Agri-Labs Holdings LLC v. TapLogic LLC

Filing 152

OPINION AND ORDER: The Court GRANTS IN PART and DENIES IN PART the Defendant's Motion for Summary Judgment 131 of non-infringement. The Court grants summary judgment of non-infringement on all claims except Independent Claim 1. The Court also grants summary judgment of no direct infringement of Claim 1 and no contributory infringement of Claim 1. The Court DENIES the Defendant's Motion for Summary Judgment 129 of invalidity, DENIES the Defendant's request to dismiss this case for improper venue and lack of personal jurisdiction, and DENIES the Plaintiff's Motion for Summary Judgment 142 of infringement. Signed by Chief Judge Theresa L Springmann on 1/16/2018. (lhc)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF INDIANA
FORT WAYNE DIVISION
AGRI-LABS HOLDING LLC,
Plaintiff,
v.
TAPLOGIC, LLC,
Defendant.

)
)
)
)
)
)
)
)
)

CAUSE NO.: 1:15-CV-26-TLS

OPINION AND ORDER
This matter comes before the Court on Motions for Summary Judgment [ECF Nos. 129,
131] filed by Defendant Taplogic, LLC, and a Motion for Summary Judgment [ECF No. 142]
filed by Plaintiff Agri-Labs Holding LLC. The Defendant has moved for summary judgment on
non-infringement, invalidity, and lack of personal jurisdiction and venue. The Plaintiff has
moved for summary judgment on infringement. These Motions are now fully briefed and ripe for
review.

BACKGROUND
On January 22, 2015, the Plaintiff filed its Complaint [ECF No. 1] against the Defendant,
alleging that the Defendant infringed the Plaintiff’s U.S. Patent No. 8,286,857 (“the ’857
Patent”) regarding a “Soil Sample Tracking System and Method.” The Defendant answered on
February 17, 2015 [ECF No. 11], alleging numerous affirmative defenses and counterclaiming
for a declaratory judgment that it has not infringed the ’857 Patent and that the ’857 Patent is
invalid.

The ’857 Patent involves a method and system directed to soil sampling to determine
nutrient levels across various areas in fields. After samples were collected, they could then be
tested to determine any nutritional deficiencies. The test results would be transferred to a
fertilizer applicator, which would adjust the flow of nutrients according to recorded geographic
positions. Previously, a farmer who wanted to evaluate the nutritional needs of soil would collect
soil samples from various places and mark the containers into which the samples were placed
with individual identifiers to memorialize the precise geographic position from which each
sample was collected. Handwritten identifiers and pre-printed labels were two common methods
for marking sample containers. However, both of these methods were time-consuming and prone
to errors. Technicians could misread handwritten identifiers in a lab. They could also incorrectly
enter the information on the pre-printed labels into a computer. The ’857 Patent purported to
solve these issues.
There are two independent claims at issue. Independent Claim 1 recites:
A method comprising: generating a plurality of soil sample containers each having
a unique identifier associated therewith; manually pulling at least one soil sample
from a field and placing said at least one soil sample in a respective one of said
plurality of soil sample containers; scanning said unique identifier associated with
said soil sample container containing said at least one soil sample with a handheld
remote terminal, wherein said handheld remote terminal includes a handheld
remote terminal sampling application, wherein said handheld remote terminal
sampling application is configured to allow a sample taker to enter a farm/client
name and a field identifier, and wherein said handheld remote terminal sampling
application includes a handheld scanning application configured to allow said
sample taker to scan said unique identifier with a scanner on said handheld remote
terminal; obtaining a geographic coordinate reading associated with a location in
said field from where said soil sample is obtained; and associating said soil sample
with said unique identifier and said geographic coordinate reading.
Independent Claim 13 recites:
A system, comprising: a plurality of containers each containing a unique identifier;
a handheld remote terminal including a device operable to read said unique
identifiers and geographic position sensor, wherein a plurality of soil samples are
2

manually taken from a field and as each said soil sample is placed in said container
said handheld remote terminal includes an application operable to read said unique
identifier and associate said unique identifier and thus said container with said soil
sample, wherein said handheld remote terminal is operable to automatically use
said geographic position sensor to obtain a position reading in said field and further
associate said soil sample with said geographic position, wherein said unique
identifier and said geographic position are stored in a database; a second application
on said handheld remote terminal operable to sync the contents of said database to
a lab device, wherein said lab device is operable to read said unique identifier upon
receipt of said containers; a test instrument operable to test said soil samples and
generate one or more test results as a function of said soil sample, wherein said test
results are uploaded to said unique identifier.
The product accused of violating the claimed method and system is called the AgPhD
Soil Test application (“the AgPhD App”), developed by the Defendant for use with smartphones.
The Plaintiff accuses the Defendant of infringement because when the end-users of the AgPhD
App use the smartphone app for its intended purpose, the Plaintiff asserts that both the method
and system claims of the ’857 Patent are infringed. The Plaintiff argues that the Defendant is
liable for this infringement because all of the relevant steps of the method and all of the
components of the system are attributable to the Defendant. The Plaintiff asserts that the
Defendant is liable both for direct and indirect infringement.

JURISDICTION AND VENUE
First, the Court will address the Defendant’s arguments regarding personal jurisdiction
and improper venue. As to jurisdiction, the Plaintiff argues that the Defendant waived its right to
challenge personal jurisdiction when it appeared, answered, and asserted counterclaims against
the Plaintiff. The Court agrees. “[B]y asking the court for relief, [the Defendant] consented to
jurisdiction in the same way a plaintiff consents to jurisdiction by filing an action with a court.”
Mallard v. Mallard, No. 90 C 3335, 1992 WL 47998, at *5 (N.D. Ill. Mar. 4, 1992) (citing Adam
v. Saenger, 303 U.S. 59 (1938)). “[E]ven when a valid personal jurisdiction defense exists, the
3

defense is waived if the objecting party . . . proceeds to litigate the case on its merits.”
Blockowicz v. Williams, 630 F.3d 563, 566 (7th Cir. 2010) (internal citation omitted); see also
Continental Bank, N.A. v. Meyer, 10 F.3d 1293, 1296–97 (7th Cir. 1993) (finding that despite
raising the defense in its answer, the defendant consented to the court’s jurisdiction by failing to
argue the point until summary judgment). In this case, the Defendant affirmatively requested
declaratory relief, litigated this case on the merits for nearly three years, and only now, at
summary judgment, argues the point. Therefore, the Defendant has waived this defense, and the
Court has personal jurisdiction over the Defendant.
Venue in patent actions is governed exclusively by 28 U.S.C. § 1400(b), which provides:
“Any civil action for patent infringement may be brought in the judicial district where the
defendant resides, or where the defendant has committed acts of infringement and has a regular
and established place of business.” In TC Heartland LLC v. Kraft Foods Group Brands LLC, the
Supreme Court affirmed that the “residence” of a domestic corporation for the purposes of
§ 1400(b) is where the corporation is incorporated. 137 S. Ct. 1514, 1515 (2017). Thus, the
Defendant argues, in this case, venue is improper because the Defendant resides in Kentucky and
has no “regular and established” place of business in Indiana. The Defendant also argues that it
has not waived its right to challenge venue because of this recent change in controlling law.
Resolving a split among the district courts, the Federal Circuit recently held that venue
challenges based on TC Heartland were not previously available to defendants under the
meaning of Rule 12(g)(2) and, thus, were not waived under Rule 12(h)(1)(A). In re Micron
Tech., Inc., 875 F.3d 1091, 1099–1100 (Fed. Cir. 2017). However, the Federal Circuit also noted
that “Rule 12(h)(1) is not the sole basis on which a district court might, in various circumstances,
rule that a defendant can no longer present a venue defense that might have succeeded on the

