Seed Research Equip. Solutions v. Gary W. Clem, Inc.

• Decision Date: 20 December 2012
• Docket Number: Case No. 09-0182-EFM-KGG
• Parties: SEED RESEARCH EQUIPMENT SOLUTIONS, a Kansas Limited Liability Company, Plaintiff, v. GARY W. CLEM, INC. d/b/a ALMACO, an Iowa Corporation, Defendant.
• Court: U.S. District Court — District of Kansas

SEED RESEARCH EQUIPMENT SOLUTIONS,a Kansas Limited Liability Company, Plaintiff,

v.GARY W. CLEM, INC. d/b/a ALMACO, an Iowa Corporation, Defendant.

Case No. 09-0182-EFM-KGG

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF KANSAS

Dated: December 20, 2012

MEMORANDUM AND ORDER

This case arises out of a patent dispute between Seed Research Equipment Solutions, LLC ("SRES") and Gary W. Clem, Inc., d/b/a ALMACO ("ALMACO"). The patent at issue is U.S. Patent No. 6,505,124 ("the '124 patent"), entitled "GPS System to Provide Planter Tripping for Crop Research Plots." ALMACO is the '124 Patent holder. Before the Court is SRES's Motion for Summary Judgment (Doc. 142) that the '124 Patent is invalid under 35 U.S.C. § 102(b). SRES contends that, even if the Court accepts ALMACO's claim construction in whole, claim one and claims three through ten of the '124 Patent are invalid because the invention embodied in those claims was in public use or offered for sale more than one year before the '124 Patent's application date. The Court denies SRES's motion with respect to claim one because SRES has not met its burden to show anticipation of each limitation within thatclaim. The Court grants SRES's motion with respect to claims three through ten because the invention embodied in those claims was in public use more than one year before the '124 Patent's application date.

I. Factual and Procedural Background¹

A. The '124 Patent

The '124 Patent was issued on January 7, 2003, and claims priority as a continuation in part to Application No. 09/430,973 filed November 1, 1999, which was abandoned, and to provisional Application No. 60/169,067, filed on December 6, 1999. The '124 Patent teaches a system for planting seed research plots. Previous planting systems required the use of a cable that stretched across a field before planting. The cable was heavy and difficult to move across the field, resulting in a labor-intensive and time-consuming planting system.

The planting system taught by the '124 Patent eliminates the need for the cable. This system uses a GPS mounted to a planter and connected to a computer, which signals the planter when to start and stop planting the research plot. The '124 Patent generally describes the invention as follows:

A GPS receiver will provide the longitude and latitude of the first trip location and provide a continuous flow of location information. A control computer will calculate the next tripping location and provide a signal to the planter at that location and each subsequent tripping location in the field grid.

The GPS receiver will be mounted on the planter to provide location information. When the first plot is manually tripped the computer will use vector information and determine the next tripping location. ²

At issue in SRES's motion are claim one and claims three through ten of the '124 Patent. Of these, claims one and three are independent claims and claims four through ten are dependent claims that depend on claim three. Claim one reads as follows:

1. A method of planting field seeds in a test plot field comprising a plurality of plots with a plurality of parallel seed rows wherein a plurality of plots are separated into parallel ranges comprised of a plurality of side by side plots, with the ranges being separated by parallel alleys extending at right angles to the seed rows, comprising,

using a multi-row planter capable of simultaneously planting field seeds in a plurality of parallel rows,

positioning the planter in a corner of a substantially rectangular field to be planted and heading the planter in a direction to plant a plurality of plots in a longitudinal direction along one side of a field,

placing a GPS device on the planter and operatively connecting the same to a computer,

predetermining the length of a longitudinal vector comprising the distance between centerlines of two adjacent alleys,

providing a trigger mechanism on the planter to deposit field seeds in the soil of the field in the location of each of the rows, and to withhold the deposit of seeds in the alleys,

taking a GPS reading on an end point of beginning on the end of a first set of vectors extending along the rows in a first plot,

moving the planter longitudinally through the field in the direction of the rows to plant the first tier of plots,

continuously gathering GPS data from the GPS device and feeding the same to the computer while the first plot is being planted,

and [sic] causing the computer to automatically and intermittently cause the planter to plant seed and to stop planting seed as the planter progresses longitudinally through the field as the GPS data advises the computer that the planter has traveled a predetermined distance, with the GPS device providing data to the computer both as to the distance and the direction traveled by the planter, so that seeds will be planted in the rows of the plots of the first tier of plots without planting seeds in the alleys between those plots, andsequentially moving the planter longitudinally through the field to similarly plant additional tiers of plots parallel to the first tier of plots.³

