Oxbo International Corporation v. H&S Manufacturing Company, Inc.

Filing 392

ORDER granting in part and denying in part 115 Motion for Summary Judgment by Plaintiff Oxbo International Corporation; granting in part and denying in part 122 Motion for Summary Judgment by Defendant H&S Manufacturing Company, Inc.; granting i n part and denying in part 148 Motion to Strike Declaration and Expert Report by Defendant H&S Manufacturing Company ; denying as moot 163 Motion to Strike by Counter Defendant Oxbo International Corporation ; denying 197 Motion to Supplemen t by Plaintiff Oxbo International Corporation; granting 222 Motion to Strike by Plaintiff Oxbo International Corporation ; denying 291 Motion to Strike by Counter Defendant Oxbo International Corporation. Signed by District Judge James D. Peterson on 5/23/2017. (voc)

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

OXBO INTERNATIONAL CORPORATION,

v.

Plaintiff,

H&S MANUFACTURING COMPANY, INC.,

OPINION & ORDER
15-cv-292-jdp

Defendant.
Plaintiff Oxbo International Corporation owns four patents on windrow mergers, and
it accuses its competitor, defendant H&S Manufacturing Company, Inc., of infringing them
with its Tri-Flex merger. H&S denies infringement and asserts that some of the asserted
claims are invalid. H&S also raises equitable defenses, based primarily on alleged assurances
from Oxbo that it would not sue H&S for infringement without warning.
Both sides have moved for summary judgment on infringement and on H&S’s
equitable defenses. Each side also seeks summary judgment on some more limited validity
issues. The parties also present several motions to strike parts of the other side’s evidence or
to supplement its own. The details of the court’s rulings are in the body of the opinion. But,
at a high level of summary, the rulings are largely favorable to Oxbo. The court concludes
that the undisputed facts show that the Tri-Flex merger infringes all but two of the asserted
claims; that the patents-in-suit are not invalid on any ground asserted by H&S; and that
H&S’s equitable defenses fail. There is a genuine dispute of material fact about whether the
Tri-Flex merger infringes claims 28 and 32 of the ’929 patent.

BACKGROUND
A windrow merger is an agricultural implement that gathers mown hay into windrows,
or merges existing windrows into larger ones, so that the hay can be chopped or baled. Unlike
a hay rake, which drags hay into windrows, a windrow merger uses rotating tines to lift the
hay onto a conveyor that moves the hay to the windrow. This minimizes damage to the crop
and reduces contamination with dirt, rocks, or other debris.
Oxbo’s patents-in-suit describe improvements to windrow mergers that purport to
make them faster, more flexible, and more effective. Three of the patents-in-suit disclose and
claim a windrow merger with three pickup assemblies: U.S. Patent Nos. 7,310,929,
8,166,739, and 8,863,488, all for “Windrow Merging Apparatus” to Paul W. Dow, et al.
These patents share a common specification, and the court will refer to them together as the
“triple head patents.” The other patent-in-suit discloses and claims a windrow merger with a
trough configuration and a “rub rail” to facilitate the even flow of hay on the conveyor, which
helps create uniform windrows: U.S. Patent No. 8,511,052 for “Windrow Merger” to Steven
S. Dow, et al. We will refer to this patent as the “trough patent.”
Oxbo and H&S are competitors in the agricultural equipment market, and they both
make and sell windrow mergers, including triple head mergers. Oxbo alleges that H&S’s triple
head merger, the Tri-Flex, infringes the four patents-in-suit. Early in the case, H&S asserted
tort counterclaims against Oxbo and another party, but those matters have been resolved. At
this point, all that remains are Oxbo’s patent infringement claims and H&S’s counterclaims
and defenses.
One other notable procedural detail: during this litigation, H&S petitioned the Patent
Trial and Appeal Board for inter partes review of the validity of the ’929 patent and,

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separately, the ’052 patent. PTAB declined to institute review. Dkt. 199-16 and Dkt. 235-1.
Because PTAB did not institute review on any ground for either patent, H&S is not estopped
under 35 U.S.C. § 315(e) from asserting any invalidity ground, and the IPR petitions have no
direct effect on this case. But the parties may be bound by the positions taken in the PTAB,
and the PTAB reasoning may be persuasive on issues now before the court.
The court has subject matter jurisdiction over this case pursuant to 28 U.S.C.
§ 1338(a) because it arises under United States patent law.

ANALYSIS
A. Motions to strike and to supplement the record
The court begins with the parties’ evidentiary motions, which affect the scope of the
evidence that the court will consider at summary judgment.
1. H&S’s motion to strike Chaplin supplemental report and Langer
declaration; Oxbo’s motion to supplement the Chaplin report
H&S moves to strike Jonathan Chaplin’s August 15, 2016 supplemental report,
Dkt. 113, and Jake Langer’s related declaration, Dkt. 137. Dkt. 148. Chaplin is an Oxbo
expert. H&S contends that Chaplin’s August report offers new infringement opinions—based
on a new Tri-Flex inspection—disclosed months after the expert disclosure deadline and mere
weeks before the dispositive motion deadline. According to H&S, Oxbo could have—and
should have—disclosed the opinions in Chaplin’s initial report (April 2016), and the late
disclosure is not a proper supplementation, is not substantially justified, and is not harmless.
Langer’s declaration supports Chaplin’s report, and the court should strike it for the same
reasons.

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In response, Oxbo says that H&S did not disclose relevant non-infringement positions
until after Oxbo disclosed Chaplin’s initial report. Chaplin had every right to reply to the
previously undisclosed non-infringement theories. Regardless, Oxbo contends, Chaplin’s
August report “merely clarifies previous statements and fills minor gaps in his opinion.”
Dkt. 194, at 7. Oxbo requests, as an alternative to denying H&S’s motion to strike, that it be
allowed to supplement the Chaplin report. Dkt. 197.
This court allows two rounds of expert reports: proponent reports, where the plaintiff
should disclose its infringement opinions; and respondent reports, where the defendant may
defend against those opinions and offer its non-infringement opinions. Oxbo is not entitled
to a rebuttal report to reply to H&S’s non-infringement opinions. Yet that is precisely what
Chaplin’s August report does. Chaplin went back and inspected the Tri-Flex again to test “the
veracity” of H&S’s expert’s opinions. Dkt. 113, at 2. Such a supplementation would be
allowed only with the consent of the other side, or with leave of court.
Oxbo contends that the August supplementation was justified because H&S changed
its non-infringement theories after Chaplin disclosed his initial report. The court agrees in
part.
Oxbo does not explain why Chaplin could not have offered some of his August
opinions earlier. Chaplin knew that H&S had denied that the Tri-Flex provides a continuous
line of material pickup when he authored his initial report. And he knew that H&S had
proposed to construe the term “continuous line of material pickup” to mean “a pickup face
uninterrupted by gaps.” Although the only gaps that H&S had expressly cited by the time
Chaplin disclosed his initial report were between the merger heads, nothing prevented Chaplin

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from addressing the five-inch mid-head gaps as well. H&S was not perfectly forthcoming, but
Chaplin should have anticipated the mid-head gap issue.
But the “all material” issue was not timely disclosed by H&S. H&S contends that “as
long as Oxbo has asserted these claims, H&S has denied infringing them.” Dkt. 221, at 8.
But H&S cites nothing to show that it had disclosed to Oxbo its contention that the Tri-Flex
does not transport “all material” because of incidental crop loss at any time before it
disclosed its report. That is a new non-infringement position that Oxbo should be allowed to
address with expert evidence.
Oxbo was also justified in supplementing Chaplin’s opinion regarding whether the TriFlex can merge with only its center assembly with both outer assemblies retracted. (The court
will discuss this issue in greater detail later in this opinion.) The court will not strike
Chaplin’s August opinion regarding center assembly merging because H&S has continued to
update the record with new information on that issue. Late-in-the-case developments have
caused difficulties for both the parties and the court, because the court cannot decide the
issue at summary judgment. See infra Section D.3.a.
So H&S’s motion to strike, Dkt. 148, is denied with respect to Chaplin’s
supplementation on center assembly merging and the “all material” non-infringement
argument. Chaplin’s August opinions regarding the Tri-Flex “gaps” are untimely.
Oxbo’s contingent motion to supplement, Dkt. 197, is moot as to the portions of
Chaplin’s August report that the court has allowed. And Oxbo’s contingent motion is denied
in all remaining respects, for two reasons. First, as explained, Oxbo has not demonstrated that
it should be allowed to supplement Chaplin’s “gap” opinions. Second, the court will not
strike H&S’s expert’s “gap” opinions. Although H&S did not explicitly disclose its position

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that the five-inch mid-head gaps mean that the Tri-Flex does not provide a continuous line of
material pickup, it did disclose sufficient information about its infringement position to allow
Chaplin to fully opine on the issue when he authored his initial report.
2. Oxbo’s motion to strike H&S’s “new” non-infringement position
This motion is also related to the center assembly merging issue. After summary
judgment briefing closed, H&S acknowledged that four next-gen touchscreen prototype TriFlex mergers infringed claims 28 and 32 of the ’929 patent as a result of an unintended
software glitch. Dkt. 252. H&S contends that these touchscreen prototypes operated
differently than all other models in this respect. Oxbo moves to strike H&S’s contention,
arguing that it constitutes a new non-infringement position. Before the late submission, H&S
had never contended or produced any documents showing that the touchscreen and pushbutton models functioned any differently. And apparently Oxbo had intended to build an
infringement case on its testing of the prototypes.
The court is not convinced that H&S’s concession qualifies as a new non-infringement
position. H&S disclosed new factual information learned in the course of litigation. A party
cannot reasonably be held to theories that new facts show to be wrong. But in light of the
factual developments, it is appropriate to allow Oxbo to use the February 2017 Chaplin
supplement. Dkt. 293. The new report is substantially justified because, as discussed above,
the center assembly issue has been a moving target. Before H&S’s concession, Oxbo had no
reason to think that it would need to separately inspect and analyze the push-button mergers
and the touchscreen mergers. It had no reason to believe that the two interfaces operated
differently and, as a result, it had no reason to suspect that its videos of and opinions
regarding the touchscreen merger were not sufficient to prove infringement by all models.

