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OXBO International Corp. v. H&S Manufacturing Co., Inc.

United States District Court, W.D. Wisconsin

May 23, 2017

OXBO INTERNATIONAL CORPORATION, Plaintiff,
v.
H&S MANUFACTURING COMPANY, INC., Defendant.

          OPINION & ORDER

          JAMES D. PETERSON, District Judge

         Plaintiff Oxbo International Corporation owns four patents on windrow mergers, and it accuses its competitor, defendant H&S Manufacturing Company, Inc., of infringing them with its Tri-Flex merger. H&S denies infringement and asserts that some of the asserted claims are invalid. H&S also raises equitable defenses, based primarily on alleged assurances from Oxbo that it would not sue H&S for infringement without warning.

         Both sides have moved for summary judgment on infringement and on H&S's equitable defenses. Each side also seeks summary judgment on some more limited validity issues. The parties also present several motions to strike parts of the other side's evidence or to supplement its own. The details of the court's rulings are in the body of the opinion. But, at a high level of summary, the rulings are largely favorable to Oxbo. The court concludes that the undisputed facts show that the Tri-Flex merger infringes all but two of the asserted claims; that the patents-in-suit are not invalid on any ground asserted by H&S; and that H&S's equitable defenses fail. There is a genuine dispute of material fact about whether the Tri-Flex merger infringes claims 28 and 32 of the '929 patent.

         BACKGROUND

         A windrow merger is an agricultural implement that gathers mown hay into windrows, or merges existing windrows into larger ones, so that the hay can be chopped or baled. Unlike a hay rake, which drags hay into windrows, a windrow merger uses rotating tines to lift the hay onto a conveyor that moves the hay to the windrow. This minimizes damage to the crop and reduces contamination with dirt, rocks, or other debris.

         Oxbo's patents-in-suit describe improvements to windrow mergers that purport to make them faster, more flexible, and more effective. Three of the patents-in-suit disclose and claim a windrow merger with three pickup assemblies: U.S. Patent Nos. 7, 310, 929, 8, 166, 739, and 8, 863, 488, all for “Windrow Merging Apparatus” to Paul W. Dow, et al. These patents share a common specification, and the court will refer to them together as the “triple head patents.” The other patent-in-suit discloses and claims a windrow merger with a trough configuration and a “rub rail” to facilitate the even flow of hay on the conveyor, which helps create uniform windrows: U.S. Patent No. 8, 511, 052 for “Windrow Merger” to Steven S. Dow, et al. We will refer to this patent as the “trough patent.” Oxbo and H&S are competitors in the agricultural equipment market, and they both make and sell windrow mergers, including triple head mergers. Oxbo alleges that H&S's triple head merger, the Tri-Flex, infringes the four patents-in-suit. Early in the case, H&S asserted tort counterclaims against Oxbo and another party, but those matters have been resolved. At this point, all that remains are Oxbo's patent infringement claims and H&S's counterclaims and defenses.

         One other notable procedural detail: during this litigation, H&S petitioned the Patent Trial and Appeal Board for inter partes review of the validity of the '929 patent and, separately, the '052 patent. PTAB declined to institute review. Dkt. 199-16 and Dkt. 235-1. Because PTAB did not institute review on any ground for either patent, H&S is not estopped under 35 U.S.C. § 315(e) from asserting any invalidity ground, and the IPR petitions have no direct effect on this case. But the parties may be bound by the positions taken in the PTAB, and the PTAB reasoning may be persuasive on issues now before the court.

         The court has subject matter jurisdiction over this case pursuant to 28 U.S.C. § 1338(a) because it arises under United States patent law.

         ANALYSIS

         A. Motions to strike and to supplement the record

         The court begins with the parties' evidentiary motions, which affect the scope of the evidence that the court will consider at summary judgment.

         1. H&S's motion to strike Chaplin supplemental report and Langer declaration; Oxbo's motion to supplement the Chaplin report

         H&S moves to strike Jonathan Chaplin's August 15, 2016 supplemental report, Dkt. 113, and Jake Langer's related declaration, Dkt. 137. Dkt. 148. Chaplin is an Oxbo expert. H&S contends that Chaplin's August report offers new infringement opinions-based on a new Tri-Flex inspection-disclosed months after the expert disclosure deadline and mere weeks before the dispositive motion deadline. According to H&S, Oxbo could have-and should have-disclosed the opinions in Chaplin's initial report (April 2016), and the late disclosure is not a proper supplementation, is not substantially justified, and is not harmless. Langer's declaration supports Chaplin's report, and the court should strike it for the same reasons.

