Aqua Shield v. Interpool Pool Cover Team

Filing 129

MEMORANDUM DECISION denying 117 Motion for Summary Judgment ; granting 118 Motion for Summary Judgment ; denying 121 Motion to Preclude Reliance Upon Evidence for Failure to Disclose or Produce It. Signed by Judge Ted Stewart on 01/15/2013. (asp)

IN THE UNITED STATES COURT FOR THE DISTRICT OF UTAH
CENTRAL DIVISION

AQUA SHIELD, INC.,
Plaintiff,

MEMORANDUM DECISION AND
ORDER ON CROSS-MOTIONS FOR
SUMMARY JUDGMENT AND
MOTION TO PRECLUDE
RELIANCE UPON EVIDENCE FOR
FAILURE TO DISCLOSE OR
PRODUCE IT

vs.

INTER POOL COVER TEAM, ALUKOV
HZ SPOL. SRO, ALUKOV, SPOL. SRO,
POOL & SPA ENCLOSURES, LLC,

Case No. 2:09-CV-13 TS

Defendants.

This matter is before the Court on Defendants’ Motion for Summary Judgment on
Invalidity of U.S. Patent No. 6,637,160 on Behalf of Defendants Interpool Cover Team, Alukov
Hz Spol. S.R.O., Alukov, Spol. S.R.O., and Pool & Spa Enclosures, LLC;1 Plaintiff Aqua Shield,
Inc.’s Motion for Summary Judgment as to Defendants’ Counterclaims I and II;2 and Plaintiff’s

1

Docket No. 117.

2

Docket No. 118.
1

Motion to Preclude Reliance upon Evidence for Failure to Disclose or Produce It.3 For the
reasons stated below, the Court will grant Plaintiff’s Motion for Summary Judgment and deny
the remaining motions.
I. BACKGROUND
On November 28, 2011, the Court issued an order granting Plaintiff’s motion for partial
summary judgment (“Summary Judgment Order”) and held that Inter Pool Cover Team, Alukov
HZ spol Sro., Alukov, spol Sro., and Pool & Spa Enclosures, LLC (collectively “Defendants”)
installed a pool cover in Utah that infringes on Claims 1–14 and Claim 16 of Plaintiff’s patent,
U.S. Patent No. 6,637,160 (the “‘160 Patent”). On October 18, 2012, the Court issued an order
clarifying that the Summary Judgment Order did not dispose of Defendants’ invalidity
counterclaim.4 The parties subsequently filed the instant motions.
II. ‘160 PATENT AND PRIOR ART
The ‘160 patent contains one independent claim (Claim 1) and fifteen dependent claims
(Claims 2-16). Plaintiff no longer alleges that Defendants’ pool cover infringes Claim 15.
Claims 1-16 of the ‘160 patent are reproduced below.
1. An apparatus for providing an enclosure for attachment to a building or
for covering an area, comprising:
(a) a plurality of arcuate panels, said panels having a first and
second end, and a first and second side, wherein said panels are
generally rectangular, planar panels;

3

Docket No. 121.