4

merits.” Id. at 1100. Rather, “Congress has provided express statutory confirmation of judicial
authority to consider the timeliness and adequacy of a venue objection.” Id. Under 28 U.S.C.
§ 1406(b), “[n]othing in this chapter shall impair the jurisdiction of a district court in any matter
involving a party who does not interpose timely and sufficient objection to the venue.” Thus, the
Federal Circuit found it “clear that, apart from Rule 12(g)(2) and (h)(1)(A), district courts have
authority to find forfeiture of a venue objection.” Id.
However, the Federal Circuit has not “provided a precedential answer to the question of
whether the timeliness determination may take account of factors other than the sheer time from
when the defense becomes available to when it is asserted, including factors such as how near is
the trial, which may implicate efficiency or other interest of the judicial system and of other
participants in the case.” Id. at 1102. Rather, the Federal Circuit explicitly declined to “explore
the contours of timeliness outside Rule 12(g)(2) and (h)(1)(A) or how to assess what constitutes
consent to venue or what if any other considerations could justify a finding of forfeiture even
when the defendant has not waived its objection under Rule 12(g)(2) and (h)(1)(A).” Id. The
Federal Circuit reiterated that the Federal Rules of Civil Procedure “are not all encompassing”
and that there are “standard procedural devices trial courts around the country use every day in
service of Rule 1’s paramount command: the just, speedy, and inexpensive resolution of
disputes.” Id. at 1100 (quoting Dietz v. Bouldin, Inc., 136 S. Ct. 1885, 1891 (2016)). “[A] district
court possesses inherent powers that are ‘governed not by rule or statute but by the control
necessarily vested in courts to manage their own affairs so as to achieve the orderly and
expeditious disposition of cases’” Id. (quoting Link v. Wabash R. Co., 370 U.S. 626, 630–31
(1962)). However, the Court’s “exercise of an inherent power must be a ‘reasonable response to

5

the problems and needs’ confronting the court’s fair administration of justice.” Id. (quoting
Degen v. United States, 517 U.S. 820, 823–24 (1996)).
Per In re Micron, the Defendant has not waived its objection to venue based on Rules
12(g)(2) and (h)(1)(A). Nevertheless, the Court finds that the Defendant’s objection is not timely
given the circumstances of the case. The district courts that have had the opportunity to consider
whether to deny a motion to dismiss for improper venue on grounds other than under Rules
12(g)(2) and (h)(1)(A) have taken into account impending trial dates, see Treehouse Avatar LLC
v. Valve Corp., No. 15-427, 2017 WL 5564153, at *3 (D. Del. Nov. 20, 2017) (granting motion
where trial date not set until 2019), and other considerations such as the defendant’s litigation
conduct post TC Heartland, judicial resources already expended, and prejudice to the plaintiff in
“reopening a dormant venue dispute,” see Intellectual Ventures II LLC v. FedEx Corp., NO.
2:16-CV-980, 2017 WL 5630023, at *3 (E.D. Tex. Nov. 22, 2017) (denying motion where the
Defendant waited more than two months after TC Heartland was decided to seek dismissal and
had “continued actively litigating this case”).
In the instant case, the Defendant admittedly raised its objection to venue only a month
after the Supreme Court’s decision in TC Heartland. However, granting the Defendant’s motion
at this late stage in the case would not promote the just, speedy, and inexpensive resolution of the
dispute. This case has been pending for nearly three years. The Defendant’s venue objection was
filed concurrently with its Motions for Summary Judgment, 1 and significant judicial resources

1

The Defendant’s Motions were filed over four months before the dispositive motion deadline and as part of its
Summary Judgment Motions, not as a separate motion as required by the local rules. See N.D. Ind. L.R. 7-1(a). The
Court finds this continued, active litigation relevant to the Court’s determination that the Defendant’s Motion is not
timely.

6

have already been expended. Thus, the Court finds that under the circumstances of this case, and
Rules 12(g)(2) and (h)(1)(A) notwithstanding, the Defendant’s motion is not timely.
Accordingly, the Court will not dismiss this action based on a lack of personal
jurisdiction or improper venue.

STANDARD OF REVIEW
Summary judgment is proper where the evidence of record shows that there is no genuine
issue of material fact and that the moving party is entitled to judgment as a matter of law.
Celotex Corp. v. Catrett, 477 U.S. 317, 322–23 (1986). The moving party bears the initial burden
of informing the Court of the basis for its motion and identifying those portions of the record it
believes demonstrate the absence of a genuine issue of material fact. Id. at 323. The burden then
shifts to the non-movant to “go beyond the pleadings” to cite evidence of a genuine factual
dispute that precludes summary judgment. Id. at 324. “[A] court has one task and one task only:
to decide, based on the evidence of record, whether there is any material dispute of fact that
requires a trial.” Waldridge v. Am. Heochst Corp., 24 F.3d 918, 920 (7th Cir. 1994). If the nonmovant does not come forward with evidence that would reasonably permit the finder of fact to
find in its favor on a material issue, then the Court must enter summary judgment against it. Id.

ANALYSIS
A.

Whether the ’857 Patent is Directed to a Patent-Ineligible Concept
The Defendant argues that the ’857 Patent is directed to an abstract idea, which is

ineligible for patent protection under 35 U.S.C. § 101. Whether a patent is invalid under § 101 is

7

a question of law. CyberSource Corp. v. Retail Decision, Inc., 654 F.3d 1366, 1369 (Fed. Cir.
2011); In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008) (en banc).
In evaluating whether a patent is directed to ineligible subject matter under § 101, the
Court “must distinguish patents that claim the building blocks of human ingenuity, which are
ineligible for patent protection, from those that integrate the building blocks into something more
thereby transforming them into a patent-eligible invention.” Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347, 2350 (2014) (internal quotation marks omitted) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297 (2012)). This requires a
two-step analysis. The Court must (1) “determine whether the claims at issue are directed to a
patent-ineligible concept”; and (2) ask “whether the claim’s elements, considered both
individually and as an ordered combination, transform the nature of the claim into a patenteligible application.” Id. at 2357 (internal citations omitted).
“[A]n invention is not rendered ineligible for patent simply because it involves an
abstract concept.” Id. at 2347. Rather, “all inventions . . . embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.” Id. at 2354 (quoting Mayo
Collaborative Servs., 132 S. Ct. at 1293). Thus, application of abstract concepts “to a new and
useful end” are still patent eligible. Alice, 134 S. Ct. at 2354 (quoting Gottschalk v. Benson, 409
U.S. 63, 67 (1973)). However, “‘[s]imply appending conventional steps, specified at a high level
of generality,’ to a method already ‘well known in the art’ is not ‘enough’ to supply the
‘inventive concept’ needed to make this transformation.” Id. at 2350 (quoting Mayo
Collaborative Servs., 132 S. Ct. at 1294).
The Defendant argues that “soil sampling was well-known to be a way of assigning a
unique identifier to a soil sample, keeping a record of the unique identifier, assigning a location

8

to the unique identifier, adding additional information to the unique identifier like a farm or field
name, sending it to a lab, and receiving results as a function of the unique identifier.” (Def. Br.
5–5, ECF No. 26.) The Court agrees with the Defendant that soil sampling for the purpose of
evaluating the nutritional deficiencies in a field is an abstract idea. However, the Court does not
agree that a method for performing soil sampling is necessarily abstract.
Claims directed to a “new and useful technique” for performing a particular task are not
directed to an abstract idea. See Diamond v. Diehr, 450 U.S. 175 (1981) (method for calculating
optimal cure time for rubber); Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir.
2017) (“new and useful techniques for using sensors to more efficiently track an object on a
moving Platform”); Rapid Litig. Mgmt. Ltd. v. Ce!zDirect, Inc., 827 F.3d 1042 (Fed. Cir. 2016)
(“new and useful laboratory technique for preserving hepatocytes”). That is, technological
inventions that improve upon existing processes to come to the same result more efficiently or
more accurately are patent-eligible subject matter. See Diehr, 450 U.S. at 184 n.7. In Alice, the
Supreme Court reiterated that the computer-implemented process for curing rubber in Diehr was
patent eligible, not because it merely “involved a computer,” but rather because “it improved an
existing technological process.” Alice, 134 S. Ct. at 2358 (noting that, even though the invention
in Diehr made use of a well-known mathematical equation, the invention accomplished
something “the industry had not been able to obtain”). In DDR Holdings, LLC v. Hotels.com,
L.P., the Federal Circuit found that the claimed system “amount[ed] to an inventive concept for
resolving [a] particular Internet-centric problem.” 773 F.3d 1245, 1258–59 (Fed. Cir. 2014).
Similarly, in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, the Federal Circuit
noted that the invention at issue was “a technical way to satisfy an existing problem[,] . . . . a
technology-based solution (not an abstract-idea-based solution implemented with generic