         In response, Oxbo says that H&S did not disclose relevant non-infringement positions until after Oxbo disclosed Chaplin's initial report. Chaplin had every right to reply to the previously undisclosed non-infringement theories. Regardless, Oxbo contends, Chaplin's August report “merely clarifies previous statements and fills minor gaps in his opinion.” Dkt. 194, at 7. Oxbo requests, as an alternative to denying H&S's motion to strike, that it be allowed to supplement the Chaplin report. Dkt. 197.

         This court allows two rounds of expert reports: proponent reports, where the plaintiff should disclose its infringement opinions; and respondent reports, where the defendant may defend against those opinions and offer its non-infringement opinions. Oxbo is not entitled to a rebuttal report to reply to H&S's non-infringement opinions. Yet that is precisely what Chaplin's August report does. Chaplin went back and inspected the Tri-Flex again to test “the veracity” of H&S's expert's opinions. Dkt. 113, at 2. Such a supplementation would be allowed only with the consent of the other side, or with leave of court.

         Oxbo contends that the August supplementation was justified because H&S changed its non-infringement theories after Chaplin disclosed his initial report. The court agrees in part.

         Oxbo does not explain why Chaplin could not have offered some of his August opinions earlier. Chaplin knew that H&S had denied that the Tri-Flex provides a continuous line of material pickup when he authored his initial report. And he knew that H&S had proposed to construe the term “continuous line of material pickup” to mean “a pickup face uninterrupted by gaps.” Although the only gaps that H&S had expressly cited by the time Chaplin disclosed his initial report were between the merger heads, nothing prevented Chaplin from addressing the five-inch mid-head gaps as well. H&S was not perfectly forthcoming, but Chaplin should have anticipated the mid-head gap issue.

         But the “all material” issue was not timely disclosed by H&S. H&S contends that “as long as Oxbo has asserted these claims, H&S has denied infringing them.” Dkt. 221, at 8. But H&S cites nothing to show that it had disclosed to Oxbo its contention that the Tri-Flex does not transport “all material” because of incidental crop loss at any time before it disclosed its report. That is a new non-infringement position that Oxbo should be allowed to address with expert evidence.

         Oxbo was also justified in supplementing Chaplin's opinion regarding whether the Tri-Flex can merge with only its center assembly with both outer assemblies retracted. (The court will discuss this issue in greater detail later in this opinion.) The court will not strike Chaplin's August opinion regarding center assembly merging because H&S has continued to update the record with new information on that issue. Late-in-the-case developments have caused difficulties for both the parties and the court, because the court cannot decide the issue at summary judgment. See infra Section D.3.a.

         So H&S's motion to strike, Dkt. 148, is denied with respect to Chaplin's supplementation on center assembly merging and the “all material” non-infringement argument. Chaplin's August opinions regarding the Tri-Flex “gaps” are untimely.

         Oxbo's contingent motion to supplement, Dkt. 197, is moot as to the portions of Chaplin's August report that the court has allowed. And Oxbo's contingent motion is denied in all remaining respects, for two reasons. First, as explained, Oxbo has not demonstrated that it should be allowed to supplement Chaplin's “gap” opinions. Second, the court will not strike H&S's expert's “gap” opinions. Although H&S did not explicitly disclose its position that the five-inch mid-head gaps mean that the Tri-Flex does not provide a continuous line of material pickup, it did disclose sufficient information about its infringement position to allow Chaplin to fully opine on the issue when he authored his initial report.

         2. Oxbo's motion to strike H&S's “new” non-infringement position

         This motion is also related to the center assembly merging issue. After summary judgment briefing closed, H&S acknowledged that four next-gen touchscreen prototype Tri-Flex mergers infringed claims 28 and 32 of the '929 patent as a result of an unintended software glitch. Dkt. 252. H&S contends that these touchscreen prototypes operated differently than all other models in this respect. Oxbo moves to strike H&S's contention, arguing that it constitutes a new non-infringement position. Before the late submission, H&S had never contended or produced any documents showing that the touchscreen and pushbutton models functioned any differently. And apparently Oxbo had intended to build an infringement case on its testing of the prototypes.

