United States District Court, N.D. Iowa, Western Division
MEMORANDUM OPINION AND ORDER ON MOTIONS FOR SUMMARY
LEONARD T. STRAND, CHIEF JUDGE
patent case is before me on: (1) a motion (Doc. No. 90) for
summary judgment on invalidity filed by defendant C&B
Manufacturing, Inc. (HitchDoc), (2) a motion (Doc. No. 92)
for summary judgment as to HitchDoc's affirmative
defenses, filed by plaintiff Meridian Manufacturing Inc.
(Meridian) and (3) a motion (Doc. No. 88) for summary
judgment to limit damages filed by HitchDoc. Meridian filed
resistances (Doc. Nos. 101, 107) to both of HitchDoc's
motions and HitchDoc filed replies (Doc. Nos. 108, 109).
HitchDoc filed a resistance (Doc. No. 99) to Meridian's
motion for summary judgment but Meridian did not file a
holds United States Patent No. 6, 964, 551 B1 (‘551
Patent), which involves component claims for an agricultural
trailer. In its complaint (Doc. No. 2), Meridian alleges that
HitchDoc is a competitor that makes agricultural equipment,
including trailers that infringe on the ‘551 Patent. On
June 9, 2017, after conducting a Markman hearing, I
filed an order (Doc. No. 52) in which I construed certain
claims contained in the ‘551 patent (the
Markman order). The parties then filed motions (Doc.
Nos. 55, 56) for summary judgment on infringement. On October
27, 2017, I entered an order (Doc. No. 75) granting
Meridian's motion for summary judgment and finding, as a
matter of law, that HitchDoc's trailer infringes on
claims 1, 2, 3, 9, 10 and 11 of the ‘551 Patent. The
parties then filed the present motions addressing invalidity
is scheduled to begin on November 5, 2018. The motions are
fully briefed and ready for decision. I find that oral
argument is not necessary.
following facts are undisputed, except where noted otherwise:
The ‘551 Patent
‘551 Patent, entitled “Trailer for Transporting
Bulk Seed Boxes, ” is an invention designed to help
farmers transport large seed bags or boxes to planters in the
fields. The following embodiment is depicted in Figure 1:
filed its complaint of patent infringement on November 23,
2015. Of the 19 claims contained in the ‘551 patent,
Meridian alleged that HitchDoc's product, the Travis Seed
Cart, infringes claims 1, 2, 3, 9, 10 and 11. These claims
1. An improved trailer for transporting a bulk seed box, the
box having first and second sidewalls, a bottom, a top, and a
flange extending along the sidewalls adjacent the bottom of
the box, the trailer comprising:
a wheeled bed for supporting a bulk seed box, the bed having
a perimeter edge;
a hopper extending below the bed for receiving seed from the
bulk seed box;
a conveyor operatively connected to the hopper for unloading
seed from the hopper; and
the bed having guide plates inclining upwardly and outwardly
from the perimeter edge of the bed to facilitate centering of
the box on the bed.
2. The improved trailer of claim 1 wherein the bed has four
corners and the guide plates are located at the corners of
3. The improved trailer of claim 1 further comprising lock
bars on the bed to overlappingly engage the flange of the
seed box to secure the seed box to the bed.
9. The improved trailer of claim 1 wherein the conveyor is an
auger including a first inner section and a second outer
section pivotally attached to the first section for movement
between transport and discharge positions, and including a
gas cylinder to facilitate movement of the second section
between the transport and discharge positions.
10. The improved trailer of claim 1 wherein each guide plate
extends outwardly at an obtuse angle from the bed.
11. The improved trailer of claim 1 wherein the guide plates
define an enlarged box entrance sloping downwardly and
inwardly toward the bed so that the box will automatically
center on the bed when loaded onto the bed.
