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Card-Monroe Corp. v. Tuftco Corp.

United States District Court, E.D. Tennessee, Chattanooga

September 1, 2017

CARD-MONROE CORP., Plaintiff,
v.
TUFTCO CORP., Defendant.

          Christopher H. Steger, Magistrate Judge

          AMENDED MEMORANDUM AND ORDER [1]

          TRAVIS R. McDONOUGH, UNITED STATES DISTRICT JUDGE

         Before the Court are: (1) Defendant Tuftco Corp.'s (“Tuftco”) motion to strike and for sanctions (Doc. 317); (2) Tuftco's motion for summary judgment (Doc. 450); and (3) Plaintiff Card-Monroe Corp.'s (“CMC”) motion for summary judgment (Doc. 289). Having considered the record, the parties' written submissions, and their oral arguments at the hearing on July 14, 2017, the Court hereby DENIES Tuftco's motion to strike and for sanctions (Doc. 317) and GRANTS IN PART and DENIES IN PART the parties' summary judgment motions (Docs. 289, 450).

         I. BACKGROUND

         1. The Patents

         The three patents at issue concern certain carpet-tufting machines and methods. U.S. Patent No. 8, 141, 505 (the “ ‘505 Patent”), entitled “Yarn Color Placement System, ” was issued by the United States Patent and Trademark Office (“PTO”) on March 27, 2012. (Doc. 292-1, at 1-17.)[2] U.S. Patent No. 8, 359, 989 (the “ ‘989 Patent”), entitled “Stitch Distribution Control System for Tufting Machines, ” was issued on January 29, 2013. (Id. at 18-51.) Finally, U.S. Patent No. 8, 776, 703 (the “ ‘703 Patent”) (collectively, the “Asserted Patents”), entitled “Yarn Color Placement System, ” was issued on July 15, 2014. (Id. at 52-68.) The ‘989 Patent and ‘703 Patent are continuations of the ‘505 Patent and, as such, contain similar specifications. (Id. at 12, 40, 63.) CMC is the owner by assignment of all rights, title, and interest to the Asserted Patents.

         The invention, marketed as “ColorPoint, ” “generally relates to tufting machines, and in particular, to a system for coordinating the feeding and placement of yarns of different colors within a backing material passing through a tufting machine to enable formations of free-flowing patterns within a tufted article.” (Id. at 12, col. 1:11-15.)[3] According to the Asserted Patents' specifications, before ColorPoint, the carpet tufting industry sought “new, more eye-catching” patterns that “replicate the look and feel of fabrics formed on a loom.” (Id., col. 1:20-25.) Though manufacturers could produce more vibrant patterns with specialty machines that individually placed yarns with a single needle, they could not produce those patterns on a commercial scale. (Id., col. 1:35-54.) CMC presented ColorPoint as the solution to this industry limitation. By coordinating yarn feed, needle bar shifts, and the feeding of backing material through the tufting machine, multiple colors of yarns are inserted at the same stitch location. (Id. at 12-16.) Unwanted yarns (those not called for in a design) are then pulled low or out of the backing so they cannot be seen in the carpet's face. (Id.) CMC's new method inserts a higher number of yarns into the backing than traditional tufting methods, while avoiding gaps between visible tufts in the face of the carpet. (Id.) The resulting products accommodate more intricate pattern designs while preserving sharpness and definition. (Id.)

         2. The Claims

         On February 8, 2016, the parties identified twelve claims to be severed for ongoing proceedings: Claims 8, 10, and 12 of the ‘505 Patent; Claims 21, 22, 24, 27, 28, and 30 of the ‘989 Patent; and Claims 1, 28, and 29 of the ‘703 Patent (together, the “Severed Claims”). (Doc. 169.) Claim 1 of the ‘703 Patent is the only machine claim at issue herein (the “Machine Claim”); the rest are method claims (the “Method Claims”).

         i. Claims 8, 10, and 12 of the ‘505 Patent Claim 8 recites:

         A method of operating a tufting machine to form patterned tufted articles having multiple colors, comprising:

feeding a backing material through the tufting machine;
feeding a plurality of yarns to a series of needles carried by a shiftable needle bar;
shifting the needle bar transversely according to a programmed shift profile for the pattern of the tufted article;
controlling the feeding of the yarns to the needles in accordance with programmed pattern instructions so as to feed desired amounts of the yarns to the needles as needed to form rows of high and low tufts of yarns in the backing materials;
forming the tufts of yarns at an increased effective stitch rate determined by multiplying the number of colors being formed in the patterned tufted article by a desired fabric stitch rate that comprises a number of stitches per inch desired for the patterned tufted articles; and
wherein the feeding of the yarns to form the high and low tufts tracks the shifting of the needles so as to substantially maintain density of the tufts of yarns being formed in the backing material in a direction of the rows of tufts and location of the high tufts of yarns at desired positions across the backing to form the patterned tufted articles.

