Patent, either literally or under the doctrine of equivalents, and
why the '412 Patent itself is invalid for lack of novelty and enablement. Throughout various
portions of the Report, Erbstein cites to his own attached exhibits, provided in table format, in
which he compares the '412 Patent to prior art or the XL Feeder. An example of these exhibits is
Exhibit D to the Erbstein Report, which purports to explain why the '412 Patent is invalid based
on prior art and compares the '412 Patent to various other patents, including U.S. Patent No.
3,741,535 to Palkovic (the "Palkovic Patent"). The exhibit consists of a table listing the
limitations of the '412 Patent and comparing them to the Palkovic Patent:
Claims as Issued
Prior Art
Palkovic U.S. Patent No. 3,741,535
Claim 1
Insert feeding assembly
1. An insert feeding assembly,
comprising:
supporting means for supporting a stack
supporting means for supporting a stack of
of inserts;
converting means for converting the
stack of inserts into an overlapping
inserts (16)
converting means (suction arm 50) for
converting the stack of inserts (16) into an
stream of inserts with a lap roller
assembly that guides each insert down
into the overlapping stream of inserts;
overlapping stream of inserts with a lap roller
assembly (42, 44) that guides each insert down
into the overlapping stream of inserts (See col.
10, lines 28-32);
The numbers in the right column of the above excerpt ostensibly refer to figure numbers from the
patent being discussed.
The Court agrees that the portions of the Erbstein Report similar to the excerpt quoted
above will be only marginally helpful to the trier of fact. But the Report itself is lengthy, and
other portions, such as Mr. Erbstein's description of the XL Feeder itself and the various sections
of the discussion regarding Mr. Erbstein's opinion that the XL Feeder does not infringe the '412
Patent, among others, are provided with more than a sufficient basis, and may well be helpful to
the trier of fact. Moreover, it does not inexorably follow from the fact that certain portions of the
Report are lacking that the entire Report must be stricken.
The Court agrees that various portions of the Erbstein Report merely "restate[ the]
position" of MMMS with regard to infringement and invalidity of the '412 Patent. SRI Intern.,
Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). And on summaryjudgment,
this Court will not give credence to those portions of the Report, or to statements in the Report
that seem to merely rehash MMMS' legal arguments. "The [C]ourt. however, can do that on a
fact-by-fact basis as necessary without wholesale throwing out of all of [the Expert Report]."
Zenith Elec. Corp. v. PDI Commc'n Sys., Inc., 522 F.3d 1348, 1357 n.3 (Fed. Cir. 2008) (quoting
and affirming the district court's decision below). Indeed, the Erbstein Report also contains
several helpful sections for which the basis is more than sufficiently disclosed, and the Court is
mindful that, at least when confronted with subtle questions such as these, it must "take pains
neither to use an elephant gun to slay a mouse nor to wield a cardboard sword if a dragon
looms." Cf. Anderson v. Beatrice Foods Co., 900 F.2d 388, 395 (1st Cir. 1990).
We deal here with a mouse, and the Court accordingly declines to exercise its discretion
to strike the entire expert report. Rather, and in order to wield a precise tool specifically tailored
to the task at hand, this Court will assess the probative value of the various sections of the
Erbstein Report on an ad hoc basis as the need for them arises, giving no credence to those
portions that arc not helpful, while taking at fair value those that are. The Motion to Strike the
Expert Report of Mr. Robert Erbstein (Doc. 34) is denied.
Motions for Summary Judgment
The parties cross-move for summaryjudgment as to invalidity for lack of enablement
(Docs. 33, 38), and MMMS has additionally moved for summaryjudgment of non-infringement
(Doc. 35) and of invalidity for lack of novelty (Doc. 38).
