By Brian Craig, J.D.
The U.S. Court of Appeals for the Federal Circuit has affirmed a decision by the federal district court in Colorado that the asserted claims for patents related to roof mounting sealing assemblies cannot claim priority because the claims were broader than the invention disclosed in the application. The Federal Circuit held that the district court properly granted summary judgment because the application lacks an adequate written description for the assemblies with washers in the asserted claims (D Three Enterprises, LLC v. SunModo Corp., May 21, 2018, Wallach, E.).
D Three Enterprises, LLC ("D Three") sued SunModo Corporation SunModo and Rillito River Solar LLC, doing business as EcoFasten Solar, in the federal district court in Colorado, alleging infringement of various claims of three patents that relate to roof mount sealing assemblies, which allow users to mount objects on a roof and seal the mounting location against water. On summary judgment, the district court determined that the asserted claims could not claim priority from the 2009 Application because they were broader than the invention disclosed in the application. The district court invalidated all but one of the asserted claims as anticipated, and found the remaining claim anticipated based on other prior art. D Three appealed the district court decision, arguing that a genuine issue of material fact exists whether the application adequately discloses the asserted claims.
The Federal Circuit held that the patents cannot claim priority from the 2009 Application. The Federal Circuit recognized that a patentee bears the burden of establishing that its claimed invention is entitled to an earlier priority date than an asserted prior art reference. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). The Federal Circuit held that the patentee had ample notice that it needed to submit evidence to show that the washerless assemblies disclosed in the washerless claims. Having found that the patentee had opportunities had notice and opportunity, the Federal Circuit found no violation by the district court. Therefore, the Federal Circuit concluded that the district court properly granted summary judgment that the patents cannot claim priority from the application.
As to the merits of the claims, the Federal Circuit held that the district court properly granted summary judgment on the washerless claims. The appellate court recognized that conclusory expert assertions do not give rise to a genuine issue of material fact. Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1290 (Fed. Cir. 2012). Testimony from D Three’s expert did not convince the Federal Circuit to create a genuine issue of material fact. The Federal Circuit agreed with the district court that all washerless claims lack sufficient written description, meaning they cannot claim priority from the 2009 Application.
Finally, the Federal Circuit concluded that the 2009 Application lacks adequate written description for the assemblies with washers in the asserted claims. The disclosure of a washerless system does not support a finding of adequate written description because it does not show that the inventor "invented what is claimed." Here, the inventor claimed an assembly with a washer. The lack of any disclosure of an assembly with a washer below the flashing, or statement on the flexibility of the position of the washer, is fatal to D Three’s argument. Therefore, the Federal Circuit concluded that claims lack sufficient written description in the 2009 Application. In other words, the claims cannot claim priority from the 2009 Application and are therefore invalid.
Attorneys: Dave R. Gunter (Friedman, Suder & Cooke, P.C.) for D Three Enterprises, LLC. Scott E. Davis (Klarquist Sparkman, LLP) for SunModo Corp. and Rillito River Solar LLC d/b/a EcoFasten.
Companies: D Three Enterprises, LLC; SunModo Corp.; Rillito River Solar LLC d/b/a EcoFasten
MainStory: TopStory Patent FedCirNews
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