Douglas Dynamics, LLC v. Buyers Products Company

Filing 611

ORDER. Granting plaintiff's motions for summary judgment of no invalidity (dkt. #120) and infringement (dkt. #158) and denying defendant's motions for summary judgment of invalidity (kdt. #166) and non-infringement (dkt. #170). Signed by District Judge William M. Conley on 03/13/2014. (mfh)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

DOUGLAS DYNAMICS, LLC,
Plaintiff,

OPINION & ORDER

v.
09-cv-261-wmc
BUYERS PRODUCTS COMPANY,
Defendant.

In what remains of this action for patent infringement on remand from the Federal
Circuit, plaintiff Douglas Dynamics, LLC alleges that defendant Buyers Products Company
(“Buyers”) has infringed its patent, U.S. Patent No. Re. 35,700, for a “removable snowplow
assembly with pivotable lift stand.” This court previously found non-infringement of claim
45, and perforce all the asserted claims depending from it (dkt. #332); on appeal, the
Federal Circuit reversed (dkt. #568-1). See Douglas Dynamics, LLC v. Buyers Prods. Co., 717
F.3d 1336 (Fed. Cir. 2013). Accordingly, the court now takes up previously undecided
cross-motions for summary judgment as to (1) claim 45’s validity, and (2) the infringement
and validity of dependent claims 47, 48, 49 and 51. (Dkt. #589.) For the reasons stated
below, the court will grant Douglas’ss motions for summary judgment, and deny Buyers’.

BACKGROUND
Defendant Buyers manufactures and sells SnowDogg snowplow assemblies in six
different series, all of which use the same mounting mechanism and lighting harness as
accurately set forth in Buyers’ own U.S. Patent No. 7,562,718. Plaintiff Douglas is also in

the business of manufacturing and selling snowplows and is the assignee of the single patent
remaining in this suit.
Originally, Douglas brought claims for infringement against Buyers on five different
patents. The parties filed cross-motions for summary judgment both on infringement and
on invalidity. (See dkt. ##120, 158, 166, 170.) Based on those submissions, this court
held that claim 45 of the ‘700 patent, as well as asserted dependent claims 47, 48, 49 and
51, were not infringed. (See Oct. 1, 2010 Opinion & Order (dkt. #332) 47.) Specifically,
the court noted that claim 45 requires that the “A-frame and the support frame are
connected to the mounting frame.” (‘700 patent, 18:51-52.)1 The court found that this
limitation required both the A-frame and support frame to be directly connected to the
mounting frame, whereas Buyers’ products featured an indirect connection between the Aframe and the mounting frame.

(Oct. 1, 2010 Opinion & Order (dkt. #332) 46.)

Accordingly, the court entered summary judgment of non-infringement on claim 45 and the
dependent claims, and dismissed Buyers’ counterclaims of invalidity without prejudice with
respect to those claims. (See Oct. 6, 2010 Opinion & Order (dkt. #445) 16.)
On appeal, the Federal Circuit reversed this court’s grant of summary judgment of
non-infringement. It held that the element “connected to” encompassed both direct and
indirect connections. See Douglas Dynamics, 717 F.3d at 1343. Because Buyers presented no
other non-infringement arguments with respect to claim 45, the Federal Circuit “[found] the
accused products meet every limitation of claim 45 as properly construed.” Id. Therefore, it

For ease of citation, and in keeping with general practice, the number preceding the colon will
denote the patent’s column number, while the number following the colon refers to the line number
or numbers cited.
1

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reversed, directing this court “to enter summary judgment of infringement in favor of
Douglas.” Id.
With infringement of claim 45 entirely resolved by the Federal Circuit’s mandate,
the court now takes up the question of that claim’s validity, which it previously declined to
resolve. In addition, because the only basis for the previous finding of non-infringement of
the dependent claims was the non-infringement of the underlying independent claim, the
court must now consider infringement and validity with respect to claims 47, 48, 49 and 51.
Claim 45 of the ‘700 patent reads:
A vehicle mounted snowplow blade assembly comprising
a vehicle having a frame member and a bumper,
a mounting frame fixed to the frame member and located
generally behind the bumper,
a snowplow blade assembly including an A-frame and a
snowplow blade fixed to the A-frame,
a support frame connected to the A-frame, and
wherein the A-frame and the support frame are connected to the
mounting frame for pivotable movement of the A-frame about a
generally horizontally extending pivot axis and for affording
removal of the A-frame and the support frame from the
mounting frame as a unit so as to leave the mounting frame on
the vehicle and behind the bumper.
(‘700 patent, 18:42-56.)
Claim 47 depends from claim 45 and reads:
A vehicle mounted snowplow blade assembly as set forth in
claim 45
wherein said support frame, when connected to said mounting
frame, includes an extension in front of and above said bumper,
and
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including an actuator connected to said support frame and said
A-frame to pivot said A-frame about said pivot axis.
(‘700 patent, 19:13-20.)
Claim 48 also depends from claim 45 and reads:
A vehicle mounted snowplow blade assembly as set forth in
claim 45 including a headlamp connected to said support frame
and removable with said A-frame and said support frame.
(‘700 patent, 19:21-24.)
Claim 49 reads:
A vehicle mounted snowplow blade assembly as set forth in
claim 45 including a support stand connected to said snowplow
blade assembly and extending therefrom for ground engagement
to support said snowplow blade assembly when detached from
said vehicle, said support stand connected to said snowplow
blade assembly for movement to store said support stand when
said snowplow blade assembly is attached to said vehicle.
(‘700 patent, 19:25-32.)
Finally, claim 51 reads:
A vehicle mounted snowplow blade assembly as set forth in
claim 45 wherein the snowplow blade assembly includes a
support stand for supporting the A-frame in a generally
horizontal position and, when the A-frame is not connected to
the mounting frame, for selectively adjusting the vertical
position of the snowplow blade assembly.
(‘700 patent, 19:41-20:4.)
Figure 1 of the ‘700 patent, directed toward a “removable snowplow assembly with
pivotable lift stand,” is pictured below:

4

.