Standard of Review
Federal Rule of Civil Procedure 56 provides that summaryjudgment shall be granted if
the pleadings, depositions, answers to interrogatories and admissions on file, together with
affidavits, if any, show that there is no genuine issue of material fact and that the moving party is
entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Anderson v. Liberty Lobby, Inc.,
447 U.S. 242, 249 (1986). The moving party bears the initial burden of stating the basis for its
motion and identifying those portions of the record demonstrating the absence of genuine issues
of material fact. Celotex Corp. v. Catrett, All U.S. 317,323-324 (1986). That burden can be
discharged if the moving parly can show the Court that there is "an absence of evidence to
support the nonmoving party's case." Id. at 325. When the moving parly has met this initial
burden, the nonmoving party must then designate specific facts showing that there exists some
genuine issue of material fact in order to defeat summaryjudgment. Id. at 324.
Issues of fact are "genuine" only if a reasonable jury, considering the evidence presented,
could find for the nonmoving party. Anderson, All U.S. at 249. Material facts are those that will
affect the outcome of the trial under governing law. Id at 248; Hickson Corp. v. Crossarm Co.,
357 F.3d 1256, 1259-60 (11th Cir. 2004). In determining whether a material issue of fact exists,
the court must consider all evidence in the light most favorable to the nonmoving party. Sweat v.
Miller Brewing Co., 708 F.2d 655 (1 lth Cir. 1983). If the determination of the case rests on
which competing version of the facts is true, the case should be submitted to the trier of fact and
the motion for summaryjudgment denied. Rollins v. TechSouth, Inc., 833 F.2d 1525, 1531 (1 lth
Cir. 1987). The weighing of evidence and the consideration of the credibility thereof are issues
of fact to be determined by the jury at trial. See Warrior Tombigbee Tramp. Co. v. M/V Nan
Fung, 695 F.2d 1294, 1299 (1 lth Cir. 1983).
Claim Construction
Because the first step of both the infringement and invalidity analyses requires the Court
to determine the proper scope of the asserted claims, our analysis begins there. See Markman v.
Westview Instruments, Inc., 517 U.S. 370, 374 (1996); Telejlex, Inc. v. Ficosa N. Am. Corp., 299
F.3d 1313, 1333 (Fed. Cir. 2002).
"A court construing a patent claim seeks to accord a claim the meaning it would have to
a person of ordinary skill in the art." Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352
(Fed. Cir. 2004); see Goldenberg v. Cytogen, Inc., 373 F.3d 1158. 1164 (Fed. Cir. 2004).
However, "the meaning of a claim term as understood by persons of skill in the art is often not
immediately apparent, and .. . patentees frequently use terms idiosyncratically." Philips v. AWH
Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). In addition to the words of the claim, "the
remainder of the specification, the prosecution history, and extrinsic evidence concerning
relevant scientific principles, the meaning of technical terms, and the state of the art" are often
useful in divining the proper scope of the claims at issue. Innova/Pure Water, Inc. v. Safari
Water Filtration Sys., 381 F.3d 1111,1116 (Fed Cir. 2004); see Vitrionics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("[T]he 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."). And though "there is sometimes a fine line between reading a
claim in light of the specification, and reading a limitation into the claim from the specification,"
the court can avoid this pitfall "if the court's focus remains on understanding how a person of
ordinary skill in the art would understand the claim terms." Philips, 415 F.3d at 1323.
In the instant case, the only disputed claim term is "overlapping stream." MMMS argues
that an "overlapping stream" means inserts that (1) physically overlap, (2) contact one another,
8
and (3) are transported and move together in a stream through the feeding assembly. Doc. 35.
According to MMMS, language from the specification describing the preferred embodiment
supports its view that, in order to be in an overlapping stream, inserts must move together in
constant contact, as with shingles or tiles. See '412 Patent, col. 6,11. 24-25 ("One full rotation of
the lap rollers 74 pulls and overlaps three inserts and feed[s] the overlapping inserts to the
conveyor belt assembly."); '412 Patent, col. 7,11. 32-35. MMMS further asserts that in the
prosecution history of the '412 Patent, the examiner repeatedly referred to prior art that embraces
its interpretation of overlapping stream, and that, by not objecting to the examiner's
interpretation, Glowner acquiesced to such a definition.
