Deflecto, LLC v. Dundas*Jafine Inc.

Filing 177

ORDER AND OPINION GRANTING IN PART AND DENYING IN PART DEFENDANT'S MOTIONS FOR SUMMARY JUDGMENT. Signed on 11/4/15 by District Judge Ortrie D. Smith. (Re: 112 , 115 , 116 , 117 , 118 , and 134 motions.) (Matthes, Renea)

IN THE UNITED STATES DISTRICT COURT FOR THE
WESTERN DISTRICT OF MISSOURI
WESTERN DIVISION
DEFLECTO, LLC,

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Plaintiff,
vs.
DUNDAS *JAFINE INC.,
Defendant.

Case No. 13-0116-CV-W-ODS

ORDER AND OPINION GRANTING IN PART AND DENYING IN PART
DEFENDANT’S MOTIONS FOR SUMMARY JUDGMENT
Pending are Defendant Dundas Jafine Inc.’s (“Defendant”) six motions for
summary judgment. Doc. #112, #115, #116, #117, #118, #134. The motions are
granted in part and denied in part.

I.

BACKGROUND

This is a patent infringement suit. Plaintiff Deflecto LLC (“Deflecto”) is a
manufacturer, seller, and distributor of dryer vents and venting-related products. It
owns two patents: (1) the “Exhaust Vent with External Guard,” Patent No. 5,722,181
(“the ‘181 Patent”), and (2) the “Hooded Exhaust Vent,” Patent No. 5,916,023 (“the ‘023
Patent”). Defendant Dundas *Jafine Inc. (“Dundas Jafine”) also manufactures and sells
dryer vents, including the ProMax, Modified ProMax, and ProGard (the “Accused
Products”).
Deflecto filed the instant action on February 6, 2013. On June 25, 2013, it filed
its Second Amended Complaint, which raises four counts. Counts I and II allege that
Dundas Jafine’s dryer vents infringe upon the ‘023 and ‘181 patents. Count III raises a
Lanham Act claim, in which Deflecto alleges Dundas Jafine is committing acts of unfair
competition and deceptive advertising by displaying illustrations and photos on the
Modified ProMax packaging that are inconsistent with the visual aspects of the Product.
Count IV asserts a common law unfair competition claim.

II.

LEGAL STANDARD

A moving party is entitled to summary judgment on a claim only if there is a
showing that “there is no genuine issue as to any material fact and that the moving party
is entitled to judgment as a matter of law.” See generally Williams v. City of St. Louis,
783 F.2d 114, 115 (8th Cir. 1986). “[W]hile the materiality determination rests on the
substantive law, it is the substantive law’s identification of which facts are critical and
which facts are irrelevant that governs.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
248 (1986). Thus, “[o]nly disputes over facts that might affect the outcome of the suit
under the governing law will properly preclude the entry of summary judgment.”
Wierman v. Casey’s Gen. Stores, 638 F.3d 984, 993 (8th Cir. 2011) (quotation omitted).
In applying this standard, the Court must view the evidence in the light most favorable to
the non-moving party, giving the party the benefit of all inferences that may be
reasonably drawn from the evidence. Matsushita Elec. Indus. Co. v. Zenith Radio
Corp., 475 U.S. 574, 588-89 (1986); Tyler v. Harper, 744 F.2d 653, 655 (8th Cir. 1984),
cert. denied, 470 U.S. 1057 (1985). However, a party opposing a motion for summary
judgment “may not rest upon the mere allegations or denials of the…pleadings, but…by
affidavits or as otherwise provided in [Rule 56], must set forth specific facts showing that
there is a genuine issue for trial.” Fed. R. Civ. P. 56(e).
III.

DISCUSSION1

A. Invalidity of the ‘181 and ‘023 Patents
Defendant asserts that Plaintiff’s ‘181 and ‘023 patents are invalid for a variety of
reasons. Patents are presumed to be valid. U.S. Gypsum Co. v. Nat’l Gypsum Co., 74
F.3d 1209, 1212 (Fed Cir. 1996). Defendant must demonstrate by clear and convincing
evidence that a patent is invalid. Id.

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Plaintiff renews its objection to Defendant’s filing of six separate summary judgment motions.
The Court is not pleased that Defendant did not seek leave to file separate motions. Nonetheless, the
Court overrules Plaintiff’s objection.

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1. Obviousness
Defendant claims Plaintiff’s ‘181 and ‘023 patents are invalid because they were
obvious in light of prior art. A patent is invalid due to obviousness when “the difference
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 ordinary skill in the art to which said subject matter pertains.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S 398, 406 (2007). “Obviousness is a question of law
based on underlying factual determinations,” which include, “(1) the scope and content
of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; (4) the extent of any proffered objective indicia of
nonobviousness, sometimes termed secondary considerations.” Rockwell Int’l Corp. v.
U.S., 147 F.3d 1358, 1362 (Fed. Cir. 1998). Secondary considerations such as
“commercial success, long felt but unsolved needs, failure of others, etc., might be
utilized to give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” KSR Int’l Co., 550 U.S. at 406.
“A flexible teaching, suggestion, or motivation test can be useful to prevent
hindsight when determining whether a combination of elements known in the art would
have been obvious.” Norgren Inc. v. Int’l Trade Com’n, 699 F.3d 1317, 1322 (Fed. Cir.
2012). The “teaching, suggestion, or motivation” test provides that “a patent claim is
only proved obvious if the prior art, the problem’s nature, or the knowledge of a person
having ordinary skill in the art reveals some motivation or suggestion to combine the
prior art teachings.” KSR Int’l Co., 550 U.S. at 399. However, “’[t]he obviousness
analysis cannot be confined’ to a rigid application of the teaching, suggestion, or
motivation test.” Norgren Inc., 699 F.3d, at 1322-23 (citing KSR Int’l Co. v. Teleflex Inc.,
550 U.S 398, 419 (2007)). Rather, “the common sense and ordinary creativity of a
person having ordinary skill in the art are also part of the analysis.” Id.
Here, Defendant fails to demonstrate whether a person having ordinary skill in
the art would find the patent obvious. While Defendant frequently states in its opening
briefs what would have been obvious or well-known to one of ordinary skill in the art,
Defendant does not provide any evidentiary support for this argument. Apparently
recognizing this mistake, Defendant makes occasional citations to its expert, Dr. Terry
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Faddis (“Faddis”), in its Reply Briefs as one of ordinary skill in the art. “If a party fails to
properly support an assertion of fact…the court may…give [the party] an opportunity to
properly support or address the fact.” Fed. R. Civ. P. 56(c) (emphasis added). The
Court declines to give Defendant this opportunity. It would be unfair to allow Defendant
to omit supporting facts in its opening briefs, then to permit Defendant to correct its
numerous errors in its Reply Briefs.
Consequently, Defendant has failed to satisfy its burden to provide “clear and
convincing” evidence that the patents are invalid. Summary judgment is denied on this
issue.

