Card-Monroe Corp. v. Tuftco Corp.

Filing 503

AMENDED MEMORANDUM AND ORDER. Having considered the record, the parties written submissions, and their oral arguments at the hearing on July 14, 2017, the Court hereby DENIES Tuftcos motion to strike and for sanctions (Doc. 317) and GRANTS IN PART and DENIES IN PART the parties summary judgment motions (Docs. 289, 450). Signed by District Judge Travis R McDonough on 9/1/2017. (AML, )

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TENNESSEE
AT CHATTANOOGA
CARD-MONROE CORP.,
Plaintiff,
v.
TUFTCO CORP.,
Defendant.

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Case No. 1:14-cv-292
Judge Travis R. McDonough
Magistrate Judge Christopher H. Steger

AMENDED MEMORANDUM AND ORDER1

Before the Court are: (1) Defendant Tuftco Corp.’s (“Tuftco”) motion to strike and for
sanctions (Doc. 317); (2) Tuftco’s motion for summary judgment (Doc. 450); and (3) Plaintiff
Card-Monroe Corp.’s (“CMC”) motion for summary judgment (Doc. 289). Having considered
the record, the parties’ written submissions, and their oral arguments at the hearing on July 14,
2017, the Court hereby DENIES Tuftco’s motion to strike and for sanctions (Doc. 317) and
GRANTS IN PART and DENIES IN PART the parties’ summary judgment motions (Docs.
289, 450).
I.

BACKGROUND
1. The Patents
The three patents at issue concern certain carpet-tufting machines and methods. U.S.

Patent No. 8,141,505 (the “ ‘505 Patent”), entitled “Yarn Color Placement System,” was issued

1

Pursuant to the Order filed contemporaneously herein granting in part a non-party’s motion to
amend the Court’s summary judgment memorandum and order, the Court has amended its
original Memorandum and Order ruling on the parties’ summary judgment motions (Doc. 475) to
make only general references to sensitive third-party information.

by the United States Patent and Trademark Office (“PTO”) on March 27, 2012. (Doc. 292-1, at
1–17.)2 U.S. Patent No. 8,359,989 (the “ ‘989 Patent”), entitled “Stitch Distribution Control
System for Tufting Machines,” was issued on January 29, 2013. (Id. at 18–51.) Finally, U.S.
Patent No. 8,776,703 (the “ ‘703 Patent”) (collectively, the “Asserted Patents”), entitled “Yarn
Color Placement System,” was issued on July 15, 2014. (Id. at 52–68.) The ‘989 Patent and
‘703 Patent are continuations of the ‘505 Patent and, as such, contain similar specifications. (Id.
at 12, 40, 63.) CMC is the owner by assignment of all rights, title, and interest to the Asserted
Patents.
The invention, marketed as “ColorPoint,” “generally relates to tufting machines, and in
particular, to a system for coordinating the feeding and placement of yarns of different colors
within a backing material passing through a tufting machine to enable formations of free-flowing
patterns within a tufted article.” (Id. at 12, col. 1:11–15.)3 According to the Asserted Patents’
specifications, before ColorPoint, the carpet tufting industry sought “new, more eye-catching”
patterns that “replicate the look and feel of fabrics formed on a loom.” (Id., col. 1:20–25.)
Though manufacturers could produce more vibrant patterns with specialty machines that
individually placed yarns with a single needle, they could not produce those patterns on a
commercial scale. (Id., col. 1:35–54.) CMC presented ColorPoint as the solution to this industry
limitation. By coordinating yarn feed, needle bar shifts, and the feeding of backing material
through the tufting machine, multiple colors of yarns are inserted at the same stitch location. (Id.
at 12–16.) Unwanted yarns (those not called for in a design) are then pulled low or out of the
backing so they cannot be seen in the carpet’s face. (Id.) CMC’s new method inserts a higher
2

Hereafter, such page number references indicate the CM/ECF page number.

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References to specific column and line numbers in the Asserted Patents will be made in the
format of col. XX:YY.
2

number of yarns into the backing than traditional tufting methods, while avoiding gaps between
visible tufts in the face of the carpet. (Id.) The resulting products accommodate more intricate
pattern designs while preserving sharpness and definition. (Id.)
2. The Claims
On February 8, 2016, the parties identified twelve claims to be severed for ongoing
proceedings: Claims 8, 10, and 12 of the ‘505 Patent; Claims 21, 22, 24, 27, 28, and 30 of the
‘989 Patent; and Claims 1, 28, and 29 of the ‘703 Patent (together, the “Severed Claims”). (Doc.
169.) Claim 1 of the ‘703 Patent is the only machine claim at issue herein (the “Machine
Claim”); the rest are method claims (the “Method Claims”).
i. Claims 8, 10, and 12 of the ‘505 Patent
Claim 8 recites:
A method of operating a tufting machine to form patterned tufted articles having
multiple colors, comprising:
feeding a backing material through the tufting machine;
feeding a plurality of yarns to a series of needles carried by a shiftable
needle bar;
shifting the needle bar transversely according to a programmed shift
profile for the pattern of the tufted article;
controlling the feeding of the yarns to the needles in accordance with
programmed pattern instructions so as to feed desired amounts of the
yarns to the needles as needed to form rows of high and low tufts of yarns
in the backing materials;
forming the tufts of yarns at an increased effective stitch rate determined
by multiplying the number of colors being formed in the patterned tufted
article by a desired fabric stitch rate that comprises a number of stitches
per inch desired for the patterned tufted articles; and
wherein the feeding of the yarns to form the high and low tufts tracks the
shifting of the needles so as to substantially maintain density of the tufts of
yarns being formed in the backing material in a direction of the rows of

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tufts and location of the high tufts of yarns at desired positions across the
backing to form the patterned tufted articles.
(Doc. 292-1, at 16, col. 10:39–61.)
Claim 10, which is dependent on Claim 8, recites:
The method of claim 9[4] and wherein feeding a second, lesser amount of yarn
comprises back-robbing the yarns fed to each needle to an extent sufficient to
substantially hide or remove the low tufts from the backing.
(Id. at 16–17, cols. 10:66–11:2.)
Claim 12, also dependent on Claim 8, recites:
The method of claim 8 and wherein the tufting machine is a 1/10th gauge tufting
machine and the desired fabric stitch rate is approximately ten stitches per inch.
(Id. at 17, col. 11:6–8.)
ii. Claims 21, 22, 24, 27, 28, and 30 of the ‘989 Patent
Claim 21 recites:
A method of operating a tufting machine to form a patterned article including a
series of different yarns, comprising:
receiving a pattern including a series of pattern steps for forming the
patterned article;
determining an effective process stitch rate for the patterned article;
feeding a backing material through the tufting machine at the effective
process stitch rate;
as the backing material is fed through the tufting machine, reciprocating a
series of needles to deliver the yarns into the backing material; and

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Claim 9 provides: “The method of claim 8 and wherein controlling the feeding of the yarns
comprises feeding a first amount of yarn to each needle forming a high tuft, while feeding a
second, lesser amount of yarn to each needle forming a low tuft.” (Doc. 292-1, at 16, col. 10:62–
65.)

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controlling feeding of the yarns to the needles in accordance with
programmed pattern instructions to retain a tuft of a desired yarn for each
stitch being formed in the backing material
wherein determining the effective process stitch rate for the patterned
article comprises increasing the desired stitch rate for the pattern by a
multiple approximately corresponding to a number of colors of yarns used
to form the patterned article.
(Id. at 50, col. 21:28–49.)
Claim 22 recites:
A method of tufting a patterned article, comprising:
determining a desired fabric stitch rate for the patterned article;
feeding a series of yarns to a series of spaced needles;
feeding a backing material through a tufting zone;
as the backing material is fed through the tufting zone, reciprocating the
needles carrying the yarns into and out of the backing material;
shifting at least some of the needles transversely with respect to the
backing material; and
at selected stitch locations, presenting a number of different yarns for
insertion into the backing material and controlling the yarn feed to the
needles so as to retain at least one desired yarn of the different yarns
presented for each selected stitch location;
wherein feeding the backing material comprises moving the backing
material through the tufting zone at an effective stitch rate approximately
equivalent to the desired fabric stitch rate increased by an amount based
upon a number of different yarns presented at a stitch location being
tufted.
(Id., cols. 21:50–22:3.)
Claim 24 recites:
The method of Claim 22 and wherein presenting a number of different yarns and
controlling the yarn feed to the needles comprises presenting a yarn of each color
that could be tufted at a particular selected stitch location and feeding the yarn for
a color corresponding to the selected stitch location to form a tuft, while

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controlling feeding of the yarns of remaining colors to pull such yarns low or
remove them from the selected stitch location.
(Id., col. 22:9–16.)
Claim 27 recites:
A method of tufting a patterned article comprising:
determining a desired fabric stitch rate for the patterned article;
feeding a series of yarns to series of spaced needles;
determining an effective process stitch rate for the patterned article,
comprising increasing the desired stitch rate for the pattern by a multiple
approximately corresponding to a number of colors of yarns used to form
the patterned article;
feeding a backing material through a tufting zone;
as the backing material is fed through the tufting zone, reciprocating the
needles carrying the yarns into and out of the backing material;
shifting at least some of the needles transversely with respect to the
backing material; and
at selected stitch locations, presenting a number of yarns for insertion into
the backing material and controlling the yarn feed to the needles so as to
retain at least one desired yarn of the yarns presented for each selected
stitch location.
(Id., col. 22:25–45.)
Claim 28 recites:
A method of forming tufted patterns in a backing, comprising:
determining a desired fabric stitch rate for a pattern to be formed;
feeding the backing material through a tufting machine;
as the backing is fed through the tufting machine, reciprocating a series of
spaced needles carrying a series of yarns into and out of the backing to
form a series of tufts in the backing; and

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at selected stitch locations of the pattern being formed in the backing,
presenting a desired number of yarns for insertion into the backing and
selectively withholding non-retained yarns from such stitch locations;
wherein selectively withholding the non-retained yarns comprises
controlling at one or more yarn feed mechanisms feeding the non-retained
yarns to the needles so as to pull back such yarns; and
wherein feeding the backing through the tufting machine comprises
feeding the backing at an effective process stitch rate approximately
equivalent to the desired fabric stitch rate increased by a number of
different yarns being used to form the pattern.
(Id., col. 22:46–67.)
Claim 30 recites:
A method of tufting a patterned article including a series of tufts of different color
yarns, arranged according to pattern instructions for the article, comprising:
determining a desired fabric stitch rate for the patterned article;
moving a backing through a tufting zone at an effective process stitch rate
based upon the desired fabric stitch rate increased in view of a number of
colors of yarns of the patterned article;
as the backing moves through the tufting zone, reciprocating a series of
spaced needles to present a selected series of yarns to stitch locations in
the backing; and
at each stitch location, controlling feeding of the series of yarns presented
at each stitch location and selectively retaining a desired yarn of the series
of yarns presented at each stitch location based upon the pattern
instructions.
(Id. at 51, cols. 23:5–24:5.)
iii. Claims 1, 28, and 29 of the ‘703 Patent
Claim 1 recites:
A tufting machine for forming patterned tufted articles including different color
yarns therein, comprising:
at least one needle bar having a series of needles mounted at a spacing
based on a gauge of the tufting machine therealong;

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backing feed rolls for feeding a backing material through a tufting zone of
the tufting machine;
a pattern yarn feed mechanism for feeding a series of yarns to said
needles;
at least one needle bar shifter for shifting said at least one needle bar
transversely across the tufting zone;
a series of gauge parts mounted below the tufting zone in a position to
engage said needles of said at least one needle bar as said needles are
reciprocated into and out of the backing material to form tufts of yarns in
the backing material; and
a control system for controlling said yarn feed mechanism in cooperating
with said at least one needle bar shifter shifting the at least one needle bar
in accordance with a series of transverse pattern shift steps received by the
control system, to control feeding of the yarns to said needles as the
needles are reciprocated and as the needle bar is shifted in accordance with
the transverse pattern shift steps as needed to form selected tufts of yarns
of a desired height and to pull non-selected ones of the yarns low or out of
the backing material for each pattern step;
wherein the control system is linked to and controls the backing feed rolls
for feeding the backing material such that the tufts of yarns are formed in
the backing material at an effective stitch rate that is determined by
increasing a prescribed stitch rate of the patterned tufted article that is
based on the gauge of the tufting machine by a selected amount so as to
form the patterned articles with the selected tufts of yarns having an
appearance of being formed at the desired stitch rate.
(Id. at 67, col. 9:17–51.) The ‘703 Patent’s specification expands on the “control system”
software recited in Claim 1. It provides:
The tufting machine control system 25 generally will comprise a tufting machine
control such as a “Command Performance™” tufting machine control system as
manufactured by Card-Monroe Corp. The control system also typically includes a
computer/processor or controller 26 that can be programmed with various pattern
information and which monitors and controls the operative elements of the tufting
machines . . . . The tufting machine control system . . . further can receive and
execute or store pattern information directly from a design center . . . that can be
separate and apart from the tufting machine control system, or which can be
included as part of the tufting machine control system.

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(Id. at 64, col. 4:8–24.)
Claim 28 recites:
A method of forming tufted articles including tufts of multiple different color
yarns, comprising:
feeding a backing material through a tufting machine;
reciprocating a series of needles to deliver the yarns into the backing
material to form tufts of yarns therein;
engaging the yarns delivered into the backing material by the needles with
a series of gauge parts to pull loops of yarns from the needles for forming
the tufts of yarns in the backing material;
shifting at least some of the needles transversely, wherein the needles are
shifted by single shift steps, double shift steps, or a combination of single
and/or double shift steps according to a shift profile based upon a number
of colors of yarns of the pattern for the tufted article;
controlling feeding of the yarns to the needles in accordance with the shift
profile of the pattern for the article to selectively form tufts of yarns of a
desired pile height and to selectively pull back loops of yarns to form the
pattern;
wherein the tufts of yarns are formed in the backing material at an
increased effective stitch rate that is at least two times a prescribed stitch
rate based upon a gauge of the tufting machine, for the feeding of the
backing material for the pattern of the tufted article so as to form the
patterned article with an appearance of an increased density.
(Id. at 68, col. 12:4–30.)
Claim 29 recites:
A method of forming tufted articles including tufts of multiple different color
yarns, comprising:
feeding a backing material through a tufting machine at an effective stitch
rate that is increased over a desired stitch rate for the tufted article that is
based on a gauge of the tufting machine;
reciprocating a series of needles to deliver the yarns into the backing
material to form tufts of yarns therein;

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engaging the yarns delivered into the backing material by the needles with
a series of gauge parts to pull loops of yarns from the needles for forming
the tufts of yarns in the backing material;
shifting at least some of the needles transversely according to a desired
shift profile based upon a number of colors of yarns of the pattern for the
tufted article;
controlling feeding of the yarns to the needles in accordance with the shift
profile of the pattern for the article to selectively form a number of high
tufts of yarns and to selectively pull back loops of yarns to form the
pattern;
wherein the tufts of yarns are formed in the backing material at an
effective stitch rate, so as to form the patterned article with the number of
high tufts formed substantially matching the desired stitch rate of the
tufting machine and with the loops of yarns selectively pulled back being
substantially hidden by the high tufts of yarns.
(Id., col. 12:31–56.)
3. The Accused Products
CMC accuses Tuftco of directly and indirectly infringing the Asserted Patents.
Specifically, CMC alleges Tuftco created a competing—but infringing—technology, and then
manufactured and sold products that perform that technology. According to CMC, Tuftco refers
to this competing technology in multiple ways, including “Colortuft,” “iTuft,” “iTuft c,” “Easy
Pattern,” and “Easy Mode.”5 (Doc. 442, at 11–12.) For simplicity, the Court will refer to the
allegedly infringing technology as “Colortuft/iTuft c.” At issue are twenty-nine tufting machines
made by Tuftco (the “Accused Products”), including twenty-eight single- and double-needle-bar
machines sold by Tuftco (Doc. 457, at 1) and one in-house sample machine (Doc. 454-9, at 61).
Though ColorPoint fabrics are typically made with single-needle-bar machines (Id. at 105; Doc.
292-1, at 14, col. 5:10–30), CMC alleges that the double-needle-bar Accused Products also
5

Tuftco did not include a statement of facts with its summary judgment papers, so the Court
understands Tuftco does not dispute that these names all reference the same technology.

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infringe the Severed Claims.6 Double-needle-bar machines operate similarly to single-needlebar machines, but with some differences. The “gauge” of a single-needle-bar machine refers to
the spacing between the needles on the needle bar. (Doc. 292-1, at 13, col. 4:43–46; Doc. 454-9
at 91.) A 1/10th gauge machine, for example, will have needles spaced at 1/10th of an inch, or
ten needles per inch, on its needle bar. (Id.) Double-needle-bar machines have a “composite
gauge,” which consists of the combined gauge of both of its needle bars. (Doc. 454-11, at 133.)
For example, a 1/10th gauge composite double-needle-bar machine will have two 1/5th gauge
needle bars. (Id.) Each needle bar of the double-needle-bar Accused Products can carry all
colors of the pattern being tufted. (Id.) The needle bars typically run parallel to each other. (Id.,
at 133–34; Doc. 292-1, at 104, ¶ 12.) The needle bars can either shift with one another or against
each other. (Doc. 454-11, at 134.) The needle bars are offset and do not stitch in the same
longitudinal path. (Id. at 135.) In other words, if the front needle bar is stitching the odd rows,
the rear needle bar would be stitching only the even rows. (Id.) Of course, with a single-needlebar tufting machine, the needle bar would tuft every longitudinal row.
During discovery, CMC’s expert, Steven Berger, conducted inspections on five of the
Accused Products, including: (1) a 1/10th gauge single-needle-bar machine sold to Lexmark; (2)
a 1/10th gauge single-needle-bar machine sold to Signature; (3) a 1/12th composite gauge
double-needle-bar machine with two staggered 1/6th gauge needle bars sold to J&J Industries;
(4) a 1/10th gauge single-needle-bar machine sold to Shaw; and (5) a 1/10th composite gauge
double-needle-bar machine with two staggered 1/5th needle bars, which Tuftco keeps in house as

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Tuftco refers to its 1/12th gauge double-needle-bar machines as “iTuft 6c” machines and its
1/10th gauge double-needle-bar machines as “iTuft 5c” machines. (Doc. 454-11, at 190.)

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a sample machine (together, the “Inspected Machines”).7 (Doc. 454-9, at 60–61.) CMC alleges
that Tuftco directly infringed the Machine Claim—Claim 1 of the ‘703 Patent—by
manufacturing and selling the Accused Products. (Doc. 442, at 31.) Additionally, CMC alleges
Tuftco directly infringed the Method Claims by producing in-house samples to market
Colortuft/iTuft c.8 (Id. at 31–32.) Finally, CMC asserts Tuftco indirectly infringed the Method
Claims by inducing its customers to directly infringe them. (Id. at 32–33.)
4. Procedural History
CMC initiated this action on October 7, 2014, alleging infringement of the Asserted
Patents. (Docs. 1, 127.) As is relevant here, Tuftco asserted affirmative defenses of noninfringement, invalidity, inequitable conduct, and patent misuse. (Doc. 128.) Tuftco also
asserted counterclaims for: (1) non-infringement, invalidity, and unenforceability; (2) tortious
interference with business relationships; (3) unfair trade practices; and (4) unfair competition.
(Id.) Pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), the Court held a
claim-construction hearing on April 19, 2016 (the “Markman hearing”), and thereafter issued an
order construing ten disputed terms in the Asserted Patents. (Doc. 220.) On October 20, 2016,
the Court issued an order directing each party to file one comprehensive summary judgment
motion supported by a forty-page memorandum, in lieu of serial motions and memoranda. (Doc.
280.)

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At the summary judgment hearing, Tuftco conceded that “the machines that . . . were in the
inspection are typical of the other machines, not inspected, that have been made by Tuftco.”
(Doc. 474, at 81.)
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CMC alleges direct and indirect infringement of all of the Method Claims in its Complaint
(Doc. 127), but it only moves for summary judgment of infringement on the following Method
Claims: Claims 8, 10, and 12 of the ‘505 Patent; Claims 21 and 27 of the ‘989 Patent; and Claim
28 of the ‘703 Patent.

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On November 4, 2016, the parties filed their motions for summary judgment. (Docs.
288, 289, 450.) On November 28, 2016, each party responded in opposition to the other’s
motion. (Docs. 319, 325, 445, 452.) Also on November 28, 2016, Tuftco filed a motion to strike
and for sanctions. (Doc. 317.) On December 8, 2016, each party filed a reply in support of its
motion. (Docs. 334, 336, 447, 453.) On December 15, 2016, CMC responded in opposition to
Tuftco’s motion to strike (Doc. 345), and Tuftco replied on December 22, 2016 (Doc. 352).
These motions are now ripe for the Court’s review.
II.

MOTION TO STRIKE AND FOR SANCTIONS
The Court will first address Tuftco’s motion to strike. Tuftco moves to strike the portions

of CMC’s summary judgment brief that exceed the Court’s page limitation on memoranda
accompanying summary judgment motions. (Doc. 317.) Specifically, Tuftco argues that CMC
improperly incorporated into its brief over fifty pages from its expert’s infringement report in
contravention of the Court’s order imposing a forty-page limit. (Id.) Tuftco cites a number of
cases in support, including two from this district and one from the Sixth Circuit.
Unlike the cases cited by Tuftco, however, the document CMC “incorporates” is not
argument or submissions by an attorney, but portions of an expert report. Cf., e.g., Cross v.
Sbarro Am., Inc., No. 1:09-cv-275, 2011 WL 572415, at *4 (E.D. Tenn. Feb. 15, 2011)
(sustaining an objection to a party’s incorporation of an attached statement of undisputed facts).
Under the Federal Rules of Civil Procedure, a party may support its motion for summary
judgment by “citing to particular parts of materials in the record, including depositions,
documents, electronically stored information, affidavits or declarations, stipulations (including
those made for purposes of the motion only), admissions, interrogatory answers, or other
materials . . . .” Fed. R. Civ. P. 56(c)(1)(A). Moreover, the importance of expert opinion at the

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summary judgment stage in patent litigation must not be ignored. See, e.g., Intellectual Sci. &
Tech., Inc. v. Sony Elecs., Inc., 589 F.3d 1179, 1183 (Fed. Cir. 2009) (“To satisfy the summary
judgment standard, a patentee’s expert must set forth the factual foundation for his infringement
opinion in sufficient detail for the court to be certain that features of the accused product would
support a finding of infringement . . . .”). CMC’s memorandum simply points to other portions
of the record, in context, without unnecessarily burdening the Court with in-bulk reproductions
of such content. There is nothing inappropriate—much less sanctionable—about CMC’s
conduct. Accordingly, the Court finds that CMC has not improperly exceeded the page
limitation and will DENY Tuftco’s motion to strike and for sanctions (Doc. 317).
III.

MOTIONS FOR SUMMARY JUDGMENT
Tuftco moves for summary judgment that the Asserted Patents are invalid due to

indefiniteness and anticipation. In the alternative, Tuftco seeks summary judgment that the
“invention” in the Asserted Patents is limited to software CMC uses to run ColorPoint. (Doc.
450.) Tuftco also moves for summary judgment of non-infringement and on a number of
damages issues. (Id.)
CMC moves for summary judgment: (1) that the Severed Claims are valid with respect
to anticipation, obviousness, indefiniteness, and ineligibility under 35 U.S.C. § 101; (2) that the
Inspected Machines are representative of all Accused Products; (3) that Tuftco has directly
infringed the Machine Claim and the Method Claims; (4) that Tuftco has indirectly infringed the
Method Claims; and (5) on Tuftco’s counterclaims and affirmative defenses of inequitable
conduct, tortious interference, unfair competition, unfair trade practices, and patent misuse.
(Doc. 289.)