OPINION
Under 35 U.S.C. § 282, issued patents are presumed valid.

“[A] moving party

seeking to invalidate a patent at summary judgment must submit such clear and convincing
evidence of facts underlying invalidity that no reasonable jury could find otherwise.”
TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1340 (Fed. Cir. 2010) (internal quotation
marks omitted). In contrast, summary judgment of no invalidity is appropriate when no
reasonable jury could find by clear and convincing evidence that the claims are invalid. See
Central Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Solutions, P.C., 482 F.3d 1347,
1357-58 (Fed. Cir. 2007) (affirming district court’s grant of summary judgment of no
invalidity when ACS “failed to meet its burden of coming forward with evidence to create a
genuine dispute of fact” on invalidity issue).

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Likewise, determining whether a particular device infringes a properly construed
claim is a question of fact. Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309,
1315 (Fed. Cir. 1998). On summary judgment, “the issue is whether there is no genuine
issue of material fact regarding infringement.” In re Gabapentin Patent Litigation, 503 F.3d
1254, 1259 (Fed. Cir. 2007).
Because patents are presumed valid, “the burden of persuasion to the contrary is and
remains on the party asserting invalidity” -- in this case, Buyers. PowerOasis, Inc. v. T-Mobile
USA, Inc., 522 F.3d 1299, 1303 (Fed. Cir. 2008).

In contrast, as plaintiff, Douglas

Dynamics bears the burden of proving infringement by a preponderance of the evidence.
Laitram Corp. v. Rexnord Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991).
I. Claim 45
A. Indefiniteness
Patent law requires that claims “particularly point[] out and distinctly claim[] the
subject matter which the applicant regards at his invention.” 35 U.S.C. § 112 ¶ 2 (2006).
“To satisfy this requirement, the claim, read in light of the specification, must apprise those
skilled in the art of the scope of the claim.” SmithKline Beecham Corp. v. Apotex Corp., 403
F.3d 1331, 1340 (Fed. Cir. 2005). “Claim definiteness is analyzed ‘not in a vacuum, but
always in light of the teachings of the prior art and of the particular application disclosure as
it would be interpreted by one possessing the ordinary level of skill in the pertinent art.’”
Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006).
Indefiniteness is a question of law that turns on claims construction. Exxon Research
& Engineering Co. v. United States, 265 F.3d 1371, 1376 (Fed. Cir. 2001). The applicable

6

standard does not require “that claims be plain on their face in order to avoid condemnation
for indefiniteness.” Id. at 1375. Rather, the Federal Circuit has explained:
If a claim is insolubly ambiguous, and no narrowing
construction can properly be adopted, we have held the claim
indefinite. If the meaning of the claim is discernible, even
though the task may be formidable and the conclusion may be
one over which reasonable persons will disagree, we have held
the claim sufficiently clear to avoid invalidity on indefiniteness
grounds.
Id. Under this standard, a claim is not indefinite “merely because it poses a difficult issue of
claim construction.” Bancorp Servs., L.L.C. v. Hartford Life Ins. co., 359 F.3d 1367, 1371
(Fed. Cir. 2004). A court should invalidate a claim as indefinite “only if reasonable efforts
at claim construction prove futile.” Exxon Research, 265 F.3d at 1375.
Buyers’ only argument for invalidity under § 112 ¶ 2 is that the term “support
frame” renders claim 45 indefinite. Buyers makes much of the fact that: (1) the term
“support frame” is found for the first time in claim 45, and appears nowhere else in the
patent (with the exception of the claims that depend from claim 45); and (2) even one of
the inventors listed on the ‘700 patent, Gary E. Watson, was unable to define “support
frame” during his deposition. (See Tucker Decl. Ex. M (dkt. #168-113) 277:20-278:14.)
Buyers also relies on the testimony of Douglas’s expert, Dr. Garris, as proof that one of
ordinary skill in the art would not be able to ascertain a specific meaning for “support frame”:
Q: What’s the difference [between a lift frame and a support
frame]?
A: Well, the – in the context of the ‘700 patent, the support
frame is more broad than the lift frame. The lift frame is
defined as producing a very specific function, you know,
basically the lift frame is the – is the frame to which the lifting
mechanism for the plow transmits its load, whereas the support
frame is a much more generic frame. It includes – it could
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include the lift frame, it could include a light supporting frame.
It could – it could include maybe a flag – you know, a flag
support – it could support anything. It’s a very broad concept, a
support frame, as opposed to a lift frame. A lift frame has a
specific function. A support frame has a more general function.
Q: So the lift frame’s specific function is to lift, right?
A: Correct.
Q: Okay.
function?

And support frame has a much more nebulous

Q: I wouldn’t say nebulous, but I would say there’s a lot of
things that you might imagine that it could support. You know,
it could support lights, it could support flags, it could support a
lot of things. It could support a little child seat, you know.
(Tucker Decl. Ex. N (dkt. #168-14), 47:23-48:25.)
In large part, the evidence upon which Buyers relies is of little relevance.

For

example, Watson’s inability to define “support frame” when asked during his deposition is
of limited significance to the question of indefiniteness, since indefiniteness is a matter of
claims construction and “[i]t is particularly inappropriate to consider inventor testimony
obtained in the context of litigation in assessing validity under section 112, paragraph 2, in
view of the absence of probative value of such testimony.” Solomon v. Kimberly-Clark Corp.,
216 F.3d 1372, 1379 (Fed. Cir. 2000) (holding that a district court erred in using the
inventor’s deposition testimony to invalidate patent claims under § 112, ¶ 2). Similarly, Dr.
Garris’s testimony simply establishes that the term “support frame” is broad; it is a frame
that can support a number of components, rather than being limited to supporting the load
of a plow’s lifting mechanism as would a “lift frame.” “Merely claiming broadly does not
render a claim insolubly ambiguous, nor does it prevent the public from understanding the

8

scope of the patent.” Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339,
1352 (Fed. Cir. 2009).
The only argument Buyers advances that has even arguable merit is that the term
“support frame” appears nowhere else in the patent, meaning that the context of the written
description is less helpful than it would otherwise be in construing this term. Still, this does
not render the term insolubly ambiguous. On the contrary, when read in the context of the
patent as a whole, Douglas’s proposed construction -- that a “support frame” is simply a
broader category of “lift frame” that is not limited to supporting lift load but can also
support other components of the blade assembly -- appears both reasonably certain and
accurate. The lift frame and the support frame appear to play largely the same role with
respect to the A-frame in claims 1 and 45.

