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D Three Enterprises, LLC v. Rillito River Solar LLC

United States District Court, D. Colorado

March 15, 2017

SUNMODO CORPORATION, Defendant. Application Record reference Defendant EcoFasten Accused Product Date Publicly Available


          Craig B. Shaffer United States Magistrate Judge.

         In these related actions, Plaintiff D Three Enterprises LLC (“D Three” or “Plaintiff”) claims that Defendants Rillito River Solar LLC, d/b/a EcoFasten Solar (“EcoFasten”) and SunModo Corporation (“SunModo”) infringe three of Plaintiff's patents directed to roof mount assemblies. Defendants filed two joint motions for summary judgment. For the reasons that follow, the court grants summary judgment to Defendants on their motion regarding effective filing dates and invalidity in view of intervening prior art. The court denies Defendants' other joint summary judgment motion as moot.[1]


         Plaintiff initiated these actions on June 2, 2015. EcoFasten is the Defendant in Civ. 15- 1148. SunModo is the Defendant in Civ. 15-1151. Each party consented to the magistrate judge's jurisdiction to “conduct all further proceedings in this civil action, including trial, and to order the entry of a final judgment, ” pursuant to 28 U.S.C. § 636(c), Fed.R.Civ.P. 73, and D.C.COLO.LCivR 72.2. Accordingly, the cases were referred to this court on respectively August 31, 2015 and September 4, 2015.

         On April 22, 2016, Defendants filed a joint motion for summary judgment “regarding effective filing dates and invalidity in view of intervening prior art.” Doc. #51 (referred to hereafter as the “Motion”). Plaintiff responded. Doc. #55 (hereafter, “Response”). Defendants replied. Doc. #63. Plaintiff later filed a notice of supplemental authority in support of its response. Doc. #79. Defendants also filed a joint motion for summary judgment arguing “invalidity based on 35 U.S.C. §§ 102 and 103.” Doc. #56. Plaintiff timely responded. Doc. #69. Defendants replied. Doc. #77. On November 8, 2016, the court heard oral argument for both cases. Doc. #80.

         The following facts appear to be undisputed. Plaintiff asserts that each Defendant infringes three of Plaintiff's patents: U.S. Patent No. 8, 689, 517 (the ‘517 Patent, doc. #52-9), U.S. Patent No. 8, 707, 655 (the ‘655 Patent, doc. #52-10), and U.S. Patent No. 9, 068, 339 (the ‘339 Patent, doc. #52-11). The patents in suit relate generally to roof mount assemblies that are used to mount items to roofs, typically (but not necessarily) solar panels. Figures 1 and 2 in the ‘517 and ‘655 Patents[2] (Figures 20 and 21 in the ‘339 Patent) illustrate one assembly:

         (Image Omitted)

         In these figures, 1906 is a soft or flexible washer that together with the body (or core) 1908 is screwed down to the 1902 flashing's raised area, compressing the flashing to the 1901 base bracket mounted to a roof. Other figures depict three types of attachment brackets (or attachment elements) that attach to the foregoing via the bolt 412: a support post, a W spring base (also referred to as a W pronged bracket), and a T slide. See, e.g., ‘517 patent and ‘655 patent at col. 2, ll. 25, 47-50; Figs. 7 (support post), 19 (W spring base), 20 (T slide); ‘339 patent at Figs. 26, 34-36, 40, 41, 46, 56, 57. The attachment bracket receives the item such as a solar panel for mounting to the roof.

         The ‘517, ‘655 and ‘339 Patents arose from a chain of applications beginning with a provisional application filed on February 5, 2009. The parties depict that chain as follows:

         (Image Omitted)

         Except for the provisional application filed on October 26, 2009, each of the applications is in the record.