2. Written Description Requirement
Defendant contends the ‘181 and ‘023 patents are invalid because they fail to
satisfy the written description requirement.
Pursuant to 35 U.S.C. §112(a), a patent’s specification must contain a written
description of the invention. See Carnegie Mellon Univ. v. Hoffmann-La Roche Inc.,
541 F.3d 1115, 1121 (Fed. Cir. 2008). “A patentee can lawfully claim only what he has
invented or described, and if he claims more, his patent is void.” Id. at 1122 (internal
quotations and citations omitted). To satisfy the written description requirement, a
patentee “must convey with reasonable clarity to those skilled in the art…that he or she
was in possession of the invention…and demonstrate that by disclosure in the
specification of the patent.” Id.; see also LizardTech, Inc. v. Earth Res. Mapping, Inc.,
424 F.3d 1336, 1344-45 (Fed. Cir. 2005). A patentee does not have “to describe
exactly the subject matter claimed.” Union Oil Co. of California v. Atl. Richfield Co., 208
F.3d 989, 997 (Fed. Cir. 2000). Nor is it necessary for the patentee “to spell out every
detail of the invention in the specification; only enough must be included to convince a
person of skill in the art that the inventor possessed the invention and to enable such a
person to make and use the invention without undue experimentation.” LizardTech, Inc.,
424 F.3d at 1345. Finally, “a broad claim is invalid when the entirety of the specification
clearly indicates that the invention is of a much narrower scope.” Cooper Cameron
Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1323 (Fed. Cir. 2002).

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Here, Defendant fails to demonstrate what the patents’ specifications would
convey to someone with ordinary skill in the art. Defendant only cites occasionally to its
expert, Faddis, as one of ordinary skill in the art in its Reply Suggestions in Support of
its Motion for Summary Judgment of Invalidity of the ‘181 Patent. Doc. #159. Again,
the Court exercises its discretion and declines to give Defendant the opportunity to
support this assertion in its Reply Suggestions.
Defendant also cites to Marshall Honeyman (“Honeyman”) in support of its
argument, but the Court has excluded Honeyman’s testimony to the extent he opines on
invalidity issues that require the analysis of one of ordinary skill in the art. Doc. #174,
see also Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008).
Thus, Honeyman’s testimony does not provide any support for Defendant’s position.
Defendant has not met its burden to provide “clear and convincing” evidence that
the patents are invalid, and summary judgment is denied on this issue.

3. Public Use Bar
Defendant maintains Plaintiff’s ‘023 patent is invalid because it was publicly
disclosed more than one year prior to the critical date of the patent.
A person is entitled to a patent unless the invention was in public use more than
one year prior to the date of the application for the patent. 35 U.S.C. § 102; see also
Netscape Comms. Corp. v. Konrad, 295 F.3d 1315, 1319-20 (Fed. Cir. 2002). “A public
use includes any public use of the claimed invention by a person other than the inventor
who is under no limitation, restriction or obligation of secrecy to the inventor.” Clock
Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1325 (Fed. Cir. 2009) (internal
quotations and citations omitted). For a use to be considered “public” within the
meaning of section 102(b), the public use must be made with all claim limitations. Id. A
court evaluates the totality of the circumstances to determine if there was “a public use
within the meaning of section 102(b).” Netscape Comms. Corp., 295 F.3d at 1320.
Some of these circumstances include “the nature of the activity that occurred in public;
the public access to and knowledge of the public use; whether there was any
confidentiality obligation imposed on persons who observed the use; whether persons
other than the inventor performed the testing; the number of tests; the length of the test
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period in relation to tests of similar devices; and whether the inventor received payment
for the testing.” Id.
Defendant argues Plaintiff publicly disclosed the ‘023 patent because Plaintiff
requested a bid from a mold maker which included drawings of the ‘023 patent.
Defendant also argues that nothing on the bid request documents indicated any
confidentially obligations. Doc. #115. This is the extent of Defendant’s argument. This
single argument is not a sufficient analysis of “the totality of the circumstances”, and
thus, Defendant has failed to provide “clear and convincing” evidence that the patent is
invalid. Summary judgment is denied on this issue.
B. Non-Infringement of the ‘181 and ‘023 Patents2
Defendant asserts that its Accused Products do not infringe Plaintiff’s ‘181 and
‘023 patents. “The determination of infringement requires a two-step analysis: (1)
proper construction of the claim to determine its scope and meaning, and (2) a
comparison of the properly construed claim to the accused device or process.” Conroy
v. Reebok Int’l, Ltd., 14 F.3d 1570, 1572 (Fed. Cir. 1994).
The first step involves claim construction, which is the court’s determination of
the scope and meaning of the patent claims asserted. See Cybor Corp. v. FAS Techs.,
Inc., 138 F.3d 1448, 1454 (Fed Cir. 1998). Generally, a claim’s words are given their
ordinary and customary meaning – that is, “the meaning a term would have to a person
of ordinary skill in the art after reviewing the intrinsic record at the time of the invention.”
O2 Micro Intern. Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir.
2008). In some instances, the ordinary meaning of claim language is “readily apparent”
and claim construction merely requires applying “the widely accepted meaning of
commonly understood words.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005) (en banc). In those situations, a dictionary can be helpful for claim construction.
Id. However, in other cases, determining the ordinary and customary meaning of claim
language requires the court to look at three sources: (1) the claims; (2) the specification;

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The Court has provided an Appendix at the end of this Order summarizing its rulings regarding
non-infringement of the ‘181 and ‘023 Patents.