4

Docket No. 105.
2

(b) a plurality of arcuate frame members, said frame members
having a first and second end, and a first and second side for
receiving said panels, and an inner and an outer surface;
(c) a pair of end panels for attachment to the ends of the enclosure
to complete the enclosure;
(d) means-for [sic] a plurality of horizontal frame members
whereby the ends of the arcuate frame members are secured;
(e) means for a plurality of rollers disposed on said horizontal
frame members whereby said horizontal frame members are
movable thereon;
(f) means for a plurality of horizontal rails whereby the rollers are
rollable thereon and the rails are able to be attached to a
foundation; and,
(g) wherein said plurality of arcuate panels and said plurality of
arcuate frame members are sized so that arcuate panels and arcuate
frame members of smaller diameter are disposed toward the
interior of said panels and frame members of larger diameter so
that said panels and frame members are able to telescope one
within each other, wherein said arcuate panels approximate the
shape of one of a circumference of half a circle or one-fourth an
ellipse and said end panels are generally flat and removable.
2. The apparatus of claim 1, wherein said arcuate panels approximate the
shape of the circumference of half an ellipse.
3. The apparatus of claim 1, wherein said plurality of arcuate frame
members further comprise a generally rectangular shaped housing having a pair of
horizontally disposed U-shaped receptacles on said outer surface thereof for
receiving said first and second sides of said arcuate panels and an inwardly
extending flap disposed on said inner surface.
4. The apparatus of claim 3, herein [sic] said rectangular shaped housing
has a slot therein, said slot disposed on said inner surface thereof for receiving
said flap.
5. The apparatus of claim 4, herein [sic] said means for a plurality of
horizontal frame members further comprise a downwardly disposed U-shaped
frame having a plurality of rollers disposed internal said U-shaped frame, said
rollers being used for contacting said means for a plurality of horizontal rails.
6. The apparatus of claim 5, wherein said U-shaped frame further
comprises a downwardly disposed anchor plate thereon for contacting the rails.
7. The apparatus of claim 6, wherein said anchor plate further comprises a
hook disposed on the lower end of said anchor plate.
8. The apparatus of claim 7, wherein said U-shaped frame further
comprising an upwardly disposed U-shaped receptacle thereon for receiving said
first end of said arcuate panels.
3

9. The apparatus of claim 8, said means for a plurality of horizontal rails
further comprise a base plate upon which plate said rails are mounted and said
rails are attached to a foundation.
10. The apparatus of claim 9, wherein said rail has an enlarged, exposed
edge for receiving said hook of said anchor plate so that said anchor plate is
secured to said rail.
11. The apparatus of claim 10, further comprising means for adding
additional rails to said rail base plate whereby the number of rails varies.
12. The apparatus of claim 11, wherein said means for adding additional
rails further comprises a slot disposed in the edge of said base plate for receiving
the edge of another base plate.
13. Then [sic] apparatus of claim 12, further comprising a stop rod and an
end plug disposed in the end of said rail.
14. The apparatus of claim 13, further comprising a cover for being placed
over the tops of said rails and a spacer for being placed between said rails to
enable one to walk over said rails.
15. The apparatus of claim 4 [sic], further comprising a plurality of hooks
and straps for securing said arcuate panels to said arcuate frame members.
16. The apparatus of claim 15, wherein said arcuate panels are
transparent.5
Defendant relies on five prior art references to support its invalidity argument: (1) U.S.
Patent No. 3,979,782, issued to Joe Lamb in 1975 (“Lamb patent”); (2) U.S. Patent No.
4,175,361, issued to Masami Kumode in 1977 (“Kumode patent”); (3) U.S. Patent No.
4,683,686, issued to Veli Ozdemir in 1985 (“Ozdemir patent”); (4) U.S. Patent No. 5,845,343,
issued to Harry Last in 1998 (“Last patent”); and (5) Australian Patent No. Au-A-69699/81,
issued to M. Kumode (“Australian patent”). The four U.S. patents were all considered in the
prosecution history of the ‘160 patent6 and the Australian patent appears to be identical to the

5

Docket No. 117, Ex. A at 31–32.

6

Docket No. 117, Ex. A at 27–28.
4

Kumode patent. Although neither party provided the Court the drawing figures of the U.S.
patents, the Court will judicially notice them.7
III. MOTION TO PRECLUDE RELIANCE
Plaintiff seeks to exclude the four United States patents relied upon by Defendants in
their Motion for Summary Judgment because Defendants failed to timely disclose or produce
them. A failure to disclose is governed by Rules 26 and 37(c) of the Federal Rules of Civil
Procedure.
“‘The determination of whether a Rule 26(a) violation is justified or harmless is entrusted
to the broad discretion of the district court.’”8 The Court “need not make explicit findings
concerning the existence of a substantial justification or the harmlessness of a failure to
disclose.”9 Nevertheless, the Court is guided by the following factors: “(1) the prejudice or
surprise to the party against whom the testimony is offered; (2) the ability of the party to cure the
prejudice; (3) the extent to which introducing such testimony would disrupt the trial; and (4) the
moving party’s bad faith or willfulness.”10
Balancing these factors, the Court finds that Defendants’ failure to disclose the U.S.
patents was harmless. Because the patents Plaintiff seeks to exclude were included in the
7