(Compare ‘700 patent, 13:27-42, with ‘700

patent, 18:42-56.) Furthermore, in the claims that depend from claim 45, the support
frame is described as connected to a headlamp in claim 48, supporting Douglas’s contention
that the support frame can support various components beyond lift load. Thus, the court
declines to grant Buyers summary judgment on indefiniteness grounds.
B. Anticipation
“A patent is invalid for anticipation if a single prior art reference discloses each and
every limitation of the claimed invention.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373,
1377 (Fed. Cir. 2003) (emphasis added). That which would literally infringe if produced
after patenting anticipates if produced before. Bristol-Myers Squibb Co. v. Ben Venue Labs.,
Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001). Each limitation may be found either expressly
or inherently in the prior art reference, since inherency places matter in the public domain

9

as well as express disclosure. Schering Corp., 339 F.3d at 1379. While “the teaching in the
prior reference need not be ipsissimis verbis,” Structural Rubber Prods. Co. v. Park Rubber Co.,
749 F.2d 707, 716 (Fed. Cir. 1984), but “[t]he elements must be arranged or combined in
the same way as in the claim.” Whitserve, LLC v. Comp. Packages, Inc., 694 F.3d 10, 21 (Fed.
Cir. 2012) (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (internal quotation
marks omitted)).
Finally, the court notes that when determining the validity of the claims of a patent,
each claim must be considered separately. See Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373,
1379-80 (Fed. Cir. 2002). Every claim, even a claim in dependent form, is presumed valid
independently of the validity of other claims. Id.
Buyers argues that Claim 45 is invalid as anticipated by U.S. Patent No. 4,187,624
(“the ‘624 patent”). Douglas does not dispute that the ‘624 patent includes “a vehicle
having a frame member and a bumper,” a “mounting frame fixed to the frame member and
located generally behind the bumper,” and a “snowplow blade assembly including an Aframe and a snowplow blade fixed to the A-frame,” but argues that the ‘624 patent does not
disclose the “support frame” element of claim 45. (Pl.’s Resp. to DPFOF (dkt. #195) ¶¶ 9,
11, 13.)2 In response, Buyers points to the “bell crank assembly” in the ‘624 patent as
disclosing the “support frame connected to the A-frame” limitation of the ‘700 patent.
The bell crank assembly is labeled 85 in Figure 1 of the ‘624 patent:
Douglas’s brief also refers to the “mounting means for selectively connecting the A-frame to the
mounting frame for pivotable movement about a generally horizontally extending pivot axis and for
affording removal of the A-frame and the lift frame from the mounting frame as a unit so as to leave
the [mount] mounting frame on the vehicle and behind the bumper” as being a missing limitation
“required by all asserted claims.” (Pl.’s Opp’n (dkt. #194) 5.) Claim 45 does not claim the
“mounting means” at issue, however. Rather, it claims a structure “wherein the A-frame and the support
frame are connected to the mounting frame” for the required pivotable movement. (See Pl.’s Resp. to
PFOF (dkt. #195) ¶ 76 (noting that “claim 45 does not require the ‘mounting means’ of claim 1”).)
2

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The written description of the bell crank assembly includes “a first generally Yshaped link member 86 which includes symmetrical side plates 87 and 88.” (‘624 patent,
5:29-31.) Plates 87 and 88 are welded to one another at the top of the Y-shaped link and
fit between the plates 80 of bracket 79, which is located behind the vehicle’s bumper. (See
‘624 patent, 5:18-20, 31-34.) The bell crank assembly also includes a second link, link 92,
which is made of a pair of L-shaped side members, 94 and 95. Those members are pivotally
mounted to bracket 76 and to link 86. The shorter portions of members 94 and 95 are
pivotally coupled between bracket 76 and the end of piston rod 73. (See ‘624 patent, 5:3847.)
A side view of a portion of the bell crank assembly, shown in conjunction with the
piston rod, is shown in Figure 2 of the ‘624 patent:
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Through this assembly, extension of piston rod 73 pushes link 92 (made up of side
members 94 and 95) forward, which causes the snowplow blade 40 and support 30 to tilt
upward. (‘624 patent, 5:47-51.)
As an initial matter, Douglas argues that the bell crank assembly does not constitute
a “frame” as that term is ordinarily defined. Recognizing that “dictionary definitions may
establish a claim term’s ordinary meaning,” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed. Cir. 2002), Douglas proffers two dictionary definitions. Douglas relies on
Webster’s Third New International Dictionary, which defines “frame” as “a basic structural
unit onto or into which other constituents of a whole are fitted, to which they attach, or
with which they are integrated,” and the Encarta English Dictionary (North American
Edition), which defines “frame” as “supporting structure: an underlying or supporting
structure that consists of solid parts such as beams or struts with spaces between them and
has something built around or on top of it.” (See Pl.’s Mot. Summ. J. (dkt. #121) 14 n.3;
Garris Decl. Exs. C2, C3 (dkt. ##124-21, -22).) In contrast, Douglas argues, the bell crank
assembly of the ‘624 Patent: (1) is described not as a “frame” but as an “assembly”; and (2)

12

is not a rigid structural unit that supports other parts but is instead an “assembly of
movable linkages.”
The court does not find either distinction particularly persuasive. The mere fact that
the bell crank assembly is described as an “assembly” rather than a “frame” is essentially
irrelevant, since, as previously noted, “the reference need not satisfy an ipsissimis verbis test.”
Whitserve, LLC, 694 F.3d at 21 (quoting In re Gleave, 560 F.3d at 1334)).