Glowner, for his part, urges the Court to define an "overlapping stream" as a "stream for
product that overlaps for at least part of the stream of motion." Doc. 43. He asserts that, in the
newspaper printing and distribution industry, the term "overlapping" is used to describe the
process of removing inserts from a stack of inserts more than one at a time—that is, pulling back
the edge of one insert and moving it through the feeder and. before that first insert is completely
removed, beginning to pull back the edge of a second or subsequent insert at the same time.
The Court is persuaded by neither party's proposed definition. MMMS, for example,
suggests that inserts can only be in an "overlapping stream" when they are in contact with one
another, but fails to disclose exactly why that result must follow from the language of the claims
themselves. Though admittedly the preferred embodiment of the '412 Patent and its
accompanying figures describe a mechanism whereby the inserts do contact one another while
flowing along the overlapping stream, the Federal Circuit has "expressly rejected the contention
that if a patent describes only a single embodiment, the claims of the patent must be construed as
being limited to that claim." Philips, 415 F.3d at 1323; see Nazomi Commc'ns, Inc. v. ARM
Holdings, PLC, 403 F.3d 1364 (Fed. Cir. 2005) (noting that claims can extend to "different
subject matter than is illustrated in the specific embodiments in the specification"). Thus, and
though most of the time inserts moving in a steam will be in physical contact with one another,
that characteristic is not a necessary condition of overlap. That makes good sense, too—even in
everyday nomenclature, two items can be said to overlap if their ranges are coextensive or they
are placed in a staggered format, and yet need not necessarily be touching. Under MMMS'
crabbed interpretation, however, inserts could not be said to overlap unless they remained in
constant contact. Apart from the preferred embodiment and a few instances of prior art in which
the patents happened to include overlapping streams in which the articles remained in contact,
MMMS provides no rationale for the contact element of its proposed definition. Put another way,
MMMS attempts to transmute the characteristic of contact—a condition sufficient to create an
overlapping stream—into a condition necessary for an overlapping stream. The Court declines to
so restrict the term in the absence of claim language supporting that result.
But just as MMMS reads the term "overlapping stream" in the '412 Patent too narrowly.
Glowner reads it too broadly. He claims that, so long as there is some period in which inserts
overlap along their journey from the insert stack to the separating and ejecting mechanism, the
entire path upon which they travel can be properly deemed an overlapping stream. The Court
cannot agree. Though Glowner cites to his own deposition in addition to the testimony of a
former MMMS executive, Randy Seidel, such extrinsic evidence is accorded no weight if it
conflicts with the unambiguous definition of a claim term, as disclosed by the Court's review of
the intrinsic evidence. Vitrionics, 90 F.3d at 1584. Even under the most charitable reading, there
is nothing in the claim language, the specification, or the prosecution history to support
Glowner's broad definition, and the Court refuses to provide it here by fiat.
10
Instead, the Court holds that the true definition of the disputed claim term in this case is
somewhere in between the definitions proffered by the litigants. In the Court's view, a clear
reading of the claims of the '412 Patent, its specification, and its file wrapper reveals that the
term "overlapping stream" as used in the '412 Patent is properly construed to describe "inserts
which (1) physically overlap and (2) move continuously through the feeding assembly." Such an
interpretation is consistent with the plain language of the term as understood by those of ordinary
skill in the art, as well as the specification and prosecution history. See '412 Patent, col. 4,11. 26-
29 ("Overlapping inserts reduces the amount of time required to feed a stack of inserts through
the feeder and increases the effective feeding speed of the feeder."). It also avoids impermissibly
restricting the plain language of the claim terms of the '412 Patent to its single preferred
embodiment. See, e.g., Telejlex, 299 F.3d at 1328 (explaining that, in the absence of "clear
statements" of limitation in the specification, the court is "constrained to follow the language of
the claims, rather than that of the written description").
