Kahr v. Cole et al

Filing 117

ORDER finding as moot 95 Motion for Judgment as a Matter of Law; granting 110 Motion for Judgment of Noninfringement. The case is dismissed. (cc: all counsel) (Griesbach, William)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN

MICHAEL M. KAHR,
Plaintiff,
v.

Case No. 13-C-1005

MICHAEL E. COLE and
IRON WORKS CONSTRUCTION CO. LLC,
Defendants.

DECISION AND ORDER

Plaintiff Michael Kahr brought this action against Defendants Michael Cole and Iron Works
Construction Co. LLC contending that several of Defendants’ dock structures infringe various claims
of a patent owned by Plaintiff, U.S. Patent No. 8,348,554 (the “‘554 Patent”). After a three day
trial, the jury returned a verdict of infringement under the doctrine of equivalents and awarded
Plaintiff a total royalty of $50,000.00. Defendants’ have filed two post-trial motions arguing the
Court should set aside the jury’s verdict and enter judgment as a matter of law pursuant to Rule
50(a), or alternatively, enter judgment of noninfringement as a matter of law pursuant to the
ensnarement defense. (ECF Nos. 95 and 110.) For the reasons below, I find that the asserted scope
of equivalency ensnares the prior art.

Accordingly, Defendants’ motion for judgment of

noninfringement as a matter of law based on the ensnarement defense is granted.