See United States v. Estep, 760 F.2d 1060, 1063 (Fed. Cir. 1985) (holding that courts
may notice “matters that are verifiable with certainty”).
8

Woodworker’s Supply, Inc. v. Principal Mut. Life Ins. Co., 170 F.3d 985, 993 (10th Cir.
1999) (quoting Mid-Am. Tablewares, Inc. v. Mogi Trading Co., 100 F.3d 1353, 1363 (7th Cir.
1996)).
9

Id. (citing United States v. $9,041,598.68, 163 F.3d 238, 252 (5th Cir. 1998)).

10

Id. (citing Newman v. GHS Osteopathic Inc., 60 F.3d 153 (3d Cir. 1995)).
5

prosecution history of the ‘160 patent, Plaintiff has long been aware of them and will not be
prejudiced by Defendants’ failure to disclose them. There is also no evidence that Defendants
acted willfully or in bad faith. The Court will therefore deny Plaintiff’s Motion.
IV. SUMMARY JUDGMENT
A.

STANDARD OF REVIEW
Summary judgment is proper if the moving party can demonstrate that there is no genuine

issue of material fact and it is entitled to judgment as a matter of law.11 The party seeking
summary judgment bears the initial burden of demonstrating an absence of a genuine issue of
material fact.12 To show that no genuine issue of material fact exists, the moving party has “the
initial burden of production . . . and the burden of establishing that summary judgment is
appropriate as a matter of law.”13 “Once the moving party has properly supported its motion for
summary judgment, the burden shifts to the nonmoving party to go beyond the pleadings and set
forth specific facts showing that there is a genuine issue for trial.”14 “An issue is genuine ‘if the
evidence is such that a reasonable jury could return a verdict for the nonmoving party.’”15

11

See Fed. R. Civ. P. 56(a).

12

Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).

13

Pelt v. Utah, 539 F.3d 1271, 180 (10th Cir. 2008).

14

Sally Beauty Co., Inc., v. Beautyco, Inc., 304 F.3d 964, 971 (10th Cir. 2002).

15

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
6

On summary judgment the Court employs the same evidentiary standard of proof that
would apply at trial.16 At a trial in this case, clear and convincing evidence is required to
overcome the ‘160 patent’s presumed validity.17 Defendants therefore have the burden to put
forth each element of their invalidity counterclaim by clear and convincing evidence such that no
reasonable jury could find otherwise.18 Because Defendants rely exclusively on prior art that was
considered by the PTO,19 they also have “the added burden of overcoming the deference that is
due to a qualified government agency presumed to have properly done its job . . . .”20 If
Defendants are unable to meet this burden, summary judgment is properly granted against them
and in favor of Plaintiff.21 If Defendants meet this burden, it will then be Plaintiff’s burden to
show that the ‘160 patent is valid.22 Plaintiff, as the moving party seeking a holding that the ‘160

16

Id. at 252.

17

U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1563 (Fed. Cir. 1997).

18

Eli Lilly and Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001).