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1. Standard of Review
Summary judgment is proper when “the movant shows 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). The Court views the evidence in the light most favorable to the nonmoving party and
makes all reasonable inferences in favor of the nonmoving party. Matsushita Elec. Indus. Co.,
Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Nat’l Satellite Sports, Inc. v. Eliadis Inc.,
253 F.3d 900, 907 (6th Cir. 2001).
The moving party bears the burden of demonstrating that there is no genuine dispute as to
any material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Leary v. Daeschner, 349
F.3d 888, 897 (6th Cir. 2003). The moving party may meet this burden either by affirmatively
producing evidence establishing that there is no genuine issue of material fact or by pointing out
the absence of support in the record for the nonmoving party’s case. Celotex Corp., 477 U.S. at
325. Once the movant has discharged this burden, the nonmoving party can no longer rest upon
the allegations in the pleadings; rather, it must point to specific facts supported by evidence in
the record demonstrating that there is a genuine issue for trial. Chao v. Hall Holding Co., Inc.,
285 F.3d 415, 424 (6th Cir. 2002).
At summary judgment, the Court may not weigh the evidence; its role is limited to
determining whether the record contains sufficient evidence from which a jury could reasonably
find for the non-movant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248–49 (1986). A mere
scintilla of evidence is not enough; the Court must determine whether a fair-minded jury could
return a verdict in favor of the non-movant based on the record. Id. at 251–52; Lansing Dairy,
Inc. v. Espy, 39 F.3d 1339, 1347 (6th Cir. 1994). If not, the Court must grant summary
judgment. Celotex, 477 U.S. at 323.

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The standard of review when parties file cross-motions for summary judgment is the
same as when only one party moves for summary judgment. Taft Broad. Co. v. United States,
929 F.2d 240, 248 (6th Cir. 1991). When there are cross-motions for summary judgment, the
court must “evaluate each party’s motion on its own merits, taking care in each instance to draw
all reasonable inferences against the party whose motion is under consideration.” Id. In
considering cross motions for summary judgment, the court is “not require[d] . . . to rule that no
fact issue exists.” Begnaud v. White, 170 F.2d 323, 327 (6th Cir. 1948).
2. Invalidity
Generally, patents are presumed valid, and the party challenging validity bears the burden
of proving invalidity by clear and convincing evidence. 35 U.S.C. § 282(a); Microsoft Corp. v.
i4i Ltd. P’ship, 564 U.S. 91, 95 (2011). “Clear and convincing evidence is such evidence that
produces ‘an abiding conviction that the truth of [the] factual contentions are highly probable.’”
ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012)
(quoting Colorado v. New Mexico, 467 U.S. 310, 316 (1984)).
Tuftco moves for summary judgment that: (1) Claim 1 of the ‘703 Patent is invalid for
indefiniteness under 35 U.S.C. § 112, ¶ 6; and (2) the Severed Claims are invalid as anticipated.
CMC moves for summary judgment on Tuftco’s invalidity defenses and counterclaims, asserting
that insufficient evidence exists to support: (1) indefiniteness under § 112, ¶ 2 and ¶ 6; (2)
anticipation; (3) obviousness; and (4) ineligibility under § 101.
i. Indefiniteness
Tuftco counterclaims that all three Asserted Patents are invalid under 35 U.S.C. § 112.
(Doc. 128, at 9.) Tuftco now moves for summary judgment specifically on Claim 1 of the ‘703

16

Patent, based on invalidity due to indefiniteness under 35 U.S.C. § 112, ¶ 6.9 CMC cross-moves
for summary judgment on Tuftco’s invalidity counterclaim generally, arguing that Tuftco cannot
establish that the Asserted Patents are invalid under 35 U.S.C. § 112, ¶ 2 or ¶ 6.
1. 35 U.S.C. § 112, ¶ 6
Both parties move for partial summary judgment under 35 U.S.C. § 112, ¶ 6. Whether a
claim is subject to § 112, ¶ 6, is a matter of claim construction and, therefore, a question of law.
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346 (Fed. Cir. 2015). However, in construing
a claim, the Court may make underlying findings of fact based on extrinsic evidence, such as
expert testimony. Id. Pursuant to § 112, ¶ 6, a patent applicant may express an element of a
claim “as a means or step for performing a specified function . . . and such claim shall be
construed to cover the corresponding structure . . . described in the specification and equivalents
thereof.” 35 U.S.C. § 112, ¶ 6. Though paragraph six allows means-plus-function language,
those claims are “still subject to the [§ 112, ¶ 2] requirement that a claim ‘particularly point out
and distinctly claim’ the invention.” In re Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir.
1994) (quoting § 112, ¶ 2). Accordingly, if a patentee uses generic language to claim function
under § 112, ¶ 6, it must clearly identify and describe a corresponding structure in the
specification for performing the claimed function. Williamson, 792 F.3d at 1351. If the patentee
does not specify such structure, the claim is considered purely functional and invalid for
indefiniteness. Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1363 (Fed. Cir.
2012).

9

Under the America Invents Act (“AIA”), paragraphs 2 and 6 of 35 U.S.C. § 112 were
recodified as 35 U.S.C. § 112(b) and § 112(f), respectively. Because the application resulting in
the Asserted Patents was filed before the AIA took effect, the Court will refer to the pre-AIA
version of § 112. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2125 n.1 (2014).

17

Tuftco argues that Claim 1 of the ‘703 Patent is properly construed as a means-plusfunction claim under § 112, ¶ 6, because it uses generic language—“control system”—to claim
function. (Doc. 450, at 10–13.) According to Tuftco, because the patent specification fails to
disclose sufficient structure as required of means-plus-function claims, Claim 1 is invalid for
indefiniteness. (Id. at 13–15.)
The first inquiry under § 112, ¶ 6, is whether Claim 1 of the ‘703 Patent should be
construed as a means-plus-function claim. In determining whether a means-plus-function
construction applies, the Court analyzes “whether the words of the claim are understood by
persons of ordinary skill in the art to have a sufficiently definite meaning as the name for
structure.” Williamson, 792 F.3d at 1349. A claim that does not include the word “means”
carries a rebuttable presumption that the limitation is not subject to § 112, ¶ 6.10 Id. The
presumption is overcome if “the claim term fails to ‘recite sufficiently definite structure’ or else
recites ‘function without reciting sufficient structure for performing that function.’” Id. (quoting
Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). In other words, the Court asks
whether “the claim language, read in light of the specification, recites sufficiently definite
structure to avoid § 112, ¶ 6.” Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d
1366, 1372 (Fed. Cir. 2015) (quoting Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099
(Fed. Cir. 2014)). In Williamson, for example, the Federal Circuit held that a limitation claiming
a “distributed learning control module” and three functions it performed was subject to a meansplus-function construction. 792 F.3d at 1350–51. Though the limitation did not contain the term
“means,” the court noted that “[g]eneric terms such as ‘mechanism,’ ‘element,’ [and] ‘device’ . .

10

Williamson, however, explicitly overruled Federal Circuit precedent characterizing the
presumption as “strong.” 792 F.3d at 1349.

18

. that reflect nothing more than verbal constructs may be used in a claim in a manner that is
tantamount to using the word ‘means’ . . . .” Id. at 1350. “[M]odule,” the court found, “is a
well-known ‘nonce word’ that can operate as a substitute for ‘means’ . . . .” Id. Moreover, the
prefix “distributed learning control” did not add structure to the phrase. Id. at 1351. The court
also noted that the claim language did not describe how the “‘distributed learning control
module’ interacts with other components . . . in a way that might inform the structural character
of the limitation in question” and that nothing in the specification or prosecution history imparted
structure into the phrase. Id.
Here, Claim 1 provides in pertinent part: “A tufting machine for forming pattern tufted
articles including different color yarns therein, comprising: . . .
a control system for controlling said yard feed mechanism in cooperation with
said at least one needle bar shifter shifting the at least one needle bar in
accordance with a series of transverse pattern shift steps received by the control
system, to control feeding of the yarns to said needles as the needles are
reciprocated and as the needle bar is shifted in accordance with the transverse
pattern shift steps as needed to form selected tufts of yarns of a desired height and
to pull non-selected ones of the yarns low or out of the backing material for each
pattern step;
wherein the control system is linked to and controls the backing feed rolls for
feeding the backing material such that the tufts of yarns are formed in the backing
material at an effective stitch rate that is determined by increasing a prescribed
stitch rate of the patterned tufted article that is based on the gauge of the tufting
machine by a selected amount so as to form the patterned articles with the
selected tufts of yarns having an appearance of being formed at the desired stitch
rate.”
(Doc. 292-1, at 67, col. 9:17–18, 33–51 (emphasis added).) As the limitation in question lacks
the word “means,” it carries a rebuttal presumption that § 112, ¶ 6, does not apply.
The presumption is not overcome, because the language of Claim 1, read in light of the
specification, recites sufficiently definite structure to avoid § 112, ¶ 6. Turning first to the term
itself, Tuftco argues that, like the terms “mechanism,” “element,” or “device,” “system” is a

19

generic substitute for “means.” In support, Tuftco cites Automotive Technologies International,
Inc. v. Delphi Corp., a district court case from the Eastern District of Michigan which found that
the phrase “a measurement system” indicates a means-plus-function limitation. No. 08-11048,
2009 WL 2960698, at *12–13 (E.D. Mich. Sept. 11, 2009). Although the Automotive
Technologies court found that “‘[s]ystem’ is the same sort of generic term as ‘means,’
‘mechanism’ and ‘device,’” other district courts, including courts with a heavy patent docket,
have disagreed. See, e.g., Blitzsafe Tex., LLC v. Honda Motor Co., No. 2:15-cv-1274-JRG-RSP,
2016 WL 4762083, at *14 (E.D. Tex. Sept. 13, 2016) (finding “integration subsystem” to denote
structure); Perdiem Co, LLC v. IndusTrack LLC, No. 2:15-cv-727-JRG-RSP, 2016 WL 3633627,
at *37 (E.D. Tex. July 7, 2016) (“The term ‘system’ as used here is different from the word
‘module’ in Williamson.”). Accordingly, Automotive Technologies does not persuade the Court
that it should treat the phrase “control system” as a mere means-plus-function limitation.11
Moreover, the language of Claim 1, viewed in light of the specification, imparts structure
to the term. Claim 1 specifies that the “control system” works “in cooperation with said at least
one needle bar shifter” which receives a “series of transverse pattern shift steps” from the
“control system.” (Doc. 292-1, at 67, col. 9:34–37.) The “control system” is also “linked to and
controls the backing feed rolls.” (Id. at col. 9:43–44.) This claim language structurally connects
the control system and other components of the claimed tufting machine. Moreover, the ‘703
Patent’s specification goes so far as to provide a specific example of a “control system” (“The
tufting machine control system 25 generally will comprise a tufting machine control such as a
‘Command Performance™’ tufting machine control system as manufactured by Card-Monroe
11

As noted below, Claim 1 is further distinguished from the claim in Automotive Technologies
because it contains language that structurally ties the “control system” to other components of
the tufting machine. See 2009 WL 2960698, at *13.

20

Corp.”)12 and further explains the structural components of a “control system” (“The control
system also typically includes a computer/processor or controller 26 that can be programmed
with various pattern information and which monitors and controls the operative elements of the
tufting machines . . . .”; “The tufting machine control system . . . further can receive and execute
or store pattern information directly from a design center . . . that can be separate and apart from
the tufting machine control system, or which can be included as part of the tufting machine
control system.”). (Doc. 292-1, at 64, col. 4:8–24.) Therefore, a person of ordinary skill in the
art would understand the necessary structure of a “control system” as contemplated by Claim 1.
Notably, Tuftco does not offer any testimony or evidence to demonstrate that one of
ordinary skill in the art would not understand the term “control system” to denote structure.
(Doc. 450, at 10–13.) Meanwhile, there is evidence in the record that an ordinarily skilled
artisan would understand “control system” as a name for structure. For example, CMC’s expert
concluded that “control system” is a common industry term that requires no construction. (Doc.
113-12, at ¶¶ 24–27.) Moreover, Tuftco itself appears to understand the structure of a “control
system.” In another section of its brief, Tuftco states “the type of ‘control system’ that is
referenced in [Claim 1] is the same type of ‘control system’ that existed in conventional tufting
machines that predated the Asserted Patents.” (Doc. 450, at 22.) Finally, during a deposition,
one of Tuftco’s experts appeared to understand that CMC’s “Command Performance” and
Tuftco’s “Encore” are “control systems” that are used for tufting machines. (Doc. 454-12, at 7.)

12

Tuftco argues that if the Command Performance software constitutes the “control system,”
then Claim 1 “is anticipated because Command Performance was offered years earlier, and all
other elements of the claim are conventional.” (Doc. 450, at 13 n.3.) However, as the Court
notes below in Part III(b)(ii)(2)(c), “a new combination of steps in a process may be patentable
even though all the constituents of the combination were well known and in common use before
the combination was made.” Diamond v. Diehr, 450 U.S. 175, 188 (1981).

21

In short, Claim 1 provides far more description of the structure of the “control system”
than a mere means-plus-function claim. For the foregoing reasons, the Court finds that Claim 1
of the ‘703 Patent is not a means-plus-function claim subject to 35 U.S.C. § 112, ¶ 6. Because
Claim 1’s use of the term “control system” does not render it a means-plus-function claim,
Tuftco’s motion for summary judgment that Claim 1 of the ‘703 Patent is invalid for
indefiniteness under 35 U.S.C. § 112, ¶ 6, is DENIED, and CMC’s cross-motion for summary
judgment on this ground is GRANTED.
2. 35 U.S.C. § 112, ¶ 2
CMC moves for summary judgment on Tuftco’s invalidity counterclaim that the Severed
Claims are indefinite under 35 U.S.C. § 112, ¶ 2. Tuftco did not respond to CMC’s motion with
respect to § 112, ¶ 2. Tuftco did, however, argue that Claim 1 of the ‘703 Patent is indefinite
with respect to the term “selected amount” in its own motion for summary judgment, though it
did not move for summary judgment of invalidity under §112, ¶ 2. (Doc. 450, 15–16.)
Additionally, Tuftco’s expert, Ian Slattery, opines that the Severed Claims are indefinite based
on the following terms: (a) “desired stitch rate”; (b) “a gauge of the tufting machine”; (c) “by a
selected amount”; (d) “a shift profile based upon a number of colors of yarn of the pattern” or “a
number of colors” or “a number of different yarns” or “a desired number of yarns”; and (e) “an
appearance of increased density.” (Doc. 292-2, at 17–18.)
“Indefiniteness is a question of law . . . .” Eli Lilly & Co. v. Teva Parenteral Meds., Inc.,
845 F.3d 1357, 1370 (Fed. Cir. 2017). In determining whether a claim is indefinite, “general
principles of claim construction apply . . . .” Id. As such, the Court may make underlying
findings of fact based on extrinsic evidence. Id. Because patents are presumed valid, “any fact
critical to a holding on indefiniteness . . . must be proven by the challenger by clear and

22

convincing evidence.” One-E-Way, Inc. v. Int’l Trade Comm’n, 859 F.3d 1059, 1062 (Fed. Cir.
2017) (internal quotation omitted). To be definite under 35 U.S.C. § 112, a claim must “point[ ]
out and distinctly claim[ ]” the invention. § 112, ¶ 2. “A lack of definiteness renders invalid ‘the
patent or any claim in suit.’” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2125
(2014) (quoting § 282, ¶ 2(3)). As the Supreme Court has explained, § 112, ¶ 2, requires “that a
patent’s claims, viewed in light of the specification and prosecution history, inform those skilled
in the art about the scope of the invention with reasonable certainty.”13 Id. at 2129. This
requirement “strikes a ‘delicate balance’ between ‘the inherent limitations of language’ and
providing ‘clear notice of what is claimed.’” Sonix Tech. Co., Ltd. v. Publ’ns Int’l, Ltd., 844
F.3d 1370, 1377 (Fed. Cir. 2017) (quoting Nautilus, 134 S. Ct. at 2129). After Nautilus, the
Federal Circuit clarified the standard further, holding that, to satisfy § 112, ¶ 2, a claim “must
provide objective boundaries for those of skill in the art.” Interval Licensing LLC v. AOL, Inc.,
766 F.3d 1364, 1371 (Fed. Cir. 2014) (citing Nautilus, 134 S. Ct. at 2130 & n.8).
a. “by a selected amount”
Claim 1 of the ‘703 Patent provides for forming tufts of yarns in the backing material:
at an effective stitch rate that is determined by increasing a prescribed stitch rate
of the patterned tufted article that is based on the gauge of the tufting machine by
a selected amount so as to form the patterned articles with the selected tufts of
yarns having an appearance of being formed at the desired stitch rate.
(Doc. 292-1, at 67, col. 9:45–51 (emphasis added).) Slattery opines that the term is indefinite
because it “provides no technique for determining the ‘selected amount[.]’” (Doc. 292-2, at 17.)
13

Although the Supreme Court modified the prior “insoluble ambiguity” indefiniteness standard
used by lower courts before Nautilus, the Federal Circuit noted on remand that most lower court
precedent is still applicable as “all that is required is that the patent apprise [ordinary-skilled
artisans] of the scope of the invention.” Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374,
1381 (Fed. Cir. 2015) (citation omitted). Accordingly, this Court will “now steer by the bright
star of ‘reasonable certainty,’ rather than the unreliable compass of ‘insoluble ambiguity.’” Id. at
1380.
23

Tuftco argues that because both CMC and its expert Steven Berger cannot define the term, it is
indefinite. (Doc. 450, 15–16.) After a claim construction hearing the Court construed the term
“selected” to mean “chosen in accordance with the pattern.” (Doc. 220, at 19.) Though the
Court was cautious to read a limitation into the Severed Claims, it found that this construction
was not only consistent with the dictionary definition of “selected,” but also supported by the
claim language itself. (Id. at 18–19.)
Construing the term “by a selected amount” to mean “by an amount in accordance with
the pattern” provides a technique for determining the “selected amount,” i.e., the pattern.
Moreover, the ‘703 Patent’s specification makes clear that “a selected amount” is approximate to
the number of colors in the pattern. For example, the specification provides that “[t]ypically, the
operative or effective stitch rate run . . . will be approximately equivalent to a desired or
prescribed number of stitches per inch . . . , multiplied by the number of colors being run in the
programmed pattern.” (Doc. 292-1, at 64, col. 3:2–6 (emphasis added); see also id. at 65, col.
5:31–34.) Further, it provides that the “effective stitch rate is substantially faster than
conventional stitch rates (i.e., by a factor approximately equivalent to the number of colors being
tufted) in order to provide sufficient density for the tufts being formed in the pattern fields to
hide those color yarns not to be shown.” (Id. at 66, col. 8:6–10 (emphasis added).) The
specification, therefore, makes clear that the term “by a selected amount” should be a number
approximating the number of colors in the pattern, adjusted to achieve the characteristics the
customer ultimately wants to see in the finished patterned article. The term “by a selected
amount” does not fail to inform those skilled in the art about the scope of the invention.

24

b. “desired stitch rate”
The term “desired stitch rate,” or its synonyms “desired fabric stitch rate” and “prescribed
stitch rate,”14 appears in Claim 8 of the ‘505 Patent, in Claims 21, 22, 27, 28, 29, and 30 of the
‘989 Patent, and in Claims 1, 28, and 29 of the ‘703 Patent. After the claim-construction
hearing, the Court construed the term “desired stitch rate” to mean “the number of tufts of yarn
per linear inch dictated by the pattern design to be visible in the face of the pattern.” (Doc. 220,
at 4–9.) Despite the Court’s construction, Slattery opines that, unless the term “desired stitch
rate” is construed to mean “equal to the gauge of the tufting machine,”15 the term is indefinite,
because “the actual stitch rate applied is a result of several factors including the appearance and
weight of samples.” (Doc. 292-2, at 17.) Slattery provides an example:
So, if a 10th gauge sample is tufted at 10 stitches per inch and results in a weight
of 20 ounces when the manufacturer was looking for a 24 ounce product, the
stitch rate may be increased by 20%. This adjustment results in a stitch rate of 12
stitches per inch, but the desired result might not be the particular stitch rate, but
the weight of the face yarn.
(Id.)
The Court concludes that the term “desired stitch rate” does not have to be construed as
“equal to the gauge of the tufting machine” to satisfy § 112, ¶ 2. The claim language and
specifications clearly indicate that the term “desired stitch rate” is equivalent to the number of
yarns per linear inch the designer wishes to be visible in the face of the pattern. For example,
Claim 8 of the ‘505 Patent provides that the “desired fabric stitch rate . . . comprises a number of
stitches per inch desired for the patterned tufted article.” (Doc. 291-1, at 16, col. 10:53–55.) The

14

The parties agree these terms are synonymous. (See Doc. 220, at 4.)

15

The Court addresses whether “based on the gauge of the tufting machine” should be construed
as “equal to the gauge of the tufting machine” below in Parts III(d)(ii)(2) and III(d)(iii)(3).

25

‘505 Patent’s specification confirms that “the number of high tufts (the colors that are visible in
the finished tufted article), generally can be matched to the desired stitch rate for the tufting
machine . . . .” (Id. at 16, col. 9:26–29.)
Where a claim term is subjective, claim language and specifications can provide
sufficient guidance to satisfy the definiteness requirement. Sonix Tech., 844 F.3d at 1378;
Interval Licensing, 766 F.3d at 1371. Here, the language of the Severed Claims and their
specifications provide objective boundaries for those skilled in the art. The specifications clarify
that the end goal of the patented methods is a pattern with a full, consistent density across its
face. For example, Claim 8 of the ‘505 Patent provides that high and low tufts are formed in the
patterned tufted article “so as to substantially maintain density of the tufts of yarns being formed
in the backing material . . . .” (Id. at 16, col. 10:57–59.) The ‘505 Patent’s specification
provides that “the increased number of stitches per inch will provide sufficient enhanced density
between the high and low tufts of the finished patterned tufted article to avoid a missing color or
gap being shown or otherwise appearing in the patterned tufted article.” (Id. at 13, col. 3:6–10.)
Accordingly, the above language instructs one skilled in the art to avoid gaps in the face of the
pattern. Moreover, the claim language and specifications make clear that the desired stitch rate
is necessarily a fraction of the effective stitch rate. Claim 21 of the ‘989 Patent, for example,
provides that the effective stitch rate “comprises increasing the desired stitch rate for the pattern
by a multiple approximately corresponding to a number of colors of yarns used to form the
patterned articles.” (Id. at 50, col. 21:45-49.) Accordingly, if the pattern has two colors, the
desired stitch rate will be approximately half the effective stitch rate, with three colors, it will be
approximately a third, and so on. The ‘989 Patent’s specification confirms this: “the operative
or effective process stitch rate run by the stitch distribution control system will be substantially

26

higher than such typical conventional desired fabric stitch rates.” (Id. at 44, col. 9:8–11.) The
specification even provides examples: “for a tenth gauge machine generally run to achieve a
desired fabric stitch rate of approximately ten stitches per inch . . . if there are three colors in the
pattern, the operative or effective stitch rate . . . [will be] approximately thirty stitches per inch . .
. .” (Id., col. 9:19–27.) The fact that the “desired stitch rate” may vary based on customer
weight preference does not render the term indefinite. Finally, Tuftco uses synonyms for the
term “desired stitch rate,” such as “desired stitches per inch,” in its own user manuals, suggesting
that the term does not fail to inform those skilled in the art about the scope of the invention.
(See, e.g., Doc. 454-4, at 18.) Accordingly, a person of skill in the art considering the term
“desired stitch rate” is provided an objective baseline through which to interpret the Severed
Claims and would understand their scope with reasonable certainty.
c.

“a gauge of the tufting machine”

This term appears in Claims 1, 28, and 29 of the ‘703 Patent. Claim 1 provides for a
machine with “at least one needle bar having a series of needles mounted at a spacing based on a
gauge of the tufting machine . . . .” (Doc. 292-1, at 67, col. 9:19–20.)16 Claims 28 and 29
provide for methods with a “prescribed” or “desired stitch rate” that is “based upon a gauge of
the tufting machine . . . .” (Id. at 68, col. 12:26–27, 35–37.) Tuftco did not propose the term “a
gauge of the tufting machine” as a disputed claim term before the claim construction hearing
(Doc. 169), so the Court did not construe it. Slattery opines that this term is indefinite with
regard to double-needle-bar machines because those machines have multiple “gauges.” (Doc.
292-2, at 17.) For example, a double-needle-bar machine may be “called a 10th gauge machine,”
but it also has two 1/5th gauge needle bars. (Id.) Because Tuftco did not respond to CMC’s
16

Claim 1 also provides that the “prescribed stitch rate” is “based on the gauge of the tufting
machine . . . .” (Doc. 292-1, at 67, col. 9:47–48 (emphasis added).)

