Dean v. Powertech Marine Inc et al

Filing 56

MEMORANDUM RULING re 44 MOTION for Summary Judgment filed by Charles Steven Powers, Powertech Marine Inc. Signed by Judge S Maurice Hicks, Jr on 1/17/2023. (crt,Keifer, K)

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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF LOUISIANA
SHREVEPORT DIVISION
PETER DEAN

CIVIL ACTION NO. 19-1567

VERSUS

JUDGE S. MAURICE HICKS, JR.

POWERTECH MARINE, INC., ET AL.

MAGISTRATE JUDGE HORNSBY

MEMORANDUM RULING
Before the Court is a Motion for Summary Judgment (Record Document 44) filed
by Defendants, PowerTech Marine, Inc. (“PowerTech Marine”) and Charles Steven
Powers (“Powers”) (collectively “Defendants”). After the motion was filed, Plaintiff Peter
Dean (“Dean”) voluntarily dismissed all claims against Defendants. See Record
Document 51. This Court issued an Order dismissing Dean’s claims without prejudice,
but reserving Defendants’ counterclaims for resolution via the Court’s ruling on the
pending Motion for Summary Judgment. See Record Document 54. This Motion for
Summary Judgment is unopposed. For the reasons set forth below, the Motion for
Summary Judgment is GRANTED.
FACTUAL AND PROCEDURAL BACKGROUND
The present suit concerns a dispute over a patent for the design of a hub system
in a propeller. See Record Document 1 at 4. Dean originally filed suit in December 2019
against PowerTech Marine and Powers pursuant to the U.S. Patent Act “for Defendants’
willful and intentional infringement of Plaintiff’s intellectual property, specifically U.S.
Patent No. 7,233,073 B2 entitled ‘BOAT PROPELLER’” (“the ‘073 Patent”). See id. at 1.
Dean alleged that Defendants were currently infringing on claims one through twenty-one
of the ‘073 Patent, which describe Dean’s specific design for his propeller. See Record

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Document 38 at 3. After document disclosures and motion practice, as well as the
withdrawal of his attorney, Dean filed a voluntary motion to dismiss all claims against
Defendants. See Record Document 51. Thus, on July 18, 2022, this Court granted an
Order dismissing all claims against Defendants without prejudice. See Record Document
54.
In their Amended Answer, Defendants denied Dean’s allegations, asserted
defenses, and brought counterclaims against Dean. See Record Document 36.
Defendants’ counterclaims seek declaratory judgment pursuant to 28 U.S.C. §§ 2201 and
2202 and Federal Rule of Civil Procedure 57 for the following reasons: (1) Defendants’
hub system in their propeller design does not contain two key limitations contained within
the ‘073 Patent, and thus no infringement has occurred; and (2) if the Court finds the
limitations do exist in Defendants’ design, the ‘073 Patent is invalid and/or unenforceable
because Defendants’ propellers were offered for sale before the ‘073 Patent was filed.
See id. at 7. In its July 18, 2022 Order, this Court reserved resolution of Defendants’
counterclaims for the Court’s ruling on Defendants’ pending Motion for Summary
Judgment. See Record Document 54.
In their Motion for Summary Judgment, Defendants argue they are entitled to
judgment as a matter of law for the same reasons that Defendants seek declaratory relief
in their counterclaims—namely, noninfringement of the ‘073 Patent or, alternatively,
invalidity of the ‘073 Patent. See Record Document 44-1 at 1. Dean did not oppose the
motion.