Record reference

Provisional No. 61/150, 301, filed February 5, 2009 (“2009 application”)

A, Doc. #52-1

No. 12/700, 667 filed February 4, 2010 (“2010 application”)

B, Doc. #52-2

Provisional No. 61/440, 847, filed February 8, 2011 (“2011 application”)

C, Doc. #52-3

No. 13/368, 332, filed February 8, 2012 (“2012 application”)

D, Doc. #52-4

No. 13/799, 359, filed March 13, 2013 (“March 2013 application”)

E, Doc. #52-5

No. 14/018, 137, filed September 4, 2013 (“'137 application”)

F, Doc. #52-6

No. 14/018, 143, filed September 4, 2013 (“'143 application”)

G, Doc. #52-7

No. 14/196, 867, filed March 4, 2014 (“March 2014 application”)

4, Doc. #55-5

No. 14/504, 663, filed October 2, 2014 (“October 2014 application”)

H, Doc. #52-8

         According to Defendants, Plaintiff asserts the following claims from the patents:

517 Patent Claims
655 Patent Claims
339 Patent Claims


1-4, 6, 9-14, 16


1, 14
1-5, 7-9, 11, 13
1, 2, 4, 5, 7-10

         Motion at p. 1, n.1. Plaintiff's claim contentions agree with this summary. Docs. #52-19, 52- 20. At oral argument, Plaintiff omitted claim 3 of the ‘339 Patent from its presentation.

         Plaintiff accuses two SunModo products of infringing subsets of the asserted claims: SunModo's products Kit# K10068-001 (“EZ Mount L-Foot Kit for Shingle Roofs”) and Kit# K10070-002 (“EZ Mount assembly with Standoff for Shingle Roofs”). Motion at p. 21, n.14; Docs. #52-21 and 52-22 (claim charts as to SunModo); Doc. #52-19 (disclosure of claims and infringement contentions as to SunModo) at pp. 1-2. SunModo provides a declaration of Jun “Tony” Liu attaching records to show these products were available to the public in 2010. Docs. #53, 53-1 through 53-5. Plaintiff did not dispute these facts.

         When Plaintiff disclosed its claim and infringement contentions, Plaintiff accused four EcoFasten products. These are the QuikFoot Roof Mount System, the Eco-65 System or Eco-65 Roof Mount Assembly, Tile Flashing System, and the Eco-44R-NDD system. Motion at p. 21, n.16; Doc. #52-20 (disclosure of claims and infringement contentions as to EcoFasten), Doc. #52-27 (claim charts as to EcoFasten). In the motion for summary judgment, EcoFasten states that three of those products were available to the public as follows:

EcoFasten Accused Product
Date Publicly Available

EcoFasten QuikFoot Roof Mount System

At least June 2009

Eco-65 System

At least December 2007

Eco-44R-NDD System

At least May 2011

         Motion at p. 22.[3] In support, EcoFasten provides a declaration of Brian C. Stearns and attached invoices regarding sales of these products. Docs. #54, 54-1 through 54-4. Plaintiff did not dispute these facts, but in a footnote Plaintiff dropped the Eco-65 and Eco-44R-NDD from its claims. Response at p. 40, n.4.


         I. Summary Judgment Standards

         “The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a).

[A] judge's function at summary judgment is not to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial. … In making that determination, a court must view the evidence in the light most favorable to the opposing party.

Tolan v. Cotton, 134 S.Ct. 1861, 1866 (2014) (internal quotation marks and citations omitted, quoting inter alia Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52 (1986)).

Once the moving party has satisfied its initial burden, the opposing party must establish a genuine issue of material fact and cannot rest on mere allegations, but must present actual evidence. Issues of fact are genuine only if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. A disputed fact is material if it might affect the outcome of the suit such that a finding of that fact is necessary and relevant to the proceeding.

Crown Operations Int'l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1375 (Fed. Cir. 2002) (internal quotation marks and citation omitted, citing Anderson, 477 U.S. at 248). On Defendants' summary judgment motion, the court must determine “whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law.” Anderson, 477 U.S. at 251-52.

         II. 35 U.S.C. § 120 Effective Filing Dates

         The patents in suit assert the benefit of the 2009 application's effective filing date (February 5, 2009) pursuant to 35 U.S.C. § 120, which provides in relevant part:

An application for patent for an invention disclosed in the manner provided by section 112(a) … in an application previously filed in the United States … which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application.