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and (3) the prosecution history. Id.; Markman v. Westview Instruments, Inc., 52 F.3d
967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
The claims themselves provide “substantial guidance” to the meaning of claim
terms. Phillips, 415 F.3d at 1314. The context of the surrounding words of a claim
should be considered. ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir.
2003). The claims themselves are part of a “fully integrated written instrument” that
consists of a specification and concludes with the claims. Phillips, 415 F.3d at 1315
(quoting Markman, 52 F.3d at 978). “Thus, the specification is always highly relevant to
the claim construction analysis. Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996).
Where the intrinsic record is ambiguous, and when necessary, [a district court
may] rely on extrinsic evidence, which “consists of all evidence external to the patent
and prosecution history, including expert and inventory testimony, dictionaries, and
learned treatises.” Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711
F.3d 1348, 1360 (Fed. Cir. 2013) (quoting Phillips, 415 F.3d at 1312). However,
extrinsic evidence is less reliable than the patent and its prosecution history in
determining the meaning of claim terms. Phillips, 415 F.3d at 1318. Nevertheless,
extrinsic evidence may be considered, but only to assist the court in understanding the
patent; it cannot be used to vary or contradict the claim terms. Markman, 52 F.3d at
981.
With respect to the second step, “the patentee must prove that the accused
device embodies every limitation in the claim, either literally” or under the Doctrine of
Equivalents. Id. at 1573. “Literal infringement of a claim requires that every limitation
recited in the claim appear in the accused device, i.e., that the properly construed claim
reads on the accused device exactly.” Overhead Door Corp. v. Chamberlain Grp., Inc.,
194 F.3d 1261, 1269 (Fed. Cir. 1999). “The doctrine of equivalents requires that the
accused product contain each limitation of the claim or its equivalent.” Id. Equivalence
can be determined in one of two ways. First, the insubstantial difference test provides,
“an element in the accused device is equivalent to a claim limitation if the only
differences between the two are insubstantial.” Voda v. Cordis Corp., 536 F.3d 1311,
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1326 (Fed. Cir. 2008) (internal quotations and citations omitted). Second, the “functionway-result” test provides that “an element in the accused device is equivalent to a claim
limitation if it performs substantially the same function in substantially the same way to
obtain substantially the same result.” Id. The function-way-result test is often used for
mechanical devices. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40
(1997). “Regardless how the equivalence test is articulated, the doctrine of equivalents
must be applied to individual limitations of the claim, not to the invention as a whole.”
Mirror Worlds, LLC v. Apple Inc., 692 F.3d 1351, 1357 (Fed. Cir. 2012).
1. ‘181 Patent
a. Second Amended Complaint
Defendant asserts Plaintiff’s Second Amended Complaint only accuses the
ProGard of infringing the ‘181 Patent; and thus, Plaintiff cannot now assert that the
Original ProMax and the Modified ProMax also infringe the ‘181 Patent. The Court finds
Defendant’s argument unpersuasive. Plaintiff listed the Original ProMax and Modified
ProMax in its asserted claim chart. Doc. #154-22. Plaintiff included both products in its
Preliminary Injunction briefing. Doc. #24. Finally, both Defendant’s and Plaintiff’s
experts addressed the Original ProMax and Modified ProMax in their reports. Doc.
#107-7, Doc. #109-2. Defendant has been fully aware that Plaintiff was asserting these
claims. Thus, the pleadings account for both the Original ProMax and the Modified
ProMax.
b. ProGard Claims 1 and 2
Defendant asserts that the ProGard does not infringe claims 1 and 2 of the ‘181
Patent. Claims 1 and 2 require an exhaust vent guard with an upper hood portion which
has walls that are “of a solid nature in order to provide a suitable barrier to moisture and
debris.” ‘181 Patent, Col. 7, II. 40-42. In its April 16, 2014, Claim Construction Order,
the Court construed the term “solid nature” to mean essentially solid. Doc. #92, page 5.
The Court noted that upper hood’s walls did not need to provide “an absolute bar to
moisture and debris.” Id.

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Defendant argues that the ProGard does not have an upper hood portion with
essentially solid walls, because the ProGard upper hood has “a grid-like structure on
both sidewalls that wrap over the top wall.” Doc. #117, page 10. Defendant contends
that this grid-like structure prevents the upper hood from providing a suitable barrier to
moisture and debris. However, the Court’s examination of the ProGard indicates a
reasonable juror could find that the ProGard infringes claims 1 and 2 of the ‘181 Patent.
Accordingly, the Court denies summary judgment as to these claims.
c. ProGard Claims 10 and 11
Defendant maintains the ProGard does not infringe claims 10 and 11 of the ‘181
Patent. These claims require an exhaust vent guard to have an upper hood portion
which is “constructed and arranged to provide a weather barrier.” ‘181 Patent, Col. 8, II.
28-30. In its April 16, 2014, Claim Construction Order, the Court construed the term
“weather barrier” to mean “an object that provides protection against the natural
elements, e.g., rain and snow.” Doc. #92, page 6. The Court noted that the upper hood
was not required to be “an absolute or complete barrier, or…an object in which the
elements cannot pass through.” Id.
Defendant argues that given the Court’s construction, claims 10 and 11 require
the upper hood portion to act like an umbrella, and that the ProGard’s upper hood
portion does not act like an umbrella. Defendant is essentially asking the Court to
provide a new construction for the term “weather barrier,” which the Court declines to
do.
Here, the Court’s examination of the ProGard indicates a reasonable juror could
find that the ProGard infringes claims 10 and 11 of the ‘181 Patent. Accordingly, the
Court denies summary judgment as to these claims.
d. Original ProMax and Modified ProMax Claims 1 and 2 Preamble
Defendant argues the preamble to claim 1 of Patent ‘181 is limiting; however,
Defendant provides no analysis or legal authority for this argument. Defendant’s only
support for this position is the testimony of Honeyman, but the Court excluded
Honeyman’s testimony regarding technical matters.
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Regardless, a preamble is considered limiting when “it recites essential structure
or steps.” Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808
(Fed. Cir. 2002). A preamble is not considered limiting when the claim body “defines a
structurally complete invention” and “the preamble only [] state[s] a purpose or intended
use for the invention.” Id. (citations and quotations omitted).
Here, claim 1’s preamble states “an exhaust vent guard constructed and
arranged to be mounted in a vertical orientation.” ‘181 Patent, Col. 7, II. 33-35. This
clause in the preamble does not describe the intended use or purpose of the invention.
This is particularly clear when compared to the second clause of the preamble, which
does describe an intended use or purpose of the invention by stating, “an exhaust vent
guard…for protecting the exit area of an air vent conduit…” ‘181 Patent, Col. 7, II. 3335. Additionally, the “vertical orientation” requirement recites “essential structure” of the
invention. Thus, the Court finds that the phrase “an exhaust vent guard constructed and
arranged to be mounted in a vertical orientation” does create a limitation in the ‘181
Patent. However, the Court’s examination of the Original ProMax and the Modified
ProMax indicates a reasonable juror could find that these devices infringe claims 1 and
2 of the ‘181 Patent. Thus, the Court denies summary judgment as to these claims.
e. Original ProMax and Modified ProMax Claims 1 and 2 Upper Hood Portion
Defendant asserts the Original ProMax and Modified ProMax do not infringe
claims 1 and 2 of the ‘181 Patent. Claims 1 and 2 require “an exhaust vent guard”
comprised of:
an upper hood portion including a top wall, a pair of oppositely-disposed
sidewalls, and a front wall, said top wall and the pair of side walls converging
in the direction of said front wall, each of said hood portion walls being of a
solid nature in order to provide a suitable barrier to moisture and debris; and
a lower cage portion including a bottom wall, a pair of oppositely-disposed
sidewalls, and a front wall, each of said four cage portion walls being
constructed and arranged with a plurality of openings for permitting the free
flow of air through each of said four cage portion walls, the size of each
opening of said plurality of openings being small enough to prevent the
nesting of brids inside of said exhaust vent guard.