(Doc. 292-1, at 16, col. 10:39-61.)

         Claim 10, which is dependent on Claim 8, recites:

The method of claim 9[4] and wherein feeding a second, lesser amount of yarn comprises back-robbing the yarns fed to each needle to an extent sufficient to substantially hide or remove the low tufts from the backing.

(Id. at 16-17, cols. 10:66-11:2.)

         Claim 12, also dependent on Claim 8, recites:

The method of claim 8 and wherein the tufting machine is a 1/10th gauge tufting machine and the desired fabric stitch rate is approximately ten stitches per inch.

(Id. at 17, col. 11:6-8.)

         ii. Claims 21, 22, 24, 27, 28, and 30 of the ‘989 Patent

         Claim 21 recites:

A method of operating a tufting machine to form a patterned article including a series of different yarns, comprising:
receiving a pattern including a series of pattern steps for forming the patterned article;
determining an effective process stitch rate for the patterned article;
feeding a backing material through the tufting machine at the effective process stitch rate; as the backing material is fed through the tufting machine, reciprocating a series of needles to deliver the yarns into the backing material; and
controlling feeding of the yarns to the needles in accordance with programmed pattern instructions to retain a tuft of a desired yarn for each stitch being formed in the backing material
wherein determining the effective process stitch rate for the patterned article comprises increasing the desired stitch rate for the pattern by a multiple approximately corresponding to a number of colors of yarns used to form the patterned article.

(Id. at 50, col. 21:28-49.)

         Claim 22 recites:

         A method of tufting a patterned article, comprising:

determining a desired fabric stitch rate for the patterned article;
feeding a series of yarns to a series of spaced needles;
feeding a backing material through a tufting zone; as the backing material is fed through the tufting zone, reciprocating the needles carrying the yarns into and out of the backing material;
shifting at least some of the needles transversely with respect to the backing material; and
at selected stitch locations, presenting a number of different yarns for insertion into the backing material and controlling the yarn feed to the needles so as to retain at least one desired yarn of the different yarns presented for each selected stitch location;
wherein feeding the backing material comprises moving the backing material through the tufting zone at an effective stitch rate approximately equivalent to the desired fabric stitch rate increased by an amount based upon a number of different yarns presented at a stitch location being tufted.

(Id., cols. 21:50-22:3.)

         Claim 24 recites:

The method of Claim 22 and wherein presenting a number of different yarns and controlling the yarn feed to the needles comprises presenting a yarn of each color that could be tufted at a particular selected stitch location and feeding the yarn for a color corresponding to the selected stitch location to form a tuft, while controlling feeding of the yarns of remaining colors to pull such yarns low or remove them from the selected stitch location.

(Id., col. 22:9-16.)

         Claim 27 recites:

         A method of tufting a patterned article comprising:

determining a desired fabric stitch rate for the patterned article;
feeding a series of yarns to series of spaced needles;
determining an effective process stitch rate for the patterned article, comprising increasing the desired stitch rate for the pattern by a multiple approximately corresponding to a number of colors of yarns used to form the patterned article; feeding a backing material through a tufting zone;
as the backing material is fed through the tufting zone, reciprocating the needles carrying the yarns into and out of the backing material; shifting at least some of the needles transversely with respect to the backing material; and
at selected stitch locations, presenting a number of yarns for insertion into the backing material and controlling the yarn feed to the needles so as to retain at least one desired yarn of the yarns presented for each selected stitch location.

(Id., col. 22:25-45.)

         Claim 28 recites:

         A method of forming tufted patterns in a backing, comprising:

determining a desired fabric stitch rate for a pattern to be formed;
feeding the backing material through a tufting machine;
as the backing is fed through the tufting machine, reciprocating a series of spaced needles carrying a series of yarns into and out of the backing to form a series of tufts in the backing; and
at selected stitch locations of the pattern being formed in the backing, presenting a desired number of yarns for insertion into the backing and selectively withholding non-retained yarns from such stitch locations;
wherein selectively withholding the non-retained yarns comprises controlling at one or more yarn feed mechanisms feeding the non-retained yarns to the needles so as to pull back such yarns; and
wherein feeding the backing through the tufting machine comprises feeding the backing at an effective process stitch rate approximately equivalent to the desired fabric stitch rate increased by a number of different yarns being used to form the pattern.

(Id., col. 22:46-67.)

         Claim 30 recites:

A method of tufting a patterned article including a series of tufts of different color yarns, arranged according to pattern instructions for the article, comprising:
determining a desired fabric stitch rate for the patterned article;
moving a backing through a tufting zone at an effective process stitch rate based upon the desired fabric stitch rate increased in view of a number of colors of yarns of the patterned article;
as the backing moves through the tufting zone, reciprocating a series of spaced needles to present a selected series of yarns to stitch locations in the backing; and
at each stitch location, controlling feeding of the series of yarns presented at each stitch location and selectively retaining a desired yarn of the series of yarns presented at each stitch location based upon the pattern instructions.