Claim three states:

3. A method for triggering a seed planter to establish a plurality of field seed test plots, comprising,

positioning the seed planter at a corner of the area to be planted,

establishing the position of the planter when the planter is tripped to start or stop planting seeds,

recording the initial position of the planter and establishing the position of the planter when the planter is tripped to start or stop planting seeds,

moving the planter across a field that is to be planted,

switching the planter on or off to deposit or stop depositing seeds,

reversing the direction of the planter such that the planter faces in the direction opposite to the initial path across the field such that the planter is disposed to a return path so that the edge of the first path is contiguous to the edge of the return path,

calculating start locations and stop locations for the planter to start or stop planting seeds, moving the planter across the field on the return path,

automatically tripping the planter to start planting seeds such that as the planter passes contiguous to an area planted on the previous path the seed planter is switched on,

automatically tripping the planter to stop planting seeds such that as the planter passes contiguous to an area where no seeds were planted on the previous path the planter is switched off, and

whereby on each consecutive pass across the field a pattern is created of plots with planted seeds and intervening alleys with no seeds.⁴

Claims four through ten state:

4. The method in claim 3, wherein the location of said planter is established via a precision location means for precision location operatively associated with the planter.

5. The method in claim 4, wherein the precision location means utilizes [sic] signals is selected from the group consisting of GPS, radio, microwave, sonar, radar and laser.

6. The method in claim 3, wherein the location of said planter is established via a precision location device operatively associated with the planter.

7. The method in claim 3, wherein the position of said planter is recorded via a data recording means operatively connected to the precision location means.

8. The method in claim 3, wherein said planter is tripped to start or stop planting seeds while the planter is moving across the field.

9. The method of claim 3, wherein the start or stop planting seed locations of the planter are calculated.

10. The method of claim 3, wherein said planter is tripped to start or stop planting seed for automatically controlling the seed planter operatively connected to the computation means.⁵

B. The HarvestMaster System

SRES contends that an unrelated third party, Ron Campbell, created a planting system that performs the methods claimed in the '124 Patent at least one year before the '124 Patent's application date. Specifically, SRES alleges that Campbell, through his company HarvestMaster, Inc., sold a system for planting research plots using GPS signals to start and stop planting to Cargill Seed Research ("Cargill") in April 1997 for $34,360 (the "HarvestMaster System"). Campbell worked with Wintersteiger (a planter manufacturer) and Cargill employees to develop the software for the HarvestMaster System and reduced the software to practice byApril 16, 1998. The HarvestMaster System was used to plant Cargill's Seward, Nebraska, research fields in the spring and summer of 1998.

A report entitled "1998 Wintersteiger/GPS Report From Seward Corn Research" (the "Wintersteiger Report") describes the results of the planting using the HarvestMaster System in Cargill's fields in 1998. According to the Report, the HarvestMaster System was used to plant the research plots in Seward, Nebraska, and the HarvestMaster System performed well with impressive results. The Wintersteiger Report also describes several problems encountered when planting with the HarvestMaster System, including that the GPS would not stay in the correct phase differential, the alleys between the plots were staggered, and double trips occurred during planting.

In August and September 1998, the manufacturer of the GPS sensor used in the HarvestMaster System, Leica Geosystems, created a brochure for the MC1000 (the GPS) that included the work performed by HarvestMaster, Cargill, and Wintersteiger. The brochure contains the following statement: "This past spring at Cargill, with the support of Wintersteiger, we were able to abandon the infamous planting cable, in lieu of very high precision GPS RTK coordinates provided by MC1000." According to the Declaration of Rod Eckels, a Leica Geosystems employee, this brochure was to be distributed to Leica's other offices and shared with potential customers. Eckels also presented at the 11th International Technical Meeting of the Satellite Division of The Institute of Navigation (ION GPS 1998) on September 15 through 18, 1998 in...