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‘181 Patent, Col. 7, ll. 33-50. The Court did not construe this claim in its April 16, 2014,
Claim Construction Order. Defendant maintains the claim language requires the upper
hood portion and lower cage portion to be integral. Plaintiff argues these claims permit
the upper hood portion and the lower cage portion of an exhaust vent guard to be
separate pieces. In support of this position, Plaintiff relies primarily on Honeyman’s
excluded testimony and argues that a construction which prohibits the upper hood
portion and the lower cage portion from being separate pieces improperly reads
limitations into the claims. The Court finds Plaintiff’s position unpersuasive.
When construing claims, a patent’s specification is “highly relevant.” Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Here, the
specification repeatedly refers to the upper hood portion and the lower cage portion of
the exhaust vent guard as being integral. See e.g., ‘181 Patent, Abstract; Col. 2, ll. 1516. This repeated use of “integral” militates toward the conclusion that the upper hood
portion and the lower cage portion cannot be separate pieces. Further, the actual claim
language leads to the same result. Claim 1 requires an exhaust vent guard comprised
of “an upper hood portion” and a “lower cage portion.” The ordinary and plain meaning
of this language indicates that the exhaust vent guard is a single piece, a portion of
which is an upper hood and a portion of which is a lower cage. While the word “integral”
is not used in the claim, a common sense reading of the claim language leads to only
one conclusion: that the exhaust vent guard’s upper hood portion and lower cage
portion must be integral; they cannot be separate pieces.
Defendant argues that the vent guard of the Original ProMax and Modified
ProMax does not have both an upper hood portion and a lower cage portion. The Court
agrees. The Court’s review of the Original ProMax and Modified ProMax reveals that
their guards do not have an upper hood portion. Doc. #117, SOF 9, 11.
With respect to infringement under the doctrine of equivalents, the Federal Circuit
has determined that a party need only file “summary judgment motion stating that the
patentee has no evidence of infringement and pointing to the specific ways in which
accused systems [do] not meet the claim limitations.” Exigent Tech., Inc. v. Atrana
Solutions, Inc., 442 F.3d 1301, 1308-09 (Fed. Cir. 2006). Further, the Federal Circuit
has held “the evidence of equivalence must be from the perspective of someone skilled
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in the art, for example ‘through testimony of experts or others versed in the technology;
by documents, including texts and treatises; and, of course, by the disclosures of the
prior art.’” AquaTex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320, 1329 (Fed. Cir.
2007) (internal citation omitted). Additionally, the Federal Circuit found that while expert
testimony is not required to establish infringement under the doctrine of equivalents,
“the difficulties and complexities of the doctrine require that evidence be presented to
the jury or other fact-finder through the particularized testimony of a person of ordinary
skill in the art, typically a qualified expert, who (on a limitation-by-limitation basis)
describes the claim limitations and establishes that those skilled in the art would
recognize the equivalents.” Id.
Here, Defendant has pointed to specific ways in which the Original ProMax and
Modified ProMax do not infringe the ‘181 patent and has asserted that Plaintiff has no
evidence to prove otherwise. In response, Plaintiff marshalled Honeyman’s testimony
to support its position that the Original and Modified ProMax’s do infringe the ‘181
patent. But the Court has excluded Honeyman’s testimony regarding technical matters
such as infringement. Thus, Plaintiff has presented no evidence in its response to
Defendant’s summary judgment motion that the Original ProMax and Modified ProMax
infringe claims 1 and 2 of the ‘181 Patent. Accordingly, the Court grants summary
judgment in favor of Defendant as to these claims.
f. Original ProMax and Modified ProMax Claims 1 and 2 Side Walls Converge
Defendant maintains the Original ProMax and Modified ProMax do not infringe
on claims 1 and 2 of the ‘181 Patent. Claims 1 and 2 require the upper hood portion of
the invention to have a “top wall and the pair of side walls converging in the direction of
said front wall.” ‘181 Patent, Col. 7, II. 36-39. In its Claim Construction Order, the Court
construed the term “converging” to mean “coming together.” Doc. #92, page 4.
Defendant argues that the side walls of the Original and Modified ProMax’s do
not come together. The Court agrees. The Court’s inspection of the Original ProMax
and Modified ProMax reveals that their side walls are parallel and do not come together.
Doc. #117, SOF 9, 11.

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With respect to the doctrine of equivalents, Defendant has pointed out specific
ways in which the Original ProMax and the Modified ProMax do not infringe the ‘181
Patent, and the only evidence Plaintiff has presented in opposition is Honeyman’s
excluded testimony. Accordingly, the Court grants summary judgment in favor of
Defendant as to these claims.
g. Original ProMax and Modified ProMax Claims 10 and 11 Upper Hood Portion
Defendant claims that the Original and Modified ProMax’s do not infringe claims
10 and 11 of the ‘181 Patent. Claims 10 and 11 require:
a snap-on exhaust vent guard which is received by said vent frame, said exhaust
vent guard including an upper hood portion constructed and arranged to provide
a weather barrier and a lower cage portion constructed and arranged to permit
the free flow of air through said lower cage portion and to prevent the nesting of
birds inside of said exhaust vent guard.
‘181 Patent, Col. 8, ll. 27-33. The Court did not construe this claim in its April 16, 2014,
Claim Construction Order. Defendant argues that the claim requires the exhaust vent
guard’s upper hood portion and lower cage portion to be integral. Plaintiff argues that
the claim language allows the upper hood portion and lower cage portion to be
separate. In support of its argument, Plaintiff relies on Honeyman’s excluded testimony
and notes that the term “integral” is not used in the claim language. Plaintiff also
contends that while other embodiments of the invention are described as being
“unitary,” claim 10 embodiments are never described as such; nor does claim 10 use
the word “unitary.” The Court finds Plaintiff’s position is unpersuasive.
As previously discussed, a patent’s specification is “highly relevant” in construing
claims. Vitronics Corp., 90 F.3d at 1582. Here, the patent specification refers to the
upper hood portion and the lower cage portion as being integral. See, ‘181 Patent,
Abstract. Further, the specification states that embodiments of claim 1 and
embodiments of claim 10 are “virtually identical” in “the general design concept of guard
involving the solid hood, cage, and the tapered sides…” ‘181 Patent, Col. 6, ll. 46-50.
The main difference between the two types of embodiments is their intended use, in
that, claim 1 embodiments “may be used over any existing vent hood,” whereas claim
10 embodiments are “designed for a snap-fit onto frame.” ‘181 Patent, Col. 6, ll. 50-58.
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The specification describes embodiments of claim 1 as having an integral upper hood
portion and lower cage portion; and thus, the specification indicates that embodiments
of claim 10 would have an “identical” requirement. ‘181 Patent, Col. 2, ll. 15-16. This
leads to the conclusion that the upper hood portion and the lower cage portion cannot
be separate pieces.
Additionally, the language of claim 10 leads to the same result. Claim 10
requires an “exhaust vent guard including an upper hood portion constructed and
arranged to provide a weather barrier and a lower cage portion constructed and
arranged to permit the free flow of air through said lower cage portion and to prevent the
nesting of birds inside of said exhaust vent guard.” ‘181 Patent, Col. 8, ll. 27-33. While
the term “unitary” is not used in the claim, the Court finds that a common sense reading
of the claim language leads to only one conclusion: that the exhaust vent guard’s upper
hood portion and lower cage portion must be integral; they cannot be separate pieces.
Defendant argues that the Original ProMax and Modified ProMax vent guard
does not have both an upper hood portion and lower cage portion. The Court’s review
of these devices indicates Defendant is correct. Doc. #117, SOF 9, 11.
With respect to the doctrine of equivalents, Defendant has pointed out specific
ways in which the Original ProMax and the Modified ProMax do not infringe the ‘181
Patent, and the only evidence Plaintiff has presented in opposition is Honeyman’s
excluded testimony. Accordingly, the Court grants summary judgment in favor of
Defendant as to these claims.
h. Original ProMax Claims 10, 11, 14, 15, and 16 Plurality of Louvers
Claims 10, 11, 14, 15, and 16 of the ‘181 Patent require “a plurality of flow-control
louvers pivotally mounted into said vent frame, said louvers being constructed and
arranged to permit exiting flow out of said air exit aperture and to substantially block any
reverse air flow from outside of said exhaust vent from entering said air exit aperture.”
‘181 Patent, Col. 8, II. 21-26. Defendant maintains the Original ProMax does not
infringe claims 10, 11, 14, 15, and 16, because the single louver damper of the Original
ProMax was created “to prevent back draft wind from catching the bottom edge of the
damper and lifting it up.” Doc. #117, page 18. Defendant continues that the plurality of
14