(Id. at 51, cols. 23:5-24:5.)

         iii. Claims 1, 28, and 29 of the ‘703 Patent

         Claim 1 recites:

A tufting machine for forming patterned tufted articles including different color yarns therein, comprising:
at least one needle bar having a series of needles mounted at a spacing based on a gauge of the tufting machine therealong;
backing feed rolls for feeding a backing material through a tufting zone of the tufting machine; a pattern yarn feed mechanism for feeding a series of yarns to said needles;
at least one needle bar shifter for shifting said at least one needle bar transversely across the tufting zone;
a series of gauge parts mounted below the tufting zone in a position to engage said needles of said at least one needle bar as said needles are reciprocated into and out of the backing material to form tufts of yarns in the backing material; and
a control system for controlling said yarn feed mechanism in cooperating with said at least one needle bar shifter shifting the at least one needle bar in accordance with a series of transverse pattern shift steps received by the control system, to control feeding of the yarns to said needles as the needles are reciprocated and as the needle bar is shifted in accordance with the transverse pattern shift steps as needed to form selected tufts of yarns of a desired height and to pull non-selected ones of the yarns low or out of the backing material for each pattern step;
wherein the control system is linked to and controls the backing feed rolls for feeding the backing material such that the tufts of yarns are formed in the backing material at an effective stitch rate that is determined by increasing a prescribed stitch rate of the patterned tufted article that is based on the gauge of the tufting machine by a selected amount so as to form the patterned articles with the selected tufts of yarns having an appearance of being formed at the desired stitch rate.

(Id. at 67, col. 9:17-51.) The ‘703 Patent's specification expands on the “control system” software recited in Claim 1. It provides:

The tufting machine control system 25 generally will comprise a tufting machine control such as a “Command Performance™” tufting machine control system as manufactured by Card-Monroe Corp. The control system also typically includes a computer/processor or controller 26 that can be programmed with various pattern information and which monitors and controls the operative elements of the tufting machines . . . . The tufting machine control system . . . further can receive and execute or store pattern information directly from a design center . . . that can be separate and apart from the tufting machine control system, or which can be included as part of the tufting machine control system.

(Id. at 64, col. 4:8-24.)

         Claim 28 recites:

A method of forming tufted articles including tufts of multiple different color yarns, comprising:
feeding a backing material through a tufting machine;
reciprocating a series of needles to deliver the yarns into the backing material to form tufts of yarns therein;
engaging the yarns delivered into the backing material by the needles with a series of gauge parts to pull loops of yarns from the needles for forming the tufts of yarns in the backing material;
shifting at least some of the needles transversely, wherein the needles are shifted by single shift steps, double shift steps, or a combination of single and/or double shift steps according to a shift profile based upon a number of colors of yarns of the pattern for the tufted article;
controlling feeding of the yarns to the needles in accordance with the shift profile of the pattern for the article to selectively form tufts of yarns of a desired pile height and to selectively pull back loops of yarns to form the pattern;
wherein the tufts of yarns are formed in the backing material at an increased effective stitch rate that is at least two times a prescribed stitch rate based upon a gauge of the tufting machine, for the feeding of the backing material for the pattern of the tufted article so as to form the patterned article with an appearance of an increased density.

(Id. at 68, col. 12:4-30.)

         Claim 29 recites:

A method of forming tufted articles including tufts of multiple different color yarns, comprising:
feeding a backing material through a tufting machine at an effective stitch rate that is increased over a desired stitch rate for the tufted article that is based on a gauge of the tufting machine;
reciprocating a series of needles to deliver the yarns into the backing material to form tufts of yarns therein;
engaging the yarns delivered into the backing material by the needles with a series of gauge parts to pull loops of yarns from the needles for forming the tufts of yarns in the backing material;
shifting at least some of the needles transversely according to a desired shift profile based upon a number of colors of yarns of the pattern for the tufted article;
controlling feeding of the yarns to the needles in accordance with the shift profile of the pattern for the article to selectively form a number of high tufts of yarns and to selectively pull back loops of yarns to form the pattern;
wherein the tufts of yarns are formed in the backing material at an effective stitch rate, so as to form the patterned article with the number of high tufts formed substantially matching the desired stitch rate of the tufting machine and with the loops of yarns selectively pulled back being substantially hidden by the high tufts of yarns.

(Id., col. 12:31-56.)

