Wash World Inc. v. Belanger Inc.
| Decision Date | 08 July 2021 |
| Docket Number | Case No. 19-C-1562 |
| Citation | 548 F.Supp.3d 849 |
| Parties | WASH WORLD INC., Plaintiff, v. BELANGER INC., et al., Defendants. |
| Court | U.S. District Court — Eastern District of Wisconsin |
Joseph S. Heino, Davis & Kuelthau SC, Milwaukee, WI, Tiffany E. Woelfel, Sherry D. Coley, Davis & Kuelthau SC, Green Bay, WI, for Plaintiff.
Christopher Dillon, Whitney Reichel, Fish & Richardson PC, Boston, MA, for Defendants Belanger Inc., Piston OPW Inc.
DECISION AND ORDER GRANTING-IN-PART AND DENYING-IN-PART PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT
Plaintiff Wash World, Inc. brought this action for declaratory relief against Defendant Belanger, Inc., seeking a determination that Wash World's car wash systems do not infringe U.S. Patent No. 8,602,041 (the ‘041 Patent), to which Belanger is the assignee and which, in general, claims an automated car wash system with various lighting components. This matter comes before the Court on Wash World's motion for summary judgment. For the following reasons, the motion will be partially granted.
The ‘041 Patent Abstract, Dkt. No. 1-1.
Belanger asserts Independent Claims 1, 7, and 15 of the ‘041 Patent and argues that the accused products—the Razor EDGE car wash system, the Razor combined with a LumenArch/Spectra Ray lighting system, and the Razor or Razor XR7 combined with a LumenArch—infringe the asserted claims. Belanger contends that the Independent Claims are directed to different embodiments that combine an in-bay automatic car wash having a lighted spray arm with other unique features.
Wash World's Razor product is a touch-free, in-bay automatic car wash system.
Pl.’s Proposed Findings of Fact (PPFOF) ¶ 1, Dkt. No. 117. The Razor EDGE products include the LumenArch, the SpectraRay, and the Hyperflex. Wash World describes the LumenArch as a blue lighted spray arm cover that is placed over a Razor spray arm. Id. ¶¶ 20–21. Belanger asserts that the LumenArch is marketed and sold as a complete spray arm option that differs from the Razor spray arm. Def.’s Resp. to PPFOF ¶ 20, Dkt. No. 137. The SpectraRay consists of four individual strips of LED lights, in the colors of red, magenta, blue, and green, and its lights are only located on the carriage cover. PPFOF ¶¶ 65–66.
Summary judgment is appropriate when the moving party shows that there is no genuine dispute as to any material fact and that the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). In deciding a motion for summary judgment, the Court must view the evidence and make all reasonable inferences in the light most favorable to the non-moving party. Johnson v. Advocate Health & Hosps. Corp. , 892 F.3d 887, 893 (7th Cir. 2018) (citing Parker v. Four Seasons Hotels, Ltd. , 845 F.3d 807, 812 (7th Cir. 2017) ). The party opposing the motion for summary judgment must "submit evidentiary materials that set forth specific facts showing that there is a genuine issue for trial." Siegel v. Shell Oil Co. , 612 F.3d 932, 937 (7th Cir. 2010) (citations omitted). "The nonmoving party must do more than simply show that there is some metaphysical doubt as to the material facts." Id. Summary judgment is properly entered against a party "who fails to make a showing to establish the existence of an element essential to the party's case, and on which that party will bear the burden of proof at trial." Austin v. Walgreen Co. , 885 F.3d 1085, 1087–88 (7th Cir. 2018) (citing Celotex Corp. v. Catrett , 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ).
