Webasto Thermo & Comfort North America, Inc. et al v. BesTop, Inc.
Filing
230
OPINION AND ORDER granting 169 Plaintiff's Motion for Summary Judgment of Infringement. Signed by District Judge Paul D. Borman. (DTof)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
WEBASTO THERMO & COMFORT
NORTH AMERICA, INC. and
WEBASTO-EDSCHA CABRIO USA, INC.,
Plaintiffs/Counter-Defendants,
Case No. 16-cv-13456
Paul D. Borman
United States District Judge
v.
BESTOP, INC.,
R. Steven Whalen
United States Magistrate Judge
Defendant/Counter-Plaintiff.
___________________________________/
OPINION AND ORDER GRANTING PLAINTIFFS’ MOTION FOR
SUMMARY JUDGMENT OF INFRINGEMENT (ECF NO. 169)
This action involves Plaintiffs Webasto Thermo & Comfort North America, Inc.
and Webasto-Edscha Cabrio USA, Inc.’s (collectively “Webasto”) claim that
Defendant Bestop, Inc. (“BesTop”) infringes Webasto’s U.S. Patent No. 9,346,342
(“the '342 Patent”), entitled “Vehicle Roof and Roof Opening Mechanism.” Webasto
claims that BesTop’s Accused Product, the Sunrider for Hardtop (“the Sunrider”),
infringes Webasto’s ‘342 patent as embodied in Webasto’s Black Forest ThrowBack
top (“ThrowBack”). BesTop responds that Sunrider does not infringe and that the
claims of the '342 Patent were disclosed in prior art and are therefore unpatentable and
that BesTop created and publicly used the invention claimed in the ‘342 patent before
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Webasto applied for a patent in March, 2015, thereby invalidating the ‘342 patent.
The Court has issued claim construction rulings and the parties have filed and fully
briefed summary judgment and Daubert1 motions.
Now before the Court is
Webasto’s Motion for Summary Judgment of Infringement. The matter was fully
briefed and the Court held a hearing on June 6, 2019. For the reasons that follow, the
Plaintiffs’ motion is GRANTED.
I.
BACKGROUND
The background facts of this litigation are set forth in multiple prior Orders of
this Court and the reader’s knowledge of those facts is presumed. Particular facts, as
specifically relevant to the issues in this summary judgment motion, will be discussed
where appropriate.
II.
LEGAL STANDARD
Summary judgment is appropriate where the moving party demonstrates that
there is no genuine dispute as to any material fact. Celotex Corp. v. Catrett, 477 U.S.
317, 322 (1986); Fed. R. Civ. P. 56(a). “A fact is ‘material’ for purposes of a motion
for summary judgment where proof of that fact ‘would have [the] effect of
establishing or refuting one of the essential elements of a cause of action or defense
asserted by the parties.’” Dekarske v. Fed. Exp. Corp., 294 F.R.D. 68, 77 (E.D. Mich.
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Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993).
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2013) (quoting Kendall v. Hoover Co., 751 F.2d 171, 174 (6th Cir. 1984)). A dispute
is genuine “if the evidence is such that a reasonable jury could return a verdict for the
nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986).
“In deciding a motion for summary judgment, the court must draw all
reasonable inferences in favor of the nonmoving party.” Perry v. Jaguar of Troy, 353
F.3d 510, 513 (6th Cir. 2003) (citing Matsushita Elec. Indus. Co. v. Zenith Radio
Corp., 475 U.S. 574, 587 (1986)). At the same time, the non-movant must produce
enough evidence to allow a reasonable jury to find in his or her favor by a
preponderance of the evidence, Anderson, 477 U.S. at 252, and “[t]he ‘mere
possibility’ of a factual dispute does not suffice to create a triable case.” Combs v. Int’l
Ins. Co., 354 F.3d 568, 576 (6th Cir. 2004) (quoting Gregg v. Allen–Bradley Co., 801
F.2d 859, 863 (6th Cir. 1986)). Instead, “the non-moving party must be able to show
sufficient probative evidence [that] would permit a finding in [his] favor on more than
mere speculation, conjecture, or fantasy.” Arendale v. City of Memphis, 519 F.3d 587,
601 (6th Cir. 2008) (quoting Lewis v. Philip Morris Inc., 355 F.3d 515, 533 (6th Cir.