Doc. No. 31 at 7-8.
is the only independent claim at issue. The bulk of the
parties' arguments focus on the guide plates
“inclining upwardly and outwardly from the perimeter
edge of the bed.” An example of a Meridian guide plate
is circled in Figure 2:
History of the ‘551 Patent
Friesen, the inventor of the ‘551 Patent, has no
engineering degree and had never observed a seed tender
before he worked on the project that resulted in the
‘551 Patent. He believed there was an issue with
loading and positioning seed boxes on a seed cart. Friesen
initially used perpendicular guide plates and straps to
secure the boxes. To improve the design, he decided to
provide a bigger target for the forklift operator to hit and
allow the seed box to slide into position. He then switched
to plates that extend upwardly and outwardly from the bed of
the cart and exchanged the straps for lock bars.
filed his application for the ‘551 Patent on December
12, 2001. At that time, Claim 1 described the guide plates as
“extending upwardly and outwardly to facilitate
centering the box on the bed.” Doc. No. 107-1 at 4. The
patent examiner rejected the application because of Patent
No. 6, 092, 974 (the Roth Patent). The Roth Patent had guide
plates around the perimeter extending straight upwardly, as
depicted in Figure 3.
overcome the Roth patent, Friesen amended Claim 1 to state,
in relevant part, that the guide plates incline upwardly and
outwardly from the bed. The patent examiner rejected this
second attempt because of the Roth patent and Patent No. 1,
675, 701 (the Fitch patent). The Fitch Patent is depicted in
difficult to see in this depiction, the interior surfaces of
the plates incline upwardly and outwardly from the bed. The
Fitch patent is not directed toward an agriculture-specific
device, but to trucks used to transport general containers.
then amended Claim 1 to its present form, stating the guide
plates inclined “upwardly and outwardly from the
perimeter edge of the bed” (emphasis added) The
patent examiner rejected Friesen's application for a
third time. On appeal, however, the Board of Patent Appeals
and Interferences (the Board) overturned the examiner's
rejection, noting that the Fitch brackets had inclined walls
that were within the perimeter edge of the bed. The
‘551 Patent issued on November 15, 2005. Meridian is
the current owner.
2001 or early 2002, before the ‘551 Patent issued,
Friesen began selling his seed tenders with the patented
features and showing them at farm shows under the “Seed
Titan” name. Wyman Travis, creator of the Travis Seed
Cart now sold by HitchDoc, often attended the same farm
shows. He designed the Travis Seed Cart in late 2004 or early
2005. The guide plates of the Travis Seed Cart are depicted
in Figure 5.
acquired the right to sell the Travis Seed Cart in 2009.
HitchDoc has known about the ‘551 Patent since at least
July 1, 2011, when it submitted the ‘551 Patent to the
United States Patent and Trademark Office (USPTO) as part of
an information disclosure statement.
November 20, 2005, and September 24, 2008, Meridian purchased
1, 000 patent decals for its tenders. Between 2005 and 2009,
Meridian sold 2, 283 box seed tenders. The parties dispute
how many of the tenders sold had patent decals. On September
17, 2015, Meridian gave HitchDoc actual notice of
infringement by sending HitchDoc a cease and desist
letter. HitchDoc continued selling the Travis Seed
Cart after receiving the cease and desist letter and did not
seek counsel's opinion regarding infringement of the
‘551 Patent before Meridian filed its complaint. At no
time has Meridian affirmatively consented to HitchDoc's
filed its complaint for patent infringement on November 23,
2015. At the Markman stage, I found that
“perimeter edge of the bed” meant the planar
boundary around the bed, rather than the physical point where
the side and top surfaces of the bed intersect. With that
understanding, I found that HitchDoc's seed tenders
literally infringed on Claim 1 (and by extension claims 2, 9,
10 and 11) of the ‘551 Patent. Doc. No. 75 at 16. I
also found that Claim 3, which describes lock bars that
“overlappingly engage the flange of the seed box,
” was infringed. Id. at 18-19. After my ruling
that the Travis Seed Cart infringed the '551 patent,
HitchDoc started a redesign of its seed cart.
facts will be discussed below as necessary.
