Citations
- 122 F. Supp. 3d 722
Full opinion text
MEMORANDUM OPINION AND ORDER
THOMAS A. VARLAN, Chief Judge.
• This civil action is before the Court on ten motions by the parties, including defendant’s motion to reconsider staying the case, defendant’s three motions for claim interpretation, the parties’ motions for summary judgment of infringement and noninfringement, and the parties’ motions for summary judgment of invalidity and no invalidity. The Court held a hearing on the pending motions- on.'December 16, 2014, -during which the Court heard oral argument from the parties.
1. Background
■ This dispute involves, several patents for technology intended to modify the wake of a recreational boat,to-make the wake suitable for surfing, whereby a person trails the boat and uses a board to surf the boat’s wake [Doe. 42 p. 1]. Plaintiff, a boat manufacturer headquartered in Tennessee, holds three patents for the-technology and method used to implement the technology: U.S. Patent No. 8,534,214, issued September 17, 2013, U.S. Patent No. 8,539,897, issued September 24, 2013, and U.S. Patent No. 8,578,873,' issued November 12, 2013 [Id. at 1-2]. The Court will refer to each-patent, as the parties do, by the last three digits of the patent ■ number — '214, '897, or '873.- - " < ■ •
The '214 patent depicts pivoting fins along the centerline of the boat, while the '897 and '873 patents depict tabs attached to the boat’s transom [Compare Doc. 25-2, with Docs. 25-1, 25-3]. In June 2012, the latter system was released as “Surf Gate” [Doc. 42 p. 3]. Surf Gate is a .mechanical system that changes the shape and direction of a .bqat’s wake, using installed structures known as “water diverters” at the boat’s stern [Id. at 2]. Installing these water diverters, and allowing the boat’s driver to control them from the helm of the boat, enables the boat’s wake to be manipulated based on water conditions or the wake surfer’s preferences [Id.].
With Surf Gate, the boat’s driver can create a surfable wake at the touch of a button and transfer the wake from one side to the other [Id. at 3]. Passengers may sit anywhere on the boat as there is no need for uneven weight distribution [Id.]. Plaintiff asserts that Surf Gate, upon its release into the market as a $3,000 option, was purchased by everyone who purchased á Malibu Wakesetter boat [Id.].
In early 2013, defendant Nautique, a Florida boat manufacturer that directly competes with plaintiff around the country, announced its Nautique Surf System, a system similar to Surf Gate that allows for wake modification [Id.]. In describing its system, defendant contends that unlike plaintiffs and other competitors’ systems, the Nautique Surf System uses interceptors that deploy directly into the flow of water, rather than tabs that extend at an angle away from the flow of water [Id.].
On September 17, 2013, the day the '214 patent was issued, plaintiff filed an infringement action in the United States District Court for the Central District of California [Id. at 4]. Plaintiff voluntarily dismissed the case on October 31, 2013, and filed the present action in this Court on the same day [Id.]. On November 1, 2013, defendant filed a declaratory action in the United States District Court for the Middle District of Florida, seeking a declaratory judgment of noninfringement or invalidity as to plaintiffs patents [Id.]. This Court later issued an order granting plaintiffs motion to enjoin the later-filed Florida action and denying defendant’s request to transfer this case to the Middle District of Florida [Id. at 4 n. 3].
Soon after filing its complaint, plaintiff moved for preliminary injunctive relief as to the '897 patent only [Doc. 70 p. 2]. After extensive briefing by the parties and a hearing on January 6, 2014, the Court denied the motion in a memorandum opinion and order entered February 4, 2014 [Id.]. The Court analyzed, among other issues, the meaning of the patents’ terms “side strake,” “substantially perpendicular,” and “surf wake” [Doc. 42 p. 10-20], The Court found that “side strake” means the exterior side surface of the hull and that “substantially perpendicular” means approximately perpendicular [Id. at 10-18]. Rejecting Nautique’s argument that the term “surf wake” is indefinite, the Court construed the term as a wake created by the extension of a water diverter which is substantially smoother, larger, and with a higher peak than a non-enhanced wake [Id. at 18-20]. In assessing the validity of the '897 patent, the Court found that Nau-tique had raised a question of validity in light of an existing patent named Svensson but that Malibu would likely overcome that challenge as to certain claims [Id. at 24-26], Although the Court found that Malibu would likely succeed on the merits of its patent infringement claim, the Court denied the injunction based on the lack of irreparable harm [Id. at 22, 37-38].
A few months later, on June 27, 2014, defendant filed its petition for inter partes review with the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office pursuant to 35 U.S.C. § 311, asserting that the '897 patent’s claims are unpatentable because of prior art [Doc. 70 p. 2]. Defendant requested a stay of this patent infringement litigation pending resolution of its petition to PTAB [Id. at 1]. On August 6, 2014, the Court denied the- motion, reasoning, in part, that while the inter partes review process “has some potential to clarify some of the issues in this case, ... that potential is speculative at best until the petition is granted” [Id. at 8].
Then, on November 26, 2014, the PTAB issued a decision granting inter partes review of certain claims of Malibu’s '897 patent [Doc. 150-1]. The PTAB analyzed the terms “surf wake” and “substantially perpendicular” and found a reasonable likelihood that Nautique would prevail on its assertion that Claims 1-5, 8-11, 13 — 16, and 18-20 of Malibu’s '897 patent are anticipated by Svensson — an existing patent for a system that operates similarly to the systems at issue in this case [Id. at 9-10, 12-14, 23]. In light of the PTAB’s decision, Nautique asks the Court to reconsider staying this litigation pending a final determination by the PTAB [Doc, 150].
II. Motion tó Stay
The decision to stay litigation lies within the discretion of the district court, representing its power to control the disposition of cases on its docket. See Landis v. N. Am. Co., 299 U.S. 248, 254, 57 S.Ct. 163, 81 L.Ed. 153 (1936). But “ ‘a court must tread carefully in granting a stay of proceedings, since a party has a right to a determination of its rights and liabilities without undue delay.’ ” Procter & Gamble Co. v. Team Techs., Inc., No. 1:12-cv-552, 2013 WL 4830950, at *1 (S.D.Ohio Sept. 10, 2013) (quoting Ohio Envtl. Council v. U.S. Dist. Court, 565 F.2d 393, 396 (6th Cir.1977)).