19

Although the Australian patent was not considered by the PTO during the prosecution of
the ‘160 patent, Defendants’ moving papers never mention its content. Moreover, the Australian
patent appears to depict the exact same invention that is described in the Kumode patent, which
was considered by the PTO.
20

PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (quoting
Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 (Fed. Cir. 1984)).
21

See K-Tec, Inc. v. Vita-Mix Corp., 729 F. Supp. 2d 1312, 1316 (D. Utah 2010) aff’d,
696 F.3d 1364 (Fed. Cir. 2012) (“‘[W]hen a party has failed to introduce evidence sufficient to
establish the existence of an essential element of that party’s case in accordance with the
applicable standard of proof, summary judgment is properly granted against that party.’”)
(alteration in original) (quoting Optium Corp. v. Emcore Corp., 603 F.3d 1313, 1319–20 (Fed.
Cir. 2010)).
22

Id.
7

patent is not invalid, “must demonstrate that [Defendants have] failed to produce clear and
convincing evidence of invalidity.”23
B.

DISCUSSION
1.

Noninfringement

In its Motion for Summary Judgment, Plaintiff first asks this Court to enter summary
judgment in its favor on Count I, Defendants’ counterclaim of noninfringement. The Court will
grant the Motion as it relates to noninfringement because Defendants do not oppose the Motion
and because infringement was previously decided in Plaintiff’s favor in the Court’s November
28, 2011 order.24
2.

Anticipation

Plaintiff next moves for summary judgment on Count II, Defendants’ invalidity
counterclaim arguing that the ‘160 patent was neither anticipated nor made obvious by prior art.
Defendants argue that the opposite is true.
Defendants first argue that the ‘160 patent is invalid because it is anticipated by prior art.
A patent is invalid as anticipated if “the invention was patented or described in a printed
publication in this or a foreign country . . . more than one year prior to the date of the application
for patent in the United States . . . .”25

23

Id. (citing Eli Lilly and Co., 251 F.3d at 962).

24

Docket No. 87.

25

35 U.S.C. § 102(b).
8

“The first step of an anticipation analysis is claim construction.”26 “The second step in an
anticipation analysis involves a comparison of the construed claim to the prior art.”27 To
anticipate, a single prior art reference28 must disclose “each and every limitation of the claimed
invention[,] . . . must be enabling[,] and [must] describe . . . [the] claimed invention sufficiently
to have placed it in possession of a person of ordinary skill in the field of the invention.”29 In
other words, “[t]o find that prior art anticipates, this Court must conclude that, as viewed by a
person of ordinary skill in the field, there is no difference between the claimed invention” and a
single prior art reference.30
Defendants’ anticipation argument does not satisfy their burden on summary judgment.
First, as Plaintiff points out, Defendants have not compared the construed claims of the ‘160
patent to the prior art—in this case, the Ozdemir patent. Indeed, Defendants’ motion papers
contain no analysis of the Court’s claim construction. Second, Defendants have not introduced
evidence showing that the Ozdemir patent discloses each limitation of the ‘160 patent.
Defendant makes no effort to show, for example, that the Ozdemir patent teaches an invention

26

Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000).

27

Id.

28

In re Schreiber, 128 F.3d 1473, 1780 (Fed. Cir. 1997) (“[A]nticipation requires that the
identical invention is described in a single prior art reference.”) (internal quotation marks
omitted) (citing Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989)).
29

Id. (alterations in original) (quoting In re Paulsen, 30 F.3d 1475, 1478–79 (Fed. Cir.

1994)).
30

EdgeCo. Inc. v. FastCap, LLC, 2005 WL 1630836, at *14 (D.N.J. July 11, 2005) (citing
Scripps Clinic & Res. Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991)).
9

with a pair of removable end panels, telescoping frame members, or arcuate panels as required by
claims 1–14 and 16 of the ‘160 patent. Defendants also have not discussed whether the Ozdemir
patent teaches the hook-like terminations to prevent dislocation of the frame members from the
track member required by claims 7 and 10 of the ‘160 patent. Defendants, therefore, have failed
to prove by clear and convincing evidence that the Ozdemir patent anticipates any claim of the
‘160 patent.
3.