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LAW AND ANALYSIS
A. Summary Judgment Standard
Summary judgment is proper pursuant to Rule 56 of the Federal Rules of Civil
Procedure when “there is no genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.” Quality Infusion Care, Inc. v. Health Care Serv.
Corp., 628 F.3d 725, 728 (5th Cir. 2010). “A genuine issue of material fact exists when
the evidence is such that a reasonable jury could return a verdict for the nonmoving party.”
Id. “Rule 56[(a)] mandates the entry of summary judgment, after adequate time for
discovery and upon motion, against a party who fails to make a showing sufficient to
establish the existence of an element essential to that party’s case, and on which that
party will bear the burden of proof at trial.” Patrick v. Ridge, 394 F.3d 311, 315 (5th Cir.
2004). If the movant demonstrates the absence of a genuine dispute of material fact, “the
nonmovant must go beyond the pleadings and designate specific facts showing that there
is a genuine issue for trial.” Gen. Universal Sys., Inc. v. Lee, 379 F.3d 131, 141 (5th Cir.
2004). Where critical evidence is so weak or tenuous on an essential fact that it could not
support a judgment in favor of the nonmovant, then summary judgment should be
granted. See Boudreaux v. Swift Transp. Co., 402 F.3d 536, 540 (5th Cir. 2005).
B. Analysis
a. Non-infringement
Defendants first argue that their PowerTech propellers do not infringe the asserted
claims because of two key limitations in the ‘073 Patent: (1) the “spaced from the inner
surface of the bore” limitation; and (2) the “longitudinally extending groove” limitation. See
Record Document 44-1 at 11. Under their proposed claim constructions, the Defendants

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argue that their propellers are lacking these two limitations and thus cannot infringe upon
Dean’s patent. See id.
The construction of a claim is an issue to be determined by the judge, not a jury.
See Markman v. Westview Instruments, Inc., 517 U.S. 370, 384, 116 S. Ct. 1384 (1996).
Further, such claim construction can occur “at virtually any point in the case: prior to
discovery, pursuant to motions for summary judgment, or following the close of evidence
at trial.” See CellCast Techs., LLC v. United States, 152 Fed. Cl. 414, 432 n.5 (Fed. Cl.
2021). When construing a patent claim, “[a] heavy presumption exists that claim terms
carry their full ordinary and customary meaning, unless [a party] can show the patentee
expressly relinquished claim scope.” Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321,
1334 (Fed. Cir. 2009). The “ordinary and customary meaning” is “the meaning that the
term would have to a person of ordinary skill in the art (POSA) when read in the context
of the entire patent.” FenF, LLC v. SmartThingz, Inc., 601 F. App'x 950, 952 (Fed. Cir.
2015).
Based on the unopposed assertions in the Motion for Summary Judgment, this
Court adopts Defendants’ claim constructions, explained below, for both the “spaced from
the inner surface of the bore” limitation and the “longitudinally extending groove”
limitation. The Court further agrees with Defendants’ uncontroverted argument that, under
these claim constructions, the PowerTech propellers lack the two key limitations that
could establish infringement of the ‘073 Patent. “To prove infringement, the patentee must
show that an accused product embodies all limitations of the claim either literally or by
the doctrine of equivalents.” Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1340
(Fed. Cir. 2013). “[T]he failure to meet a single limitation is sufficient to negate

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infringement of the claim.” Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir.
1991). Because the PowerTech propellers fail to meet two of the limitations contained in
the ‘073 Patent, Defendants are entitled to judgment as a matter of law as to their noninfringement of the ‘073 Patent.
i. The “spaced from the inner surface of the bore” limitation
The first limitation at issue is found in claims one and eighteen of the ‘073 Patent,
which state: “…such that the exterior surface of the central hub member is spaced from
the inner surface of the bore.” See Record Document 44-1 at 12 (emphasis added).
Defendants’ proposed construction of this term requires that “the entire exterior surface
of the central hub member is spaced from the inner surface of the bore.” See id.
Defendants argue that this understanding of the spacing in the hub design “is central to
the inventive concept disclosed in the ‘073 Patent.” See id. Notably, in the Background
section of the ‘073 Patent, the Patent “explains that the problem with prior art propellers
used with high horsepower motors—such as the accused propellers manufactured by
PowerTech—utilize a hard plastic or metal keyed piece to operatively engage the hub of
the propeller.” See id. at 12–13. Further, the Summary section of the Patent emphasizes
the importance of the “resilient spacer members” in the inner hub of the propeller that “are
designed to absorb impact forces from the propellor.” See id. at 13. Defendants assert
that “the resilient spacer members function to keep the central hub member from
physically touching the inner surface of the bore along the entire length of the central hub
member.” See id.
In contrast to Defendants’ construction requiring spacing along the entire length of
the bore, Dean’s construction only requires “a portion of the exterior surface of the central