In the context of patent reexamination proceedings, courts generally weigh three factors: (1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay would simplify the issues in question and trial of the case; and (3) the stage of the proceedings, including whether discovery is complete and whether a trial date has been set. Id. at *2; see, e.g., Radio Sys. Corp. v. E. Mishan & Sons, Inc., 3:13-cv-383, 2014 WL 1870775, at *1 (E.D,Tenn. Mar. 28, 2014).. These factors, however, are not controlling, and a court’s decision whether to grant a stay pending inter partes review should be based upon the totality of the circumstances. See Universal Elecs. Inc. v. Universal Remote Control, Inc., 943 F.Supp.2d 1028, 1031, 1035 (C.D.Cal.2013). Under 35 U.S.C. § 316(a)(ll), the final determination in an inter partes review generally must be issued not later than one year after the date review was instituted. The PTAB’s decision, however, may be appealed to the Court of Appeals for the Federal Circuit. 35 U.S.C. §§ 319, 141(c).
Nautique addresses the factors in turn [Doc. 150 p. 3-4]. First, Nautique argues that a stay will save Malibu money and will eliminate the possibility of inconsistent decisions, a new trial, post-trial disputes, or resolution by the Federal Circuit [Id. at 3]. Second, Nautique argues that the potential for simplification of issues is much greater than when the Court considered defendant’s previous motion to stay [See id.]. In denying the previous motion to stay, the Court expressed concern that because Nautique’s petition for inter partes review had not been granted, arguments about simplification were speculative [Doc. 70 p. 8], Nautique argues that concern is alleviated and cites a study that has found that inter partes review proceedings invalidate all claims before it 77.5% of the time [Doc. 150 p. 3]. Although the proceedings only directly impact the '897 .patent, Nautique contends that a more conclusive interpretation of “surf wake” would significantly simplify the issues pending before this Court [See id. at 8-4].
In the Court’s opinion entered August 6, 2014, denying defendant’s previous request for a stay, the Court highlighted the prejudice that a stay works on direct competitors, especially in a narrow market [Doc. 70 p. 5], The-Court also noted that the review proceeding involves only one of the three patents at issue and that the Court has devoted considerable time and resources to familiarizing itself with the facts and relevant law [Id. p. 8-9]; Not including the length of an appeal,' the review process could last another ten months, and an additional six months if an extension is granted [Id. p. 6; 35 U.S’.C. § 316(a)(ll) ].
As the Court previously noted, any simplification of the issues before the Court would be limited because the inter partes review will address only one of the three patents. And the review cannot entirely eliminate the '897 patent, as- PTAB is not reviewing Claim 12 [See Doc. 150-1 p. 14, 23; see also Procter & Gamble Co. v. Team Techs., Inc., No. 1:12-cv-552, 2014 WL 533494, at *4’ (S.D.Ohio Feb. 11, 2014) (denying a motion to stay and noting that “in addition to the 11 claims that Plaintiff has asserted in this case that are also at issue in the [inter partes review proceedings], the remaining 16 asserted claims are not at issue in any [inter partes review]”) ]. These facts support denying a stay, as do the close of discovery and the impending trial date in this case. Finally, the persuasiveness of PTAB’s final decision regarding invalidity may be limited because the Board adopted a significantly different definition of “surf wake,” there is no presumption of validity in reexamination proceedings, and PTAB employs a preponderance, rather than civil litigation’s clear and convincing, evidence standard. See In re Baxter Int’l, Inc., 678 F.3d 1357, 1364 (Fed.Cir.2012) (“[T]he PTO in reexamination proceedings and the court system in patent infringement actions take different approaches in determining validity and on the same evidence could quite correctly come to different conclusions.” (internal quotation marks and citation omitted)). Nor would this Court owe any deference to the PTAB’s claim construction. See, e.g., Pragmatus AV, LLC v. Yahoo! Inc., No. C-13-1176 EMC, 2014 WL 1922081, at *4 (N.D.Cal. May 13, 2014).
In sum, this case is much farther along than it was when Nautique originally sought a stay, and the potential for simplification of the issues before the Court is not so great as to outweigh the prejudice that would result from a stay. Because the totality of the circumstances weighs against a stay, Nautique’s renewed request for a stay will be denied;
III. Dispositive Motions
■ Aside from Nautique’s motion to reconsider a stay, the parties have filed multiple dispositive motions. Plaintiff Malibu has moved for partial summary judgment of infringement, asking for a ruling that Nau-tique has literally infringed Claims 1, 5,16, 18, 19, and 20 of the '897 patent and Claims 20, 22, 27, and 28 of the '873 patent [Doc. 51]. Defendant Nautique has responded with motions for summary judgment of noninfringement [Doc. 93] and of invalidity [Doc. 95], because invalid patent claims cannot give rise to liability for infringement. Malibu, in turn, has filed a motion for summary judgment of no invalidity based on the Svensson patent [Doc. 91].
A. Standard of Review
Summary judgment under Rule 56 of the Federal Rules of Civil Procedure is proper “if the movant 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). The moving party bears the burden of establishing that no genuine issues of material fact exist. Celotex Corp. v. Catrett, 477 U.S. 317, 330 n. 2, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Moore v. Philip Morris Cos., Inc., 8 F.3d 335, 339 (6th Cir. 1993)., All facts and all inferences to be drawn therefrom must be viewed in the light most favorable to the non-moving party. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538.(1986); Burchett v. Kiefer, 310 F.3d 937, 942 (6th Cir.2002).
To establish a genuine issue as to the existence of a particular element, the -non-moving party must point to evidence in the record upon which a. reasonable finder of fact could find in its favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The genuine issue must also be material; that is, it must involve facts that might affect the outcome of the suit under the governing law. Id.
The Court’s function at the point of summary judgment is limited to determining whether' sufficient evidence has been presented to make the issue of fact a proper question for the factfinder. Anderson, 477 U.S. at 250, 106 S.Ct. 2505. The Court does not weigh the evidence or determine the truth of the matter. Id. at 249, 106 S.Ct. 2505. Nor does the Court search the record “to establish that it is bereft of a genuine issue of material fact,” Street v. J.C. Bradford & Co., 886 F.2d 1472, 1479-80 (6th Cir.1989). Thus, “the inquiry performed is the threshold inquiry of determining whether there is a need for a trial — whether, in other words, there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party.” Anderson, 477 U.S. at 250, 106 S.Ct. 2505.