BACKGROUND
A. The Proceedings
Plaintiff designs and constructs permanent dock structures primarily for residents in
northeastern Wisconsin. His company, Death’s Door Marine, Inc., is located in Sister Bay,
Wisconsin and competes directly with Iron Works Construction Company, LLC, owned by Cole.
On September 6, 2013, Plaintiff sued Defendants accusing them of infringing Claims 1–4, 6, and 7
of his ‘554 Patent. The central dispute in this case is whether the accused docks infringe under the
doctrine of equivalents. After a three day jury trial in August 2016, the jury found that Defendants’
dock structures infringed on the asserted claims of the ‘554 patent, that Defendants willfully
infringed, that Iron Works induced Cole to infringe, and that $50,000.00 would fairly compensate
Plaintiff for Defendants’ infringement as a reasonable royalty.
B. The ‘554 Patent
The ‘554 Patent describes the design for interlocking and adjustable concrete dock segments
and the methods of manufacturing and constructing such assemblies. Specifically, the patent “relates
to a dock structure that has enhanced integrity against the elements, and against the freeze-thaw
cycles experienced in northern climates.” (‘554 Patent, col. 1 ll. 14–17, ECF No. 112-1.)
Plaintiff claims Defendants infringed Claims 1–4, 6, and 7 of the ‘554 Patent. Claim 1 reads
as follows:
A dock structure for use with vertical pilings, the structure comprising: a first end
and a second end, a pair of opposing side walls, a pair of opposing end walls, one end
wall disposed at each end of the structure, and a floor; wherein the side walls, the end
walls and the floor form a cavity; a pair of cylindrical rims forming a verticallydisposed cylindrical opening in the floor and each opening being functionally adapted
to receive a piling through it; and a pair of overlapping members formed at the
second end of the structure; wherein each overlapping member has an aperture
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formed in it for receiving a fastener; and wherein each cylindrical rim and that portion
of the side wall adjacent the rim has an aperture formed in it for receiving a fastener.
(‘554 Patent, ECF No. 112-1.) Claims 2 and 3 are dependent upon Claim 1. Claim 2 states, “The
dock structure of claim 1 further comprising at least one reinforcement member extending between
the opposing side walls.” (Id.) Claim 3 reads, “The dock structure of claim 1 wherein the cavity is
filled with concrete.” (Id.) Claim 4, an independent claim, states:
A dock assembly for use with a plurality of vertical pilings, the assembly comprising:
at least one dock element, the element comprising a pan-like structure having a first
end and a second end, a pair of opposing side walls, a pair of opposing end walls, one
end wall disposed at each end of the element, and a floor; wherein the side walls, the
end walls and the floor form a cavity within the element; a pair of cylindrical rims
disposed at the first end of the dock element, each rim forming a vertically-disposed
cylindrical opening in the floor of the element and each opening being functionally
adapted to receive a piling through it; and a pair of overlapping members formed at
the second end of the dock element; wherein each overlapping member has an
aperture formed in it for receiving a fastener; and wherein each cylindrical rim and
that portion of the side wall adjacent the rim has an aperture formed in it for
receiving a fastener.
(Id.) Claims 6 and 7 are dependent upon Claim 4. Claim 6 reads, “The dock assembly of claim 4
further comprising at least one reinforcement member extending between the opposing side walls
of the dock element.” (Id.) Finally, Claim 7 states, “The dock assembly of claim 4 wherein the
cavity of the pan-like structure of each element is filled with concrete.” (Id.)
Claim 1 and Claim 4, originally Claim 5 in Plaintiff’s patent application, were initially rejected
by an Examiner at the U.S. Patent and Trademark Office under 35 U.S.C. § 103 as being obvious
over U.S. Patent 3,964,221 (the “Berquist Patent”). Plaintiff amended these claims by including the
words “wherein each overlapping member has an aperture formed in it for receiving a fastener; and
wherein each cylindrical rim and that portion of the side wall adjacent the rim has an aperture formed
in it for receiving a fastener.” (ECF No. 112-14.) This language clarified that the use and method
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of a fastener allowed the height of the dock structure to be adjustable, a feature that was not present
in the Berquist invention. After the Examiner received Plaintiff’s claim amendments and remarks,
he granted the ‘554 Patent on January 8, 2013.
C. The Accused Docks
The primary difference between the ‘554 Patent docks and the accused docks is the
connection mechanism. The ‘554 Patent describes a dock structure, dock assembly, and dock
constructing method for a permanent dock structure that is attached to vertical pilings. The patented
structure permits multiple dock segments to be connected to create the desired length and straight,
“T-shaped,” or “L-shaped” configurations. (‘554 Patent, ECF No. 112-1.) Each dock segments’
side and end walls, and a floor form a cavity which is filled with concrete after the structure is
assembled. Each dock segment also has two cylindrical openings through which the vertical pilings
pass, and each segment overlaps with the next. Each segment’s side walls and cylindrical rims
contain apertures, or holes. The holes allow a single fastener to both secure a set of dock segments
together and fasten the dock assembly to the pilings. (Id.)
Specifically, each dock segment has a pair of cylindrical rims at the first end through which
a piling passes. The second end of an adjacent dock segment overlaps with this section of the first
end of the next dock segment. The holes through which the fasteners are intended to pass are in the
overlapping members on the side walls adjacent to the cylindrical openings of the second end and
the cylindrical openings on the first end. Although the claims do not expressly state, Figure 6 below
shows that a pin or bolt fastener is inserted through the hole in the overlapping member of one dock
segment through the holes in the sidewall and one side of the cylindrical opening, the piling, and then
the other side of the cylindrical opening before the pin is capped.
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(‘554 Patent, fig. 6, ECF No. 112-1.) In short, a single fastener not only holds the dock segments
together but also attaches the dock to the piles.
While the accused docks have many of the features claimed in the ‘554 patent, they use a
different connection mechanism. As depicted in Image 1 below, because the accused docks do not
have a hole in the dock segment’s side wall, the accused docks cannot use a single fastener to
connect the dock segments and attach the dock to the piles. Instead, the accused docks use two
connection mechanisms—one fastening the dock segments together and another attaching the dock
to the pilings.