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The court is certainly not inclined to entertain new non-infringement positions or
arguments raised for the first time after the summary judgment deadline. But the center
assembly issue has presented difficult questions and had muddled the record more than
usual. The court will deny the motion to strike but will allow Oxbo to submit the February
Chaplin report.
3. Oxbo’s motion to strike Foley, Rottier, and Kelber
Oxbo moves to strike David Foley’s declaration, Dkt. 126, portions of Kurt Rottier’s
declaration, Dkt. 128, and portions of Vincent Kelber’s declaration, Dkt. 129. Dkt. 163. In
short, these declarations offer digital animations that demonstrate operations that the TriFlex cannot perform, including certain conveyor movements and center assembly merging.
Oxbo argues that the declarations are late-disclosed expert reports. Foley calls himself a
retained expert and has created the animations. Dkt. 126, ¶¶ 1, 5 (“I was asked to prepare
computer-animated graphics of the Tri-Flex, including depictions of the merger head
assemblies when they are moved from the extended use position to the retracted travel
position and of certain operations involving the conveyors on these assemblies, which the TriFlex is not capable of performing.”). Rottier and Kelber purport to confirm that Foley’s
animations are accurate. Dkt. 128, ¶¶ 5-9 and Dkt. 129, ¶ 10.
The court can consider and decide the relevant conveyor movement issues without
referring to these submissions, because the information is elsewhere in the record, including
in H&S’s expert reports. The court will deny the motion as moot for purposes of summary
judgment. The parties should inform the court whether the controversy needs to be resolved
before trial.

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4. Oxbo’s motion to strike portions of H&S’s summary judgment briefing
regarding equitable defenses
Oxbo moves to strike portions of H&S’s summary judgment briefing regarding H&S’s
equitable defenses. Dkt. 222. Oxbo served H&S with an interrogatory seeking “the factual
and legal bases for Defendant’s affirmative defenses that Plaintiff’s claim is barred by the
doctrine of laches, equitable estoppel, acquiescence, implied license, unclean hands, and/or
prosecution history estoppel.” Dkt. 223-1, at 11. H&S answered the interrogatory and
supplemented its answer three times. See Dkt. 223-2; Dkt. 223-3; Dkt. 223-4; Dkt. 223-5.
Now, according to Oxbo, H&S has argued new facts to support its equitable defenses in its
summary judgment briefing. Dkt. 222, at 3-4.
At summary judgment, H&S contends that (1) its decision not to file a declaratory
judgment action against Oxbo satisfies the reliance element of equitable estoppel and laches;
(2) increased Tri-Flex sales and approximately $60,000 in patent procurement expenses
satisfy the harm element of equitable estoppel and laches; (3) Oxbo’s internal discussions
regarding potential infringement indicate that Oxbo misled H&S; (4) its equitable estoppel
defense applies to all four patents-in-suit; and (5) Oxbo’s suit is barred by unclean hands
because the litigation is a sham. But H&S did not include these facts in response to Oxbo’s
contention interrogatory on the affirmative defenses.
These additional bases were untimely disclosed. Oxbo was entitled to learn the bases
for H&S’s equitable defenses through contention interrogatories, which H&S had a duty to
timely supplement. And H&S’s failure to fully disclose the factual bases for its equitable
defenses inhibits Oxbo’s ability to challenge those defenses at summary judgment. It is not

8

enough to disclose the underlying factual information during discovery (such as during a
deposition) without disclosing the intent to use those facts to support an equitable defense.
Although the court will grant Oxbo’s motion, the court will also evaluate these new
bases on their merits. As explained below, even with the untimely disclosed factual bases,
H&S’s equitable defenses fail. See infra Section C.
With the evidentiary motions decided, the court turns to the merits.
B. Basic legal principles
In patent cases, as in civil cases generally, summary judgment is appropriate if a
moving party “shows that there is no genuine dispute as to any material fact and the movant
is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). When, as here, the parties
have filed cross-motions for summary judgment, the court “look[s] to the burden of proof
that each party would bear on an issue of trial; [and] then require[s] that party to go beyond
the pleadings and affirmatively to establish a genuine issue of material fact.” Santaella v.
Metro. Life Ins. Co., 123 F.3d 456, 461 (7th Cir. 1997). If either party “fails to make a
showing sufficient to establish the existence of an element essential to that party’s case, and
on which that party will bear the burden at trial,” summary judgment against that party is
appropriate. Mid Am. Title Co. v. Kirk, 59 F.3d 719, 721 (7th Cir. 1995) (quoting Tatalovich v.
City of Superior, 904 F.2d 1135, 1139 (7th Cir. 1990)). “As with any summary judgment
motion, this [c]ourt reviews these cross-motions ‘construing all facts, and drawing all
reasonable inferences from those facts, in favor of . . . the non-moving party.’” Wis. Cent., Ltd.
v. Shannon, 539 F.3d 751, 756 (7th Cir. 2008) (quoting Auto. Mechs. Local 701 Welfare &
Pension Funds v. Vanguard Car Rental USA, Inc., 502 F.3d 740, 748 (7th Cir. 2007)). “Only
disputes over facts that might affect the outcome of the suit under the governing law will

9

properly preclude summary judgment.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986).
The court applies a two-step analysis to evaluate both infringement and invalidity;
each begins with claim construction. See, e.g., Kemco Sales, Inc. v. Control Papers Co., 208 F.3d
1352, 1359 (Fed. Cir. 2000) (infringement); Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc.,
183 F.3d 1347, 1353 (Fed. Cir. 1999) (invalidity). In deciding motions for summary
judgment in a patent case, the court bears in mind that defendants have the burden to show
invalidity by clear and convincing evidence and that plaintiffs have the burden to prove
infringement to a preponderance of the evidence. High Point Design LLC v. Buyer’s Direct, Inc.,
621 F. App’x 632, 638, 640 (Fed. Cir. 2015).
“The purpose of claim construction is to ‘determin[e] the meaning and scope of the
patent claims asserted to be infringed.’” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521
F.3d 1351, 1360 (Fed. Cir. 2008) (quoting Markman v. Westview Instruments, Inc., 52 F.3d
967, 976 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996)). A patent’s claims define the scope of
the invention, and thus the scope of the patentee’s right to exclude others from practicing
that invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).
Claim language receives its “ordinary and customary meaning,” which “is the meaning that
the term would have to a person of ordinary skill in the art in question at the time of the
invention, i.e., as of the effective filing date of the patent application.” Id. at 1313.
Sometimes “the ordinary meaning of claim language . . . may be readily apparent even to lay
judges, and claim construction in such cases involves little more than the application of the
widely accepted meaning of commonly understood words.” Id. at 1314. But sometimes the
ordinary and customary meaning of a claim term is not manifestly clear. If that term is

10

disputed and material to an issue in the case, the court must construe that term to establish
its meaning.
When construing a disputed term, the court must start with the claim language itself,
which provides substantial guidance. Id. at 1314-15. But the court reads the claim language
“not only in the context of the particular claim in which the disputed term appears, but in
the context of the entire patent, including the specification” and its prosecution history. Id. at
1313. The patent and its prosecution history, related patents and their prosecution histories,
and the prior art that is cited or incorporated by reference in the patent-in-suit and its
prosecution history constitute the patent’s intrinsic evidence. Id. at 1314. Of these sources,
“the specification ‘is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.’” Id. at 1315
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
The court may also consider extrinsic evidence, which refers to all other types of
evidence, including inventor testimony, expert testimony, documentary evidence of how the
patentee and alleged infringer have used the claim terms, dictionaries, treatises, and other
similar sources. Id. at 1317-18. However, extrinsic evidence is less reliable and less useful in
claim construction than the patent and its prosecution history. Id. Intrinsic evidence trumps
any extrinsic evidence that would contradict it. Id. at 1314-16.
For summary judgment purposes, Oxbo accepts H&S’s contention that a person of
ordinary skill in the art is “someone with a Bachelor of Science in Mechanical Engineering or
an equivalent degree, and having approximately 3 years [sic] experience designing agricultural
equipment of associated/equivalent components or systems. Alternatively, a person of
ordinary skill may lack the above-referenced engineering bachelor degree but may have at

11

least five years combined education/experience related to the design, construction,
modification

and/or

fabrication

of

agricultural

equipment

of

associated/equivalent

components or systems.” Dkt. 116, at 11 n.3. The court will also accept it.
C. H&S’s equitable defenses
Oxbo moves for summary judgment on all of the equitable defenses that H&S
asserted in its responsive pleading and maintained since then: equitable estoppel, laches,
implied license, and unclean hands. Dkt. 119. For its part, H&S moves for summary
judgment on only its equitable estoppel defense. H&S contends that disputes of fact preclude
summary judgment on its laches and unclean hands defenses. H&S abandons its implied
license defense. The facts material to H&S’s equitable defenses are not genuinely disputed, so
the equitable defenses are amenable to resolution on the parties’ motions for summary
judgment.
1. Material facts
In mid-2011, H&S made prototype Tri-Flex mergers available for demonstration to
customers. So DS Farms, one of H&S’s customers, tested one of the Tri-Flex prototypes.
Soon after, an Oxbo salesperson, Doug Anderson, visited the farm to try to sell an Oxbo
triple head merger. When the owners of DS Farms told Anderson that they intended to buy a
Tri-Flex, Anderson said that Oxbo has patent rights and that H&S had copied Oxbo. One of
the farm’s owners, Matt Danzinger, relayed Anderson’s comments to H&S. Anderson does
not recall any of this, and he does not believe that he said anything about Oxbo’s patent
rights. And neither farm owner recalls exactly what Anderson said. But the details are not
material: all that matters is that H&S perceived the incident as an accusation of infringement
and that it prompted what happened next.

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After hearing about the incident, H&S’s president at the time, Chris Heikenen, called
Paul Dow, an Oxbo vice president and part-owner, sometime in August 2011. Dow recalls
that Heikenen told him that an Oxbo salesperson had told someone that Oxbo was going to
sue H&S for infringement. Dow apologized for the salesperson’s statements, told Heikenen
that no one at Oxbo should be making allegations of infringement of Oxbo’s patents, and
said that he would see that it did not happen again. Dkt. 100 (Dow Dep. 232:13-239:13).
Heikenen’s recollection is substantially consistent with Dow’s, although Heikenen adds two
details. First, according to Heikenen, he warned Dow that if allegations of infringement
persisted, H&S would file a declaratory judgment action, which would cause both parties to
spend a great deal on legal fees. Dkt. 103 (Heikenen Dep. 215:25-216:20). Second,
Heikenen says that at the end of the call, they agreed to call each other rather than spending
money on attorneys right away. Id. at 216:16-25. As Heikenen understood the conversation,
Dow said that he would call H&S before filing suit if an infringement issue arose. Id. at
215:21-25. (Dow did not recall these details, but on Oxbo’s motion for summary judgment,
the court views the facts in the light most favorable to H&S.)
Both Dow and Heikenen agree that during the call Dow said nothing—one way or the
other—about whether H&S infringed any Oxbo patent. Nor did Dow promise that Oxbo
would not sue H&S for patent infringement. Dkt. 176, ¶ 30. After the August 2011 phone
conversation, no one from Oxbo contacted H&S about patent infringement concerns before
Oxbo filed this suit in 2015.
2. Equitable estoppel
Both sides move for summary judgment on H&S’s equitable estoppel defense. To
prevail on this defense, H&S must adduce evidence showing that: (1) Oxbo, “through