louvers described in claims 10, 11, 14, 15, and 16 were not created for this function, but
instead “allow flow only in the exiting direction.” Id. In essence, Defendant argues that
the plurality of louvers in the ‘181 Patent do not perform substantially the same function
as the ProMax’s single louver.
Defendant has incorrectly reversed the analysis. To determine infringement
pursuant to the doctrine of equivalents, Defendant must demonstrate whether the
ProMax performs substantially the same function as the ‘181 Patent – not the other way
around. Accordingly, summary judgment is denied as to these claims.
i. Modified ProMax Snap On Feature
Defendant maintains that the Modified ProMax does not infringe, either literally or
under the doctrine of equivalents, claims 10 and 11 of the ‘181 Patent, because the
Modified ProMax’s vent guard does not “snap-on” to its hood. In response, Plaintiff
does not dispute Defendant’s assertion that Plaintiff has asserted claims for
infringement both literally and under the doctrine of equivalents. Doc. #150. But it
appears to the Court that Plaintiff has only asserted infringement based on the doctrine
of equivalents. Doc. #154-22. As such, the Court will only address whether the
Modified ProMax infringes claims 10 and 11’s “snap-on” requirement under the doctrine
of equivalents.
Unlike most of Plaintiff’s other doctrine of equivalents arguments, Plaintiff has
presented other evidence aside from Honeyman’s excluded opinion. Thus, the Court
finds that there are disputed issues of material fact and denies summary judgment.

j. Remaining Claims
Finally, Defendant seeks summary judgment that its ProGard and Original
ProMax do not infringe claims 3-9, 12-13, and 17 of the ‘181 Patent, and that its
Modified ProMax does not infringe claims 3-9 and 12-17 of the ‘181 Patent. However,
Plaintiff points out it is not asserting that the ProGard, the Original ProMax, and the
Modified ProMax are infringing those claims of the ‘181 Patent. See. Doc. #154-22.
Thus, Defendant is not entitled to summary judgment regarding claims Plaintiff has not
asserted.
15

2. ‘023 Patent
a. ProGard Claim 1
Defendant argues the ProGard does not infringe claim 1 of the ‘023 Patent.
Claim 1 describes an exhaust vent guard that has a “unitary vent hood” and a “unitary
vent guard.” ‘023 Patent, Col. 9, II. 66; Col. 10, II. 8. The Court did not construe the
term “unitary” in its April 16, 2014, Claim Construction Order. Defendant proposes that
the term be construed as “one unit” or “one piece.” Plaintiff states that “a unitary vent
hood” and “unitary guard” in a “snap fit assembly” should be construed as “separate
components that are unitary in and of themselves which together make up an exhaust
vent hood.” Doc. #149, page 19. Plaintiff’s main support for this position is Marshall
Honeyman’s opinion. However, the Court excluded Honeyman from opining on
technical issues such as infringement; and thus, his opinion provides no support for
Plaintiff’s position.
Regardless, Plaintiff’s position is not persuasive. The Court finds that the term
“unitary” does not need construction and is given its plain and ordinary meaning.
Unitary means “one piece” or “one unit.” This definition is bolstered by the fact that the
term “unitary” is used twice in claim 1 – once to modify the hood and once to modify the
guard. If “unitary” were meant to define the entire assembly system, as opposed to
defining each individual component, the term likely would have been used only once.
Defendant maintains that the ProGard’s vent guard and vent hood are not two
separate units. Rather, Defendant asserts that the ProGard’s vent guard and vent hood
are all one piece; and thus, the ProGard does not infringe claim 1 of the ‘023 Patent.
The Court agrees. Claim 1 requires a “unitary vent hood” and a “unitary vent guard.”
The Court’s inspection of the ProGard reveals that its hood and guard are not separate
units. Doc. #117, SOF 5.

16

Additionally, with respect to the doctrine of equivalents, Defendant has pointed
out specific ways in which the ProGard is not infringing, and the only evidence Plaintiff
has presented in opposition to this assertion is Honeyman’s excluded testimony.
Accordingly, the Court grants summary judgment in favor of Defendant.

b. ProGard Claims 2 and 10
Defendant contends the ProGard does not infringe on claims 2 and 10 of the ‘023
Patent. Claims 2 and 10 describe a vent hood that has “at least one receiving aperture”
for the projections on the vent guard to snap into. ‘023 Patent, Col. 10, II. 12-14, 44-46.
The Court did not construe the term “aperture” in its April 16, 2014, Claim Construction
Order, but the Court finds “aperture” needs no construction and shall be given its plain
and ordinary meaning. An aperture is a hole or circular opening.
Defendant states the ProGard’s “hood” does not have apertures to receive
projections that are on the ProGard guard. The Court agrees. In fact, the ProGard
does not have apertures at all. Rather, what Plaintiff considers apertures are actually
more akin to slots. Doc. #117, SOF 5. The ProGard’s slots are not completely enclosed
holes, as would be required to be an aperture.
Regarding the doctrine of equivalents, Defendant has pointed out specific ways
in which the ProGard does not infringe, and the only evidence Plaintiff has cited in
response is Honeyman’s excluded testimony. As such, the Court grants summary
judgment in favor of Defendant for both literal infringement and pursuant to the doctrine
of equivalents.
c. ProGard Claims 13, 14, 17, 18 – Preamble
With no analysis or citation to legal authority, Defendant contends that the
preamble to claims 13 and 17 is limiting. In support of its argument, Defendant relies on
deposition testimony from Plaintiff’s proffered expert, Honeyman. However, the Court
has excluded Honeyman as a technical expert, and thus, his opinion provides no
support for Defendant’s position.