27

motion for summary judgment on indefiniteness with respect to § 112, ¶ 2, or move for summary
judgment on § 112, ¶ 2, in its own summary judgment motion, Slattery’s opinion is the only
basis that Tuftco provides for a determination that the term “a gauge of the tufting machine” is
indefinite.
As a fact critical to a holding on indefiniteness, Tuftco must prove by clear and
convincing evidence that those skilled in the art of tufting consider the gauge of each needle bar
to be “a gauge of the tufting machine.” See One-E-Way, 859 F.3d at 1062. Other evidence of
record, including evidence intrinsic to the ‘703 Patent, establishes that no reasonable jury could
conclude based on Slattery’s opinion alone that there is more than one “gauge of the tufting
machine.” The ‘703 Patent’s specification notes that a “typical desired stitch rate” in a
conventional tufting system “generally has been matched to the gauge of the tufting machine,
i.e., for a tenth gauge tufting machine, the stitch rate typically will be approximately ten stitches
per inch . . . .” (Doc. 292-1, at 65, col. 5:22–26.) Further, it states “for a tenth gauge machine
generally run using a desired stitch rate of approximately ten stitches per inch,” the effective
stitch rate for a three-color pattern will be “approximately thirty stitches per inch . . . .” (Id., col.
5:35–42.) Accordingly, it is clear that the specification does not contemplate a desired stitch rate
based on the gauge of a needle bar. Additionally, extrinsic evidence contradicts Slattery’s
assertion that there is more than one “gauge of the tufting machine.” For example, in a
deposition, Tuftco’s expert Lynne Paige referred to one double-needle-bar machine as “a 12
gauge. . . . That was two needle bars.” (Doc. 435, at 166, 167–68.) Steve Frost, Tuftco’s CEO,
testified that how much the needle bars of a double-needle-bar machine are offset “will depend
upon the gauge of the tufting machine. . . . [For a tenth-gauge machine] [i]t would be offset . . .
by a tenth.” (Doc. 454-11, at 134 (emphasis added).) This evidence confirms that, although a

28

double-needle-bar machine may have two needle bars with their own gauges, those skilled in the
art understand there is only one “gauge of the tufting machine.”17 For this reason, the Court
concludes that the term “a gauge of the tufting machine” does not fail to inform those skilled in
the art about the scope of Claims 1, 28, and 29 of the ‘703 Patent with reasonable certainty.
d. “a shift profile based upon a number of colors of yarn of the
pattern” or “a number of colors” or “a number of different
yarns” or “a desired number of yarns”
The term “a shift profile based upon a number of colors of yarn of the pattern” appears in
Claims 28 and 29 of the ‘703 Patent. The term “a number of colors” appears in Claims 21, 27,
and 30 of the ‘989 Patent. The term “a number of different yarns” appears in Claims 22 and 28
of the ‘989 Patent. The term “a desired number of yarns” also appears in Claim 28 of the ‘989
Patent. Tuftco did not propose these terms as disputed claim terms before the claim construction
hearing (Doc. 169), so the Court did not construe them. Slattery opines that these terms are
indefinite because they “do[ ] not define whether it is the total number of different colors or
yarns in the pattern or whether it is a number that does not exceed the number in the pattern.”
(Doc. 292-2, at 17.)
The claim language and specifications, however, demonstrate that these terms refer to the
number of colors in the pattern being tufted. For example, Claim 21 of the ‘989 Patent provides
for increasing the desired stitch rate by a multiple corresponding to “a number of colors of yarns
used to form the patterned article.” (Doc. 292-1, at 50, col. 21:47–49.) The ‘703 Patent
specification states that the effective stitch rate is faster “by a factor approximately equivalent to

17

Even as applied to Claim 1 of the ‘703 Patent, which provides for needle-bar spacing “based
on a gauge of the tufting machine,” the term is not indefinite. Taking Slattery’s example, the
gauge of each needle bar would be exactly half of the gauge of the machine, or 1/5th.
Accordingly, needle-bar spacing would still be “based on a gauge of the tufting machine.”

29

the number of colors being tufted . . . .” (Id. at 66, col. 8:6–8.) Accordingly, the terms “a shift
profile based upon a number of colors of yarn of the pattern,” “a number of colors,” “a number
of different yarns,” and “a desired number of yarns” do not fail to inform those skilled in the art
about the scope of the invention with reasonable certainty.
e. “an appearance of increased density”
This term appears in Claim 28 of the ‘703 Patent, which provides:
wherein the tufts of yarns are formed in the backing material at an increased
effective stitch rate that is at least two times a prescribed stitch rate based upon a
gauge of the tufting machine, for the feeding of the backing material for the
pattern of the tufted article so as to form the patterned article with an appearance
of an increased density.
(Id. at 68, col. 12:24–30 (emphasis added).) Slattery opines that the term “does not have a
reference point, and the method described in the patents appears to be to create square density,
i.e., 10 stitches per inch on a 10th gauge tufting machine, which is a standard density . . . .”
(Doc. 292-2, at 18.)
In light of the specifications, the term “an appearance of increased density” does not fail
to inform those skilled in the art about the scope of the invention with reasonable certainty. The
703 Patent’s specification makes clear that the term refers to a face density that does not have
missing colors or gaps as compared to patterns tufted with conventional methods—not to have a
face density that is necessarily higher than standard density. For example, the specification
provides that “the increased number of stitches per inch will provide sufficient enhanced density
to the finished pattern tufted article to avoid a missing color or gap being shown or otherwise
appearing in the patterned tufted article.” (Id. at 64, col. 3:10–13.) Accordingly, the term “an
appearance of increased density” informs those skilled in the art about the scope of Claim 28 of
the ‘703 Patent with reasonable certainty.

30

The Court, therefore, concludes that the Severed Claims are not invalid for indefiniteness
and will GRANT CMC’s motion for summary judgment that the Severed Claims are not
indefinite under 35 U.S.C. § 112, ¶ 2.
ii. Anticipation
Tuftco moves for summary judgment that: (1) the Severed Claims are invalid as
anticipated by graphics tufting machines; (2) Claim 12 of the ‘505 Patent is invalid as anticipated
by the Silhouette Carpet and the Thorn Carpet; and (3) Claim 1 of the ‘703 Patent is invalid as
anticipated by conventional tufting machines. CMC cross-moves for summary judgment that the
Severed Claims are not anticipated.
1. Standard
Whether a claim has been anticipated under 35 U.S.C. § 102 is a question of fact.
ActiveVideo Networks, Inc. v. Verizon Commc’ns, 694 F.3d 1312, 1327 (Fed. Cir. 2012). A
claim is invalid as anticipated under § 102 if a single prior art reference contains every claim
limitation. Id.
2. Tuftco’s Motion for Summary Judgment
Tuftco makes three arguments in regard to anticipation. First, Tuftco argues that the
operation of a single needle bar on a graphics machine, as reflected in the “Medallion” rug,
anticipates the Severed Claims. (Doc. 450, at 23–24.) Second, Tuftco argues that both the
Silhouette Carpet, sold by Dixie Home, and the Thorn Carpet, produced by Tuftco, anticipated
Claim 12 of the ‘505 Patent. (Id. at 16–19.) Finally, Tuftco insists that conventional tufting
machines anticipate Claim 1 of the ‘703 Patent. (Id. at 19–22.) Tuftco is required to prove by
clear and convincing evidence that every limitation of a claim was contained in a single prior art
reference in order to prove anticipation. Zenith Elecs. Corp. v. PDI Commc’n Sys., Inc., 522

31

F.3d 1348, 1363 (Fed. Cir. 2008). To succeed on its motion, Tuftco must show that no
reasonable jury would have a legally sufficient basis to find for CMC on Tuftco’s anticipation
defense.
a. Graphics Tufting Machines’ Anticipation of the Severed
Claims
Tuftco argues that the action of a one needle bar of a graphics machine,18 which operates
with two shifting needle bars and has existed in the tufting industry for thirty-five years,
anticipated the Severed Claims. Tuftco relies specifically on the Medallion rug, which was
tufted by a graphics machine, described in the 2002 International Carpet Yearbook, and
displayed at the 2003 Domotex International Floor Covering and Carpet Show in Hanover,
Germany.19 According to Tuftco:
One needle bar of the graphics tufting machine creating the Medallion design had
needles spaced at 5/32nds gauge (6.4 per inch), backing feed rolls feeding a
backing material through a tufting zone; a single end scroll yarn feed attachment
for feeding yarns to the needles; a needle bar shifter for shifting the needle bar;
series of loopers (gauge parts) mounted below the tufting zone to form tufts of
yarn in the backing material; and Tuftco’s Win PCCI Operating System to control
the yarn feed mechanism and pull selected yarns low. This 5/32nds needle bar
carried two different color yarns, was shifting, and made 12.8 penetrations per
longitudinal inch as the backing was fed through the machine (twice the gauge of
the needle bar). Furthermore, in the areas of the pattern where one of the two
yarns carried by the needle bar was pulled low, it produced an appearance of
having been tufted at a 5/32nds (6.4 per inch) stitch rate because the low stitches
are hidden. Thus the 5/32nds gauge needle bar tufted at a desired stitch rate equal
to the gauge of the needle bar and at an effective stitch rate of 12.8 stitches per
inch while tufting two colors of yarn—or exactly twice the desired stitch rate.
18

The parties do not dispute that graphics machines and double-needle-bar machines are the
same. (See Doc. 442, at 42; Doc. 452, at 15.)

19

Tuftco also mentions another pattern: “As illustrated in the monkey design, one needle bar,
threaded with black yarns, tufts a black background while the monkey image is tufted with the
two green and beige yarns on the other needle bar.” (Doc. 450, at 24.) Tuftco neither expands
on this statement nor provides any citations to the record. Accordingly, the Court focuses on
Tuftco’s argument concerning the Medallion rug.

32

(Doc. 450, at 24.) In support, Tuftco cites only to deposition testimony by Steve Frost, Tuftco’s
CEO, in which he describes the Medallion rug and the method used to produce it in response to a
question about when Tuftco began experimenting with compressing stitch rates and displacing
color. (Doc. 454-11, at 150–51, 155–57.) Frost’s testimony regarding the Medallion rug states
in its entirety:
Q.

Do you recall the first sample or experimentation Tuftco made with
compressing stitch rates and displacing color?

A.

Yes.

Q.

Tell me about that one.

A.

Well, we have samples, that I think we’ve produced to you, that are dated
in 2001 that—we have some two-color samples that are tenth-gauge
samples with fifteen stitches per inch. We produced this medallion rug,
that was in a magazine in 2001 or 2002, that was four colors. It was fivesixty-fourth-gauge composite gauge. Each of the needlebars was fivethirty-second gauge, or six-point-four needles per inch. We were tufting
twelve-point-eight stitches per inch, which was twice the gauge of each
needlebar at that time; but it was certainly not twice the composite gauge.
But, again, it was a tradeoff between getting multicolor images into a
fabric versus significantly lower output with a higher stitch rate, as well
as, the more colors, the more yarn you’re putting on the back when you’re
not showing those colors.

Q.

That Two—that 2001 sample, how many colors?

A.

Well, one of these was the medallion rug that was four colors, and then we
had some two-color samples.

...
A.

That particular sample was made in our design center on a two-meter
Moog-based PCCI machines sometime in 2001, and it was depicted in a—
I believe—my best recollection is in a 2002 International Carpet Yearbook
and described in that article as a four-color rug manufactured on Tuftco’s
single-end Servo Scroll machine.

Q.

How many colors?

A.

Four colors.

Q.

Do you know what the effective stitch rate was per longitudinal inch?
33

A.

Well, it will vary in that sample, because we—the sample was twelvepoint-four stitches per inch, but there are some areas where there is this
tweeding or double density of that. So, in those areas, there are twelve
stitches, twelve-point-four stitches, per longitudinal inch. In other areas,
there’s only six-point—excuse me—twelve-point-eight, I should have
said. Six-point-four in some other areas, where it’s more the single color.
But, in that particular sample, we were trying to create so many different
looks, in terms of the combination of those four colors, we weren’t always
totally burying or trying to hide one end. We were actually trying to show
a whole variation of combinations of colors.

Q.

Okay. So your effective stitch rate is in the area of twelve-point-eight, you
said?

A.

Yes. In some areas. In some areas, it’s only six-point-four in terms of
what’s really totally at the high pile, but not necessarily only seen.

Q.

Gotcha. Was—and that was a shifting needlebar?

A.

There was two shifting needlebars.

Q.

Double-needlebar machine?

A.

Double needlebar. It was five-thirty-second gauge on each needlebar.

Q.

Were those needlebars in line with one another, or were they offset
laterally?

A.

They were offset, but I think the backstitch of that would show that they
were basically tufting in the same general direction most of the time.

Q.

But not in the same stitch location?

A.

No. I mean, not in the way that we described that previously in terms of
every stitch location. There were stitch locations for the front bar and
stitch locations for the back bar.

(Id.)
Tuftco has not produced clear and convincing evidence that every limitation of the
Severed Claims was contained in the actions of one needle bar of a graphics machine.
“Typically, testimony concerning anticipation must be testimony from one skilled in the art and
must identify each claim element, state the witnesses’ interpretation of the claim element, and

34

explain in detail how each claim element is contained in the prior art reference.”20 Schumer v.
Lab. Comput. Sys., Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002). In Schumer, in support of its
anticipation argument, the alleged infringer, LCS, submitted a declaration from its president that
described “his understanding of the operation and steps performed” by the alleged prior art
reference. Id. at 1309, 1316. The prior art reference was developed by LCS and, more
specifically, programmed by LCS’s president. Id. at 1309. Relying on the president’s
declaration, the district court granted LCS summary judgment of invalidity by anticipation. Id.
The Federal Circuit reversed, finding that LCS did not prove by clear and convincing evidence
that the prior art anticipated the claim at issue, because the declaration “[did] not clearly describe
the operative steps of the method recited in [the claim at issue], nor how those operative steps
[were] performed by the [alleged prior art].” Id.; see also Creative Compounds, LLC v. Starmark
Labs., 651 F.3d 1303, 1313 (Fed. Cir. 2011) (affirming a finding that patent was not invalid
where movant “failed to provide any testimony from one skilled in the art identifying each claim
element and explaining how each claim element is disclosed in the prior art reference”); Koito
Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004) (holding that where
an alleged infringer failed to articulate how a prior art reference anticipates the patent, it has not
presented sufficient evidence for a jury to find anticipation “even when the reference has been
submitted into evidence”).

20

An element-by-element analysis, however, may not be necessary where the technology is
easily understood. Compare Centricut, LLC v. Esab Grp., Inc., 390 F.3d 1361, 1369 (Fed. Cir.
2004) (finding expert element-by-element analysis necessary to establish infringement where the
patents concerned electrodes for plasma arc torches) with Prima Tek II, LLC v. Polypap,
S.A.R.L., 412 F.3d 1284, 1290 n.7 (Fed. Cir. 2005) (finding such analysis unnecessary for a
disposable device for holding floral arrangements). Here, there is no suggestion that carpet
tufting machines and methods are within the knowledge of a layperson and, therefore, an
element-by-element analysis is required.

35

Here, Tuftco has failed to provide testimony from one skilled in the art that identifies
each claim element of the Severed Claims and explains how each element is contained in the
operation of one needle bar of a graphics machine. Similar to the alleged infringer in Schumer,
in support of its anticipation argument, Tuftco merely cites deposition testimony from Steve
Frost, its CEO, that describes the Medallion rug and how it was produced.21 Although Tuftco
attempts to articulate how a graphics machine needle bar has anticipated the Severed Claims in
its brief—albeit without identifying each claim element—“arguments of counsel cannot take the
place of evidence lacking in the record.” Whitserve, LLC v. Comput. Packages, Inc., 694 F.3d
10, 23 (Fed. Cir. 2012) (internal quotation omitted).
Even if Tuftco’s argument were supported by sufficient evidence, it would still fail.
First, Tuftco errs by calculating the effective stitch rate by multiplying the “desired stitch rate”
for the pattern by the number of colors one needle bar tufted during the creation of the Medallion
rug, i.e., two. The Severed Claims, with the exception of Claims 28 and 29 of the’703 Patent,
determine the effective stitch rate by multiplying the number of colors in the pattern, not the
number of colors one needle bar carries. For example, Claim 8 of the ‘505 Patent provides that
the effective stitch rate is determined by multiplying the desired stitch rate by “the number of

21

Though not presented in its briefs, Tuftco presented additional evidence at the summary
judgment hearing in the form of Ian Slattery’s expert report. (Doc. 292-2, at 11–12.) Slattery
describes the components of the Medallion rug, but, like Frost’s testimony, he does not identify
each claim element of the Severed Claims or explain how each element is contained in the
operation of one needle bar of a graphics machine. (Id.) In fact, Slattery never explicitly opines
that the operation of one needle bar of a graphics machine anticipates the Severed Claims. (Id. at
15–16.) Moreover, Slattery’s report is not sufficient to raise a material issue of fact, because:
(1) he does not provide any relevant information about the Medallion rug that is not provided by
Frost’s testimony (id. at 11–12); and (2) below the Court concludes that even if it considers the
evidence presented by Tuftco, the Medallion rug did not anticipate the Severed Claims.
Accordingly, even if the Court considered Tuftco’s late-presented evidence, it would still fail to
meet its burden.

36

colors being formed in the patterned tufted article . . . .” (Doc. 292-1, at 16, col. 10:51–53.)
Frost testified that the Medallion rug contained four colors. (Doc. 454-9, at 150.) Accordingly,
to anticipate the Severed Claims, the Medallion rug would have to have been tufted at an
effective stitch rate that is four times the purported desired stitch rate (25.6 stitches per inch, not
12.8), regardless of how many colors each needle bar carries. To hold otherwise would be to
ignore the full four-color pattern reflected in the Medallion rug and to pretend that only a portion
of that pattern existed.
As noted, this conclusion does not apply to Claims 28 and 29 of the ‘703 Patent, which
do not calculate an effective stitch rate by the number of colors in the pattern. Claim 28 provides
that the effective stitch rate is “at least two times a prescribed stitch rate based upon a gauge of
the tufting machine . . . .” (Doc. 292-1, at 69, col. 12:25–27.) Claim 29 provides for an effective
stitch rate “that is increased over a desired stitch rate . . . that is based on a gauge of the tufting
machine.” (Id. col. 12:35–36.) Tuftco argues that one bar of a graphics machine tufting the
Medallion rug accomplished the increased effective stitch rate required by these claims, because
the needle bar stitched 12.8 stitches per inch, or twice the “desired stitch rate,” which is based
upon the gauge of the needle bar at 6.4 per inch.
However, the record reflects that the tufting industry considers the gauge of a graphics
machine to be the composite gauge of both needle bars. For example, in a deposition, Tuftco’s
expert Lynne Paige referred to Tuftco’s double-needle-bar machine as a “twelfth gauge.” (Doc.
435, at 166, 167–68.) When asked whether the Medallion rug used an “enhanced stitch rate,”
she responded: “No. It had a twelve-point-eight stitch rate.” (Doc. 454-11, at 263.) Further,
Frost acknowledged “twelve-point-eight stitches per inch . . . was twice the gauge of each needle
bar at that time; but it was certainly not twice the composite gauge.” (Id. at 150–51.) Tuftco

37

does not provide any evidence that the gauge of one needle bar is considered a gauge of the
tufting machine by those skilled in the art. See also supra Part III(b)(i)(2)(b). Accordingly, the
“desired stitch rate” of Claims 28 and 29 of the ‘703 Patent would be based on the gauge of the
machine, or approximately 12.8. An effective stitch rate of 12.8 in the Medallion rug is,
therefore, not an “increased effective stitch rate” as contemplated by Claims 28 and 29.
The Medallion rug did not anticipate the Severed Claims. Accordingly, the Court will
DENY Tuftco’s motion for summary judgment that one needle bar of a graphics machine
anticipated the Severed Claims.
b. Claim 12 of the ‘505 Patent
Claim 12 of the ‘505 Patent provides: “The method of claim 8 and wherein the tufting
machine is a 1/10th gauge tufting machine and the desired fabric stitch rate is approximately ten
stitches per inch.” (Doc. 292-1, at 17, col. 11:3–5 (emphasis added).) Tuftco relies on two prior
art references to argue Claim 12 is anticipated: (1) the Silhouette Carpet; and (2) the Thorn
Carpet.22
i. The Silhouette Carpet
Tuftco argues that the Silhouette Carpet, sold by Dixie Home in 2004, anticipated Claim
12. Relying heavily on a selection of deposition testimony of CMC expert Steven Berger, Tuftco
construes Claim 12’s “approximately ten stitches per inch” as “eight to twelve” stitches per

22

Tuftco also cites deposition testimony from Wilton Hall, a named inventor of the Asserted
Patents, who stated that he had created fabrics with a stitch rate “as high as eighteen stitches” for
many years prior to ColorPoint. (Doc. 454-11, at 420.) Tuftco does not explain the relevance of
this testimony and, thus, fails to demonstrate that any fabrics allegedly created by Hall contained
every limitation in Claim 12.

38

inch.23 Based on this construction, Tuftco concludes that a two-color carpet created on a 1/10th
gauge machine would anticipate Claim 12 if it has an effective stitch rate between sixteen and
twenty-four stitches per inch. The Silhouette Carpet, Tuftco argues, contains all such elements:
it is a two-color fabric that was created on a 1/10th gauge machine with an effective stitch rate of
sixteen stitches per inch.
Tuftco has not demonstrated that a reasonable jury would have no legally sufficient basis
to find that the Silhouette Carpet did not anticipate Claim 12. First, Tuftco relies on a definition
of “approximately” that is inconsistent with this Court’s claim-construction ruling. A court’s
construction of a claim defines the scope of a limitation and guides anticipation analysis. Toro
Co. v. Deere & Co., 355 F.3d 1313, 1319 (Fed. Cir. 2004). Following a Markman hearing, this
Court declined to construe “approximately” when modifying a numeric value, finding that the
term should take its ordinary meaning. (Doc. 220, at 13–14.) Accordingly, Tuftco’s premise
that “approximately ten” equates to “eight to twelve” is inconsistent with the Court’s
construction ruling and should not be relied upon when considering an anticipation defense.
Second, as already noted, “testimony concerning anticipation must be testimony from one
skilled in the art and must identify each claim element, state the witnesses’ interpretation of the
claim element, and explain in detail how each claim element is disclosed in the prior art
reference.” Schumer, 308 F.3d at 1315; see also ActiveVideo, 694 F.3d at 1329 (finding that
where an expert fails to explain how a prior-art reference describes every limitation in a claim,
23

Tuftco takes Berger’s testimony out of context. When asked what “approximately” means to
him, Berger stated: “Approximately, to me, means the general definition of approximately,
close, plus or minus.” (Doc. 454-11, at 394.) When pressed and asked what “approximately
ten” means, Berger then stated: “Eight to twelve.” (Id.) When later asked whether “eight would
be approximately ten,” Berger declined to definitively confirm, opining that a designer’s desired
stitch rate depends on a number of variables, such as the weight of the finished carpet. (Doc.
320, at 21.)

39

no reasonable jury could conclude that the reference anticipates the claim). Tuftco’s expert Ian
Slattery’s report neither identifies each element of Claim 12 nor explains how each element is
contained in the Silhouette Carpet. (Doc. 292-2, at 12, 15–16.) When deposed, Slattery
acknowledged that his report fails to explain how “every element is met by a single prior-art
reference.” (Doc. 454-11, at 288.) Though he opines broadly that the Severed Claims are
“invalid due to anticipation” and that “[t]he Silhouette carpet . . . anticipates Claims 21 and 28 of
the ‘989 Patent,” his report never affirmatively states that the Silhouette Carpet anticipated Claim
12 in particular, much less explains in detail how each element of Claim 12 was contained in the
Silhouette Carpet. (Doc. 292-2, at 15–16; see also Doc. 454-11, at 285 (Slattery’s deposition
testimony confirming that this section of his report contains the entirety of his opinions regarding
anticipation).)
Finally, it is undisputed that the Silhouette Carpet does not contain every limitation of
Claim 12. Claim 12 incorporates Claim 8 of the ‘505 Patent, which requires “shifting the needle
bar transversely according to a programmed shift profile for the pattern of the tufted article . . . .”
(Doc. 292-1, at 16, col. 10:44–45.) Tuftco does not claim to have evidence that a needle bar
shifted to create the Silhouette Carpet. (See Doc. 450, at 18.) It merely argues, without the
support of any legal authority, that the absence of needle bar shifting is “virtually meaningless”
because the machine at issue had the capability to shift the needle bar.24 (Id.) But Federal

24

CMC offered evidence suggesting that a higher effective stitch rate in a pattern with multiple
colors is not possible without a shifting needle bar. (See, e.g., Doc. 292-1, at 16 (‘505 Patent
specification stating that “[t]he running of the enhanced, effective stitch rate being run by the
yarn color placement system of the present invention in conjunction with the shift profile helps
provide for a denser field of stitches or tufts”); Doc. 454-9, at 157 (CMC’s expert Steven
Berger’s rebuttal report describing the method used to make the Silhouette Carpet and noting that
“[i]n such a method, there is no way to tuft a free flowing pattern that has solid areas of color
with increased surface density”).)