SUMMARY JUDGMENT STANDARDS
party may move for summary judgment regarding all or any part
of the claims asserted in a case. Fed.R.Civ.P. 56(a). Summary
judgment is appropriate when “the pleadings,
depositions, answers to interrogatories, and admissions on
file, together with affidavits, if any, show that there is no
genuine issue of material fact and that the moving party is
entitled to a judgment as a matter of law.” Celotex
Corp. v. Catrett, 477 U.S. 317, 322 (1986).
material fact is one that “‘might affect the
outcome of the suit under the governing law.'”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986). Thus, “the substantive law will identify which
facts are material.” Id. Facts that are
“critical” under the substantive law are
material, while facts that are “irrelevant or
unnecessary” are not. Id.
issue of material fact is genuine if it has a real basis in
the record, Hartnagel v. Norman, 953 F.2d 394, 395
(8th Cir. 1992) (citing Matsushita Elec. Indus. Co. v.
Zenith Radio Corp., 475 U.S. 574, 586-87 (1986)), or
when “‘a reasonable jury could return a verdict
for the nonmoving party' on the question.”
Woods v. DaimlerChrysler Corp., 409 F.3d 984, 990
(8th Cir. 2005) (quoting Anderson, 477 U.S. at 248).
Evidence that only provides “some metaphysical doubt as
to the material facts, ” Matsushita, 475 U.S.
at 586, or evidence that is “merely colorable” or
“not significantly probative, ”
Anderson, 477 U.S. at 249-50, does not make an issue
of material fact genuine.
such, a genuine issue of material fact requires
“sufficient evidence supporting the claimed factual
dispute” so as to “require a jury or judge to
resolve the parties' differing versions of the truth at
trial.” Anderson, 477 U.S. at 248-49. The
party moving for entry of summary judgment bears “the
initial responsibility of informing the court of the basis
for its motion and identifying those portions of the record
which show a lack of a genuine issue.”
Hartnagel, 953 F.2d at 395 (citing Celotex,
477 U.S. at 323). Once the moving party has met this burden,
the nonmoving party must go beyond the pleadings and by
depositions, affidavits, or otherwise, designate specific
facts showing that there is a genuine issue for trial.
Mosley v. City of Northwoods, 415 F.3d 908, 910 (8th
Cir. 2005). The nonmovant must show an alleged issue of fact
is genuine and material as it relates to the substantive law.
If a party fails to make a sufficient showing of an essential
element of a claim or defense with respect to which that
party has the burden of proof, then the opposing party is
entitled to judgment as a matter of law. Celotex,
477 U.S. at 322.
determining if a genuine issue of material fact is present, I
must view the evidence in the light most favorable to the
nonmoving party. Matsushita, 475 U.S. at 587-88.
Further, I must give the nonmoving party the benefit of all
reasonable inferences that can be drawn from the facts.
Id. However, “because we view the facts in the
light most favorable to the nonmoving party, we do not weigh
the evidence or attempt to determine the credibility of the
witnesses.” Kammueller v. Loomis, Fargo &
Co., 383 F.3d 779, 784 (8th Cir. 2004). Instead,
“the court's function is to determine whether a
dispute about a material fact is genuine.” Quick v.
Donaldson Co., Inc., 90 F.3d 1372, 1376-77 (8th Cir.
cross motions for summary judgment, the “court must
rule on each party's motion on an individual and separate
basis, determining, for each side, whether a judgment may be
entered in accordance with the Rule 56 standard.” 10A
Charles Alan Wright, Arthur R. Miller & Mary Kay
Kane, Federal Practice and Procedure § 2720 (3d
ed. 1998). Because the parties seek summary judgment on the
same issue, I will consider all the parties' arguments,
keeping in mind the separate inferences that are to be drawn
from each motion. See Wright v. Keokuk Cnty. Health
Ctr., 399 F.Supp.2d 938, 946 (S.D. Iowa 2005).
Invalidity Under Section 103
argues that all infringed claims (1, 2, 3, 9, 10 and 11) are
invalid as obvious pursuant to 35 U.S.C. §
Doc. No. 91-1 at 4. HitchDoc argues that the standard the
Board used to determine that the patent is valid is no longer
appropriate under current law, and the current standard for
obviousness is much lower. Id. at 23- 25. Under the
new standard, HitchDoc claims the '551 Patent is clearly
an obvious combination of well-known elements from other
patents. Id. at 19.
