Ficep Corporation v. Voortman USA Corp

Filing 155

MEMORANDUM AND ORDER GRANTING IN PART and DENYING IN PART 85 Motion for Summary Judgment filed by Ficep Corporation; DENYING 80 Motion for Summary Judgment filed by Voortman USA Corp.; DIRECTING Voortman may, by 2/20/17, file a motion for partial summary judgment with regard to direct infringement by customers other than Haas Metal and Quality; DIRECTING Ficep to arrange a case planning telephone conference by 2/24/17. Signed by Judge Marvin J. Garbis on 2/3/2017. (hmls, Deputy Clerk)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND
FICEP CORPORATION

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Plaintiff

vs.

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VOORTMAN USA CORP.

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CIVIL ACTION NO. MJG-13-429

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Defendant

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*

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MEMORANDUM AND ORDER RE: SUMMARY JUDGMENT

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The Court has before it Voortman USA Corp.’s Motion for
Summary Judgment that the Asserted Claims of U.S. Patent No.
7,974,719 are not Infringed and/or Invalid [ECF No. 80],
Plaintiff’s Motion for [partial] Summary Judgment [ECF No. 85],
and the materials submitted relating thereto.

The Court has

held a hearing and has had the benefit of the arguments of
counsel.

I.

BACKGROUND
Ficep Corporation (“Ficep”) and Voortman USA Corp.

(“Voortman”) are competitors that design, develop, and
manufacture machines and systems for the steel construction and
forging industries.

Ficep owns, by assignment, United States Patent No.
7,974,7191 (“the ‘719 Patent”), entitled “Method and an apparatus
for automatic manufacture of an object with multiple
intersecting components.”

The claimed invention “relates to

systems and methods for automatic manufacture of an object based
on automatic transmission of a three-dimensional rendering of
the object, such as a rendering from a CAD to an assembly line
for manufacture.”

‘719 Patent, col. 1:9-13.

In this case, Ficep sues Voortman for indirect infringement
of the ‘719 Patent based on direct infringement by its
customers.

Complaint, ECF No. 1.

Voortman counterclaims for a

declaratory judgment of noninfringement and invalidity.

Answer,

ECF No. 19.
By the instant motions:




II.

Voortman seeks summary judgment based on no direct or
induced infringement and invalidity under 35 U.S.C.
§§ 102, 103 (anticipation, obviousness).
Ficep seeks partial summary judgment establishing
direct infringement by Voortman’s customers and
denying Voortman’s invalidity claims.

SUMMARY JUDGMENT STANDARD
In a patent case, as in any other form of civil litigation,

a motion for summary judgment shall be granted if the pleadings

1

Filed June 6, 2007 with a priority date of June 9, 2006 and
issued on July 5, 2011.

2

and supporting documents “show[] that there is no genuine
dispute as to any material fact and the movant is entitled to
judgment as a matter of law.”

Fed. R. Civ. P. 56(a); Desper

Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1332 (Fed.
Cir. 1998).
The well-established principles pertinent to summary
judgment motions can be distilled to a simple statement:

The

Court may look at the evidence presented in regard to a motion
for summary judgment through the non-movant’s rose-colored
glasses, but must view it realistically.

After so doing, the

essential question is whether a reasonable fact finder could
return a verdict for the non-movant or whether the movant would,
at trial, be entitled to judgment as a matter of law.

See,

e.g., Celotex Corp. v. Catrett, 477 U.S. 317, 322-323 (1986);
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
Thus, in order to defeat a motion for summary judgment, “the
party opposing the motion must present evidence of specific
facts from which the finder of fact could reasonably find for
him or her.”

Mackey v. Shalala, 43 F. Supp. 2d 559, 564 (D. Md.

1999) (emphasis added).
When evaluating a motion for summary judgment, the Court
must bear in mind that the “[s]ummary judgment procedure is
properly regarded not as a disfavored procedural shortcut, but

3

rather as an integral part of the Federal Rules as a whole,
which are designed ‘to secure the just, speedy and inexpensive
determination of every action.’”

Celotex, 477 U.S. at 327

(quoting Rule 1 of the Federal Rules of Civil Procedure).
“Cross motions for summary judgment ‘do not automatically
empower the court to dispense with the determination whether
questions of material fact exist.’” Equal Rights Center v.
Archstone Smith Trust, 603 F. Supp. 2d 814, 820 (D. Md. 2009)
(quoting Lac Courte Oreilles Band of Lake Superior Chippewa
Indians v. Voigt, 700 F.2d 341, 349 (7th Cir. 1983)). Rather,
the court must examine each party’s motion separately and
determine whether summary judgment is appropriate as to each
under the Rule 56 standard.

Desmond v. PNGI Charles Town

Gaming, L.L.C., 630 F.3d 351, 354 (4th Cir. 2011); Mingus
Constructors, Inc. v. United States, 812 F.2d 1387, 1391 (Fed.
Cir. 1987).

The court may grant summary judgment in favor of

one party, deny both motions, or grant in part and deny in part
each of the parties’ motions. See Rossignol v. Voorhaar, 316
F.3d 516, 523 (4th Cir. 2003).

III. DISCUSSION
The parties have extensively (if not excessively) briefed
the instant motions.

In view of the filings and the multiple

4

cross-references, the Court stated, at the commencement of the
motion hearing, that the briefing had been read for background
but that the parties’ contentions had to be stated at the
hearing.
Naturally, I have read through the
materials that you have produced, and I will
certainly in the course of the proceeding
have various questions to ask of you.
I want it to be clear nobody is going
to be inhibited from saying everything you
want to say here, but I want you to
understand that I’m going to be looking at
the record of this proceeding as stating
what your arguments are.
And I’m not going to go, after this
hearing, go back rooting through the briefs
to find what it is you’re contending. I
think you have to say what you’re contending
here so it’s as clear as possible.
So don’t omit anything that you want to
have considered as being your contention.
Tr.2 at 2-3.