2004)). “The test is whether the party bearing the burden of proof has presented a jury
question as to each element in the case. The plaintiff must present more than a mere
scintilla of the evidence. To support his or her position, he or she must present
evidence on which the trier of fact could find for the plaintiff.” Davis v. McCourt, 226
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F.3d 506, 511 (6th Cir. 2000) (internal quotation marks and citations omitted). That
evidence must be capable of presentation in a form that would be admissible at trial.
See Alexander v. CareSource, 576 F.3d 551, 558–59 (6th Cir. 2009).
The non-moving party may not rest upon the mere allegations or denials of his
pleadings, but the response, by affidavits or as otherwise provided in Rule 56, must
set forth specific facts which demonstrate that there is a genuine issue for trial. Fed.
R. Civ. P. 56(e). “When the moving party has carried its burden under Rule 56(c), its
opponent must do more than simply show that there is some metaphysical doubt as to
the material facts . . . . Where the record taken as a whole could not lead a rational
trier of fact to find for the nonmoving party, there is no genuine issue for trial.”
Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586–587
(1986) (footnote and internal quotation marks omitted).
III.
ANALYSIS
“[Federal Circuit] precedent is clear: a patent is infringed if a single claim is
infringed.” Grober v. Mako Pdcts., Inc., 686 F.3d 1335, 1344 (Fed. Cir. 2012). See
also CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1236 (Fed. Cir. 2005)
(“[I]nfringement of even a single claim entitles a patentee to damages.”). Here,
BesTop does not dispute that the Accused Product, the Sunrider for Hardtop, meets
every limitation of Claim 6 of the ‘342 Patent except for the final limitation: “Wherein
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the tensioning bow in relation to a vertical longitudinal center plane of the roof is on
each of its two sides connected to the auxiliary tensioning bow via a coupling rod, the
coupling rod being articulated to the auxiliary tensioning bow and to the main
tensioning bow via intermediately positioned hinge points.”
And within this
limitation, the parties are in agreement that the only dispute is over the term
“intermediately positioned.” As counsel for BesTop stated at oral argument on
Webasto’s motion for summary judgment on infringement: “The infringement
question before this Court boils down to whether the hinge point on the accused
product is intermediately positioned or whether it’s somewhere else.” (ECF No. 229,
Transcript of 6/26/19 Hearing on Plaintiffs’ Motion for Summary Judgment (“Hr’g
Tr.”) at 13:3-6.)
Webasto argues that given the Court’s claim construction ruling that this claim
term be given its customary and ordinary meaning, Webasto is entitled to a summary
judgment finding of infringement because there is no genuine issue of material fact
that the hinge points for the coupling rod on the Sunrider are positioned between the
end points of the main and auxiliary tensioning bows and are therefore “intermediately
positioned.” The essence of BesTop’s position is that because the hinge point on the
Sunrider is “closer to the end” (but admittedly not on the end points) of the side arm
of the tensioning bow rather than in the “middle,” it is not “intermediately
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positioned,” and therefore the final limitation of Claim 6 is not met and there is at a
minimum a question of fact whether the Claim is infringed. (6/26/19 Hr’g Tr. 16:1522.)
During claim construction, BesTop advocated for the following construction
of the disputed term:
A “coupling rod” is required. “Hinge Points” for a “coupling rod” must
be disposed in the middle of the side legs of the tensioning bow and in
the middle of the side legs of the auxiliary tensioning bow.
(ECF No. 61, PgID 1636) (emphasis in original). The Special Master rejected this
construction, and recommended that the term be given its customary and ordinary
meaning as understood by a person skilled in the art or, in the alternative, that the
Court adopt Webasto’s proposed “lay dictionary” definition:
The coupling rod is connected to the auxiliary tensioning bow and the
main tensioning bow at hinge points between the end points of the bows.