Finally, insofar as MMMS argues {\\a\. Athletic Alternatives, Inc. v. Prince
Manufacturing, Inc. requires the Court to adopt the narrower of two plausible claim
interpretations where that narrow interpretation is enumerated in the claim specification, it is
wrong. 73 F.2d 1573 (Fed. Cir. 1996). As Glowner keenly notes, the "unusual case" of Athletic
Alternatives involved a patent applicant who "made two contradictory and irreconcilable
affirmative representations of the contested limitation." Housey Pharms., Inc. v. Aslrazeneca UK
Ltd., 366 F.3d 1348, 1356 (Fed. Cir. 2004) (emphasis in original). That is not this case. There is
no direct contradiction between the '412 Patent specification and its prosecution history, and the
rule of Athletic Alternatives is thus inapposite to the case at bar.
11
Having ascertained the true meaning of the disputed claim term "overlapping stream," the
Court can now proceed to examine the merits of the instant motions for summaryjudgment as to
invalidity for lack of enablement, invalidity for lack of novelty, and non-infringement. The Court
will address each in turn.
Invalidity for Lack of Enablement
Both parties move for summaryjudgment as to '412 Patent's validity with regard to
enablement. Doc. 33, 38. A patent specification must "contain a written description of the
invention ... to enable any person skilled in the art ... to make and use the same." 35 U.S.C.
§ 112 (2006). In particular, the specification must "enable one of ordinary skill in the art to
practice the claimed invention without undue experimentation." Nat 7 Recovery Techs., Inc. v.
Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999). The issue of invalidity
from lack of enablement under § 112 is a question of law based upon underlying issues of fact.
LiquidDynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1224 (Fed. Cir. 2006). Because a patent
is presumed valid pursuant to 35 U.S.C. § 282, the party seeking to invalidate the patent, here
MMMS, has the burden of doing so by adducing clear and convincing evidence of the facts
underlying the conclusion of invalidity. Invitrogen Corp. V. Biocrest Mfg., L.P., 424 F.3d 1374,
1378 (Fed. Cir. 2005). Synthesizing that standard with the general Rule 56 summaryjudgment
standard, MMMS "must submit such clear and convincing evidence of invalidity so that no
reasonable jury could find otherwise." Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 962
(Fed. Cir. 2001). With respect to Glowner's motion, and because he (unlike MMMS) does not
bear the burden of proof on this issue at trial, summaryjudgment in his favor is proper if
Glowner can demonstrate that MMMS "failed to produce clear and convincing evidence on an
essential element of a defense upon which a reasonable jury could invalidate the patent," which
here is lack of enablement. Id.
"Whether undue experimentation is needed is not a single, simple factual determination,
but rather is a conclusion reached by weighing many factual considerations ... including] (1)
the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3)
the presence or absence of working examples, (4) the nature of the invention, (5) the state of the
prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the
art, and (8) the breadth of the claims." In re Wands. 858 F.2d 731, 737 (Fed. Cir. 1988); see also
ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010) (listing and applying the
Wands factors).
In essence, both of the instant motions emanate from the requirement that the "full scope
of the claimed invention ... be enabled." Auto. Techs. Int'l, Inc. v. BMWofN. Am., Inc., 501
F.3d 1274, 1285 (Fed. Cir. 2007). Glowner claims that the XL Feeder infringes on his patent and
is within the scope of the '412 Patent's claims. Seizing on the breadth of Glowner's claim,
MMMS argues that the '412 Patent is invalid for lack of enablement because it does not teach a
person of ordinary skill in the art how to arrive at the accused XL Feeder without undue
experimentation. Doc. 38.