The two elements of a patent infringement case are (1) construing the patent and (2) determining whether infringement occurred. Markman v. Westview Instruments, Inc., 517 U.S. 370, 384, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). The first is a question of law, to be determined by the Court, and the second is a question of fact, to be submitted to a jury. Id.; Presidio Components, Inc. v. Am. Technical Ceramics Corp., 702 F.3d 1351, 1358 (Fed.Cir.2012) (“In infringement cases, the court first interprets the claims to determine théir scope and meaning. Next the jury compares the properly construed claims to the allegedly infringing device.”). Malibu asserts that Nautique rests its non-infringement case on erroneous interpretations of the following claim terms: “side strake,” “substantially perpendicular,” “upright,” and “surf wake” [Doc. 56.p. 19-20]. According to Malibu, when these terms are properly construed, each Nautique boat equipped with the Nautique Surf System is infringing because it satisfies every limitation of the ten claims mentioned in Malibu’s motion for summary judgment [Id. at 19]. The Court, therefore, will provide a brief background of the claims and the standard for claim construction, construe the claim terms at issue, -and then determine, based on its constructions of the terms, whether Nautique is infringing or not infringing as a matter of-law. Subsequently, the Court will address the parties’ arguments regarding the -patents’ validity.
B. Claim Construction
' As the Court explained in its preliminary injunction opinion, when the meaning of a claim term as understood by persons of skill in the art is not immediately appaient, courts look to “ ‘those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.’ ” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir.2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed.Cir. 2004)). Such sources include “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id. (citation omitted). As part of “a fully integrated written instrument,” however, the specifications are usually “the single best guide to the meaning of a disputed term.” Id. at 1315 (citations omitted); see also Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed.Cir.1998) (“The best source for understanding a technical term is the specification from which it arose, informed, as needed, by the prosecution history.”); Phillips, 415 F.3d at 1317 (“[W]hile extrinsic evidence ‘can shed useful light on the relevant art,’ ... it is ‘less significant than the intrinsic record in determining the legally operative meaning of claim language.’” (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed.Cir.2004))). Finally, the Court understands that it is not bound by its previous interpretations of the claim terms at the preliminary injunction stage. See Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352, 1361 (Fed.Cir. 2002) (stating that district courts “may engage in a rolling claim construction, in which the court revisits and alters its interpretation of the claim terms as its understanding of the technology evolves”).
The '897 and '873 patents are similar [Compare Doc. 25-1 (“'897 patent”), with Doc. 25-3 (“'873 patent”)]. While the Court will not quote each claim in full, a recitation of Independent Claim 1 of the '897 patent will be helpful to understanding the Court’s analysis. The terms disputed by the parties are italicized:
1. A boat configured to modify its wake for surfing, the boat comprising:
A hull comprising port and starboard side strakes, a bottom, a transom aft said side strakes, and a longitudinal axis, wherein when said hull moves' through water, water flows along the port and starboard side strakes and then beyond the transom to at least in part form a first wake; starboard and port upright water diverters each movable between a first position and a second position, said second position of said starboard water diverter laterally extending beyond said starboard side strake at the transom substantially perpendicular to said longitudinal axis of the hull, and said second position of said port water diverter laterally extending beyond said port side strake at the transom substantially perpendicular to said longitudinal axis of the hull, wherein when said hull moves through water, said starboard diverter in said second position redirects water passing along said starboard side strake as said- water moves beyond said transom to produce a port side surf wake different from said first wake and wherein when said hull moves through water, said port diverter in said second position redirects water passing along said port side strake as said water moves beyond said transom to produce a starboard side surf wake, different from said first wake and different from said port side surf wake. -
['897 patent, col. 14,11. 26-51].
Dependent Claim 5 adds that “the starboard and port side water diverters are each movable to one or more interim positions” [Id., col. 14,11. 65-67]. Independent Claim 16 includes many of the same elements as Independent Claim 1 but adds that the laterally-extendable water divert-ers are “laterally retractable behind said transom, said extension and said retraction capable of occurring while said surf boat moves through water” [Id., col. 16, 11. 21-31]. And Dependent Claim 20 adds that the diverters retract automatically when the boat travels above a predetermined speed [Id., col. 16, 11. 45-47]. The claims at issue in the '873 patent are similar, but Independent Claim 27 recites, instead of “surf wake,” the terms “asymmetrical wake” and “non-surf wake” ['873 patent, col. 26-27,11. 61-2].
1. Side Strake
Of the claims at issue in Malibu’s motion for summary judgment of infringement, all claims of the '897 patent and Dependent Claim 22 of the '873 patent include the term “side strake.” Like at the preliminary injunction stage, Nautique relies on extrinsic evidence and argues that strakes are “ridges or raised surfaces attached to or molded into the surface of the hull” [Doc. 93 p. 5; Doc. 42 p. 10], The Court previously rejected these arguments in the context of the '897 patent [see Doc. 42 p. 10-13] and will do so again in the context of both the '897 and '873 patents. However, having further reviewed the specifications and relevant prosecution history [see Doc. 42 p. 12], and the parties’ additional arguments, the Court will modify its preliminary construction and define the term “side strake” as an exterior side surface of the hull, at least a significant part of which is adjacent to the water diverter at the transom and is therefore underneath the water surface when the boat travels through water [See, e.g., '897 patent, col. 14,11. 30-31 (stating that “when said hull moves through water, water flows along the port and starboard side strakes”); id., col. 14, 11. 43-44 (stating that when a water diverter is deployed, it “redirects water passing along the said starboard side strake”); '873 patent, col. 7, 11. 48-52 (stating that extending the divert-er beyond the side strake will “redirect and/or deflect water passing along the water craft”) ].
The Court’s final construction diminishes Nautique’s argument that the Court’s preliminary construction — “the exterior side surface” of the hull — equates the meanings of “side strake” and “side of the hull” [See Doc. 75 p. 21]. And even if a side strake were to encompass the whole exterior side surface on a certain boat, the Court does not believe its construction would render any claim term superfluous. While the meanings of “side strake” and “side of the hull” undoubtedly overlap to a degree, “side of the hull” does not appear in any of the claims of either the '897 or '873 patents and therefore does not appear to be subject to this principle of construction [See 897 patent, cols. 14-16; 873 patent, cols. 24-27; Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed.Cir.2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”) (emphasis added) ], In other words, because “side of the hull” is not a claim term, interpreting “side of the hull” and “side strake” similarly does not render superfluous any term within the patents’ claims.