A.

The Invention

The invention at issue is a process to enable a user to
start with a design model3 of an object in electronic format and

2

All “Tr.” references herein are to the transcript of the
August 25, 2016 motion hearing.
3
Generally, a computer-aided design model includes design
specifications related to the structure or device, which
includes, for example, welding characteristics, names of parts
and components, dimensional references for squaring, and so

5

manufa
acture th object without the pos
he
t
t
ssibility of huma error in
y
an
the pr
rocess.

In essen
nce, a hu
uman bein can ut
ng
tilize Co
omputer

Assisted Desig (“CAD” softwa
gn
”)
are to cr
reate a d
design mo
odel of a
an
object.

There
eafter, the desig procee
t
gn
eds throu
ugh manuf
facturing
g

automa
atically.

It can be succ
n
cinctly s
stated th
hat the d
data has

gone from the design model to the manu
f
m
ufacturin machin
ng
ne
“untou
uched by human ha
ands.”
The ‘719 Patent discloses a prefe
d
s
erred emb
bodiment and flow
w
chart to pract
tice the inventio
on:

forth.

‘719 Patent, col. 1:20
P
c
0-25.

6

Thus, the process can be described in terms of 6 steps:
1. Creating a design model. An individual uses CAD
software,4 to create, in electronic format, a threedimensional design model of a multi-component object.5
2. Receipt by Controller. The electronic file6
constituting the design model is transmitted7 to a
device capable of processing a design model, referred
to as a programmable logic controller (“PLC”).
3. Storing the Design Model.
in a database.

The design model is stored

4. Extracting Dimensions and Parameters. A logic system
within the PLC extracts the component dimensions from
the design model and identifies and extracts
intersection and manufacturing parameters.
5. Transmitting Dimensions and Parameters. The
dimensions and the intersection and manufacturing
parameters are transmitted8 to one or more
manufacturing machines.
6. Manufacturing. The components are manufactured based
on the transmitted dimensions and parameters.
1.

Claim Construction

The Judge initially presiding over this case, Judge
Quarles, construed 19 claim terms in a Memorandum Opinion [ECF
No. 70] at 17–19.

See Appendix A.

4

3D modeling software, such as programs sold by Tekla and
SDS/2, are typically used in the steel industry to create design
models. Pl.’s Mot. 7, ECF No. 86.
5
At least two of the components intersect, and typically,
there are component dimensions.
6
Or files.
7
Electronically or by using a removable digital storage
device.
8
Electronically or by using a removable digital storage
device.

7

The parties have demonstrated by their briefing and oral
argument on the instant motions that there is an actual dispute
requiring a construction of the term “programmable logic
controller” and a modification of the construction of “design
model.”
“When the parties raise an actual dispute regarding the
proper scope of [the asserted] claims, the court, not the jury,
must resolve that dispute.” O2 Micro Int’l v. Beyond Innovation
Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008)(finding error in
the district court’s failure to resolve “a fundamental dispute
regarding the scope of a claim term”); see also Teva Pharms.
USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 835 (2015).

a.

Programmable Logic Controller

Judge Quarles was not asked to, and did not, construe the
term “programmable logic controller” (“PLC”), considering that
the term was to be given its plain and ordinary meaning.
It is now apparent that the parties dispute the “plain and
ordinary meaning” of the term.

Hence, the Court finds it

necessary to construe the term.
The ‘791 Patent specification states:
The programmable logic controller [] is
implemented in order to control and monitor
the manufacture of an object. Any device
capable of processing a design model as

8

described herein may be considered as a
programmable logic controller. In various
embodiments, one or more logic devices or
processors may be used.
‘719 Patent, col. 5:32-37.
Voortman states that it provides customers two VACAM
software programs, VACAM Office software and VACAM Machine
software.

Tr. 84.

VACAM Machine software “has a component that

is a programmable logic controller. It can control these
machines that Voortman sells.” Id.

“It’s the only VACAM

application that can actually convert these signals into
the other signals that tells the machine how to manufacture.”
Id.

“The two programs are on different components, different

computers, and they do different things.”

Id.

Ficep’s position is, succinctly, that the programmable
logic controller can be spread among more than one device.
[T]he programmable logic controller can be
one or more processors. So you can have one
processor here and a different processor
there; and if they’re together doing it,
that’s one or more processors that are the
programmable logic controller.
Tr. 9.
Ficep does not contend, as Voortman asserts, that
“for purposes of claim interpretation, a programmable logic
controller doesn’t need to control.”

9

Tr. 95.

Ficep’s position is logical and consistent with the
specification statement that “[i]n various embodiments, one or
more logic devices or processors may be used.”
col. 5:32-37.

‘719 Patent,

Ficep acknowledges that the programmable logic

controller must control and must perform all the other claimed
functions.

However, the programmable logic controller need not

be on one single device.
machine.

“[Y]ou can have a computer at the

You can have a computer at the office. You can have a

computer at two or three machines. One or more devices can
constitute the programmable logic controller.”

Tr. 134.

The Court construes the term “programmable logic
controller” to refer to:
A device that may comprise one or more
logic devices or processors and is capable
of processing a design model to control and
monitor the manufacture of an object.
b.

Design Model

The ‘719 Patent states that a “design model” includes
design specifications related to the object to be manufactured.
‘719 Patent, col. 1:1–25.
In the claim construction process, Voortman stated that the
claim term “design model of an object” should be construed as
“an electronic file” containing all data needed to allow
assembly of an object. Voortman Opening Brief [ECF No. 33] at

10

29.