         3. The Accused Products

         CMC accuses Tuftco of directly and indirectly infringing the Asserted Patents. Specifically, CMC alleges Tuftco created a competing-but infringing-technology, and then manufactured and sold products that perform that technology. According to CMC, Tuftco refers to this competing technology in multiple ways, including “Colortuft, ” “iTuft, ” “iTuft c, ” “Easy Pattern, ” and “Easy Mode.”[5] (Doc. 442, at 11-12.) For simplicity, the Court will refer to the allegedly infringing technology as “Colortuft/iTuft c.” At issue are twenty-nine tufting machines made by Tuftco (the “Accused Products”), including twenty-eight single- and double-needle-bar machines sold by Tuftco (Doc. 457, at 1) and one in-house sample machine (Doc. 454-9, at 61). Though ColorPoint fabrics are typically made with single-needle-bar machines (Id. at 105; Doc. 292-1, at 14, col. 5:10-30), CMC alleges that the double-needle-bar Accused Products also infringe the Severed Claims.[6] Double-needle-bar machines operate similarly to single-needle-bar machines, but with some differences. The “gauge” of a single-needle-bar machine refers to the spacing between the needles on the needle bar. (Doc. 292-1, at 13, col. 4:43-46; Doc. 454-9 at 91.) A 1/10th gauge machine, for example, will have needles spaced at 1/10th of an inch, or ten needles per inch, on its needle bar. (Id.) Double-needle-bar machines have a “composite gauge, ” which consists of the combined gauge of both of its needle bars. (Doc. 454-11, at 133.) For example, a 1/10th gauge composite double-needle-bar machine will have two 1/5th gauge needle bars. (Id.) Each needle bar of the double-needle-bar Accused Products can carry all colors of the pattern being tufted. (Id.) The needle bars typically run parallel to each other. (Id., at 133-34; Doc. 292-1, at 104, ¶ 12.) The needle bars can either shift with one another or against each other. (Doc. 454-11, at 134.) The needle bars are offset and do not stitch in the same longitudinal path. (Id. at 135.) In other words, if the front needle bar is stitching the odd rows, the rear needle bar would be stitching only the even rows. (Id.) Of course, with a single-needle-bar tufting machine, the needle bar would tuft every longitudinal row.

         During discovery, CMC's expert, Steven Berger, conducted inspections on five of the Accused Products, including: (1) a 1/10th gauge single-needle-bar machine sold to Lexmark; (2) a 1/10th gauge single-needle-bar machine sold to Signature; (3) a 1/12th composite gauge double-needle-bar machine with two staggered 1/6th gauge needle bars sold to J&J Industries; (4) a 1/10th gauge single-needle-bar machine sold to Shaw; and (5) a 1/10th composite gauge double-needle-bar machine with two staggered 1/5th needle bars, which Tuftco keeps in house as a sample machine (together, the “Inspected Machines”).[7] (Doc. 454-9, at 60-61.) CMC alleges that Tuftco directly infringed the Machine Claim-Claim 1 of the ‘703 Patent-by manufacturing and selling the Accused Products. (Doc. 442, at 31.) Additionally, CMC alleges Tuftco directly infringed the Method Claims by producing in-house samples to market Colortuft/iTuft c.[8] (Id. at 31-32.) Finally, CMC asserts Tuftco indirectly infringed the Method Claims by inducing its customers to directly infringe them. (Id. at 32-33.)

         4. Procedural History

         CMC initiated this action on October 7, 2014, alleging infringement of the Asserted Patents. (Docs. 1, 127.) As is relevant here, Tuftco asserted affirmative defenses of non-infringement, invalidity, inequitable conduct, and patent misuse. (Doc. 128.) Tuftco also asserted counterclaims for: (1) non-infringement, invalidity, and unenforceability; (2) tortious interference with business relationships; (3) unfair trade practices; and (4) unfair competition. (Id.) Pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), the Court held a claim-construction hearing on April 19, 2016 (the “Markman hearing”), and thereafter issued an order construing ten disputed terms in the Asserted Patents. (Doc. 220.) On October 20, 2016, the Court issued an order directing each party to file one comprehensive summary judgment motion supported by a forty-page memorandum, in lieu of serial motions and memoranda. (Doc. 280.)

         On November 4, 2016, the parties filed their motions for summary judgment. (Docs. 288, 289, 450.) On November 28, 2016, each party responded in opposition to the other's motion. (Docs. 319, 325, 445, 452.) Also on November 28, 2016, Tuftco filed a motion to strike and for sanctions. (Doc. 317.) On December 8, 2016, each party filed a reply in support of its motion. (Docs. 334, 336, 447, 453.) On December 15, 2016, CMC responded in opposition to Tuftco's motion to strike (Doc. 345), and Tuftco replied on December 22, 2016 (Doc. 352). These motions are now ripe for the Court's review.