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misleading conduct, led the alleged infringer to reasonably believe that the patentee did not
intend to enforce its patent against the infringer;” (2) H&S “relied on that conduct;” and
(3) as a result of that reliance, H&S “would be materially prejudiced if [Oxbo] were
permitted to proceed with its charge of infringement.” Aspex Eyewear Inc. v. Clariti Eyewear,
Inc., 605 F.3d 1305, 1310 (Fed. Cir. 2010). “Misleading ‘conduct’ may include specific
statements, action, inaction, or silence when there was an obligation to speak.” Id. The court
considers all evidence relevant to the equities. Id.
H&S contends that Dow’s August 2011 “assurances” followed by four years of silence
led H&S to reasonably believe that Oxbo would not enforce its patent rights against it. H&S
contends that Oxbo accused H&S of infringement, profusely apologized and promised that it
would not happen again, then allowed H&S to divert “the vast majority of its marketing and
engineering resources away from its core products to focus on” the Tri-Flex, and “flipped” on
H&S after it began experiencing success in the market. Dkt. 158, at 3. But H&S’s
characterization is not supported by the evidence.
We’ll start with the first part of the story, the purported accusation. H&S contends
that “there is no dispute that Oxbo accused the H&S Tri-Flex of patent infringement in
2011.” Id. at 7. But that is nowhere supported in the record. Dow, on behalf of Oxbo, did not
make any statements about whether H&S infringed. And the comments by Anderson, the
Oxbo salesperson (even if those could be established by some admissible evidence), cannot
constitute an accusation of infringement because, as Dow made clear to Heikenen, the
salesperson was not authorized to speak for Oxbo on such matters.
H&S also points to internal communications between Dow and Oxbo management,
including Oxbo’s CEO Gary Stitch, in which Dow indicated that the Tri-Flex was “very

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similar” to Oxbo’s models and that it may infringe the ’052 patent. H&S contends that this
conduct makes Dow’s August 2011 conduct “particularly misleading.” Id. at 8. H&S argues
that Oxbo’s refusal to tell H&S that it believed that it infringed—a point which cuts
decisively against H&S’s contention that Oxbo did accuse H&S of infringement—“certainly
gives rise to an inference that any claim against H&S was abandoned.” Id. at 9. But both
sides agree that Dow made no representations to Heikenen about whether Oxbo thought
H&S infringed Oxbo’s patents. And Heikenen was careful not to ask that question: Heikenen
did not believe that he would get an assurance of non-infringement, and he would be in a
“very difficult situation” if Dow had said that yes, H&S infringed. Dkt. 295 (Transcript of
hearing on Oxbo’s motion for sanctions, at 19:8-18). So contrary to H&S’s contention, Dow
offered no assurances that Oxbo would not enforce its rights. A fairer description of the call
would be that Heikenen hectored Dow into an apology with threat of litigation started by
H&S, and that both sides studiously avoided discussing Oxbo’s actual view of whether the
Tri-Flex infringed. The bottom line is that the call with Dow gave Heikenen no reason to
believe that Oxbo had decided not to enforce its patent rights against H&S.
Without a clear statement from Oxbo regarding infringement one way or another,
H&S cannot rely on the four years of silence to support its equitable estoppel defense. H&S
cites no case in which silence alone, unaccompanied by a clear statement of infringement, was
sufficient to establish an equitable estoppel defense. “[I]ntentionally misleading silence arises
when a patentee ‘threatened immediate or vigorous enforcement of its patent rights but then
did nothing for an unreasonably long time.’” Aspex, 605 F.3d at 1310 (quoting Meyers v. Asics
Corp., 974 F.2d 1304, 1309 (Fed. Cir. 1992)). Silence alone cannot give rise to estoppel. Id.
at 1311. In Aspex, the court determined that the patentee was equitably estopped from

15

asserting infringement after: (1) the patentee threatened an infringement suit, (2) the accused
infringer responded that its products did not infringe, (3) the patentee did not say anything
in response, and (4) three years went by before the patentee filed suit. Id. at 1310. Those are
not the facts here.
So, at best, H&S might be able to show that Dow broke his promise to call Heikenen
before filing suit. But whether Dow actually made such a promise is not material, because the
promise is not specific enough to induce H&S’s reasonable reliance. Nothing in that promise
would have prevented Oxbo from suing when it did, so long as the suit was preceded by a
warning telephone call. H&S pressed on with the development and sales of the Tri-Flex
without any assurance that Oxbo would not sue for infringement, at a time of Oxbo’s own
choosing. Based on the undisputed material facts, H&S cannot establish misleading conduct
by Oxbo that gave rise to a reasonable belief that Oxbo would not enforce its patent rights.
Oxbo is entitled to summary judgment on H&S’s equitable estoppel defense.
3. Laches
H&S’s laches defense is foreclosed by a U.S. Supreme Court decision issued during
this litigation. Because Congress has determined “that a patentee may recover damages for
any infringement committed within six years of the filing of the claim,” laches cannot be
invoked to bar damages incurred within that period. SCA Hygiene Prods. Aktiebolag v. First
Quality Baby Prods., LLC, 137 S. Ct. 954, 961, 967 (2017). “Laches cannot be interposed as a
defense against damages where the infringement occurred within the period prescribed by [35
U.S.C.] § 286.” Id. at 967. It is undisputed that the longest possible period of delay at issue
here is four years. So H&S’s laches defense fails as a matter of law.

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4. Unclean hands
Finally, H&S asserts the defense of unclean hands, contending that Oxbo’s suit is
barred because it knowingly asserted invalid or not-infringed patents supported by “everchanging” claim construction positions. Dkt. 158, at 18. H&S’s arguments here—in addition
to being untimely disclosed—are the same as its arguments on the merits: the Beougher
reference anticipates the ’929 patent; Oxbo’s understanding of “continuous line of material
pickup” is baseless; Oxbo’s understanding of “operable in either direction independent of the
other[s]” is baseless; and the ’052 patent is invalid in view of Oxbo’s 310 merger manuals
that Oxbo did not submit to the Patent Office during prosecution.
As explained below, Oxbo’s claims have more than arguable merit: they are
substantially successful. H&S’s “sham litigation” theory finds no support in the record, and
Oxbo is entitled to summary judgment on H&S’s unclean hands defense.
D. The triple head patents
1. Introduction
The triple head patents—the ’929 patent, the ’739 patent, and the ’488 patent—
describe and claim a windrow merger apparatus and a method of merging windrows with
three independent pickup assemblies arranged side-by-side in a single line. The ’739 patent is
a continuation of the ’929 patent, and the ’488 patent is a continuation of the ’739 patent.
So the three triple head patents at issue here share a common specification, and they can be
analyzed together for most purposes.
Each pickup and transfer assembly includes a pickup head with rotating tines, to lift
crop material from the field, and an associated conveyor just behind the rotating pickup

17

head, to move the crop material to the side of the merger where it is deposited into windrows.
The overall configuration is shown in this drawing:

’929 patent, Figure 1.
One advantage of the triple head design over the prior art is that it allows for merging
a wider swath, which means that a large field can be merged quickly. Because the three heads
are arranged side-by-side in a line, the merger can produce a single, large windrow, which
would not be possible if the heads were overlapping or offset. A second advantage is that the
triple head design is flexible. The conveyors on the three heads are independently operable,
so that the merger can be configured to produce a single large windrow on either side, or two
smaller windrows on each side. The two outer heads are retractable, which allows the merger
to travel over public roads:

18

’929 patent, Figure 5. The outer heads can be retracted independently, and the other heads
can operate while one or both of the outer heads are retracted. The various operating
configurations provide flexibility “so that multiple merging configurations and operations are
possible.” ’929 patent, 3:14-15.
Oxbo asserts six independent and nine dependent claims from the triple head
patents. 1 Claim 1 of the ’488 patent is a representative independent claim:
A windrow merger apparatus configured for travel in a
first direction, comprising:
a frame;
a first pickup assembly supported by the frame, the first pickup
assembly including a first pickup head configured to pick up and
transfer material to an associated first belt conveyor arranged to
convey material in a direction transverse to the first direction of
travel and driven by a first motor;

1

Oxbo does not move for summary judgment of infringement of claim 32 of the ’929 patent
or claim 11 of the ’488 patent, but H&S moves for summary judgment of non-infringement
of those claims.

19

a second pickup assembly supported by the frame, the second
pickup assembly including a second pickup head configured to
pick up and transfer material to an associated second belt
conveyor arranged to convey material in a direction transverse to
the first direction of travel and driven by a second motor; and
a third pickup assembly supported by the frame, the third
pickup assembly including a third pickup head configured to
pick up and transfer material to an associated third belt
conveyor arranged to convey material in a direction transverse to
the first direction of travel and driven by a third motor;
wherein at least two of the pickup assemblies are foldable
between an extended position and a retracted position, each of
the first, second, and third pickup assemblies being aligned side
by side when each of the pickup assemblies is positioned in the
extended position such that the first, second, and third pickup
assemblies provide a laterally aligned unobstructed continuous
line of material pickup able to provide transport of all material
transferred to the conveyors to either end of the aligned
conveyors; and wherein the first pickup assembly and the third
pickup assembly are raised in the retracted position.
’488 patent, 10:32-64.
2. Claim construction
The parties identify three claim construction issues that arise from the triple head
patents. 2
a. “conveyor”
The parties dispute the meaning of the term “conveyor,” which appears throughout
the asserted claims of the triple head patents, although often the claims specify that the
conveyor is a belt. The parties dispute the term as it appears in claim 44 of the ’929 patent.
Oxbo contends that a conveyor is “an apparatus having a flexible, continuous loop of
2

The parties initially presented a fourth claim construction issue: “each of the first, second
and third belt conveyors is independently driven.” But H&S appears to have abandoned that
issue. Accordingly, the court will not construe the term and will give it its plain and ordinary
meaning.