17

Nonetheless, a preamble is considered limiting when “it recites essential
structure or steps.” Catalina Marketing Int’l, Inc., 289 F.3d at 808. A preamble is not
considered limiting when the claim body “defines a structurally complete invention” and
“the preamble only [] state[s] a purpose or intended use for the invention.” Id. (citations
and quotations omitted).
Here, the preamble of claims 13 and 17 states “a guard for covering over the exit
opening of a hooded exhaust vent…” ‘023 Patent, Col. 10, II. 55-57; Col. 11, II. 7-9.
This phrase, quite clearly, states only an intended use or purpose for “the guard.”
Additionally, the body of claims 13 and 17 describes a structurally complete invention.
Finally, the preamble does not recite essential structure of the guard. Thus, the Court
finds that the preamble is not limiting and summary judgment is denied.
d. ProGard Claims 13, 14, 17, and 18
Defendant asserts the ProGard does not infringe claims 13, 14, 17, and 18 of the
‘023 Patent. Defendant observes that claims 13 and 17 require a “plurality of
attachment projections being constructed and arranged for attachment to said hood and
for being positioned over said exit opening.” ‘023 Patent, Col. 10, II. 65-67; Col. 12, II.
5-7. Plaintiff argues that the intended meaning of claims 13 and 17 is to require the vent
guard to be positioned over the exit opening, not the attachment projections. Plaintiff
points to Honeyman’s testimony in support of this position, but Honeyman’s testimony
has been excluded. Regardless, the term “guard” is not used in the body of claims 13
and 17, and the Court will not insert this missing term. Rather, claims 13 and 17 plainly
require the projections to be positioned over the exit opening.
Thus, the Court finds that the ProGard does not infringe claims 13, 14, 17, and
18 for two reasons. First, the projections are not positioned over the exit opening.
Instead, they are positioned on the wall that forms part of the exit opening. Doc. #117,
SOF 5. Second, the plurality of projections extend from the ProGard’s “hood.” These
projections do not extend from the outer edge of the ProGard’s “guard,” as required by
claims 13, 14, 17, and 18.
With respect to the doctrine of equivalents, Defendant has pointed out specific
ways in which the ProGard does not infringe, and the only evidence Plaintiff has
18

presented in opposition is Honeyman’s excluded testimony. Accordingly, the Court
grants summary judgment in favor of Defendant as to these claims.
e. Original ProMax Claims 1, 2, and 10
Defendant asserts the Original ProMax does not infringe claims 1, 2, and 10 of
the ‘023 Patent. Defendant notes that claims 1, 2, and 10 require a vent hood that has
“a rear wall defining therein an exhaust aperture” and contends that this rear wall is a
structure that surrounds the aperture. ‘023 Patent, Col. 9, II. 66-67. Defendant also
notes that claims 1, 2, and 10 require “a connecting portion positioned around said
exhaust aperture…” ‘023 Patent, Col. 9, II. 67; Col. 10, ll. 1. Defendant argues that the
Original ProMax only has a rear wall defining the exhaust aperture; it does not have a
connecting portion around that exhaust aperture. However, the Court’s examination of
the Original ProMax indicates a reasonable juror could find the Original ProMax
infringes claims 1, 2, and 10 of the ‘023 Patent, both literally and under the doctrine of
equivalents. Accordingly, the Court denies summary judgment as to these claims.
f. Original ProMax Claims 13, 14, and 15
Defendant argues the Original ProMax does not infringe claims 13, 14, and 15 of
the ‘023 Patent. Claims 13, 14, and 15 call for a vent guard that has “a substantially
planar grid portion.” ‘023 Patent, Col. 10, II. 58-60. Defendant alleges that because the
Original ProMax’s vent guard has depth, it cannot be considered “substantially planar.”
Despite this assertion, the Court finds a reasonable juror could determine the Original
ProMax infringes claims 13, 14, and 15 of the ‘023 Patent. Therefore, the Court
declines to grant summary judgment in Defendant’s favor.
g. Original ProMax Claims 13, 14, 17 and 18
Defendant contends the Original ProMax does not infringe claims 13, 14, 17 and
18 of the ‘023 Patent. Defendant observes that claims 13 and 17 requires a “plurality of
attachment projections being constructed and arranged for attachment to said hood and
for being positioned over said exit opening.” ‘023 Patent, Col. 10, II. 65-67; Col. 12, II.

19

5-7. Plaintiff argues that the intended meaning of claims 13 and 17 is to require the
vent guard to be positioned over the exit opening, not the attachment projections.
Plaintiff points to Honeyman’s testimony in support of this position, but the Court has
excluded Honeyman’s testimony. Regardless, the term “guard” is not used in the body
of claims 13 and 17, and the Court will not insert a missing term to reach Plaintiff’s
desired claim construction. Rather, claims 13 and 17 plainly require the projections to
be positioned over the exit opening.
Therefore, the Court finds that the Original ProMax does not infringe claims 13,
14, 17 and 18, because the projections are not positioned over the exit opening.
Instead, they are positioned through the wall that forms part of the exit opening. Doc.
#117, SOF 9.
Regarding the doctrine of equivalents, Defendant has pointed out specific ways
in which the ProGard does not infringe, and the only evidence Plaintiff has cited in
response is Honeyman’s excluded testimony. Accordingly, the Court grants summary
judgment in favor of Defendant as to these claims.
h. Original ProMax Claims 13, 14, 17 and 18
Defendant maintains the Original ProMax does not infringe claims 13, 14, 17 and
18 of the ‘023 Patent because of where the “plurality of projections” are placed on the
ProMax’s guard. Claims 13 and 17 provide for a vent or basket guard comprised of a
grid portion that has “a surrounding outer edge which is integral with said grid portion;
and a plurality of attachment projections extending from said outer edge and being
integral therewith…” ‘023 Patent, Col. 10, II. 63-65; Col. 12, II. 3-5. Defendant
observes that the Original ProMax’s surrounding outer edge has two “arms” extending
from that outer edge. Defendant argues that the Original ProMax’s attachment
projections extend from these arms, rather than from the Original ProMax’s surrounding
outer edge. However, the Court finds a reasonable juror could determine that the
Original ProMax infringes on these limitations found in claims 13, 14, 17 and 18 of the
‘023 Patent, both literally and pursuant to the doctrine of equivalents. Thus, summary
judgment is denied.