40

Circuit precedent requires a prior-art reference to contain each and every claim limitation,
without exception, in order to support the defense of anticipation. See, e.g., ActiveVideo, 694
F.3d at 1327; In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012); Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Accordingly, because the Silhouette
Carpet was not made by shifting the needle bar, as required by Claim 12, it did not anticipate
Claim 12.
ii. The Thorn Carpet
Tuftco next argues that its Thorn Carpet, made in 2001, anticipates Claim 12. According
to Tuftco, the Thorn Carpet was made on a 1/10th gauge machine, was created using a shiftable
needle bar, and had an effective stitch rate of fifteen stitches per inch. (Doc. 450, at 19.) Even
ignoring that an effective stitch rate of fifteen does not fall within the range of sixteen to twentyfour Tuftco identifies as the breadth of Claim 12, Tuftco fails to meet its burden of
demonstrating that a reasonable jury would not have a legally sufficient basis to find for CMC.
Tuftco relies exclusively on Slattery’s report for facts underlying its argument. (Id.) As with the
Silhouette Carpet, Slattery does not explain how the Thorn Carpet contains every limitation in
Claim 12.25 (See Doc. 292-2, at 16.)
Moreover, there is evidence that the Thorn Carpet does not contain every limitation of
Claim 12. First, the design file associated with the Thorn Carpet indicates an effective stitch rate
of just twelve.26 (Doc. 454-12, at 31.) Second, Slattery acknowledged that “[i]n areas of solid

25

The closest Slattery comes is opining that “the operation of automated tufting machines to
manufacture the . . . Thorn carpets . . . accomplish[ed] all of the underlying substance of the
claims.” (Doc. 292-2, at 16.)
26

The record presents conflicting evidence on Thorn’s stitch rate. While the design file
indicated a stitch rate of twelve, the specification tag on the back of the sample indicated a stitch
rate of fifteen. (Doc. 454-9, at 160.) Lynne Paige, Tuftco’s expert and former employee,
41

color, [the Thorn Carpet] would be half density,” which is inconsistent with the increased
effective stitch rate required by Claim 12. (Doc. 454-11, at 306.) Finally, CMC’s expert Berger
opined that the Thorn carpet “represents nothing more than a traditional scroll pattern that used a
slightly higher stitch rate than normal while leaving all of the yarns, including unwanted yarns,
in the face.” (Doc. 454-9, at 160.) This is inconsistent with Claim 12’s limitation that requires
feeding the yarns so as to leave only “high tufts of yarns at desired positions.” (Doc. 292-1, at
16, col. 10:56–60.) Accordingly, there exists a genuine issue of material fact as to whether the
Thorn Carpet anticipated Claim 12. The Court will, therefore, DENY Tuftco’s motion for
summary judgment that Claim 12 was anticipated.
c. Claim 1 of the ‘703 Patent
Tuftco again asks the Court to find anticipation even though it cannot meet its burden
under binding precedent. Tuftco argues that Claim 1’s first six limitations are contained in
machines predating the Asserted Patents, leaving only the seventh limitation as the unanticipated
“invention.” According to Tuftco, because the seventh limitation contains elements that “are
merely rudimentary software changes designed to slow down the backing speed in order to
increase the stitch rate,” Claim 1 of the ‘703 Patent is invalid as anticipated. (Doc. 450, at 22.)
Yet again, Tuftco cites no legal authority for its proposition that a prior-art reference need
not contain every limitation of a claim in order to anticipate that claim. In contrast, Supreme
Court and Federal Circuit precedent suggests that claims should not be separated into novel and
non-novel elements and that a new combination of old components is patentable. See, e.g.,
Diamond v. Diehr, 450 U.S. 175, 188 (1981) (“It is inappropriate to dissect the claims into old

suggested in deposition testimony that, although the design file shows twelve, “[i]t could have
been tufted at a different stitch rate.” (Doc. 454-11, at 258.) At this stage, the Court must view
the evidence in the light most favorable to CMC.
42

and new elements and then to ignore the presence of old elements in the analysis. . . . [A] new
combination of steps in a process may be patentable even though all the constituents of the
combination were well known and in common use before the combination was made.”);
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1378 (Fed. Cir. 2005) (“New uses of old
products or processes are indeed patentable subject matter.”). Tuftco has failed to establish an
issue of material fact in support of its motion, much less to establish by clear and convincing
evidence that every limitation of Claim 1 was contained in a single prior-art reference. Zenith
Elecs. Corp., 522 F.3d at 1363. Accordingly, the Court will DENY Tuftco’s motion for
summary judgment that Claim 1 of the ‘703 Patent was anticipated.
3. CMC’s Motion for Summary Judgment
CMC cross-moves for summary judgment of validity as to Tuftco’s anticipation defense
and counterclaim as to the Severed Claims. To be granted summary judgment that its patents are
not invalid due to anticipation, CMC must show that Tuftco “failed to produce clear and
convincing evidence on an essential element of [anticipation] upon which a reasonable jury
could invalidate the patent.” Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir.
2001).
CMC asserts Tuftco has not provided clear and convincing evidence of anticipation.
Tuftco first responds that every Severed Claim was anticipated by the operation of one needle
bar on its graphics machines. Even viewing the evidence in the light most favorable to Tuftco,
for the same reasons explained above in Part III(b)(ii)(2)(a), Tuftco has not created a disputed
issue of material fact that any single prior-art reference anticipated all the limitations of any of
the Severed Claims. No reasonable jury could find clear and convincing evidence that one
needle bar in a graphics machine anticipated all Severed Claims. Specifically, Tuftco has not

43

provided testimony from one skilled in the art that identifies each Severed Claim element and
explains how each element was contained in the operation of one needle bar of a double-needlebar machine, as required to prove anticipation. See Schumer, 308 F.3d at 1315. Moreover,
Tuftco improperly: (1) calculates the “effective stitch rate” required by the Severed Claims by
multiplying the “desired stitch rate” by the number of colors on one needle bar, when the
Severed Claims, other than Claims 28 and 29 of the ‘703 Patent, require that the “effective stitch
rate” be calculated by the number of colors in the entire pattern; and (2) uses the gauge of one
needle bar to determine the “desired stitch rate,” instead of the gauge of the entire tufting
machine, as required by Claims 28 and 29 of the ‘703 Patent.
Tuftco next argues that Claims 21 and 27 of the ‘989 Patent are invalid as anticipated by
the Colortec and Tufted Weaver machines.27 According to Tuftco, as Claims 21 and 27 of the
‘989 Patent “merely require the presentation of yarns, rather than seizing tufts of yarn,” the
novelty of these Claims amounts to “determining an effective process stitch rate increased over
the desired stitch rate for the pattern.”28 (Doc. 452, at 25–26.) Tuftco’s expert, Ian Slattery,
opines that both the Colortec and Tufted Weaver machines “form the tufts of yarn at an increased
effective stitch rate determined by multiplying the number of colors being formed in the
patterned tufted article by a desired fabric stitch rate that comprises a number of stitches per inch
desired for the pattern[ed] tufted article.” (Doc. 320, at 50.) As such, Tuftco concludes, Claims
21 and 27 were anticipated by the Colortec and Tufted Weaver machines.
27

Tuftco also asserts the Tapistron machine anticipated Claims 21 and 27 of the ‘989 Patent. As
this machine operates in a manner similar to the Colortec machine, the Court will subsume the
analysis of Tapistron with its analysis of Colortec. (Doc. 454-11, at 294.)
28

Both Claims 21 and 27 determine an effective stitch rate by “increasing the desired stitch rate
for the pattern by a multiple approximately corresponding to a number of colors of yarns used to
form the patterned article.” (Doc. 292-1, at 50.)

44

Even viewing the evidence in the light most favorable to Tuftco, no reasonable jury could
find anticipation of Claims 21 and 27 of the ‘989 Patent. 29 Slattery’s opinion is based on a
construction of “effective stitch rate” that is inconsistent with not only the Court’s prior ruling,
but also Tuftco’s own argument at the Markman hearing (Doc. 219, at 82). After the Markman
hearing, and by agreement of the parties, the Court defined “effective stitch rate” and “effective
process stitch rate” as “the number of tufts of yarn inserted into the backing per linear inch in the
longitudinal direction.” (Doc. 220, at 3–4 (emphasis added).) Slattery ignores this ruling and
uses a definition of “effective stitch rate” that includes not only the actual insertion of yarn, but
also the number of needle bar strokes. According to Slattery, in the Colortec and Tufted Weaver
machines, “a 10th gauge tufting machine with six colors tufting ten visible stitches per inch
would require ten stitches per inch multiplied by six colors or sixty yarn presentations
corresponding to the ‘effective stitch rate of 60.’” (Doc. 320, at 50 (emphasis added).) Because
the ‘989 Patent Claims “merely require the presentation of yarns,” he concludes that they were
anticipated by the Colortec and Tufted Weaver machines. (Id. at 52.) Slattery confirms this
construction of “effective stitch rate” in deposition testimony:
A:

Well, in our Color Tech machine, every color of yarn is presented in every
stitch location.

Q:

And, when you say “presented,” what do you mean?

29

Slattery’s report fails to identify each claim element and to explain how each element is
contained in the Colortec and Tufted Weaver machines. As Tuftco bears the ultimate burden at
trial, the Court questions whether Slattery’s report raises a genuine issue of material fact. See
Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1353
(Fed. Cir. 2001) (“It is well established that conclusory statements of counsel or a witness that a
patent is invalid do not raise a genuine issue of fact.”). After all, it is not the task of the trial
court “to attempt to interpret confusing or general testimony to determine whether a case of
invalidity has been made out, particularly at the summary judgment stage.” Schumer, 308 F.3d
at 1316. Nonetheless, as Slattery’s analysis of these prior art references is more detailed than his
analysis of the Medallion, Silhouette, and Thorn carpets, the Court will overlook this evidentiary
shortcoming and consider Tuftco’s argument.

45

A:

It indexes over the looper that will pick it up if you engage the needle.

Q:

Okay. What if the needle’s not engaged?

A:

It’s still being presented.

Q:

Is it stitched?

A:

No. But it’s presented.

Q:

So it’s presented, but it never actually pierces the backing?

A:
...

That’s right. Yeah.

Q:

Unwanted stitches aren’t even tufted, are they?

A:

No.

(Doc. 454-11, at 290–92.)
A court’s construction of a claim guides anticipation analysis and defines the precise
scope of a limitation. Toro Co., 355 F.3d at 1319. The Court’s construction of “effective stitch
rate” requires that the needles actually insert the yarns into the backing, not just “present” them.
(Doc. 220, at 4.) Indeed, this requirement is implied in the term “stitch” itself. (Id.) Therefore,
Slattery’s report does not establish that the Colortec and Tufted Weaver machines use an
“effective stitch rate” as the Court has interpreted that term in Claims 21 and 27. Because Tuftco
presents no other evidence in support of its argument, no reasonable jury could find anticipation
of Claims 21 and 27 of the ‘989 Patent. Accordingly, the Court will GRANT CMC summary
judgment that the Severed Claims are not invalid by anticipation.
iii. Obviousness
Next, CMC moves for summary judgment of validity, asserting that there is no genuine
issue of material fact and that the Severed Claims are not invalid for obviousness under 35
U.S.C. § 103.

46

1. Standard
Under 35 U.S.C. § 103, a patent is invalid if “the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.” “To invalidate a patent claim based on obviousness, a
challenger must demonstrate by clear and convincing evidence that a skilled artisan would have
been motivated to combine the teachings of the prior art references to achieve the claimed
invention, and that the skilled artisan would have had a reasonable expectation of success in
doing so.” ActiveVideo, 694 F.3d at 1327 (internal quotation marks omitted).
Obviousness under § 103 is a question of law based on determinations of underlying
facts. Id. The underlying factual determinations, often referred to as the Graham factors,
include: 1) “the scope and content of the prior art[;]” 2) differences between the prior art and the
claims at issue[;]” 3) “the level of ordinary skill in the pertinent art[;]” and 4) relevant secondary
considerations, such as “commercial success, long felt but unsolved needs, failure of others, etc.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966)). All four Graham factors bear weight on the obviousness analysis.
WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016).
2. Analysis
CMC asserts that it is entitled to summary judgment on the Severed Claims because
Tuftco cannot prove obviousness by clear and convincing evidence based on the record. Tuftco
responds that: (1) secondary considerations of non-obviousness should prevent summary
judgment for CMC on all of the Severed Claims; and (2) Claims 21 and 27 of the ‘989 Patent are
invalid as obvious.

47

a. All Severed Claims
Tuftco first argues that CMC should be denied summary judgment of validity on all
Severed Claims. (Doc. 452, at 35–38.) However, Tuftco does not discuss the first three Graham
factors of obviousness. (Id.) Instead, Tuftco’s only explicit argument in favor of obviousness of
all of the Severed Claims relies exclusively on the fourth Graham factor—secondary
considerations. (Id.) Secondary considerations of non-obviousness involve objective indicia,
such as commercial success, long-felt need, industry praise, failure of others, unexpected results,
licensing, skepticism, and copying. Transocean Offshore Deepwater Drilling, Inc. v. Maersk
Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012). Tuftco argues that CMC should be
denied summary judgment because these secondary considerations alone preclude a finding of
non-obviousness. Tuftco points to record evidence that, over a period of three and a half years,
the total amount of ColorPoint and ColorTuft fabrics produced by a large carpet manufacturer, a
customer of the parties, amounted to less than .5% of its total carpet production. (Doc. 435, at
190–91.) Additionally, Tuftco cites evidence suggesting that two of CMC’s customers rarely
make ColorPoint fabrics with their ColorPoint machines and have had some technical issues with
the machines. (See, e.g., id. at 188–89, 291.) Tuftco contends these facts establish ColorPoint is
not a commercial success and that there was no long-felt need for the product, as contemplated in
the fourth Graham factor.
The Federal Circuit has made clear that “objective considerations of non-obviousness
must be considered in every case.” WBIP, 829 F.3d at 1328 (emphasis in original). This
precedent, however, requires analysis of secondary considerations before holding a patent
invalid. See, e.g., TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1343 (Fed. Cir. 2010). Tuftco
does not cite, and the Court is unaware of, any case law suggesting the inverse: that secondary

48

considerations alone can defeat a motion for summary judgment that a patent is valid. Tuftco
simply does not argue that all the Graham factors—properly weighed—could result in a factual
finding supporting a legal ruling of obviousness. Given that “the strength of each of the Graham
factors must be weighed in every case and must be weighted en route to the final determination
of obviousness or non-obviousness,” the Court finds that secondary considerations of nonobviousness, alone, cannot support a finding of obviousness.30 WBIP, 829 F.3d at 1328; see also
Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1299 (Fed. Cir. 2012) (declining to consider
evidence of secondary considerations of non-obviousness after the court concluded that the prior
art would not have provided one of ordinary skill with a reason or motivation to make the
claimed invention).
Although Tuftco does not cite its expert’s report in opposing summary judgment (Doc.
432, at 35–38; Doc. 452, at 35–38), the Court will consider it. With regard to obviousness,
Slattery’s report states in its entirety:
B.

Prior Art Carpets, Industry Design Practices and Software, and Color
Placement Techniques Render The Asserted Claims Obvious.

47.
In the carpet industry, the stitch rate of the carpet is readily recognized as
a variable factor that can be used to alter the weight and stitch density of tufted
fabrics. Shifting needlebars has been recognized as a technique to place yarns
from different needles in different longitudinal columns of stitches, and
particularly to place colors from different needles in the same row of stitches.
Shifting patterns such as 0, +1 or 0,0,+1,+1, or 0,0,+1,+1,0,0,-1,-1 can all be used
to effectively place two different yarns from adjacent needles in the same
longitudinal row so that each yarn penetrates the backing in a group of two needle
bar reciprocations.
30

Moreover, the Court is not convinced of the strength of Tuftco’s proffered secondary
considerations. The fact that ColorPoint-type fabrics, which are often vividly patterned,
constitute a small percentage of customers’ production, or that customers rarely use ColorPoint
machines to make ColorPoint fabrics, seems consistent with the demand for more typical
carpeting in larger quantities throughout offices and homes. CMC also provided its own
compelling evidence of secondary considerations of non-obviousness, including commercial
success, copying, industry praise, long-felt need, and failure of others. (Doc. 454-9, at 143–54.)
49

48.
In a more complex situation, Smith, el al., Tufting Machine and Process of
Variable Stitch Rate Tufting, U.S. Patent No. 7,426,895, teaches the use of the
backing feed drive to maintain a relatively uniform yarn tuft density. While
Smith was primarily directed at a method of tufting involving changing the
backing feed rates throughout the course of tufting a pattern, it is also noted at
Col. 5, line 53:
The backing may be fed at a variable rate when tufting rows of
high and low yarn bights so that the backing is advanced in smaller
increments when rows of low pile height bights are tufted and the
backing is advanced at a relatively greater distance when rows of
high pile bights of yarns are tufted. In this fashion the resulting
fabric maintains a somewhat uniform density of face yarns even
though high and low pile heights are being tufted.
49.
Once precision yarn feed control was available, it became obvious to
persons of ordinary skill that ColorTec-type or Axminster type patterns could be
manufactured on tufting machines with servo controlled yarn feed mechanisms
and backing feeds with high/low yarn feeds, and compensating for yarn tuft
density by adjusting the backing fabric feed rates.
(Doc. 292-2, at 16–17.) Slattery fails to consider the Graham factors relevant to an obviousness
inquiry. His report does not fully consider the scope and content of the Smith patent or any other
prior art, explain the differences between prior art and the Severed Claims, expound the level of
ordinary skill in the tufting industry, or consider relevant secondary considerations. See KSR,
550 U.S. at 406. The Federal Circuit has repeatedly noted that conclusory statements that a
patent is invalid do not raise a genuine issue of material fact, even if they mention alleged prior
art. See, e.g., Creative Compounds, 651 F.3d at 1313; Koito, 381 F.3d at 1152; Schumer, 308
F.3d at 1315–16; Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249
F.3d 1341, 1353 (Fed. Cir. 2001).31 In fact, “to accept confusing or generalized testimony as

31

While many of these Federal Circuit cases consider conclusory statements in connection with
an anticipation analysis, the considerations for anticipation and obviousness are so similar that
the same evidentiary considerations should apply. See Koito, 381 F.3d at 1151–52 (using the
same analysis to consider whether sufficient evidence supported the jury’s findings of
anticipation and obviousness).
50

evidence of invalidity is improper.” Schumer, 308 F.3d at 1316. Because Slattery’s report fails
to articulate how alleged prior-art references make the claims at issue obvious, it fails to create a
genuine issue of material fact.
b. Claims 21 and 27 of the ‘989 Patent
Finally, with regard to Tuftco’s assertion that Claims 21 and 27 of the ‘989 Patent are
obvious, its evidentiary basis is unclear. Tuftco’s argument regarding these claims is tacked onto
its argument that Claims 21 and 27 are anticipated. (Doc. 452, at 26 (“If for any reason these
claims are not deemed to be anticipated, they are nonetheless obvious under Section 103 . . . .”).)
Tuftco cites the text of the statute, 35 U.S.C. § 103, and states the four Graham factors, but
offers no other argument. The Court will assume Tuftco is relying on the same evidence cited in
its anticipation argument, i.e., Slattery’s invalidity report. (Doc. 320, at 48–53.) As already
noted, Slattery’s report is insufficient to raise a genuine issue of material fact on the issue of
obviousness, and, as such, Tuftco’s argument that Claims 21 and 27 of the ‘989 Patent are
obvious fails.
CMC has met its burden of demonstrating that it is entitled to summary judgment as a
matter of law on validity of the Severed Claims with respect to obviousness, and Tuftco has not
provided sufficient evidence of obviousness to prevent summary judgment. Accordingly, the
Court will GRANT summary judgment in favor of CMC that the Severed Claims are not invalid
due to obviousness.
iv. Ineligibility Under § 101
Next, CMC moves for summary judgment that the Severed Claims are not invalid as
ineligible under 35 U.S.C. § 101. Tuftco responds that the Severed Claims are invalid under §

51

101 because they attempt to patent the abstract idea of high-stitch-rate tufting, rendering them
ineligible for patent protection.
1. Standard
Invalidity under 35 U.S.C. § 101 is a question of law. In re Comiskey, 554 F.3d 967, 975
(Fed. Cir. 2009). A patent may be obtained under § 101 for “any new and useful process,
machine, manufacture, or composition of matter, or any new and useful improvement thereof.”
35 U.S.C. § 101. The Supreme Court and the Federal Circuit, however, have long recognized §
101’s implicit exception that “[l]aws of nature, natural phenomena, and abstract ideas are not
patentable.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (quoting
Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). A twostep inquiry resolves whether a patent is ineligible under § 101. First the Court should
“determine whether the claims at issue are directed to a patent-ineligible concept.” Id. (quoting
Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014)). If the claims are directed toward
such a concept, the Court should then “consider the elements of each claim both individually and
‘as an ordered combination’ to determine whether the additional elements ‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Alice, 134 S. Ct. at 2355).
As for the first inquiry, neither the Supreme Court nor the Federal Circuit has established
a definitive rule governing whether a claim is directed toward an “abstract idea.” Id. Instead, a
court should compare the claims at issue with claims found to be directed to an abstract idea in
other cases. Id. For example, “fundamental economic and conventional business practices are
often found to be abstract ideas . . . .” Id. at 1335. A claim that merely involves an abstract idea,
however, does not necessarily fail step one “because essentially every routinely patent-eligible
claim involving physical products and actions involves a law of nature and/or natural

52

phenomenon . . . .” Id. (emphasis in original). Rather, the Court should consider “whether the
claims . . . focus on a specific means or method . . . or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and machinery.” McRO, Inc.
v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In other words,
“claims that amount to nothing significantly more than instruction to apply an abstract idea are
not patent eligible.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 809 F.3d 1282, 1285 (Fed. Cir.
2015) (emphasis in original).
2. Analysis
Tuftco argues that the Severed Claims attempt to patent the abstract idea of high-stitch
rate-tufting, rendering them ineligible for patent protection under § 101. (Doc. 452, at 29–35.)
According to Tuftco, CMC’s patents claim the idea of carpets manufactured with increased stitch
rates and use conventional tufting methods to accomplish an increased stitch rate. In support,
Tuftco relies heavily on Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014). In Alice,
the Supreme Court held that “the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.” 134 S. Ct. at 2358. Similarly,
Tuftco argues, the use of a conventional tufting machine to achieve higher stitch rates cannot
transform the abstract idea of higher stitch rates into a patent-eligible invention. In other words,
attempting to claim the abstract idea of high-stitch-rate tufting “while adding the words ‘apply it
with a [conventional tufting machine]’” is not sufficient for patent eligibility. See id.
Tuftco’s position stretches Alice’s holding too far. The Supreme Court’s holding in Alice
was directed at step two of the § 101 inquiry and, therefore, necessarily requires that the claim at
issue be directed at an abstract idea. Tuftco takes step one for granted and assumes that the
Claims are directed to the idea of high-rate stitching, then focuses almost entirely on step two:

53

whether the Claims contain an inventive concept sufficient to transform the idea of high-rate
stitching into an eligible claim. Tuftco devotes substantial argument to discussing established
methods for achieving relatively high stitch rates, but never bothers to establish step one of the §
101 inquiry.
Before considering step two, the Court must first determine whether the focus of the
Severed Claims as a whole is directed to the idea of high-rate stitching. The Federal Circuit’s
decision in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), is helpful to the
determination. In Enfish, the court considered whether patents claiming a logical model for a
computer database were directed to an abstract idea. 822 F.3d at 1335–38. The Federal Circuit
found that the claims were directed to “a specific improvement to the way computers operate,
embodied in the self-referential table,” not to the abstract idea of “organizing information using
tabular formats.” Id. at 1336–37. In other words, the claims in Enfish were patent-eligible
because they were not directed to just any form of storing data, but to a specific way of storing
data. Additionally, the court emphasized that the claimed tables “function[ed] differently than
conventional database structures.” Id. at 1337.
Applying the Federal Circuit’s principles here demonstrates that the Severed Claims are
not directed toward the abstract idea of high-stitch-rate tufting. They do not claim the production
of all carpets with relatively high stitch rates. Instead, they claim a specific way of achieving a
high stitch rate—a manner of stitching far more yarns per longitudinal inch than in conventional
tufting systems, then pulling yarns not wanted in the face of the pattern out of the backing or so
low they cannot be seen. This results in a fabric where only the desired stitches in the face of the
pattern can be seen and allows for greater precision in creating patterns. Moreover, like the
claimed tables in Enfish, a tufting machine performing the Severed Claims “functions differently

54

than conventional [tufting machines].” Id. Traditional techniques for achieving higher stitch
rates are not coupled with the technique of pulling low or completely removing yarns that are not
desired to be shown in the face of the pattern, while maintaining an increased surface density.
Even if Tuftco correctly asserts that the Claims use conventional tufting machines,32 it has
presented no evidence to suggest that these tufting machines perform purely conventional steps.
And, though the Claims unquestionably involve increased stitch rates, “an invention is not
rendered ineligible for patent simply because it involves an abstract concept.” Alice, 134 S. Ct.
at 2354.33
Because the Claims are not directed to an abstract idea under step one of the § 101
analysis, the Court does not need to proceed to step two. Enfish, 822 F.3d at 1349. Accordingly,
the Court will GRANT CMC summary judgment of eligibility under 35 U.S.C. § 101.
v. Lack of Enablement
In its response to CMC’s motion for summary judgment, Tuftco argues that the Severed
Claims are invalid due to a lack of enablement. In reply, CMC argues that the Court should not
consider this argument because it is being raised for the first time in Tuftco’s response brief.
CMC notes that Tuftco did not raise this defense in its response to CMC’s interrogatories (Doc.

