East Coast Sheet Metal Fab. Corp. v. Autodesk

2014 DNH 160

• Court: District Court, D. New Hampshire
• Decided: July 24, 2014
• Docket: 12-cv-517-LM
• Status: Published

Opinion

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

East Coast Sheet Metal Fabricating Corp., d/b/a EastCoast CAD/CAM

v. Civil No. 12-cv-517-LM Opinion No. 2014 DNH 160 Autodesk, Inc.

O R D E R

East Coast Sheet Metal Fabricating Corp. (“EastCoast”) has

sued Autodesk, Inc. (“Autodesk”) in six counts. EastCoast’s

claims include one for patent infringement. Before the court

are motions for summary judgment in which Autodesk argues that

the patents in suit are invalid for: (1) indefiniteness; and (2)

lack of a sufficient written description. EastCoast objects.

The court heard oral argument on the summary-judgment motions on

July 11, 2014. For that reasons that follow, Autodesk’s motions

for summary judgment on invalidity are both denied.

Summary Judgment Standard

“Summary judgment is appropriate when there is no genuine

issue of material fact and the moving party is entitled to

judgment as a matter of law.” Ponte v. Steelcase Inc., 741 F.3d

310, 319 (1st Cir. 2014) (quoting Cortés–Rivera v. Dept. of

Corr., 626 F.3d 21, 26 (1st Cir. 2010)); see also Fed. R. Civ. P. 56(a). When ruling on a motion for summary judgment, the

court must “view[] the entire record ‘in the light most

hospitable to the party opposing summary judgment, indulging all

reasonable inferences in that party’s favor.’” Winslow v.

Aroostook Cty., 736 F.3d 23, 29 (1st Cir. 2013) (quoting Suarez

v. Pueblo Int’l, Inc., 229 F.3d 49, 53 (1st Cir. 2000)).

Discussion

Autodesk moves for summary judgment of invalidity on two

separate grounds, indefiniteness and lack of an adequate written

description. The court considers each theory in turn.

Before doing so, however, the court notes that “[a] patent

shall be presumed valid,” 35 U.S.C. § 282, ¶ 1 (2006 ed.), and

that “[t]he burden of establishing invalidity of a patent or any

claim thereof shall rest on the party asserting such

invalidity,” id. Moreover, in the context of a case involving a

claim of invalidity due to patentee’s failure to meet the on-

sale bar established by 35 U.S.C. § 102(b), the United States

Supreme court has held that Ҥ 282 requires an invalidity

defense to be proved by clear and convincing evidence.”

Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. ---, ---, 131 S.

Ct. 2238, 2242 (2011)).

2 A. Indefiniteness

“The Patent Act requires that a patent specification

‘conclude with one or more claims particularly pointing out and

distinctly claiming the subject matter which the applicant

regards as [the] invention.’” Nautilus, Inc. v. Biosig Instrs.,

Inc., 134 S. Ct. 2120, 2130 n.10 (2014) (quoting 35 U.S.C. §

112, ¶ 2 (2006 ed.) (emphasis and brackets added by Nautilus).

This is the so-called definiteness requirement. “A lack of

definiteness renders invalid ‘the patent or any claim in suit.’”

Id. at 2125 (quoting 35 U.S.C. § 282, ¶ (2)(3) (2006 ed.)).

“[A] patent is invalid for indefiniteness if its claims, read in

light of the specification delineating the patent, and the

prosecution history, fail to inform, with reasonable certainty,

those skilled in the art about the scope of the invention.” Id.

at 2124. “Indefiniteness . . . is a question of law.” In re

Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (citing Kinetic

Concepts, Inc. v. Blue Sky Med. Grp., Inc., 554 F.3d 1010, 1022

(Fed. Cir. 2009)).

There are three patents-in-suit, U.S. Patent No. 7,499,839

(filed Sept. 29, 2005), U.S. Patent No. 7,917,340 (filed Dec.

12, 2008), and U.S. Patent No. 8,335,667 (filed Feb. 18, 2011).