U.S.C. § 103 states:
A patent for a claimed invention may not be obtained . . . if
the differences between the claimed invention and the prior
art are such that the claimed invention as a whole would have
been obvious before the effective filing date of the claimed
invention to a person having ordinary skill in the art to
which the claimed invention pertains.
issued, a patent is presumed valid . . . and the challenging
party has the heavy burden of proving invalidity by
substantial evidence.” Saturn Mfg., Inc. v.
Williams Patent Crusher & Pulverizer Co., 713 F.2d
1347, 1350 (8th Cir. 1983). A patent already obtained can be
subsequently found invalid if it is obvious under this
section. Motorola, Inc. v. Alexander Mfg. Co., 786
F.Supp. 808, 813 (N.D. Iowa 1991). A patent is obvious if a
“combination of familiar elements according to known
methods . . . does no more than yield predictable
results.” KSR Int'l Co. v. Telelex Inc.,
550 U.S. 398, 416 (2007). A party seeking to invalidate a
patent as obvious must also show that “a skilled
artisan would have been motivated to combine the teachings of
the prior art references to achieve the claimed invention and
. . . would have had a reasonable expectation of
success.” Bristol-Myers Squibb Co. v. Teva Pharms.
USA, Inc., 752 F.3d 967, 973 (Fed. Cir. 2014).
an invention is obvious under § 103 is a legal
conclusion based on the underlying facts of record.
Velander v. Garner, 348 F.3d 1359, 1363 (Fed. Cir.
2003). The factual inquiries are “(1) the scope and
content of the prior art; (2) the level of ordinary skill in
the prior art; and (3) the differences between the claimed
invention and the prior art, ” as well as any
additional “objective indicia of nonobviousness.”
PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d
1186, 1193 (Fed. Cir. 2003). These secondary characteristics
of nonobviousness include commercial success, long felt but
unsolved needs, and failure of others. Saturn Mg.,
713 F.2d at 1351.
I can address the parties' arguments on invalidity, I
must determine the applicable record. Two of the four
contested expert witnesses, James Heise and John Hamilton,
have provided opinions regarding certain elements of the
obviousness analysis. Meridian filed a motion (Doc. No. 118)
to exclude Heise, to which HitchDoc resisted (Doc. No. 127).
Meridian filed a reply (Doc. No. 132). HitchDoc filed a
motion (Doc. No. 111) to exclude Hamilton, which Meridian
resisted (Doc. No. 123). HitchDoc filed a reply (Doc. No.
The Daubert Analysis
Rule of Evidence 702 governs the admission of expert
testimony. The rule states that a qualified expert may
testify “in the form of an opinion or otherwise”
(a) the expert's scientific, technical, or other
specialized knowledge will help the trier of fact to
understand the evidence or to determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and
(d) the expert has reliably applied the principles and
methods to the facts of the case
Fed. R. Evid. 702. To be admissible, expert testimony must be
both relevant and reliable. Weisgram v. Marley Co.,
169 F.3d 514, 517 (8th Cir. 1999), aff'd, 528
U.S. 440 (2000). Evidence is relevant if it tends to make a
fact more or less probable and is of consequence in
determining the action. Fed.R.Evid. 401. To satisfy the
relevancy requirement, “‘the proponent must show
that the expert's reasoning or methodology was applied
properly to the facts at issue.'” Smith v.
Bubak, 643 F.3d 1137, 1138 (8th Cir. 2011) (quoting
Barrett v. Rhodia, Inc., 606 F.3d 975, 980 (8th Cir.
is reliable if it is useful to the finder of fact in deciding
an ultimate issue of fact, the expert is qualified and the
evidence used by the expert is reliable. Peters v.
Woodbury Cty., Iowa, 979 F.Supp.2d 909, 919 (N.D. Iowa
2013), aff'd sub nom. Peters v. Risdal, 786 F.3d
1095 (8th Cir. 2015). The trial court has broad discretion
when determining the reliability of expert testimony.