         The court is not convinced that H&S's concession qualifies as a new non-infringement position. H&S disclosed new factual information learned in the course of litigation. A party cannot reasonably be held to theories that new facts show to be wrong. But in light of the factual developments, it is appropriate to allow Oxbo to use the February 2017 Chaplin supplement. Dkt. 293. The new report is substantially justified because, as discussed above, the center assembly issue has been a moving target. Before H&S's concession, Oxbo had no reason to think that it would need to separately inspect and analyze the push-button mergers and the touchscreen mergers. It had no reason to believe that the two interfaces operated differently and, as a result, it had no reason to suspect that its videos of and opinions regarding the touchscreen merger were not sufficient to prove infringement by all models.

         The court is certainly not inclined to entertain new non-infringement positions or arguments raised for the first time after the summary judgment deadline. But the center assembly issue has presented difficult questions and had muddled the record more than usual. The court will deny the motion to strike but will allow Oxbo to submit the February Chaplin report.

         3. Oxbo's motion to strike Foley, Rottier, and Kelber

         Oxbo moves to strike David Foley's declaration, Dkt. 126, portions of Kurt Rottier's declaration, Dkt. 128, and portions of Vincent Kelber's declaration, Dkt. 129. Dkt. 163. In short, these declarations offer digital animations that demonstrate operations that the Tri-Flex cannot perform, including certain conveyor movements and center assembly merging. Oxbo argues that the declarations are late-disclosed expert reports. Foley calls himself a retained expert and has created the animations. Dkt. 126, ¶¶ 1, 5 (“I was asked to prepare computer-animated graphics of the Tri-Flex, including depictions of the merger head assemblies when they are moved from the extended use position to the retracted travel position and of certain operations involving the conveyors on these assemblies, which the Tri-Flex is not capable of performing.”). Rottier and Kelber purport to confirm that Foley's animations are accurate. Dkt. 128, ¶¶ 5-9 and Dkt. 129, ¶ 10.

         The court can consider and decide the relevant conveyor movement issues without referring to these submissions, because the information is elsewhere in the record, including in H&S's expert reports. The court will deny the motion as moot for purposes of summary judgment. The parties should inform the court whether the controversy needs to be resolved before trial.

         4. Oxbo's motion to strike portions of H&S's summary judgment briefing regarding equitable defenses

         Oxbo moves to strike portions of H&S's summary judgment briefing regarding H&S's equitable defenses. Dkt. 222. Oxbo served H&S with an interrogatory seeking “the factual and legal bases for Defendant's affirmative defenses that Plaintiff's claim is barred by the doctrine of laches, equitable estoppel, acquiescence, implied license, unclean hands, and/or prosecution history estoppel.” Dkt. 223-1, at 11. H&S answered the interrogatory and supplemented its answer three times. See Dkt. 223-2; Dkt. 223-3; Dkt. 223-4; Dkt. 223-5. Now, according to Oxbo, H&S has argued new facts to support its equitable defenses in its summary judgment briefing. Dkt. 222, at 3-4.

         At summary judgment, H&S contends that (1) its decision not to file a declaratory judgment action against Oxbo satisfies the reliance element of equitable estoppel and laches; (2) increased Tri-Flex sales and approximately $60, 000 in patent procurement expenses satisfy the harm element of equitable estoppel and laches; (3) Oxbo's internal discussions regarding potential infringement indicate that Oxbo misled H&S; (4) its equitable estoppel defense applies to all four patents-in-suit; and (5) Oxbo's suit is barred by unclean hands because the litigation is a sham. But H&S did not include these facts in response to Oxbo's contention interrogatory on the affirmative defenses.

         These additional bases were untimely disclosed. Oxbo was entitled to learn the bases for H&S's equitable defenses through contention interrogatories, which H&S had a duty to timely supplement. And H&S's failure to fully disclose the factual bases for its equitable defenses inhibits Oxbo's ability to challenge those defenses at summary judgment. It is not enough to disclose the underlying factual information during discovery (such as during a deposition) without disclosing the intent to use those facts to support an equitable defense.