The '897 and '873 patents describe edge 40p in Figure 3 (shown below) as “the intersection of the transom with the port side strake” and edge 40s as “the intersection of the transom with the starboard side strake” ['897 patent, col. 5, 11. 29-36; '873 patent, col. 6, 11. 37-44]. Figure 3 of the patent’s grandparent application, which the '897 and '873 patents incorporate by reference [E.g., '873 patent, col. 1, 11. 10-12, 20-22], specifically identifies the port and starboard side strakes with reference numerals 44p and 44s [Doc. 56 p. 21]. Malibu explains that the side strake, as illustrated in Figure 3, “may make up substantially the entire side of the hull” [Doc. 98 p. 17].
Another example of a side strake can be found in Figure 1 of the '897 and '873 patents. The back edge of starboard side strake 44s is visible and. labeled in- that figure [See, e.g., '873 patent, col. 6, 11. 39 (demonstrating that references to 44s represent the starboard side strake) ]. Malibu explains that, as illustrated in Figure 1, the side strake “may be a relatively small surface on the side of the hull” [Doc, 98 p. 12],
The specifications include many other references to the term “side strake.” For example, Claim 1 of the '897 patent states that when the starboard water diverter is moved from first to second position, the diverter “laterally extend[s] beyond said starboard side strake at the transom” ['897 patent, col. 14,11. 35-40]. The specifications confirm that the objective of the lateral extension beyond the side strake is for the diverter to extend into the flow of water and redirect water as it moves past the transom [See, e.g., '897 patent, Col. 6,11. 40-45 (“[T]he system may be configured to allow the flap to laterally extend beyond the side strake ... in order to redirect and/or deflect water passing along the water craft as it moves beyond the transom.”)]. Because the specifications make clear that water flows along the boat’s ..side strakes as the boat travels and that the water diverters extend beyond the strakes to divert water, the Court finds-that at least a significant part of the side strake (an exterior side surface) must be-.submerged and adjacent to the water divert-ers [See, e.g., '897 patent, col. 2, 11. 26-29 (stating that the water diverter “may extend outboard beyond -a side strake of the watercraft to deflect water traveling along the side strake and -past the transom”) ].
Anticipating such a claim construction, Nautiqué argués that its system' does not infringe because its water divertérs do not extend “beyond the extériór side surfaces higher up the boat sides,” parts of the boat that Malibu has identified, through Figure 3, as being strakes [Doc. 93 p. 7-10 (citing diagrams'of its boats) ]. The Court’s construction of ’“side' strake” Could also encompass Such a surface higher up a boat’s side. In the diagram of the Nautiqué G23 model'shown below, Nautiqué uses vertical lines on both sides to demonstrate that its water-diverting plate-like structures extend beyond only part of the exterior side surface (i.e., extend to the first vertical line but not the second).
Nautique continues, “The claims do not suggest the water diverter need only extend beyond a portion of the strakes or the narrowest portion of the strakes” [Id. at 10 (emphasis in original) ]. Malibu responds that, under its patents, the water diverters need only extend beyond the side strakes “at the transom,” for the purpose of “redirect[ing] water passing along [the] side strake as said water moves beyond said transom” [Doc. 98 p. 13 (quoting Claim 1 of the '897 patent, col. 14, 11. 36-51) ]. At the December 16, 2014, hearing, Malibu noted that “Nautique’s position requires construing ‘extending beyond’ [the] side .strake to mean ‘extending beyond [the] widest point of the transom’” [See Doc. 177]. Nautique appears to try to frame the issue as whether its products are infringing, i.e., the factual question of “whether the construed claim reads on the accused product.” PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed.Cir.1998).
The Court finds, however, that this is in essence a battle over the scope of the claim terms “extending beyond” and “extendable beyond” and will address this issue as part of its claim construction. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.Cir.1997) (“Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the paten-tee covered by the claims, for use in the determination of infringement.”); 02 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360-63 (Fed.Cir.2008) (holding, when parties agreed that “only if’ had a common meaning but disputed whether the “only if’ limitation allowed for exceptions, that the court should have adjudicated the parties’ dispute during claim construction rather than allow the parties to argue, the scope of the claim — the meaning and legal significance of the “only if’ limitation — to the jury).
Having reviewed the intrinsic evidence, the Court finds that the claims require extension beyond the side strake only where the side strake is submerged and adjacent, to the water diverter. See 02 Micro, 521 F.3d at 1360 (“Words of a claim are generally given their ordinary and customary meaning, which is the meaning a term would have to a person of ordinary skill in the art after reviewing the intrinsic record at the time of the invention.”); see also Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 753 F.3d 1291, 1301 (Fed.Cir. 2014) (“ ‘To be clear, it is the purpose of the limitation in the claimed invention— not the purpose of the invention itself— that is relevant.’ ” (quoting Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1368 (Fed.Cir.2008))). The claims mention extension “at the transom,” which supports that the part of the side strake adjacent to the water diverter is the relevant part of the side strake for assessing “extending beyond.” Similarly, the purpose of the “extending beyond” limitation supports the Court’s construction. Whether the transom widens above the water diverter does not affect the diverter’s ability to redirect water passing along the submerged portion of the side strake. In sum, defendant has not shown, and the specifications do not appear to support, that Malibu’s claims should be limited to extensions of a certain distance beyond the side strake.
2. Substantially Perpendicular
Independent Claims 1 and 16 of the '897 patent and Dependent Claim 22 of the '873 patent recite that each water diverter is laterally extendable beyond a side strake at the transom and that this lateral extension is “substantially perpendicular” to the hull’s longitudinal axis. As the Court previously noted, Federal Circuit precedent counsels that “substantially” is a descriptive term of approximation commonly used in patent claims to avoid a strict numerical boundary [Doc. 42 p. 14]. Absent intrinsic evidence to the contrary, “substantially” is generally given its ordinary meaning [Id. (citing cases) ]. After reviewing the '897 patent and the prosecution history, the Court gave the term substantially its ordinary meaning and defined “substantially perpendicular” to mean approximately perpendicular [Id. at 18].
■ Malibu asks the Court to reaffirm its prior interpretation, reasoning that the term allows for reasonable deviations from exactly perpendicular [E.g., Doc. 56 p. 22-23]. The PTAB, in its decision granting inter partes review, agreed with Malibu and the Court’s preliminary construction and construed the term as approximately perpendicular [Doc. 150-1 p. 7, 9-10 (applying the “broadest reasonable interpretation standard,” where “claim terms are given their ordinary and customary meaning in view of the specification, as would be understood by one of ordinary skill in the art at the time of the invention”) ]. Nau-tique now argues that “substantially perpendicular” means “about ninety degrees, as measured by degrees” and argues that Malibu .is improperly describing this limitation in inches [Doc, 75 p. 15-16, 23-24; Doc. 76 p. 24; see also Doc. 51-8 (stating in response to Malibu’s interrogatories that “substantially perpendicular” means “within 5° of perpendicular”) ].