Likewise,

Douglas’s focus on dictionary definitions seeks to answer the wrong question.3 The court
must determine not whether the bell crank assembly is a “frame” based on a dictionary
definition, but rather whether it is a “support frame,” a limitation properly construed based
on the entire ‘700 patent.

Furthermore, the court must determine, assuming the ‘624

patent discloses a “support frame,” whether it is “arranged or combined in the same way” as
the support frame of the ‘700 patent. See Whitserve, LLC, 694 F.3d at 21.
With respect to these more important questions, Buyers’ invalidity argument breaks
down. Though Buyers glosses over the point, a lift frame (and thus, the comparable support
frame) does not merely support a plow’s lift load, it supports other components as well. To
accomplish this function, a lift frame remains fixed to the vehicle during plowing:
While the lift frame remains pivotable relative to the A-frame,
the lift frame, during plowing, is fixed to the vehicle so that
lights and other accessories which may be mounted on the lift
frame remain fixed relative to the vehicle during plowing and
during stacking of snow.
(‘700 patent, 3:24-29.)

The detailed description of the drawings in the ‘700 patent

confirms this:

It is also not clear that the bell crank assembly of the ‘624 patent does fall outside the dictionary
definitions Douglas offers.
3

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In general, and as more specifically discussed below, when the
lift frame assembly 24 is fixed to one of the mounting frame
assemblies 16, 56, the lifting frame assembly supports the lights
149 in fixed position relative to the vehicle and affords the
raising and lowering of the snowplow assembly 18.
(‘700 patent, 8:63-9:1.)
The patent emphasizes the importance of this feature yet again in describing the
lighting fixture in relation to the lift frame assembly:
As mentioned above, when the lift frame assembly 24 is
mounted on one of the mounting frame assemblies 16, 56, the
lighting fixture 160 is fixed to the vehicle in a position over the
snowplow blade 20. Such positioning and support of the
lighting fixture 160 provides a lighting fixture 160 that is
operational during plowing of snow and that is removable from
the vehicle as a unit with the snow plow assembly 18. It is
operational in the sense that the lights are above the plow in
both its upper position (travel/stacking) and lower position
(plowing) and thus the plow blade does not interfere with the
light rays. Also, the lights being fixed relative to the vehicle,
their orientation is not affected by movement of the plow blade.
(‘700 patent, 10:44-56.)
This same requirement applies with equal or greater force to the support frame,
which may support any number of components, including lights (as confirmed by
dependent claim 48). Thus, the court concludes that the plain and ordinary meaning of
“support frame,” to a person of ordinary skill in the art, would require it to remain in a fixed
position relative to the vehicle, to “support” various assembly components
In contrast, the bell crank assembly of the ‘624 patent does not -- indeed, cannot -play such a role. As discussed above, the bell crank assembly of the ‘624 patent is not fixed
to the vehicle. In fact, it functions by moving relative to the vehicle: the hydraulic cylinder
pushes the L-shaped member of the bell crank assembly forward, which in turn pushes the

14

blade upward to shovel and stack snow. Furthermore, the drawings in the ‘624 patent show
that the bell crank assembly is not located above the blade. (See ‘624 patent, Figure 1.)
This means that it cannot support components like lights or spray canopies, since those
structures would constantly be shifting as the plow blade moved vertically and indeed would
be blocked by the blade itself. (See Garris Decl. (dkt. #124) ¶ 103.)
Given these crucial differences, the court cannot say that Buyers has demonstrated
by clear and convincing evidence that the ‘624 patent discloses the “support frame” of the
‘700 patent. Nor does the expert report of Dr. Joseph M. Prahl rescue Buyers’ argument: it
is wholly conclusory in equating the “bell crank assembly” to a “support frame” and “lift
frame.” (See May 5, 2010 Prahl Expert Report (dkt. #124-15) ¶¶ 107, 159.) Buyers does
not even address the fact that the bell crank assembly functions by moving relative to the
vehicle. Thus, Buyers has failed to meet its burden, and its motion for summary judgment
of invalidity will be denied as to claim 45.
This does not conclude the court’s analysis, however. Douglas has also moved for
summary judgment of no invalidity, meaning the court must determine whether Buyers has
produced enough evidence to allow a reasonable jury to find that claim 45 is invalid. In the
context of cross-motions for summary judgment on patent validity, the Federal Circuit has
cautioned district courts to remember that “the denial of a party’s motion for summary
judgment of invalidity is not sufficient to justify a reciprocal grant of summary judgment of
no invalidity to the other party.” Mikkelsen Graphic Eng’g, Inc. v. Zund Am., Inc., 541 F. App’x
964, 973 (Fed. Cir. 2013); see also Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317,
1331-32 (Fed. Cir. 2009) (“[A] district court cannot rely on its assessment of one party’s
motion for summary judgment of invalidity when evaluating the other party’s motion for
15

summary judgment of no invalidity.”). Accordingly, the court turns to Buyers’ opposition
to Douglas’s motion.
For purposes of claim 45, Buyers has relied entirely on the same argument it
advanced in support of its own motion: claim 45 is anticipated by the ‘624 patent. (See
Prahl Invalidity Report (dkt. #168-12) ¶¶ 156-59.) Yet no reasonable jury could find that
the ‘624 patent discloses a “support frame” as used on the context of ‘700 patent for
reasons already discussed above. As a result, no reasonable jury could find that the ‘624
patent anticipates claim 45, because it does not disclose each and every element of that
claim, arranged or combined in the same way.
Summary judgment is the “‘put up or shut up’ moment in a lawsuit, when a party
must show what evidence it has that would convince a trier of fact to accept its version of
events.”