Wash World asserts that the ‘041 Patent should be found invalid for a number of reasons. Because a patent is presumed valid under 35 U.S.C. § 282, the party challenging the patent must establish the invalidity of the patent "by clear and convincing evidence." Microsoft Corp. v. I4I Ltd. P'ship , 564 U.S. 91, 97, 131 S.Ct. 2238, 180 L.Ed.2d 131 (2011) ; see also Pfizer, Inc. v. Apotex, Inc. , 480 F.3d 1348, 1359–60 (Fed. Cir. 2007) (). Wash World maintains that the ‘041 Patent is invalid for lack of enablement and lack of written description. The written description and enablement requirements are set out in 35 U.S.C. § 112. That section provides:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
35 U.S.C. § 112(a).
To satisfy the enablement requirement, a challenger must show that "a person of ordinary skill in the art would not be able to practice the claimed invention without ‘undue experimentation.’ " Enzo Life Sciences, Inc. v. Roche Molecular Sys., Inc. , 928 F.3d 1340, 1345 (Fed. Cir. 2019) (quoting Alcon Research Ltd. v. Barr Labs., Inc. , 745 F.3d 1180, 1188 (Fed. Cir. 2014) ). In other words, the specification must be sufficiently detailed so that "at the time of filing the application one skilled in the art, having read the description, could practice the invention without undue experimentation." Cephalon, Inc. v. Watson Pharm., Inc. , 707 F.3d 1330, 1336 (Fed. Cir. 2013) (citation omitted). "Enablement is a question of law based on underlying factual findings." MagSil Corp. v. Hitachi Global Storage Techs., Inc. , 687 F.3d 1377, 1380 (Fed. Cir. 2012) (citation omitted). To satisfy the written description requirement, "the description must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed." Ariad Pharm., Inc. v. Eli Lilly & Co. , 598 F.3d 1336, 1351 (Fed. Cir. 2010) (quotation marks, citations, and brackets omitted). That is, "the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Id. (citation omitted). The written description inquiry is a question of fact. Id.
Wash World asserts that the ‘041 Patent lacks enablement because the specification does not contain sufficient detail for a person of ordinary skill in the art to determine where the "wash area" is or how to identify it. It contends that, because the ‘041 Patent specification does not provide any guidance or detail regarding the size or location of the wash area, a person of ordinary skill in the art would be unable to discern the claimed invention. Wash World also argues that Independent Claim 1's requirement of a "control system for placing the arm in a target position in the wash area" lacks enablement because the ‘041 Patent inventor was unable to describe the "target position in a wash area" in "full, clear, concise, and exact terms." Dkt. No. 114 at 16–17. It also asserts that the claim term "target position in the wash area" is broader than the disclosures within the ‘041 Patent specification.
As an initial matter, Belanger asserts that the enablement and written description arguments regarding the term "target position in the wash area" are untimely because they were raised for the first time in the instant motion. But Wash World asserted that the claim was invalid for lack of enablement in its preliminary invalidity contentions, Dkt. No. 125-5 at 9–10; therefore, the argument is not untimely. In any event, the Court finds that a genuine dispute of material fact exists as to whether a person of ordinary skill in the art knows how to make a wash area and would understand what a "target position" is. Belanger's expert, Dr. Charles Reinholtz, has provided opinions explaining why the ‘041 Patent enables a person of ordinary skill in the art to practice the "wash area" of the claims and that a person of ordinary skill in the art would understand where the target position is based on the plain and ordinary meaning of the claim term. Given this material dispute of fact, the Court denies Wash World's motion for summary judgment on invalidity based on enablement.
As to written description, although Wash World acknowledges that the written description inquiry is ordinarily a question of fact, it asserts that a patent can be held invalid for failure to meet the written description requirement based solely on the patent specification's language. Dkt. No. 114 at 17. Belanger asserts that it has evidence demonstrating that a person of ordinary skill in the art would understand from the specification that the inventors had possession of the invention as claimed. Based on a review of the summary judgment record, the Court is not convinced that there are no genuine issues of material fact regarding whether the specification satisfies the written description requirement. The jury will decide whether the specification adequately demonstrates that the inventors possessed the full scope of the asserted claim.
Next, Wash World asserts that it does not infringe the ‘041 Patent. To prove infringement, the patent holder must establish by a preponderance of the evidence that "one or more claims of the patent read on the accused device literally or under the doctrine of...
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