Ficep stated that “[t]here is no disagreement that the

claimed ‘design model’ involves one or more electronic files to
be employed with a computer.” Ficep Opening Brief [ECF No. 34]
at 13 (emphasis added).

Neither party addressed the issue in

its responsive brief.
Judge Quarles construed the term “design model of an
object” as “the design model of an object in the form of an
electronic file.”

Judge Quarles did not discuss his use of the

words “an electronic file” and did not address the party’s
present dispute regarding the content of the design model.
Voortman does not now deny that, in terms of the number of
files, the “design model” should be construed as Ficep contends.
As stated by Voortman regarding the design model claim
construction issue:
It’s not the number of files that matters;
it’s what’s in the files that matter.
Tr. 107.
In regard to content, Voortman presents an issue best
understood and considered in the context of infringement.

That

is, whether, when Voortman’s customers extract and use the
specifications of a single component from a design model of a
multi-component object, they infringe.9

9

In other words, the

[Voortman]: We are saying that there’s no evidence
other than it’s the CAD software that extracts the

11

design model of a multi-component object to be manufactured
(e.g., a coffee mug) includes specifications of each separate
component (the cylinder and the handle).

That design model is

not processed to result in a manufactured ultimate product (the
coffee mug).

Rather, the Voortman customer extracts from the

design model the specifications for a single component (the
cylinder) that includes what is necessary for the connection of
the other component (the handle).
The Court does not find that the term, “design model”
should be limited to an electronic file or files including the
specifications of a single component of a multi-component
object.
Voortman contends that during the prosecution of the ‘719
Patent, there was a disclaimer of an intention to include within

individual part files, not the Voortman customers, not
the VACAM Machine software, not the VACAM Office
software. Everything that the Voortman customers get,
after the CAD system is used, are individual part
files.
THE COURT: That’s because that’s what they want.
[Voortman]: That’s exactly right. They don’t -- they
don’t need and couldn’t process -- in fact, the
machine -- like, for example, the VACAM Office system
could not process a multi-component design model. All
it can process are individual part files.
Tr. 127.

12

the term “design model” a design model of an object having
multiple individual components.

Tr. 103.

Voortman asserts that during the prosecution of the ‘719
Patent, Ficep,10 in distinguishing the Jones11 patent, “clearly
disclaimed” a construction of “design model” that would include
specifications of more than one component of a multi-component
object to be manufactured.

In this regard, Ficep said:

Jones does not disclose or suggest an
automatic manufacturing system incorporating
and utilizing a design model of an object
having multiple individual components,
wherein at least two of the individual
components define an intersection at which
the two components are in contact with one
another. Concomitantly, Jones does not
disclose or suggest an automatic
manufacturing system with elements that
identify and extract intersection parameters
from a design model. The manufacturing
system of Jones et al. is concerned
exclusively with the manufacture of
individual or separate components from
respective design specifications of the
individual components. In contrast to the
present invention, there is nothing in the
Jones reference that provides for a design
model of an entire object having multiple
components in contact with one another at
one or more intersection points.
Accordingly, the Jones system does not
include componentry (such as a programmable
logic controller) that identifies and
extracts intersection information or
parameters from a design model of an object
10

The Court is herein, as did Judge Quarles in his claim
construction, referring to Ficep as the applicant for the ‘719
Patent.
11
United States Patent No. 4,998,206.

13

having multiple components in contact with
one another at one or more intersection
points.
Def.’s Mot. Ex. C 9, ECF No. 82-3 (quoting Prosecution History
for ‘719 Patent at VRTFCP0008494).
Ficep amended the independent claims to delete the
phraseology “an object with multiple intersecting components”
and to insert the language “the object has multiple individual
components, at least two of the individual components defining
an intersection at which the two components are in contact with
one another.”

Def.’s Mot. Ex. B 26, ECF No. 82-2 (quoting

Prosecution History at VRTFCP0008491).
The essence of the distinction between Jones and the ‘719
Patent lies in the requirement, in the Jones process, that, once
the design model is done, a human operator must thereafter
insert manufacturing specifications prior to manufacturing.

In

the ‘719 Patent process, once the design model is done, the
specifications therein are extracted and, without the risk of
human “contamination” of the data, manufacturing proceeds
pursuant to the design model.
The Court concludes that the construction of the term
“design model” should be stated as:
The design model of an object is in the
format of one or more electronic files. In
regard to a multi-component ultimate object,
the design model may include the

14

specifications of one or more of the
separate components of the multi-component
ultimate object.
B.

Infringement

A patent owner has the burden of establishing infringement
by a preponderance of the evidence.

Creative Compounds, LLC v.

Starmark Labs., 651 F.3d 1303, 1314 (Fed. Cir. 2011)(citing SRI
Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1123 (Fed. Cir.
1985).
In this case, Ficep accuses Voortman of indirect
infringement by inducing or contributing to direct infringement
by its customers.

To establish its claim for indirect

infringement, Ficep must prove direct infringement and
intentional inducement.

That is, that:



Voortman’s customers directly infringed, and



Voortman intentionally acted to induce
infringement and “knew or should have known
[its] actions would induce actual
infringements.”

Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., --- F.3d ---, No. 2015-2067, 2017 WL 117164, at *3 (Fed. Cir. Jan. 12,
2017).

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1.

Direct Infringement

To establish direct infringement by one or more of
Voortman’s customers, Ficep must either (1) prove that customers
using the Voortman products necessarily infringe the ‘719 Patent
or (2) prove that specific customers using the Voortman product
in fact infringed. Toshiba Corp. v. Imation Corp., 681 F.3d
1358, 1364 (Fed. Cir. 2012) (citing ACCO Brands, Inc. v. ABA
Locks Mfr. Co., 501 F.3d 1307, 1313 (Fed. Cir. 2007)).
If an accused device can be used in a non-infringing
manner, the accused device does not necessarily infringe.