Obviousness

Defendants next argue that the ‘160 patent is made obvious by prior art. Obviousness is
governed by 35 U.S.C. § 103(a), which forbids issuance of a patent when “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.”31 “The grant of summary
judgment of invalidity for obviousness must be done on a claim by claim basis.”32 “The accused
infringer must prove by clear and convincing evidence that each claim that is challenged cannot
reasonably be held to be non-obvious.”33 Because “[e]ach claim of a patent (whether in
independent, dependent, or multiple dependent form) shall be presumed valid independently of

31

Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 3 (1966).

32

Knoll Pharm. Co., Inc. v. Teva Pharms. USA, Inc., 367 F.3d 1381, 1384 (Fed. Cir.
2004) (quoting Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1371 (Fed. Cir.
2003)).
33

Id. (quoting Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 881
(Fed. Cir. 1988)).
10

the validity of other claims” it cannot be assumed that claims dependent on an invalid claim are
also invalid.34
The obviousness of a claimed invention may be based on a combination of different
pieces of prior art if “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.”35 “Although the incentive to combine may be
inferred from the nature of the problem,”36 “[t]here must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”37 This requirement
“can be useful to prevent hindsight when determining whether a combination of elements known
in the art would have been obvious.38
Defendants have not met their burden to show that the ‘160 patent is made obvious by
prior art. For starters, Plaintiff correctly notes that Defendants have not argued obviousness on a
claim-by-claim basis. Defendants also do not try to show that all of the elements of even a single
claim in the ‘160 patent were made obvious by prior art. Again, Plaintiff has pointed out that

34

Sys. Div., Inc. v. Teknek LLC, 59 F. App’x 333, 344 (Fed. Cir. 2003) (alteration in
original) (quoting 35 U.S.C. § 282).
35

Pfizer Inc. v. Apotex, 480 F.3d 1348, 1361 (Fed. Cir. 2007).

36

K-Tec, 729 F. Supp. 2d at 1325 (citing Innogenetics, N.V. v. Abbott Labs., 512 F.3d
1363, 1373 (Fed. Cir. 2008)).
37

Innogenetics, 512 F.3d at 1373.

38

Norgen Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1322 (Fed. Cir. 2012).
11

Defendants make no mention of, for example, the removable end panels taught by claim 1 and
Defendants’ motion papers contain no analysis of claims 2-14 or 16 of the ‘160 patent.
Defendants also have not articulated why a person of ordinary skill in the art would have
been motivated to combine the prior art to produce the claimed invention. While Defendants
correctly contend that the Ozdemir patent teaches the desirability of eliminating the longitudinal
struts that were present in the Kumode patent, Defendants’ remaining arguments regarding a
motivation to combine the elements of the prior art are conclusory and general in nature. In light
of the need to avoid the bias of hindsight when determining obviousness, Defendants’ conclusory
statements that a person of ordinary skill would have been motivated to combine the prior art to
produce the invention taught by the ‘160 patent are insufficient to overcome the patent’s
presumed validity.
V. CONCLUSION
Based on the foregoing, the Court determines that Plaintiff has demonstrated that
Defendants have failed to present clear and convincing evidence that any claim of the ‘160 patent
is invalid in light of the prior art. Defendants therefore have failed to overcome the presumed
validity of the ‘160 patent and summary judgment must be granted in favor of Plaintiff and
against Defendants.
It is therefore
ORDERED that Defendant’s Motion for Summary Judgment on Invalidity (Docket No.
117) is DENIED. It is further

12

ORDERED that Plaintiff’s Motion for Summary Judgment as to Defendants’
Counterclaims I and II (Docket No. 118) is GRANTED and said counterclaims are dismissed. It
is further
ORDERED that Plaintiff’s Motion to Preclude Reliance upon Evidence for Failure to
Disclose or Produce It (Docket No. 121) is DENIED. It is further
ORDERED that the hearing set in this matter for February 7, 2013, is STRICKEN. A
final pretrial conference in this matter is set for February 7, 2013, at 2:30 P.M. and trial is set to
begin on February 19, 2013, at 8:30 A.M.
DATED January 15, 2013.
BY THE COURT:

_____________________________________
TED STEWART
United States District Judge

13