20

material.” H&S presses a broader construction: “an apparatus that moves material.” The
dispute is not material to infringement because the Tri-Flex has belt-type conveyors that
would meet either definition. But the point matters for H&S’s validity case. H&S contends
that the Beougher reference anticipates claim 44 of the ’929 patent. But it would do so only
if “conveyor” includes an auger, which is what moves the material in Beougher.
The court will begin by rejecting H&S’s proposed definition as overly broad because it
would include any device for moving material, even a shovel or a wheelbarrow. H&S relies
primarily on the opinion of its expert, Ralph Shirley, who opines that H&S’s definition is
how one of ordinary skill in the art would understand the term. But Shirley’s one-sentence
analysis of “conveyor” is merely conclusory, Dkt. 106-3, ¶ 33, as PTAB also concluded,
Dkt. 235-1, at 9-10. The court gives no credit to Shirley’s ipse dixit that augers are conveyors
simply because they move something.
But the court is not entirely persuaded by Oxbo’s argument either. Oxbo’s expert,
Chaplin, opines that a person of ordinary skill in the art would understand that the ’929
patent relates to a windrow merger and that, consequently, one would understand that a
“conveyor” as used in the ’929 patent must be a mechanism capable of moving grass or hay
into windrows. Dkt. 109, ¶ 53. So far so good. But then the argument takes a questionable
step. Chaplin contends that a “conveyor” must be able to move forage without damaging it
and without clogging. Id. Chaplin says that “[a] continuous loop of flexible material as
described in the patent will move alfalfa with minimal damage. That would not be true for
any ‘apparatus that moves material.’” Id. And, he concludes, because an auger would damage
alfalfa and would clog if it attempted to move wet forage, one would not understand
“conveyor” to include augers. Id. It may well be that a belt-type conveyor is best suited to this

21

application, whereas an auger would pose problems. But claim terms are not limited to those
mechanisms that work best in the context of the invention. Chaplin here commits a variation
on a basic claim construction error: importing the features of the preferred embodiments into
the claims as additional limitations. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913
(Fed. Cir. 2004) (“[I]t is improper to read limitations from a preferred embodiment described
in the specification—even if it is the only embodiment—into the claims absent a clear
indication in the intrinsic record that the patentee intended the claims to be so limited.”).
Although the court is not fully persuaded by Chaplin’s analysis, there are other
reasons to conclude that “conveyor” as used in the ’929 patent does not include auger.
Nowhere does the specification offer a special definition of conveyor. And the specification
does not identify the belt conveyor as a preferred embodiment. Rather, virtually every
reference to conveyor in the specification assumes that the conveyor is a belt-type conveyor.
The patents disclose and claim improvements to the “material transport system,” which is
part of the pickup assembly. One example is the belt-tensioning system that uses a tensioning
pulley mounted below and between the end pulleys on the belt. ’929 patent, 7:61-68, and
claims 6, 17. The advantage over the usual technique of putting the tensioning pulley at the
end of the conveyor is that having a “fixed end” allows the conveyor on one pickup assembly
to be placed closer to the conveyor on the adjacent assembly. ’929 patent, 8:46-50. The point
is that all of the proposed improvements to the material transport system would be utterly
inapplicable to a system that used augers. The claims directed to those improvements, claims
6 and 17, would be meaningless as applied to an auger. One of skill in the art reading the
specification would not interpret the term “conveyor” to include augers, because too much of

22

the patent would be rendered meaningless. The court will construe conveyor as Oxbo
proposes.
One last point: as explained below, there are multiple reasons why Beougher does not
anticipate claim 44 of the ’929 patent. So even if “conveyer” were construed to include
augers, H&S’s challenge to the validity of claim 44 would fail.
b. “continuous line of material pickup”
The parties dispute the meaning of the term “continuous line of material pickup,”
which appears in claim 44 of the ’929 patent, claim 1 of the ’739 patent, and claims 1 and 911 of the ’488 patent. Oxbo contends that the term does not require judicial construction
because the term itself is unambiguous. H&S contends that the court must construe the term
to mean “a pickup face uninterrupted by gaps.” As H&S’s expert explains it, this limitation
requires that the tines on the pickup heads be evenly spaced across the full width of the
merger. The dispute is material to infringement, because H&S contends that the Tri-Flex has
gaps between its pickup assemblies and between the tines on the pickup heads where the
motors are recessed.
The court begins with the claim language. The disputed term appears in this clause of
claim 1 of the ’488 patent:
wherein at least two of the pickup assemblies are foldable
between an extended position and a retracted position, each of
the first, second, and third pickup assemblies being aligned side
by side when each of the pickup assemblies is positioned in the
extended position such that the first, second, and third pickup
assemblies provide a laterally aligned unobstructed continuous
line of material pickup able to provide transport of all material
transferred to the conveyors to either end of the aligned
conveyors; and wherein the first pickup assembly and the third
pickup assembly are raised in the retracted position.
(emphasis added). Similar language appears in other claims of the other triple head patents.

23

The triple head specification makes clear that one objective of the invention was to
keep the pickup assemblies close together so that the “face of the merger is unobstructed and
continuous.” ’929 patent, 7:28. The purpose was to “provide[] improved pickup while
achieving a greater width per pass than has been seen heretofore.” ’929 patent, 7:29-30. As
Oxbo explains, the claim limitation was added during prosecution to overcome a prior art
rejection based on U.S. Patent No. 6,205,757 to Dow, U.S. Patent No. 4,658,572 to Honey,
and U.S. Patent No. 4,184,314 to Hobbs. These references disclose folding multiple head
implements. But these references also have substantial spaces between heads, and the
patentee overcame the rejection by adding the unobstructed continuous line of material pickup
limitation. Dkt. 206, ¶¶ 233-240.
There are two problems with H&S’s proposed construction. First, H&S construes the
term as a description of a structure rather than a function. H&S’s expert Shirley summarily
opines that the term refers to the pickup heads and not to the crop material. Dkt. 106-3,
¶¶ 35-37. According to Shirley, “material pickup” clearly refers to a structure, where “pickup
material” would refer to the crop. Id. ¶ 36. But he does not explain the rationale for this
distinction or cite evidence to support it. Shirley’s opinion is hard to square with the claim
language itself. Taking claim 1 of the ’488 patent as a representative example, the claim
describes the arrangement of the three pickup assemblies as “aligned side by side” such that
they “provide a laterally aligned unobstructed continuous line of material pickup.” Aligned
side by side is a structural description, and the verb “provide” suggests that the laterally
aligned unobstructed continuous line of material pickup is the result. There is no “continuous
line” that is part of the merger’s structure; it is the function served by the arrangement of the
pickup heads.

24

The second and more fundamental problem with H&S’s proposed construction is that
the ’929 patent contemplates that there will be some gaps between the pickup heads, and
that the times will not be evenly spaced across the full width of the merger. As the
specification explains the importance of having the pickup heads close together:
With the hydraulic motor recessed, the ends of the heads are
positioned substantially to abut one another. No obstruction
due to drive mechanisms, support wheels or other mechanisms
inserted intermediate the adjacent heads is required as was
typical with previous merger devices. Therefore, the end tines of
one head are close to the tines of another head so that there are
no large gaps between the heads as occur with previous merger
devices, which had motors and other equipment between heads.
’929 patent, 6:63-7:5 (emphasis added) (reference numbers omitted). All of the figures that
show the pickup assemblies extended show some gap between the pickup heads. See, e.g., ’929
patent, Figure 14. So H&S’s proposed construction—which essentially requires that the tines
of the pickup heads be evenly spaced across the full width of the merger—would exclude the
embodiments depicted and discussed in the specification. Such a construction is rarely, if
ever, correct. MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir.
2007).
“A patent applicant is free to recite features of an apparatus either structurally or
functionally.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); see also MPEP
§ 2173.05(g) (9th ed. Nov. 2015) (“There is nothing inherently wrong with defining some
part of an invention in functional terms,” and “[f]unctional language may also be employed
to limit the claims without using the means-plus-function format.”). Here, it is plain that
Oxbo has chosen the functional approach. Rather than claim an unobstructed pickup face,
Oxbo claimed laterally aligned pickup assemblies that provide continuous material pickup.
The language is not dissimilar from the claim language at issue in Schreiber; there, the claims

25

were directed to a spout (the structure) that “allow[ed] several kernels of popped popcorn to
pass through at the same time.” 128 F.3d at 1478.
The extrinsic evidence, particularly the Chaplin report, also supports giving the term
its plain and ordinary functional meaning. Dkt. 109, ¶ 56. The specification explains that the
prior art did not provide a continuous line of material pickup because previous mergers left
strips of material behind as it traveled. Chaplin explains that the ’929 patent addresses that
problem because the claimed pickup face “engages the material to be windrowed” without
obstruction. Id. An “unobstructed pickup face” is not necessarily one “free of space between
the pickup assemblies,” so long as it provides for a continuous line of material pickup. “When
considering the whole claim term, it would be evident to a POSA that the claim term
addresses the capability of the pickup assemblies to provide a continuous line of material
pickup regardless of whether there are any gaps between the heads.” Id. ¶ 57. The court
credits Chaplin’s analysis. Shirley’s conclusory report adopts a poorly explained structural
construction that, for reasons explained above, will go uncredited. So it cannot create a
genuine dispute of fact that would be material to the court’s claim construction decision.
“Conclusory expert assertions cannot raise triable issues of material fact on summary
judgment.” Sitrick v. Dreamworks, LLC, 516 F.3d 993, 1001 (Fed. Cir. 2008).
H&S has not convinced the court that the term requires judicial construction. 3 The
claim language itself is sufficiently clear to convey the term’s meaning. The court is “not (and

3

The term “continuous line of material pickup” is not a term of art in the agriculture
industry. H&S argues that because the inventors had not heard the phrase “continuous line
of material pickup” before filing for the ’929 patent, it cannot have a plain and ordinary
meaning. See Dkt. 206, ¶ 218. This argument is underdeveloped and thus waived. But it is
not at all persuasive anyway: an inventor can use plain English to describe his invention, even
if in doing so he uses phrases that do not have specialized meaning in his art.

26

should not be) required to construe every limitation present in a patent’s asserted claims.” O2
Micro, 521 F.3d at 1362. It construes a claim only where doing so would clarify the meaning
and scope of the term. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir.
1997) (“Claim construction is a matter of resolution of disputed meanings and technical
scope, to clarify and when necessary to explain what the patentee covered by the claims, for
use in the determination of infringement. It is not an obligatory exercise in redundancy.”).
Accordingly, the court will decline to provide further judicial construction of the term
“continuous line of material pickup.”
c. “each of the first, second and third belt conveyors being operable in
either direction independently of the other belt conveyors”
Finally, the parties dispute the meaning of the term “each of the first, second and
third belt conveyors being operable in either direction independently of the other belt
conveyors.” The term appears in claim 1 of the ’739 patent. Oxbo advocates for the term’s
plain and ordinary meaning; H&S proposes that it means “movement of each conveyor in
either direction is not influenced by movement of the other two conveyors.” H&S’s proposed
construction is relevant to its non-infringement position, which is that the movement of the
conveyors on the Tri-Flex is not fully independent. For example, the Tri-Flex is programmed
so that an outer conveyor cannot be moving material toward the center if the center conveyor
is either off or set to move material out toward that outer conveyor. Such configurations
would cause hay to pile up between those two pickup assemblies.
The ’739 patent claims a windrow merger apparatus comprising three pickup
assemblies, each of which includes a belt conveyor that moves material “in a direction
transverse to the first direction of travel.” ’739 patent, 10:41-42. Each belt conveyor is driven