While the specifications note that “the surf wake system may be configured to hold the flaps at 0°, 5°, 10°, 15°, 20°, 25°, 30° and etc. relative to the centerline” ['897 patent, col. 6,11. 56-58], the Court is not convinced that angle measurement is the only proper context in which to analyze “substantially perpendicular.” The specifications do not use angle measurements or measurements in degrees when stating that “the system may be configured to allow the flap to laterally extend beyond the side strake substantially perpendicular to the longitudinal axis of the watercraft” [E.g., '897 patent col. 6, 11. 40-43]. . And both patents explain that “the flap need not be planar____Other suitable configurations and sizes can be employed, including curved surfaces, curved edges, different geometric profiles” ['897 patent, col. 7, 11. 53-58; '873 patent, col. 8, 11. 61-66]. Viewing “substantially perpendicular” solely in terms of angles would wrongly limit the claims to water diverters that have a well-defined angle relative to the longitudinal axis. Therefore, having reviewed the specifications and the parties’ arguments, the Court reaffirms its construction of “substantially perpendicular” as approximately perpendicular.
3. Upright
All of the claims at issue in Malibu’s motion for summary judgment of infringement require “upright” water diverters or “upright” wake modifiers. The Court did not address the meaning of “upright” at the preliminary injunction stage. Relying on the specifications, Malibu argues that “upright” means “oriented generally vertically with respect to the boat, allowing for slight inclination” [Doc,- 56 p. 26]. Nau-tique contends that “upright” should be construed as “vertical” [See e.g., Doc. 82 p. 17].
The figures in the '897 and '873 patents show water diverters that are upright even though they are slightly inclined [See Figures 1-3, 10]. The incline of each water diverter is determined by its pivot axis. In Figure 3, the pivot axis is parallel to the boat’s side edge, which angles inwards slightly [See '897 patent, col. 5, 11. 47-57; '873 col. 6, 11. 55-65], In addition to this already inclined orientation, the patents explain that the pivot axis may incline even further, including by at least 15° more [See '897 patent, col. 5, 11. 47-57 (stating that the pivot axis néed not be parallel to the corresponding side edge and “may be substantially vertical, substantially parallel to the side edge, some other angle'therebet-ween, or some angle slightly inclined with respect to the side edge”); '873 patent, col. 6, 11. 55-65 (same) ]. Because construing “upright” as “vertical” would exclude the disclosed ’ embodiments with slightly inclined diverters, the Court will not adopt Nautique’s proposed definition. See Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1333 (Fed.Cir.2013) (stating that an interpretation that excludes a disclosed embodiment from the scope of the claim is rarely, if ever, correct).
During prosecution, Malibu distinguished its invention from another by claiming that “a propeller is not an upright or substantially vertical water diverter” [Doc. 76 p. 16 (citing Doc. 76-6 p. 18) ]. Nautique argues that Malibu chose “upright” rather than “substantially vertical” and “cannot now change the terms chosen” [Id.; see also Doc. 143 p, 6 (noting that Malibu’s '214 patent claimed “wake modifiers oriented substantially vertically”) ]. The Court finds, however, that Malibu’s use of the terms synonymously supports that the term upright allows for slight inclination.
This conclusion is bolstered by the term’s ordinary meaning. See Phillips, 415 F.3d at 1322 (demonstrating that courts may look to dictionaries during claim construction as they “are often useful to assist in understanding the commonly understood meanings of words”). Nau-tique has pointed the Court to an internet dictionary that defines upright as “erect or vertical.” Upright Definition, Dictionary.com, http://dictionary.reference.com/ browse/upright?s=t (last visited Jan. 27, 2015)]. However, the second definition listed for “upright” is “raised or directed vertically upward.” Id. And unlike vertical, which that dictionary defines as “being in a position or direction perpendicular to the plane of the horizon; upright,” Vertical Definition, Dictionary.com, http:// dictionary.reference.com/browse/vertical? s=t (last visited Jan. 27, 2015), that dictionary defines erect as simply “upright in position or posture,” Erect Definition, Dictionary.com, http://dictionary.reference. com/browse/erect?s=t (last visited Jan. 27, 2015). Taking the dictionary definitions as a whole, the Court finds that they support that the term “upright” allows for slight inclination. In any event, the dictionary definition cited by Nautique-does not overcome the intrinsic evidence. • ■
■ Finally, Nautique argues that Malibu’s system is a hinged flap system that is completely different than Nautique’s, which does not have a hinged flap or anything similar [Doc. 76 p. 16; Doc. 82 p. 17]. But patent claims are not construed with reference to the accused product. Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1330 (Fed.Cir.2006). While there are obvious differences between Nautique’s and Malibu’s systems, Malibu’s patents encompass diverters that do not pivot [Compare '873 patent, col. 25, 11. 4-9 (disclosing, in an independent claim, upright water diverters movable between a first and second position), with 873 patent, col. 25, 11. 49-50; id., col. 26, 48-51 (disclosing, in dependent claims, diverters that pivot) ].
Having considered the evidence and the parties’ arguments, the Court agrees with Malibu’s construction and construes “upright” to mean oriented generally vertically with respect to the boat, allowing for slight inclination., See 02 Micro, 521 F.3d at 1361 (“A determination that a claim term ‘needs no construction’ or has the ‘plain, and ordinary meaning’ may be inadequate when a. term has more than-,-one ‘ordinary^ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”).
4. Surf Wake
The surf wake limitation is found in Claims 1, 5, and 19 of the '897 patent and Claims 20 and 22 of the '873 patent, while the term “non-surf wake” is, found in Claims 27 and 28 of the '873 patent. Before attempting to define what a surf wake is, the Court finds it helpful to understand how a surf wake is created. Figure 13 of the patents is particularly instructive. When a boat is travelling through water, water flows along both sides of the boat [See '897 patent, col. 4, 11. 39-41 (stating that the invention “is concerned with flow management of water passing the stern as the water craft is moving forward through a body of water”) ]. Figure 13A demonstrates that when the water flowing along both sides of the boat is unimpeded (i.e., neither water diverter deployed), the two water flows converge at their natural intersection behind the boat and a conventional wake forms. When a starboard side surf wake is desired, the port diverter is deployed, which disrupts the flow of water along the port side “such that the flow of water is redirected outwardly and/or rear-wardly thereby delaying convergence of the port side flow with starboard side flow” behind the boat “to form a larger starboard wake with a higher peak and smoother face that is suitable for starboard surfing” ['897 patent, col. 11-12, 66-7; see also Figure 13B (stating that deploying the port diverter causes convergence of the two water flows beyond their natural intersection) ]. The patent specifications refer to this process as “constructive interference of converging waves” [E.g., '897 patent, col. 12,11.15].