Some of the key differences between the XL Feeder and the assembly envisioned by the
'412 Feeder are that the XL Feeder has a much shorter conveying assembly and an over-riding or
one-way clutch that works with its pusher (referred to in the '412 Patent as a "lap roller"). The
question of whether a person of ordinary skill in the art would be able to make the modifications
necessary to implement the XL Feeder from the '412 Patent is alone a material question of fact
that precludes summaryjudgment. Elan Pharms., Inc. v. Mayo Found, for Med. Educ. &
13
Research, 346 F.3d 1051, 1055 (Fed. Cir. 2003) (noting that a considerable amount of
experimentation is permissible, if it is routine or reasonable in light of the "nature of the
invention and the state of the art"); see also Hybritech Inc. v. Monoclonal Antibodies, Inc., 802
F.2d 1367, 1384 (Fed. Cir. 1986) ("A patent need not teach, and preferably omits, what is well
known in the art.") The parties' motions (Docs. 33, 38) and the responses thereto (Docs. 44,46)
are laden with competing expert statements, deposition testimony, and other underlying factual
issues that require credibility determinations and the weighing of evidence; such issues are for
the factfinder, not this Court, and the present motions must accordingly fail. See Transocean
Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1307 (Fed.
Cir. 2010) (reversing summaryjudgment of patent invalidity for lack of enablement because "the
parties heavily dispute whether the [modification] would be 'trivial,' or a much more complex
task"). For example, on the issue of whether the addition of a one-way clutch would require
undue experimentation, the parties offer competing expert testimony that is detailed in nature and
more than sufficient to raise a genuine issue of material fact as to invalidity. See Sitrick v.
Dreamworks, LLC, 516 F.3d 993, 1001 (Fed. Cir. 2008) (noting that conclusory expert
testimony, given by one not skilled in the art, does not raise triable issues of material fact on
summaryjudgment). This is especially so in light of the extremely heavy burden that MMMS
must meet to win a summaryjudgment of invalidity, in addition to both parties' failure to
definitively demonstrate what is or is not well known to persons of ordinary skill in the art. The
cross-motions for summaryjudgment as to invalidity for lack of enablement are denied.
Invalidity for Lack of Novelty
MMMS next moves to for summaryjudgment on the basis that the '412 Patent is invalid
under 35 U.S.C. § 102 for lack of novelty. Doc. 38. "Invalidity based upon lack of novelty (often
14
called 'anticipation') requires that the same invention, including each element and limitation of
the claims, was known or used by others before it was invented by the patentee." Hoover Grp.,
Inc. v. Custom Metalcraft, Inc., 66 F.3d 299, 302 (Fed. Cir. 1995); see Finisar Corp. v. DirecTV
Grp., Inc., 523 F.3d 1323, 1334 ("[T]his court has long held that '[anticipation requires the
presence in a single prior art disclosure of all elements of a claimed invention arranged as in the
claim.'") (emphasis in original) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548
(Fed. Cir. 1983)). A patent is presumed valid, see 35 U.S.C. §282, and one who challenges a
patent's validity must prove its invalidity by clear and convincing evidence. See Finnigan Corp.
v. Int'l Trade Comm'n, 180 F.3d 1354, 1365 (Fed. Cir. 1999). Further, anticipation is a question
of fact, so summaryjudgment on the question of invalidity is inappropriate if a trier of fact
applying the clear and convincing standard could find for either party. Oney v. Ratliff 182 F.3d
893, 895 (Fed. Cir. 1999); see Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316,
1327 (Fed. Cir. 2001). Stated differently, MMMS is entitled to summaryjudgment on the
question of anticipation only if no reasonable jury could find anything other than that MMMS
had carried its burden of showing the '412 Patent's lack of novelty by clear and convincing
evidence. Id.: see Hunt v. Cromartie, 526 U.S. 541. 553 (1999) (noting that summaiy judgment
in favor of the party bearing the burden of persuasion "is inappropriate when the evidence is
susceptible of different interpretations or inferences by the trier of fact").