(Tr. Ex. 1035, at 3.)
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ANALYSIS
Defendants argue that judgment as a matter of law on all of Plaintiff’s claims is proper
because the undisputed evidence at trial, viewed in the light most favorable to Plaintiff, does not
provide a reasonable jury with legally sufficient evidence to support the verdict. Defendants also
assert that the ‘554 Patent’s scope of equivalency ensnares prior art and that the Court should enter
judgment of non-infringement as a matter of law. For the reasons discussed below, I find that the
asserted scope of equivalency ensnares the prior art. I therefore decline to address Defendant’s
alternative arguments.
I. The Ensnarement Defense Standard
If a patentee invokes the doctrine of equivalents as a theory of infringement, the alleged
infringer may assert the ensnarement defense, one of the various “legal limitations” on the doctrine
of equivalents. DePuy Spine, Inc. v. Medtroni Sofamor Danek, Inc., 567 F.3d 1314, 1322 (Fed. Cir.
2009). Under the ensnarement defense, there can be no infringement if the scope of the equivalency
would cover what is considered prior art. Intendis GMBH v. Glenmark Pharm. Inc., USA, 822 F.3d
1355, 1363 (Fed. Cir. 2016). “[A] patentee should not be able to obtain, under the doctrine of
equivalents, coverage which he could not lawfully have obtained from the PTO by literal claims.”
Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 684 (Fed. Cir. 1990),
overruled in part on other grounds, Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83 (1993).
As such, “ensnarement bars a patentee from asserting a scope of equivalency that would encompass,
or ‘ensnare,’ the prior art.” DePuy Spine, 567 F.3d at 1322. Because prior art always limits what
an inventor could have claimed, it also “limits the range of permissible equivalents of a claim.”
Wilson Sporting Goods, 904 F.2d at 684. The application of the ensnarement defense is decided by
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the court, “either on a partial motion for summary judgment or a motion for judgment as a matter
of law at the close of evidence and after the jury verdict.” DePuy Spine, 567 F.3d at 1324 (quoting
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 36, 39 n.8 (1997)).
To determine whether the patent would ensnare the alleged equivalent, courts generally
engage in the two-step hypothetical claim analysis. DePuy Spine, 567 F.3d at 1324 (citing
Ultra–Tex Surfaces, Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360, 1364 (Fed. Cir. 2000)). The
accused infringer has the burden of producing evidence of prior art to challenge a hypothetical claim.
Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371, 1380 (Fed. Cir. 2001) (citing
Streamfeeder, LLC v. Sure–Feed, Inc., 175 F.3d 974, 984 (Fed. Cir. 1999)). Then the burden shifts
to the patentee to prove the patentability of the hypothetical claim. Id. However, this burden does
not undermine the presumed validity of the plaintiff’s actual patent claims. Wilson Sporting Goods,
904 F.2d at 685. The plaintiff’s claims will remain valid whether or not he is entitled to the range
of equivalents sought in the case. Id.
Under the hypothetical claim analysis, the parties must first “construct a hypothetical claim
that literally covers the accused device.” DePuy Spine, 567 F.3d at 1324. Second, the court
assesses the prior art introduced by the accused infringer to “determine whether the patentee has
carried its burden of persuading the court that the hypothetical claim is patentable over the prior art.”
Id. at 1325. Ultimately, if the hypothetical claim would be unpatentable under 35 U.S.C. § 102,
anticipation, or 35 U.S.C. § 103, obviousness, then “the accused device will be held noninfringing
as a matter of law.” Interactive Pictures, 274 F.3d at 1380.
In other words, courts determine whether a hypothetical claim containing both the literal
claim scope and the accused device can be crafted without ensnaring the prior art. Intendis GMBH,
7

822 F.3d at 1363. If the hypothetical claim would not be patentable in light of the prior art, the
accused product does not infringe the patent as a matter of law because the patent’s scope would
improperly ensnare the prior art. Wilson Sporting Goods, 904 F.2d at 684. However, if the patentee
proves that the hypothetical claim is patentable over the prior art, the patent would not be found to
ensnare the prior art. Id. As such, the accused product would infringe the patent under the doctrine
of equivalents. Id.
II. The Hypothetical Claim
Again, the first step of the ensnarement analysis is to construct a hypothetical claim that
literally covers the accused device. DePuy Spine, 567 F.3d at 1324. Plaintiff asserts infringement
under the doctrine of equivalents of Claims 1–4, 6, and 7. Thus, a relevant hypothetical claim
derived from Claim 1 of the ‘554 Patent would appear as follows (with a strike-through indicating
a deletion and italics emphasizing additions):
A dock structure for use with vertical pilings, the structure comprising:
a first end and a second end, a pair of opposing side walls, a pair of opposing
end walls, one end wall disposed at each end of the structure, and a floor;
wherein the side walls, the end walls, and the floor form a cavity;
a pair of cylindrical rims disposed at the first end of the structure, each rim
forming a vertically disposed cylindrical opening in the floor and each
opening being functionally adapted to receive a piling through it; and
a pair of overlapping members formed at the second end of the structure; and
an extended end plate at the first end;
wherein each overlapping member has an aperture formed in it for receiving
a fastener; and