United States v. Vesey, 338 F.3d 912, 916 (8th Cir.
2003). Doubts on whether the testimony will be helpful should
be resolved in favor of admissibility. Peters, 979
F.Supp.2d at 919 (quoting Larabee v. MM&L Int'l
Corp., 896 F.2d 1112, 1116 n.6 (8th Cir. 1990)).
Testimony is useful if it will provide information
“beyond the common knowledge of the trier of
fact.” Langenbau v. Med-trans Corp., 167
F.Supp.3d 983, 996 (N.D. Iowa 2016). “An expert's
testimony may be excluded on ‘reliability' grounds
if it is ‘so fundamentally unsupported that it can
offer no assistance to the jury.'” Peters,
979 F.Supp.2d at 920 (quoting Polski v. Quigley
Corp., 538 F.3d 836, 839 (8th Cir. 2008)). An expert may
rely on experience-based testimony if the expert also
explains how that experience lead to his conclusion, why it
is a sufficient basis for the opinion and “how that
experience is reliably applied to the facts.”
Vesey, 338 F.3d at 917.
Rule of Evidence 704 provides that expert evidence is
admissible even if it embraces an ultimate issue in the case.
Fed.R.Evid. 704(a). Thus, to the extent an expert lays proper
foundation by demonstrating an adequate basis for an opinion,
the opinion may be admissible. Langenbau, 167
F.Supp.3d at 995. However, opinions that merely tell the
trier of fact what result to reach are not admissible.
Id.; Lee v. Andersen, 616 F.3d 803, 808-09 (8th Cir.
Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579
(1993), the district court must perform a “gatekeeping
function” to ensure that irrelevant or unreliable
expert testimony is not introduced into evidence. See,
e.g., In re Zurn Pex Plumbing Prod. Liab. Litig., 644
F.3d 604, 613 (8th Cir. 2001). More specifically:
The objective of the Daubert inquiry “is to
make certain that an expert, whether basing testimony upon
professional studies or personal experience, employs in the
courtroom the same level of intellectual rigor that
characterizes the practice of an expert in the relevant
field.” Kumho Tire Co., Ltd. v. Carmichael,
526 U.S. 137, 152, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999).
[T]his is a flexible, case-specific inquiry. “The trial
court ha[s] to decide whether this particular expert had
sufficient specialized knowledge to assist the jurors in
deciding the particular issues in the case.”
Id. at 156, 119 S.Ct. 1167 (quotation omitted);
see Fed. R. Evid. 702 and Advisory Committee Notes.
American Auto. Ins. Co. v. Omega Flex, Inc., 783
F.3d 720, 722-23 (8th Cir. 2015). This
“gatekeeper” function requires me to “make
a ‘preliminary assessment of whether the reasoning or
methodology underlying the testimony is scientifically valid
and of whether that reasoning or methodology properly can be
applied to the facts in issue.' ” Kudabeck v.
Kroger Co., 338 F.3d 856, 860 (8th Cir.2003) (quoting
Daubert, 509 U.S. at 592-93).
Heise's testimony consists of an expert report (Doc. No.
91-21) as well as deposition testimony (Doc. No. 117-14). A
summary of his opinions are as follows:
. All the claims of the ‘551 Patent
are invalid as obvious under prior art. Doc. No. 91-21 at 8,
. He declines to provide an opinion on any
“secondary considerations” because Meridian did
not provide sufficient evidence of those considerations.
. A person of ordinary skill in the art is
“a person who has designed seed carts or similar
devices . . . as would a mechanical designer or engineer with
2 to 4 years of formal technical/engineering education or 5
to 7 years of on-the-job training in product design and/or a
person with equivalent training and experience in the field
of invention.” Id. at 9.
. Prior art does include products other than
“mobile seed carts for transporting bulk seed
containers, ” because using guide plates is a common
practice in many industrial and agricultural settings.
Id. at 11.
. The problem the ‘551 Patent attempts
to solve is placing a box or container safely, efficiently
and accurately onto an elevated platform, or a “defined