The Court previously found that “surf wake” could be defined as a wake created by the extension of a water diverter which is substantially smoother, larger, and with a higher peak than a non-enhanced wake [Doc. 42 p. 20]. As discussed at the preliminary injunction stage and alluded to above, this interpretation is supported by intrinsic evidence [See id. at 19-20]. Although the patents do not provide an explicit definition of “surf wake,” Claim 1 of the '897 patent indicates that a “surf wake” is different from a “first wake,” and occurs when one of the water diverters is in its second position, extended beyond the side strake ['897 patent, col. 14, 11. 30-32, 45-51]. Similarly, Claim 20 of the '873 patent indicates that a “surf wake” is “different from a wake of said boat moving through water without water diverters engaged” ['873 patent, col. 26, 11. 15-20; see also id. col. 26-27, 11. 63-2 (discussing the creation of right and left side asymmetrical wakes suitable for wake surfing that are “different from a non-surf wake of said boat moving through water without said first and second wake modifiers engaged”) ].
The specifications provide more detail as to what the patentees meant by the term “surf wake,” teaching, in relevant part:
Turning to FIG. 5(b), when a starboard surf wake is desired, port side flap 33p is positioned in an outward position while the starboard side flap 33s remains in a neutral position. Since the port side flap is in an outward position and thus extends beyond the port side strake 44p, waves on the port side are redirected, which facilitates constructive interference of converging waves to form a larger starboard wake with a higher peak and smoother face that is suitable for starboard surfing, such as shown in FIG. 6(b). Comparing to the non-enhanced wake of FIG. 6(a) with the starboard wake shown in FIG. 6(b), it is evident that surf wake system 32 modified and/or enhanced the wake with a smooth face and a relatively high peak. As can be seen in FIG. 6(b), waist-high peaks of three or four feet are attainable, thus providing a reproducible wake that is suitable for surfing.
['897 patent, col. 8, 11. 33-47; '873 patent, col. 9,11. 42-56].
Figures 6(a), 6(b), and 6(c) of both patents (shown below) display the differences between the wakes created by the boat when neither diverter is deployed and when one of the diverters is deployed. As indicated by the white, frothy water, a conventional wake is generally choppy and lacks a smooth face and a high peak [See '897 patent, col. 7, 11. 5-12; id., col. 8, 11. 30-32; '873 patent, col. 9, 11. 39-41]. When a diverter is deployed, the side of the wake opposite the deployed diverter is noticeably smoother and has a higher peak than the conventional wake produced when neither diverter is deployed [See Figs. 6(a), 6(b) & 6(c) ]. Essentially, in a “surf wake,” the side of the wake opposite the deployed diverter looks more like a wave than like a conventional wake produced by a boat [See '897 patent, col. 6, 11. 48-52 (discussing ways “to produce the desired waveform”)].
Having further examined the intrinsic evidence and the parties’ additional arguments, the Court will modify its preliminary construction and construe “surf wake” as the side of a modified wake created by a watercraft traveling through water that is substantially smoother and has a higher peak than a conventional wake [See '873 patent,, col. 26, 11. 34-38 (indicating that a surf wake refers to a side of a modified wake rather than the entire modified wake, stating, “when said right side upright water diverter produces said left side surf wake, a right side wake is not said right side surf wake”) ]. Similarly, the Court defines “non-surf wake” as a wake that lacks a smooth face or a high peak, such as a conventional wake.
Despite the Court’s construction of “surf wake” at the preliminary injunction stage, Nautique argues that all of Malibu’s claims are invalid as indefinite because they include the terms “surf wake,” “non-surf wake,” or “wake surfable by a wake surfing rider” [Doc. 95 p. 26; Doe. 76 p. 8-13]. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed.Cir.2012). At the preliminary injunction stage, the Court found that Nautique had not raised a substantial question of indefiniteness, reasoning that the term “surf wake” is amenable to construction [Doc. 42 p. 20]. Since then, however, the Supreme Court issued Nautilus, Inc. v. Biosig Instruments Inc., — U.S. -, 134 S.Ct. 2120, 189 L.Ed.2d 37 (2014).
According to Nautique, before Nautilus, a claim term “was definite if it were merely ‘amenable’ to construction” or “was indefinite only if it was ‘insolubly ambiguous’ ” [Doc. 95 p. 24]. Under Nautilus, however, “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.” Nautilus,, 134 S.Ct. at 2124; see also id. at 2129 (“[A] patent must be precise enough to afford clear notice of what is claimed.”). Nautique contends that “surf wake” and “non-surf wake” are “purely subjective and immeasureable” and are ambiguous because a wake that may be surfable to one person may not be to others [Doc. 95 p. 19-20 (discussing Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1253 (Fed.Cir.2008) (affirming that “fragile gel” was indefinite by clear and convincing evidence pre-Nautilus because patent owner failed “to identify the degree of the fragility” and an ordinary artisan would not know which fluids were fragile gels, as that term was used in the patent)) ]. But having analyzed the ease law and the specifications, and compared Figures 6(b) and 6(c) to Figure 6(a), whether one side of a wake has a substantially smoother face and higher peak than a conventional wake is a determination that can be made with “reasonable certainty.” Nautilus, 134 S.Ct. at 2124.