8

wherein each cylindrical rim and that portion of the side wall adjacent the rim
and the extended end plate has an aperture formed in it for receiving a
fastener.
Claims 2 and 3 are dependent upon Claim 1 and require no changes. A hypothetical claim based on
Claim 4, a claim that discloses the elements of dock assembly rather than the dock structure, would
read:
A dock assembly for use with a plurality of vertical pilings, the assembly comprising:
at least one dock element, the element comprising a pan-like structure having
a first end and a second end, a pair of opposing side walls, a pair of opposing
end walls, one end wall disposed at each end of the element, and a floor;
wherein the side walls, the end walls and the floor form a cavity within the
element;
a pair of cylindrical rims disposed at the first end of the dock element,
each rim forming a vertically-disposed cylindrical opening in the floor
of the element and each opening being functionally adapted to receive
a piling through it; and
a pair of overlapping members formed at the second end of the dock element;
and
an extended end plate at the first end;
wherein each overlapping member has an aperture formed in it for receiving
a fastener; and
wherein each cylindrical rim and that portion of the side wall adjacent the rim
and the extended end plate has an aperture formed in it for receiving a
fastener.
Claims 6 and 7 are dependent upon Claim 4 and do not require any changes. With this hypothetical
claim in mind, the Court turns to whether the hypothetical claim is patentable.

9

III. Patentability of Hypothetical Claim
After the hypothetical claim is created, the court must “assess the prior art introduced by the
accused infringer and determine whether the patentee has carried its burden of persuading the court
that the hypothetical claim is patentable over the prior art.” DePuy Spine, 567 F.3d at 1325 (citing
Interactive Pictures, 274 F.3d at 1380). Defendants contend that Plaintiff could not have patented
a hypothetical claim covering the accused docks because such a claim would have been anticipated
or rendered obvious by two prior art references: Max Burns, THE DOCK MANUAL (1999) and the
Berquist patent, U.S. Patent No. 3,964,221.
A. Anticipation Analysis
A patent is anticipated if it “was patented or described in a printed publication in this or a
foreign country or in public use or on sale in this country, more than one year prior to the date of
the application for patent.” 35 U.S.C. § 102(b). Anticipation is a question of fact, and the
challenger of the patent’s validity has the burden of proving anticipation by clear and convicing
evidence. See Glaxo Grp. Ltd. v. Apotex, Inc., 376 F.3d 1339, 1348 (Fed. Cir. 2004); TriMed, Inc.
v. Stryker Corp., 608 F.3d 1333, 1343 (Fed. Cir. 2010). For a claim to be anticipated, a single prior
art reference must disclose each and every limitation either expressly or inherently. Schering Corp.
v. Geneva Pharms., Inc., 339 F.3d 1373, 1377, 1379 (Fed. Cir. 2003). “[A] prior art reference may
anticipate without disclosing a feature of the claimed invention if that missing feature is necessarily
present, or inherent, in the single anticipating reference.” SmithKline Beecham Corp. v. Apotex
Corp., 403 F.3d 1331, 1343 (Fed. Cir. 2005) (quoting Schering Corp., 339 F.3d at 1377); see also
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005) (“Under the principles
of inherency, if the prior art necessarily functions in accordance with, or includes, the claims
10

limitations, it anticipates.”); MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1366 (Fed.
Cir. 1999) (“Where . . . the result is a necessary consequence of what was deliberately intended, it
is of no import that the article’s authors did not appreciate the results.”). An anticipating reference
must be “enabling; that is, the description must be such that a person of ordinary skill in the field of
the invention can practice the subject matter based on the reference, without undue
experimentation.” Sanofi–Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008).
Plaintiff claims Defendants did not meet their production burden because they did not point
to one structure that encompasses every claim of the ‘554 Patent to demonstrate that the ‘554 Patent
was anticipated. Plaintiff contends that the ‘554 Patent was issued due to the combination of its
different components along with its unique connection method. However, Defendants were not
pointing to prior art to illustrate that the ‘554 Patent was anticipated. Instead, they produced prior
art in an attempt to show that the accused docks were anticipated and obvious.
Defendants contend that the hypothetical claim is unpatentable by anticipation in light of a
book written by Max Burns, THE DOCK MANUAL. This book is part of the prior art because it was
published in 1999. THE DOCK MANUAL describes every aspect of dock construction: designing,
building, and maintaining. Like the hypothetical claim, the book teaches of a permanent piling dock,
a “heavy-weight, long-term version of the pipe dock.” (Burns, supra at 56, ECF No. 112-10.)