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hub member [to be] spaced from the inner surface of the bore.” See id. at 12. This Court
agrees with Defendants that such a construction would render the limitation irrelevant to
the basis for the ‘073 Patent—namely, to reduce issues caused by impact between
interior and exterior surfaces in the hub. See id. at 14. As Defendants submit, Dean’s
“proposed construction is divorced from the ‘073 Patent’s own disclosure, as it would
allow for metal-on-metal contact at the central hub/propeller bore interface. The ‘073
Patent goes to great lengths to describe such metal-on-metal contact as being
undesirable since it can lead to harmonic vibration.” See id. Thus, to best conform to the
intent of the ‘073 Patent and the included claims, the Court adopts Defendants’
construction of the “inner surface of the bore” limitation, such that spacing must occur
along the entire length of the central hub.
Under this claim construction, Defendants’ propellers do not infringe the ‘073
Patent, as evidenced by the many photographs and documents attached to the Motion
for Summary Judgment. The PowerTech propeller at issue, depicted in Exhibits E-T to
the Complaint, “utilizes a central hub member that has machined ends which interface
with the inner surface of the propeller’s central bore to provide a means for maintaining
concentricity.” See id. at 18 (Ex. G, Decl. of Steve Powers). Because the Defendants’
propellers’ inner hub does not have a space extending along the length of the bore, the
designs are simply different. Notably, Dean did not oppose the arguments and evidence
set forth in the Motion for Summary Judgment and thus did not satisfy his burden to create
a genuine issue of material fact at the summary judgment stage as to this issue. See Gen.
Universal Sys., Inc. v. Lee, 379 F.3d at 141. Thus, because the evidence shows that

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Defendants’ propellers do not meet a limitation of the ‘073 Patent, they cannot infringe on
the Patent. Thus, Defendants are entitled to judgment as a matter of law.
ii. The “longitudinally extending groove” limitation
The second limitation of the claims at issue states “…wherein the top surface of
each rib defines a longitudinally extending groove that is configured for mounting of a
bottom portion of one resilient spacer member.” See id. at 15 (emphasis added).
Defendants’ proposed construction of this limitation requires “a groove extending
lengthwise and physically located on the top surface of each rib.” See id. To support this
construction, Defendants point to the language of the ‘073 Patent itself, which explains
that “resilient spacers members 300, together, space the entire inner surface 115 of the
bore of the inner hub assembly from the exterior surface of the central hub member and
provide a cushion for protecting the drive shaft in the event of a propeller impact, as well
as protecting against harmonic vibration.” See id. at 16 (Ex. A, ‘073 Patent, 5:1-7)
(emphasis added). Defendants assert that the clear and unambiguous language of claim
eighteen states that “the top surface of each rib defines a longitudinally extending
groove…” See id. In other words, the groove is a sub-feature or characteristic of each rib.
Defendants also point to the opinion of their expert, Dr. Hudson, who stated that the
“longitudinally extending groove limitation” requires “the groove [to be] physically located
on the top surface of each rib.” See id. at 17 (Ex. I, Hudson Declaration, at ¶25-31).
The Court adopts Defendants’ unopposed construction as that best conforming to
the intent of the ‘073 Patent to provide spacing between the ribs of the hub’s cavity.
Further, under this claim construction, the Court finds that the PowerTech propellers do
not contain the limitation and thus do not infringe on the ‘073 Patent. Defendants again