32

CMC provides ample record evidence suggesting tufting machines were modified in order to
achieve the claimed invention. (Doc. 445, at 22.)
33

For these same reasons, Tuftco’s suggestion that the Claims’ effective-stitch-rate calculation is
an unpatentable mathematical relationship fails. A mathematical formula is not itself patenteligible subject matter. Diamond v. Diehr, 450 U.S. 175, 191 (1981). A claim that contains a
mathematical formula may be patent-eligible, however, if the claim is directed to a specific
means or method instead of being directed to the mathematical formula itself. Thales Visionix
Inc. v. United States, 850 F.3d 1343, 1348 (Fed. Cir. 2017). The Severed Claims are not directed
to the mathematical formula of multiplying the number of colors of yarn by the desired stitch rate
to determine an effective stitch rate; instead this calculation is just one step in a patent-eligible
process of achieving a ColorPoint fabric.

55

292-4, at 4–6), its invalidity contentions (id. at 32–91), its expert reports (Doc. 292-2; Doc. 2923, at 1–17), or its opening brief in support of its motion for summary judgment (Doc. 450).
Many district courts refuse to consider summary judgment arguments not made in a
party’s invalidity contentions. See, e.g., WCM Indus., Inc. v. IPS Corp., No. 2:13-cv-02019,
2015 WL 5821639, at *10 (W.D. Tenn. Oct. 5, 2016). Those districts, however, typically have a
local patent rule requiring that disclosure of invalidity contentions be served on the opposing
party. See id. (citing W.D. Tenn. Local Patent Rule 3.5(d)). The Eastern District of Tennessee
has no such rule. Nonetheless, Tuftco had an obligation under Federal Rule of Civil Procedure
26(e) to supplement both its expert reports and its interrogatory responses in a timely manner if
they were incomplete or incorrect. Under Rule 37(c)(1) of the Federal Rules of Civil Procedure,
a party who fails to supplement under Rule 26(e) “is not allowed to use that information . . . to
supply evidence on a motion . . . unless the failure was substantially justified or is harmless.”
Moreover, the Sixth Circuit34 has recognized that a district court’s ability to strike a document
under Rule 37(c)(1) due to failure to comply with Rule 26(e) “does not require a showing of bad
faith by the offending party.” Emanuel v. Cty. of Wayne, 652 F. App’x 417, 424 (6th Cir. 2016)
(citing Youn v. Track, Inc., 324 F.3d 409, 421 (6th Cir. 2003)).
Tuftco has not shown that its failure to comply with Rule 26(e) “was substantially
justified or is harmless.” While this matter has been pending since October 2014, Tuftco’s
deadline to disclose expert testimony for its invalidity claims was August 19, 2016, and the
discovery period ended on October 10, 2016. (Doc. 228.) Despite these deadlines, Tuftco raised
its enablement argument for the first time in its response to CMC’s motion for summary
34

Because imposing a discovery sanction is not unique to Federal Circuit jurisdiction, the Court
will apply Sixth Circuit law. See Seal-Flex, Inc. v. Athletic Track & Court Constr., 172 F.3d
836, 845 (Fed. Cir. 1999).

56

judgment, filed on November 28, 2016. (Doc. 319.) And it has offered no justification for this
delay, either in its filings (Doc. 452, at 38–40) or in response to the Court’s in-person
questioning (Doc. 474, at 40–43). Indeed, Tuftco’s enablement argument relies on deposition
testimony taken before the end of the discovery period, so it is difficult to imagine a justification
for the failure to supplement interrogatory responses or invalidity contentions. Moreover,
Tuftco’s untimely argument is not harmless. CMC had no notice that Tuftco would assert that
CMC’s patents were invalid due to lack of enablement until after not only the close of the
discovery period but also the deadline for filing dispositive motions. Accordingly, the Court will
not consider Tuftco’s argument that the Asserted Patents are invalid due to a lack of enablement.
Even if the Court were to consider Tuftco’s argument, it would still fail. “Enablement is
a question of law . . . based on underlying factual inquiries.” Cephalon, Inc. v. Watson Pharm.,
Inc., 707 F.3d 1330, 1336 (Fed. Cir. 2013). To meet the enablement standard, a person of
ordinary skill in the art, having read the specification, must be able to practice the invention
without “undue experimentation.” Id. Determining whether experimentation is undue involves
weighing factual considerations such as:
(1) the quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4) the
nature of the invention, (5) the state of the prior art, (6) the relative skill of those
in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of
the claims.
Id. (quoting In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)). However, “a reasonable amount
of routine experimentation required to practice a claimed invention does not violate the
enablement requirement.” Id.; cf. White Consol. Indus., Inc. v. Vega Servo-Control, Inc., 713
F.2d 788, 791 (Fed. Cir. 1983) (finding experimentation undue where an expert testified it would
take from eighteen months to two years to practice the invention). Moreover, “[b]ecause we

57

must presume a patent enabled, the challenger bears the burden, throughout the litigation, of
proving lack of enablement by clear and convincing evidence.” Cephalon, 707 F.3d at 1337.
In support of its lack of enablement argument, Tuftco notes that some Severed Claims
require that tufts of yarn either be pulled low or removed from the backing. For example, Claim
24 of the ‘989 Patent provides for “controlling feeding of the yarns . . . to pull such yarns low or
remove them from the selected stitch locations.” (Doc. 292-1, at 50, col. 22:14–16.) CMC’s
expert Steven Berger, however, testified that the “goal” of ColorPoint is to pull unwanted or
unused yarns all the way out of the backing. (Doc. 320, at 56–57.) Wilton Hall, a named
inventor of the Asserted Patents, similarly testified that “[i]f you’re trying to pull something
down really low, essentially, to not see it, it’s basically pulling it out.” (Doc. 454-12, at 98.)
Charles Monroe, CMC’s CEO, testified that with the ColorPoint method, “[f]or the most part,
you’re going to have to pull [the tufts] out of the backing or not leave them in the backing.”
(Doc. 320, at 43.) According to Tuftco, this deposition testimony “reveal[s] that pulling yarns
low is not a viable option when creating ColorPoint-type fabrics under the Asserted Patents.”
(Doc. 452, at 39.)
Tuftco fails to raise a genuine issue of material fact concerning enablement. First, much
of the testimony cited by Tuftco concerns ColorPoint, the commercial embodiment of the
Severed Claims. The Federal Circuit has “repeatedly warned” against confining claims to their
commercial embodiments. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005).
Moreover, the ‘505 Patent’s specification provides that:
for each color to be taken out or back-robbed and thus hidden in the finished
patterned article, the increased number of stitches per inch will provide sufficient
enhanced density between the high and low tufts of the finished patterned tufted
article to avoid a missing color or gap being shown or otherwise appearing in the
patterned article.

58

(Doc. 292-1, at 64, col. 3:8–13.) Thus, the specification clarifies that the goal of the Severed
Claims is to avoid a missing color or gap in the finished patterned tufted article, not necessarily
to completely remove yarns from selected stitch locations. While avoiding a missing color or
gap in the finished pattern may involve some amount of experimentation, Tuftco does not
present any evidence—much less clear and convincing evidence—to show that the
experimentation is “undue.” As such, Tuftco’s enablement argument fails.35
3. Limiting “Invention” to ColorPoint Software
In the alternative to summary judgment of invalidity, Tuftco moves for partial summary
judgment “limiting the ‘invention’ in the Asserted Patents to the ColorPoint software.” (Doc.
450, at 25–27.) Tuftco argues that, because the first six subsections and parts of the seventh
subsection of Claim 1 of the ‘703 Patent claim preexisting technology,36 the Court should enter
an order limiting the “invention” in the Asserted Patents to the portion of Claim 1 that is
“new”—the software that converts a “prescribed stitch rate” into an “effective stitch rate.” (Id.)
Tuftco fails to demonstrate that it is entitled to summary judgment. First, Tuftco does not
cite any legal authority for the proposition that the Court may enter an order limiting the
“invention” in a patent or set of patents to a certain claim element. (Id.; Doc. 474, at 86–88.)
Second, the Court has already noted that: 1) claims should not be separated into old and new
elements; and 2) a new combination of old components is patentable. See supra Part
III(b)(ii)(2)(c). Indeed, “inventions in most, if not all, instances rely upon building blocks long
since uncovered, and claimed discoveries almost of necessity will be combinations of what, in
35

There is also evidence in the record that consumers will in fact pull yarns low in order to
practice the invention. For example, Monroe also testified that a tuft “[c]an be pulled all the way
out” or “[i]t can be extremely low, a little nub at the bottom” so as not to occupy a stitch
location. (Doc. 320, at 38.)

36

Tuftco makes a similar argument in connection with its motion for summary judgment on
anticipation of Claim 1 of the ‘703 Patent. See supra Part III(b)(ii)(3)(c).
59

some sense, is already known.” KSR, 550 U.S. at 418–19. Accordingly, the Court will DENY
Tuftco summary judgment limiting the “invention” in the Asserted Patents to the ColorPoint
software.
4. Infringement
Tuftco seeks summary judgment of non-infringement of all of the Severed Claims.
Additionally, Tuftco independently seeks summary judgment of non-infringement on Claims 1,
28, and 29 of the ‘703 Patent. CMC seeks summary judgment of infringement of the Machine
Claim (Claim 1 of the ‘703 Patent) and the following Method Claims: (1) Claims 8, 10, and 12
of the ‘505 Patent; (2) Claim 28 of the ‘703 Patent; and (3) Claims 21 and 27 of the ‘989 Patent.
i. Standard
Under 35 U.S.C. §271(a), “whoever without authority makes, uses, offers to sell, or sells
any patented invention, within the United States or imports into the United States any patented
invention during the term of the patent therefor, infringes the patent.” An infringement analysis
involves two steps. “First, the court determines the scope and meaning of the asserted patent
claims.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1318 (Fed. Cir. 2011).
Better known as claim construction, the first step is a question of law. Id. at 1319. Next, the
court “compares the properly construed claims to the allegedly infringing device to determine
whether all of the claim limitations are present, either literally or by a substantial equivalent.”
Id. at 1318–19. “[I]nfringement, whether literal or under the doctrine of equivalents, is a
question of fact.” Id. at 1319. Summary judgment is proper “when no reasonable jury could find
that every limitation recited in the properly construed claim either is or is not found in the
accused device.” Id. (internal quotation marks omitted).

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ii. Tuftco’s Motion for Summary Judgment of Non-Infringement
An accused infringer is entitled to summary judgment if it shows “that the patentee failed
to put forth evidence to support a finding that a limitation of the asserted claim was met by the
structure in the accused devices.” Johnson v. IVAC Corp., 885 F.2d 1574, 1578 (Fed. Cir. 1989).
1. All Claims
Tuftco argues it is entitled to summary judgment of non-infringement on all Severed
Claims because the Accused Products do not convert a programmed desired stitch rate to
determine an effective stitch rate.37 Tuftco’s argument requires that the Court reconsider its
claim-construction ruling refusing to limit the term “desired stitch rate”38 to a particular
numerical value entered into the control system. (See Doc. 220, at 4–9.) In its ruling, the Court
construed the term to be defined as “the number of tufts of yarn per linear inch dictated by the
pattern design to be visible in the face of the pattern.” (Id.) Tuftco requests reconsideration on
three bases: (1) “subsequently developed evidence,” (2) “the prohibition of patenting mental
processes,” and (3) “the prosecution history of the Patents-In-Issue.” (Doc. 450, at 35.)
A district court may reconsider an interlocutory order where “there is (1) an intervening
change of controlling law; (2) new evidence available; or (3) a need to correct clear error or
prevent manifest injustice.” Louisville, Jefferson Cty. Metro Gov’t v. Hotels.com, L.P., 590 F.3d
381, 389 (6th Cir. 2009) (internal quotation omitted); see also Flexsys Am. LP v. Kumho Tire
U.S.A., Inc., 726 F. Supp. 2d 778, 786–87 (N.D. Ohio 2010) (construing a request to revisit a

37

A Tuftco user manual directs its user to “[e]nter your stitches per inch. This is calculated by
multiplying the desired stitches per inch times the number of colors in the pattern.” (Doc. 454-4,
at 18.) In other words, with Tuftco’s products, the user, not the machine, makes the “effective
stitch rate” calculation.

38

The parties agree that the terms “desired fabric stitch rate,” “desired stitch rate,” and
“prescribed stitch rate” are all synonymous. (Doc. 220, at 4.)

61

claim-construction ruling as a motion for reconsideration under Sixth Circuit law and applying
the foregoing three factors). Further, “parties cannot use a motion for reconsideration to raise
new legal arguments that could have been raised before [the order] was issued.” Roger Miller
Music, Inc. v. Sony/ATV Publ’g, LLC, 477 F.3d 383, 395 (6th Cir. 2007) (citation omitted).
Accordingly, the Court will not consider Tuftco’s arguments pertaining to the prohibition of
patenting mental processes and prosecution history because they: (1) are not contemplated by
the three situations in which a district court may reconsider an interlocutory order; and (2) were
raised for the first time in Tuftco’s motion for reconsideration (see Doc. 174, at 11–14; Doc. 182,
at 4–6).39 The Court will, however, consider Tuftco’s “subsequently developed evidence,”
which consists of a number of admissions made by CMC during the course of discovery.
Tuftco’s “new” evidence, being external to the patent and prosecution history, is
extrinsic. See Phillips, 415 F.3d at 1317. Where the analysis of intrinsic evidence alone resolves
ambiguity about a term, it is improper for the Court to consider evidence outside the patent and
prosecution history. Kara Tech., Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009).
Because the Court relied on claim language in construing the term “desired stitch rate” (Doc.
220, at 7), it is improper to reconsider that ruling based on the evidence Tuftco now provides.
See id. (“While helpful, extrinsic sources . . . cannot overcome more persuasive intrinsic
evidence.”); see also Chien-Lu Lin v. Twins Enter., Inc., No. CV 01-07390, 2002 WL 34455514,

39

Moreover, given that prosecution history represents a discussion between the PTO and the
patent applicant, courts have found it “less useful for claim construction purposes” than other
intrinsic evidence. Phillips, 415 F.3d at 1317 (citing multiple Federal Circuit cases finding
prosecution history less relevant). In construing the term “desired stitch rate,” the Court focused
primarily on the language of the Claims, and accordingly, prosecution history is less compelling
here.

62

at *15 n.48 (C.D. Cal. Nov. 12, 2002) (considering admissions in a party’s claim-construction
chart as extrinsic evidence and refusing to consider it where claim terms were unambiguous).
Second, each piece of subsequently developed evidence Tuftco presents is an admission
based on the operation of CMC’s ColorPoint tufting machine. For example, CMC admitted that
“ColorPoint machines determine and operate at an effective stitch rate.” (Doc. 292-4, at 29.) In
accordance with Federal Circuit precedent, the Court will not construe terms so as to confine the
Claims to their commercial embodiment—here, ColorPoint tufting machines. Phillips, 415 F.3d
at 1323; Int’l Visual Corp. v. Crown Metal Mfg. Co., 991 F.2d 768, 771–72 (Fed. Cir. 1993).
Accordingly, admissions as to the operation of ColorPoint tufting machines are not compelling
enough evidence for the Court to reconsider its claim-construction ruling. The Court will
therefore DENY Tuftco summary judgment of non-infringement on all the Severed Claims.
2. Claims 1, 28, and 29 of the ‘703 Patent
Next, Tuftco seeks summary judgment on Claims 1, 28, and 29 of the ‘703 Patent,
arguing that its machines do not perform critical elements of the ‘703 claims. Tuftco asserts that,
given the prosecution history of the ‘703 Patent, the term “based on the gauge of the tufting
machine” should be construed as “equal to the gauge of the tufting machine.” (Doc. 450, at 27–
34.)
Tuftco’s argument fails for a number of reasons. First and foremost, Tuftco does not cite
any evidence indicating that its products do not perform the elements of the ‘703 claims. In eight
pages of argument, Tuftco does not make one evidentiary citation to the Accused Products. (Id.)
As noted, to be entitled to summary judgment, Tuftco must show “that [CMC] failed to put forth
evidence to support a finding that a limitation of the asserted claim was met by the structure in

63

the accused devices.” Johnson, 885 F.2d at 1578. Without any mention of the “accused
devices,” Tuftco fails to meet its burden on summary judgment.
Moreover, Tuftco’s reading of the prosecution history is unconvincing. For example,
Tuftco notes that the PTO rejected as indefinite a limitation that read: “the tufts of yarns are
formed in the backing material at an increased effective process stitch rate based upon a desired
stitch rate of the pattern tufted article multiplied by the number of different color yarns of the
pattern . . . .” (Doc. 292-4, at 113 (emphasis altered).) Tuftco argues the December 22, 2011
Office Action demonstrates that the PTO believed that “based upon” was indefinite “relative
terminology.” However, the PTO’s issue with the original claim language was not necessarily
the term “based upon,” but that “desired stitch rate”—and by extension “effective process stitch
rate”—was undefined and could be interpreted as any stitch rate, subjecting the claim to
anticipation and indefiniteness concerns.40 (See id. at 113–14.) Additionally, the PTO noted that
if the “number of different color yarns of the pattern” was one, the effective process stitch rate
would be the same as the desired stitch rate. (Id. at 114.)
The amended language in Claim 1 of the ‘703 Patent provides that the effective stitch rate
“is determined by increasing a prescribed stitch rate of the patterned tufted article that is based
on the gauge of the tufting machine by a selected amount . . . .” (Doc. 292-1, at 67, col. 9:46–49
(emphasis added).) The amended claim language ties the prescribed stitch rate to a numerical
value—i.e., the gauge of the tufting machine. Further, it defines “prescribed stitch rate,” and by

40

The same PTO Office Action allowed Claims 8, 10, and 12 of the ‘505 Patent which provide
for an “increased effective stitch rate determined by multiplying the number of colors being
formed in the patterned tufted article by a desired fabric stitch rate that comprises a number of
stitches per inch desired for the patterned tufted articles . . . .” (See Doc. 292-4, at 112.) The
PTO noted that other claims in the application were being “interpreted differently” because they
were “method” and not “structure” claims. (Id. at 114.)

64

extension “effective stitch rate.” Additionally, Claim 1 specifies that it forms patterned tufted
articles with multiple colors, i.e., patterns “including different color yarns therein,” ensuring that
the prescribed stitch rate and effective stitch rate will not be equivalent. (Id., col. 9:17–18.)
Accordingly, the Court finds that the prosecution history of the ‘703 Patent does not compel a
construction of “based upon the gauge of the tufting machine” as “equal to the gauge of the
tufting machine.”41 The Court will, therefore, DENY Tuftco summary judgment of noninfringement of Claims 1, 28, and 29 of the ‘703 Patent.
iii. CMC’s Motion for Summary Judgment of Infringement
CMC moves for summary judgment of infringement on: (1) Claims 8, 10, and 12 of the
‘505 Patent; (2) Claims 1 and 28 of the ‘703 Patent; and (3) Claims 21 and 27 of the ‘989
Patent.42 A patentee may be granted summary judgment of infringement if it can show that it is
“more likely than not” that the accused product possesses all of the elements of the asserted
claim. Warner-Lambert Co. v. Teva Pharm. USA, Inc., 418 F.3d 1326, 1341 (Fed. Cir. 2005)
(citing Liberty Lobby, 477 U.S. at 252). Once a patentee has made this prima facie showing that
all claim limitations are met, the accused infringer must present more than a scintilla of evidence
to create a genuine issue of material fact. Id.

41

Additionally, the Federal Circuit has found prosecution history “less useful for claim
construction purposes” than other intrinsic evidence. Phillips, 415 F.3d at 1317. The Court
considers more relevant intrinsic evidence, such as claim language and the patent specification,
in connection with CMC’s motion for summary judgment of infringement on Claim 1 of the ‘703
Patent. See infra Part III(d)(iii)(3).
42

CMC reserves the right to pursue infringement of the remaining Severed Claims—Claim 29 of
the ‘703 Patent and Claims 22, 24, 28, and 30 of the ‘989 Patent—at trial.

65

1. Inspected Machines Representative of All Accused Products
Before the Court turns to the infringement analysis, it will consider CMC’s argument that
the Inspected Machines, inspected by its expert Steven Berger in preparation of his expert report,
are representative of all of the Accused Products. Tuftco does not respond (see Doc. 452) and
acknowledged at the summary judgment hearing that the Inspected Machines are “typical” of the
Accused Products (Doc. 474, at 80–81).43 Berger based his opinions on five machines either
sold or owned by Tuftco: three 1/10th gauge single-needle-bar machines, one 1/12th composite
gauge double-needle-bar machine with two staggered 1/6th gauge needle bars, and one 1/10th
composite gauge machine with two staggered 1/5th gauge needle bars. (Doc. 454-9, at 60–61.)
Steve Martin, Tuftco’s Director of Marketing, confirmed in deposition testimony that all the
single-needle-bar Accused Products operate in the same manner and all the double-needle-bar
Accused Products operate in the same manner. (Doc. 441, at 117.) Accordingly, the Court finds
that the Inspected Machines are representative of the Accused Products. The Court will,
therefore, proceed with its analysis on the basis that all Accused Products are capable of
operating in the same manner as the Inspected Machines. See Spansion, Inc. v. Int’l Trade
Comm’n, 629 F.3d 1331, 1350–51 (Fed. Cir. 2010) (accepting administrative law judge’s
determination that an expert’s chosen models were representative of all accused products where
the expert chose products that span a range of values and where respondents’ expert
acknowledged that the accused products were similar in structure); TiVo, Inc. v. EchoStar

43

Tuftco seemed to take issue with assuming that the Inspected Machines are representative of
all Accused Products insofar as CMC requests the Court to assume infringement by the third
parties that now own the Accused Products. (Doc. 474, at 78.) The Court understands CMC’s
request to be limited to a finding that all Accused Products are capable of operating like the
Inspected Machines. The Court analyzes third-party infringement below with its discussion of
induced infringement in Part III(d)(iii)(4)(b).

66

Comm’ns Corp., 516 F.3d 1290, 1308 (Fed. Cir. 2008) (“[T]here is nothing improper about an
expert testifying in detail about a particular device and then stating that the same analysis applies
to other allegedly infringing devices that operate similarly, without discussing each type of
device in detail.”).
2. Double-Needle-Bar Machines
Next, the Court turns to Tuftco’s double-needle-bar-machine argument, which is
responsive to all claims at issue. Tuftco argues that the Severed Claims “require[ ] that a
machine be capable of placing any color of yarn in any single pixel of the carpet.” (Doc. 452, at
16.) Because double-needle-bar machines are incapable of placing each color of yarn in the
pattern into any stitch location,44 according to Tuftco, the fifteen double-needle-bar Accused
Products are incapable of infringement. (Id. at 15–17.) In support, Tuftco cites: (1) Rule
30(b)(6) deposition testimony from Tuftco’s CEO Steve Frost that Tuftco’s double-needle-bar
machines “can only do a two-pixel . . . not a single-pixel design” (Doc. 454-12, at 67–69); (2)
deposition testimony from Wilton Hall, a named inventor of the Asserted Patents, that “it’s not
feasible” and “doesn’t make sense” to use graphics machines to practice ColorPoint (Id. at 105);
(3) deposition testimony from CMC employee Brian Lovelady that double-needle-bar machines
cannot make ColorPoint-type fabrics because they cannot achieve single-pixel resolution and,
therefore, “[y]ou can’t get the same look” (Doc. 320, at 27–33); and (4) deposition testimony
from a customer representative that his company does not have any CMC double-needle-bar
machines that “run ColorPoint” or which are equipped with the ColorPoint software (Doc. 435,
at 194–95). Tuftco appears to be arguing that, because (1) each needle bar of a double-needle

44

The Court construed the term “stitch location” to mean “a location in which one or more tufts
of yarn can be presented into the backing based on the pattern instructions.” (Doc. 220, at 21.)