         Although the court will grant Oxbo's motion, the court will also evaluate these new bases on their merits. As explained below, even with the untimely disclosed factual bases, H&S's equitable defenses fail. See infra Section C.

         With the evidentiary motions decided, the court turns to the merits.

         B. Basic legal principles

         In patent cases, as in civil cases generally, summary judgment is appropriate if a moving party “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). When, as here, the parties have filed cross-motions for summary judgment, the court “look[s] to the burden of proof that each party would bear on an issue of trial; [and] then require[s] that party to go beyond the pleadings and affirmatively to establish a genuine issue of material fact.” Santaella v. Metro. Life Ins. Co., 123 F.3d 456, 461 (7th Cir. 1997). If either party “fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden at trial, ” summary judgment against that party is appropriate. Mid Am. Title Co. v. Kirk, 59 F.3d 719, 721 (7th Cir. 1995) (quoting Tatalovich v. City of Superior, 904 F.2d 1135, 1139 (7th Cir. 1990)). “As with any summary judgment motion, this [c]ourt reviews these cross-motions ‘construing all facts, and drawing all reasonable inferences from those facts, in favor of . . . the non-moving party.'” Wis. Cent., Ltd. v. Shannon, 539 F.3d 751, 756 (7th Cir. 2008) (quoting Auto. Mechs. Local 701 Welfare & Pension Funds v. Vanguard Car Rental USA, Inc., 502 F.3d 740, 748 (7th Cir. 2007)). “Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude summary judgment.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).

         The court applies a two-step analysis to evaluate both infringement and invalidity; each begins with claim construction. See, e.g., Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1359 (Fed. Cir. 2000) (infringement); Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1353 (Fed. Cir. 1999) (invalidity). In deciding motions for summary judgment in a patent case, the court bears in mind that defendants have the burden to show invalidity by clear and convincing evidence and that plaintiffs have the burden to prove infringement to a preponderance of the evidence. High Point Design LLC v. Buyer's Direct, Inc., 621 F. App'x 632, 638, 640 (Fed. Cir. 2015).

         “The purpose of claim construction is to ‘determin[e] the meaning and scope of the patent claims asserted to be infringed.'” O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996)). A patent's claims define the scope of the invention, and thus the scope of the patentee's right to exclude others from practicing that invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). Claim language receives its “ordinary and customary meaning, ” which “is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Id. at 1313. Sometimes “the ordinary meaning of claim language . . . may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words.” Id. at 1314. But sometimes the ordinary and customary meaning of a claim term is not manifestly clear. If that term is disputed and material to an issue in the case, the court must construe that term to establish its meaning.

         When construing a disputed term, the court must start with the claim language itself, which provides substantial guidance. Id. at 1314-15. But the court reads the claim language “not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification” and its prosecution history. Id. at 1313. The patent and its prosecution history, related patents and their prosecution histories, and the prior art that is cited or incorporated by reference in the patent-in-suit and its prosecution history constitute the patent's intrinsic evidence. Id. at 1314. Of these sources, “the specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'” Id. at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).

         The court may also consider extrinsic evidence, which refers to all other types of evidence, including inventor testimony, expert testimony, documentary evidence of how the patentee and alleged infringer have used the claim terms, dictionaries, treatises, and other similar sources. Id. at 1317-18. However, extrinsic evidence is less reliable and less useful in claim construction than the patent and its prosecution history. Id. Intrinsic evidence trumps any extrinsic evidence that would contradict it. Id. at 1314-16.

         For summary judgment purposes, Oxbo accepts H&S's contention that a person of ordinary skill in the art is “someone with a Bachelor of Science in Mechanical Engineering or an equivalent degree, and having approximately 3 years [sic] experience designing agricultural equipment of associated/equivalent components or systems. Alternatively, a person of ordinary skill may lack the above-referenced engineering bachelor degree but may have at least five years combined education/experience related to the design, construction, modification and/or fabrication of agricultural equipment of associated/equivalent components or systems.” Dkt. 116, at 11 n.3. The court will also accept it.