ACCO,

501 F.3d at 1313; see also Dynacore Holdings Corp. v. U.S.
Philips Corp., 363 F.3d 1263, 1275 (Fed. Cir. 2004) (“The mere
sale of a product capable of substantial non-infringing uses
does not constitute indirect infringement of a patent.”).

Ficep

has not presented evidence adequate to prove that a customer
using Voortman’s products necessarily must infringe.

Therefore,

specific infringement must be proven.
To prove direct infringement by a customer, Ficep must
prove that the customer used the Voortman product in a process
by which each limitation of the claim asserted was met.12

12

Akamai

Or was met by virtue of the doctrine of equivalents
(“DOE”). Warner-Jenkinson Co. v. Hilton Davis Co., 520 U.S. 17,
40 (1997).

16

Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022
(Fed. Cir. 2015).
A Voortman customer could be found to infringe even if some
of the steps in the process were performed by another, if those
steps are attributable13 to the customer. Id.

a.

Proof of Direct Infringement

Ficep has presented evidence with respect to the alleged
infringing process used by two Voortman customers, Haas Metal
Engineering, Inc. (“HME”) and Quality Iron Fabricators (“Quality
Iron”).

FICEP states that the “infringement analysis of claims

7-12 of the ‘719 patent is the same as for claims 1-6 in all
relevant aspects,” and that except for the “creating” and

13

An action would be attributable to a Voortman customer if:
(1) It performs all the steps itself; or
(2)

It acts through an agent (applying traditional agency
principles); or

(3)

It participates in a joint enterprise such that all
can be charged with the acts of the others; or

(4)

It contracts with another to perform one or more steps
of a claimed method; or

(5)

The “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.”

Akamai, 797 F.3d at 1022-23 (citing Metro–Goldwyn–Mayer Studios
Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005) related to
vicarious liability actions).

17

“storing” elements,14 the same analysis is applicable to Claim
14.

Pl.’s Mot. 28-29, ECF No. 86. For present purposes the

Court addresses herein only Claim 1.
The evidence of record establishes the absence of any
genuine issue of material fact regarding HME’s and Quality
Iron’s utilizing Voortman machines in a process that met all the
limitations of Claim 115 of the ‘719 Patent.

The Court shall

address each limitation in turn.
As discussed herein, Ficep is entitled to partial summary
judgment establishing, for purposes of this case against
Voortman,16 the alleged direct infringement by HME and Quality
Iron.

i.

Limitation 1 - Design Model Creation

creating, at a computing device, a design
model of an object having multiple individual
components, at least two of the individual
components defining an intersection at which
the two components are in contact with one
another;
The Court’s construction of “design model of an object”
states:

14

I.e., there are no elements in claim 14 related to
“creating” or “storing” a design model.
15
See Appendix B - Claim 1.
16
Since neither HME or Quality Iron is a party to the instant
case, they would not necessarily be bound by this decision
should they be sued for infringement by Ficep.

18

In regard to a multi-component ultimate
object, the design model may include the
specifications of one or more of the
separate components of the multi-component
ultimate object.
Voortman does not deny that these customers used a CAD
program to create a design model in DSTV17 or other electronic
files.

Tr. 92.

Therefore, both HME and Quality Iron18 used a

process in which they created a design model meeting Limitation
1 in their manufacturing process.

ii.

Limitation 2 - Receiving Design Model

receiving, at a programmable logic controller,
the design model of the object;
Voortman offers software called VACAM with two distinct
versions: VACAM Office Edition and VACAM Machine software. VACAM
Machine, which Voortman supplies to its customers, includes the
TwinCAT plugin component that has the ability to actually
control a machine.

It is run from a system directly connected

to a manufacturing device.

In contrast, Voortman does not

provide all of its customers the VACAM Office Edition software,

17

“DSTV” (“Deutsche Stahlbau-Verband,”) is a file format
standard defined in Germany and now commonplace for
manufacturing. The DSTV format describes cuts, holes, markings,
and other operations to be performed on steel plates and
members. Pl.’s Mot. Ex. G, Chipman Rpt. ¶ 40, ECF No. 86-5.
18
The fact that Quality Iron sometimes, or always, contracts
out the function to a third party does not avoid infringement.
Akamai, 797 F.3d at 1023.

19

which is installed on an end-user computer and does not contain
a controller component within it.

Def.s’ Mot. 19-20, ECF No.

81.
Voortman’s VACAM Office Edition and Machine Edition
software have an import feature that is used to receive the
design model in electronic files.

The design model is received

by the device containing the VACAM Office software, data is
extracted and sent to the VACAM Machine software.
The Court has construed the term programmable logic
controller to mean:
A device capable of processing a design
model to control and monitor the manufacture
of an object that may comprise one or more
logic devices or processors.
Using this construction, the programmable logic controller
in the process at issue consists of the VACAM Office and VACAM
Machine software.
Thus, the design model is received at a programmable logic
controller and Limitation 2 is met.

iii. Limitation 3 - Storing Design Model

storing, at a database unit, the design model
received at the programmable logic controller;

20

Voortman did not, at the hearing, clarify a contention – if
it was making one - that this limitation is not met.19

To the

extent that Voortman contends that the model itself is not
stored but only the data from the model, this is a distinction
without a difference.
Thus, Limitation 3 is met.

iv.

Limitation 4 - Extracting Dimensions

extracting from the design model a plurality
of component dimensions defining a plurality
of components of the object;
Voortman did not, at the hearing, clarify a contention – if
it was making one - that this limitation is not met.