         II. MOTION TO STRIKE AND FOR SANCTIONS

         The Court will first address Tuftco's motion to strike. Tuftco moves to strike the portions of CMC's summary judgment brief that exceed the Court's page limitation on memoranda accompanying summary judgment motions. (Doc. 317.) Specifically, Tuftco argues that CMC improperly incorporated into its brief over fifty pages from its expert's infringement report in contravention of the Court's order imposing a forty-page limit. (Id.) Tuftco cites a number of cases in support, including two from this district and one from the Sixth Circuit.

         Unlike the cases cited by Tuftco, however, the document CMC “incorporates” is not argument or submissions by an attorney, but portions of an expert report. Cf., e.g., Cross v. Sbarro Am., Inc., No. 1:09-cv-275, 2011 WL 572415, at *4 (E.D. Tenn. Feb. 15, 2011) (sustaining an objection to a party's incorporation of an attached statement of undisputed facts). Under the Federal Rules of Civil Procedure, a party may support its motion for summary judgment by “citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials . . . .” Fed.R.Civ.P. 56(c)(1)(A). Moreover, the importance of expert opinion at the summary judgment stage in patent litigation must not be ignored. See, e.g., Intellectual Sci. & Tech., Inc. v. Sony Elecs., Inc., 589 F.3d 1179, 1183 (Fed. Cir. 2009) (“To satisfy the summary judgment standard, a patentee's expert must set forth the factual foundation for his infringement opinion in sufficient detail for the court to be certain that features of the accused product would support a finding of infringement . . . .”). CMC's memorandum simply points to other portions of the record, in context, without unnecessarily burdening the Court with in-bulk reproductions of such content. There is nothing inappropriate-much less sanctionable-about CMC's conduct. Accordingly, the Court finds that CMC has not improperly exceeded the page limitation and will DENY Tuftco's motion to strike and for sanctions (Doc. 317).

         III. MOTIONS FOR SUMMARY JUDGMENT

         Tuftco moves for summary judgment that the Asserted Patents are invalid due to indefiniteness and anticipation. In the alternative, Tuftco seeks summary judgment that the “invention” in the Asserted Patents is limited to software CMC uses to run ColorPoint. (Doc. 450.) Tuftco also moves for summary judgment of non-infringement and on a number of damages issues. (Id.)

         CMC moves for summary judgment: (1) that the Severed Claims are valid with respect to anticipation, obviousness, indefiniteness, and ineligibility under 35 U.S.C. § 101; (2) that the Inspected Machines are representative of all Accused Products; (3) that Tuftco has directly infringed the Machine Claim and the Method Claims; (4) that Tuftco has indirectly infringed the Method Claims; and (5) on Tuftco's counterclaims and affirmative defenses of inequitable conduct, tortious interference, unfair competition, unfair trade practices, and patent misuse. (Doc. 289.)

         1. Standard of Review

         Summary judgment is proper when “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.” Fed.R.Civ.P. 56(a). The Court views the evidence in the light most favorable to the nonmoving party and makes all reasonable inferences in favor of the nonmoving party. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Nat'l Satellite Sports, Inc. v. Eliadis Inc., 253 F.3d 900, 907 (6th Cir. 2001).

         The moving party bears the burden of demonstrating that there is no genuine dispute as to any material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Leary v. Daeschner, 349 F.3d 888, 897 (6th Cir. 2003). The moving party may meet this burden either by affirmatively producing evidence establishing that there is no genuine issue of material fact or by pointing out the absence of support in the record for the nonmoving party's case. Celotex Corp., 477 U.S. at 325. Once the movant has discharged this burden, the nonmoving party can no longer rest upon the allegations in the pleadings; rather, it must point to specific facts supported by evidence in the record demonstrating that there is a genuine issue for trial. Chao v. Hall Holding Co., Inc., 285 F.3d 415, 424 (6th Cir. 2002).

         At summary judgment, the Court may not weigh the evidence; its role is limited to determining whether the record contains sufficient evidence from which a jury could reasonably find for the non-movant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-49 (1986). A mere scintilla of evidence is not enough; the Court must determine whether a fair-minded jury could return a verdict in favor of the non-movant based on the record. Id. at 251-52; Lansing Dairy, Inc. v. Espy, 39 F.3d 1339, 1347 (6th Cir. 1994). If not, the Court must grant summary judgment. Celotex, 477 U.S. at 323.

         The standard of review when parties file cross-motions for summary judgment is the same as when only one party moves for summary judgment. Taft Broad. Co. v. United States, 929 F.2d 240, 248 (6th Cir. 1991). When there are cross-motions for summary judgment, the court must “evaluate each party's motion on its own merits, taking care in each instance to draw all reasonable inferences against the party whose motion is under consideration.” Id. In considering cross motions for summary judgment, the court is “not require[d] . . . to rule that no fact issue exists.” Begnaud v. White, 170 F.2d 323, 327 (6th Cir. 1948).