67

bar-machine cannot stitch in the same longitudinal row as the other and (2) the needles of each
bar are offset (i.e., spaced longitudinally in-between the needles of the other needle bar), a
double-needle-bar machine cannot produce a linear pattern similar to a pattern produced by a
single-needle-bar machine running ColorPoint. (See Doc. 454-11, at 133–35.)
Tuftco’s argument against infringement requires that each needle bar’s ability to place
each color of yarn in any stitch location be a limitation in the Severed Claims. See Playtex
Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901, 909 (Fed. Cir. 2005) (“For infringement to
be found, the court must determine that every claim limitation is found in the accused device.”
(emphasis added)). None of the claims on which CMC has moved for summary judgment of
infringement contains such a limitation. Though Claim 27 of the ‘989 Patent provides for
multiple stitches “at selected stitch locations” (Doc. 292-1, at 50, col. 22:41–45), none of the
evidence provided by Tuftco refutes that the double-needle-bar Accused Products make multiple
stitches at certain stitch locations.45
Moreover, Tuftco’s argument improperly attempts to limit the Severed Claims to their
commercial embodiment, ColorPoint. In support of its proposition that the Severed Claims
require that a machine be capable of placing any color of yarn in any single pixel of carpet,
Tuftco cites only testimony from CMC representatives discussing ColorPoint. (Doc. 452, at 16.)
Tuftco cites no claim language whatsoever. Federal Circuit precedent clearly holds that “a court
may not predicate an infringement determination on a comparison of an accused product with a
45

Additionally, Tuftco’s CEO, Steve Frost, testified that each needle bar of the double-needlebar Accused Products, when threaded up with multiple colors, does in fact stitch multiple colors
to each stitch location along that needle bar’s longitudinal row. (Doc. 454-11, at 136–38; Doc.
454-12, at 146.) Consistent with Frost’s testimony, CMC’s expert Steven Berger noted in his
report that, during the inspections of the double-needle-bar Inspected Machines, all colors in the
pattern were: (1) threaded to both needle bars; and (2) presented to each stitch location. (Doc.
454-9, at 60–61.)

68

patentee’s commercial embodiment of his claimed invention.” Spectrum Int’l, Inc. v. Sterilite
Corp., 164 F.3d 1372, 1381 (Fed. Cir. 1998). As such, the Court disagrees that double-needlebar machines are incapable of infringing the Severed Claims.46 The Court will now turn to
whether CMC is entitled to summary judgment of infringement on each Severed Claim on which
it moves.
3. Claim 1 of the ‘703 Patent (Machine Claim)
CMC first moves for summary judgment of infringement of Claim 1 of the ‘703 Patent.
In its summary judgment motion, CMC appears to argue that all Accused Products infringe.
(Doc. 442, at 28–29, 31–32.) However, at the summary judgement hearing, CMC clarified that it
was not seeking summary judgment that the machine inspected at Lexmark (the “Lexmark
Machine”) infringes Claim 1.47 (Doc. 474, at 25.) Accordingly, the Court will determine if
CMC is entitled to summary judgment on the remaining four Inspected Machines.

46

The Court has already found that the operation of one needle bar of a double-needle-bar
machine tufting the Medallion rug does not anticipate the Severed Claims. See supra Part
III(b)(ii)(2)(a). “A century-old axiom of patent law holds that a product which would literally
infringe if later in time anticipates if earlier.” Upsher-Smith Labs., Inc. v. Pamlab, L.L.C., 412
F.3d 1319, 1322 (Fed. Cir. 2005) (internal quotation omitted). The needle bars of the doubleneedle-bar Accused Products, however, operate differently from the needle bars of the Medallion
rug’s double-needle-bar machine. For example, the double-needle-bar Accused Products utilize
an increased effective stitch rate contemplated by the Severed Claims whereas a needle bar
tufting the Medallion pattern does not. (Compare Doc. 454-9, at 90 (four-color sample made by
a 1/10th composite gauge Accused Product run at forty-two stitches per inch) with Doc. 454-11,
at 150 (four-color Medallion rug made by a 5/64th composite gauge double-needle bar machine
run at twelve-point-eight stitches per inch).
47

At the hearing, CMC asserted that “[i]f you study our summary judgment briefs very clearly,
CMC is not asserting that those Lexmark machines infringe Claim 1 of the ‘703 Patent, based on
the inspections that were conducted.” (Doc. 474, at 25.) The Court has studied CMC’s brief
very clearly and found no indication that CMC was not asserting that the Lexmark Machine
infringes Claim 1. But the Court will take CMC’s word for it and ignore the Lexmark Machine.

69

CMC submits expert Steven Berger’s infringement report in support of its motion, which
conducts an element-by-element infringement analysis. (Doc. 454-9, at 60–61, 91–96.) Tuftco
disputes infringement of the last limitation of Claim 1, which reads:
wherein the control system is linked to and controls the backing feed rolls for
feeding the backing material such that the tufts of yarns are formed in the backing
material at an effective stitch rate that is determined by increasing a
prescribed stitch rate of the patterned tufted article that is based on the
gauge of the tufting machine by a selected amount so as to form the patterned
articles with the selected tufts of yarns having an appearance of being formed at
the desired stitch rate.
(Doc. 292-1, at 67, col. 9:43–51 (emphasis added).) First, Tuftco argues that, because the user
makes the effective-stitch-rate calculation required by Claim 1, the Accused Products do not
infringe. This argument requires that the Court construe Claim 1 to require that the effectivestitch-rate calculation be performed by the tufting machine.48 However, nothing in the claim
language indicates that this particular calculation must be performed internally by the machine.
See Kara Tech. Inc., 582 F.3d at 1348 (suggesting that a court should not read limitations into
claims that are not supported by the claim language). Tuftco, moreover, does not provide any
intrinsic evidence suggesting this is a claim limitation or any legal authority to support its
proposition that “[i]t is improper to have a machine claim unless the machine in question actually
performs some function . . . .” (Doc. 452, at 9.) Tuftco even failed to provide legal authority at
the summary judgment hearing when specifically asked if it could “give [the Court] any
precedent that says that the machine has to do everything that has to be done in order for there to
be a machine claim[.]” (Doc. 474, at 83–88.) Accordingly, the Court will not read Claim 1 to

48

The Court has already declined to reconsider a similar argument made by Tuftco at the
Markman hearing, i.e., that the Claims require that the desired stitch rate be entered into the
tufting machine. See supra Part III(d)(ii)(1).

70

require that the tufting machine perform the effective-stitch-rate calculation, and Tuftco’s first
argument in regard to Claim 1 fails.
Next, Tuftco argues that the Accused Products do not infringe Claim 1 because Tuftco
does not instruct its customers that the desired or prescribed stitch rate—i.e., the number of tufts
to be visible in the face of the pattern—must equal the gauge of the machine. Tuftco’s argument
requires that the Court construe the term “based on the gauge of the tufting machine” to mean
“equal to the gauge of the tufting machine.”49 In other words, Claim 1 would require a carpet
tufted on a 1/10th gauge machine to have a desired stitch rate of exactly ten. In support of this
construction, Tuftco cites deposition testimony from CMC’s expert Steven Berger:
Q

. . . Do you have any reason to believe that [Claim 1], when it says, “based
on the gauge of the machine,” doesn’t mean “equal to the gauge of the
machine”?

A

No.

(Doc. 320, at 24.) Additionally, Tuftco notes that, unlike other claims at issue, the modifier
“approximately” is not used, suggesting that the prescribed stitch rate is not approximate to the
gauge, but equal to it.
When construing patent terms, the words of a claim “are generally given their ordinary
and customary meaning . . . .” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996). But “the ordinary and customary meaning of a claim term is the meaning that the
term would have to a person of ordinary skill in the art in question at the time of the invention.”
Phillips, 415 F.3d at 1313. In determining the meaning of claim terms, all sources of evidence
are not equal. Intrinsic evidence—the patent claims, the specification, and the prosecution
49

Tuftco did not propose that the term “based on the gauge of the tufting machine” be construed
at the Markman hearing, and accordingly, the Court did not include the term in its construction
ruling. (See Docs. 169, 220.)

71

history—is given preference over extrinsic evidence—dictionaries, treatises, and inventor and
expert testimony. See id. at 1315–18.
The claim language, read in the context of the specification, does not require that the
desired stitch rate be equal to the gauge of the tufting machine. See Kara Tech. Inc., 582 F.3d at
1347. For example, the ‘703 Patent’s specification notes that a “typical desired stitch rate” in a
conventional tufting system “generally has been matched to the gauge of the tufting machine,
i.e., for a tenth gauge tufting machine, the stitch rate typically will be approximately ten stitches
per inch . . . .” (Doc. 292-1, at 65, col. 5:22–26.) Further, with regard to the present invention, it
states that “for a tenth gauge machine generally run using a desired stitch rate of approximately
ten stitches per inch,” the effective stitch rate for a three-color pattern will be “approximately
thirty stitches per inch . . . .” (Id., col. 5:35–42.) The above language from the specification
clarifies that the desired stitch rate, though “based on the gauge of the tufting machine,” does not
have to be equal to the gauge of the machine, just approximate to it. When the intrinsic evidence
alone resolves ambiguity about a disputed claim term, as it does here, it is improper to consider
extrinsic evidence, such as expert testimony. Id. at 1348; Vitronics, 90 F.3d at 1583.
Accordingly, Berger’s testimony does not overcome the claim language and specification.
Tuftco’s argument regarding the absence of the modifier “approximately” is equally
unavailing. While the other Severed Claims use “approximately” to define how the gauge of a
tufting machine relates to the desired stitch rate, none uses “approximately” to modify the term
“based upon.” For example, Claim 12 of the ‘505 Patent provides: “wherein the tufting machine
is a 1/10th gauge tufting machine and the desired fabric stitch rate is approximately ten stitches
per inch.” (Doc. 292-1, at 17, col. 11:6–8.) Moreover, the ‘703 Patent’s specification makes
clear that Claim 1 covers a machine tufting carpets at “desired stich rate” that is consistent with

72

conventional tufting systems, where “for a tenth gauge tufting machine, [for example], the stitch
rate typically will be approximately ten stitches per inch . . . .” (Doc. 292-1, at 65, col. 5:24–26.)
The fact that Claim 1 claims something broader than an exact number does not create a question
about the scope of Claim 1. A person of ordinary skill in the art at the time of the invention
would not construe “based on” as “equal to.”50
Having construed Claim 1, the Court now turns to whether the Accused Products
infringe. Tuftco asserts that the evidence cited by CMC fails to prove that the Accused Products
base the prescribed stitch rate on the gauge of the machine. For example, Tuftco argues, one email between Tuftco’s Director of Marketing, Steve Martin, and one of its customers (Doc. 4544, at 12) does not even mention the gauge of any machine, let alone instruct the customer to base
the prescribed stitch rate upon it. Although the term “gauge” does not appear in the document,
Martin clearly bases his stitches-per-inch calculation on the gauge of the machine. Martin
informs the customer that the “[a]ctual, compressed stitch rate is typically 4X (4-colors), 5X (5colors): 4-colors means 40 [stitches per inch] (160/ 10-cm) & 5-colors means 50 [stiches per
inch] (200/ 10-cm).” (Doc. 454-4, at 12.) Martin’s stitch-rate calculation takes the number of
colors and multiplies them by ten, i.e., the gauge. Tuftco provides no alternative explanation for
this calculation. And Martin confirms in deposition testimony regarding another customer email that “10-cm” refers to a 1/10th machine gauge. In the e-mail Martin stated: “Stitch rate is
programmed as about 40 [stitches per inch] (156 per 10-cm) so this 4-color Colortuft pattern has
a stitch rate about 4X normal.” (Doc. 454-1, at 1 (emphasis in original).) When deposed, Martin

50

Though not re-asserted in its response to CMC’s summary judgment motion, in its own
summary judgment motion Tuftco also argues that “based on” should be construed as “equal to,”
citing prosecution history of the ‘703 Patent. (Doc. 450, at 21–28.) The Court rejected this
argument in Part III(d)(ii)(2).

73

confirmed that in this e-mail he was “talking about a four-color Colortuft pattern on a tenthgauge machine where your stitch rate is going to be around forty stitches per inch.” (Doc. 45411, at 203–04.) Again, Tuftco offers no other explanation for arriving at forty stitches per inch
other than multiplying the number of colors by the gauge of the machine. And the same goes for
the other evidence cited by Tuftco. (See Doc. 454-1, at 1–2; id. at 11; Doc. 454-2, at 1; Doc.
454-4, at 1; id. at 10.)
Finally, Tuftco argues that the Accused Products’ prescribed stitch rate is not based on
the gauge, but is up to customer discretion. Tuftco cites testimony from a number of its
employees indicating that the number of yarns to display in the face of the carpet is decided by
the customer. For example, Martin testified that stitch rate is at “customer discretion . . . they
can use whatever stitch rate they want to do.” (Doc. 454-12, at 115.) Tuftco fails, however, to
cite any evidence demonstrating that its customers actually use a prescribed stitch rate that is not
either equivalent to the gauge of the machine or based on it. In an e-mail from Martin to Steve
Frost, Tuftco’s CEO, Martin states:
The actual stitch rate is determined by: a. # of colors[,] b. Yarn size[.] Rule of
Thumb, as we know it, is the stitch rate is compressed in direct proportion with #
of colors, E.g. 4-color Colortuft=40 [stitches per inch], but this is [n]ot necessarily
true, since a larger or more ‘blooming’ yarn may require a [stitches per inch] of
maybe only 32 or 36 [stitches per inch].
(Doc. 454-2, at 1.) Again, Tuftco offers no other explanation for arriving at forty stitches per
inch—then thirty-two or thirty-six for a larger yarn size—other than multiplying the number of
colors by a desired stitch rate that is based on the gauge of the machine. Though the prescribed
stitch rate will vary based on yarn size and customer preference—just like with ColorPoint—this
variance does not negate the relationship between the Accused Products’ gauge and prescribed
stitch rates. Simply asserting that the desired stitch rate of the Accused Products is not “based on

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the gauge of the tufting machine” as required by Claim 1 is insufficient to raise a genuine issue
of material fact.
The Court now turns to whether CMC has met its burden on summary judgment. As
already noted, CMC moves for summary judgment that four of the five Inspected Machines
infringe Claim 1—specifically, the machines inspected at: (1) Signature Hospitality Carpets; (2)
J&J Industries; (3) Shaw Industries; and (4) Tuftco. CMC submits Steven Berger’s expert report
in support, which conducts an element-by-element analysis. (Doc. 454-9, at 60–61, 91–96.)
Again, Claim 1 requires that the desired stitch rate be “based on the gauge of the tufting
machine.” The Court has already concluded that a person of ordinary skill in the art at the time
of the invention would not construe “based on” as “equal to” when viewing the claim language
in light of the ‘703 Patent’s specification. Accordingly, a machine will infringe Claim 1 if the
desired stitch rate of the pattern it produces is approximate to the gauge of the tufting machine.51
The Court will now compare the properly construed Claim 1 to the allegedly infringing Inspected
Machines to determine whether this claim limitation is present. Innovention, 637 F.3d at 1318–
19.
No reasonable jury could conclude that the desired stitch rate of patterns made by three of
the Inspected Machines was not based on the gauge of the machine. With respect to the 1/10th
gauge single-needle-bar machine inspected at Signature, CMC’s expert Steven Berger noted that,
as required by Claim 1, the machine made a six-color pattern at an effective stitch rate of
seventy-two stitches per inch and a desired stitch rate of twelve. (Doc. 454-9, at 60.) The
resulting pattern displayed a face density of approximately twelve stitches per inch. (Id.) With

51

In its claim-construction ruling, the Court declined to construe “approximately,” finding that
the term should take its ordinary meaning. (Doc. 220, at 14.)

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respect to the 1/10th gauge single-needle-bar machine inspected at Shaw, Berger noted that, as
required by Claim 1, the machine made a four-color pattern at an effective stitch rate of forty
stitches per inch and a desired stitch rate of ten. (Id. at 61.) The resulting pattern displayed a
face density of approximately ten stitches per inch. (Id.) With respect to the 1/10th composite
gauge double-needle-bar machine inspected at Tuftco, Berger noted that, as required by Claim 1,
the machine made a four-color pattern at an effective stitch rate of thirty-six stitches per inch and
a desired stitch rate of approximately nine. (Id.) The resulting pattern displayed a face density
of approximately nine stitches per inch. (Id.) Accordingly, CMC has met its burden with regard
to these three machines.
However, a genuine issue of material fact exists with regard to the machine inspected at
J&J (the “J&J Machine”). Berger noted that the 1/12th composite gauge double-needle-bar J&J
Machine made a three-color pattern at an effective stitch rate of twenty-six stitches per inch and
a desired stitch rate of approximately 8.66 stitches per inch. (Id. at 60–61.) The resulting pattern
displayed a face density of approximately 8.5 stitches per inch. (Id. at 60.) Viewing this
evidence in the light most favorable to Tuftco, a reasonable jury could conclude that a desired
stitch rate of approximately 8.66 stitches per inch is not based on the J&J Machine’s 1/12th
gauge. This conclusion is consistent with the range of “based on the gauge of the machine”
CMC provided at the summary judgment hearing. At the hearing, CMC clarified that it was not
moving for summary judgment that the Lexmark Machine infringed Claim 1, because “[t]he
desired stitch rate . . . was, like, 7 1/2 on a tenth-gauge machine, and we’re not claiming you can
go that far.” (Doc. 474, at 26.) If a desired stitch rate of 7.5 stitches per inch is not “based on”
the gauge of a 1/10th gauge machine (a proportion of 0.75), then CMC is not entitled to

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summary judgment that a 8.66 desired stitch rate is based on the gauge of a 1/12th gauge
machine (a proportion of 0.72).
Accordingly, the Court will GRANT summary judgment that the Inspected Machines at
Signature, Shaw, and Tuftco infringed Claim 1 of the ‘703 Patent, but DENY summary
judgment that the J&J Machine infringed Claim 1.52
4. Method Claims
Next, CMC moves for summary judgment of infringement on six of the method claims—
Claims 8, 10, and 12 of the ‘505 Patent, Claim 28 of the ‘703 Patent, and Claims 21 and 27 of
the ‘989 Patent—asserting theories of direct infringement and induced infringement.
a. Direct Infringement
Direct infringement of method claims, like machine claims, is governed by 35 U.S.C. §
271(a), which states “whoever without authority makes, uses, offers to sell, or sells any patented
invention . . . infringes the patent.” Sale of an accused product capable of performing the
method, however, is not sufficient to prove infringement. Lucent Techs., Inc. v. Gateway, Inc.,
580 F.3d 1301, 1317 (Fed. Cir. 2009). Instead, the patentee must present evidence that the
alleged infringer, or someone under its control, performed all of the steps of the claimed method.
Id. A finding of direct infringement “can rest on as little as one instance of the claimed method
being performed during the pertinent time period.” Id.
i. Claims 8, 10, and 12 of the ‘505 Patent
CMC argues that the Accused Products perform every element of Claim 8 of the ‘505
Patent, as well as dependent Claims 10 and 12. In support, CMC submits Steven Berger’s expert
report on infringement, which compares the claims, element by element, to the operation of the
52

That Tuftco made and sold each of the Accused Products listed appears to be undisputed. (See
Doc. 457, at 1; Doc. 454-11, at 120–21.)

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Accused Products. Additionally, CMC cites photographs of samples made by Tuftco on its
Colortuft/iTuft c, iTuft 5c, and iTuft 6c machines. (See Doc. 454-3 (single-needle-bar samples);
Doc. 454-5, at 3–39 (double-needle-bar samples).) CMC cites these samples as evidence of
direct infringement by Tuftco of all the method claims for which it seeks summary judgment.
Tuftco does not dispute that it made these samples or maintain that they were produced in a
manner inconsistent with how the Accused Products were made to operate. (See Doc. 452.)
Accordingly, if CMC meets its burden of providing evidence that the Accused Products operate
in a way that infringes the method claims, Tuftco is liable for direct infringement of the method
claims for producing these samples. See Ricoh Co., Ltd. v. Quanta Comput. Inc., 550 F.3d 1325,
1336 (Fed. Cir. 2008) (upholding district court’s decision to grant summary judgment of noninfringement where patentee did not present evidence that alleged infringer tested any accused
products).
Tuftco does not dispute the first six limitations of Claim 8, but it does dispute that the
Accused Products perform the seventh limitation, which provides:
wherein the feeding of the yarns to form the high and low tufts tracks the shifting
of the needles so as to substantially maintain density of the tufts of yarns being
formed in the backing material in a direction of the rows of tufts and location of
the high tufts of yarns at desired positions across the backing to form the
patterned tufted articles.
(Doc. 292-1, at 16, col. 10:56–61 (emphasis added).) Specifically, Tuftco asserts that CMC
failed to provide any evidence that the Accused Products feed the yarns in a fashion that tracks
the shifting of the needles.53 To the contrary, Berger’s report states that “[v]ideos of Tuftco’s

53

Additionally, Tuftco suggests that, because tracking appears to be a key feature in the Severed
Claims, the fact that the term “track” is not included elsewhere in the ‘505 Patent “rais[es]
questions as to the adequate enablement and written description of the invention, or at least
indefiniteness.” (Doc. 452, at 10.) Because Tuftco does nothing to develop the theory in this
comment, the Court will disregard it.
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single and double-needle-bar machines confirm that the yarn feed and shifting needle bars work
together to insert a higher number of yarns at each location . . . .” (Doc. 454-9, at 80 (emphasis
added); see also videos attached to Doc. 292-3, at 29, 34, 36.) Thus, CMC has submitted
evidence indicating that the Accused Products feed yarns in a fashion that tracks the shifting of
the needles, and Tuftco fails to raise a material question of fact. See TechSearch, L.L.C. v. Intel
Corp., 286 F.3d 1360, 1375 (Fed. Cir. 2002) (finding “wholly conclusory allegations”
insufficient to raise a genuine issue of material fact as to infringement); Johnston v. IVAC Corp.,
885 F.2d 1574, 1578 (Fed. Cir. 1989) (“General assertions of fact issues, general denials, and
conclusory statements are insufficient to shoulder the non-movant’s burden.” (internal quotation
mark omitted)). Accordingly, Tuftco has failed to raise a genuine issue of material fact.
However, the Court concludes that CMC is not entitled to summary judgment on the
double-needle-bar Accused Products. To find infringement, the Court “compares the properly
construed claims to the allegedly infringing device to determine whether all of the claim
limitations are present, either literally or by a substantial equivalent.” Innovention, 637 F.3d at
1318–19. Claim 8 the ‘505 Patent limits itself to one needle bar: “a shiftable needle bar” and
“shifting the needle bar . . . .”54 (Doc. 292-1, at 16, col. 10:43, 44 (emphasis added).) While the
‘505 Patent’s specification refers, at times, to multiple needle bars (see, e.g., Doc. 292-1, at 12,
col. 2:9), Federal Circuit precedent is clear that the Court should not import limitations from the
specifications into the claims. Kara Tech. Inc., 582 F.3d at 1348. Accordingly, double-needlebar machines do not literally infringe Claim 8.

54

The rest of the Severed Claims do not specify a number of needle bars. For example, Claim 1
of the ‘703 Patent provides for “at least one needle bar . . . .” (Doc. 292-1, at 67, col. 9:19.)