11

(Burns, supra at 57, ECF No. 112-10 (illustration of a permanent piling dock) [hereinafter Image
2].) It also discusses the elements of a pipe dock.

(Burns, supra at 47, ECF No. 112-10 (illustration of a pipe dock) [hereinafter Image 3].)
I find that THE DOCK MANUAL does not disclose each and every limitation of the hypothetical
claim, either expressly or inherently. Defendants heavily rely on the depictions of the pipe dock in
Image 3 to suggest that the book describes every element in the hypothetical claim. For instance,
Image 3 illustrates a first and second end of a dock segment, a pair of opposing side walls and end
walls at each end of the structure, a floor, as well as a cavity. It also depicts a cylindrical rim at the
end of the structure. Id. Each rim forms a cylindrical opening in the floor through which a pipe can
be received. Id. While the piling dock is the “heavy-weight, long-term version of the pipe dock,”
(Burns, supra at 56, ECF No. 112-10), the Court cannot infer that the elements in the pipe dock are
anticipated as elements of the piling dock. Accordingly, Defendants have not met their burden to
present ample evidence illustrating that the hypothetical claim was anticipated by prior art.
B. Obviousness Analysis
Defendants claim that even if the hypothetical claim was not anticipated by THE DOCK
MANUAL, it is obvious in light of the prior art. A patent is invalid as obvious “if the differences
12

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.” 35 U.S.C. § 103(a). Obviousness is a question
of law based on the following underlying factual determinations: “(1) the scope and content of the
prior art, (2) the differences between the prior art and the claims at issue, (3) the level of ordinary
skill in the art, and (4) any relevant secondary considerations, such as commercial success, long felt
but unsolved needs, and the failure of others.” Wyers v. Master Lock Co., 616 F.3d 1231, 1237
(Fed. Cir. 2010) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). “The combination
of familiar elements according to known methods is likely to be obvious when it does no more than
yield predictable results.” KSR Intern. Co. v. Teleflex Inc., 550 U.S. 1727, 1739 (2007).
However, the “predictable result” refers not only to the expectation that elements of the prior
art are “capable of being physically combined but also that the combination would have worked for
its intended purpose.” DePuy Spine, 567 F.3d at 1326 (citation omitted). As such, the combination
of elements is obvious “when a patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would expect from such an
arrangement.” KSR, 550 U.S. at 1740 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)). On the other hand, an invention is not obvious “if the prior art indicated that the invention
would not have worked for its intended purpose or otherwise taught away from the invention.”
DePuy Spine, 567 F.3d at 1326. Obviousness must be assessed at the time the invention was made,
and the court must avoid engaging in hindsight analysis. In re Cyclobenzaprine Hydrochloride
Extended–Release Capsule Patent Litig., 676 F.3d 1063, 1073 (Fed. Cir. 2012) (citation omitted).