Here, MMMS' motion challenges the validity of the '412 Patent for lack of novelty
solely on the basis that the subject matter of Claims 1. 9, and 17 were previously disclosed by
U.S. Patent No. 4,071,234 to Schick (the "Schick Patent"). Doc. 38, at 15-19. The Schick Patent,
which discloses a "High Performance Sheet-Feeder Mechanism," was not cited in Glowner's
patent application and was not considered by the claims examiner before allowance of the '412
15
Patent. MMMS submits that Exhibit B to the Declaration of Robert Erbstein (Doc. 35, Ex. 3)
provides clear and convincing evidence of the '412 Patent's invalidity. Exhibit B consists of a
claim chart comparing the elements of the '412 Patent to the Schick Patent. It is far more detailed
than the elements of the Erbstein Report that Glowner attacked in his previous motion to strike.
According to the claims chart and the color-coded figures attached thereto, the Schick Patent
discloses all of the elements of the '412 Patent, including an "insert feeding assembly," a
"supporting means for supporting a stack of inserts," a "converting means for converting the
stack of inserts into an overlapping stream of inserts with a lap roller assembly that guides each
insert down into the overlapping stream of inserts," a "conveying means for conveying the
overlapping stream through the feeding assembly," and a "separating and ejecting means for
separating individual inserts from the overlapping stream of inserts and ejecting separated
individual inserts from the feeding assembly."
Glowner responds that Schick Patent does not anticipate the '412 Patent because the
Schick Patent discloses an invention that cannot be used to handle "inserts." The Court cannot
agree. As MMMS aptly points out, the Schick Patent "relates to a feeder mechanism for single or
folded sheets of paper or similar flexible sheets," Schick Patent, col. 1,11. 6-7, and such feeder
mechanisms are used in insertion machinery to "insert[] advertising copy into newspapers,"
Schick Patent, col. 2,11. 29-30. Though the "412 Patent might seem best fit for inserts consisting
of multiple pages folded together, nothing in the '412 Patent limits "inserts" to two or more
pages. Thus, there is no question that the Schick Patent can act upon the very same type of
inserts that the '412 Patent envisions. It is perhaps for this reason that, in his response to
MMMS' Motion for Summary Judgment as to Invalidity, Glowner docs not assert that the
16
Schick Patent cannot be used to handle inserts, and implicitly concedes the point. Doc. 44, at 812.
Glowner next argues that summaryjudgment is inappropriate because the Schick Patent
does not contain the "lap roller assembly that guides each insert down into the overlapping
stream of inserts" that is so central to the '412 Patent. The Schick Patent does disclose a
preferred embodiment in which "an upper corner on each of the conveyor wheels (12) engages
the upper edge of the sheet and thus pulls the bent sheet over the reversing roller (9) in the
downward direction until it is pinched between the conveyor wheels and the reversing roller and
is gradually pulled further out of the stack." Schick Patent, col. 4,11. 21-27. Essentially, Glowner
posits that, because Schick's version of the "lap roller" (the "conveyor wheel") only guides a
sheet downward until it is pinched by the conveyor wheel and the reversing roller, after which it
moves in a horizontal or clockwise direction, Schick does not disclose a lap roller that guides
inserts down into an overlapping stream. In support of its assertion. Glowner points to the
original Howard Report as well as Dr. Howard's Rebuttal Report, which claims that "the Schick
invention .. . does not guide each insert down into an overlapping stream. Instead, it guides
sheets of paper in a diagonal direction (neither vertical nor horizontal). Doc. 44, Ex. F, at 7
(emphasis in original).
Though the question is a close one, the Court believes that the presence of conflicting
expert testimony requires the submission of this particular issue to the jury for resolution. See
Hunt, 526 U.S. at 553. That may not have been so in the absence of the "clear and convincing
evidence" standard of proof, layered on top of the fact that MMMS already bears the burden of
demonstrating that the presumably valid '412 Patent is in fact invalid for lack of novelty. But
such a factual issue, which involves comparing the inventions contemplated by the Schick and
17
the "412 Patents, and the specific determination of whether Schick discloses a lap roller
mechanism that guides downward into the overlapping stream, is at this juncture sufficient to
preclude the entry of summary judgment.
