United States District Court, D. Colorado
MEMORANDUM OPINION AND ORDER
B. Shaffer United States Magistrate Judge.
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
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.
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.
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
(Figures 20 and 21 in the ‘339 Patent) illustrate one
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.
‘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:
for the provisional application filed on October 26, 2009,
each of the applications is in the record.
Provisional No. 61/150, 301, filed February 5, 2009
A, Doc. #52-1
No. 12/700, 667 filed February 4, 2010 (“2010
B, Doc. #52-2
Provisional No. 61/440, 847, filed February 8, 2011
C, Doc. #52-3
No. 13/368, 332, filed February 8, 2012 (“2012
D, Doc. #52-4
No. 13/799, 359, filed March 13, 2013 (“March
E, Doc. #52-5
No. 14/018, 137, filed September 4, 2013
F, Doc. #52-6
No. 14/018, 143, filed September 4, 2013
G, Doc. #52-7
No. 14/196, 867, filed March 4, 2014 (“March
4, Doc. #55-5
No. 14/504, 663, filed October 2, 2014
(“October 2014 application”)
H, Doc. #52-8
to Defendants, Plaintiff asserts the following claims from
‘517 Patent Claims
‘655 Patent Claims
‘339 Patent Claims
1-4, 6, 9-14, 16
1-5, 7-9, 11, 13
1, 2, 4, 5, 7-10
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
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.
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
At least December 2007
At least May 2011
at p. 22. 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.
Summary Judgment Standards
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.”
[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
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.
35 U.S.C. § 120 Effective Filing Dates
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
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.
Legal Standards for Written Description Requirement
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
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
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).
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
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
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).
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