27

by its own motor. And each belt conveyor is “operable in either direction independently of
the other belt conveyors.” ’739 patent, 10:60-61. By its plain terms, three separate motors
drive three separate belt conveyors, one on each of the three merger heads. And each motor
drives its belt conveyor independent of the other two, either to the left or to the right.
The specification provides additional guidance: the belt conveyors are operable in
both directions, independently of one another, “so that multiple merging configurations and
operations are possible.” ’929 patent, 3:13-15. The invention is designed to offer “flexibility
with respect to conveyor travel direction as well as with respect to the number of heads
operating, so that multiple configurations for different merging needs and operation are
possible.” ’929 patent, 5:7-10. The conveyors are reversible, to transport material in either
direction. ’929 patent, 5:34-35.
With such flexibility, it is possible to direct material to the outer
ends of the pickup and transport assemblies or to either of the
ends of transport assembly depending on the configuration of
the merger and the needs of the merging apparatus.
’929 patent, 5:38-42 (reference numbers omitted). For example, an operator can drive two
conveyors in one direction and the third conveyor in the opposite direction, as depicted in
Figure 24. ’929 patent, 9:65-67.
Both sides seem to agree that one of skill in the art would readily understand this
term. Chaplin opines that a person of ordinary skill in the art would afford the term its plain
and ordinary meaning: “[t]he claim simply requires that each of the three belt conveyors is
operable in either direction independent of the other belt conveyors.” Dkt. 109, ¶ 83.
Chaplin explains that the specification is clear that each conveyor is operable in both
directions, and that each conveyor may operate in either direction when one of the outer

28

assemblies is retracted. Shirley concedes that the term “would be readily understood by a
person of ordinary skill in the art.” Dkt. 321-4, ¶¶ 31-38.
The claim language, informed by the specification, requires that each of the three
conveyors can be operated or not, and in either direction. But the claim language does not
require that the conveyors be operable in every possible configuration, even those that would
cause material to pile up between conveyors so that the machine would fail produce a
windrow. The term is readily understandable and the court will decline to construe it.
3. Infringement
At step two of the infringement analysis, the court must compare the properly
construed claims to the accused device, to determine as a matter of fact whether every claim
element is present, either literally or by a substantial equivalent, in the accused device. When
the relevant structure and operation of the accused device is not genuinely disputed, the
question of infringement turns on claim construction and is amenable to resolution on
summary judgment. Gen. Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 983 (Fed. Cir. 1997).
H&S concedes that the Tri-Flex meets many of the limitations of the asserted claims:
it is a windrow merger apparatus; it has a frame that supports three pickup and transfer
assemblies; the outer assemblies fold between an extended use position and a retracted travel
position; the pickup assemblies are aligned side by side when extended. And regardless of
how the court construes “conveyor,” H&S concedes that the Tri-Flex has one on each of its
three pickup assemblies. H&S contests only four claim elements. The court will address each
of these disputed claim elements and then summarize its rulings on the motions for summary
judgment on the triple head patents.

29

a. Merging when the left and right assemblies are retracted
H&S contends that the Tri-Flex cannot merge with both outer pickup assemblies
retracted and that, as a result, it does not infringe claim 28 or dependent claim 32 of the ’929
patent. These claims require that the accused product be able to accomplish merger
operations “when the left and right assemblies are positioned in the retracted travel position.”
’929 patent, 12:45-46.
This issue is disputed. H&S’s expert, Shirley, initially opined that the Tri-Flex cannot
merge with both outer assemblies retracted, “based upon [his] review and understanding of
materials pertaining to the Tri-Flex Mergers, inspection of the Tri-Flex Mergers and
discussions with H&S engineers regarding the Tri-Flex Mergers.” Dkt. 107, at 17. When the
outer assemblies move into their retracted travel position, the center assembly automatically
lifts up off the ground (its retracted travel position), preventing it from merging. “[W]hen the
center assembly is raised off the ground, the tines are not capable of picking up a cut swath of
material, such as alfalfa, for the merger to accomplish merger operations.” Id. at 19-20.
Oxbo responded that the operator can lower the center assembly and return it to its
extended use position after it automatically raises, thus allowing it to merge while the outer
assemblies remain retracted. Oxbo appears to have performed a field test that proves just
that. See Dkt. 120-47; Dkt. 120-48; Dkt. 199-14 (videos showing the center assembly
merging while the outer assemblies are fully retracted and showing the center assembly being
raised and lowered while the outer assemblies are retracted).
But after the initial expert work, there was a further development: four new prototype
Tri-Flex mergers with touchscreen controls allowed merging with the outer assemblies
retracted as a result of a software glitch. Dkt. 252. Software updates in the new models were

30

intended to allow operators to move the center head up and down while all three heads are
extended to avoid obstacles while merging. But that software change “inadvertently” allowed
the operator to move the center head up and down while the outer heads are retracted. H&S
concedes that with that software, the Tri-Flex infringes the ’929 patent. But H&S assures the
court and Oxbo that it has reprogrammed the offending machines to avoid infringement by
any Tri-Flex models. H&S contends that Oxbo’s video evidence is of these malfunctioning
prototypes, not the properly programmed production model Tri-Flex mergers. H&S
maintains that the other Tri-Flex mergers (the “push-button” models) are not able to operate
this way.
As discussed above, Oxbo moved to strike H&S’s “new non-infringement position”
that its touchscreen models and push-button models do not operate identically. Dkt. 291.
H&S representatives had previously testified that the touchscreen interface does not affect
the way that the Tri-Flex operates. Dkt. 102 (Heikenen Dep. 80:2-4, 82:6-10) and Dkt. 105
(Rottier Dep. 39:22-40:1). The court denied that motion.
At this point, there is a genuine factual dispute over which Tri-Flex models, if any, can
merge with the outer pickup assemblies retracted.
b. “continuous line of material pickup”
H&S concedes that when all three pickup assemblies are extended and merging, the
Tri-Flex “gathers most of the material in the field within the width of the merger.” Dkt. 176,
¶ 373. And Oxbo has adduced videos that show that the Tri-Flex does not leave strips of
material in its wake. Dkt. 120-41 and Dkt. 199-5. Another video shows that the Tri-Flex
picks up material across the entire width of its pickup heads. Dkt. 199-4. Thus, under the

31

court’s analysis of the term “continuous line of material pickup,” Oxbo has shown that the
Tri-Flex meets that limitation.
To rebut Oxbo’s showing, H&S offers Shirley’s opinions on the issue, but they are
speculative at best. Shirley states that each of the Tri-Flex pickup assemblies has a gap at the
center of its head (where the motors are recessed), and the Tri-Flex does not have star wheels
between its pickup assemblies. He states that the gaps are “not insignificant.” Dkt. 107, at
25. Shirley reasons that because the pickup tines are spaced between two and two-and-aquarter inches apart, a five-inch gap at the center of each merger head and a three-inch gap
between each merger head will likely pose a problem. Id. at 28 (“If a gap of about 5 inches
provided adequate efficiency to be considered a continuous line of material pickup, then
manufacturers would save the cost and complexity by providing spacing of tines at about 5
inches instead of providing pickup tines with spacing of 2 to 2 ¼ inches as has been common
among manufacturers for several decades.”). But he opines only that the Tri-Flex “may leave a
stripe of crop in the field after the merger passes, which is the very problem that the ’929
Patent and its star wheel purport to solve.” Id. at 26 (emphasis added). He does not state
that the Tri-Flex actually leaves material behind.
To rebut Oxbo’s direct video evidence of the Tri-Flex in operation, H&S argues that
Oxbo’s videos are “blurry and not close enough for a determination of the alleged fact.”
Dkt. 206, ¶ 146. But the court has reviewed the videos, and they show that the Tri-Flex does
not leave strips of material in its wake.
H&S also adduces a couple of Tri-Flex engineering documents that note “gap
increases between heads causing missed material due to tank pressure variations from
tractor,” Dkt. 231-1, and “[n]eed to try to bridge gap between cross conveyor belts ([t]o [sic]

32

much light crop falls to the ground and leaves two nice trails),” Dkt. 231-2. But these
documents list observed problems to be fixed, and H&S successfully fixed them. H&S
employees testified that H&S fixed the listed issues—identified in prototypes—before the
Tri-Flex was commercially available and sold to customers. Dkt. 245 (Kappel Dep. 52:2054:15); Dkt. 246 (Kappelman Dep. 129:13-135:20); Dkt. 247 (Landon Dep. 107:11-14,
114:20-117:19, 121:15-122:7).
On the evidence of record, no reasonable jury could find that the Tri-Flex does not
meet the “continuous line of material pickup” limitation.
c. “operable in either direction independently of the other belt conveyors”
H&S does not dispute that each of the Tri-Flex’s three conveyors can operate in either
direction. And video evidence shows that the Tri-Flex belt conveyors can operate in the
following configurations:
Left conveyor moving to the left; center and right conveyors
moving to the right. Dkt. 120-50.
Left conveyor moving to the left; center and right conveyors
moving to the right as the right pickup assembly moves into the
retracted travel position and the right conveyor stops moving
part way through the retraction process. Id.
Center conveyor moving when the outer conveyors have moved
into their retracted position and are stopped and fully retracted.
Dkt. 120-46; Dkt. 120-49; Dkt. 120-51.
All three conveyors moving to the right. Dkt. 120-49.
All three conveyors moving to the right and then the left
conveyor switching and moving to the left. Id.
The left conveyor moving to the left as the center and right
conveyors move to the right, the center and right conveyors
switching and moving to the left, and the right switching and
moving to the right as the other two conveyors continue to move
to the left. Id.

33

In short, the record shows that the Tri-Flex’s three, separate conveyors can operate in both
directions; that the center conveyor can continue to operate as the outer assemblies retract
and their conveyors stop; that the center conveyor and an outer conveyor may move together
or in opposite directions when the second outer assembly is retracted and its conveyor is
stopped; and that all three conveyors may operate in the same direction or an outer conveyor
may operate in the opposition direction as the other two conveyors when all three assemblies
are extended. The available configurations for when all three assemblies are extended can be
diagrammed 4 as follows:

The Tri-Flex is programmed so that certain belt direction combinations are disabled. If
the center conveyor is off, the outer conveyors cannot move material toward it. If the center
conveyor is moving material to the right, the outer right conveyer cannot move material
toward the center conveyor. Those disabled configurations can be diagrammed as follows:

4

In these diagrams, an arrow represents a conveyer operating in a particular direction. A bar
represents a conveyor not operating. A red X indicates a disabled operation.