         2. Invalidity

         Generally, patents are presumed valid, and the party challenging validity bears the burden of proving invalidity by clear and convincing evidence. 35 U.S.C. § 282(a); Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. 91, 95 (2011). “Clear and convincing evidence is such evidence that produces ‘an abiding conviction that the truth of [the] factual contentions are highly probable.'” ActiveVideo Networks, Inc. v. Verizon Commc'ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (quoting Colorado v. New Mexico, 467 U.S. 310, 316 (1984)).

         Tuftco moves for summary judgment that: (1) Claim 1 of the ‘703 Patent is invalid for indefiniteness under 35 U.S.C. § 112, ¶ 6; and (2) the Severed Claims are invalid as anticipated. CMC moves for summary judgment on Tuftco's invalidity defenses and counterclaims, asserting that insufficient evidence exists to support: (1) indefiniteness under § 112, ¶ 2 and ¶ 6; (2) anticipation; (3) obviousness; and (4) ineligibility under § 101.

         i. Indefiniteness

         Tuftco counterclaims that all three Asserted Patents are invalid under 35 U.S.C. § 112. (Doc. 128, at 9.) Tuftco now moves for summary judgment specifically on Claim 1 of the ‘703 Patent, based on invalidity due to indefiniteness under 35 U.S.C. § 112, ¶ 6.[9] CMC cross-moves for summary judgment on Tuftco's invalidity counterclaim generally, arguing that Tuftco cannot establish that the Asserted Patents are invalid under 35 U.S.C. § 112, ¶ 2 or ¶ 6.

         1. 35 U.S.C. § 112, ¶ 6

         Both parties move for partial summary judgment under 35 U.S.C. § 112, ¶ 6. Whether a claim is subject to § 112, ¶ 6, is a matter of claim construction and, therefore, a question of law. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346 (Fed. Cir. 2015). However, in construing a claim, the Court may make underlying findings of fact based on extrinsic evidence, such as expert testimony. Id. Pursuant to § 112, ¶ 6, a patent applicant may express an element of a claim “as a means or step for performing a specified function . . . and such claim shall be construed to cover the corresponding structure . . . described in the specification and equivalents thereof.” 35 U.S.C. § 112, ¶ 6. Though paragraph six allows means-plus-function language, those claims are “still subject to the [§ 112, ¶ 2] requirement that a claim ‘particularly point out and distinctly claim' the invention.” In re Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (quoting § 112, ¶ 2). Accordingly, if a patentee uses generic language to claim function under § 112, ¶ 6, it must clearly identify and describe a corresponding structure in the specification for performing the claimed function. Williamson, 792 F.3d at 1351. If the patentee does not specify such structure, the claim is considered purely functional and invalid for indefiniteness. Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1363 (Fed. Cir. 2012).

         Tuftco argues that Claim 1 of the ‘703 Patent is properly construed as a means-plus-function claim under § 112, ¶ 6, because it uses generic language-“control system”-to claim function. (Doc. 450, at 10-13.) According to Tuftco, because the patent specification fails to disclose sufficient structure as required of means-plus-function claims, Claim 1 is invalid for indefiniteness. (Id. at 13-15.)

         The first inquiry under § 112, ¶ 6, is whether Claim 1 of the ‘703 Patent should be construed as a means-plus-function claim. In determining whether a means-plus-function construction applies, the Court analyzes “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Williamson, 792 F.3d at 1349. A claim that does not include the word “means” carries a rebuttable presumption that the limitation is not subject to § 112, ¶ 6.[10] Id. The presumption is overcome if “the claim term fails to ‘recite sufficiently definite structure' or else recites ‘function without reciting sufficient structure for performing that function.'” Id. (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). In other words, the Court asks whether “the claim language, read in light of the specification, recites sufficiently definite structure to avoid § 112, ¶ 6.” Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015) (quoting Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014)). In Williamson, for example, the Federal Circuit held that a limitation claiming a “distributed learning control module” and three functions it performed was subject to a means-plus-function construction. 792 F.3d at 1350-51. Though the limitation did not contain the term “means, ” the court noted that “[g]eneric terms such as ‘mechanism, ' ‘element, ' [and] ‘device' . . . that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means' . . . .” Id. at 1350. “[M]odule, ” the court found, “is a well-known ‘nonce word' that can operate as a substitute for ‘means' . . . .” Id. Moreover, the prefix “distributed learning control” did not add structure to the phrase. Id. at 1351. The court also noted that the claim language did not describe how the “‘distributed learning control module' interacts with other components . . . in a way that might inform the structural character of the limitation in question” and that nothing in the specification or prosecution history imparted structure into the phrase. Id.