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“A device that does not literally infringe a claim may nonetheless infringe under the
doctrine of equivalents if every element in the claim is literally or equivalently present in the
accused device.” Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1423 (Fed. Cir. 1997).
“A claim element is equivalently present in an accused device if only ‘insubstantial differences’
distinguish the missing claim element from the corresponding aspects of the accused device.” Id.
(citation omitted). As an issue of fact, equivalence should be reserved for the fact finder unless
no reasonable jury could find eqiuvalence. Id. Tuftco noted some of the differences between
single- and double-needle-bar machines in connection with its argument that double-needle-bar
machines are incapable of infringing the Severed Claims. See supra Part III(d)(iii)(2). For
example, Steve Frost testified in a Rule 30(b)(6) deposition that double-needle bars are not
capable of tufting “a single pixel of color in any longitudinal line of tufting” and, therefore, are
incapable of the pinpoint accuracy of single-needle-bar machines. (Doc. 454-12, at 67–69.)
Viewing the evidence in a light most favorable to Tuftco, a reasonable jury could find that using
two needle bars is not substantially equivalent to using one based upon these differences. As
such, the Court will GRANT CMC summary judgment of infringement of Claim 8 of the ‘505
Patent by the single-needle-bar Accused Products of Claim 8 of the ‘505 Patent, but DENY
summary judgment of infringement by the double-needle-bar Accused Products.
Turning to Claims 10 and 12 of the ‘505 Patent, which are dependent on Claim 8, CMC
also submits Berger’s report in support of its motion for summary judgment of Claims 10 and 12.
Tuftco’s only response revolves around its argument as to Claim 8, which the Court has rejected.
Because CMC bears the burden at trial, however, CMC must make a prima facie showing of
infringement to be entitled to summary judgment. Warner-Lambert, 418 F.3d at 1341 (citing
Liberty Lobby, 477 U.S. at 252); L & W, Inc. v. Shertech, Inc., 471 F.3d 1311, 1318 (Fed. Cir.

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2006). Berger’s report conducts an element-by-element infringement analysis on Claims 10 and
12. (Doc. 454-9, at 83–90.) The report “set[s] forth the factual foundation for his infringement
opinion in sufficient detail for the court to be certain that features of the accused product would
support a finding of infringement . . . .” Intellectual Sci., 589 F.3d at 1183. Specifically, to show
that the Accused Products use yarn-feed control to either pull unwanted tufts very low or
completely out of the backing, i.e., backrobbed, as required by Claim 10, Berger provided: (1)
testimony from Tuftco’s Director of Marketing, Steven Martin, confirming that Tuftco machines
use yarn-feed control to backrob unwanted tufts very low or out of the backing; (2) excerpts from
Tuftco’s user manuals that instruct users to enter “Unsew” or “No Sew” rates for yarns that are
not supposed to appear in the face of the pattern; and (3) photographs and videos from
inspections of the Inspected Machines showing that colors not supposed to be shown in the face
of the carpet are backrobbed. (Doc. 454-9, at 83–85.) Regarding Claim 12, which requires a
1/10th gauge tufting machine and a desired stitch rate of approximately ten stitches per inch,
Berger provided: (1) e-mails from Tuftco employees instructing customers to use a desired stitch
rate (or “surface density”) of ten on a 1/10th gauge machine; (2) photographs of Colortuft/iTuft c
samples made on a 1/10th gauge machine and having a desired stitch rate of approximately ten;
and (3) a summary of his inspection of a 1/10th gauge machine at Shaw Industries, where he
made a four-color pattern with an effective stitch rate of forty stitches per inch. (Id. at 85–90.)
Given that Claims 10 and 12 are dependent on Claim 8 of the ‘505 Patent, however, they
are also explicitly limited to one needle bar. The Court has already determined that there exists a
genuine issue of material fact as to whether double-needle-bar machines infringe Claim 8.
Accordingly, the Court will GRANT CMC summary judgment of infringement by the singleneedle-bar Accused Products on Claims 10 and 12 of the ‘505 Patent and DENY summary

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judgment of infringement as to the double-needle-bar Accused Products. Given that Claim 12
applies only to 1/10th gauge tufting machines, the Court limits summary judgment on Claim 12
to the Accused Products that are single-needle-bar 1/10th gauge machines.55
ii. Claim 28 of the ‘703 Patent
Next, CMC moves for summary judgment that the Accused Products operate to infringe
Claim 28 of the ‘703 Patent and submits Steven Berger’s expert report in support. Tuftco
responds only that, “[b]ecause Claim 28 of the ‘703 [Patent] is dependent upon Claim 1,” CMC
should be denied summary judgment for the reasons stated in connection with Claim 1. (Doc.
452, at 15 n.3.) A dependent claim is one that “contain[s] a reference to a claim previously set
forth and then specif[ies] a further limitation of the subject matter claimed.” 35 U.S.C. § 112(d).
Claim 28 does not contain a reference to Claim 1 and, therefore, is not dependent on Claim 1.
Accordingly, Tuftco has failed to respond to CMC’s motion for summary judgment as to Claim
28. Because CMC bears the burden at trial, however, it must make a prima facie showing of
infringement. Warner-Lambert, 418 F.3d at 1341; L & W, Inc., 471 F.3d at 1318. Berger’s
report conducts an element-by-element infringement analysis on Claim 28. (Doc. 454-9, at 96–
105.) Specifically, to prove the Accused Products operate with “an increased effective stitch rate
that is at least two times a prescribed stitch rate based upon a gauge of the tufting machine”
while “form[ing] the patterned article with an appearance of increased density,” as required by
Claim 28, Berger provides photographs and details of his inspections of the Inspected Machines.
55

To protect certain third-party information and because a listing of those products is not
essential to the public’s understanding of this summary judgment order, the Court will not list
those machines here. (See Doc. 381); see also Flexsys Am. LP v. Kumho Tire U.S.A., Inc., No.
5:05cv156, 2010 WL 2813423, at *3 (E.D. Ohio July 15, 2010) (revising a summary judgment
ruling to make indirect references to proprietary information where public’s interest in
information “is limited inasmuch as it is not necessary for an understanding of the Court’s ruling
on summary judgment”).

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For example, the Accused Product at Signature, a 1/10th gauge machine, tufted a six-color
pattern at an effective stitch rate of seventy-two stitches per inch and a desired stitch rate of
twelve. (Id. at 98.) Additionally, Berger provides Tuftco user manuals that instruct customers to
input an effective stitch rate based on the desired stitch rate, multiplied by the number of colors
in the pattern, as well as samples made by Tuftco that follow this method. (Id. at 104–05.)
Therefore, the Court finds that Berger’s report “set[s] forth the factual foundation for his
infringement opinion in sufficient detail for the court to be certain that features of the accused
product would support a finding of infringement . . . .” Intellectual Sci., 589 F.3d at 1183.
However, Claim 28 contemplates that the prescribed or desired stitch rate be “based upon
a gauge of the tufting machine.” In connection with its analysis of Claim 1 of the ‘703 Patent,
the Court has already noted that there exists a genuine issue of material fact with regard to the
Lexmark and J&J Machines. See supra Part III(d)(iii)(3). Specifically, the 1/10th gauge singleneedle-bar Lexmark Machine tufted a pattern with a desired stitch rate of seven. (Doc. 454-9, at
60.) The 1/12th composite gauge double-needle-bar J&J Machine tufted a pattern with a desired
stitch rate of approximately 8.66 stitches per inch. (Id.) A reasonable jury could find that these
desired stitch rates are not “based upon a gauge of the tufting machine” as required by Claim 28.
Accordingly, the Court will DENY summary judgment that the Lexmark and J&J
Machines operate to infringe Claim 28 of the ‘703 Patent, and will GRANT CMC summary
judgment that the Inspected Machines at Signature, Shaw, and Tuftco operate to infringe Claim
28.
iii. Claims 21 and 27 of the ‘989 Patent
Next, CMC moves for summary judgment that the Accused Products operate to infringe
Claims 21 and 27 of the ‘989 Patent. Other than its double-needle-bar argument, see supra Part

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III(d)(iii)(2), Tuftco does not respond. Still, CMC must make a prima facie showing of
infringement to be entitled to summary judgment. Warner-Lambert, 418 F.3d at 1341; L & W,
Inc., 471 F.3d at 1318.
The Court finds that, based on element-by-element analysis submitted in Berger’s report
(Doc. 454-9, at 107–08, 111–12), CMC has established it is entitled to summary judgment that
the Accused Products infringe Claims 21 and 27 of the ‘989 Patent. See Intellectual Sci., 589
F.3d at 1183. Specifically, to show the Accused Products control the yarn feed to retain a
desired yarn tuft in the face of the pattern, as required by Claim 21, and stitch multiple stitches at
selected stitch locations, as required by Claim 27, Berger provides: (1) an e-mail from Steve
Martin, Tuftco’s Director of Marketing, stating that one out of the four colors in a pattern is
“tufted into the carpet face whilst the other colors are hidden (burden) beneath the surface or may
be pulled all the way out of the primary backing, dependent upon the programmed yarn feed
rates” (Doc. 454-9, at 50); and (2) deposition testimony from Martin confirming that this e-mail
accurately describes the Colortuft/iTuft c method (Doc. 454-11, at 202–05). Berger also noted
that the videos of the Inspected Machines confirm this fact. (Doc. 454-9, at 108.) The same email and deposition testimony from Martin show that, as required by Claims 21 and 27, the
effective stitch rate is determined by multiplying the desired stitch rate by approximately the
number of colors: “To make the surface density nearly 1/10th Gauge . . . , the stitch rate is
compressed in conjunction with the # of colors: E.g. 4-color Colortuft[;] Thread-up A-B-C-D[;]
Shifting 4 over x 4 back[;] Stitch rate is programmed as about 40 [stitches per inch] . . . .” (Id. at
50.) Additionally, the samples provided by Tuftco, made with both single- and double-needle
bar-machines, present this effective stitch rate formula. (Id. at 88–90.) Accordingly, the Court

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will GRANT CMC summary judgment of infringement of Claims 21 and 27 of the Accused
Products.
b. Induced Infringement
Induced infringement is governed under 35 U.S.C. § 271(b), which provides that
“[w]hoever actively induces infringement of a patent shall be liable as an infringer.” To prevail
on an inducement claim, “the patentee must show direct infringement, and that the alleged
infringer knowingly induced infringement and possessed specific intent to encourage another's
infringement.” Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1363 (Fed. Cir. 2012) (internal
quotation marks omitted). Therefore, liability for induced infringement may arise only where
there is direct infringement by a third party. Id. at 1364; Limelight Networks, Inc. v. Akamai
Techs., Inc., 134 S. Ct. 2111, 2117 (2014). “To satisfy the direct infringement requirement, the
patentee must either point to specific instances of direct infringement or show that the accused
device necessarily infringes the patent in suit.” Toshiba, 681 F.3d at 1364. If an accused
product can be used in a non-infringing manner, the product does not necessarily infringe the
method claim. ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1313 (Fed. Cir.
2007).
CMC moves for summary judgment that Tuftco has indirectly infringed the method
claims by inducing its customers to directly infringe them. In support, CMC provides evidence
that: (1) “[t]he Accused Products were specifically configured to run the infringing
Colortuft/iTuft c method”; (2) “Tuftco actually developed ‘Colortuft software’ for its machines
to facilitate the process of using the infringing method”; (3) “Tuftco trained customers regarding
how to run the infringing Colortuft/iTuft c method”; (4) “Tuftco created user’s manuals that
provided detailed instructions for using the infringing Colortuft/iTuft c method”; and (5) “Tuftco

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sent numerous other documents to customers describing how the infringing Colortuft/iTuft c
method works.” (Doc. 442, at 33.)
CMC fails to show there is no issue of material fact as to whether the patent was directly
infringed by Tuftco’s customers. First, CMC does not assert that the Accused Products cannot
be used in a non-infringing manner, precluding a finding that the Accused Products necessarily
infringe. Id. Second, CMC does not “point to specific instances of direct infringement” by
customers. Toshiba, 681 F.3d at 1364. Instead, CMC cites only circumstantial evidence
indicating that Tuftco’s customers likely infringed. For example, although Tuftco’s user manuals
instructed its customers to use the Accused Products in an infringing manner, those manuals do
not provide direct evidence that those customers did in fact use the Accused Products in an
infringing manner. As noted by CMC, infringement by third parties may be proved by
circumstantial evidence at trial. See id. None of the cases cited by CMC, however, stands for
the proposition that summary judgment of induced infringement may be granted on
circumstantial evidence alone. See id. at 1366 (vacating summary judgment of non-infringement
where the alleged infringer designed and instructed customers to use the products in an
infringing way); Lucent Techs., 580 F.3d at 1317–19 (finding that substantial evidence supported
jury’s finding of direct infringement where expert performed steps of the method claim on the
accused products and accused infringer designed and instructed customers to use the products in
an infringing way); Moleculon Res. Corp. v. CBS, Inc., 793 F.2d 1261, 1272 (Fed. Cir. 1986)
(upholding a trial court’s finding of fact after a bench trial law that patentee had met its burden of
showing § 271(b) infringement with circumstantial evidence of extensive product sales and
distributed instructions teaching the method), abrogated on other grounds by Egyptian Goddess,
Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc); Parkervision, Inc. v. Qualcomm Inc.,

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27 F. Supp. 3d 1266, 1279–80 (M.D. Fla. 2014) (denying alleged infringer’s argument that it is
entitled to judgment as a matter of law where patentee proved its case with representative
products), rev’d on other grounds, 621 F. App’x 1009 (Fed. Cir. 2015).
Moreover, Tuftco provides evidence that raises a material question of fact as to
infringement of at least six of the Accused Products. A representative from a Tuftco customer
testified in a deposition that the company only used one of the seven machines it purchased from
Tuftco to make “Colortuft carpet.” (Doc. 435, at 196.) Based on this evidence, a reasonably jury
could conclude that this customer never directly infringed with the other six machines.
Accordingly, the Court will DENY CMC summary judgment of induced infringement of the
method claims.
5. Damages
Tuftco seeks summary judgment on the following damages issues: (1) whether CMC is
entitled to lost profits related to Tuftco’s double-needle-bar machine sales; (2) whether CMC is
entitled to damages for infringement of the ‘703 Patent related to foreign sales; (3) whether CMC
is entitled to damages for infringement of the ‘703 Patent related to sales Tuftco made before the
‘703 Patent issued; and (4) whether CMC’s damages for induced infringement, if any, must be
restricted if CMC fails to establish direct infringement for any given sale.
i. Lost Profits on Tuftco’s Double-Needle-Bar Machine Sales
First, Tuftco moves for summary judgment that CMC is not entitled to lost-profits
damages on the double-needle-bar Accused Products, arguing that CMC cannot establish the
requisite “but for” causation to obtain lost profits. The availability of lost profits is a question of
law. Siemens Med. Sols. USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269,
1287 (Fed. Cir. 2011). “To recover lost profits a patentee must show that ‘but for’ infringement

87

it reasonably would have made the additional profits enjoyed by the infringer.” Micro Chem.,
Inc. v. Lextron, Inc., 318 F.3d 1119, 1122 (Fed. Cir. 2003). There are multiple methods by
which a patentee may show “but for” causation. Id. One of which is the Panduit method,
whereby “the patent owner must prove (1) a demand for the patented product, (2) an absence of
acceptable noninfringing substitutes, (3) the manufacturing and marketing capability to exploit
the demand, and (4) the amount of profit the patent owner would have made.” Siemens, 637
F.3d at 1287 (internal quotation marks omitted); see also Panduit Corp. v. Stahlin Bros. Fibre
Works, Inc., 575 F.2d 1152, 1156 (6th Cir. 1978). A showing under Panduit establishes a
patentee’s prima facie case of “but for” causation. Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538,
1545 (Fed. Cir. 1995). “The burden then shifts to the infringer to show that the inference is
unreasonable for some or all of the lost sales.” Id.
CMC makes a prima facie case of “but for” causation in its expert report of David A.
Kennedy. (Doc. 435, at 44–66.) With regard to the first Panduit factor, “demand for the
patented product” contemplates not only products covered by the asserted patent, but also similar
products that are in direct competition. Presidio Components, Inc. v. Am. Tech. Ceramics Corp.,
702 F.3d 1351, 1360 (Fed. Cir. 2012). Additionally, as demand for the patented and infringing
products are interchangeable, “evidence of sales of the infringing product may suffice to show
Panduit’s first factor.” BIC Leisure Prods., Inc. v. Windsurfing Int’l, Inc., 1 F.3d 1214, 1218
(Fed. Cir. 1993). The Court has already determined that the single- and double-needle-bar
Accused Products infringe Claims 21 and 27 of the ‘989 Patent and that at least some Accused
Products infringe Claims 1 and 28 of the ‘703 Patent. See supra Parts III(d)(iii)(3),
III(d)(iii)(4)(ii)–(iii). Accordingly, those Accused Products are covered by the Asserted Patents.
As for Claims 8, 10, and 12 of the ‘505 Patent, CMC has submitted evidence that the double-

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needle-bar Accused Products are sufficiently similar to the single-needle-bar Accused Products
to be in direct competition. Presidio, 702 F.3d at 1360. For example, Jeff Smith, a Tuftco
employee, testified that double-needle-bar Accused Products use the same “Colortuft technique”
as the single-needle-bar Accused Products. (Doc. 454-12, at 124.) As such, demand under the
first Panduit factor includes demand for double-needle-bar machines. Kennedy outlines the
sales of not only ColorPoint machines, but also the infringing Accused Products in his report
(Doc. 435, at 45–50), satisfying the first factor under Panduit.
The second Panduit factor requires demonstrating an absence of acceptable noninfringing
substitutes. “[I]f purchasers are motivated to purchase because of particular features available
only from the patented product, products without such features—even if otherwise competing in
the marketplace—would not be acceptable noninfringing substitutes.” Standard Havens Prods.,
Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1373 (Fed. Cir. 1991). Kennedy’s report outlines the
differences between the infringing Accused Products and non-infringing alternative substitute
products, namely Tuftco’s Colortron and Colortec machines. (Doc. 435, at 60–63.) Specifically,
Kennedy provides evidence that: (1) Colortron machines are more expensive to operate and are
typically limited to making “high end/price oriental style rugs and similar specialty tufted
fabrics” (id. at 61); (2) Colortec machines are only capable of tufting cut-pile carpets, cannot
create patterns with single-pixel precision, and have gauge limitations, unlike the Accused
Products (id. at 62); and (3) Tuftco has had more success in selling the Accused Products than
the Colortron and Colortec machines (id. at 60–61, 63). As such, CMC has provided sufficient
evidence of a lack of acceptable noninfringing substitutes.
The third factor requires a showing of manufacturing and marketing capability to exploit
demand. Kennedy provides a detailed analysis of CMC’s production levels, facilities, and

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manufacturing processes during the infringement period. (Id. at 52–60.) Based on this analysis,
he concludes that CMC had the capability to produce and sell enough tufting machines to replace
Tuftco’s sales of the Accused Products. (Id.) Tuftco does not dispute CMC’s production
capabilities. Instead, Tuftco argues that CMC fails the third Panduit factor because CMC did not
offer any double-needle-bar machines that practiced the ColorPoint method during the relevant
time period. (Doc. 450, at 39–42; Doc. 453, at 7–8.) In support, Tuftco cites a May 2015 e-mail
from a customer claiming he contacted CMC in the hopes of converting his company’s doubleneedle-bar machine to ColorPoint, “and their answer was they would not do Color Point on a
graphics or stagger type needle bar at this time or in the near future.” (Doc. 435, at 170.)
According to Tuftco, because CMC did not have the capability to exploit demand for doubleneedle-bar machines, CMC is not entitled to lost-profit damages on the double-needle-bar
Accused Products. Tuftco relies primarily on two Federal Circuit cases for its proposition that a
patentee cannot obtain lost-profits damages on a product it is not selling itself: Poly-America,
L.P. v. GSE Lining Technology, Inc., 383 F.3d 1303 (Fed. Cir. 2004), and Wechsler v. Macke
International Trade, Inc., 486 F.3d 1286 (Fed. Cir. 2007).
Tuftco mischaracterizes Federal Circuit precedent. Poly-America and Wechsler
recognized the general rule that “if the patentee is not selling a product, by definition there can
be no lost profits.” Wechsler, 486 F.3d at 1293; Poly-America, 383 F.3d at 1311; see also RiteHite, 56 F.3d at 1548. However, where a patentee sells its own patented products, this rule does
not apply. Rite-Hite, 56 F.3d at 1548 (finding that the general rule did not apply because “RiteHite did sell its own patented products”). In Poly-America, the patent owner attempted to claim
lost profits of products sold by its sister corporation and licensee. 383 F.3d at 1310–11. The
court concluded that lost profits were unavailable because the patent owner itself did not sell any

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patented products—all sales were made by its sister corporation, a separate entity. Id. Similarly,
in Wechsler, it was undisputed that the patentee did not produce or sell any product until after the
period of infringement ended. 486 F.3d at 1293. Tuftco does not dispute that CMC sold singleneedle-bar machines during the relevant infringement period. Accordingly, because CMC sold
its own patented products, Poly-America and Wechsler are inapposite.
Moreover, Tuftco mischaracterizes the third Panduit factor. CMC is not required to
show it can meet demand for the allegedly infringing product; instead, CMC must establish its
capability to exploit demand for the patented product. Siemens, 637 F.3d at 1287. Moreover, the
Court has already noted that “demand for the patented product” contemplates not only products
covered by the asserted patents, but also similar products in direct competition. Presidio, 702
F.3d at 1360. In other words, demand under Panduit is not confined to one specific product. In
connection with its analysis of the first Panduit factor, the Court has already concluded that the
double-needle-bar Accused Products either: (1) infringe the Severed Claims; or (2) are
sufficiently similar to the patented product to be in direct competition. In any case, CMC
presents evidence that it did in fact offer ColorPoint double-needle-bar machines for sale during
the relevant time period. For example, one May 2016 invoice to a customer from CMC itemizes
a double-needle-bar tufting machine—a 1/12th composite gauge with two 1/6th gauge needle
bars—“with ColorPoint capability.” (Doc. 435, at 5.) Accordingly, the Court finds that CMC
has satisfied the third Panduit factor.
Finally, under the fourth factor, CMC must establish the amount of profit it would have
made but for the infringing product. Tuftco does not dispute the fourth Panduit factor in its
summary judgment motion. (See Doc. 450, at 39–42.) In his expert report, Kennedy calculates
CMC’s lost profits based on the number and amount of Tuftco’s infringing sales, compared with

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CMC’s reported profitability levels. (Doc. 435, at 63–66.) Accordingly, CMC has provided
evidence of lost profits sufficient to satisfy the fourth Panduit factor.
For the foregoing reasons, CMC has established a prima facie case of “but for”
causation.56 Rite-Hite, 56 F.3d at 1545. The actual amount of CMC’s lost-profit damages is a
question of fact which will be reserved for the jury at trial. Minco, Inc. v. Combustion Eng’g,
Inc., 95 F.3d 1109, 1118 (Fed. Cir. 1996). The Court will, therefore, DENY Tuftco summary
judgment limiting CMC’s lost-profits damages on the double-needle-bar Accused Products.
ii. Foreign Sales
Next, Tuftco moves for summary judgment excluding damages from Tuftco’s foreign
sales of Accused Products in the event CMC is awarded damages for infringement of the ‘703
Patent. Under 35 U.S.C. § 271(a), “whoever without authority makes, uses, offers to sell, or sells
any patented invention within the United States . . . infringes the patent.” (Emphasis added).
Assuming the jury finds that the Accused Products infringe, Tuftco’s activities in the United
States, i.e., making the Accused Products, would be sufficient to support a finding of
infringement and consequently an award of damages.
Tuftco argues that a recent Federal Circuit case, Power Integrations, Inc. v. Fairchild
Semiconductor International, Inc., compels a different result. 711 F.3d 1348 (Fed. Cir. 2013).
In Power Integrations, the Federal Circuit rejected a patentee’s argument that they were entitled

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Moreover, CMC may also establish “but for” causation by the “two-supplier market” test.
Micro Chem., 318 F.3d at 1122. Under this test, CMC must demonstrate: “1) the relevant
market contains only two suppliers, 2) its own manufacturing and marketing capability to make
the sales that were diverted to the infringer, and 3) the amount of profit it would have made from
these diverted sales.” Id. at 1124. CMC presented evidence that the carpet-tufting-machine
market is a two-supplier market. For example, Mark Gallagher, Tuftco’s expert, noted that
CMC’s market share of the “tufting machine manufacturing industry” is estimated at 65%, while
Tuftco’s market share is estimated at 30%, for a combined total of 95%. (Doc. 441, at 64.)