         C. H&S's equitable defenses

         Oxbo moves for summary judgment on all of the equitable defenses that H&S asserted in its responsive pleading and maintained since then: equitable estoppel, laches, implied license, and unclean hands. Dkt. 119. For its part, H&S moves for summary judgment on only its equitable estoppel defense. H&S contends that disputes of fact preclude summary judgment on its laches and unclean hands defenses. H&S abandons its implied license defense. The facts material to H&S's equitable defenses are not genuinely disputed, so the equitable defenses are amenable to resolution on the parties' motions for summary judgment.

         1. Material facts

         In mid-2011, H&S made prototype Tri-Flex mergers available for demonstration to customers. So DS Farms, one of H&S's customers, tested one of the Tri-Flex prototypes. Soon after, an Oxbo salesperson, Doug Anderson, visited the farm to try to sell an Oxbo triple head merger. When the owners of DS Farms told Anderson that they intended to buy a Tri-Flex, Anderson said that Oxbo has patent rights and that H&S had copied Oxbo. One of the farm's owners, Matt Danzinger, relayed Anderson's comments to H&S. Anderson does not recall any of this, and he does not believe that he said anything about Oxbo's patent rights. And neither farm owner recalls exactly what Anderson said. But the details are not material: all that matters is that H&S perceived the incident as an accusation of infringement and that it prompted what happened next.

         After hearing about the incident, H&S's president at the time, Chris Heikenen, called Paul Dow, an Oxbo vice president and part-owner, sometime in August 2011. Dow recalls that Heikenen told him that an Oxbo salesperson had told someone that Oxbo was going to sue H&S for infringement. Dow apologized for the salesperson's statements, told Heikenen that no one at Oxbo should be making allegations of infringement of Oxbo's patents, and said that he would see that it did not happen again. Dkt. 100 (Dow Dep. 232:13-239:13). Heikenen's recollection is substantially consistent with Dow's, although Heikenen adds two details. First, according to Heikenen, he warned Dow that if allegations of infringement persisted, H&S would file a declaratory judgment action, which would cause both parties to spend a great deal on legal fees. Dkt. 103 (Heikenen Dep. 215:25-216:20). Second, Heikenen says that at the end of the call, they agreed to call each other rather than spending money on attorneys right away. Id. at 216:16-25. As Heikenen understood the conversation, Dow said that he would call H&S before filing suit if an infringement issue arose. Id. at 215:21-25. (Dow did not recall these details, but on Oxbo's motion for summary judgment, the court views the facts in the light most favorable to H&S.)

         Both Dow and Heikenen agree that during the call Dow said nothing-one way or the other-about whether H&S infringed any Oxbo patent. Nor did Dow promise that Oxbo would not sue H&S for patent infringement. Dkt. 176, ¶ 30. After the August 2011 phone conversation, no one from Oxbo contacted H&S about patent infringement concerns before Oxbo filed this suit in 2015.

         2. Equitable estoppel

         Both sides move for summary judgment on H&S's equitable estoppel defense. To prevail on this defense, H&S must adduce evidence showing that: (1) Oxbo, “through misleading conduct, led the alleged infringer to reasonably believe that the patentee did not intend to enforce its patent against the infringer;” (2) H&S “relied on that conduct;” and (3) as a result of that reliance, H&S “would be materially prejudiced if [Oxbo] were permitted to proceed with its charge of infringement.” Aspex Eyewear Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305, 1310 (Fed. Cir. 2010). “Misleading ‘conduct' may include specific statements, action, inaction, or silence when there was an obligation to speak.” Id. The court considers all evidence relevant to the equities. Id.

         H&S contends that Dow's August 2011 “assurances” followed by four years of silence led H&S to reasonably believe that Oxbo would not enforce its patent rights against it. H&S contends that Oxbo accused H&S of infringement, profusely apologized and promised that it would not happen again, then allowed H&S to divert “the vast majority of its marketing and engineering resources away from its core products to focus on” the Tri-Flex, and “flipped” on H&S after it began experiencing success in the market. Dkt. 158, at 3. But H&S's characterization is not supported by the evidence.

         We'll start with the first part of the story, the purported accusation. H&S contends that “there is no dispute that Oxbo accused the H&S Tri-Flex of patent infringement in 2011.” Id. at 7. But that is nowhere supported in the record. Dow, on behalf of Oxbo, did not make any statements about whether H&S infringed. And the comments by Anderson, the Oxbo salesperson (even if those could be established by some admissible evidence), cannot constitute an accusation of infringement because, as Dow made clear to Heikenen, the salesperson was not authorized to speak for Oxbo on such matters.