Johnson v. Cambridge Indus., Inc., 325 F.3d 892, 901 (7th Cir. 2003) (quoting

Schacht v. Wis. Dep’t of Corr., 175 F.3d 497, 504 (7th Cir. 1999)). By moving for summary
judgment of no invalidity, Douglas placed Buyers on notice that it must come forward with
all of its evidence. Nevertheless, Buyers relied solely on its theory that the ‘624 patent
anticipated claim 45. Because the court has rejected that argument, and because Buyers has
put forth no other evidence of anticipation (or any other basis for invalidity), the court will
grant Douglas’s motion for summary judgment of no invalidity.
II. The Dependent Claims
A. Infringement
As noted above, “[i]nfringement, whether literal or under the doctrine of equivalents,
is a question of fact.” Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1129-30
(Fed. Cir. 2011) (citing Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998)).
16

Summary judgment may nevertheless be appropriate “when no reasonable jury could find
that every limitation recited in a properly construed claim either is or is not found in the
accused device either literally or under the doctrine of equivalents.” U.S. Philips Corp. v.
Iwasaki Elec. Co., 505 F.3d 1371, 1374-75 (Fed. Cir. 2007) (quoting PC Connector Solutions
LLC v. SmartDisk Corp., 406 F.3d 1359, 1364 (Fed. Cir. 2005)). An infringement analysis
involves two steps. First, the claim must be properly construed to determine its scope and
meaning. Second, the claim as properly construed must be compared to the accused device
or process. Absolute Software, Inc., 659 F.3d at 1129. Claims construction in this case is
complete; the court need only consider the second step of the infringement analysis.
“Literal infringement requires that each and every limitation set forth in a claim
appear in an accused product.” V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1312
(Fed. Cir. 2005). “If any claim limitation is absent from the accused device, there is no
literal infringement as a matter of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d
1241, 1247 (Fed. Cir. 2000).
Both parties moved for summary judgment on infringement grounds. (See dkt. ##
158, 170.) Buyers’ sole argument with regard to dependent claims 47, 48, 49 and 51 comes
down to a single, flawed premise: because claim 45 is not itself infringed, neither can the
dependent claims be infringed, since all of claim 45’s limitations are incorporated into each of
the dependent claims, as required by 35 U.S.C. § 112, ¶ 4. (See Def.’s Br. Supp. Mot.
Summ. J. Non-Infringement (dkt. #171) 47; Prahl Noninfringement Chart 2 (dkt. #17510) 11-13.) The fatal flaw is that the Federal Circuit already found that Buyers’ products do
meet all of the limitations of claim 45. Accordingly, Buyers’ motion for summary judgment
of non-infringement is denied.
17

Next, Douglas moves for summary judgment of infringement on all the asserted
dependent claims, referring the court to its expert report on infringement. (See Pl.’s Br.
Supp. Mot. Summ. J. Infringement (dkt. #159) 38.)

Mindful of the Federal Circuit’s

mandate, the court does not revisit whether Buyers’ products contain each of the claim 45
limitations, but instead focuses its analysis on the additional limitations that each dependent
claim features to determine if Buyers’ products infringe those dependent claims as a matter
of law.
i.

Claim 47

As noted above, claim 47 depends from claim 45 and adds two limitations: the
“support frame, when connected to said mounting frame, includes an extension in front of
and above said bumper”; and an “actuator connected to said support frame and said Aframe to pivot said A-frame about said pivot axis.” (‘700 patent, 19:14-21.) Douglas’s
expert Charles Garris will opine that Buyers’ snowplow blade assemblies include the first
limitation, pointing specifically to Figure 1 of Buyers’ ‘718 patent:

18

(Garris Report Vol. 3 (dkt. #128) ¶ 60.) The “upwardly extending support,” labeled 74 in
the modified figure, is an “extension in front of and above” the vehicle bumper. Buyers
does not dispute that its products literally contain this element. (See Def.’s Resp. to PPFOF
(dkt. #193) ¶ 154.)
Claim 47 also includes another element: “an actuator connected to said support
frame and said A-frame to pivot said A-frame about said pivot axis.” The Federal Circuit
found Buyers’ products allow for this pivotable movement of the A-frame around a generally
horizontally extending pivot axis, since that requirement is contained within infringed claim
45. It is also readily apparent that Buyers’ products include an actuator, as shown in Garris’
demonstrative exhibits 8a through 10b:
19

(Dkt. #126-4) (actuator labeled M646).

Given the Federal Circuit’s construction of

“connected to” as encompassing both direct and indirect connections, it is also clear that the
actuator is connected to the support frame (blue), and to the A-frame (pink) via the support
frame, in order to accomplish the pivotal movement described in claim 45. Accordingly,
Douglas is entitled to summary judgment of infringement on claim 47.
ii.

Claim 48

Claim 48 also depends from claim 45 and adds only the additional limitation of “a
headlamp connected to said support frame and removable with said A-frame and said
support frame.” (‘700 patent, 19:23-25.) As Douglas’s expert, Charles Garris, points out,
Buyers’ CM, VX, MD and HD/EX Snowplow Assemblies include headlamps (labeled M649
on Garris’ diagrams) that are connected to two light brackets (M648), which are in turn

20

connected to the support frame (M524). Pictured below, as an example, is Garris’ diagram
of the CM Snowplow Assembly:

(Demonstrative Ex. 8a (dkt. #126-4) 1).
As Garris explains, the headlamps are indirectly connected to the support frame by
means of the light brackets. The Federal Circuit has confirmed that the plain language of
“connected to” encompasses such indirect connections. See Douglas Dynamics, LLC, 717
F.3d at 1342. Furthermore, the Federal Circuit has already found that Buyers’ products
allow for the removal of the A-frame and the support frame as a unit by finding
infringement of claim 45.4

Buyers points to no evidence to the contrary in response.

Indeed, Buyers concedes in its responses to Douglas’s proposed findings of fact that the
“specific features of claim 48” are present in its products. (See Def.’s Resp. to PPFOF (dkt.

“Since the headlamps (M649) are connected to the support frame (M524), the headlamps (M649)
are removable with the A-frame (M522) and the support frame (M524).” (Garris Decl. (dkt. #128)
¶ 62.)
4

21

#193) ¶ 155.)

Therefore, no reasonable jury could find for Buyers, and claim 48 is

infringed as a matter of law.
iii.