The

dimensions are in the DSTV files created using Tekla or SDS/2
and are exported and then read by the VACAM software.
performs the step directly.

HME

Quality Iron receives the DSTV

files from its detailers, who have used either Tekla or SDS/2 to
extract the dimensions.
Thus, Limitation 4 is met.

19

Voortman said at the hearing: “At the CAD software,
information is extracted. So it’s actually at that third-party
software where the information is extracted that then eventually
goes to the PLC. And it may be stored in between, but eventually
it has to make its way to the programmable logic controller in
order for there to be the ability for the machine to then
manufacture. Tr. 88 (emphasis added).

21

v.

Limitation 5 - Identifying Parameters

identifying a plurality of intersection and
manufacturing parameters which define in
part the intersection of the two components;
Voortman did not, at the hearing, clarify a contention – if
it was making one - that this limitation is not met.

vi.

Limitation 6 – Extract Parameters

extracting from the design model the
intersection and manufacturing parameters;
Voortman did not, at the hearing, clarify a contention – if
it was making one - that this limitation is not met.

vii. Limitation 7 - Transmitting Parameters

transmitting the intersection and
manufacturing parameters and the component
dimensions from the programmable logic
controller to at least one manufacturing
machine;
Voortman did not, at the hearing, clarify a contention – if
it was making one - that this limitation is not met.

viii. Limitation 8 - Manufacture Components

manufacturing, by means of the at least one
manufacturing machine, the components
based at least partly on the transmitted
component dimensions and the transmitted
intersection and manufacturing parameters.

22

Voortman did not, at the hearing, clarify a contention – if
it was making one - that this limitation is not met.

2.

Inducement by Voortman

To establish the requisite inducement, Ficep must prove
that Voortman had the specific intent to encourage its
customers’ infringement.20
To establish specific intent, Ficep must prove that
Voortman’s actions induced infringing acts and that it “knew or
should have known [its] actions would induce actual
infringements.”

Eli Lilly, 2017 WL 117164, at *3.

If a party sells a component that has no “substantial
noninfringing use,” an inference may be drawn that the company
intended to cause direct infringement by the purchaser of the
component.

Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d

1325, 1337 (Fed. Cir. 2008).

However, “distribution of a

component of a patented device will not violate the patent if it
is suitable for use in other ways.” Grokster, 545 U.S. at 915.
Ultimately, “[i]ntent is a factual determination
particularly within the province of the trier of fact.” Fuji
Photo Film Co. v. Jazz Photo Corp., 394 F.3d 1368, 1378 (Fed.
20

The Court notes that Ficep did not move for a summary
judgment finding of indirect infringement by Voortman. However,
Voortman seeks summary judgment based on no direct or induced
infringement.

23

Cir. 2005) (declining to disturb jury’s verdict because intent
to induce infringement “is a factual determination.”).
There are, beyond doubt, genuine issues of material fact in
regard to Voortman’s alleged inducement of infringement.

C.

Invalidity

In general, a United States Patent is presumed valid, and
the “burden of establishing invalidity of a patent or any claim
thereof shall rest on the party asserting such invalidity.” 35
U.S.C. § 282. An invalidity defense must be “proved by clear and
convincing evidence.” Microsoft Corp. v. i4i Ltd. P’ship, 564
U.S. 91, 95 (2011).

A party may assert invalidity on several

grounds, including anticipation by prior art and the obviousness
of the invention. See 35 U.S.C. §§ 102, 103.

1.

Anticipation

A patent is invalid if it was anticipated by prior art.
Under 35 U.S.C. § 102(b),21 a patent application will not be
approved if the invention “was patented or described in a
printed publication in this or a foreign country or in public
use or on sale in this country, more than one year prior to the

21

The 2006 version cited herein was in effect at the time of
the application for the ‘719 Patent. It was subsequently amended
by the Leahy-Smith America Invents Act (“AIA”).

24

date of the application for a patent in the United States.”

To

find that prior art anticipated a patent claim, “each and every
limitation [must be] found either expressly or inherently in a
single prior art reference.” Celeritas Techs., Ltd. v. Rockwell
Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998).

“Although

anticipation is a question of fact, it still may be decided on
summary judgment if the record reveals no genuine dispute of
material fact.”

Telemac Cellular Corp. v. Topp Telecom, Inc.,

247 F.3d 1316, 1327 (Fed. Cir. 2001).
Voortman contends that the ‘719 Patent is invalid because
it was anticipated by:


The Tekla Reference



The Mueller Prior Art



The SDS/2 Prior Art



Patent 6,318,029 (“the ‘029 Patent”)

Both sides seek summary judgment with regard to
anticipation contentions.22

a.

The Tekla Reference

Voortman contends that the 2005 Tekla System Manual (for
version 11 of Tekla software) is a printed publication that
22

Voortman sought summary judgment that the Tekla Systems
Manual anticipated the ‘719 Patent. Ficep’s motion sought
summary judgment in regard to all anticipation contentions.

25

anticipates the ‘719 Patent, which has a June 6, 2007 filing
date.
Ficep contends that the manual was not prior art under 35
U.S.C. § 102(b).23

The evidence establishes, however, the manual

was, prior to June 6, 2007, on sale, in public use, and/or a
printed publication within the meaning of § 102(b).
“When considering whether a given reference qualifies as a
prior art printed publication, the key inquiry is whether the
reference was made sufficiently accessible to the public
interested in the art before the critical date.”

Voter

Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374,
1380 (Fed. Cir. 2012)(citation omitted).

Further, to qualify as

a prior art “printed publication” under § 102, the evidence must
show that the reference “has been disseminated or otherwise made
available to the extent that persons interested and ordinarily
skilled in the subject matter or art exercising reasonable
diligence, can locate it.” Suffolk Techs., LLC v. AOL Inc., 752
F.3d 1358, 1364 (Fed. Cir. 2014)(citation omitted).