34

These configurations are plainly non-functional, because they would cause material to pile up
between conveyors. The Tri-Flex is also programmed so that an outer conveyor will not work
if the other outer conveyor is extended but off:

Although these two configurations would not cause material to pile up between conveyors,
they are impractical because there would be no reason to have an outer pickup assembly
extended for pickup without the conveyor operating.
H&S contends that the disabled configurations show that the Tri-Flex conveyors are
not independently operable because the center conveyor “influences operation” of the outer
conveyors, and vice versa. Dkt. 157, at 14. The fact that the Tri-Flex has disabled nonfunctional configurations does not save it from infringement. The claim language does not
require that the belt conveyors be operable in all possible configurations without regard for
how the other conveyors are operating. It simply requires that each conveyor be able to
operate in both directions and, if desired, in a direction different than the others. The TriFlex meets this claim limitation.
d. “transport of all material transferred to the conveyors to either end of
the aligned conveyors”
H&S’s remaining non-infringement position is that the Tri-Flex does not “provide
transport of all material transferred to the conveyors to either end of the aligned conveyors.”
’488 patent, 10:60-62. H&S argues that the Tri-Flex does not move “all material” the pickup
heads transfer to the conveyors because some material clings to the combs on the back of the
pickup assembly, gets caught between the conveyors and the shrouds, is lost between the gaps

35

between the merger heads, is taken by the wind, is thrown over the shrouds, etc. See
Dkt. 107, at 44. The parties present the issue as a question of infringement. But the issue is
really one of claim construction: does the “all material” limitation require the elimination of
the incidental crop loss that H&S describes?
The court begins with the claim language. The ’488 patent claims a windrow merger
apparatus with three pickup assemblies. When fully extended and laterally aligned side by
side, the three pickup assemblies are “able to provide transport of all material transferred to
the conveyors to either end of the aligned conveyors.” ’488 patent, 10:60-62. The phrase also
appears in independent claim 8, which provides that the laterally aligned conveyors “are able
to provide transport of all material transferred to the conveyors to either end of the aligned
conveyors.” ’488 patent, 11:42-12:2. This language, combined with what we know about the
specification (which the court has already discussed at length), indicates that the conveyors
are able to operate in the same direction, either to the left or the right, and that they are able
to transfer their respective loads down the line and into a windrow. Conveyor one is able to
transfer its material to conveyor two, which transfers the material to conveyor three, because
the conveyors are aligned side by side. In that sense, the conveyors can transfer “all” crop
material—as opposed to only crop material picked up by one pickup assembly—to either end
of the merger. Nothing about the claim language requires the complete elimination of
incidental crop loss in the process.
The prosecution history supports this understanding. The applicant amended the
application that would eventually issue as the ’488 patent in November 2013; proposed
claim 5 (which would eventually issue as claim 8) was amended to include the underlined
language: “the first conveyor belt, the second conveyor belt and the third conveyor belt are

36

able to provide transport of all material transferred to the conveyors to either end of the
aligned conveyors.” Dkt. 206, ¶ 256. This amendment marked the first time that that
language appeared in the application. The applicant added the language after the Office
Action rejected proposed claim 5 over references that included U.S. Patent No. 5,911,625 to
von Allworden. Id. ¶ 257. The applicant traversed the rejection, remarking that von
Allworden “has the outer sections offset and forward from the middle section,” and that, as a
result, it “is not able to provide transport of all material transferred to the conveyors to either
end of [the] aligned conveyors.” Dkt. 120-35, at 17-18. Laterally aligned pickup assemblies,
as claimed in amended proposed claim 5, allowed for transport of material “from each of the
pickup assemblies” to either end of the aligned conveyors. Id. at 19. Because von Allworden’s
outer sections are offset and forward from the middle section, it cannot transfer all material
to either end:

The applicant also amended proposed claim 7 (which would eventually issue as claim
10) to include the underlined language: “the belt conveyors are configured to provide
transport of material from the first pick up assembly, to the second pick up assembly and the
third pick up assembly to either end of the aligned assemblies.” Dkt. 206, ¶ 262. The
examiner withdrew her obviousness rejection and allowed the claims. 5

5

The examiner also allowed claim 1 following an examiner amendment to include identical

37

The “all material” limitation was added to distinguish prior art that included three
pickup assemblies in an offset configuration. Nothing in the prosecution history, the
specification, or the claim language indicates that “all material” precludes incidental crop loss
of the sort that appears to be inevitable. As used in the triple head patents, the requirement
that the merger “transport of all material transferred to the conveyors to either end of the
aligned conveyors” means that that the merger must be able to transfer material from each
pickup assembly to either end side of the conveyors. Incidental crop loss does not establish a
non-infringement position for H&S.
e. Summary of infringement rulings
There is a genuine dispute as to which Tri-Flex models, if any, can merge with the
outer pickup assemblies retracted. Accordingly, the court will deny both parties’ motions for
summary judgment concerning infringement of claims 28 and 32 of the ’929 patent.
Under the court’s claim construction decisions, there is no genuine dispute of material
fact that the Tri-Flex merger infringes the following claims:
Claim 44 of the ’929 patent;
Claim 1 of the ’739 patent; and
Claims 1-10 of the ’488 patent.
4. Invalidity
H&S moves for summary judgment that claim 44 of the ’929 patent is anticipated by
U.S. Patent No. 4,409,780 to Beougher, et al. (Beougher). In short, Beougher discloses a
multi-head combine harvester with a folding three-head assembly. Dkt. 106-4 (Beougher
patent).
“all material” language.

38

The ’929 patent is presumed valid, and H&S can overcome this presumption only by
establishing invalidity through clear and convincing evidence. 35 U.S.C. § 282; Novo Nordisk
A/S v. Caraco Pharm. Labs. Ltd., 719 F.3d 1346, 1352 (Fed. Cir. 2013). Anticipation is a
question of fact that may be decided on summary judgment if no genuine dispute of material
fact exists. OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 704 (Fed. Cir.
2012). “Under 35 U.S.C. § 102(b), a prior art reference will anticipate if it ‘disclose[s] each
and every element of the claimed invention . . . arranged or combined in the same way as in
the claim.’” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016)
(footnote omitted) (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). 6 Although a
prior reference must arrange or combine the elements of the claimed invention in the same
way as the claim, the reference need not disclose the elements in precisely the same language.
Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10, 21 (Fed. Cir. 2012).
H&S has not shown that Beougher anticipates claim 44 of the ’929 patent because it
does not disclose three corresponding conveyors. As discussed above, “conveyor” as that term
is used in the ’929 patent means a belt-type conveyor. The Beougher reference, which
discloses three header sections with an auger, does not disclose a conveyor as that term is used
in the ’929 patent. Dkt. 175, ¶ 151; see also Beougher patent, 5:10-11 (“As shown most
clearly in FIG. 1, each of the header sections carries an auger section.”). H&S’s entire
anticipation claim depends on an overly broad construction of “conveyor” that includes
auger.

6

Because the claims at issue have effective filing dates prior to March 16, 2013, the court
applies the pre-AIA § 102(b). See Blue Calypso, 815 F.3d at 1341 n.4.

39

And even if Beougher did disclose a type of conveyor that could be used in a windrow
merger, it does not disclose three of them. Claim 44 claims three pickup assemblies, each with
a corresponding conveyor. The Beougher reference discloses one auger that breaks into three
sections for transport. To operate, each of the three sections must be connected to operate as
one. During operation, the three sections are aligned and the two outer sections—the
“wings”—“are hingedly connected to the center section.” Dkt. 175, ¶ 143 (citing Beougher
patent, 4:7-20). The auger sections “automatically couple and uncouple” as the sections are
lowered and raised, “so that power applied to the outer auger sections will be transmitted to
the inner section (or vice versa).” Beougher patent, 2:45-50. The augers are coupled for
operation. Beougher patent, 6:30-31. This is consistent with PTAB’s conclusion: H&S “has
not sufficiently shown that Beougher discloses the three conveyors of claim 44, as opposed to
a single auger ‘that can be separated into sections when the combine harvester header is
retracted.’” Dkt. 235-1, at 12.
And Beougher does not disclose a windrow merger. The preamble to Claim 44 states:
“[a] windrow merger apparatus configured for travel in a first direction . . . .” ’929 patent,
15:9-10. A preamble is limiting if it is “necessary to give life, meaning, and vitality” to the
claim. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
(quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). A
preamble is not limiting if the claim body otherwise defines a complete structure, and the
preamble only describes the invention’s purpose or intended use. Id. Claim 44’s preamble is
limiting. Without acknowledging that the claim is directed to a windrow merger, the claim
language does not make sense. It claims abstract “pickup assemblies” and a “frame” that
would mean nothing outside the context of a windrow merger. The preamble is necessary to

40

understand the claimed structure. Beougher does not disclose a windrow merger and, as a
result, it does not anticipate claim 44.
Not only has H&S failed to show that it is entitled to summary judgment on this
issue, but, in light of the court’s construction of “conveyor” and the other reasons given here,
no reasonable jury could find that Beougher anticipates claim 44. H&S will have to show
good cause why the court should not enter judgment in Oxbo’s favor on this issue.
E. The trough patent
1. Introduction
The ’052 patent—the trough patent—discloses and claims further improvements to
windrow mergers. Like the triple head specification, the specification discusses the value of
increasing merging rates and the benefits of folding assemblies. (The specification
incorporates the ’929 patent by reference. ’052 patent, 3:47-48.) The improvements specific
to the ’052 patent include various mechanisms to accommodate changes in terrain while
providing optimum pickup capability. The improvements at issue here are a “trough” and a
“rub rail,” intended to reduce material clumping and catching to produce more uniform
windrows. One prior art problem identified in the ’052 patent is that hay on the conveyor
can catch on projections on the back of the pickup assembly, such as the slots through which
the tines pass, which can cause the hay to swirl or clump, producing uneven windrows. ’052
patent, 1:44-48. The solution posed by the ’052 patent is the “rub rail,” which provides a
rounded, smooth surface toward the rear of the pickup assembly to facilitate the smooth flow
of hay on the conveyor. ’052 patent, 9:35-37.
Oxbo asserts claims 1-4 and 6-8 of the ’052 patent. Independent claim 1 of the ’052
patent is the sole independent claim:

41

A windrow merger configured for moving along a forward
direction of travel, comprising:
a) a pickup and transfer unit defining a trough in which material
is conveyed, the unit including a merger head and a belt
conveyor, the merger head including a plurality of tines that
rotate during operation; a comb at least partially defining slots
through which the tines pass during rotation; and
b) a rub rail mounted on the pickup and transfer unit
intermediate the comb and the belt conveyor and within the
trough, the rub rail having a tube portion including an upper
surface forming a continuous unobstructed rounded surface
arcing rearward and downward toward the belt conveyor.
’052 patent, 10:17-30 (disputed claim terms emphasized).
2. Claim construction
a. “trough in which material is conveyed”
The parties dispute the meaning of the term “trough in which material is conveyed,”
as it appears in claim 1. Oxbo contends that the court should give the term its plain and
ordinary meaning; H&S contends that the court should construe the term to mean “channel
located between the back of the merger head and the front of the shroud.” The dispute is
material to infringement: under H&S’s interpretation, which puts the boundary of the trough
at the back of the pickup head, the rub rail would be adjacent to—but not within—the trough
as required by claim 1.
The trough patent claims a windrow merger comprising “a pickup and transfer unit
defining a trough in which material is conveyed.” ’052 patent, 10:19-20. The specification
says the same: the merger head, the shroud, and the conveyor “generally define a trough . . .
into which material . . . flows during merger operations.” ’052 patent, 8:62-65; see also ’052
patent, Figure 21. The trough is represented with reference letter “T” in Figure 21:

42

In Figure 22, the rub rail with reference number 64 is curved or rounded and “faces
inward toward the trough.” ’052 patent, 9:32-34.