13

A patent challenger may assert that a patent is obvious because a person of ordinary skill in
the art could have combined several prior art references to arrive at the claimed invention. DePuy
Spine, 567 F.3d at 1324. In DePuy Spine, the defendant, accused of infringing various claims of a
patent for a spinal implant device, argued that the hypothetical claim would have been obvious in
light of two patents, referred to as the Puno and Anderson Patents. Id. The hypothetical claim
reflected the defendant’s use of a receiver member with a “conically-shaped” portion, creating a rigid
screw, rather than the patented receiver member’s “spherically-shaped” portion. Id. at 1320. The
Puno Patent contained all of the hypothetical claim elements except for the “compression member,”
which was used to press the screw head against the receiver member. Id. at 1325. The defendant
relied on the Anderson Patent, which did contain a compression member, to fill the gaps left by the
Puno Patent. Id. At the ensnarement hearing, when asked whether a person of ordinary skill would
combine the Anderson and Puno Patents to achieve the screw covered by the hypothetical claim, the
plaintiff’s expert answered, “I think so.” Id. at 1326. The defendant argued that this combination
of patents, along with the expert’s testimony, was sufficient to render the hypothetical claim obvious.
Id. Conversely, the plaintiff argued that the Puno Patent actually undermined the defendant’s
obviousness argument because it “taught away” from the defendant’s use of a rigid screw. Id. at
1326.
The district court denied the defendant’s ensnarement defense and held that the combination
of patents was not predictable under the prior art. Id. at 1326. The Federal Circuit affirmed the
district court’s decision, agreeing that the Puno Patent did not just express a preference for one type
of screw but warned against using a rigid screw in the exact way the defendant did. Id. at 1327.
Accordingly, the court found that a person of ordinary skill in the art would have been deterred from
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combining the patents in the way the defendant suggested, and ultimately concluded that the
hypothetical claim did not ensnare the prior art. Id.
Here, Defendants produced two references, the Berquist Patent and THE DOCK MANUAL, in
combination with testimony from Kahr and David Wentland, Plaintiff’s expert witness, that they
believe render the hypothetical claim obvious. As the Berquist Patent pertains to Hypothetical
Claims 1 and 4, the patent discloses a dock structure comprising first and second ends, a pair of
opposing sidewalls, and a floor; wherein the end walls, the sidewalls, and the floor form a cavity.
(Berquist Patent, fig. 4, ECF No. 112-11.) As previously noted, Images 2 and 3 of THE DOCK
MANUAL portray ends of a dock segment, opposing side walls and end walls, a floor, and a cavity.
(Burns, supra at 47–48, ECF No. 112-10.) The Berquist Patent and THE DOCK MANUAL also
depicts a pair of cylindrical rims at the first end of the structure and a cylindrical opening in the floor
which are designated to receive posts. (Berquist Patent, figs. 4–5, ECF No. 112-11; Burns, supra
at 47, ECF No. 112-10.) Plaintiff agreed at the trial that docks built before the ‘554 Patent
incorporated sleeves to receive pilings. (Kahr Tr. Test. 162:9–11, ECF No. 103.) The Berquist
Patent contains overlapping members including a top and bottom surface. (Berquist Patent, fig. 8,
ECF No. 112-11.)
However, the Berquist Patent does not contain the last three elements of Hypothetical Claims
1 and 4, the elements describing the accused docks’ connection mechanisms. Instead, Defendants
rely on THE DOCK MANUAL and admissions of Plaintiff and his expert witness to show that these
elements of Hypothetical Claims 1 and 4 are obvious. The book depicts a hinge with an extended
end plate capable of receiving a fastener.

15

(Burns, supra at 81, ECF No. 112-10 [hereinafter Image 4].) When asked on cross-examination at
the trial whether docks constructed before Plaintiff’s and Defendants’ docks used a double-ear
connection, that is, a connection mechanism where plates are welded to both dock segments to
receive a connector, Wentland agreed that he had seen it on floating docks. (Wentland Tr. Test.
337:12–15, 339:20–22, ECF No. 104.) Defendants’ also refer to Wentland’s deposition where he
was asked whether he had seen docks that incorporated a connection mechanism like that in the
accused docks or where two plates were either bolted or pinned together. Wentland answered,
“Absolutely.” (Wentland Dep. 67:6–16, ECF No. 112-8.) Finally, Defendants rely on Image 4 as
well as a cylindrical rim and alternative bracket (Image 5 below) found in THE DOCK MANUAL to
illustrate an aperture in a cylindrical rim and end plate capable of receiving a fastener.