23

Ficep contends that Voortman did not offer any evidence of
any alleged sale, offer for sale, or public use of the Tekla
Prior Art until Voortman’s expert’s reply report. i.e., it was
not in the invalidity contentions, not in the expert’s opening
report, and Ficep did not have an opportunity to respond. To
the extent that Ficep may actually debate whether the manual is
prior art, that contention – if relevant to an issue presented is preserved.

26

The evidence establishes that the manual was, prior to June
6, 2007, delivered with the Tekla software, was accessible
online, and could be requested by any member of the public.
There is no doubt that someone skilled in the art would have
been able to locate the manual by exercising reasonable
diligence.
While the manual is prior art, the evidence is not
sufficient to establish that it anticipates the ‘719 Patent.
Voortman’s expert combines the Modeling Manual for Tekla
Structures Version 11, the Tekla System Manual, and a working
copy of version 7.0 of the Tekla software, and collectively
refers to them as “Tekla Prior Art.”
No. 82-1.

Def.’s Mot. Ex. A 32, ECF

Voortman does not offer evidence adequate to prove

that the Tekla System Manual, as a single prior art reference,
meets the limitations the elements of the ‘719 Patent claims.
The Court shall, therefore, grant Ficep partial summary
judgment and deny Voortman summary judgment with regard to
anticipation by the Tekla Reference.

b.

The Mueller Prior Art

Voortman contends that what it calls the “Mueller Prior
Art” anticipates the ‘719 Patent and constitutes a “public use”
bar to its validity.

Tr. 161.

27

Voortman’s expert describes the “Mueller Prior Art” as the
1101 DZB Ficep CNC machine (installed in July 2005 for Ficep’s
Texas customer, Mueller) used with Mueller’s AutoCAD system and
Ficep’s

WinSteel software.

Pl.’s Mot. Ex. X, Duffie Rpt. 22-

32, ECF No. 86-17.
The parties dispute whether the Mueller Prior Art is, in
fact, prior art.

Voortman asserts that the Mueller system was

prior art under the “public use” or “known or used by others”
provisions of 35 U.S.C. § 102(b) more than one year prior to
June 6, 2007, because it was offered to Mueller in May 2004 and
installation was completed in July 2005.

Ficep contends that it

sold Mueller a CNC machine and the WinSteel software, and the
process was developed by Mueller as a private company’s process
used in its own factory.
One sale or offer to sell of the prior art reference is
sufficient to establish a statutory bar which renders the patent
invalid. See Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (1998); In
re Caveney, 761 F.2d 671, 676 (Fed. Cir. 1985).

A patent also

may be invalid if anticipating prior art was “known or used by
others in this country” before the date of invention. The term
“used” means the complete invention was known to, used by, or
otherwise accessible to, the public in this country. Carella v.

28

Starlight Archery and Pro Line Co., 804 F.2d 135, 139 (Fed. Cir.
1986).
“It does not take much to trigger the ‘public use’
statutory bar to a patent.”

National Research Dev. Corp. v.

Varian Assocs., Inc., 822 F. Supp. 1121 (D.N.J. 1993), aff’d in
part, rev’d in part, on other grounds, 17 F.3d 1444 (Fed. Cir.
1994).

A use may be considered “public” even if only one person

knew about and used the invention. Id. Once a prima facie case
of public use before the critical date is established, the
inventor (or patent owner) must come forward with clear and
convincing evidence to counter that showing. Hycor Corp. v.
Schlueter Co., 740 F.2d 1529, 1535 (Fed. Cir. 1984).
Voortman has established “public use” sufficient to satisfy
that the Mueller system constitutes prior art.24

However,

Voortman has not produced evidence adequate to establish that
the Mueller Prior Art constitutes, or includes, a single
reference that meets all the limitations of the ‘719 Patent
claims.

Celeritas Techs., Ltd., 150 F.3d at 1361.

24

For example, there is evidence that two representatives of
another company, Excel, visited the Mueller facility around May
8, 2006 to view the Mueller system. Voortman offers email
evidence to show that Ficep was trying to sell machines and
software to Excel, the potential customer. Moreover, articles
were written about the system, although they were published
after the critical date.

29

The Court shall, therefore, deny Ficep partial summary
judgment that the Mueller system does not constitute prior art,
but shall grant Ficep partial summary judgment of no invalidity
with regard to anticipation by the Mueller Prior Art.

c.

The SDS/2 Prior Art

Voortman’s expert describes the “SDS/2 Prior Art” as
Version 6.130 of SDS/2, a CAD program around November 10, 2000,
and various documents that describe the software program. Pl.’s
Mot. Ex. X, Duffie Rpt. 34, ECF No. 86-17.

SDS/2 automatically

generated layout marks, which are pop-marks it refers to as “CNC
marks,” that facilitated assembly of components.

Id. SDS/2

included a CNC module that generated hole, cut, and mark
information that was used by controllers that controlled CNC
machines. Id. at 35.
Ficep contends that there is no evidence that the SDS/2
Prior Art was actually publicly used, although it was in use at
Tipton,25 because the use was in its factory, it was
confidential, and there’s no evidence to corroborate the oral
testimony by Tipton’s employees regarding its use.

However,

Voortman has presented evidence sufficient to establish that it

25

TSF Structures, Inc. or Tipton Structural Fabrication
(“Tipton”). See Def.’s Mot. Ex. C, Duffie Reply Rpt. 41, ECF
No. 82-3.