         Here, Claim 1 provides in pertinent part: “A tufting machine for forming pattern tufted articles including different color yarns therein, comprising: . . .

a control system for controlling said yard feed mechanism in cooperation with said at least one needle bar shifter shifting the at least one needle bar in accordance with a series of transverse pattern shift steps received by the control system, to control feeding of the yarns to said needles as the needles are reciprocated and as the needle bar is shifted in accordance with the transverse pattern shift steps as needed to form selected tufts of yarns of a desired height and to pull non-selected ones of the yarns low or out of the backing material for each pattern step;
wherein the control system is linked to and controls the backing feed rolls for feeding the backing material such that the tufts of yarns are formed in the backing material at an effective stitch rate that is determined by increasing a prescribed stitch rate of the patterned tufted article that is based on the gauge of the tufting machine by a selected amount so as to form the patterned articles with the selected tufts of yarns having an appearance of being formed at the desired stitch rate.”

(Doc. 292-1, at 67, col. 9:17-18, 33-51 (emphasis added).) As the limitation in question lacks the word “means, ” it carries a rebuttal presumption that § 112, ¶ 6, does not apply.

         The presumption is not overcome, because the language of Claim 1, read in light of the specification, recites sufficiently definite structure to avoid § 112, ¶ 6. Turning first to the term itself, Tuftco argues that, like the terms “mechanism, ” “element, ” or “device, ” “system” is a generic substitute for “means.” In support, Tuftco cites Automotive Technologies International, Inc. v. Delphi Corp., a district court case from the Eastern District of Michigan which found that the phrase “a measurement system” indicates a means-plus-function limitation. No. 08-11048, 2009 WL 2960698, at *12-13 (E.D. Mich. Sept. 11, 2009). Although the Automotive Technologies court found that “‘[s]ystem' is the same sort of generic term as ‘means, ' ‘mechanism' and ‘device, '” other district courts, including courts with a heavy patent docket, have disagreed. See, e.g., Blitzsafe Tex., LLC v. Honda Motor Co., No. 2:15-cv-1274-JRG-RSP, 2016 WL 4762083, at *14 (E.D. Tex. Sept. 13, 2016) (finding “integration subsystem” to denote structure); Perdiem Co, LLC v. IndusTrack LLC, No. 2:15-cv-727-JRG-RSP, 2016 WL 3633627, at *37 (E.D. Tex. July 7, 2016) (“The term ‘system' as used here is different from the word ‘module' in Williamson.”). Accordingly, Automotive Technologies does not persuade the Court that it should treat the phrase “control system” as a mere means-plus-function limitation.[11]

         Moreover, the language of Claim 1, viewed in light of the specification, imparts structure to the term. Claim 1 specifies that the “control system” works “in cooperation with said at least one needle bar shifter” which receives a “series of transverse pattern shift steps” from the “control system.” (Doc. 292-1, at 67, col. 9:34-37.) The “control system” is also “linked to and controls the backing feed rolls.” (Id. at col. 9:43-44.) This claim language structurally connects the control system and other components of the claimed tufting machine. Moreover, the ‘703 Patent's specification goes so far as to provide a specific example of a “control system” (“The tufting machine control system 25 generally will comprise a tufting machine control such as a ‘Command Performance™' tufting machine control system as manufactured by Card-Monroe Corp.”)[12] and further explains the structural components of a “control system” (“The control system also typically includes a computer/processor or controller 26 that can be programmed with various pattern information and which monitors and controls the operative elements of the tufting machines . . . .”; “The tufting machine control system . . . further can receive and execute or store pattern information directly from a design center . . . that can be separate and apart from the tufting machine control system, or which can be included as part of the tufting machine control system.”). (Doc. 292-1, at 64, col. 4:8-24.) Therefore, a person of ordinary skill in the art would understand the necessary structure of a “control system” as contemplated by Claim 1.

         Notably, Tuftco does not offer any testimony or evidence to demonstrate that one of ordinary skill in the art would not understand the term “control system” to denote structure. (Doc. 450, at 10-13.) Meanwhile, there is evidence in the record that an ordinarily skilled artisan would understand “control system” as a name for structure. For example, CMC's expert concluded that “control system” is a common industry term that requires no construction. (Doc. 113-12, at ¶¶ 24-27.) Moreover, Tuftco itself appears to understand the structure of a “control system.” In another section of its brief, Tuftco states “the type of ‘control system' that is referenced in [Claim 1] is the same type of ‘control system' that existed in conventional tufting machines that predated the Asserted Patents.” (Doc. 450, at 22.) Finally, during a deposition, one of Tuftco's experts appeared to understand that CMC's “Command Performance” and Tuftco's “Encore” are “control systems” that are used for tufting machines. (Doc. 454-12, at 7.)

