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Webasto Thermo & Comfort North America, Inc. v. Bestop, Inc.

United States District Court, E.D. Michigan, Southern Division

July 17, 2019

BESTOP, INC., Defendant/Counter-Plaintiff.

          R. Steven Whalen United States Magistrate Judge



         This action involves Plaintiffs Webasto Thermo & Comfort North America, Inc. and Webasto-Edscha Cabrio USA, Inc.'s (collectively “Webasto”) claim that Defendant Bestop, Inc. (“BesTop”) infringes Webasto's U.S. Patent No. 9, 346, 342 (“the '342 Patent”), entitled “Vehicle Roof and Roof Opening Mechanism.” Webasto claims that BesTop's Accused Product, the Sunrider for Hardtop (“the Sunrider”), infringes Webasto's ‘342 patent as embodied in Webasto's Black Forest ThrowBack top (“ThrowBack”). BesTop responds that the Sunrider does not infringe and that the claims of the '342 Patent were disclosed in prior art and are therefore unpatentable and that BesTop created and publicly used the invention claimed in the ‘342 patent before Webasto applied for a patent in March, 2015, thereby invalidating the ‘342 patent. The Court has issued claim construction rulings and the parties have filed and fully briefed summary judgment and Daubert[1] motions. Now before the Court is BesTop's Motion for Summary Judgment. The matter was fully briefed and the Court held a hearing on June 13, 2019. For the reasons that follow, the Defendants' motion is DENIED.

         I. BACKGROUND

         The background facts of this litigation are set forth in multiple prior Orders of this Court and the reader's knowledge of those facts is presumed. Particular facts, as specifically relevant to the issues in this summary judgment motion, will be discussed where appropriate.


         Summary judgment is appropriate where the moving party demonstrates that there is no genuine dispute as to any material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Fed.R.Civ.P. 56(a). “A fact is ‘material' for purposes of a motion for summary judgment where proof of that fact ‘would have [the] effect of establishing or refuting one of the essential elements of a cause of action or defense asserted by the parties.'” Dekarske v. Fed. Exp. Corp., 294 F.R.D. 68, 77 (E.D. Mich. 2013) (quoting Kendall v. Hoover Co., 751 F.2d 171, 174 (6th Cir. 1984)). A dispute is genuine “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986).

         “In deciding a motion for summary judgment, the court must draw all reasonable inferences in favor of the nonmoving party.” Perry v. Jaguar of Troy, 353 F.3d 510, 513 (6th Cir. 2003) (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986)). At the same time, the non-movant must produce enough evidence to allow a reasonable jury to find in his or her favor by a preponderance of the evidence, Anderson, 477 U.S. at 252, and “[t]he ‘mere possibility' of a factual dispute does not suffice to create a triable case.” Combs v. Int'l Ins. Co., 354 F.3d 568, 576 (6th Cir. 2004) (quoting Gregg v. Allen-Bradley Co., 801 F.2d 859, 863 (6th Cir. 1986)). Instead, “the non-moving party must be able to show sufficient probative evidence [that] would permit a finding in [his] favor on more than mere speculation, conjecture, or fantasy.” Arendale v. City of Memphis, 519 F.3d 587, 601 (6th Cir. 2008) (quoting Lewis v. Philip Morris Inc., 355 F.3d 515, 533 (6th Cir. 2004)). “The test is whether the party bearing the burden of proof has presented a jury question as to each element in the case. The [moving party] must present more than a mere scintilla of the evidence. To support his or her position, he or she must present evidence on which the trier of fact could find for the plaintiff.” Davis v. McCourt, 226 F.3d 506, 511 (6th Cir. 2000) (internal quotation marks and citations omitted). That evidence must be capable of presentation in a form that would be admissible at trial. See Alexander v. CareSource, 576 F.3d 551, 558-59 (6th Cir. 2009).

         In the case of a summary judgment challenge to the validity of a patent, the movant must produce clear and convincing evidence as to each element of the defense. “A patent is presumed valid, and overcoming that presumption at the district court requires clear and convincing evidence.” Indivior Inc. v. Reddy's Laboratories, S.A., ___ F.3d ___, 2019 WL 3047172, at *12 (Fed. Cir. 2019) (citing Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. 91, 95 (2011)).