9

technical components in a conventional way) to [achieve the desired result] that overcomes
existing problems with other [methods of achieving the desired result].” 827 F.3d 1341, 1351
(Fed. Cir. 2016).
The ’857 Patent is directed to a specific technique regarding soil sampling. It is the
technique that the ’857 Patent claims, not the overall concept of soil sampling to evaluate the
nutritional needs of a field. The ’857 Patent purports to solve issues associated with existing
techniques by coming to the end result more efficiently and accurately. Therefore, the Court does
not find that the ’857 Patent is directed to an abstract idea that is ineligible for patent protection.
But, even if the Court were to find that the ’857 Patent was directed to an abstract idea,
the Court would still have to proceed to the second step in the analysis, which is to determine
whether there is an “inventive concept.”
The cases to which the Defendant cites to support its argument that the ’857 Patent is
directed to an abstract concept with no inventive step are distinguishable. For example, in
FairWarning IP, LLC v. Latric Systems, Inc., the Federal Circuit found the subject matter to be
abstract because it “merely present[ed] the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for presentation.” 839
F.3d 1089, 1093 (Fed. Cir. 2016) (internal quotations omitted). In Electric Power Group, LLC v.
Alstom S.A., the Federal Circuit found the subject matter of the invention at issue to be abstract
where the claimed “advance” was “a process of gathering and analyzing information of a
specified content, then displaying the results” rather than “any particular assertedly inventive
technology for performing those functions.” 830 F.3d 1350, 1354 (Fed. Cir. 2016). The Federal
Circuit noted with approval the district court’s invocation of “an important common-sense
distinction between ends sought and particular means of achieving them, between desired results

10

(functions) and particular ways of achieving (performing) them.” Id. at 1356. That is because
“there is a critical difference between patenting a particular concrete solution to a problem and
attempting to patent the abstract idea of a solution to the problem in general.” Id. In Secured
Mail Solutions LLC v. Universal Wilde, Inc., the Federal Circuit invalidated a patent as abstract
because the patents were “not directed to specific details of the barcode or the equipment for
generating and processing it” and was “not limited to any particular technology of generating,
printing, or scanning a barcode, or sending a mail object, or of sending the recipient-specific
information over a network.” 873 F.3d 905, 910–11 (Fed. Cir. 2017). The Federal Circuit, and
the district court below, took issue with the fact that the patent failed to “cit[e] a specific way to
solve a specific problem . . . .” Id. at 912. The ’857 Patent, however, provides a specific way to
solve a specific problem. The ’857 Patent does not claim the ends sought, but rather claims the
means of achieving those ends.
Prior to the invention claimed in the ’857 Patent, several different techniques existed, and
still exist today, for soil sampling. One such technique involves the use of a computer to guide
the human sampler to a location in a field where, upon arrival, a sample would be obtained and
placed into a container. The sampler would then handwrite information on the container to
identify the container, such as a farm name, a field name, and a method of identification, like a
number. This method was time consuming and prone to errors caused by mislabeling or
misreading the information. Another technique involved pre-printing labels. In this technique, a
sampler would place a pre-printed label onto a container after obtaining the sample. This
technique was also time consuming and also vulnerable to errors such as misplacing labels. Both
techniques were also vulnerable to errors in the laboratory; the identifiers could be misread or
incorrectly entered into a computer. Others sought to solve these problem with complex

11

machinery that was expensive to purchase and to fix. The invention embodied in the ’857 Patent
improves the technological process of soil sampling and the manner in which soil sample
containers are tracked and associated with the geographic location in the field from where the
samples are obtained. The method and system claimed in the ’857 Patent therefore accomplish
something the industry had not previously been able to accomplish and resolve a particular
problem related to the collection of soil samples.
The Defendant also argues that the Plaintiff has done no more than add a generic
computer to a method conventionally known in the art. In Multimedia Plus, Inc. v. Playerlync,
LLC, the court noted that “[f]or a computer to ‘impose a meaningful limit on the scope of a
claim, it must play a significant part in permitting the claimed method to be performed, rather
than function solely as an obvious mechanism for permitting a solution to be achieved more
quickly, i.e., through the utilization of a computer for performing calculations.’” 198 F. Supp. 3d
264, 271 (S.D.N.Y. 2016) (finding that “the patent [did] not disclose any specialized
programming or other specific technology for accomplishing [the claimed] functions”) (quoting
SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010)). In Burnett v.
Panasonic Corp. of N.A., the court found that, where the computer in the patent was “used only
to complete the process of converting alphanumeric into natural numbers,” it was “‘merely as a
tool’ in the conversion process.” No. PX 17-00236, 2017 WL 4947013, at *6 (D. Md. Nov. 1,
2017). For the use of a computer to “salvage an otherwise patent-ineligible process, [it] must be
integral to the claimed invention, facilitating the process in a way that a person making
calculations or computations could not.” Bancorp Servs. L.L.C. v. Sun Life Assur. Co., 687 F.3d
1266, 1278 (Fed. Cir. 2012). The ’857 Patent does just that. The application on the smartphone is
integral to the claimed invention, and it permits the user to accomplish the process of soil

12

sampling in a way that a person making calculations or computations could not. See SiRF Tech.,
601 F.3d at 1332–33 (finding that “the presence of the GPS receiver in the claims places a
meaningful limit on the scope of the claims” because “the use of [the] GPS receiver [was]
essential to the operation of the claimed methods”). The ’857 Patent does not just employ
computer technology to achieve a normal function more quickly, such as performing a
calculation. The ’857 Patent instead puts specific limitations on what the smartphone must be
able to do, such as “scanning” a unique identifier, which is not an action “equivalent to those one
could take in the physical world.” Multimedia Plus, 198 F. Supp. 3d at 270.
The ’857 Patent also, contrary to the Defendant’s argument, is not simply a method of
classifying and organizing data that other courts have held to be abstract. See, e.g., SkillSurvey,
Inc. v. Checkster LLC, 178 F. Supp. 3d 247 (E.D. Pa. 2016). The method and system claimed in
the ’857 Patent is an improved technique that prevents errors associated with previous methods
of recording and using data. The simplicity and precision of the claimed method and system is
something the industry had not been able to obtain. Thus, the Court finds that the ’857 Patent
introduces an “inventive step” and, as a matter of law, is not invalid under 35 U.S.C. § 101.

B.