Claim 49

Claim 49 depends from claim 45 and adds the following additional limitation:
[I]ncluding a support stand connected to said snowplow blade
assembly and extending therefrom for ground engagement to
support said snowplow blade assembly when detached from said
vehicle, said support stand connected to said snowplow blade
assembly for movement to store said support stand when said
snowplow blade assembly is attached to said vehicle.
(‘700 patent, 19:27-33.)

Garris’ expert report points to Buyers’ ‘718 patent, in which

Figure 3 shows the snowplow assembly 10 in a detached state and set on a road bed surface
16. The support stand is labeled 156:

22

(Garris Ex. App. C Ex. 7 (dkt. #126-30) Figure 3.) Garris’ diagrams of the Buyers products
feature this support leg as well. (See Demonstrative Exs. 8a-10b (dkt. #126-4).)
Garris then points to the HD/EX owner’s manual, which shows how the plows
contain a “jack” from which the support leg extends in the unmounted state.

The

instructions indicate that after mounting, the user should “retract the jack enough to allow
its removal,” “rotate the jack to disengage from the jack mount plate” and “stow the jack on
the sector mounted stow plate.”

(Garris Ex. App. C Ex. 1 (dkt. #126-24).)
Therefore, Garris opines that not only is the support leg (jack) connected to the
assembly so as to provide “ground engagement” in the unmounted state, but it is also
connected to the assembly for movement to store the jack on the “sector mounted stow
plate” when the assembly is attached to a vehicle. Again, Buyers presents no evidence to
contradict this opinion, conceding that the SnowDogg snowplow assembly provides “the
specific features of claim 49.” (Def.’s Resp. to PPFOF (dkt. #193) ¶ 156).

Douglas is

therefore entitled to summary judgment of infringement on this dependent claim as well.
iv.

Claim 51

Finally, claim 51 depends from claim 45 and adds the following additional limitation:
23

[W]herein the snowplow blade assembly includes a support
stand for supporting the A-frame in a generally horizontal
position and, when the A-frame is not connected to the
mounting frame, for selectively adjusting the vertical position of
the snowplow blade assembly.
(‘700 patent, 19:42-20:4.)
In Buyers’ products, Garris’s expert report notes that the support stand (jack) of the
assembly is connected to the assembly through the jack plate when the assembly is detached
and engages with the ground to support the A-frame in a generally horizontal position (as in
the “Dismounted Plow” diagram above). He also notes that in the detached position -- that
is, “when the A-frame is not connected to the mounting frame” -- per the instructions, the
jack may be extended or retracted to selectively adjust the vertical position of the assembly.
(Garris Ex. App. C Ex. 1 (dkt. #126-24) BPC0003869.) Buyers presents no evidence to
combat Garris’ testimony and concedes that its SnowDogg snowplow assembly contains
“the specific features of claim 51” (Def.’s Resp. to PPFOF (dkt. #193) ¶ 157). Accordingly,
Douglas is entitled to summary judgment of infringement of claim 51.
B. Invalidity Based on Obviousness
Having found that dependent claims 47, 48, 49 and 51 are infringed, the court next
considers whether those claims are valid. Buyers contends that all the dependent claims are
invalid as obvious.5 While sympathetic to this contention on an abstract basis, given that
the claims cover such seemingly rudimentary features as adding lights and a support stand, a
claim is deemed legally invalid for obviousness if the differences between the subject matter
Buyers has also asserted that all the dependent claims are invalid as indefinite “for the same reasons
as claim 45.” (See Def.’s Br. Opp’n Summ. J. & Br. Supp. Summ. J. Invalidity (dkt. #167) 29, 30,
31, 32.) The court has already rejected that argument, see discussion, supra, Section I.A., and need
not consider it further.
5

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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). More importantly for
purposes of this analysis, “a patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently, known in the prior
art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather, in evaluating such
combinations, “it can be important to identify a reason that would have prompted a person
of ordinary skill in the relevant field to combine the elements in the way the claimed new
invention does.” Id.
The Federal Circuit has frequently employed the teaching, suggestion or motivation
(“TSM”) test in assessing obviousness, asking whether there is evidence of a teaching,
suggestion or motivation to combine known elements from the prior art. Still, the TSM
test, while a “helpful insight,” is not a “rigid and mandatory formula[].” Id. at 418-19. The
court must keep in mind that “[a] person of ordinary skill in the art is also a person of
ordinary creativity, not an automaton,” id. at 421, and may “take account of the inferences
and creative steps that a person of ordinary skill in the art would employ” in evaluating
obviousness, id. at 418. A “combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.” Id. at 416.
As an initial matter, Buyers’ failure to establish the invalidity of independent claim
45 is essentially fatal to its obviousness arguments as to dependent claims 47, 48, 49 and
51. See Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009) (“A broader
independent claim cannot be nonobvious where a dependent claim stemming from that
independent claim is invalid for obviousness.”) (citing Ormco Corp. v. Align Tech., Inc., 498
25

F.3d 1307, 1319 (Fed. Cir. 2007)). The Federal Circuit decision in Callaway seems to
dictate that finding claims 47, 48, 49 or 51 invalid as obvious would compel the conclusion
that claim 45 is likewise obvious -- but Buyers failed entirely to argue or present any
evidence that claim 45 was obvious, even in the face of Douglas’s summary judgment
motion, which required Buyers to come forward with all arguments and evidence supporting
a finding of invalidity as to claim 45. Buyers did not even cursorily argue claim 45 was
obvious on the same grounds as the dependent claims. Case law does not allow for such an
“irreconcilable inconsistency.” Id. at 1345. Buyers’ claims of obviousness, therefore, fails
simply by virtue of its decision to eschew an obviousness defense and rely entirely on its
unsuccessful defense of anticipation with respect to claim 45.
Of course, Callaway espouses a principle that is in essence the mirror image of this
case. In Callaway, the Federal Circuit noted that where a dependent claim is invalid for
obviousness, so, too, must the independent claim be obvious, while this case would involve
a finding that the dependent claim is not obvious based on the validity of the independent
claim. Therefore, the court will also consider each of the prior art combinations that Buyers
asserts demonstrate by clear and convincing evidence that the dependent claims are
obvious.