The Supreme Court noted that “absolute precision” is not required and that “[s]ome modicum of uncertainty ... is the pripe of ensuring the appropriate incentives for innovation.” Id. at 2128-29 (internal 'quotation marks and citation omitted). While Nautique has submitted expert testimony that a conventional wake is surfable and should therefore qualify as a surf wake [see Doc. 95-10 ¶¶ 26, 61],‘ the Court will “discount any expert testimony that is clearly at odds” with the patent’s written description;' Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed.Cir. 2009) (citation omitted); Even Nautique’s own documents and statements support that persons in the watersport boat industry understand what a surf wake is [See Doc. 9-5 p. 61 (“Customers love the fact that [the system] is adjustable. -Each person can design the pérfeet surf wake for them.”); id. (“Customers love the long surf wake the [Nautique Surf System] creates.”); Doc. 55-1 p. 41 (sealed) ]. For the reasons discussed above, the Court does not find the terms “surf wake” or “non-surf wake” to be indefinite'. '
And to the extent Nautique asserts that the term “asymmetrical wake,” which appears in Claims 27 and, 28 of the '873 patent, is indefinite [see Doc. 51-8 p. 20], the Court disagrees. First, the specification gives meaning to the term [See, e.g., '873 patent, col. 3, 11. 61-64; id., col. 8,11. 10-25 (discussing the normal, symmetrical convergence of the water flows behind the boat, as shown in Figure ;6(a)); id., col. 13, 11. 20-30 (discussing, in the.context of Figure 13, delayed convergence of the water flows behind the boat)]. Second, those skilled in the art appear to understand the scope of the term, as evidenced by Nau-tique’s acknowledgement that redirecting water with an extended diverter generates “an asymmetric wake pattern” [See Doc. 53-9 p. 23, 25, 28 (sealed); see also Doc. 95-10 ¶26 (stating in a Nautique expert report that when neither water diverter is engaged “the watercraft produces a substantially symmetric wake”); Doc. 82-4 (stating in a Nautique expert report that, “depending on conditions, extending a wave plate may not produce an asymmetrical wake”) ].
5. Substantially Unsuitable for Left/ Right-Foot-Forward Surfing
Claim 1 of the '873 patent recites that when the port diverter produces a starboard side surf wake “for right-foot-forward wake surfing, a port side wake is substantially unsuitable for left-foot-forward wake surfing”,['873 patent, col. 25,11. 18-25]. Conversely, when the starboard diverter produces a port side surf wake “for left-foot-forward wake surfing, a starboard side wake is substantially unsuitable for right-foot-forward wake surfing” [Id.]. In support of its motion for summary judgment of noninfringement, Nautique contends, similar to its approach to the term “surf wake,” that “substantially unsuitable” for left-or right-foot-forward wake surfing is indefinite because some persons, like accomplished athletes, can surf with either foot forward on either side of the wake when a water diverter is engaged [See Doc. 93 p. 14; Doc. 76 p. 13-15].
Malibu responds that, by looking at the intrinsic evidence, “substantially unsuitable” can be defined with reasonable certainty [See Doc. 107 p. 23-24 (citing Nautilus, 134 S.Ct. at 2124 (holding that, for purposes of assessing indefiniteness, the claims must be read in light of the specification and prosecution history))]. The Court agrees. The specification supports that starboard side surf wakes are generally more readily surfable by right-foot-forward wake surfers, that port side surf wakes are generally more readily surfable by left-foot-forward wake surfers, and that the wake on the same side as the deployed water diverter is not substantially suitable for surfing because it does not have a substantially smooth face or high peak [See '873 patent, col. 3,11. 25-29 (“Various embodiments disclosed herein can relate to a boat configured to generate a starboard side surf wake for at least goofy-foot wake surfing and a port side surf wake for at least regular-foot wake surfing.”) (emphasis added); id., col. 10,11.10-17 (describing how the invention allows for quick switching between port and starboard side surf wakes, “thus accommodating both regular (or natural) and goofy surfers, as well as surfers that are sufficiently competent to switch from a port side wake to a starboard side wake while underway”); id., col. 9, 11. 39-41 (explaining that a conventional wake lacks a smooth face and high peak “and is thus not suitable for surfing”); id., col. 13, 11. 9-19 (stating that when “a surfable starboard side wake is desired, the operator may deploy the port side flap” to disrupt the flow of water “to form a larger starboard wake with a higher peak and smoother face that is suitable for starboard surfing”); see also Figure 6].
Collectively, the intrinsic evidence demonstrates that a port side wake is substantially unsuitable for left-foot-forward wake surfing if the port side wake lacks a smooth face and high peak. Similarly, a starboard side wake is substantially unsuitable for right-foot-forward wake surfing if the starboard side wake lacks a smooth face and high peak. Thus, similar to “surf wake,” the term “substantially unsuitable” does not render the claims indefinite.
C. Infringement
Having construed the claims, the Court proceeds to the second step of the infringement analysis: “a factual comparison of the claimed invention to the accused device, which is done by the fact finder.” Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1467 (Fed.Cir.1998). To prove literal infringement, Malibu must show that the accused device “contains every limitation in the asserted claims.” Id.
Malibu asserts that “[b]ecause the parties do not dispute any relevant facts regarding Nautique’s [Surf System]equipped boats and disagree only on how to interpret the patent claims, ‘the question of literal infringement collapses to one of claim construction and is thus amenable to summary judgment.’ ” [Doc. 98 p. 8 (quoting Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1320 (Fed.Cir.2012), and citing IGT v. Bally Gaming Int'l, Inc., 659 F.3d 1109, 1121 (Fed.Cir.2011) (affirming grant of summary judgment because “[t]he parties’ infringement arguments each depend entirely on their respective claim constructions.”)) ]. The Federal Circuit, however, “has explained that the infringement question collapses into one of claim construction only where the parties agree that the accused product infringes under one claim construction and that the accused product does not infringe under an alternative claim construction.” Genentech, Inc. v. Trustees of Univ. of Pa., 871 F.Supp.2d 963, 971 (N.D.Cal.2012) (citing Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1302 (Fed.Cir.2011)).
Determining literal infringement is a question of fact, but a court may determine it on summary judgment “ ‘when no reasonable jury could find that every limitation recited in the properly construed claim either is or is not found in the accused device.’ ” EMD Millipore Corp. v. AllPure Techs., Inc., 768 F.3d 1196, 1200-01 (Fed.Cir.2014) (quoting In-novention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1319 (Fed.Cir.2011)).
1. The Accused Product
The material characteristics and operation of Nautique’s boats equipped with the Nautique Surf System (“NSS”) are undisputed [See Doc. 56 p. 9 (Malibu’s Opening Brief of Infringement) (“Nautique does not dispute any material facts about its boats.”); see generally Doc. 82 (Nautique’s Opposition) (not disputing Malibu’s recitation of the facts about Nautique’s boats or NSS) ]. Nautique’s boats each have a hull, exterior side surfaces, a bottom, and a transom [Doc. 56 p. 10]. NSS includes two metal plate-like structures at the stérn of the boat, one to port and one to starboard, which Nautique calls WavePlates [Id. at 11]. Nautique does not dispute that its WavePlates divert water. As Nautique has stated, “[w]hen deployed, the WA-VEPLATE extends outward and down from the transom[,] intercepting and redirecting the flow of water to clean up the opposite wake and form a surf wave like no other boat” [Doc. 51-12 p. 2].