         In short, Claim 1 provides far more description of the structure of the “control system” than a mere means-plus-function claim. For the foregoing reasons, the Court finds that Claim 1 of the ‘703 Patent is not a means-plus-function claim subject to 35 U.S.C. § 112, ¶ 6. Because Claim 1's use of the term “control system” does not render it a means-plus-function claim, Tuftco's motion for summary judgment that Claim 1 of the ‘703 Patent is invalid for indefiniteness under 35 U.S.C. § 112, ¶ 6, is DENIED, and CMC's cross-motion for summary judgment on this ground is GRANTED.

         2. 35 U.S.C. § 112, ¶ 2

         CMC moves for summary judgment on Tuftco's invalidity counterclaim that the Severed Claims are indefinite under 35 U.S.C. § 112, ¶ 2. Tuftco did not respond to CMC's motion with respect to § 112, ¶ 2. Tuftco did, however, argue that Claim 1 of the ‘703 Patent is indefinite with respect to the term “selected amount” in its own motion for summary judgment, though it did not move for summary judgment of invalidity under §112, ¶ 2. (Doc. 450, 15-16.) Additionally, Tuftco's expert, Ian Slattery, opines that the Severed Claims are indefinite based on the following terms: (a) “desired stitch rate”; (b) “a gauge of the tufting machine”; (c) “by a selected amount”; (d) “a shift profile based upon a number of colors of yarn of the pattern” or “a number of colors” or “a number of different yarns” or “a desired number of yarns”; and (e) “an appearance of increased density.” (Doc. 292-2, at 17-18.)

         “Indefiniteness is a question of law . . . .” Eli Lilly & Co. v. Teva Parenteral Meds., Inc., 845 F.3d 1357, 1370 (Fed. Cir. 2017). In determining whether a claim is indefinite, “general principles of claim construction apply . . . .” Id. As such, the Court may make underlying findings of fact based on extrinsic evidence. Id. Because patents are presumed valid, “any fact critical to a holding on indefiniteness . . . must be proven by the challenger by clear and convincing evidence.” One-E-Way, Inc. v. Int'l Trade Comm'n, 859 F.3d 1059, 1062 (Fed. Cir. 2017) (internal quotation omitted). To be definite under 35 U.S.C. § 112, a claim must “point[ ] out and distinctly claim[ ]” the invention. § 112, ¶ 2. “A lack of definiteness renders invalid ‘the patent or any claim in suit.'” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2125 (2014) (quoting § 282, ¶ 2(3)). As the Supreme Court has explained, § 112, ¶ 2, requires “that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.”[13] Id. at 2129. This requirement “strikes a ‘delicate balance' between ‘the inherent limitations of language' and providing ‘clear notice of what is claimed.'” Sonix Tech. Co., Ltd. v. Publ'ns Int'l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017) (quoting Nautilus, 134 S.Ct. at 2129). After Nautilus, the Federal Circuit clarified the standard further, holding that, to satisfy § 112, ¶ 2, a claim “must provide objective boundaries for those of skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (citing Nautilus, 134 S.Ct. at 2130 & n.8).

         a. “by a selected amount”

         Claim 1 of the ‘703 Patent provides for forming tufts of yarns in the backing material:

at an effective stitch rate that is determined by increasing a prescribed stitch rate of the patterned tufted article that is based on the gauge of the tufting machine by a selected amount so as to form the patterned articles with the selected tufts of yarns having an appearance of being formed at the desired stitch rate.

(Doc. 292-1, at 67, col. 9:45-51 (emphasis added).) Slattery opines that the term is indefinite because it “provides no technique for determining the ‘selected amount[.]'” (Doc. 292-2, at 17.) Tuftco argues that because both CMC and its expert Steven Berger cannot define the term, it is indefinite. (Doc. 450, 15-16.) After a claim construction hearing the Court construed the term “selected” to mean “chosen in accordance with the pattern.” (Doc. 220, at 19.) Though the Court was cautious to read a limitation into the Severed Claims, it found that this construction was not only consistent with the dictionary definition of “selected, ” but also supported by the claim language itself. (Id. at 18-19.)

         Construing the term “by a selected amount” to mean “by an amount in accordance with the pattern” provides a technique for determining the “selected amount, ” i.e., the pattern. Moreover, the ‘703 Patent's specification makes clear that “a selected amount” is approximate to the number of colors in the pattern. For example, the specification provides that “[t]ypically, the operative or effective stitch rate run . . . will be approximately equivalent to a desired or prescribed number of stitches per inch . . ., multiplied by the number of colors being run in the programmed pattern.” (Doc. 292-1, at 64, col. 3:2-6 (emphasis added); see also Id. at 65, col. 5:31-34.) Further, it provides that the “effective stitch rate is substantially faster than conventional stitch rates (i.e., by a factor approximately equivalent to the number of colors being tufted) in order to provide sufficient density for the tufts being formed in the pattern fields to hide those color yarns not to be shown.” (Id. at 66, col. 8:6-10 (emphasis added).) The specification, therefore, makes clear that the term “by a selected amount” ...


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