Whether the ’857 Patent is Obvious
The Defendant also argues that the ’857 Patent is invalid for obviousness. Patents are

entitled to a presumption of validity, and the party seeking to invalidate the patent must present
clear and convincing evidence to the contrary. 35 U.S.C. § 282; Microsoft Corp v. i4i Ltd.
P’ship, 564 U.S. 91, 95 (2011). Under 35 U.S.C. § 103, a patent is invalid 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

13

ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 406 (2007). This question lends itself to factual inquiries: “the scope and content of the
prior art”; “the differences between the prior art and the claims at issue”; “and the level of
ordinary skill in the pertinent art.” Graham v. John Deer Co. of Kan. City, 383 U.S. 1, 17 (1966).
It is “[a]gainst this background [that] the obviousness or nonobviousness of the subject matter is
determined.” Id. The Court may also consider secondary considerations such as “commercial
success, long felt but unsolved needs, failure of others, etc.” Id. In making a determination about
obviousness, courts may not “reach a conclusion of obviousness before considering all relevant
evidence, including evidence of objective considerations.” In re Cyclobenzaprine Hydrochloride
Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1077 (Fed. Cir. 2012). This is because
“objective considerations, when considered with the balance of the obviousness evidence in the
record, guard as a check against hindsight bias.” Id. at 1079. “[T]emptation to read into the prior
art the teachings of the invention in issue . . . is precisely why fact finders must withhold
judgment on an obviousness challenge until it considers all relevant evidence, including that
relating to the objective considerations.” Id.
A party seeking to invalidate a patent on obviousness grounds must “demonstrate by
clear and convincing evidence that a skilled artisan would have been motivated to combine the
teachings of the prior art references to achieve the claimed invention, and that the skilled artisan
would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva
Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009). “Often it will be necessary for a court to
look to interrelated teachings of multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background knowledge possessed by a person
having ordinary skill in the art, all in order to determine whether there was an apparent reason to

14

combine the known elements in the fashion claimed by the patent at issue. To facilitate review,
this analysis should be made explicit.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”)).
The Defendant’s argument that the ’857 Patent is invalid is almost exclusively contained
within a declaration 2 by Chris Tanner submitted with its supporting brief. 3 However, the
declaration is conclusory and does not meet the Defendant’s burden to demonstrate invalidity by
clear and convincing evidence. The declaration was authored by a patent attorney and constitutes
no more than attorney argument. Moreover, an expert’s opinion that is conclusory and factually
unsupported is not sufficient. See ActiveVideo Networks, Inc. v. Verizon Comm’ns, Inc., 694 F.3d
1312, 1327 (Fed. Cir. 2012).
The Defendant has presented little to no evidence regarding the scope and content of the
prior art or the level of ordinary skill in the art. See Motorola Mobility, LLC v. Int’l Trade
Comm’n, 224 F. Supp. 3d 851, 866 (Fed. Cir. 2013) (finding fault where party “did not clearly
2

The Court notes that, although this submission is characterized as an affidavit, it is rife with conclusory allegations,
legal argument (including interpretation of case law), speculation and statements not made based on personal
knowledge and would therefore likely be inadmissible as an affidavit. Under Rule 56(c)(4), any affidavit or
declaration “used to support or oppose a motion [for summary judgment] must be made on personal knowledge, set
out facts that would be admissible in evidence, and show that the affiant or declarant is competent to testify on the
matters stated.” On a motion for summary judgment, a court must disregard parts of an affidavit that fail to comply
with this rule. Cooper-Schut v. Visteon Auto. Sys., 361 F.3d 421, 429 (7th Cir. 2004); Friedel v. City of Madison,
832 F.2d 965, 970 (7th Cir. 1987). The following statements do not comply with the rule and should be disregarded:
“(1) conclusory allegations lacking supporting evidence; (2) legal argument; (3) self-serving statements without
factual support in the record; (4) inferences or opinions not grounded in observation or other first-hand experience;
and (5) mere speculation or conjecture.” Heltzel v. Dutchmen Mfg., Inc., No. 3:06-CV-227, 2007 WL 4556735, at *4
(N.D. Ind. Dec. 20, 2007) (quotation marks and citations omitted). The substance of the instant submission is more
characteristic of an expert report, and for the purposes of this summary judgment analysis, the Court will construe it
as such.

3

The Court notes that the declaration also asserts that the ’857 Patent is invalid under 35 U.S.C. § 102 as anticipated
and under § 112 as indefinite. However, the Defendant does not argue these theories in its brief, and the Court will
not consider them.

15

identify the scope and content of the prior art that it was asserting”); Stryker Spine v. Biedermann
Motech GmbH, 684 F. Supp. 2d 68, 98 (D.D.C. 2010) (finding fault where expert declaration
“did not explain what the level of ordinary skill in the art was”). The declaration does not
reference the level of ordinary skill in the art, much less establish that the author is a person of
ordinary skill in the art. Without information regarding the level of ordinary skill in the art, “a
district court cannot properly assess obviousness because the critical question is whether a
claimed invention would have been obvious at the time it was made to one with ordinary skill in
the art.” Custom Accessories, Inc. v. Jeffrey-Allan Indus., 807 F.2d 955, 962 (Fed. Cir. 1986).
Where a defendant has “failed to identify the level of ordinary skill in the art used to determine
obviousness or demonstrate that such level of ordinary skill is not in dispute,” the defendant’s
argument “fails at the starting gate.” Advanced Media Networks LLC v. Row 44, Inc., No. CV 1211018, 2014 WL 5623951, at *6 (C.D. Cal. Nov. 4, 2014).
Moreover, the declaration does not adequately identify pertinent prior art for the Court’s
review. The declaration provides a chart purporting to compare common elements between the
’857 Patent and other references, vaguely referring to references by the last name of the inventor
and the three terminal digits of the patent numbers. Nowhere in the declaration is there further
clarification as to what these references are, nor were they provided to the Court as part of the
summary judgment record. The declaration also vaguely states that “[o]ther valid Prior Art
references for supporting the invalidity of the Covely ’857 claims also exist, and are already of
record with this court” without pointing to where in the record they may be found. (Def. Br. Ex.
4 8, ECF No. 129-4.) It is not obvious to the Court where in the record theses references exist,
and the Court is under no obligation to “scour the party’s various submissions to piece together
appropriate arguments.” Little v. Cox’s Supermarkets, 71 F.3d 637, 641 (7th Cir. 1995).

16

Aside from not adequately identifying the prior art references to which it refers, the
declaration does not cite any specific reason to combine any prior art references. 4 An expert that
has “failed to explain how specific references could be combined, which combination(s) of
elements in specific references would yield a predictable result, or how any specific combination
would operate or read on the asserted claims” is insufficient. Id. Not only must the testimony
“bear[] [a] relation to [a] specific combination of prior art elements,” it must also “explain why a
person of ordinary skill in the art would have combined elements from specific reference in the
way the claimed invention does.” Id. (citing KSR, 550 U.S. at 418). “[I]t can be important to
identify a reason that would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 401. This is
so because inventions in most, if not all, instances “rely upon building blocks long since
uncovered, and claimed discoveries almost necessarily will be combinations of what, in some
sense, is already known.” Id.
The declaration states that “motivation to combine these various references would exist
due to almost all of them being in the area of agriculture and farming” and that “[b]ecause there
are so many valid references and so many different ways of combining them, any of which
would invalidate claim 1, a separate motivation statement for each combination will not be set
forth herein.” (Def. Br. Ex. 4 at 8.) The declaration goes on to state that “motivation to combine

4

The report also cites to an amendment to the ’857 Patent during its prosecution made to overcome a
prior art reference. The report concludes: “While the Examiner found this amendment acceptable, it is not
unreasonable to suggest these amendments would have been obvious to one of ordinary skill in the art.”
However, whether a conclusion is “not unreasonable” is not the question on summary judgment. On
summary judgment, it is the Defendant’s burden to prove that no reasonable juror could come to any other
conclusion. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Moreover, in this case, the
Defendant’s burden is to show obviousness by clear and convincing evidence, not by a preponderance of
the evidence. See Proctor & Gamble, 556 F.3d at 994.