(ECF No. 148, Special Master’s Report Recommendation at 39, PgID 3268 n.1.)
“‘[T]he ‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan after
reading the entire patent.” Wisconsin Alumni Research Foundation v. Apple Inc., 905
F.3d 1341, 1348 (Fed. Cir. 2018) (quoting Phillips v. AWH Corp., 415 F.3d 1303,
1321 (Fed. Cir. 2005)).
The Special Master expressly rejected BesTop’s argument that the word
“middle” was intended by the Patent Examiner’s ruling that Webasto was required to
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insert the term “intermediately positioned” in order to distinguish the claim term from
prior art, specifically U.S. Patent No. 8,186,740, (“the ‘740 patent” or “Huotari”),
which depicts “tensioning bows and auxiliary tensioning bows with ‘coupling rods []
articulated at the upper ends of the respective bows.’” (Special Master’s Report, 22,
PgID 3251 (quoting Notice of Allowability, ECF No. 49-7 at 3.) (Emphasis in
original.) The Special Master found that there was no language of the ‘342 Patent or
the entire prosecution history that uses the word “middle.” The Special Master
pointed out that if the examiner had meant to limit the claim to the “middle” he would
have used the word “middle” but he did not. (Report and Recommendation at 34,
PgID 3265.) The Special Master found that BesTop’s proposed construction limiting
the claim scope to the “middle” position of the tensioning bows was based on a
“convoluted interpretation of the file history.”2
BesTop did not object to the Special Master’s claim construction
recommendation of this claim term. And BesTop has not denied that narrowing the
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The Federal Circuit has “designated the prosecution history as part of the intrinsic
evidence, including ‘the prior art cited during the examination of the patent.’” E.I. du
Pont De Nemours & Co. v. Unifrax I LLC, 921 F.3d 1060, 1068 (Fed. Cir. 2019)
(quoting Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005)). “The
prosecution history ‘contains the entire record of the proceedings in the Patent Office
from the first application papers to the issued patent.’” Id. (quoting Autogiro Co. of
Am. v. United States, 384 F.2d 391, 398 (Ct. Cl. 1967) and citing Phillips, 415 F.3d
at 1317).
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construction to “middle” would read out a preferred embodiment as the ‘342 patent
depicts hinge points for a coupling rod that are not in the middle of both the auxiliary
and main tensioning bows – the hinge point on the side of the main tensioning bow
is quite clearly not in the middle but nearer to the base. (‘342 Patent Figure 13.)
“‘[A] claim construction that excludes a preferred embodiment . . . is rarely, if ever
correct and would require highly persuasive evidentiary support.’” Epos Technologies
Ltd. v. Pegasus Technologies Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014) (quoting
Anchor Walls Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed.
Cir. 2003)). See also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed.
Cir. 1996) (observing that a construction that would read out a preferred embodiment
“would require highly persuasive evidentiary support”). No such “highly persuasive”
evidence for a “middle” construction has been presented by BesTop here. As the
Special Master observed: “BesTop does not offer a shred of credible evidence in
support of its proposed construction.” (Special Master’s Report 35, PgID 3264.)
BesTop did not object to any aspect of the Special Master’s claim construction
of this term. Thus, any suggestion by BesTop that the hinge points must be located in
the “middle” of the tensioning bow in order to infringe Claim 6 of the ‘342 was
clearly rejected by the Special Master in his Report and Recommendation, which this
Court adopted without objection by BesTop or Webasto. The Special Master did
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suggest that if the Court felt that further lay definition taken from the dictionary was
necessary, the alternative definition proposed by Webasto, i.e. “the coupling rod is
connected to the auxiliary tensioning bow and the main tensioning bow at hinge points
between the end points of the bows,” was a good definition. (Id. at 39 n.1, PgID
3268.)
