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East Coast Sheet M Fabricating Corp. v. Autodesk

United States District Court, District of New Hampshire

July 29, 2014

East Coast Sheet M Fabricating Corp., d/b/a EastCoast CAD/CAM
Autodesk, Inc. Opinion No. 2014 DNH 160

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.


Landya McCafferty United States District Judge

East Coast Sheet M 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)).


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 “§ 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)).

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 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 ...

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