30

was publicly available for sale and in use in the steel
fabrication industry more than one year prior to June 6, 2007.
Voortman does not, however, present evidence adequate to
establish that the SDS/2 Prior Art constitutes, or includes, a
single reference that meets all the limitations of the ‘719
Patent claims.
The Court shall, therefore, grant Ficep partial summary
judgment regarding no anticipation by the SDS/2 Prior Art, but
the Court shall deny Ficep partial summary judgment that the
SDS/2 Prior Art does not constitute prior art.

d.

Patent 6,318,029 (“the ‘029 Patent”)

Voortman’s expert opines that the ‘029 Patent, issued on
November 20, 2001, describes a system for manufacturing wall
framing components used with a CAD program that defines
dimensions and measurements of the frames and sends the
identifying codes and data to a logic control unit that controls
a machining tool.

Pl.’s Mot. Ex. X, Duffie Rpt. 35, ECF No. 86-

17.
The Court rejects Ficep’s procedural objections regarding
the ‘029 Patent.26

In regard to the merits of the matter, there

26

Ficep contends that the ‘029 Patent was not disclosed in
Voortman’s invalidity contentions under anticipation, so
Voortman should be precluded from contending that the ‘029

31

are genuine issues of material fact with regard to anticipation
of the ‘719 Patent by the ‘029 Patent. For example, whether the
‘029 Patent includes “intersection parameters” and whether it
allows for the automatic identification of such parameters.
The Court shall, therefore, deny Ficep partial summary
judgment with regard to no anticipation by the ‘029 Patent.
Accordingly, Voortman may contend, at trial, that the ‘029
Patent anticipates the ‘719 Patent.

2.

Obviousness

Obviousness is a question of law, based on underlying
factual findings.
427 (2007).

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,

“The underlying factual inquiries include: (1) the

scope and content of the prior art, (2) the differences between
the prior art and the claims at issue, (3) the level of ordinary
skill in the art, and (4) any relevant secondary considerations,
such as commercial success, long felt but unsolved needs, and
the failure of others.”

Wyers v. Master Lock Co., 616 F.3d

Patent anticipates the ‘719 Patent. However, Voortman listed
the ‘029 patent as prior art, and asserted that it was an
additional reference rendering claims of the ‘719 patent
obvious. As such, Ficep was on notice that Voortman viewed the
‘029 patent as prior art. Upon receipt of Ficep’s definitions of
various “plain and ordinary” terms, Voortman’s expert opined (in
his opening report) that based on Ficep’s definitions, the ‘029
Patent anticipated the ‘719 Patent. Ficep was not prejudiced
and had an opportunity to respond in its expert’s rebuttal
report.

32

1231, 1237 (Fed. Cir. 2010) (citing Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966)).
An invention is obvious if it involves only improvements
that would be considered readily apparent to someone skilled in
the same area as the subject matter of the invention. 35 U.S.C.
§ 103.

“[A] patent composed of several elements is not proved

obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.”

KSR, 550 U.S. at 418.

Certainly, “[m]ost inventions arise from a combination of old
elements and each element may often be found in the prior art.”
In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006).

“A reason for

combining disparate prior art references is a critical component
of an obviousness analysis; ‘this analysis should be made
explicit’.” InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d
1327, 1351 (Fed. Cir. 2014) (quoting KSR, 550 U.S. at 418).
The obviousness inquiry requires a flexible approach that
also includes a review of the secondary considerations of
nonobviousness.

Id. at 406, 415; see also Geo. M. Martin Co. v.

All. Mach. Sys. Int’l LLC, 618 F.3d 1294, 1304 (Fed. Cir. 2010)
(“Secondary considerations of non-obviousness must be considered
when present.”).

Secondary considerations, however, “cannot

overcome a strong prima facie case of obviousness.”
F.3d at 1246.

33

Wyers, 616

Voortman seeks summary judgment establishing that the ‘719
Patent is invalid by virtue of obviousness in light of:


Tekla combined with Voortman’s V550 machine and
VACAM software,



Tekla prior art combinations of manuals and
software,



Tekla in combination with the Mueller Prior Art.

Ficep seeks summary judgment establishing that the ‘719
Patent is not invalid by virtue of obviousness in light of the
following combinations of prior art asserted by Voortman:


The Tekla reference with publications,27



The SDS/2 reference with publications,28



The Tekla reference with V550 and VACAM.

In the present context, it is by no means certain which, if
any, of the obviousness contentions actually will be presented
by Voortman.

Moreover, there is no doubt that there are genuine

issues of material fact as to whether Voortman can prove
obviousness by clear and convincing evidence as to any of the
combinations that are subjects of the instant motions.
The Court does not foreclose the possibility that, in a
future stage of the case, it will consider summary judgment, or

27

Tekla combined with United States Patent Publ. No.
2003/0033104 (“the ‘104 Publication”) or United States Patent
Publ. No. 2005/0115375 (“the ‘375 Publication)
28
SDS/2 combined with the ‘104 or ‘375 Publications.

34

judgment as a matter of law, in regard to some, or all, of the
obviousness contentions.

IV.

CONCLUSION
For the foregoing reasons:
1.

Voortman USA Corp.’s Motion for Summary Judgment that
the Asserted Claims of U.S. Patent No. 7,974,719 are
not Infringed and/or Invalid [ECF No. 80] is DENIED.

2.

Plaintiff’s Motion for Summary Judgment [ECF No. 85]
is GRANTED IN PART and DENIED IN PART.
a.

Ficep is granted partial summary judgment
establishing direct infringement of Claim 1 of
the ‘719 Patent by Haas Metal Engineering, Inc.
and Quality Iron Fabricators.

b.

Ficep is denied partial summary judgment
establishing direct infringement of Claim 1 of
the ‘719 Patent by any other Voortman customers.

c.