The vertical incline of the WavePlates ranges from 1.03° to no more than 8° on Nautique’s various models [Doc. 56 p. 11]. When inactive, an NSS WavePlate is retracted behind the transom [Id. at 12], When engaged, the WavePlate laterally extends beyond the adjacent hull side [Id.; .see also Doc. 93 p. 10 (conceding that the WavePlates “extend beyond the exterior side surface at the most narrow point of the exterior side surface”) ]. Each Wa-vePlate moves from its retracted position to its extended or engaged position and vice versa by means of an actuator [Id.]. The lateral extension of the WavePlates never deviates from exactly perpendicular by more than 18.23° or 0.62 inches [Id. at 14].
The WavePlates can be engaged and retracted at the touch of a button and while the boat is moving in the water [Id. at 13]. Nautique’s boats have a controller with settings between zero and five that “change the shape of the wakesurf wave” [Doc. 51-18 p. 34]. According to Nau-tique’s owners’ manual, “[t]he higher the number the steeper or more ‘vert’ the wakesurf wave will become,” and the lower the number “the more ‘ramp’ like” and “clean” it will become [Id].- The wave is adjusted “by controlling exactly how much the [WavePlate] is engaged” [Doc. 51-12 p. 2]. And. when the boat’s speed exceeds thirteen miles per hour, the WavePlates automatically retract [Doc. 56 p. 18-19J.
2. Literal Infringement
Now the Court must consider whether .the limitations of Claims 1, 5, 16, 18, 19, and 20 of Malibu’s '897 patent and Claims 20, 22, 27, and 28 of its '873 patent read onto Nautique’s accused product. The following chart indicates which claims implicate which disputed, claim terms.
Claim Term '897 Patent '873 Patent
“Side Strake” All Claims Claim 22
“Substantially Perpendicular” All Claims Claim 22
“Upright” All Claims All Claims
“Surf Wake” Claims 1, 5,19 Claims 20, 22
“Asymmetrical Wake” and “Non-Surf Wake” None Claims 27, 28
The Court will begin by assessing whether Nautique’s products meet the surf wake limitation. Nautique applies the Court’s preliminary construction and makes two arguments: one, that “fact questions abound” and, two, that it is not infringing because its system is simply capable of infringing depending on the end user’s use of the system [Doc. 82 p. 20-21 (citing Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1117—18 (Fed.Cir.2002) (clarifying that infringement is not proven per se by a finding that an accused product is merely capable of infringing), and Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 995 (Fed.Cir.2009), (holding that fact that candle tin “was reasonably capable of being put into the claimed configurar tion” — using top cover as a base — “is insufficient for a finding of infringement”)) ]. In support, Nautique provides test evidence that indicates the deployment of NSS does- not necessarily create a wake that is substantially smoother and with a higher peak than a conventional or non-
enhanced wake. Id. But the case law cited by Nautique is inapplicable here, where the. intended purpose of Nautique’s system is to create a surf wake and Nautique’s noninfringement argument is based on using NSS in an unusual or unintended manner. Cf. Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343-44 (Fed.Cir. 2001) (“[T]ests of an accused device under unusual conditions are not necessarily relevant to an infringement analysis.”); see also High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551, 1556 (Fed.Cir.1995) (finding that an accused device does not infringe if it does not infringe in its normal configuration, even if it may be altered into an infringing configuration under unusual circumstances).
The boat pictured in Nautique’s test evidence is leaning significantly to starboard [See Doc. 82 p. 20]. As Nautique’s expert concedes, to create such results inconsistent with the Court’s preliminary construction, the boat’s starboard ballast tank was full and the port ballast tank was empty [Doc. 82-6 ¶ 5; see also id. ¶ 7 (deploying the starboard side water diverter even though the boat, given its distribution of weight, had been set up for starboard side surfing, which requires deployment of the port side diverter) ]. Such uneven distribution of weight contradicts Nautique’s instruction to distribute weight evenly and, as Nautique acknowledges, “can be detrimental to the wakesurf wave” [Doc. 99-3 p. 6 (“DISTRIBUTE WEIGHT EVENLY, from bow to stern, and also from port to starboard.”); id. at 5 (“NSS is a very, effective tool to adjust the wakesurf wave; however it is not the only option available to you. To further adjust and change the shape of the wave for wakesurfing the boat can be slightly offloaded toward the side of the surfer____Be sure to avoid offloading the side opposite the wakesurfer as this can be detrimental to the wakesurf wave.”); Doc. 51-12 p. 2 (“The NSS is an integrated system that works in conjunction with the WAVEPLATE to allow surfers the ability to create a wave on either side of the boat instantly without the need to offload ballast and people.”); see also '897 patent, col. 4,11. 48-51 (“[T]he present invention allows the enhancement of wake without significant pitching or leaning of the watercraft to one side or the other.”) ].
Having reviewed the’ record, the Court finds no genuine dispute'that Nautique’s products create a “surf waké,” as defined by the Court. As Nautique has made clear, when a WavePlate is deployed,' it diverts water and forms a wake significantly different than the conventional wake otherwise produced by the boat as it moves through water [See Doc. 51-12 p. 2 (“When deployed, the WAVEPLATE extends outward and down from the transom[,] intercepting and redirecting the flow of water to clean up the opposite wake and form a surf wave like no other boat.”); see also Doc. 51-18 p. 34], Nau-tique has held its system out as having the ability to “manipulate the wave form” [Doc.- 51-12 p; 2] and has noted that “[c]us-tomers love the long surf wake the NSS creates,” “love the fact that the NSS provides a perfectly clean surf wave on either side of the boat with the simple push of a button,” and love that “[e]ach person can design the perfect surf wake for them” [Doc. 9-5 p. 61]. Nautique’s photographs and videos make clear that NSS produces wakes with smoother faces and higher peaks than conventional wakes [See Doc. 51-2 Ex. 21-28; Doc. 55-1 p. 35-38].
The Court’s finding is further confirmed by a side-by-side comparison of the wakes generated by Malibu’s and Nautique’s systems [See Doc. 98 p. 30; see also Doc. 55-1 p. 45 (showing that NSS creates a wake with a substantially smoother face and higher peak whether it is set to sett