Finally, there is one more factual issue that forecloses the entry of summary judgment as
to invalidity for lack of novelty at this stage of the proceedings. Claim 9 of the '412 Patent
describes "a converting assembly adjacent to the insert supporting assembly, where the
converting assembly uses a lap roller assembly configured to guide each insert down into an
overlapping stream of inserts," '412 Patent, col. 9,1. 66-col. 10.1. 2. In addition, Claim 9
contains "a conveying assembly adjacent to the converting assembly." '412 Patent, col. 10,11. 34. Glowner correctly points out that a factual issue exists as to whether the Schick Patent, which
seems to collapse the converting and conveying assemblies into the same mechanism, reads on
the '412 Patent's inherent requirement that the "converting" and "conveying" assemblies be
separate from, and literally adjacent to, one another. Doc. 44, at 10; Doc. 44, Ex. F, at 7. Though
MMMS' response—that the conveyor belt of the Schick Patent is at times acting as part of the
converting assembly, and at others acting as part of the conveying assembly—has some appeal,
the Court is mindful of the fact that MMMS carries the heavy burden of demonstrating the '412
Patent's invalidity by clear and convincingevidence. Whatever can be said of the evidence and
arguments proffered by the parties on this point, it is plain that MMMS has not made such a
showing that no reasonable jury could find Claim 9 of the '412 Patent to be valid. MMMS'
motion for summaryjudgment as to invalidity for lack of novelty must accordingly fail. See
Aspex Eyewear, Inc. v. Concepts In Optics, Inc., 111 F. App'x 582, 586 (Fed. Cir. 2004).
Non-Infringement
Determining whether an accused device infringes a Untied States patent is a two-step
process. The court must first determine the proper scope of the asserted claims, and then
compare the construed claims to the allegedly infringing device. NTP, Inc. v. Research In
Motion, Ltd., 418 F.3d 1282, 1312. Having properly construed the single disputed term in the
'412 Patent above, only the factual inquiry of applying the asserted claims to the XL Feeder
remains. "Summaryjudgment on the issue of infringement [or non-infringement] is proper when
no reasonable jury could find that every limitation recited in a properly construed claim cither is
or is not found in the accused device either literally or under the doctrine of equivalents." PC
Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1364 (Fed. Cir. 2005). Thus, and
because Glowner will ultimately the bear the burden at trial of demonstrating that the XL Feeder
infringes on his '412 Patent, he must demonstrate the existence of a factual issue as to
infringement that precludes the entry of summary judgment. Celotex, All U.S. at 325.
MMMS' Motion for Summary Judgment argues that the XL Feeder does not contain an
"overlapping stream" and that it therefore does not literally infringe upon the '412 Patent. This
Court has previously defined "overlapping stream" to describe inserts which (1) physically
overlap and (2) move continuously through the feeding assembly. MMMS argues that, because
the '412 Patent requires "an overlapping stream of inserts with a lap roller assembly that guides
each insert down into the overlapping stream of inserts." the XL Feeder cannot infringe upon the
'412 Patent. It claims that after an insert in the XL Feeder is acted upon by the pusher (the XL
Feeder's version of a "lap roller"), the inserts are singulated and not part of an overlapping
stream. Glowner counters that the overlapping stream in the XL Feeder occurs when a leading
insert is being guided down by the pusherand a trailing insert is being pulled out of the stack of
19
inserts, and supports its assertion with Dr. Howard's testimony and report. Doc. 43, at 12; see
Howard Report, Doc. 43, Ex. H, at 13-16 (demonstrating Plaintiffs version of the overlapping
stream in the XL Feeder); Howard Dep., Doc. 43, Ex. J., at 181-192. Not to be outdone, MMMS
points to its own Erbstein Report for the proposition that the there is no overlapping stream in the
XL Feeder, that the inserts are removed one at a time from the stack of inserts with the XL
Feeder, and that the inserts being removed from the stack of inserts in the XL Feeder have not
begun transport and thus cannot be deemed part of any overlapping stream. Doc. 35.