In continuing to argue that a definition of “middle” could be applied to the
claim term “intermediately positioned,” BesTop ignores this Court’s claim
construction ruling which held, without objection from either party, that the term
“intermediately positioned” be given its plain and ordinary meaning as understood by
a person skilled in the art (“a POSITA”) and, if further specificity was required, the
term be given the following “lay definition, taken from the dictionary:” “The
coupling rod is connected to the auxiliary tensioning bow and the main tensioning
bow at hinge points between the end points of the bows.” (Id., adopted at ECF No.
152, Order Adopting Report and Recommendation.) Despite the clarity of the Court’s
Orders, BesTop suggests that the Court should consult the dictionary and present the
jury (under the guise of the issue of infringement) with a host of different definitions
for the term “intermediate,” including “in the middle” which has been expressly
rejected by the Court, and let the jury decide what is meant by “intermediately
positioned.” It is axiomatic that claim construction is an issue for the Court, not the
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jury, and this Court’s claim construction ruling is clear. As the Federal Circuit has
repeatedly observed, “‘[t]he main problem with elevating the dictionary to such
prominence is that it focuses the inquiry on the abstract meaning of words rather than
on the meaning of claim limitations within the context of the patent.’” Innogenetics,
N.V. v. Abbott Laboratories, 512 F.3d 1363, 1371 (Fed. Cir. 2008) (quoting Phillips,
415 F.3d at 1321).
This Court’s claim construction ruling focused the inquiry on the meaning of
this claim term within the context of the patent, the specifications, and the prosecution
history, and concluded that the term would have a customary and ordinary meaning
to a POSITA after reading the entire patent. The Court’s claim construction ruling also
suggested an alternative “lay definition” that would comport with that contextual
meaning, if additional specificity were required: “the coupling rod is connected to the
auxiliary tensioning bow and the main tensioning bow at hinge points between the end
points of the bows.” (Special Master’s Report at 39 n.1, PgID 3268.) Further
consultation of the dictionary as suggested by BesTop is neither appropriate nor
necessary.
The Special Master ruled, and this Court adopted the ruling, that the claim term
“intermediately positioned” should be given its customary and ordinary as understood
by a POSITA. BesTop has offered no expert opinion from a POSITA on the issue of
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infringement and none of its lay witnesses has been proffered or would be permitted
now to offer such an opinion in this case. The only evidence in this summary
judgment record from a POSITA regarding the meaning of the term “intermediately
positioned” is the opinion of Webasto’s infringement expert, Dr. Stein, who explains
in his Report that the Sunrider infringes as a matter of law because its hinge points are
positioned somewhere between the end points of the sides of the tensioning bows:
[T]he crux of the parties’ dispute appears to be over the term
“intermediately positioned.” Based upon my review of the materials
referenced above, I agree with Webasto that “intermediately
positioned”simply means positioned between the end points of the bows.
This is actually supported by BesTop’s own claim construction
arguments, which show how prior art systems located the hinge points
at the ends of the side legs, as opposed to between the end points. I
disagree with BesTop’s proposed construction, because it is clear from
the figures of the ‘342 patent that the coupling rod is not connected to the
middle of both the tensioning bow and the auxiliary tensioning bow. It
is connected to the tensioning bow away from the middle. I understand
that the figures show a “preferred embodiment” of the patented
invention, and that any of the construction of the claims that would read
the preferred embodiment out of the claim scope is presumptively
incorrect. . . . My opinion also takes into account the prosecution history
of the ‘342 Patent. Nothing in the prosecution history of the patent
appears to define the term “intermediately positioned” in a way that
would deviate from the ordinary meaning of the term.
(ECF No. 171-12, Oct. 2, 2018 Expert Report of Jeffrey L. Stein Regarding BesTop’s
Infringement of the U.S. Patent No. 9,346,342 at 21-22, PgID 5148-49.)