17

[one prior art reference] with other references is unlikely to be in dispute, as [the prior art
reference] is in the field of soil samples, the exact same field as Covely ’857 . . . .” (Id. at 14.)
But, the Federal Circuit has rejected this line of reasoning to show motivation to combine prior
art references. See, e.g., Securus Techs., Inc. v. Global Tel*Link Corp., 701 F. App’x 971, 977
(Fed. Cir. 2017) (affirming finding that “broad characterization” of the prior art “as both falling
within the same field . . . without more, is not enough for [the appellant] to meet its burden of
presenting a sufficient rationale to support an obviousness conclusion”); Microsoft Corp. v.
Enfish, LLC, 662 F. App’x 981, 990 (Fed. Cir. 2016) (affirming finding that where the appellant
“gave no reason for the motivation of a person of ordinary skill to combine [the two references]
except that the references were directed to the same art or same techniques,” the petitioner “did
not articulate a sufficient motivation to combine”). “Such short-cut logic would lead to the
conclusion that any and all combinations of elements known in [the] field would automatically
be obvious, without the need for any further analysis.” 5 Securus Techs., 701 F. App’x at 977.
In its Reply brief, the Defendant for the first time submits prior art for the Court’s review
into the summary judgment record. The Defendant points to U.S. Patent No. 6,947,866 (“the
’866 Patent”), which claims an “Apparatus and Method For Handheld Sampling,” and argues
that the specification of the ’866 Patent states that the apparatus could be used with a
smartphone, providing the necessary motivation. Specifically, the ’866 Patent states: “In another
embodiment (not shown), the latest generation of hybrid cell phones may be used in place of
[personal data assistant] 30 and camera 20, as hybrid cell phones now include a built-in camera,
web browser, and full-fledged [personal data assistant] capabilities.” ’866 Patent, col. 5:9–12.
The Defendant then argues in a conclusory fashion that “all of the steps in claim 1 and most of

5

This would be far from the “explicit” analysis required by the Federal Circuit. See Proctor & Gamble, 566 F.3d at
994 (citing In re Kahn, 441 F.3d at 988)).

18

Claim 13” of the ’857 Patent are present in the ’866 Patent, notes that the ’866 Patent is in the
same field as the ’857 Patent, and reiterates that “almost any patents mentioned have a
motivation to combine as noted in” the Tanner declaration. (See Def. Rep. Br. 10, ECF No. 150.)
But, as discussed above, this is insufficient to meet the Defendant’s burden of proof to show
invalidity by clear and convincing evidence.
Finally, the Court notes that the Defendant has failed even to mention objective
considerations of nonobviousness. The Defendant attempts to justify this omission, arguing that
the Plaintiff “did not use them in their patent application and has no expert to discuss them so it
is not necessary for [the Defendant] to do so.” The Court disagrees with this assertion. First, it is
unclear why a patentee would be required to “use” secondary considerations in its patent
application. This is especially so with commercial success, a consideration explicitly laid out by
the Supreme Court in Graham, which would likely be unknown at the time of patent. Moreover,
the Federal Circuit has made clear that there is no “burden-shifting framework” by which the
Plaintiff must prove secondary considerations once the Defendant has made a prima facie
showing of obviousness based only on the prior art. In re Cylobenzaprine, 676 F.3d at 1079
(reversing where “it [was] clear that the district court assumed that it was [the plaintiff’s] burden
to disprove the court’s initial obviousness finding”). Thus, the absence of an expert to explain
these considerations is not fatal to the Court’s consideration of them. In fact, Federal Circuit
precedent does not support an argument that expert testimony is required to show objective
considerations. See id. (finding district court was “wrong to ignore the non-expert evidence
proffered on this point”). Without evaluating its weight, the Court notes that there is evidence of
record as least as to the commercial success of the AgPhD App. The Plaintiff’s failure to address

19

any objective indicia of non-obviousness in response to the Defendant’s arguments does not aid
the Defendant in meeting its burden to show obviousness by clear and convincing evidence.
Therefore, the Court will deny the Defendant’s Motion for Summary Judgment on
Invalidity.

C.

Whether the Accused Product Infringes the ’857 Patent
Patent infringement analysis involves two steps. First, the Court must determine the

scope and meaning of the claims of the patent. See Markman v. Westview Instrument, Inc., 517
U.S. 370, 388–89 (1996). The Court previously made this determination in its Markman Order
[ECF No. 144]. Second, the patent claims as construed by the Court must be compared to the
accused device or method to determine if infringement exists. See Warner-Jenkinson Co.. v.
Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997).
Both parties have moved on the issue of whether the accused AgPhD App infringes the
’857 Patent when used for its intended purpose. The Defendant first argues that it is the wrong
party to the lawsuit because it does not own the AgPhD App. In support, the Defendant states
that another company offers the AgPhD App on the App Store and Google Play, that the
Defendant has never offered the AgPhD App on the App Store and Google Play, and that the
Defendant does not own or control the website agphdsoiltest.com. However, the Defendant
admits that it developed the accused product, and the Plaintiff has produced other evidence from
which a reasonable juror could conclude that the Defendant is or was responsible for the sale and
maintenance of the accused product. Based on these facts, a jury could find liability for direct or
indirect infringement.

20

Aside from its argument that it does not own or control the AgPhD App, the Defendant
argues that it does not directly infringe the ’857 Patent because (1) the AgPhD App does not
meet all the limitations of any of the Claims, and (2) no single entity performs all of the steps in
the claimed method. The Defendant argues that it does not indirectly infringe because the
Plaintiff has come forward with no evidence of instances of direct infringement and because the
AgPhD App has substantial noninfringing uses.

1.

Direct Infringement
“Except as otherwise provided in this title, whoever without authority makes, uses, offers

to sell, or sells any patented invention . . . during the term of the patent therefor, infringes the
patent.” 35 U.S.C. § 271(a). Because § 271(a) is worded disjunctively, a party infringes a patent
if it makes or develops an infringing product even if it never uses or sells that product. An
accused product or process can infringe a patent either literally or through the “doctrine of
equivalents.” Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016). “To
establish literal infringement, every limitation set forth in a claim must be found in an accused
product, exactly.” Id. (quoting Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575
(Fed. Cir. 1995)). In this case, to prove direct infringement under § 271(a), the Plaintiff must
demonstrate that the Defendant performed or used each and every step or element of the claimed
method. Warner-Jenkinson, 520 U.S. at 29.
The doctrine of equivalents is available to a party when it cannot prove that every
limitation of the disputed claim is literally met. Under the doctrine of equivalents, “a product or
process that does not literally infringe upon the express terms of a patent claim may nonetheless
be found to infringe if there is ‘equivalence’ between the elements of the accused product or

21

process and the claimed elements of the patented invention.” Id. 21. “The doctrine of equivalents
prevents an accused infringer from avoiding infringement by changing only minor or
insubstantial details of a claimed invention while retaining their essential functionality.” Sage
Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1424 (Fed. Cir. 1997). The doctrine of
equivalents will apply where the accused product and the claimed product “do the same work in
substantially the same way, and accomplish substantially the same result.” Graver Tank & Mfg.
Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950) (internal quotations omitted).
For a method claim, “[d]irect infringement under § 271(a) occurs where all steps of a
claimed method are performed by or attributable to a single entity.” Akamai Techs., Inc. v.
Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015). The Court must first determine
whether, as to the method claims, there is a genuine issue of material fact that all of the steps of
the claimed method are, in fact, performed and, whether as to the system claims, there is a
genuine issue of material fact that all of the components of the claimed system are present when
the end-user of the AgPhD App uses the app for its intended purpose. The Court must then
determine whether the performance of each step or the use of each component can be attributed
to the same entity.

a.

Method Claims

1.