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attached pictures for purposes of comparing the propeller designs and demonstrating that
the PowerTech propellers lack the longitudinally extending groove on each rib. Further,
Defendants note that Dean’s “original Complaint did not actually specify where this
purported ‘longitudinally extending groove’ was purportedly found in any of the 16
photographs appended to the Complaint.” See id. at 21. Again, Dean did not oppose the
arguments and evidence set forth in the Motion for Summary Judgment and thus did not
satisfy his burden to create a genuine issue of material fact at the summary judgment
stage as to this issue. See Gen. Universal Sys., Inc. v. Lee, 379 F.3d at 141. Thus, the
Court finds that Defendants’ propellers do not contain the “longitudinally extending
groove” limitation as a matter of law, and thus, the propellers do not infringe on the ’073
Patent.
Because the PowerTech propellers lack both of the claims’ limitations described
above, Defendants have demonstrated that their propellers do not infringe on the ‘073
Patent. Thus, Defendants are entitled to judgment as a matter of law as to the noninfringement of the ‘073 Patent.
b. Invalidity of patent
In the counterclaims and Motion for Summary Judgment, Defendants alternatively
argue that, even if the PowerTech propellers contained the limitations discussed above,
such propellers “cannot infringe on the ‘073 Patent without the asserted claims being
invalidated under 35 U.S.C. § 102.” See Record Document 44-1 at 1. Defendants assert
that their propellers have been sold in the United States since 2001, while the ‘073 Patent
was not filed until 2005, about four years later. See id. at 23 (Ex. G, Decl. of Steve
Powers). Thus, Defendants argue that their propellers pre-dated the ‘073 Patent, making

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the ‘073 Patent unenforceable if the Defendants’ propellers contain the same limitations.
See id. In other words, the Defendants’ propellers were on the market before Dean ever
filed the ‘073 Patent, so Dean cannot now enforce the Patent against Defendants.
In Evans Cooling Systems, Inc. v. General Motors Corp. and Vanmoor v. Wal-Mart
Stores, Inc., the Federal Circuit held that, if the patentee accuses a particular product of
infringement, and that product is shown to be “prior art,” the patentee has effectively
admitted its claims are “anticipated.” See Evans Cooling Sys., Inc. v. Gen. Motors Corp.,
125 F.3d 1448, 1451 (Fed. Cir. 1997) (invalidating the patent because the accused
product was offered for sale prior to the critical date of the patented invention); see also
Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d 1363, 1366 (Fed. Cir. 2000) (affirming
invalidity of the patent based on the patentee's own infringement allegations because the
accused product was placed on-sale before the critical date of the invention). This
principle is derived from the “century-old axiom of patent law hold[ing] that a product
‘which would literally infringe if later in time anticipates if earlier.’” See Upsher-Smith
Labs., Inc. v. Pamlab, L.L.C., 412 F.3d 1319, 1322 (Fed. Cir. 2005) (quoting Schering
Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003)); see also Peters v.
Active Mfg. Co., 129 U.S. 530, 537, 9 S. Ct. 389 (1889) (“That which infringes, if later,
would anticipate, if earlier.”).
Under this principle, because the PowerTech propellers were placed on-sale four
years before the ‘073 Patent was filed, the Court finds that the ‘073 Patent’s claims are
“anticipated.” Although PowerTech created a new “Gen2” hub after 2005, Defendants
produced evidence showing that the original “Gen1” design, placed on-sale in 2001, and
the Gen2 design are materially identical. See id. As noted above, Dean did not contest

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this evidence. Thus, this Court agrees with Defendants and finds that if the PowerTech
propellers contain each of the claim limitations, then the ‘073 Patent is invalid because of
the clear timing of the on-sale. Thus, Defendants are entitled to judgment as a matter of
law because Dean’s infringement allegations invalidate his own patent.
CONCLUSION
Based on the reasons explained above,
IT IS ORDERED that Defendants’ Motion for Summary Judgment (Rec. Doc. 44)
is GRANTED. Given the procedural posture of the case, and because the grounds upon
which summary judgment is granted are identical to the grounds asserted in Defendants’
counterclaims for declaratory judgment, a judgment shall issue in favor of Defendants.
THUS DONE AND SIGNED, in Shreveport, Louisiana, this 17th day of January,
2023.

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