Whether or not the XL Feeder creates an overlapping stream, and whether the pusher
system in the XL Feeder is in effect a "lap roller assembly that guides each insert down into the
overlapping stream of inserts" is a question of fact for the jury. MMMS suggests that because the
lap roller guides each insert "down into" the overlapping stream of inserts, the XL Feeder cannot
infringe because it does not create an overlapping stream downstream of the pusher. Even
assuming that the importance MMMS attaches to the "down into" phrase is warranted, this
argument is still unpersuasive. After all, Glowner heavily disputes the notion that the XL Feeder
does not contain an overlapping stream downstream from the pusher, and the expert testimony of
Dr. Floward that Glowner proffers in support of his contentions is alone sufficient to create a
triable issue of material fact on this question. "To satisfy the summaryjudgment standard, a
patentee's expert must set forth the factual foundation for his infringement opinion in sufficient
detail for the court to be certain that features of the accused product would support a finding of
infringement under the claim construction adopted by the court, with all reasonable inferences
drawn in favor of the non-movant." Intell. Sci. and Tech.. Inc. v. Sony Elecs., Inc., 589 F.3d
1179, 1183 (Fed. Cir. 2009). The Howard Report includes ample detail concerning its analysis
and the bases for its conclusions to preclude summaryjudgment. In fact, on the particular
20
question of the overlapping stream, the Floward Report provides not only textual analysis, but
also photographs specifically explaining Dr. Howard's theory of how the XL Feeder guides
inserts down into an overlapping stream. Whether or not the jury agrees with Dr. Howard's
theory when it views the XL Feeder in operation is a question susceptible of different
interpretations. It may well decide that the XL Feeder does not contain a lap roller that guides
inserts down into an overlapping stream of inserts. But if it does, it will do so at trial. For this
Court to answer such issues at this stage of the proceedings would be to aggrandize itself at the
expense of the jury's role as factfinder in this case. That the Court will not—and indeed
cannot—do.
Flaving found that there exists a genuine issue of material fact as to whether the XL
Feeder literally infringes the '412 Patent, the Court need not go further. The question of whether
prosecution history estoppel precludes Glowner from proving infringement under the doctrine of
equivalents hinges on whether the jury believes the XL Feeder literally infringes the '412
Patent's element of a "lap roller assembly that guides each insert down into the overlapping
stream of inserts." After all, that very same language was added to the '412 Patent in response to
the examiner's rejection, so the questions of whether the XL Feeder literally infringes upon this
particular element of the '412 Patent and whether prosecution history estoppel bars Glowner
from pursuing an infringement claim under the doctrine of equivalents with regard to the "lap
roller assembly that guides each insert down into the overlapping stream of inserts" are, in fact.
one and the same. See Biovail Corp. Int 7 v. Andrx Pharms., Inc., 239 F.3d 1297, 1304 (Fed. Cir.
2001) ("[W]hen application of the doctrine of equivalents to a limitation is completely barred
due to prosecution history estoppel, a patentee asserting infringement must show by a
preponderance of the evidence that an allegedly infringing device literally reads on that
21
limitation as properly construed."). At any rate, the existence of the genuine issue of material fact
as to whether the XL Feeder literally infringes the '412 Patent precludes summaryjudgment as
to infringement, and this motion, too, is denied. Accordingly, it is
ORDERED that Plaintiff Dwayne Glowner's Motion to Strike the Expert Report of Mr.
Robert Erbstein (Doc. 34) and Motion for Partial Summary Judgment as to Defendant's
Counterclaim of Invalidity for Lack of Enablement (Doc. 33) are DENIED. Additionally,
Defendant's Motions for Summary Judgment of Non-Infringement (Doc. 35) and Patent
Invalidity (Doc. 38) are also DENIED. Both parties have requested a trial by jury. The Court
will set that trial by separate notice.
DONE AND ORDERED in Chambers, in Tampa, Florida thig^/ffifof January,
2012.
Copies to: All parties and counsel of record.
?9
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?