The focus of Autodesk’s indefiniteness attack is claim language

that calls for “mapping” either “all components of the imported

3 geometrical information,” ’839 Patent col.7 l.25; ’340 Patent

col.8 l.7, or “one or more of the components of the geometrical

information,” ’667 Patent col.7 l.34, to:

a plurality of standard fittings as a function of (1) standards information including (1A) information specific to each of the plurality of standard fittings and (1B) fabrication information of each of the plurality of specific standard fittings[,] (2) the imported geometrical information, and (3) the assigned property values.

’839 Patent col.7 ll.26-32; see also ’340 Patent col.7 ll.8-13.1

Autodesk’s indefiniteness argument relies upon the

principles that “[a] patent holder should know what he owns, and

the public should know what he does not,” Festo Corp. v.

Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731 (2002),

and that a patent should “disclose to the public . . . how its

infringement may be avoided,” Eibel Process Co. v. Minn. &

Ontario Paper Co., 261 U.S. 45, 65 (1923). Autodesk argues that

all three patents-in-suit are invalid for indefiniteness because

the claims’ recitation of mapping activity, when read in light

of the specifications, does not allow a person of ordinary skill

1 The ’667 patent uses nearly identical language, but omits the word “imported” as a modifier of the term “geometrical information” in clause (2), ’667 Patent col.7 l.38, and uses the term “associated property values” rather than the term “assigned property values” in clause (3), id., col.7 l.39.

4 in the art to know the scope of the claimed invention. That is,

Autodesk argues that

because the patent lacks information on what does or does not constitute mapping all components of geometrical information to standards information as a function of three recited criteria, the claims are invalid for failure to “clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise.”

Def.’s Mem. of Law (doc. no. 68-1) 9 (quoting United Carbon Co.

v. Binney & Smith Co., 317 U.S. 228, 236 (1038)). The court

does not agree.

Autodesk is correct in its observation that, in the

specifications of the patents-in-suit, the term “mapping” is

used only in the context of defining the term “standards

information” to include “information that allows non-standard

fittings to be mapped to standard fittings.” ’839 Patent col.6

ll.21-22. But, one cannot ignore that the specification also

teaches that “stored standards information is used to assign

standard fittings to the geometrical information.” Id. col.6

ll.14-16. Autodesk has failed to carry its burden of showing

that one skilled in the art would not understand “assign[ing]

standard fittings to the geometrical information” to be a

reciprocal operation that would yield the same results as

“mapping . . . components of . . . geometrical information to a

5 plurality of standard fittings.” Thus, Autodesk cannot show

that the light shed by the specification is insufficient to

illuminate the scope of the invention. Moreover, while Autodesk

argues that the patents-in-suit do not adequately disclose the

boundaries of the claimed invention, it does not point to any

spot on the boundary line that is sufficiently blurred that one

could cross that boundary without knowing it. Accordingly,

Autodesk is not entitled to judgment as a matter of law that the

patents-in-suit are invalid for indefiniteness.

B. Lack of an Adequate Written Description

A “patent’s 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

pertains, or with which it is most nearly connected, to make and

use the same.’” Nautilus, 134 S. Ct. at 2128 (quoting 35 U.S.C.

§ 112, ¶ 1 (2006 ed.)). Like a patent claim that suffers from

indefiniteness, a patent with a specification that fails to

satisfy the written-description requirement is invalid. See 35

U.S.C. § 282, ¶ 2(3) (2006 ed.). “[T]he written description

requirement with respect to particularly claimed subject matter

is met if the specification shows that the stated inventor has

6 in fact invented what is claimed, [and] that he had possession

of it.” Abbvie Deutschland GmbH & Co. v. Janssen Biotech, Inc.,

--- F.3d ---, ---, Nos. 2013-1338, 2013-1346, 2014 WL 2937477,

at *10 (Fed. Cir. July 1, 2014) (citing Vas-Cath Inc. v.

Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)). “Whether a

patent claim is supported by an adequate written description is

a question of fact.” Id. at *9 (citing Ariad Pharm., Inc. v.

Eli Lilly & Co., 598 F.3d 1336, 1355 (Fed. Cir. 2010) (en banc).