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i. Claims 3-9, 11-12, and 15-16 of the ‘023 Patent
Finally, Defendant seeks summary judgment that its ProGard and Original
ProMax do not infringe claims 3-9, 11-12, and 15-16 of the ‘023 patent. However,
Plaintiff notes it is not asserting that the ProGard and the Original ProMax are infringing
those claims of the ‘023 patent. See Doc. #154-22. Thus, Defendant is not entitled to
summary judgment regarding claims Plaintiff has not asserted.

C. Lanham Act
Defendant contends it is entitled to summary judgment as to Plaintiff’s Lanham
Act. Doc. #112. The Lanham Act provides that:
(1) Any person who, on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or
device, or any combination thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading representation of fact,
which –
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person,
or as to the origin, sponsorship, or approval of his or her goods, services,
or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another
person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or
is likely to be damaged by such act.
15 U.S.C. §§ 1125(a)(1)(A) and (B). Section 1125(a)(1)(A) is known as the false
endorsement prohibition and section 1125(a)(1)(B) is known as the false advertising
prohibition. American Ass’n. of Orthodontists v. Yellow Book USA, Inc., 434 F.3d 1100,
1102 (8th Cir. 2006).
In Lexmark International v. Static Control Components, Inc., the Supreme Court
announced a zone of interests and proximate cause analysis would be used to
determine if a plaintiff could assert a Lanham Act false advertising claim. 134 S.Ct.
1377 (2014). The Lexmark Court determined that, “to come within the zone of interests

21

in a suit for false advertising under § 1125(a), a plaintiff must allege an injury to a
commercial interest in reputation or sales.” Id. at 1390. To establish proximate
causation under § 1125(a), a plaintiff “ordinarily must show economic or reputational
injury flowing directly from the deception wrought by the defendant’s advertising; and
that occurs when deception of consumers causes them to withhold trade from the
plaintiff.” Id. at 1391.
To establish a claim for false advertising under the Lanham Act, Plaintiff must
demonstrate, “(1) a false statement of fact by the defendant in a commercial
advertisement about its own or another’s product; (2) the statement actually deceived or
has the tendency to deceive a substantial segment of its audience; (3) the deception is
material, in that it is likely to influence the purchasing decision; (4) the defendant caused
its false statements to enter interstate commerce; and (5) the plaintiff has been or is
likely to be injured as a result of the false statement…” United Indus. Corp. v. Clorox
Co., 140 F.3d 1175, 1180 (8th Cir. 1998). If the plaintiff demonstrates that the
defendant’s statement was “literally false, a court may grant relief without considering
whether the buying public was actually misled; actual consumer confusion need not be
proved.” Id.
To establish a claim for false endorsement under the Lanham Act, Plaintiff must
establish that the defendant engaged in “false representations concerning the origin,
association, or endorsement of goods or services through the wrongful use of another’s
distinctive mark, name, trade dress, or other device.” Am. Ass’n. of Orthodontists, 434
F.3d at 1103.
Because there are disputed issues of material fact, summary judgment is denied
as to the Lanham Act claims against Defendant.

D. Common Law Unfair Competition
Defendant asserts that to the extent Plaintiff’s common law unfair competition
claim relies on its allegations of infringement, federal patent law preempts this claim.
Defendant points to Dow Chemical Co. v. Exxon Corp., which states “a state law tort
claim is not preempted by the federal patent law, even if it requires the state court to
adjudicate a question of federal patent law, provided the state law cause of action
22

includes additional elements not found in the federal patent law cause of action and is
not an impermissible attempt to offer patent-like protection to subject matter addressed
by federal law.” 139 F.3d 1470, 1473 (Fed. Cir. 1998). Plaintiff’s unfair competition
claim would be based on state substantive law. Neither Plaintiff nor Defendant provides
the Court with an analysis of what state’s substantive law would be applicable to this
claim. Therefore, the Court cannot determine whether Plaintiff’s common law unfair
competition claim is, in fact, preempted by patent law. At this juncture in the
proceedings, Defendant has the burden to establish that it is entitled to judgment as a
matter of law. Defendant has not met its burden on this issue, and therefore, summary
judgment is denied as to this claim.
However, Defendant notes Plaintiff should not be able to seek double recovery
based on the same actions by Defendant under an unfair competition claim and under
infringement claims. The Court agrees. Thus, while Plaintiff’s unfair competition claim
is not disposed of at this juncture, Plaintiff will not be permitted to obtain double
recovery based on the same actions by Defendant.
Finally, Defendant asserts that to the extent Plaintiff’s common law unfair
competition claim relies on allegations regarding Defendant’s packaging, summary
judgment should be granted in favor of Defendant. Again, Plaintiff’s unfair competition
claim would be based on state substantive law, and because neither Plaintiff nor
Defendant provides the Court with an analysis of what state’s substantive law would be
applicable to this claim, the Court cannot assess the merits of Defendant’s argument.
Accordingly, summary judgment is denied.

E. Limiting Damages
1. Marking
Defendant asserts Plaintiff’s pre-suit damages should be limited due to the patent
marking statute.
The Patent Act limits the amount of damages Plaintiff can recover “to those acts
of infringement that occurred after the patentee gave the alleged infringer ‘notice of
infringement.’” Gart v. Logitech, Inc., 254 F.3d 1334, 1345 (Fed. Cir. 2001) (citing 35
U.S.C. § 287). Notice occurs either by “constructive notice, which is accomplished by
23