         H&S also points to internal communications between Dow and Oxbo management, including Oxbo's CEO Gary Stitch, in which Dow indicated that the Tri-Flex was “very similar” to Oxbo's models and that it may infringe the '052 patent. H&S contends that this conduct makes Dow's August 2011 conduct “particularly misleading.” Id. at 8. H&S argues that Oxbo's refusal to tell H&S that it believed that it infringed-a point which cuts decisively against H&S's contention that Oxbo did accuse H&S of infringement-“certainly gives rise to an inference that any claim against H&S was abandoned.” Id. at 9. But both sides agree that Dow made no representations to Heikenen about whether Oxbo thought H&S infringed Oxbo's patents. And Heikenen was careful not to ask that question: Heikenen did not believe that he would get an assurance of non-infringement, and he would be in a “very difficult situation” if Dow had said that yes, H&S infringed. Dkt. 295 (Transcript of hearing on Oxbo's motion for sanctions, at 19:8-18). So contrary to H&S's contention, Dow offered no assurances that Oxbo would not enforce its rights. A fairer description of the call would be that Heikenen hectored Dow into an apology with threat of litigation started by H&S, and that both sides studiously avoided discussing Oxbo's actual view of whether the Tri-Flex infringed. The bottom line is that the call with Dow gave Heikenen no reason to believe that Oxbo had decided not to enforce its patent rights against H&S.

         Without a clear statement from Oxbo regarding infringement one way or another, H&S cannot rely on the four years of silence to support its equitable estoppel defense. H&S cites no case in which silence alone, unaccompanied by a clear statement of infringement, was sufficient to establish an equitable estoppel defense. “[I]ntentionally misleading silence arises when a patentee ‘threatened immediate or vigorous enforcement of its patent rights but then did nothing for an unreasonably long time.'” Aspex, 605 F.3d at 1310 (quoting Meyers v. Asics Corp., 974 F.2d 1304, 1309 (Fed. Cir. 1992)). Silence alone cannot give rise to estoppel. Id. at 1311. In Aspex, the court determined that the patentee was equitably estopped from asserting infringement after: (1) the patentee threatened an infringement suit, (2) the accused infringer responded that its products did not infringe, (3) the patentee did not say anything in response, and (4) three years went by before the patentee filed suit. Id. at 1310. Those are not the facts here.

         So, at best, H&S might be able to show that Dow broke his promise to call Heikenen before filing suit. But whether Dow actually made such a promise is not material, because the promise is not specific enough to induce H&S's reasonable reliance. Nothing in that promise would have prevented Oxbo from suing when it did, so long as the suit was preceded by a warning telephone call. H&S pressed on with the development and sales of the Tri-Flex without any assurance that Oxbo would not sue for infringement, at a time of Oxbo's own choosing. Based on the undisputed material facts, H&S cannot establish misleading conduct by Oxbo that gave rise to a reasonable belief that Oxbo would not enforce its patent rights. Oxbo is entitled to summary judgment on H&S's equitable estoppel defense.

         3. Laches

         H&S's laches defense is foreclosed by a U.S. Supreme Court decision issued during this litigation. Because Congress has determined “that a patentee may recover damages for any infringement committed within six years of the filing of the claim, ” laches cannot be invoked to bar damages incurred within that period. SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S.Ct. 954, 961, 967 (2017). “Laches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by [35 U.S.C.] § 286.” Id. at 967. It is undisputed that the longest possible period of delay at issue here is four years. So H&S's laches defense fails as a matter of law.

         4. Unclean hands

         Finally, H&S asserts the defense of unclean hands, contending that Oxbo's suit is barred because it knowingly asserted invalid or not-infringed patents supported by “ever-changing” claim construction positions. Dkt. 158, at 18. H&S's arguments here-in addition to being untimely disclosed-are the same as its arguments on the merits: the Beougher reference anticipates the '929 patent; Oxbo's understanding of “continuous line of material pickup” is baseless; Oxbo's understanding of “operable in either direction independent of the other[s]” is baseless; and the '052 patent is invalid in view of Oxbo's 310 merger manuals that Oxbo did not submit to the Patent Office during prosecution.

