Citations
- 211 F. Supp. 3d 1158
Full opinion text
DECISION AND ORDER
William C. Griesbach, Chief Judge United States District Court
On August 25, 2014, this court denied the Plaintiffs motion for a preliminary injunction to enjoin the Defendants (“AS-COM”) from selling gantry cranes alleged to infringe on a number of patents owned by the Plaintiff. In so ruling, I found serious questions of validity and found no showing of irreparable harm. Following discovery, the Defendants have filed a motion seeking summary judgment on invalidity and non-infringement. Given the length of the Defendants’ reply brief and the potential that it unfairly prejudiced the Plaintiff by raising new arguments, a sur-reply brief was allowed. The matter is now fully briefed. For the reasons given below, the motion for summary judgment will be granted in part, and denied in part.
I. Background
As described in more detail in this court’s August 25, 2014 ruling, the parties are in the business of building gantry cranes designed for a number of commercial applications, including the lifting and moving of large boats around a shipyard. MTT owns a number of patents disclosing features of gantry crane steering systems that allow a crane to rotate around its own axis, in what the parties refer to as carousel or circle steering. The feature is desirable in that it allows a large and bulky gantry crane to maneuver around a ship yard more easily.
But MTI’s patents do not disclose the concept of carousel steering itself, which had already been present in the prior art. Instead, the patents describe a carousel steering system that allows the wheels to reach their desired position by having two of the wheels rotate counterclockwise and then reversing the drive direction of those wheels. “The steering system is configured to cause the first front wheel and the second rear wheel to rotate counterclockwise to move into position for a selected carousel steering mode, and to cause the second front wheel and the first rear wheel to rotate clockwise to move into position for the carousel steering mode. The system then reverses the drive direction of the second front wheel and the second rear wheel.” (ECF No. 98-1 at 3:3-9.) This feature was intended to address a problem in existing gantry cranes, whereby two of the wheels would need to be rotated 90 degrees or more further than the other wheels. That is, if all the wheels maintained the same forward-drive, then they could not spin in a circle until two of the wheels had traversed about 134 degrees. (Id. at 10:25-60.) By reversing the drive in two wheels, the patented invention allows for a “shortcut” for two of the wheels.
The asserted claims also disclose features involving safety, such as stopping movement of the crane if the wheels are out of position, and monitoring wheel position and other factors through use of a controller. I address these features in more detail below.
II. Analysis
The Defendants argue that most of the asserted claims are anticipated by prior art. “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged.as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed.Cir.1983). “[U]n-less a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.2008).
A. Mi-Jack Prior Art
A centerpiece of the Defendants’ invalidity defense is a crane made by a company called Mi-Jack Products, which was sold to the Huntsville Airport in Alabama in 2002. A few years earlier, airport officials retained the services of Joe Cadile, of Crane Services, Inc., a mechanical and design engineering firm, to assist the airport in designing and acquiring a gantry crane to operate at the airport. With input from airport officials, Cadile drew up specifications to suit their needs, the end result of which was an eight-wheeled gantry crane having the ability to turn in a circle, the so-called “carousel” feature at issue in this case. The winning bid came from Mi-Jack, which ultimately produced a crane it called the 850P model.
According to ASCOM, the Mi-Jack 850P crane meets all the limitations of the claims at issue here. The machine comprises a frame structure with wheels proximate the various sides of the structure; a lifting apparatus; a user interface; and a controller capable of reversing the drive direction and rotating all the wheels either clockwise or counterclockwise. All of these features allowed the 850P to perform the key novelty of the Plaintiffs invention, which is the ability to rotate in a carousel fashion by having two of the wheels reverse direction. In addition, the 850P incorporates hydraulic drive motors on two of the four corners of the machine, and its controller was configured to slow down the machine’s movement before carousel steering mode could be initiated (to prevent damage). These are the central elements of the claims of the ’362 patent, which means (if ASCOM is right) that the 850P anticipated those claims by several years.
1. Expert Testimony
MTI first argues that much of the evidence about the Mi-Jack 850P comes by way of improper expert testimony from Joe Cadile and Jeffrey Tiller, a Mi-Jack subcontractor who programmed the controller of the 850P. Neither witness was disclosed as an expert and neither provided an expert report, as required by Fed. R. Civ. P. 26. MTI argues that much of their testimony is opinion evidence of the sort normally offered by experts, because their opinions involve engineering issues regarding the design of the Mi-Jack crane. For example, Tiller opined in a declaration that controllers of gantry cranes must prevent the operator from driving the crane before the wheels were in the correct position, or else it could cause undue stress on the crane. (ECF No. 154 at ¶ 11.) Tiller, by his own admission, is not a mechanical engineer, and so MTI argues he should not be heard to give opinions about how gantry cranes might be damaged. Cadile, who created the specifications for the 850P on behalf of the Huntsville Airport, opined that “you have got to reverse the drive direction” to make a circle with the crane, and before entering carousel mode you must make sure the drive wheels come to a stop so as to avoid “structurally tearing things up.” (ECF No. 152-6 at 85:7-8 and 67:17-23.) Cadile’s opinions, MTI believes, stray too far into matters that are technical, and thus he should have been disclosed as an expert and a report should have been filed.