Independent Claim 1
Independent Claim 1 consists of eight steps, all of which the Plaintiff has the burden to

demonstrate are performed during the use of the AgPhD App. The first step requires “generating
a plurality of soil sample containers each having a unique identifier associated therewith.” In its
Markman Order, the Court construed the term “generate” to mean “deliver or produce.” The

22

Court construed the term “unique identifier” to mean “a machine readable representation of data,
which may but need not consist of a bar code, relating to the object to which it is attached.” At
some point, users of the AgPhD App could order soil sample bags, containing QR codes from
Midwest Laboratories through the agphdsoiltest.com website. The Defendant argues that this
limitation is not met because there is no evidence that a QR code is a “unique identifier.”
However, the instructions provided with the AgPhD Soil Test App instruct the end-user to
“[s]can the QR code on the bag . . . to identify the sample location.” From this a reasonable trier
of fact could conclude that the QR code is a representation of data that is machine readable that
relates to the object to which it is attached. See Tinnus Enter., LLC v. Telebrands Corp., 846 F.3d
1190, 1204 (Fed. Cir. 2017) (“Indeed, this court has previously approved of the use of instruction
manuals to demonstrate direct infringement by customers . . . . We are aware of no case law
prohibiting a court from relying on product instructions to find direct infringement”).
The second step requires “manually pulling at least one soil sample from a field and
placing said at least one soil sample in a respective one of said plurality of soil sample
containers.” There are multiple ways to pull a soil sample, both manual and mechanical. A
reasonable trier of fact could find that the instructions provided with the AgPhD Soil Test App
instruct the end-user to manually pull soil samples.
The third step consists of “scanning said unique identifier associated with said soil
sample container containing said at least one soil sample with a handheld remote terminal.” In its
Markman Order, the Court construed “handheld remote terminal” to mean a “smartphone.” The
Court construed the term “scan” to mean “to convert into digital form for processing” and
“scanner” to mean “a device that converts information into digital form for processing.” The
Defendant argues that the AgPhD App merely takes images and that taking an image with a

23

smartphone is not “scanning” under the Court’s definition. But, a reasonable trier of fact could
determine that the purpose of “taking a photo” of the QR code is to identify the sample and that
using a digital image for identification necessary requires the QR code to be “convert[ed] into
digital form for processing.” Even if this claim limitation is not met literally, a reasonable trier of
fact could find that it is met under the doctrine of equivalents.
The fourth step requires that the “handheld remote terminal includes a handheld remote
terminal sampling application.” The AgPhD App is an application that is downloaded and
installed onto smartphones for the purpose of aiding in soil sampling.
The fifth step requires that the “handheld remote terminal sampling application is
configured to allow a sample taker to enter a farm/client name and a field identifier.” The
Defendant argues that the AgPhD App does not meet this limitation because the end-user can
also enter the client/farm name on a tablet or a personal computer and choose to enter it via the
website rather than the app. But, the ’857 Patent does not require that the end-user’s only option
to enter the farm/client name and a field identifier be via a smartphone. See, e.g., Vulcan Eng’g
Co. v. Fata Aluminium, Inc., 278 F.3d 1366, 1375 (Fed. Cir. 2002) (“It is irrelevant whether an
element has capabilities in addition to that stated in the claim.”); N. Telecom, Inc. v. Datapoint
Corp., 908 F.2d 931, 945 (Fed. Cir. 1990) (finding that a party cannot avoid infringement where
“a claimed feature performs not only as shown in the patent, but also performs an additional
function”); iRadio Steel & Mfg. Co. v. MTD Prods., Inc., 731 F.2d 840, 848 (Fed. Cir. 1984)
(“[A]n accused device cannot escape infringement by merely adding features, if it otherwise has
adopted the basic features of the patent.”) (internal quotations omitted). The Federal Circuit
“ha[s] never required that a claim read on the entirety of an accused device in order to infringe.”
SunTiger, Inc. v. Sci. Research Funding Grp., 189 F.3d 1327, 1336 (Fed. Cir. 1999).

24

The sixth step requires that the “handheld remote terminal sampling application includes
a handheld scanning application configured to allow said sample taker to scan said unique
identifier with a scanner on said handheld remote terminal.” In its Markman Order, the Court
defined “application” as “a piece of software that performs one or more functions.” The
Defendant argues that the AgPhD App does not meet this limitation because it is only one piece
of software, and there is no separate scanner. The Defendant also argues that the QR code is not
a unique identifier but that the QR code is used only to generate the unique identifier within the
AgPhD App. As the Court noted above, a reasonable trier of fact could find that taking an image
of a QR code in order to generate a number falls under the Court’s definition of scanning, i.e.,
“to convert into digital form for processing.”
The Defendant’s assertion that the claims require a separate piece of software for the
scanning function is unpersuasive. “It is settled law, and it is good sense, that one does not
escape infringement by combining into one element what a claim specifies as two, provided that
the single element performs the function of both in the same way.” Gibbs v. Triumph Trap Co.,
26 F.2d 312, 314 (2d Cir. 1928). Given the Court’s construction of “application” to mean “a
piece of software that performs one or more functions,” a reasonable trier of fact could find that a
single application can perform both steps required by Claim 1 and, therefore, that this limitation
is met.
The seventh step requires “obtaining a geographic coordinate reading associated with a
location in said field from where said soil sample is obtained.” The Defendant argues that the
AgPhD App does not meet this limitation because the end-user can obtain a geographic reading
from anywhere, not just a location in a field, such as a golf course or a yard. But, again, nothing

25

in the ’857 Patent requires that the application permit geographic readings only in a field, and
extra capabilities do not automatically make the app non-infringing.
The final step is “associating said soil sample with said unique identifier and said
geographic coordinate reading.” Although the Defendant insists the app does not have to, it
admits that the AgPhD App can associate a unique identifier with a geographic coordinate
reading.
Accordingly, there remain genuine issues of material fact as to whether, in the course of
using the AgPhD App for its intended purpose, all of the steps of the method of Claim 1 are
performed.

2.

Dependent Claims 2–5
Dependent Claim 2 adds the limitation: “wherein said unique identifier comprises a

barcode.” At least at some point, the soil sampling bags delivered by Midwest Laboratories
contained QR codes, and the Plaintiff claims that it is a well-known fact that QR codes are a type
of bar code. The Defendant argues that the only evidence that the Plaintiff has offered to satisfy
its burden of proof is a Wikipedia article, which is not typically admissible evidence. The
Defendant also argues that the Plaintiff cannot meet its burden of proof on this Claim without
expert testimony, which it does not have. The Court agrees. QR codes and their relationship to
bar codes is not something that is within the common and ordinary experience of a lay juror. The
Plaintiff has disclosed no experts in this case and has proffered no other admissible evidence.
Without expert testimony, the Plaintiff cannot meet its burden of proof at trial to show that the
bags delivered by Midwest Laboratories for use with the AgPhD App meet this limitation.

26

Claim 3 requires: “The method of claim 1, further comprising storing said unique
identifier and said geographic coordinate reading in a database associated with said handheld
remote terminal.” The Defendant argues that the Plaintiff needs expert testimony to establish this
limitation, which it does not have. The Court agrees. Although “database” as used in the ’857
Patent may be commonly understood by a person of ordinary skill in the art, it is not commonly
understood by a lay juror. The Plaintiff argues that there must be a database associated with the
smartphone because Claim 4, which depends from Claim 3, requires syncing said database with a
server, and the Defendant admits that the AgPhD App syncs data located on the App itself to a
server and that once the data is transferred to the server, it is stored on a database. However, the
deposition testimony on which the Plaintiff relies for this admission indicates only that
information is stored in a database associated with a server, not with the handheld remote
terminal as claimed. Moreover, the Court does not find that “syncing” is a term commonly
understood by a lay juror. Thus, the Plaintiff lacks expert testimony to explain, for example, how
a database works, how a database is “associated” with any given device, or whether two
databases are, in fact, required for syncing to occur. Thus, without expert testimony, the Plaintiff
cannot met its burden to show that the “database” limitation is met.
Claim 4 requires: “The method of claim 3 further comprising syncing said database
associated with said handheld remote terminal with a server.” Because this claim depends from
Claim 3, and the Plaintiff has not met its burden of proof to show that all of the limitations of
Claim 3 are met, the Plaintiff necessarily cannot meet its burden of proof to show that Claim 4 is
infringed.
It is not clear whether the remaining Claims depending from Claim 1 are still at issue. In
its final infringement contentions, the Plaintiff has also asserted infringement of Dependent

27

Claim 5, whereas the Defendant, in its final non-infringement contentions includes arguments
regarding Dependent Claims 5–12. Neither party argued the merits of these Claims in their
briefing. However, each of Dependent Claims 5–12 require the “database” limitation from Claim
3, and therefore, the Plaintiff cannot satisfy its burden of proof to show infringement as to any of
these Claims.
Accordingly, the Court will grant summary judgment of non-infringement as to
Dependent Claims 2–12.

b.