That said, “compliance with the written description requirement

. . . is amenable to summary judgment in cases where no

reasonable fact finder could return a verdict for the non-moving

party.” Lochner Techs., LLC v. Vizio, Inc., --- F. App’x ---, -

--, No. 2013-1551, 2014 WL 2898496, at *5 (Fed. Cir. June 27,

2014) (quoting Atl. Research Mktg. Sys. v. Troy, 659 F.3d 1345,

1353 (Fed. Cir. 2011)) (alterations omitted).

As with its indefiniteness challenge, Autodesk focusses on

the mapping claimed in each of the three patents-in-suit.

Specifically, it argues that “[t]he mapping as claimed by

Plaintiff . . . is not the mapping described in the

application.” Def.’s Mem. of Law (doc. no. 69-1) 2. The court

The patents-in-suit claim “mapping” of “components” of

“geometrical information to a plurality of standard fittings.”

7 As Autodesk correctly notes, the specification mentions another

sort of mapping, i.e., the mapping of non-standard fittings to

standard fittings. But, the mere fact that the patent claims

one kind of mapping and the specification mentions another,

without more, does not mean that the written description is

defective.

Autodesk’s more serious argument is that: (1) the patents-

in-suit claim the mapping of “geometrical information to a

plurality of standard fittings”; (2) the claimed mapping is

undertaken “as a function of”2 three kinds of information; and

(3) the specification does not adequately describe the “as a

function of” aspect of the claimed mapping with respect to the

three categories of information mentioned in the claim. Thus,

according to Autodesk, the specification fails to “describe[]

the invention with all its claimed limitations.” Def.’s Mem. of

Law (doc. no 69-1) 9 (quoting Lockwood v. Am. Airlines, Inc.,

107 F.3d 1565, 1572 (Fed. Cir. 1997)).

The specification does, in fact, adequately describe the

claimed invention and all its limitations. To begin, the

specification provides:

In step 412, standards information that is stored in step 410 is imported into a second software

2 The court has construed the term “as a function of” to mean “using.” Order (doc. no. 67) 13.

8 application, for example EC-CADTM or EC-CAMTM[.] The stored standards information is used to assign standard fittings to the geometrical information[.] Additionally, the geometrical information and the property values are imported.

’839 Patent col.6 ll.12-17. Thus, all three categories of

information mentioned in the claim, i.e., standards information,

geometrical information, and property values, are described as

being imported into the software that produces the final

product. Moreover, the specification describes the following

steps, labeled 412 and 414 in Figure 4: “[i]mport standards

information, geometrical information, and property values,” and

“[u]tilize standards information, geometrical information, and

property values to generate a final design.”3 Those elements of

the specification are sufficient to satisfy the written-

description requirement that what is claimed in the patents-in-

suit is disclosed in their specifications. See Festo, 535 U.S.

at 736.

In sum, Autodesk has not produced clear and convincing

evidence that the written descriptions of the patents-in-suit

fail to teach one skilled in the art how to make the claimed

3 Autodesk’s argument that step 414 pertains to mapping non- standard fittings to standard fittings rather than to mapping geometrical information to standard fittings is flatly incorrect because step 414 pertains to the utilization of standards information, while “information that allows non-standard fittings to be mapped to standard fittings” is merely a part of the definition of “standards information.”

9 invention. Accordingly, Autodesk is not entitled to judgment as

a matter of law that the patents-in-suit are invalid for lack of

a written description.

Conclusion

For the reasons detailed above, both of Autodesk’s motions

for summary judgment of invalidity, document nos. 68 and 69, are

denied.

SO ORDERED.

__________________________ Landya McCafferty United States District Judge

July 24, 2014

cc: Thomas Tracy Aquilla, Esq. Kenneth C. Bartholomew, Esq. Robert F. Callahan, Jr., Esq. Joel M. Freed, Esq. Kyle L. Harvey, Esq. Damian R. Laplaca, Esq. Michael S. Lewis, Esq. Richard C. Nelson, Esq. Alexander P. Ott, Esq. Steven R. Pedersen, Esq. Donald J. Perreault, Esq. Rolf O. Stadheim, Esq. George C. Summerfield, Esq.