26

i.

Claim 47

For example, Buyers asserts that claim 47 is invalid as obvious based on the
combination of the ‘624 patent and U.S. Patent No. 4,236,329 (“the ‘329 patent”). The
‘329 patent, directed toward a “detachable blade mounting device,” includes a support
frame extending in front of and above the vehicle bumper, as shown in Figure 2 of that
patent:

Specifically, the “frame assembly 20,” when connected to “vehicle portion 14,” extends in
front of and above the vehicle’s bumper. Additionally, the ‘329 patent discloses an actuator
(“hydraulic cylinder device 42”) connected to the support frame and an A-frame that, as
described in the patent, pivots the A-frame about a pivot axis:
Hydraulic cylinder 42 includes an extendable piston rod 54
having its outer end connected to lift arm 48 generally at the
center thereof by a pin or bolt 56. A link chain 58 is connected
between the outer end of lift arm 48 and legs 28 of the A-frame.
When hydraulic cylinder 42 is operated to extend rod 54, lift
arm 48 pivots about pin 50 causing chain 58 to raise snow plow
blade 34 from the roadway. Retraction of the piston rod results
in lowering of lift arm 48 and the plow blade. Such movement
of the plow blade occurs as pivotal motion about pins 30.
27

(‘329 patent, 4:31-49.)
Douglas agrees that the ‘329 patent discloses an actuator connected to a support
frame and an A-frame, and that it describes using that actuator to pivot the A-frame about
the pivot axis. (Pl.’s Resp. to DPFOF (dkt. #195) ¶ 89.) Nevertheless, Douglas argues that
Buyers has not met its burden to show obviousness, because Buyers provides no explanation
as to why a person of ordinary skill in the art would combine the ‘624 and ‘329 patents by
substituting the rigid, upwardly-extending “frame assembly” of the ‘329 patent for the bell
crank assembly of the ‘624 patent. Indeed, Douglas argues, the ‘624 patent explicitly teaches
away from utilizing an upwardly extending frame assembly, calling it an existing but
unsatisfactory system for vehicle-mounted snowplow assemblies in the “Background of the
Invention” section:
[S]uch plows also include a bulky, view-obstructing plow lifting
system mounted immediately adjacent the front end of the
vehicle which includes a hydraulic cylinder oriented upwardly to
engage a lifting arm which in turn is coupled to the plow by a
chain. Extension of the cylinder causes the arm to be elevated
which in turn causes the chain to lift the plow blade above the
road surface. This type of lift system, both because of its bulk
and because of its tendency to shift weight off the back wheels
of the vehicle, make this type of plow unsuitable for smaller
vehicles such as cars.
(‘624 patent, 1:44-55.)
“A reference that properly teaches away can preclude a determination that the
reference renders a claim obvious.” In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012). A
reference teaches away “when a person of ordinary skill, upon reading the reference, would
be discouraged from following the path set out in the reference, or would be led in a

28

direction divergent from the path that was taken by the applicant.” Id. at 1333-34 (quoting
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).
Here, the ‘624 patent unquestionably discourages persons of ordinary skill in the art
from combining the rigid, upwardly-extending frame assembly/“support frame” of the ‘329
patent with the other elements of the snowplow assembly depicted in the ‘624 patent.6
Beyond a conclusory (and incorrect) assertion that the two patents together disclose each
and every limitation of the ‘700 patent -- not in and of itself enough to show obviousness -Buyers offers no additional evidence of obviousness. For this reason, Buyers has failed to
meet its burden, and its motion for summary judgment of invalidity with respect to claim
47 is denied.
The court will also grant Douglas’s summary judgment motion of no invalidity with
respect to claim 47. Buyers again relies solely on the combination of the ‘329 and ‘624
patents to combat Douglas’s motion. (See Def.’s Br. Opp’n Summ. J. & Br. Supp. Summ. J.
Invalidity (dkt. #167) 29-30.) The ‘624 patent teaches away from employing lift/support
frames that extend upward, potentially obscuring the driver’s view and unbalancing the
vehicle, and Buyers again offers no other reason why a person of ordinary skill in the art
might nevertheless be motivated to combine the support frame and actuator of the ‘329
patent with the ‘624 patent.

On this record, no reasonable jury could find claim 47

obvious, and so Douglas is entitled to summary judgment of no invalidity.

Buyers’ argument that the ‘624 patent does not teach away from lift frames in general but merely
discloses a new type of lift frame that does not result in the deficiencies of previous lift frames
assumes a far broader construction of “lift frame” and “support frame” than this court has adopted,
and also would ignore the principal advance of that patent.
6

29

ii.

Claim 48

Buyers asserts that claim 48 is obvious in light of the combination of the ‘624 patent
and U.S. Patent No. 4,658,519 (the ‘519 patent). This argument relies in part on Buyers’
assertion that the ‘624 patent discloses a support frame, which the court has rejected.
Buyers does point out -- and Douglas agrees (Pl.’s Resp. to DPFOF (dkt. #195) ¶ 95) -- that
the ‘519 patent discloses a light fixture including headlamps located above the snowplow
blade:

It would have been obvious to a person of ordinary skill in the art, Buyers argues, to think
of combining the teachings of these two patents such that the headlamp was connected to
the “support frame” in the ‘624 patent (meaning the bell crank assembly), allowing for a
lighted snowplow while facilitating the removal of the entire assembly as a unit. (See Def.’s
Br. Opp’n Summ. J. & Br. Supp. Summ. J. Invalidity (dkt. #167) 30.)
In opposition, Douglas points out that the ‘519 patent features headlamps located on
a “conventional lifting apparatus 154” that is mounted to the front of the vehicle. (See ‘519
patent, 6:62-63.) That lifting apparatus, like the “support frame” of the ‘700 patent, is
fixed in place relative to the vehicle, unlike the bell crank assembly, which moves with
30

respect to the vehicle. Therefore, Douglas’s expert testified, no person of ordinary skill in
the art would think of connecting the headlamps of the ‘519 patent to the “bell crank
assembly” of the ‘624 patent, since the “bell crank assembly” does not remain fixed relative
to the vehicle, nor can it support anything over the plow blade. (Garris Decl. (dkt. #124)
¶ 107.) The lights “would constantly be changing in orientation as the plow blade was
moved vertically because of the required movement of the bell crank assembly.” (Id. at
¶ 103.)
The court agrees. A person of ordinary skill in the art would have no reason to
attach the lights of the ‘519 patent to the bell crank assembly of the ‘624 patent, given that
the bell crank assembly (1) functions by moving relative to the vehicle; and (2) is located
below the plow blade in any event. Furthermore, nothing in the ‘624 patent describes using
the bell crank assembly for mounting or support purposes.
Again, it may seem a matter of pure common sense to add lights to any snowplow
assembly to permit lighted plowing.