System Claims
The Plaintiff has the burden to prove that when end-users of the AgPhD App use the app

for its intended purpose, all of the components of the claimed system are present. One of the
limitations in Independent Claim 13 requires that “said unique identifier and said geographic
position are stored in a database,” where an application is “operable to sync the contents of said
database to a lab device.” However, the Plaintiff’s argument suffers from the same flaws as its
argument regarding Dependent Claim 3. As the Court noted above, “database” is not commonly
understood by the lay juror, and the Plaintiff has no expert witness or other admissible evidence
that this limitation is met. Therefore, the Plaintiff cannot meet its burden of proof to show
infringement of Claim 13. Nor, therefore, can the Plaintiff meet its burden of proof as to any of
the Claims depending from Claim 13.

c.

Acts Attributable to Same Entity
“Where more than one actor is involved in practicing the steps, a court must determine

whether the acts of one are attributable to the other such that a single entity is responsible for the

28

infringement.” Akamai Techs., 797 F.3d at 1022; see also Eli Lilly and Co. v. Teva Parenteral
Meds., Inc., 845 F.3d 1357, 1364 (Fed. Cir. 2017). An entity is “responsible for others’
performance of method steps in two sets of circumstances: (1) where that entity directs or
controls others’ performance, and (2) where the actors form a joint enterprise.” Akamai Techs.,
797 F.3d at 1022. Whether a single entity “directed or controlled the acts of one or more third
parties is a question of fact” for the jury. Id. “[L]iability under § 271(a) can also be found when
an alleged infringer conditions participation in an activity or receipt of a benefit upon
performance of a step or steps of a patented method and establishes the manner or timing of that
performance.” Id. at 1023.
“Alternatively, where two or more actors form a joint enterprise, all can be charged with
the acts of the other, rendering each liable for the steps performed by the other as if each is a
single actor.” Id. To show the existence of a joint enterprise, a party must show “(1) an
agreement, express or implied, among the members of the group; (2) a common purpose to be
carried out by the group; (3) a community or pecuniary interest in that purpose, among the
members; and (4) an equal right to a voice in the direction of the enterprise, which gives an equal
right of control.” Id. Whether a joint enterprise exists is a question of fact for the jury. Id.
There is no genuine dispute that the Defendant itself does not perform all of the steps in
the claimed method. There is no evidence of record that the Defendant exercises the kind of
direction or control over the end-users of the AgPhD App that would establish vicarious liability.
Nor is there evidence of record that the Defendant entered into joint enterprises with any enduser of the AgPhD App. Thus, even if some acts of direct infringement occurred, there is no
evidence that each of the steps of the method are attributable to the Defendant. The Federal
Circuit has held that “a party that sells an apparatus capable of performing a patented method is

29

generally not liable for direct infringement if that infringing act comes to pass. Instead, the direct
infringer would be the party who put that apparatus to use to perform the patented method.”
Koninklijke Philips N.V. v. Zoll Med. Corp., 656 F. App’x 504, 521 (Fed. Cir. 2016); see also
Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1221 (Fed. Cir. 2014) (finding that the jury did
not have substantial evidence to find direct infringement even though it had substantial evidence
to find indirect infringement). Accordingly, the Court will grant summary judgment of no direct
infringement of the ’857 Patent.
However, the Court finds that completion of all the steps involving the AgPhD App can
be attributed to the end-user. The end-users first order soil sample containers, which, via the
agphdsoiltest.com website, they can buy from Midwest Laboratories. “Contracting” out the
generation of the containers does not shield the end-user from liability. See Marley Mouldings,
Ltd. v. Mikron Indus., Inc., No. 02 C 2855, 2003 WL 1989640, at *2–3 (N.D. Ill. Apr. 30, 2003)
(holding that “[a] party cannot avoid direct infringement merely by having another entity
perform one or more of the required steps when that party is connected with the entity
performing one or more of the required steps”). The end-users of the AgPhD App contract with
one or more entities, such as Midwest Laboratories, to purchase soil sample containers and to
test the samples once they have been collected. Therefore, a reasonable trier of fact could
conclude that the end-users of the AgPhD App directly infringed the ’857 Patent, and, therefore,
the Defendant may be liable for indirect infringement.

2.

Indirect Infringement
Even if the Defendant did not directly infringe the ’857 Patent, it may still be liable for

indirectly causing third parties to infringe the ’857 Patent. Under 35 U.S.C. § 271(b), “[w]hoever

30

actively induces infringement of a patent shall be liable as an infringer.” Under 35 U.S.C.
§ 271(c):
Whoever offers to sell or sells within the United States . . . a component of a
patented machine, manufacture, combination or composition, or a material or
apparatus for use in practicing a patented process, constituting a material part of the
invention, knowing the same to be especially made or especially adapted for use in
an infringement of such patent, and not a staple article or commodity of commerce
suitable for substantial noninfringing use, shall be liable as a contributory infringer.
The Defendant primarily argues that the Plaintiff has no evidence of direct infringement
by any person or entity, and, absent direct infringement, there can be no indirect infringement.
The Defendant also argues that it is not liable for contributory infringement because the AgPhD
App has substantial non-infringing uses and that it is not liable for inducement because it did not
have the specific intent to induce infringement.
“Liability for either active inducement of infringement or for contributory infringement is
dependent upon the existence of direct infringement.” Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770,
774 (Fed. Cir. 1993). The Defendant points out that the Plaintiff has not come forward with any
evidence of specific instances of direct infringement. And, hypotheticals that acts of direct
infringement could possibly have occurred are generally not sufficient. See Dynacore Holdings
Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1274–76 (Fed. Cir. 2004). However, “[i]t is
hornbook law that direct evidence of a fact is not necessary. Circumstantial evidence is not only
sufficient, but may also be more certain, satisfying and persuasive than direct evidence.”
Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1364–65 (Fed. Cir. 2004)
(internal quotation omitted) (finding circumstantial evidence sufficient to support jury
determination of direct infringement).
In Koninklijke, the Federal Circuit overturned a jury verdict of no contributory
infringement that was based on a finding that the Plaintiff “failed to prove that any of [the
31

defendant’s] customers actually performed [the] direct infringement.” 656 F. App’x at 522. The
Federal Circuit reasoned that, due to the defendant’s market share, a reasonable juror could not
“conclude that not a single one of [the defendant’s] customers in this sizable share of the market
used the devices for their intended purposes.” Id. The Federal Circuit has also rejected the
argument that a plaintiff “[can]not rely on the instruction sheets to prove acts of direct
infringement by end-users” where the “instruction sheets teach an infringing configuration.”
Golden Blount, Inc. v. Robert H. Peterson Co. 438 F.3d 1354, 1362–63 (Fed. Cir. 2006)
(affirming finding of induced and contributory infringement); see also Tinnus Enter., 846 F.3d at
1204 (“Indeed, this court has previously approved of the use of instruction manuals to
demonstrate direct infringement by customers in the context of induced infringement. . . . We are
aware of no case law prohibiting a court from relying on product instructions to find direct
infringement”); Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1365 (Fed. Cir. 2012) (“This is
not the first time we have concluded that where an alleged infringer designs a product for use in
an infringing way and instructs users to use the product in an infringing way, there is sufficient
evidence for a jury to find direct infringement.”); Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d
1301, 1318 (Fed. Cir. 2009) (finding sufficient evidence supported the jury’s verdict of direct
infringement where the defendant “not only designed the accused products to practice the
claimed invention, but also instructed its customers to use the accused products in an infringing
way.”).
A reasonable juror could find that the instructions for the AgPhD App taught an
infringing use. Thus, the Court finds that a reasonable juror could not infer that “not a single
one” of the end-users of the AgPhD App directly infringed the ’857 Patent.