         As explained below, Oxbo's claims have more than arguable merit: they are substantially successful. H&S's “sham litigation” theory finds no support in the record, and Oxbo is entitled to summary judgment on H&S's unclean hands defense.

         D. The triple head patents 1. Introduction

         The triple head patents-the '929 patent, the '739 patent, and the '488 patent- describe and claim a windrow merger apparatus and a method of merging windrows with three independent pickup assemblies arranged side-by-side in a single line. The '739 patent is a continuation of the '929 patent, and the '488 patent is a continuation of the '739 patent. So the three triple head patents at issue here share a common specification, and they can be analyzed together for most purposes.

         Each pickup and transfer assembly includes a pickup head with rotating tines, to lift crop material from the field, and an associated conveyor just behind the rotating pickup head, to move the crop material to the side of the merger where it is deposited into windrows. The overall configuration is shown in this drawing:

         (Image Omitted)

         '929 patent, Figure 1.

         One advantage of the triple head design over the prior art is that it allows for merging a wider swath, which means that a large field can be merged quickly. Because the three heads are arranged side-by-side in a line, the merger can produce a single, large windrow, which would not be possible if the heads were overlapping or offset. A second advantage is that the triple head design is flexible. The conveyors on the three heads are independently operable, so that the merger can be configured to produce a single large windrow on either side, or two smaller windrows on each side. The two outer heads are retractable, which allows the merger to travel over public roads:

         (Image Omitted)

         '929 patent, Figure 5. The outer heads can be retracted independently, and the other heads can operate while one or both of the outer heads are retracted. The various operating configurations provide flexibility “so that multiple merging configurations and operations are possible.” '929 patent, 3:14-15.

         Oxbo asserts six independent and nine dependent claims from the triple head patents.[1] Claim 1 of the '488 patent is a representative independent claim:

A windrow merger apparatus configured for travel in a first direction, comprising:
a frame;
a first pickup assembly supported by the frame, the first pickup assembly including a first pickup head configured to pick up and transfer material to an associated first belt conveyor arranged to convey material in a direction transverse to the first direction of travel and driven by a first motor;
a second pickup assembly supported by the frame, the second pickup assembly including a second pickup head configured to pick up and transfer material to an associated second belt conveyor arranged to convey material in a direction transverse to the first direction of travel and driven by a second motor; and
a third pickup assembly supported by the frame, the third pickup assembly including a third pickup head configured to pick up and transfer material to an associated third belt conveyor arranged to convey material in a direction transverse to the first direction of travel and driven by a third motor;
wherein at least two of the pickup assemblies are foldable between an extended position and a retracted position, each of the first, second, and third pickup assemblies being aligned side by side when each of the pickup assemblies is positioned in the extended position such that the first, second, and third pickup assemblies provide a laterally aligned unobstructed continuous line of material pickup able to provide transport of all material transferred to the conveyors to either end of the aligned conveyors; and wherein the first pickup assembly and the third pickup assembly are raised in the retracted position.

'488 patent, 10:32-64.

         2. Claim construction

         The parties identify three claim construction issues that arise from the triple head patents.[2]

         a. “conveyor”

         The parties dispute the meaning of the term “conveyor, ” which appears throughout the asserted claims of the triple head patents, although often the claims specify that the conveyor is a belt. The parties dispute the term as it appears in claim 44 of the '929 patent. Oxbo contends that a conveyor is “an apparatus having a flexible, continuous loop of material.” H&S presses a broader construction: “an apparatus that moves material.” The dispute is not material to infringement because the Tri-Flex has belt-type conveyors that would meet either definition. But the point matters for H&S's validity case. H&S contends that the Beougher reference anticipates claim 44 of the '929 patent. But it would do so only if “conveyor” includes an auger, which is what moves the material in Beougher.

         The court will begin by rejecting H&S's proposed definition as overly broad because it would include any device for moving material, even a shovel or a wheelbarrow. H&S relies primarily on the opinion of its expert, Ralph Shirley, who opines that H&S's definition is how one of ordinary skill in the art would understand the term. But Shirley's one-sentence analysis of “conveyor” is merely conclusory, Dkt. 106-3, ¶ 33, as PTAB also concluded, Dkt. 235-1, at ...


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