Dr. Stein offers the opinion that the Sunrider infringes, inter alia, Claim 6 of
the ‘342. Referring specifically to Figures 4, 6, and 7 of the ‘888 Patent, Dr. Stein
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opines:
In the ‘888 Patent (the Sunrider), and as shown in figure 4, above, the
coupling rod is referred to as a “second link” and is indicated by the
number 42 in the figures. The ‘888 Patent further states:
The second link 42 is pivotally connected to the first link
40 at a third pivot point 48. The other end of the second
link 42 is pivotally connected to the third link 44 at a fourth
pivot point 50.
‘888 Patent, col. 4 ll. 25-28. In other words, the coupling rod, referred
to as second link in the ‘888 Patent, is connected to the side arms of the
tensioning bow and the auxiliary tensioning bow via hinge points. As
shown in figures 4, 6, and 7 above, the hinge points are intermediately
positioned because they are placed between the end points of the
tensioning bows. Particularly with respect to figure 4, it can be seen that
the auxiliary tensioning bow continues beyond the hinge point
designated by the number 50, and the end point of the tensioning bow is
concealed by the fabric covering. The hinge points are intermediately
positioned because they are placed between the end points of the
tensioning bows as shown, for example, in Figs. 7, 9, 10 and 13 of the
‘888 Patent where the coupler (second link 42) is shown pivotally
connecting to the tensioning bows at the pivot point 48 in first link, 40
and the pivot point 50 in second link 42. Pivot points 48 and 50 are
clearly intermediately positioned along first and second link arms,
respectively and intermediate to the ends of their respective links.
Stein Infringement Report 37-38, ¶ 74, PgID 5164-65.
During oral argument on Plaintiffs’ motion for summary judgment, BesTop
suggested that the question of infringement must await a trial because the actual
physical Accused Product has not been examined by Webasto’s expert or by this
Court. But BesTop has never questioned the authenticity or accuracy of any of the
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specifications, figures, or other depictions of the Accused Product on which
Webasto’s experts, and indeed all parties and witnesses, have relied.
BesTop has not offered an expert on non-infringement. BesTop takes the
position that expert testimony is not necessary to inform the jury on the term
“intermediately positioned.” But in fact BesTop has not proffered any evidence,
expert or otherwise, from a POSITA to rebut Dr. Stein’s opinions. BesTop offers only
attorney argument which is plainly insufficient to create a genuine issue of material
fact for trial. “[M]ere[] attorney argument lacking evidentiary support” is not
evidence. Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332 (Fed.
Cir. 2009) (citing Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed.
Cir. 2009) (“noting that ‘unsworn attorney argument . . . is not evidence’”). BesTop
was required to meet Webasto’s motion for summary judgment on infringement,
which was supported by record evidence and by the unrebutted opinion of Webasto’s
expert, with evidence of evidentiary quality creating a genuine issue of material fact
for trial. BesTop “provides no expert opinions on how a person ordinarily skilled in
the art would have a different understanding of the claim limitation” than Dr. Stein has
provided and BesTop has not contested Dr. Stein’s opinions through a Daubert
challenge. Innogenetics, 512 F.3d at 1370. Indeed, BesTop has come forward with
no “evidence” in response to Webasto’s motion and proffers only attorney argument
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that largely ignores this Court’s claim construction rulings.
Based on this summary judgment record, viewing the facts and all reasonable
inferences in favor of BesTop, the Court finds that no rational juror could conclude
that the hinge points of the coupling rod on the tensioning bows of the Accused
Product are not positioned between the end points of the tensioning bows.
Accordingly, Webasto has established that there is no genuine issue of material fact
that the hinge points of the Accused Product are “intermediately positioned” and
Webasto is entitled to a finding of infringement of Claim 6 or the ‘342 as a matter of
law.
IV.
CONCLUSION
For the foregoing reasons, Webasto’s Motion for Summary Judgment of
Infringement is GRANTED.
IT IS SO ORDERED.
s/Paul D. Borman
PAUL D. BORMAN
UNITED STATES DISTRICT JUDGE
Dated: July 12, 2019
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