But “[t]he mere recitation of the words ‘common

sense’ without any support adds nothing to the obviousness equation.” Mintz v. Dietz &
Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012). Here, the only argument Buyers has
offered rests on an erroneous interpretation of what constitutes a “support frame” and a
bald, unsupported assertion that a person of ordinary skill in the art would think to place
headlamps on a constantly-moving component of a snowplow assembly. The court credits
neither of these positions as clear and convincing, and Buyers’ motion for summary
judgment of invalidity is denied as to claim 48.
Unfortunately for Buyers, it has offered no additional evidence to defeat Douglas’s
own motion for summary judgment of no invalidity, relying entirely on the combination of
31

the ‘519 and ‘624 patents. A district court “is not required to scour the party’s various
submissions to piece together appropriate arguments” on summary judgment. Little v. Cox’s
Supermarkets, 71 F.3d 637, 641 (7th Cir. 1995).

No reasonable jury could find on the

evidence Buyers has presented that claim 48 was obvious, given that these two references
combined are missing the requisite “support frame” on which the person of ordinary skill
would have to think to place a headlamp. While the idea of headlamps alone may seem
obvious, the court “need not consider … arguments that certain dependent claim limitations
would have been obvious where the base claim has not been proven invalid.” SynQor, Inc. v.
Artesyn Techs., Inc., 709 F.3d 1365, 1375 (Fed. Cir. 2013) (emphasis added). Without more
from Buyers, Douglas is entitled to summary judgment of no invalidity on this claim.
iii.

Claim 49

Buyers argues that claim 49 is obvious in light of the combination of the ‘624 patent
with U.S. Patent No. 4,205,825 (“the ‘825 patent”), which is directed at a “jack for snow
plow frames” and discloses a support leg pivotally supported by the A-frame, extending from
the assembly to the ground to support the assembly when the plow is unmounted:

Additionally, the jack unit of the ‘825 patent is extended through a “keeper” (labeled 30 in
Figure 3, below) when the plow is mounted and in use:
32

Douglas disputes that the combination of the ‘624 patent with the ‘825 patent
discloses each and every limitation of claim 49 (Pl.’s Resp. to DPFOF (dkt. #195) ¶ 101),
directing the court to the Garris declaration, which indicates that the ‘624 patent does not
disclose a lift frame, and that the ‘825 patent does not cure those deficiencies. (Garris Decl.
(dkt. #124) ¶¶ 88-89.)

The court agrees.

While the ‘825 patent certainly appears to

disclose the required additional requirements of claim 49 (and Garris does not opine
otherwise), the ‘624 patent does not, as previously discussed, disclose a “support frame” and
in fact explicitly teaches away from using such frames. The court therefore cannot say that
the combination of the ‘825 patent and the ‘624 patent is clear and convincing evidence
that the invention of the ‘700 patent is obvious, at least not without more than Buyers has
offered here. And again, while the “support stand,” taken alone, seems obvious, the court
need not consider arguments directed at single dependent claim limitations when the claim
as a whole has not been proven invalid. See SynQor, 709 F.3d at 1375.
As discussed above, Buyers was placed on notice to come forward with all of its
evidence with regard to invalidity of this claim in response to Douglas’s mirror image crossmotion on claim 49. Since its only response was to offer the ‘624 patent and the ‘825
patent -- with little to no explanation as to why those two references make claim 49
obvious, particularly in light of the lack of support frame and the ‘624 patent’s teaching

33

away from using support frames -- Douglas’s motion for summary judgment of no invalidity
will be granted with respect to claim 49.
iv.

Claim 51

Finally, as with claim 49, Buyers argues that claim 51 is obvious in light of the
combination of the ‘624 patent and the ‘825 patent. Claim 51 adds the limitation of a
support stand for supporting the A-frame in a generally horizontal position, and in the
unmounted state, for selectively adjusting the vertical position of the assembly.

The

language of the limitation in claim 51 tracks that in the ‘700 patent’s claim 9. (Compare
‘700 patent, 14:9-14, with ‘700 patent, 19:41-20:4.) In his expert report, Buyers’ expert
admits in analyzing claim 9 that the ‘825 patent “discloses a jack that is adjustable to raise
and lower a snowplow frame.” (Garris Decl. (dkt. #124) ¶ 88.) But as above, neither
patent discloses the requisite support frame and the ‘624 patent actually teaches away from
it. Also as above, Buyers offers nothing more than the unexplained combination of the two
patents to prove obviousness. Accordingly, the court will again deny Buyers’ motion on
obviousness and grant Douglas’s.

ORDER
IT IS ORDERED that:
1) Plaintiff Douglas Dynamics, LLC’s motion for summary judgment of no invalidity
(dkt. #120) is GRANTED;
2) Defendant Buyers Products Co.’s motion for summary judgment of invalidity
(dkt. #166) is DENIED;
3) Plaintiff’s motion for summary judgment of infringement (dkt. #158) is
GRANTED; and
34

4) Defendant’s motion for summary judgment of non-infringement (dkt. #170) is
DENIED.
Entered this 13th day of March, 2014.
BY THE COURT:
/s/
________________________________________
WILLIAM M. CONLEY
District Judge

35