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to compensation for the accused infringer’s foreign sales, based on the presumption against
extraterritorial reach of U.S. patent law. Id. at 1370–72. Power Integrations, however, is
distinguishable from the case at hand. There, the accused infringer’s actions within the United
States included, at most, “direct sales or offers to sell infringing parts in the United States, the
manufacturing of infringing parts in the United States and offers for sale from the United States
that result in actual sales abroad . . . .” Power Integrations, 589 F. Supp. 2d 505, 509 (D. Del.
2008), vacated on other grounds, 711 F.3d 1348 (Fed. Cir. 2013). After trial, the district court
found that the jury had “clearly adopted” the measure of damages provided by the patentee’s
damages expert, who admitted on cross-examination “that he did not quantify an amount of
damages based on any offer for sale by [the alleged infringer] in the United States.” 711 F.3d at
1372. Accordingly, the district court determined that the jury’s damages award was based not on
the accused infringer’s domestic activities, i.e., the offers for sale, but instead on their worldwide
sales, and granted remittitur. Id. at 1370–71.
On appeal, the patentee argued that it was “foreseeable” that the accused infringer’s
activities in the United States would cause the patentee to lose foreign market sales and that,
therefore, it was entitled to “full compensation” for those damages. Id. at 1370. The Federal
Circuit rejected this argument. Id. at 1372. The court noted that U.S. patent laws “do not
provide compensation for a defendant’s foreign exploitation of a patented invention, which is not
infringement at all,” and that “[e]ven indirect infringement, which can encompass conduct
occurring elsewhere, requires underlying direct infringement in the United States.” Id. at 1371
(internal citation omitted). Accordingly, the Power Integrations court agreed with the district
court’s determination that a damages award based on non-infringing activity (i.e., foreign sales)
is contrary to law. Id. at 1372. The obvious implication is that, if the Power Integrations

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damages award had been based on the accused infringer’s domestic activities, such as its
manufacture or offers for sale in the United States, it would have been upheld. And, here,
assuming the jury finds infringement of the ’703 Patent and awards damages, Tuftco’s domestic
manufacture of the Accused Products would constitute infringement under § 271(a), even if
Tuftco ultimately sold those products outside the United States.
Federal Circuit precedent before and after Power Integrations supports this conclusion.
For example, the Federal Circuit in Railroad Dynamics, Inc. v. A. Stuki Co. approved a damages
award that included royalties for foreign sales of accused products. 727 F.2d 1506, 1519 (Fed.
Cir. 1984). The court reasoned that “[w]hen [the accused infringer] made the [accused products]
in this country, it infringed [the claim at issue]. Whether those [accused products] where sold in
the U.S. or elsewhere is therefore irrelevant . . . .” Id.; see also Goulds’ Mfg. Co. v. Cowing, 105
U.S. 253, 254–58 (1881) (calculating lost profits to include infringing products sold in Canada
but manufactured in the United States); Dowagiac Mfg. Co. v. Minn. Moline Plow Co., 235 U.S.
641, 650 (1915) (distinguishing Goulds’ on the basis that “while [the accused products] were
made in the United States, they were not made by the defendants”); Brown v. Duchesne, 60 U.S.
183, 196 (1856) (“If [the accused product sold at sea] had been manufactured on [a ship’s] deck
while she was lying in the port of Boston . . . [the defendant] would undoubtedly have trespassed
upon the rights of the plaintiff, and would have been justly answerable for the profit and
advantage he thereby obtained.”).
In WesternGeco L.L.C. v. ION Geophysical Corp., decided after Power Integrations, the
Federal Circuit noted that Supreme Court case law suggests “that profits for foreign sales of the
patented items themselves are recoverable when the items in question were manufactured in the
United States and sold to foreign buyers by the U.S. manufacturer.” 791 F.3d 1340, 1352 (Fed.

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Cir. 2015) (citing Goulds’, 105 U.S. at 254; Dowagiac, 235 U.S. at 642–43; Duchesne, 60 U.S.
at 196), vacated on other grounds, 136 S. Ct. 2486 (2016).57 Next, in Carnegie Mellon
University v. Marvell Technology Group, Ltd., the Federal Circuit considered a damages award
that rested in part on foreign sales of semiconductor chips that were manufactured, sold, and
used abroad. 807 F.3d 1283, 1305 (Fed. Cir. 2015). The court noted that in enacting § 271(a),
Congress intended to reach “making or using or selling in the United States or importing into the
United States, even if one or more of those activities also occur abroad.” Id. at 1306. It then
concluded that “[w]here a physical product is being employed to measure damages for the
infringing use of patented methods, . . . territoriality is satisfied when and only when any one of
those domestic actions for that unit (e.g., sale) is proved to be present, even if others of the listed
activities for that unit (e.g., making, using) take place abroad.” Id. Accordingly, the Federal
Circuit “[saw] no extraterritoriality bar to including with the royalty base those chips which were
imported into the United States for use in the United States” and affirmed the judgment insofar
as it rested on imported chips. Id. at 1308. It went on to note that the jury was properly “told
that it ‘may consider’ any sales that resulted from the [domestic] infringing use in order to value
that use,” but that the instruction lacked a requirement that the jury “find a domestic location of
sale as to those chips not made or used in, or imported into, the United States.” Id. at 1310.
Though Carnegie concerned method claims, the principle also applies to machine claims.
With § 271(a), Congress intended to reach “making or using or selling in the United States . . . .”
Id. at 1306. Case law does not support the proposition that Tuftco must make and sell the
Accused Products in the United States to be liable for infringement damages. Accordingly, the

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The WesternGeco court, however, found that precedent inapplicable to the facts therein. 791
F.3d at 1352.

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Court will DENY Tuftco summary judgment excluding damages for infringement of the ‘703
Patent related to foreign sales from any damages award.
iii. Pre-Issuance Damages
Next, Tuftco moves for summary judgment excluding damages for sales that occurred
prior to the issuance of the ‘703 Patent in the event CMC is awarded damages. Generally, a
patent does not have retroactive effect, and damages are available only for infringement “during
the term of the patent.” 35 U.S.C. § 271(a). Under 35 U.S.C. § 154, however, a patentee may
recover reasonable royalties from anyone who infringes the patent “beginning on the date of
publication of the application for such patent . . . .” § 154(d)(1). This provisional right only
applies when “the invention as claimed in the patent is substantially identical to the invention as
claimed in the published patent application.” § 154(d)(2). Whether the patent and published
application are substantially identical is a question of law and requires a comparison of the scope
of the claims in light of the issued claim language, prosecution history, and prior art. Laitram
Corp. v. NEC Corp., 163 F.3d 1342, 1346–47 (Fed. Cir. 1998). “[I]n determining whether
substantive changes have been made, we must discern whether the scope of the claims are
identical, not merely whether different words are used.” Id. at 1346. Where an amendment
narrows a claim in order to distinguish prior art, the change is substantive. Id. at 1348; Bloom
Eng’g Co. v. N. Am. Mfg. Co., 129 F.3d 1247, 1251 (Fed. Cir. 1997).
Considering Claim 1 of the ‘703 Patent in light of the prosecution history, the Court finds
that the application language was amended to distinguish the patented machine from prior art.58

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Though Tuftco requests a limitation on damages “for alleged infringement of the ‘703 Patent,”
it fails to provide any argument related to the prosecution history of Claims 28 and 29. (See Doc.
450, at 29–34, 44.) As such, the Court will limit its analysis and conclusions to Claim 1 of the
‘703 Patent.

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The claim language in the March 2012 application59 (“the ‘703 Application”) provided that tufts
of yarn are formed in the backing material “at an increased effective stitch rate of the prescribed
stitch rate of the patterned tufted article multiplied by a number of different color yarns of the
pattern to maintain a density of the patterned articles.” (Doc. 292-4, at 165 (emphasis in
original).) The PTO Office Action noted that:
The use of the term “of” between effective stitch rate and the prescribed stitch rate
renders the claim indefinite because it is unclear if the effective stitch rate “is a
portion of” or “equivalent” to the prescribed stitch rate multiplied by the number
of colored yarns.
(Id.) Because the effective-stitch-rate calculation in Claim 1 of the ‘703 Application was
indefinite, it “contain[ed] no further limiting structure.” (Id. at 167.) The PTO concluded that
the Burgess et al. Patent (U.S. Patent 5,566,630) (the “Burgess Patent”) in combination with
another reference rendered Claim 1 of the ‘703 Application obvious, because the Burgess Patent
“discloses all the structure as claimed” and “is considered fully capable of providing” the
effective stitch rate as written. (Id. at 167–68.)
Comparatively, Claim 1 of the ‘703 Patent provides that the effective stitch rate “is
determined by increasing a prescribed stitch rate of the patterned tufted article that is based on
the gauge of the tufting machine by a selected amount . . . .” (Doc. 292-1, at 67, col. 9:46–49
(emphasis added).) The amended language makes “effective stitch rate” equivalent to the
prescribed stitch rate multiplied by the number of yarns, narrows the claim, and distinguishes the
Burgess Patent. Accordingly, the invention as claimed in the ‘703 Application is not
substantially identical to the invention as claimed in the ‘703 Patent, and CMC does not retain

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At the summary judgment hearing on July 14, 2017, the parties agreed that the relevant
application to pre-issuance damages on Claim 1 of the ‘703 Patent is the application filed in
March 2012. (Doc. 474, at 74–78.)
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provisional rights arising out of Claim 1. The Court will GRANT Tuftco summary judgment
that pre-issuance damages on Claim 1 of the ‘703 Patent are not recoverable.
The Court notes, however, that Tuftco has not provided any argument as to pre-issuance
damages of the other Severed Claims, and, therefore, summary judgment is limited to the extent
pre-issuance damages arise from Claim 1 of the ‘703 Patent. See Innovention Toys, LLC v. MGA
Entm’t, Inc., 611 F. App’x 693, 700 (Fed. Cir. 2015), vacated on other grounds, 136 S. Ct. 2483
(2016).
iv. Damages for Induced Infringement
Next, Tuftco seeks summary judgment limiting CMC’s damages for induced
infringement, if any, to Accused Products for which CMC can establish direct infringement by
the customer. The grounds for Tuftco’s motion are unclear. To the extent that Tuftco seeks to
restrict a summary judgment grant of damages, the Court has already determined that summary
judgment of induced infringement should be denied. If this is the case, Tuftco’s motion will be
DENIED AS MOOT. If, however, Tuftco seeks to limit CMC’s damages related to machines
for which CMC has proven a direct relationship between a sale and an infringing act, the Federal
Circuit has repeatedly held that a patentee may rely on circumstantial evidence at trial to prove
inducement. See, e.g., Toshiba, 681 F.3d at 1364; Lucent Techs., 580 F.3d at 1317–19; see also
Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 1 F. App’x 879, 884 (Fed. Cir.
2001) (noting that the patentee is not “required to demonstrate a one-to-one correspondence
between units sold and directly infringing customers”). Tuftco also argues that, because the
Accused Products are capable of substantial non-infringing uses, CMC is not entitled to a finding
of indirect infringement. The case cited by Tuftco, however, states in dicta that it agrees with
district courts who have concluded that even if an accused device is capable of substantial non-

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infringing use, liability may be established under § 271(b) if “active steps are taken to encourage
direct infringement.” Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1276 n.6
(Fed. Cir. 2004). Here, CMC provides evidence that: (1) Tuftco trained customers how to use
the infringing Colortuft/iTuft c method (see, e.g., Doc. 454-11, at 148); and (2) Tuftco’s user
manuals instructed customers how to use the infringing Colortuft/iTuft c method (see, e.g., Doc.
454-4, at 18). As such, the Court will DENY Tuftco’s motion for summary judgment to the
extent it seeks to limit CMC’s damages for induced infringement at trial.
6. Inequitable Conduct
CMC moves for summary judgment on Tuftco’s affirmative defense and counterclaim
that the Asserted Patents are unenforceable due to inequitable conduct. A successful claim of
inequitable conduct “renders the entire patent unenforceable.” Therasense, Inc. v. Becton,
Dickinson & Co., 649 F.3d 1276, 1288 (Fed. Cir. 2011). To prevail, an accused infringer must
prove by clear and convincing evidence that the patent applicant: (1) “misrepresented or omitted
material information” (2) “with the specific intent to deceive the PTO.” Id. at 1287. Given the
consequences of a low burden to prove inequitable conduct, among them “increased adjudication
cost and complexity, reduced likelihood of settlement, burdened courts, strained PTO resources,
increased PTO backlog, and impaired patent quality,” the Federal Circuit has recently raised the
burden for both prongs. Id. at 1290. Materiality is generally established by “but-for
materiality”—in other words, “the court must determine whether the PTO would have allowed
the claim if it had been aware of the undisclosed reference.” Id. at 1291. As for intent, the
Federal Circuit has stressed that negligence or even gross negligence is not sufficient. Id. at
1290. Instead, an accused infringer must “prove by clear and convincing evidence that the
applicant knew of the reference, knew that it was material, and made a deliberate decision to

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withhold it.” Id. Though intent may be inferred from circumstantial evidence, “to meet the clear
and convincing evidence standard, the specific intent to deceive must be the single most
reasonable inference able to be drawn from the evidence.” Id. (internal quotation marks
omitted). “[W]hen there are multiple reasonable inferences that may be drawn, intent to deceive
cannot be found.” Id. at 1290–91.
Tuftco alleges that the Asserted Patents are unenforceable due to CMC’s inequitable
conduct in three respects. First, Tuftco asserts CMC diverted the PTO’s attention from two prior
art references—U.S. Patent Nos. 6,244,203 and 6,502,521 (together “Morgante 203/521”), and
U.S. Patent No. 7,426,895 (“Smith 895”)—by burying them among a large number of references.
(Doc. 128, at 10–14.) Second, Tuftco asserts CMC improperly failed to disclose U.S. Patent No.
5,392,723 (“Kaju 723”) and the operation of machines covered by Kaju 723, specifically
Colortec tufting machines. (Id.) Finally, Tuftco argues—for the first time in its response to
CMC’s motion for summary judgment—that CMC’s disclosure of a “long-outdated version of a
NedGraphics manual” establishes inequitable conduct. (Doc. 452, at 41.)
Tuftco’s first argument that CMC deliberately buried the Morgante 203/521 and Smith
895 references fails. It is well established that “[a]n applicant cannot be guilty of inequitable
conduct if the reference was cited to the examiner . . . .” Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d
1318, 1327 (Fed. Cir. 2000). CMC cited both references during prosecution (Doc. 29-1, at 6–7)
and, accordingly, cannot be guilty of inequitable conduct on this basis.
Tuftco’s argument regarding Kaju 723 fails as well. Tuftco presents evidence that: (1)
CMC did not disclose Kaju 723; (2) that disclosure of Kaju 723 was material given the
similarities between the patents; and (3) that one of the named inventors of the Asserted Patents
worked at Cobble, the company that obtained the Kaju 723 Patent, and therefore knew or should

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have known about the reference. (Doc. 452, at 41.) Even viewing this evidence in the light most
favorable to Tuftco, it has failed to present clear and convincing evidence to allow a reasonable
jury to conclude that the Asserted Patents’ inventors intended to deceive the PTO.60 A specific
intent to deceive by CMC is not “the single most reasonable inference” to be drawn from the fact
that CMC knew of Kaju 723 and did not disclose it. Therasense, 649 F.3d at 1290. It is just as
likely, if not more so, that CMC chose to omit Kaju 723 because CMC believed it was not
relevant. Therefore, a jury may not find intent to deceive. Id.; see also Optium Corp. v. Emcore
Corp., 603 F.3d 1313, 1321 (Fed. Cir. 2010) (noting that “[i]ntent to deceive can not be inferred
solely from the fact that information was not disclosed; there must be a factual basis for finding
of deceptive intent” (internal quotation marks omitted)). Allowing Tuftco to present its
inequitable-conduct claim to the jury would improperly shift the burden to CMC to assert a
credible explanation for its nondisclosure of Kaju 723. See Optium, 603 F.3d at 1322.
For the same reasons, Tuftco’s argument with regard to the older version of the
NedGraphics manual fails. Setting aside the problems with Tuftco raising this argument for the
first time in its summary judgment response, Tuftco asserts only that “[b]y intentionally
submitting an older version of the NedGraphics manual to the PTO, CMC avoided any
possibility that the PTO would realize that the capabilities of newer versions of that software
would have rendered the ColorPoint ‘invention’ unpatentable.” (Doc. 452, at 41.) Citing its 35
U.S.C. § 101 argument, Tuftco appears to assert that, but-for CMC’s nondisclosure, the PTO
would have realized that the Asserted Patents attempt to patent the abstract idea of high-rate
stitching. (Id.) First, given that the Court has rejected Tuftco’s § 101 argument, see supra Part
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Moreover, given that the PTO rejected Tuftco’s petition for inter parties review, which was
based in part on Kaju 723, the Court questions whether Tuftco can prove that, but-for CMC’s
nondisclosure of Kaju 723, the PTO would not have issued the Patents.

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III(b)(iv), Tuftco’s ability to establish that the PTO would not have issued the Patents if it had
been aware of the updated manuals is questionable. Moreover, Tuftco produces no evidence of
intent, and, as the Court already noted, the fact finder may not infer intent “solely from the fact
that information was not disclosed . . . .” Optium, 603 F.3d at 1321. Accordingly, the Court will
GRANT CMC summary judgment on Tuftco’s inequitable-conduct claim.
7. State-Law Claims
Next, CMC moves for summary judgment on Tuftco’s affirmative defense and
counterclaims of tortious interference, unfair competition, and unfair trade practices. Tuftco’s
claims for tortious interference, unfair competition, and unfair trade practices arise under
Tennessee law. The Federal Circuit has recognized, however, that “federal patent law preempts
state-law tort liability for a patentholder’s good faith conduct in communications asserting
infringement of its patent and warning about potential litigation.” Globetrotter Software, Inc. v.
Elan Comput. Grp., Inc., 362 F.3d 1367, 1374 (Fed. Cir. 2004). As such, Tuftco’s state-law
claims can survive preemption only if they are “based on a showing of ‘bad faith’ action in
asserting infringement,” even if bad faith is not an element of the state-law tort claim. Id. A
patentee will act in bad faith only if its claims are “objectively baseless, either because those
patents were obviously invalid or plainly not infringed.” Id. at 1375, 1377.
Tuftco asserts that it will be significantly prejudiced if CMC is allowed to raise the
defense of federal preemption for the first time in its summary judgment motion. (Doc. 452, at
45.) CMC, however, raised the defense multiple times before its summary judgment motion,
including in various motions to dismiss (Doc. 16, at 14–15; Doc. 29, at 18–19; Doc. 33, at 18–
19) and in its affirmative defenses to Tuftco’s counterclaims (Doc. 129, at 8). Accordingly, there
is no good reason to preclude CMC from moving for summary judgment on this defense.

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Next, Tuftco argues that whether CMC threatened one or more of Tuftco’s customers in
order to interfere with Tuftco’s sales is a genuine issue of material fact precluding summary
judgment. (Doc. 452, at 42–44.) In support, Tuftco cites deposition testimony from Steve Frost
regarding an e-mail from a representative from Atlas Carpet Mills, Inc., a former customer of
Tuftco. (Doc. 454-12, at 77–79.) Frost testified that the Atlas representative stated “he was very
fearful of being involved in litigation if he purchased a machine from Tuftco” after having a
conversation about “the CMC patent on ColorPoint.” (Id. at 78.) Though Frost’s deposition
testimony could establish that CMC was indeed “asserting infringement of its patent and warning
about potential litigation,” it fails to create an issue of material fact as to whether CMC was
communicating in bad faith. See Globetrotter, 362 F.3d at 1374. Moreover, Tuftco points to
nothing to indicate that CMC’s alleged infringement allegations were so unreasonable as to be
objectively baseless. And, for the same reasons the Court will grant CMC summary judgment of
validity and will deny Tuftco summary judgment of non-infringement, any argument that CMC’s
claims are objectively baseless is suspect. See id. at 1375. Accordingly, the Court will GRANT
CMC summary judgment on Tuftco’s claims for tortious interference, unfair competition, and
unfair trade practices.
8. Patent Misuse
Finally, CMC moves for summary judgment on Tuftco’s patent-misuse claim. Patent
misuse, an equitable defense to patent infringement, bars a patentee from leveraging its patent in
a manner that has anti-competitive effects—in other words “[using] patent power to impose
overbroad conditions . . . that are ‘not within the reach of the monopoly granted by the
Government.’” Princo Corp. v. Int’l Trade Comm’n, 616 F.3d 1318, 1331 (Fed. Cir. 2010)
(quoting Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 136–38 (1969)). The

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doctrine typically encompasses practices such as requiring purchase of an unpatented product as
a licensing condition or demanding royalty fees after a patent has expired. Id. at 1327. Where
the patentee claims rights that are reasonably within the patent grant, however, a patent-misuse
claim fails. Id. at 1328. Moreover, though a judicially created defense, Congress chose to cabin
the defense in enacting 35 U.S.C. § 271(d). Id. at 1329–30. Section 271(d) provides that “[n]o
patent owner otherwise entitled to relief for infringement or contributory infringement of a patent
shall be denied relief or deemed guilty of misuse . . . by reason of his having . . . sought to
enforce his patent rights against infringement . . . .”
Here, CMC’s conduct falls squarely within its rights under its patents. Even if CMC
“threatened litigation” as Tuftco claims, CMC has the statutory right to seek to enforce its patent
rights against infringement. See § 271(d). As already noted, Tuftco has failed to raise a genuine
issue of material fact as to whether this action was done in bad faith. See supra Part III(g).
Accordingly, the Court will GRANT CMC summary judgment on Tuftco’s patent misuse claim.
IV.

CONCLUSION
For the foregoing reasons, the Court hereby DENIES Tuftco’s motion to strike and for

sanctions (Doc. 317) and GRANTS IN PART and DENIES IN PART the parties’ summary
judgment motions (Docs. 289, 450). Specifically, Tuftco’s motion for summary judgment (Doc.
450) is GRANTED IN PART and DENIED IN PART as follows:
1. Summary judgment that the Severed Claims are invalid for indefiniteness under 35
U.S.C. § 112, ¶ 6, is DENIED;
2. Summary judgment that all the Severed Claims are invalid as anticipated is DENIED;
3. Summary judgment that Claim 12 of the ‘505 Patent is invalid as anticipated is
DENIED;

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4. Summary judgment that Claim 1 of the ‘703 Patent is invalid as anticipated is
DENIED;
5. Summary judgment limiting the “invention” in the Asserted Patents to the ColorPoint
software is DENIED;
6. Summary judgment that Tuftco has not infringed any of the Severed Claims is
DENIED;
7. Summary judgment that Tuftco has not infringed Claims 1, 28, and 29 of the ‘703
Patent is DENIED;
8. Summary judgment that CMC is not entitled to lost-profits damages on sales of
double-needle-bar Accused Products is DENIED;
9. Summary judgment that CMC is not entitled to damages for foreign sales resulting
from infringement of the ‘703 Patent is DENIED;
10. Summary judgment that CMC is not entitled to pre-issuance damages on Claim 1 of
the ‘703 Patent is GRANTED; and
11. Summary judgment limiting damages for induced infringement is DENIED.
CMC’s motion for summary judgment (Doc. 289) is GRANTED IN PART and DENIED IN
PART as follows:
1. Summary judgment that the Severed Claims are not indefinite under 35 U.S.C. § 112,
¶ 6, is GRANTED;
2. Summary judgment that the Severed Claims are not indefinite under 35 U.S.C. § 112,
¶ 2, is GRANTED;
3. Summary judgment that the Severed Claims are not invalid as anticipated is
GRANTED;

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4. Summary judgment that the Severed Claims are not invalid due to obviousness is
GRANTED;
5. Summary judgment that the Severed Claims are eligible under 35 U.S.C. § 101 is
GRANTED;
6. With respect to Claims 8, 10, and 12 of the ‘505 Patent, summary judgment that the
single-needle-bar Accused Products directly infringe is GRANTED, and summary
judgment that the double-needle-bar Accused Products infringe is DENIED;
7. With respect to Claims 21 and 27 of the ‘989 Patent, summary judgment that the
Accused Products directly infringe is GRANTED;
8. With respect to Claims 1 and 28 of the ‘703 Patent, summary judgment that the
Accused Products, except the Lexmark and J&J Machines, directly infringe is
GRANTED;
9. Summary judgment that Tuftco induced infringement of Claims 8, 10, and 12 of the
‘505 Patent; Claims 21 and 27 of the ‘989 Patent; and Claim 28 of the ‘703 Patent is
DENIED;
10. Summary judgment on Tuftco’s affirmative defense and counterclaim of inequitable
conduct is GRANTED;
11. Summary judgment on Tuftco’s affirmative defenses and counterclaims of tortious
interference, unfair competition, and unfair trade practices is GRANTED; and
12. Summary judgment on Tuftco’s affirmative defense and counterclaim of patent
misuse is GRANTED.

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SO ORDERED.
/s/ Travis R. McDonough
TRAVIS R. MCDONOUGH
UNITED STATES DISTRICT JUDGE

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