The patent makes clear that the trough is the space between the merger head and the
shroud, and that it is above the conveyor and below the top of the pickup head. Material
travels from the pickup head, over the rub rail, and into the trough. ’052 patent, 9:31-37.

43

The purpose of the trough and the rub rail is to prevent clumping or swirling. ’052 patent,
8:52-61; see also Dkt. 109, ¶ 144.
The parties do not really dispute the meaning of the term “trough”; both agree that a
trough necessarily requires some depth. And H&S’s proposal that the court construe the
trough to be a “channel” adds nothing of substance. “Channel” is basically a synonym for
“trough.” One of the standard unabridged dictionaries defines “trough” as “a long and narrow
or shallow channel or depression.” Trough, Webster’s Third New International Dictionary
(unabridged) (3d ed. 1971).
The real issue is whether the forward boundary of the trough is precisely at the “back
of the merger head.” H&S’s strategy here is apparent: define the trough so that the rub rail
necessarily falls outside of it. For reasons explained in the infringement analysis below,
H&S’s proposed construction cannot be squared with the patent’s depictions of the rub rail.
As shown in, for example, Figure 22, the rub rail is located at the rear of the pickup assembly.
If anything attached to the pickup assembly were, by definition, outside the trough, then
claim 1 would not cover any of the embodiments shown. Such a claim construction is almost
certainly wrong. See MBO Labs., 474 F.3d at 1333. A more natural reading of this
requirement is that the top of the trough is defined by the top of the pickup assembly. And
the rub rail is within the trough if it is below the top of the trough.
The court will decline to adopt H&S’s construction and will afford the term its plain
and ordinary meaning. 7

7

The court’s approach is consistent with that of the PTAB. PTAB determined that H&S did
not adequately explain its proposed construction and that the term was clear. Dkt. 199-16, at
9-10 (“We decline to adopt Petitioner’s proposed construction, apply the ordinary and
customary meaning of claim terms, and determine that no express construction is necessary
for ‘a pickup and transfer unit defining a trough in which material is conveyed.’”).

44

b. “mounted”
The parties dispute the meaning of the term “mounted.” Again, Oxbo advocates for
the term’s plain and ordinary meaning. H&S proposes “fastened to.” The import of the
dispute is apparent only in light of H&S’s non-infringement argument, which makes clear
that as H&S views the concept, “fastened to” implies that the rub rail must be a separate
component attached to the pickup assembly.
No one really disputes what “mounted” means. By its plain terms, mounted means
attached or secured to. Mount, Webster’s Third New International Dictionary (unabridged)
(3d ed. 1971) (“to attach to a support or assemble for use”). The real dispute is about
whether “mounted” requires that the rub rail be a separate component that is attached to the
pickup head, or whether the rub rail might be integrated into another assembly so that it is
only indirectly “mounted” to the pickup head.
The specification contemplates both a rub rail that is separately mounted and one
that is integrated into a comb assembly and thus indirectly mounted to the pickup assembly.
Claim 1 claims “a rub rail mounted on the pickup and transfer unit intermediate the comb
and the belt conveyor and within the trough.” ’052 patent, 10:25-27. The trough and the rub
rail are discussed in columns 8 through 10 and are depicted in Figures 22-28. Figures 24 and
25 show a rub rail integrated into the comb assembly. Figures 26 and 27 show a similar
embodiment made of plastic. As the specification makes clear, “in each of the disclosed
embodiments of FIGS. 22 and 28, the rub rail 64, 164 is incorporated into the construction
of the comb 68, 168.” ’052 patent, 10:1-3. But the specification continues: “It is
contemplated, however, that a rub rail separate from the comb or comb segments can also be
used.” ’052 patent, 10:3-5.

45

H&S contends that the patent is clear that the rub rail must be separate from the
comb segments and directly fastened to the merger head. But again, H&S’s proposed
construction cannot be squared with the illustrated embodiments. Nothing in the claim
language or the specification indicates that the trough patent claims only a separate rub rail,
simply because it employs the term “mounted.” The court declines to adopt H&S’s proposed
construction and gives the term mounted it ordinary meaning.
3. Infringement
H&S disputes infringement of the trough patent on the ground that the Tri-Flex does
not have a rub rail as claimed. Oxbo has identified a tubular structure toward the rear of the
pickup head on the Tri-Flex that it contends is the rub rail. H&S makes three arguments why
this tubular structure is not the required rub rail: the tubular structure is not within the
trough; the tubular structure is not mounted to the pickup assembly; and the tubular
structure does not function as a rub rail.
a. Whether the Tri-Flex tubular structure is “within the trough”
The trough patent claims a “rub rail . . . within the trough.” ’052 patent, 10:25-27.
H&S contends that the Tri-Flex’s purported rub rail is adjacent to the trough, not within it.
There is no dispute about the structure of the Tri-Flex; the issue thus turns on the court’s
ruling on the scope of the claim. As the court has already determined, the rub rail shown in
Figure 22 is “within the trough” as that term is used in the ’052 patent. The Tri-Flex’s
tubular structure is in the identical location:

46

The tubular structure is positioned precisely as described in the trough patent. “As material is
conveyed through the trough T toward the end of the merger, the material encounters the
smooth surface of the rub rail . . . .” ’052 patent, 9:38-40 (reference numbers omitted).
Material encounters the rub rail as it travels along the conveyors in the trough, and that is the
case in the Tri-Flex. Tellingly, H&S’s president has described the Tri-Flex trough as being
eight inches deep. Dkt. 102 (Heikenen Dep. 117:4-15). H&S measures its trough from the
top height of the pickup head. The Tri-Flex rub rail is certainly within that eight inches.
The Tri-Flex’s tubular structure is “within the trough” as the court has construed that
term.
b. Whether the Tri-Flex tubular structure is “mounted on the pickup and
transfer unit intermediate the comb and the belt conveyor”
H&S contends that the Tri-Flex’s tubular structure is not “mounted” on the pickup
and transfer unit. Rather, according to H&S, the tube is a structural component integrated
into pickup assembly. As H&S describes it, the tubular structure is welded to comb fingers
and a plate, to form a “channel section,” as shown here:

47

The channel sections are bolted to the merger head, and the plates serve as the pickup unit’s
rearward wall. So the tubular structure “is not a separate component mounted onto the
pickup and transfer unit, it is integral as part of the pickup and transfer unit assembly.”
Dkt. 156, at 17. Thus, according to H&S, it cannot infringe.
There is no dispute about the underlying facts, so once again, the matter turns on the
court’s construction of the claim term. The channel sections of the Tri-Flex are not materially
different from the comb sections shown in Figures 24-27 of the ’052 patent. The ’052 patent
contemplates a rub rail that is either a separate structure attached to the pickup assembly, or
a structure integrated into the comb assembly. The Tri-Flex uses the integrated assembly, just
as in each of the embodiments depicted in the patent. The tubular structure is mounted to
the pickup assembly, and the Tri-Flex satisfies this claim element.
c. Whether the tubular structure on the Tri-Flex functions as “rub rail”
H&S argues that the tubular structure is not a rub rail because it does not perform the
function of the rub rail, i.e., preventing the hay from clumping and swirling as it moves along
the conveyor. According to H&S, the Tri-Flex does not need a rub rail to perform this

48

function, because it uses its own patented cam technology to flick the hay over the combs
and slots that might clump or swirl the hay. There are two reasons why this argument fails.
First, H&S’s cam technology is irrelevant. Because the claim is written in open form
using the term “comprising,” it does not matter if the Tri-Flex has other mechanisms in
addition to the elements claimed. The claim covers devices with additional features beyond
those claimed. MagSil Corp. v. Hitachi Glob. Storage Techs., Inc., 687 F.3d 1377, 1383 (Fed.
Cir. 2012). If the Tri-Flex has a rub rail, it does not matter if it also uses H&S’s cam
technology to prevent clumping and swirling.
Second, and more important, the rub rail of claim 1 is claimed in purely structural
terms. To be sure, the disclosed function of the rub rail is to facilitate the smooth flow of hay
into and along the conveyor. But the rub rail is not claimed in functional terms. Rather, the
rub rail is defined in the claim itself by its structure:
the rub rail having a tube portion including an upper surface
forming a continuous unobstructed rounded surface arcing
rearward and downward toward the belt conveyor.
’052 patent, 10:26-30. H&S has not proposed any construction specifically for “rub rail,”
presumably because claim 1 provides it. There is no genuine dispute that Tri-Flex has the
structure defined as the rub rail in claim 1, and thus the Tri-Flex has a rub rail.
H&S’s infringement defense based on the rub rail fails, and Oxbo is entitled to
summary judgment that H&S infringes the asserted claims of the ’052 patent.
4. Invalidity
Oxbo moves for summary judgment that the trough patent is neither anticipated nor
obvious. H&S opposes, arguing that fact issues preclude summary judgment. H&S relies on
the following prior art references:

49

the ’929 patent;
Oxbo’s 310 Windrow Merger Parts & Operator’s Manual (2004
Oxbo Manual);
Oxbo’s 310 Windrow Merger Repair Parts Manual (2006 Oxbo
Manual);
International PCT Patent Application PCT/EP2006/070097
published as WO 2007/082624 A1 (Pourchet); and
U.S. Patent Application Publication No. US 2003/0110752 A1
bearing application serial no. 10/027,930 (the ’752 application).
The court will assume, for summary judgment purposes, that the identified references are
indeed prior art, as neither party argues this point.
Again, the trough patent is presumed valid, and H&S can overcome this presumption
only by establishing invalidity through clear and convincing evidence. 35 U.S.C. § 282; Novo
Nordisk A/S, 719 F.3d at 1352.
a. Anticipation
Oxbo contends that it is entitled to summary judgment of no anticipation because
H&S cannot identify a single prior art reference that discloses both a trough in which
material is conveyed and a rub rail. H&S contends that the 2004 Oxbo Manual anticipates
claims 1, 4, 6, and 8 because it discloses both.
To create a genuine dispute of material fact for trial on this issue, H&S adduces
opinion evidence from Shirley, who opines that “the 2004 Oxbo Manual discloses to a person
of ordinary skill in the art all of the limitations of claims 1, 4, 6 and 8 of the ’052 Patent.”
Dkt. 120-31, ¶ 35. Shirley states that the 2004 Oxbo Manual discloses a pickup and transfer
unit that “defines a trough in which material is conveyed.” Id. ¶ 37. But he does not get any
more specific than that; he simply points to components near the conveyor and states that

50

together they form a trough. Shirley points to three pictures that purportedly show the
trough:

In its briefing, H&S contends that the pictures show that the conveyor sits lower than
the pickup head, creating the requisite “trough in which material is conveyed.” But the
pictures show no such thing. As PTAB pointed out when it declined to institute review of the
trough patent, neither H&S “nor Mr. Shirley further explains why the photo shows the
trough feature, as claimed.” Dkt. 199-16, at 14. PTAB ultimately held that H&S had “not
sufficiently identified any structure in the 2004 Oxbo Manual corresponding to the trough
feature.” Id. at 14-15. The diagrams and photographs that H&S points to show that the
conveyor and the pickup head are substantially level with one another; “the conveyor belt is

51

horizontally flush with the pickup head.” Id. at 15. The court is not bound by the PTAB
decision, but its reasoning is persuasive. Because the trough implicitly requires some depth,
the pictures from the manual do not disclose a trough. Shirley’s conclusory opinion to the
contrary does not create a genuine dispute of material fact. “Conclusory expert assertions
cannot raise triable issues of material fact on summary judgment.” Sitrick, 516 F.3d at 1001.
The lack of a trough dooms H&S’s anticipation case. But H&S also fails to show that
the 2004 Oxbo Manual discloses a rub rail. Shirley opines that the 2004 Oxbo Manual
“discloses a rub rail mounted on the pickup and transfer unit intermediate the comb and the
belt conveyor and within the trough.” Dkt. 120-31, ¶ 39. His reasoning? The manual’s
diagrams show one: “[t]he manual shows a tubular structure that is mounted on the back of
the pick-up head that runs alongside the conveyor”:

52

Id. Once again, Shirley’s opinion is conclusory. The diagram shows an internal feature that is
neither within the trough (because there isn’t one) nor between the combs and the conveyor.
In fact, it appears that the highlighted structure is beneath the conveyor.
H&S has not adduced evidence that would allow a reasonable jury to find that the
2004 Oxbo Manual discloses both a trough and a rub rail. Its anticipation claim fails as a
matter of law.
b. Obviousness
Oxbo contends that it is also entitled to summary judgment of nonobviousness
because no combination of prior art teaches both a trough and a rub rail.
To survive summary judgment, H&S must adduce evidence that would allow a
reasonable jury to find “by clear and convincing evidence that a skilled artisan would have
been motivated to combine the teachings of the prior art references to achieve the claimed
invention, and that the skilled artisan would have had a reasonable expectation of success
from doing so.” Bristol-Myers Squibb Co. v. Teva Pharm. USA, Inc., 752 F.3d 967, 973 (Fed.
Cir. 2014) (quoting Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed.
Cir. 2009)). Obviousness “is a legal conclusion based on underlying facts,” including “the
scope and content of the prior art, the differences between the prior art and the claimed
invention, the level of ordinary skill in the art, and any relevant secondary considerations.”
Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1290-91 (Fed. Cir. 2013).
In response to Oxbo’s motion, H&S points to several different prior art combinations.
But all attempts fail because H&S has not identified any prior art reference that discloses a
trough in which material is conveyed, nor does H&S explain how or why a trough would
otherwise have been obvious.

53

The court has already determined that the 2004 Oxbo Manual does not disclose a
trough or a rub rail. And H&S does not identify any material difference between the 2004
Oxbo Manual and the 2006 Oxbo Manual, so neither does the 2006 Manual. See Dkt. 206,
¶ 485 (H&S does not dispute that “[t]he photograph and diagrams relied upon by H&S from
the 2004 and 2006 Oxbo Manuals are the same in all pertinent respects.”).
H&S makes a last attempt to identify a trough in the prior art with the ’929 patent.
The ’929 patent was disclosed to the Patent Office during the prosecution of the ’052 patent.
H&S makes no argument that the Patent Office did not have full information about the ’929
patent, or was somehow mislead about the ’929 patent, during examination of the ’052
patent. Thus, it will be more difficult for H&S to sustain its burden to show the obviousness
of the ’052 patent on the basis of the ’929 patent, given that the Patent Office already had
the opportunity to evaluate it. See Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1260 (Fed.
Cir. 2012).
And once again, H&S offers only Shirley’s conclusory opinions. Shirley opines that
the ’929 patent discloses a pickup and transfer unit that “defines a trough in which material
is conveyed.” Dkt. 120-31, ¶ 69. Citing Figure 15 of the ’929 patent, Shirley summarily
states that “the shroud together with the back side of the pickup head and conveyor comprise
a trough to convey the gathered crop along the length of the conveyor.” Id.

54

Like the 2004 Oxbo Manual pictures, Figure 15 simply does not show a trough; the
conveyor and the pickup head are plainly the same height and do not provide the requisite
depth in which material is conveyed. H&S also points to Figure 17:

But the problem with Figure 17 is that the conveyor is not depicted (reference numbers 134,
136, 138), creating a false impression that the top of the pickup head is higher than the

55

conveyor. The court’s conclusion is again consistent with PTAB, which determined that the
’929 patent does not disclose a trough. PTAB cited Figure 3 as showing that the pickup head
is on the “same horizontal plane” as the conveyor. Dkt. 199-16, at 17.

In fact, H&S concedes that Figure 3 “appears to show the pickup head and conveyor being
generally level.” Dkt. 206, ¶ 415.
H&S does not contend that either Pourchet or the ’752 application disclose a trough
in which material is conveyed. Because H&S fails to show a trough in the prior art, and it
does not show that the trough would otherwise be obvious to one of skill in the art, Oxbo is
entitled to summary judgment of nonobviousness.
One final note: Oxbo moved for summary judgment on all of the invalidity
contentions that H&S disclosed during discovery with respect to the trough patent. H&S
offered no argument regarding (1) anticipation by the 2006 Oxbo Manual, any other Oxbo
manuals, Oxbo’s 310 merger, or the ’929 patent; or (2) obviousness or anticipation by Oxbo’s
310 merger, any other Oxbo manuals, Zhavoronkin, Praktijk, Phiber, or Orr. Thus, the court

56

will grant summary judgment to Oxbo that the ’052 patent is neither anticipated nor obvious
on the basis of any ground asserted by H&S.
F. Remaining infringement issues
Oxbo did not move for summary judgment of infringement as to claim 32 of the ’929
patent. H&S moved for summary judgment of non-infringement of that claim, but for
reasons already discussed the court concludes that genuine disputes of fact prevent the court
from granting summary judgment to either party.
Oxbo did not move for summary judgment of infringement as to claim 11 of the ’488
patent. H&S moved for summary judgment of non-infringement of that claim, but the court
rejected H&S’s non-infringement positions. Claim 11 of the ’488 patent is thus in limbo:
summary judgment for Oxbo would be warranted, but Oxbo did not move for it. Oxbo should
inform the court whether it still intends to assert that claim.
That leaves H&S’s motion for summary judgment of non-infringement under the
doctrine of equivalents. H&S contends that Oxbo has not adequately disclosed an
infringement position under the doctrine of equivalents or adduced adequate expert
testimony on the subject. In response, Oxbo states that it asserted infringement under the
doctrine of equivalents in its infringement contentions and that Chaplin has offered opinions
sufficient to establish as much, as least with respect to “continuous line of material pickup.”
Because the court has already determined that the Tri-Flex literally meets this claim
element, this issue might be dismissed as moot. But the court has reviewed Oxbo’s evidence
and argument under the doctrine of equivalents and concludes that summary judgment for
H&S is appropriate. “A patentee must establish ‘equivalency on a limitation-by-limitation
basis’ by ‘particularized testimony and linking argument’ as to the insubstantiality of the

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differences between the claimed invention and the accused device or process.” Akzo Nobel
Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1342 (Fed. Cir. 2016) (quoting Tex.
Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1566 (Fed. Cir. 1996)). “Broad
and scant” expert testimony on the subject will not suffice. Id. at 1343. The analysis by
Oxbo’s expert is simply too “broad and scant” to sustain an infringement case under the
doctrine of equivalents.
G. Remaining invalidity issues
Oxbo moves for summary judgment that none of the asserted claims are invalid under
35 U.S.C. § 112 for indefiniteness, lack of enablement, or lack of written description.
Dkt. 118. Oxbo contends that H&S has not adduced any evidence—expert or otherwise—
sufficient to prove indefiniteness, lack of enablement, or lack of written description. H&S
filed no opposition to Oxbo’s motion on § 112 defenses, so the court will grant Oxbo’s
motion as unopposed.

ORDER
IT IS ORDERED that:
1. Plaintiff Oxbo International Corporation’s motion for summary judgment,
Dkt. 115, is GRANTED in part and DENIED in part:
a. H&S’s Tri-Flex Merger infringes claim 44 of the ’929 patent.
b. H&S’s Tri-Flex Merger infringes claim 1 of the ’739 patent.
c. H&S’s Tri-Flex Merger infringes claims 1-10 of the ’488 patent.
d. H&S’s Tri-Flex Merger infringes claims 1-4 and 6-8 of the ’052 patent.
e. Oxbo’s motion is denied with respect to infringement of claim 28 of the
’929 patent.

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f.

The asserted claims of the ’052 patent are not anticipated or obvious on
any ground asserted by H&S.

g. The asserted claims of the patents-in-suit are not invalid for
indefiniteness, lack of enablement, or lack of written description under
35 U.S.C. § 112.
h. H&S’s equitable defenses are dismissed.
2. Defendant H&S Manufacturing Company, Inc.’s motion for summary
judgment, Dkt. 122, is GRANTED in part and DENIED in part:
a. H&S is not entitled to summary judgment as to literal infringement of
the patents-in-suit.
b. H&S is entitled to summary judgment as to infringement under the
doctrine of equivalents of the patents-in-suit.
c. H&S’s motion for summary judgment on its equitable estoppel defense
is denied.
d. H&S is not entitled to summary judgment that claim 44 of the ’929
patent is anticipated by the Beougher reference. The court will give
H&S the opportunity to show cause why the court should not enter
summary judgment for Oxbo on this issue.
3. H&S’s motion to strike the supplemental expert report of Jonathan Chaplin,
PhD, and the declaration of Jake Langer, Dkt. 148, is GRANTED in part and
DENIED in part. Oxbo may present Chaplin’s supplemental opinions (and
Langer’s evidence in support) related to the operation of the central pickup
assembly and the “all material” issue. Chaplin’s supplemental opinions about
the “gap” issue are excluded as untimely.
4. Oxbo’s motion to strike the declarations of Foley, Rottier, and Kelber,
Dkt. 163, is DENIED as moot for purposes of summary judgment. If the
parties so advise, the court will revisit the motion to strike as a pretrial motion
in limine.
5. Oxbo’s motion to supplement, Dkt. 197, is DENIED.
6. Oxbo’s motion to strike portions of defendant’s summary judgment briefing on
its equitable defenses, Dkt. 222, is GRANTED.

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7. Oxbo’s motion to strike H&S’s non-infringement argument based on the
operation of the central pickup assembly, Dkt. 291, is DENIED.
Entered May 23, 2017.
BY THE COURT:
/s/
________________________________________
JAMES D. PETERSON
District Judge

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