marking the article with the patent number, or [by] actual notice.” Id. Actual notice
requires “‘affirmative communication to the alleged infringer of a specific charge of
infringement by a specific accused product or device.’” Id. (citing Amsted Indus. Inc. v.
Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed Cir. 1994)); see also 35 U.S.C. §
287. “[M]ere ‘notice of the patent’s existence or ownership’ is not ‘notice of
infringement’…” Id. (citing Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d
178, 187 (Fed Cir. 1994)). In analyzing actual notice, the Court “must focus on the
action of the patentee, not the knowledge of the infringer.” Lans v. Digital Equipment
Corp., 252 F.3d 1320, 1327 (Fed. Cir. 2001) (internal quotations and citations omitted).
Plaintiff’s communication must provide “sufficient specificity regarding its belief that the
recipient may be an infringer…” Gart v. Logitech, Inc., 254 F.3d at 1346. In the context
of certain parties’ relationships, “knowledge of a specific infringing device is not a legal
prerequisite” to determine whether a communication sufficiently provided actual notice.
Minks v. Polaris Industries, Inc., 546 F.3d 1364, 1377 (Fed. Cir. 2008). Filing an
infringement lawsuit also constitutes actual notice. 35 U.S.C. § 287.
Here, Plaintiff does not dispute it did not provide constructive notice to Defendant
by marking its patented products. Doc. #151, page 31. Thus, Plaintiff’s damages are
limited based on the date it provided actual notice to Defendant of the alleged
infringement.
Plaintiff contends Defendant was aware of Plaintiff’s patents as early as 2002
and attempted to design around Plaintiff’s patents at that time. Similarly, Plaintiff
maintains it has evidence that Defendant was aware of Plaintiff’s patents as early as the
1990s. While these factual assertions may or may not be true, Defendant’s knowledge
alone does not constitute actual notice. In determining whether Defendant received
actual notice, the inquiry focuses on Plaintiff’s actions, and whether Plaintiff affirmatively
communicated to Defendant “a specific charge of infringement by a specific accused
product or device.” Gart v. Logitech, Inc., 254 F.3d 1334, 1345 (Fed. Cir. 2001); see
also Lans v. Digital Equipment Corp., 252 F.3d 1320 (Fed. Cir. 2001); Amsted Indus.
Inc. v. Buckeye Steel Castings Co., 24 F.3d 178 (Fed. Cir. 1994). While the alleged
infringer’s knowledge of the patent may be relevant given the history of the parties’
relationship, the patentee still must take steps to notify the alleged infringer. Minks, 546
24

F.3d at 1376-77. Here, Plaintiff does not identify any communications it made to
Defendant in the 1990s or 2000s. Thus, Defendant’s knowledge of Plaintiff’s patents,
without more, is insufficient to establish actual notice.
Plaintiff asserts it sent a Cease and Desist Letter to Defendant accusing
Defendant of infringing Plaintiff’s patents. Doc. #134-3. The Cease and Desist Letter
provides “sufficient specificity regarding [Plaintiff’s] belief that [Defendant] may be an
infringer…,” as it unequivocally accuses Defendant of infringing the ‘023 patent by
manufacturing, selling, and distributing various exhaust vents and pest barricades. Gart
v. Logitech, Inc., 254 F.3d at 1346. Accordingly, Plaintiff provided actual notice to
Defendant of its allegedly infringing activity regarding the ‘023 patent on August 1, 2012;
and thus, Plaintiff is limited to damages starting on August 1, 2012.
However, there are disputed issues of material fact as to what products the
Cease and Desist Letter identified as infringing. Further, while Plaintiff has presented
no evidence demonstrating it provided Defendant actual notice regarding the ‘181
patent prior to the August 1, 2012 Cease and Desist Letter, there are disputed issues of
material fact as to whether the Cease and Desist Letter provided actual notice regarding
Defendant’s alleged infringement of the ‘181 patent.

2. Laches
Defendant argues Plaintiff’s pre-suit damages should be barred due to the laches
doctrine.
To establish a laches defense, Defendant must demonstrate: (1) Plaintiff’s delay
in bringing suit was unreasonable and inexcusable, and (2) Defendant suffered material
prejudice attributable to Plaintiff’s delay. A.C. Aukerman Co. v. R.L. Chaides Const.
Co., 960 F.2d 1020, 1028 (Fed. Cir. 1992). A presumption of laches arises if the
patentee delays filing suit for more than six years from the time the plaintiff knew or
reasonably should have known of the defendant’s alleged infringing activities. Id. at
1035. However, if a patentee files suit within six years, no presumption arises. Id. at
1038.
Without the presumption, the alleged infringer must prove unreasonable delay
and prejudice. In determining whether Plaintiff’s delay was unreasonable and
25

inexcusable, the Court may consider whether Plaintiff was involved in other litigation,
negotiations with the accused infringer, the extent of the alleged infringement, possible
poverty and illness under limited circumstances, wartime conditions, and dispute over
ownership of the patent. Id. at 1033. Additionally, “the equities may…require that the
plaintiff communicate its reasons for delay to the defendant.” Id.
Material prejudice to Defendant may be either evidentiary or economic. Id.
Evidentiary prejudice occurs when Defendant is unable “to present a full and fair
defense on the merits due to the loss of records, the death of a witness, or the
unreliability of memories of long past events, thereby undermining the court’s ability to
judge the facts.” Id. Economic prejudice occurs when Defendant and “possibly others
will suffer the loss of monetary investments or incur damages which likely would have
been prevented by earlier suit.” Id. “Such damages or monetary losses are not merely
those attributable to a finding of liability for infringement.” Id. Rather, courts “must look
for a change in the economic position of the alleged infringer during the period of delay.”
Id.
Because there are disputed issues of material fact, summary judgment is denied
as to Defendant’s laches defense.
IV.

CONCLUSION

For the foregoing reasons, Defendant’s Motions for Summary Judgment are
granted in part and denied in part.
IT IS SO ORDERED.
/s/ Ortrie D. Smith
ORTRIE D. SMITH, SENIOR JUDGE
UNITED STATES DISTRICT COURT

DATE: November 4, 2015

26

Appendix
Patent

Claims

Accused Products

‘181
‘181
‘181

Claims 1 & 2
Claims 10 & 11
Claims 1 & 2 Preamble

‘181

Claims 1 & 2
Upper Hood Portion
Claims 1 & 2
Side Walls Converge
Claims 10 & 11
Upper Hood Portion
Claims 10, 11, 14, 15, &
16 – Plurality of Louvers
Claims 10 & 11
Snap On Feature
Claims 3-9, 12-13, & 17
Claims 3-9, 12-13, & 17
Claims 3-9, 12-17
Claim 1
Claims 2 & 10
Claims 13, 14, 17, & 18
– Preamble
Claims 13, 14, 17, & 18
Claims 1, 2, & 10
Claims 13, 14, & 15
Claims 13, 14, 17, & 18
– Projections over Exit
Opening
Claims 13, 14, 17, & 18
– Placement of
Projections
Claims 3-9, 11-12, & 1516
Claims 3-9, 11-12, & 1516

‘181
‘181
‘181
‘181
‘181
‘181
‘181
‘023
‘023
‘023
‘023
‘023
‘023
‘023

‘023

‘023
‘023

ProGard
ProGard
Original ProMax
Modified ProMax
Original ProMax
Modified ProMax
Original ProMax
Modified ProMax
Original ProMax
Modified ProMax
Original ProMax

Summary Judgment
Grant/Deny
Deny
Deny
Deny
Grant
Grant
Grant
Deny

Modified ProMax

Deny

ProGard
Original ProMax
Modified ProMax
ProGard
ProGard
ProGard

Deny
Deny
Deny
Grant
Grant
Deny

ProGard
Original ProMax
Original ProMax
Original ProMax

Grant
Deny
Deny
Grant

Original ProMax

Deny

ProGard

Deny

Original ProMax

Deny

27