United States District Court, E.D. Michigan, Southern Division
WEBASTO THERMO & COMFORT NORTH AMERICA, INC. and WEBASTO-EDSCHA CABRIO USA, INC., Plaintiffs/Counter-Defendants,
BESTOP, INC., Defendant/Counter-Plaintiff.
Steven Whalen United States Magistrate Judge
OPINION AND ORDER (1) DENYING DEFENDANT'S MOTION
FOR SUMMARY JUDGMENT (ECF NO. 170) AND (2) GRANTING
PLAINTIFFS' FIRST MOTION IN LIMINE TO EXCLUDE EVIDENCE OF
ALLEGED INVALIDITY NOT DISCLOSED WITH PARTICULARITY (ECF NO.
D. BORMAN, UNITED STATES DISTRICT JUDGE.
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 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
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.
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).
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).
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)).
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.
N.V. v. Abbott Laboratories, 512 F.3d 1363, 1376 n. 4
(Fed. Cir. 2008).
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).
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.
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.
patent cannot be obtained as to a claimed invention that was
“obvious” to persons having ordinary skill in the
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.
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, ...