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(Burns, supra at 48, ECF No. 112-10 [hereinafter Image 5].) Both Plaintiff and Wentland agreed
on cross-examination that prior to Plaintiff’s invention, docks used pins to hold the dock to the
pilings. (Kahr Test. Tr. 162:5–8, ECF No. 103; Wentland Test. Tr. 333:20–23, ECF No. 104.)
As to Hypothetical Claims 2 and 6, the Berquist Patent depicts grooves that function to
reinforce the top and bottom of the dock. (Berquist Patent, Fig. 4–5, ECF No. 112-11.) THE DOCK
MANUAL further explains that “[s]teel reinforcement should be placed before the concrete is poured.”
(Burns, supra at 96, ECF No. 112-10.) Finally, regarding Hypothetical Claims 3 and 7, THE DOCK
MANUAL indicates that the framing materials for piling docks are “usually metal or wood, while the
decking can be of wood, metal, concrete, or plastic.” (Burns, supra at 58, ECF No. 112-10.) It
explains that “[c]oncrete will flow into all sorts of shapes and sizes, just like molten plastic or metal.
This opens up a Pandora’s box of potential curves and angles — anything is possible as long as the
form can be built.” (Burns, supra at 75, ECF No. 112-10.) The book notes that “[f]orms hold the
concrete in place until it sets.” (Burns, supra at 96, ECF No. 112-10.) Defendants contend that this
information is sufficient to render all of the hypothetical claims obvious.
Plaintiff asserts that Defendants did not retain an expert witness to proffer an opinion that
the combination of elements embodied in the ‘554 Patent was obvious. (Br. in Opp. at 6, ECF No.
113.) Again, Defendants contend that the hypothetical claim, not the ‘554 Patent, is obvious.
Moreover, in a case where the technology is easily understandable and the content of prior art, the
scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, the
determination of obviousness may include “recourse to logic, judgment, and common sense, in lieu
of expert testimony.” Wyers, 616 F.3d at 1239 (citing Perfect Web Techs., Inc. v. InfoUSA, Inc.,
587 F.3d 1324, 1329 (Fed. Cir. 2009); Ball Aerosol & Specialty Container, Inc. v. Limited Brands,
17

Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)). Here, because the disclosures from the prior art were
“easily discernable from their drawings and written descriptions, no testimony, expert or otherwise,
regarding their scope or content” is required. See Chore-Time Equip., Inc. v. Cumberland Corp.,
713 F.2d 774, 779 (Fed. Cir. 1983). Therefore, Defendants were not required to produce their own
expert to illicit testimony regarding the obviousness of the hypothetical claim.
Defendants’ presentation of prior art combined with the testimony of Plaintiff and Wentland
satisfied their burden to produce evidence that challenges the hypothetical claim. Defendants
produced evidence that all of the hypothetical claims’ limitations were well-known in the art.
Although THE DOCK MANUAL does not describe one dock that contains every element, the book in
its entirety does disclose every limitation of the hypothetical claim. Further, the book describes
various methods of designing, building, and maintaining a dock. A builder can pick and choose any
combination of features to create the structure. Defendants contend that every element discussed
in the book in relation to the accused docks does what it has always done and yields predictable
results. This is sufficient to meet Defendants’ production burden.
Once the defendant satisfies his production burden, the burden shifts to the patentee to prove
the patentability of the hypothetical claim. Interactive Pictures, 274 F.3d at 1380. However, unlike
the plaintiff in DePuy Spine, Plaintiff did not discuss the prior art in relation to the hypothetical claim
or challenge Defendants’ assertion that the predictable consequences of combining the features in
THE DOCK MANUAL—or the aggregate of the elements of the Berquist Patent, THE DOCK MANUAL,
and the trial testimony—render the hypothetical claim obvious. Instead, Plaintiff attests that the ‘554
Patent was a unique combination of elements never seen before. (Br. in Opp. at 7, ECF No. 113.)
Because Plaintiff did little to show that the hypothetical claim was patentable, he has failed to satisfy
18

his ultimate burden. Having failed to meet that burden, the range of equivalents for his patent cannot
be extended so as to result in infringement by Defendants’ docks. Accordingly, the hypothetical
claim is unpatentable because it is obvious.
CONCLUSION
Therefore, Defendants’ motion for judgment of noninfringement as a matter of law (ECF No.
110) is GRANTED. Defendants’ motion for judgment as a matter of law pursuant to Rule 50(a)
(ECF No. 95) is DENIED as moot. This case is dismissed. The Clerk is directed to enter judgment
for Defendants.
SO ORDERED this 18th

day of November, 2016.
s/ William C. Griesbach
William C. Griesbach, Chief Judge
United States District Court

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