         III. ANALYSIS

         This case aptly demonstrates the pitfalls of playing fast and loose with rules of discovery. Conclusory expert reports, eleventh hour disclosures, and attempts to proffer expert testimony without compliance with Rule 26 violate both the rules and principles of discovery, and the obligations lawyers have to the court. Exclusion and forfeiture are appropriate consequences to avoid repeated occurrences of such manipulation of the litigation process.

         Innogenetics, N.V. v. Abbott Laboratories, 512 F.3d 1363, 1376 n. 4 (Fed. Cir. 2008).

         Time and again in this case BesTop's litigation conduct has necessitated rulings by the Court awarding sanctions and/or excluding proffered evidence and argument. The following are examples: making material misrepresentations to the Court (see ECF No. 103, Opinion and Order Granting Plaintiffs' Motion for Sanctions, Whalen, MJ and ECF No. 129 Opinion and Order Affirming), failing to timely serve amended infringement and invalidity contentions (see ECF No. 197, Special Master's Report and Recommendation to Grant Plaintiffs' Motion to Strike Second Amended Invalidity Contentions and ECF No. 209, Order Adopting), and failing to serve appropriate expert disclosures (see ECF No. 214, Opinion and Order, Whalen, MJ).[2]

         BesTop continues to defend this pattern of conduct with the repeated assertion that it invented the claimed invention in this case before Webasto and that therefore BesTop must win. But BesTop has been precluded from presenting its anticipation argument in this case and this case involves a patent and claims that post-date the March 16, 2013 enactment of the Leahy-Smith America Invents Act, Pub.L. No. 112-29, § 3, 125 Stat. 284, 285-294 (2011) (“AIA”). “On September 16, 2011, the President signed into law the AIA. The AIA, inter alia, adopted the “first-inventor-to-file” principle for determining priority among patents and patent applications. AIA § 3, 125 Stat. at 285-294. Before the AIA, the United States typically gave priority to the first to invent. Under the AIA, however, priority will go to the first inventor to file a patent application.” Madstad Engineering, Inc. v. U.S. Patent and Trademark Office, 756 F.3d 1366, 1368 (Fed. Cir. 2014) (emphasis in original). Simply being first to invent, even if true, does not win this case.

         BesTop now moves for summary judgment on the only invalidity claim that remains in play - obviousness. And BesTop continues to rely on its fundamentally flawed “we did it first so we win” argument, as evidenced by the closing sentence to its Reply brief in support of its motion for summary judgment: “BesTop's obviousness case boils down to what it has been reporting since the beginning: it was obvious for BesTop to develop the technology claimed by Webasto because BesTop actually did it first.” (ECF No. 199, BesTop's Reply y, PgID 7512.) BesTop's blind adherence to its “we did it first” argument and its repeated failure to abide by the rules of disclosure governing this case, conduct discussed at length by this Court in its May 20, 2019 Opinion and Order granting Webasto's motion to strike BesTop's Second Amended Contentions, has not served BesTop well. BesTop fails in its summary judgment motion to establish by clear and convincing evidence that the ‘342 was obvious.

         A patent cannot be obtained as to a claimed invention that was “obvious” to persons having ordinary skill in the relevant art:

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, 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. Patentability shall not be negated by the manner in which the invention was made.

35 U.S.C. § 103.

         BesTop argues that apart from and independent of any public use, the ‘342 patent is also invalid under 35 U.S.C. § 103 because the invention claimed in the ‘342 patent would have been obvious to persons of ordinary skill in the art at the time Webasto applied for the patent. The ultimate question to be addressed in the obviousness inquiry is whether a person of ordinary skill in the art would have been motivated to combine prior art teachings to arrive at the claimed invention and would reasonably have been expected to succeed in combining those teachings to produce the claimed invention. “‘An obviousness determination requires finding both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art [to achieve the claimed invention] and that the skilled artisan would have had a reasonable expectation of success in doing so.'” In re Stepan Co., 868 F.3d 1342, 1345-46 (Fed. Cir. 2017) (quoting Intelligent Bio-Sys., Inc. v. Illumina CambridgeLtd., 821 F.3d 1359, ...

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