32

a.

Inducement
“Inducement requires a showing that the alleged inducer knew of the patent, knowingly

induced the infringing acts, and possessed a specific intent to encourage another’s infringement
of the patent.” Vita-Mix Corp v. Basic Holding Inc., 581 F.3d 1317, 1328 (Fed. Cir. 2009).
“Especially where a product has a substantial non-infringing use intent to induce infringement
cannot be inferred even when the defendant has actual knowledge that some users of its product
may be infringing the patent.” Id. “The mere knowledge of possible infringement by others does
not amount to inducement; specific intent and action to induce infringement must be proven.”
Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 1352, 1364 (Fed. Cir. 2017).
However, “[e]vidence of active steps taken to encourage direct infringement, such as advertising
an infringing use or instructing how to engage in an infringing use, show an affirmative intent
that the product be used to infringe.” MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon
Corp., 420 F.3d 1369, 1379 (Fed. Cir. 2005). But, giving general instructions about how to use a
product is insufficient. As the Federal Circuit has stated:
The question is not just whether instructions “describ[e] the infringing mode,” but
whether the “instructions teach an infringing use of the device such that we are
willing to infer from those instructions an affirmative intent to infringe the patent.”
Merely “describ[ing],” an infringing mode is not the same as “recommend[ing],”
“encourag[ing],” or “promot[ing],” an infringing use, or suggesting that an
infringing use “should” be performed.
Takeda Pharm. U.S.A. Inc. v. West-Ward Pharm. Corp., 785 F.3d 625, 631 (Fed. Cir. 2015)
(internal citations omitted). But, where the instructions suggest or recommend the infringing use,
a jury may properly find the requisite “affirmative intent” to induce infringement. See, e.g., i4i
Ltd. P’ship, 598 F.3d at 851–52 (“The jury saw and heard about [the defendant’s] online training
and user support resources, which provided detailed instructions on using [the accused
technology].”). Not only could a jury find that the instructions taught an infringing use, a jury
33

could also give weight to the user support services that the Defendant provided to find
inducement.
The Defendant admits that it knew about the ’857 Patent at least as early as December
2014. It is of no matter whether the Plaintiff was the entity that actually sent the letter that
informed the Defendant of the existence of the ’857 Patent, nor does it matter that the Plaintiff
was not yet the assignee of the ’857 Patent at the time the letter was sent. For the purposes of
inducement,
[w]hat matters is not how the putative infringer learned of the patents . . . but simply
that the putative infringer has knowledge of the allegedly infringed patent and its
claims; it is this knowledge of the patent and its claims by a putative infringer—
however obtained—that is essential to a claim for indirect infringement.
Rembrandt Soc. Media, LP v. Facebook, Inc., 950 F. Supp. 2d 876, 882 (E.D. Va. 2013). Thus, if
the jury finds that the instructions for the AgPhD App teach an infringing use, the jury could also
find that the Defendant knew or should have known that such use would infringe, that the
Defendant intended to induce infringement, and that the Defendant therefore indirectly infringed
the ’857 Patent. Thus, the Court will not grant summary judgment as to the issue of induced
infringement.

b.

Contributory Infringement
Under 35 U.S.C. § 271(c), “whoever sells an apparatus for use in practicing a patented

method, knowing it to be ‘especially made or especially adapted for use in an infringement of
such patent, and not a staple article or commodity of commerce suitable for substantial noninfringe use, shall be liable as a contributory infringer.’” Vita-Mix., 581 F.3d at 1327 (quoting 35
U.S.C. § 271(c)). Liability stems from “the core notion that one who sells a component
especially designed for use in a patented invention may be liable as a contributory infringer,
34

provided that the component is not a staple article of commerce suitable for substantial
noninfringing use.” Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1337 (Fed. Cir. 2008).
“The drafters of [§ 271(c)] explicitly recognized that without protection from contributory
infringers, owners of method patents . . . would have no effective protection.” Hodosh v. Block
Drug Co., 833 F.2d 1575, 1579 (Fed. Cir. 1987).
“Non-infringing uses are substantial when they are not un-usual, far-fetched, illusory,
impractical, occasional, aberrant, or experimental.” Vita-Mix, 581 F.3d at 1327. “In assessing
whether a use is substantial, the fact-finder may consider ‘the use’s frequency . . . the use’s
practicality, the invention’s intended purpose, and the intended market.’” Toshiba Corp., 681
F.3d at 1362 (quoting i4i Ltd. P’ship, 598 F.3d at 851)). “Similarly, inefficient and uneconomical
uses are less likely to be deemed ‘substantial.’” Hoffmann-La Roche Inc. v. Promega Corp., No.
C-93-1748, 1994 WL 761241 (N.D. Cal. 1994). “Where the [accused] product is equally capable
of, and interchangeably capable of both infringing and substantial non-infringing uses, a claim
for contributory infringement does not lie.” In re Bill of Lading Transmission & Processing Sys.
Patent Litig., 681 F.3d 1323, 1338 (Fed Cir. 2012). “That practicing the patented method may be
the most logical or useful purpose for [the accused] products does not render the alternative uses
‘unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental.’” Id. But, “[i]t
does not follow . . . that the inclusion of a component with substantial noninfringing uses in a
product that contains other components useful only to infringe a process patent can or should
defeat liability for contributory infringement under § 271(c).” Ricoh, 550 F.3d at 1339–40
(vacating grant of summary judgment of non-infringement where, although the accused product
was capable of being used in both an infringing and non-infringing manner, the accused product
contained “at least some distinct and separate components used only to perform the allegedly

35

infringing . . . methods”). In fact, the Federal Circuit has “rejected the argument that an
otherwise infringing product may automatically escape liability merely because it contains a
noninfringing staple ingredient.” Id. at 1339 (citing Hodosh, 833 F.2d 1575) (emphasis in
original).
The Defendant argues that the AgPhD App has substantial non-infringing uses because
the end-user can choose to use the app in the same manner as the Defendant’s Soiltest Pro App—
a product that the Defendant characterizes as a non-infringing staple—including manually
recording identifying information. The Court finds that the AgPhD App could be used in a noninfringing manner by manually recording a unique identifier instead of scanning it. The Court
does not find such use to be “unusual, far-fetched, illusory, impractical, occasional, aberrant, or
experimental” as both the instructions and on-screen prompts within the app give the end-users
this option. Therefore, because the AgPhD App has a substantial non-infringing use, the
Defendant is not liable for contributory infringement under § 271(c).

CONCLUSION
For these reasons, the Court GRANTS IN PART and DENIES IN PART the Defendant’s
Motion for Summary Judgment [ECF No. 131] of non-infringement. The Court grants summary
judgment of non-infringement on all claims except Independent Claim 1. The Court also grants
summary judgment of no direct infringement of Claim 1 and no contributory infringement of
Claim 1. The Court DENIES the Defendant’s Motion for Summary Judgment [ECF No. 129] of
invalidity, DENIES the Defendant’s request to dismiss this case for improper venue and lack of
personal jurisdiction, and DENIES the Plaintiff’s Motion for Summary Judgment [ECF No. 142]
of infringement.

36

SO ORDERED on January 16, 2018.
s/ Theresa L. Springmann
CHIEF JUDGE THERESA L. SPRINGMANN
UNITED STATES DISTRICT COURT

37