35 U.S.C. § 120 (omitting certain criteria not addressed here). In this case, Defendants argue that the 2009 application (or intervening applications) lacks sufficient written description under § 112(a), referenced in § 120, to support the asserted claims in the ‘517, ‘665 and ‘339 patents. Thus, Defendants argue the patents in suit are not entitled to the benefit of the 2009 application's February 5, 2009 filing date.

         A. Legal Standards for Written Description Requirement

         Section 112(a) requires that “[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains … to make and use the same.” 35 U.S.C. § 112(a) (in relevant part). The Federal Circuit interprets § 112(a) as “contain[ing] a written description requirement separate from enablement.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc).

To satisfy the written description requirement, the disclosure of the earlier filed application must describe the later claimed invention in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought. ... While the earlier application need not describe the claimed subject matter in precisely the same terms as found in the claims at issue … the prior application must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, the inventor was in possession of the invention.

Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1331-32 (Fed. Cir. 2008) (internal quotation marks and brackets omitted, citing inter alia Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). See also Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003) (same standard). “One does that by such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.” Lockwood, 107 F.3d at 1572. See also Enzo Biochem, Inc. v. Gen-Probe, Inc., 285 F.3d 1013, 1021 (Fed. Cir. 2002) (same standard), vacated on other grounds on rehearing, 323 F.3d 956 (Fed. Cir. 2002).

[T]he issue is whether a person skilled in the art would understand from the earlier application alone, without consulting the new matter in the [patent at issue] … that the inventor had possession of the [invention now] claimed … when the [parent] … application was filed.

Tech. Licensing, 545 F.3d at 1333-34. “While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification.” Lockwood, 107 F.3d at 1572. “This requires that the written description actually or inherently disclose the claim element.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). “In order for a disclosure to be inherent, however, the missing descriptive matter must necessarily be present in the parent application's specification such that one skilled in the art would recognize such a disclosure.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998).

         In other words, “one skilled in the art, reading the original disclosure, must reasonably discern the limitation at issue in the claims.” Crown Operations, 289 F.3d at 1376. See also Waldemar Link, GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 558-559 (Fed. Cir. 1994) (standard is whether an artisan would “immediately discern the limitation at issue in the parent”). If the asserted claims describe an invention that “is an obvious variant of that which is disclosed in the [earlier] specification, ” or “renders obvious the invention for which an earlier filing date is sought, ” that is insufficient. Lockwood, 107 F.3d at 1572.

         The court analyzes this issue on a claim-by-claim basis. For instance, the chain of applications leading to the ‘517 and ‘655 Patents includes a continuation in part application. “Different claims of [a continuation in part, CIP] application may therefore receive different effective filing dates. ... Subject matter that arises for the first time in [a] CIP application does not receive the benefit of the filing date of the parent application.” PowerOasis, 522 F.3d at 1306 (quoting Augustine Med., Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1302-03 (Fed. Cir. 1999)). See also Waldemar, 32 F.3d at 558 (“Claims containing any matter introduced in the CIP are accorded the filing date of the CIP application.”).

         An asserted claim must be entirely supported by the parent application's disclosure; the Federal Circuit does not parse a claim into supported and unsupported portions. The parent application's written description must “support[] all the limitations of … [each] claim being asserted.Tech. Licensing, 545 F.3d at 1327 (emphasis added). If an asserted claim includes what the parent application disclosed but also encompasses broader inventions, this causes the entire claim to be unentitled to an earlier effective date. See, e.g., Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 871-72 (Fed. Cir. 2010) (asserted claims that encompassed but were broader than what original applications disclosed did not have the benefit of earlier filing date for any aspect of the asserted claims); Tronzo, 156 F.3d at 1159-60 (same). Moreover, “[i]n order to gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112.” Lockwood, 107 F.3d at 1571 (emphasis added). See also L.A. Biomed. Research Inst. v. Eli Lilly & Co., - F.3d -, No. 2016-1518, 2017 WL 765812, at *5 (Fed. Cir. Feb. 28, 2017).

         “Compliance with the written description requirement is a question of fact but is amenable to summary judgment in cases where no reasonable fact finder could return a verdict for the non-moving party.” PowerOasis, 522 F.3d at 1306-07. See, e.g., TurboCare Div. ofDemag ...

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