Ficep is granted partial summary judgment denying
Voortman’s claims of invalidity by virtue of
anticipation by:
i. The Tekla reference.
ii. The Mueller prior art.
iii. The SDS/2 prior art.

d.

Ficep is denied partial summary judgment
regarding Voortman’s claims of invalidity by
virtue of anticipation by United States Patent
No. 6,318,029.

e.

Ficep is denied partial summary judgment
regarding Voortman’s claims of invalidity by
virtue of obviousness based on the combination
of:

35

i. The Tekla reference with United States
Patent Publ. No. 2003/0033104 or United
States Patent Publ. No. 2005/0115375.
ii. The SDS/2 reference with United States
Patent United States Patent Publ. No.
2003/0033104 or United States Patent Publ.
No. 2005/0115375.
iii. The Tekla reference with Voortman’s V550
Machine and VACAM Software.
3.

Voortman may, by February 20, 2017, file a motion
seeking partial summary judgment with regard to direct
infringement by its customers other than Haas Metal
Engineering, Inc. and Quality Iron Fabricators.

4.

Ficep shall arrange a case planning telephone
conference to be held by February 24, 2017. The agenda
shall include scheduling of the case for trial.

SO ORDERED, on Friday, February 3, 2017.

/s/__________
Marvin J. Garbis
United States District Judge

36

Appendix A
Am. Claim Construction, ECF No. 70:
Claim Language

Court’s Construction

Preamble
1. “automatic manufacture of an No change; plain and ordinary
object”
meaning
Claim 1
2. “design model of an object”
“design model of an object, in
the form of an electronic file”
3. “receiving, at a
No change; plain and ordinary
programmable logic controller,
meaning
the design model of the object”
4. “extracting from the design
model a plurality of component
dimensions defining a plurality
of components of the object”

No change; plain and ordinary
meaning

5. “identifying a plurality of
intersection and manufacturing
parameters which define in part
the intersection of the two
components”

“identifying a plurality of
intersection and manufacturing
parameters which define in part
the intersection of the two
components and the
manufacturing to be performed”
No change; plain and ordinary
meaning

6. “extracting from the design
model the intersection and
manufacturing parameters”
7. “transmitting the
intersection and manufacturing
parameters and the component
dimensions from the
programmable logic controller
to at least one manufacturing
machine”

No change; plain and ordinary
meaning

37

Claim Language

Court’s Construction

8. “manufacturing, by means of
the at least one manufacturing
machine, the components based
at least partly on the
transmitted component
dimensions and the transmitted
intersection and manufacturing
parameters”

No change; plain and ordinary
meaning

Claims 7 and 14
9. “a receiver associated with
No change; plain and ordinary
the programmable logic
meaning
controller for receiving the
design model of the object”
10. “a processor which is
associated with the
programmable logic controller
and extracts from the design
model a plurality of dimensions
of components which define a
plurality of components of the
object”
11. “wherein the processor
identifies a plurality of
intersection parameters which
define the intersection of the
two components”

12. “wherein the processor
extracts from the design model
the intersection parameters”

“a processor which is
associated with the
programmable logic controller
and extracts, without human
intervention, from the design
model a plurality of dimensions
of components which define a
plurality of components of the
object”
“wherein the processor
associated with the
programmable logic controller
identifies, without human
intervention, a plurality of
intersection parameters which
define the intersection of the
two components”
“wherein the processor
associated with the
programmable logic controller
extracts, without human
intervention, from the design
model the intersection
parameters”

38

Claim Language

Court’s Construction

13. “a transmitter associated
with the processor for
transmitting the intersection
and machining parameters and
the component dimensions from
the programmable logic
controller to the at least one
manufacturing machine”

No change; plain and ordinary
meaning

14. “wherein the at least one
manufacturing machine
manufactures the components
based at least in part on the
transmitted component
dimensions and on the
transmitted intersection and
manufacturing parameters”

No change; plain and ordinary
meaning

15. “computer-readable code for
extracting from the design
model a plurality of component
dimensions which define a
plurality of components of the
object”

No change; plain and ordinary
meaning

16. “computer-readable code for
identifying a plurality of
intersection parameters which
define the intersection of the
two components”

No change; plain and ordinary
meaning

17. “computer-readable code for
extracting from the design
model the intersection and
manufacturing parameters”

No change; plain and ordinary
meaning

39

Claim Language

Court’s Construction

18. “computer-readable code for
transmitting the intersection
and manufacturing parameters
and the component dimensions
from the programmable logic
controller to at least one
manufacturing machine”

No change; plain and ordinary
meaning

19. “computer-readable code for
manufacturing, by means of the
at least one manufacturing
machine, the components based
at least in part on the
transmitted component
dimensions and on the
transmitted parameters.”

No change; plain and ordinary
meaning

40

Appendix B
Independent Claim 1 of the ‘719 Patent claims:
A method for automatic manufacture of an
object, the method comprising the steps of:
[1] creating, at a computing device, a design
model of an object having multiple individual
components, at least two of the individual
components defining an intersection at which the
two components are in contact with one another;
[2] receiving, at a programmable logic controller,
the design model of the object;
[3] storing, at a database unit, the design model
received at the programmable logic controller;
[4] extracting from the design model a plurality
of component dimensions defining a plurality of
components of the object;
[5] identifying a plurality of intersection and
manufacturing parameters which define in part
the intersection of the two components;
[6] extracting from the design model the
intersection and manufacturing parameters;
[7] transmitting the intersection and
manufacturing parameters and the component
dimensions from the programmable logic controller to
at least one manufacturing machine;
[8] and manufacturing, by means of the at least
one manufacturing machine, the components
based at least partly on the transmitted
component dimensions and the transmitted
intersection and manufacturing parameters.
‘719 patent, col. 7:48-8:8 (emphasis added).

41