The line between expert and lay testimony can be difficult to judge, and in fact many kinds of opinions—for example, the opinion of a treating physician—will exhibit features of both lay and expert evidence. Here, neither witness is offering abstract testimony about scientific or technical matters that they have been retained to study. The testimony they have given is based on their own pre-existing experience designing and working on the very machine that is at issue here. Even if Tiller is not an engineer, he is not forbidden from explaining the reason for a feature of the program that drives the machine. Someone who installed brakes on a car could testify that their purpose was to stop the car and prevent accidents even if the installer was not an expert in physics or mechanical engineering. Moreover, there does not appear to be any reason to dispute the reason the 850P’s controller was programmed the way it was. In an anticipation analysis, it does not much matter why something was the programmed the way it was. The question is simply whether the feature existed and performed the same function.
Similarly, although Cadile’s opinions naturally reflect his experience working on cranes in general, the complained-of statements were really testimony about the 850P crane in particular. When discussing reversing the drive direction, for example, he was not offering some kind of expert testimony about technology he was asked to review for this litigation, but instead was describing how the 850P machine actually was designed, which was a process in which he personally played a role. (ECF No. 152-6 at 84-85.) The 850P, he said, reversed the drive and also required the wheels to come to a stop before going into carousel steering mode. This line of testimony is much more akin to percipient fact witness testimony than it is to expert testimony. Accordingly, I con-elude the testimony is admissible, at least to the extent that it simply recounts their own activities in the design of the 850P, their personal observations of how the 850P operated and performed, and their recollection of when these activities and observations occurred.
2. Expert Testimony and Corroboration of Carousel Steering
Joe Cadile was asked in his deposition, “if you want to turn in a circular manner with this machine , back in June of 2002 ... what, if anything, did you have to do with the drive direction of the wheels?” (ECF No. 152-6 at 84:16-17.) He answered, “Oh, they’re reversed.” (Id. at 84:21.) He explained further:
In the program logic, as you know, is [sic] we flip the circle steer. The program logic in the PLC [programmable logic controller] says, once I’ve made my position, the 12 ½ degrees,' okay, then I am changing the hydraulic flow to the drive motors. Okay. Still the same hydraulic pressure. So on what I call the FI, that’s going to be driving one direction, and the F2 ... in the rear, it will start to drive in the other direction. ... I mean, to make a circle, you have got to reverse the drive direction.
(Id. at 84:23-85:8.)
In other words, according to Cadile, the Mi-Jack crane not only had the carousel steering feature in 2002, it achieved that function by reversing the drive direction of the wheels. In addition, Cadile testified that the machine had to be in “stop position until we achieve circle steer” or else “the angles would be wrong and you’d start structurally tearing things up” due to “overstressing.” (Id. at 85-86.) Mi-Jack engineering vice-president Daniel Zakula also testified to the same effect. When circle steering mode is engaged by the user, “the drive direction on one of the drive wheels has to be reversed so that when the machine does begin to drive, it rotates ... in the correct direction to perform the drive function.” (ECF No. 236-1 at 45:12-19.) This happens automatically: “When he selects the circle mode and presses the actuator button, the wheels will begin to transition from their current mode to the circle mode. And once they get to their circle mode, everything is in the circle mode.” (Id. at 43:8-12.) In short, if credited, this testimony would demonstrate that the Mi-Jack machine possessed certain of the key attributes of the asserted claims of the ‘362 patent.
MTI argues that the testimony is not sufficiently corroborated to justify entry of judgment in ASCOM’s favor. MTI argues that even if the 850P crane currently has the functionality described above, at issue in this case is whether it possessed those features the crane had in 2002, when it was delivered to the Huntsville airport. Specifically, MTI argues that the oral testimony of Cadile and Tiller is not enough to substantiate ASCOM’s allegations that the crane possessed the ability to achieve carousel mode by reversing the drive direction of the wheels when it was first placed in use. Absent any corroboration, their testimony does not suffice, particularly because Cadile is being paid for his testimony and because both witnesses “can be expected to derive a sense of professional or personnel [sic] accomplishment in being the first in the field,” which makes the witnesses biased. Finnigan Corp. v. Int'l Trade Comm’n, 180 F.3d 1354, 1368 (Fed.Cir.1999).
“[C]orroboration is required of any witness whose testimony alone is asserted to invalidate a patent, regardless of his or her level of interest.” Id. at 1369; Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1351 (Fed.Cir.2001) (discussing indicia of reliability for corroboration). The Federal Circuit has looked ■with “disfavor” on attempts to show anticipation with only oral testimony. Juicy Whip v. Orange Bang, 292 F.3d 728, 740 (Fed.Cir.2002).
ASCOM responds that it is not relying solely on oral testimony and cites what it describes as ample written corroboration. For example, there is a great deal of paperwork, including invoices, manuals, specifications, regarding the development and delivery of the crane in 2002. Although MTI does not dispute that the crane was operational in 2002, it disputes the fact that the crane, in 2002, had the feature of carousel steering through reversing the wheel drive—the key teaching of MTI’s patent. Instead, MTI argues that the crane did not have this feature until around the year 2006, when the crane was updated with an expensive GPS-drive system. For support, it notes that preliminary schematics from 2001 do not contain circle steer components, and some of the hydraulic schematics were not approved until 2007.
ASCOM has produced a drawing of the user interface—a “control box” for operating the crane—which shows a steering selector knob with settings for 0 degrees (front-rear drive), 90 degrees (sideways, or transverse drive), and “circle” steering. The drawing is marked “Copyright 2002 Mi-Jack Products, Inc.” (ECF No. 187-3 at 18.) The same rendering shows an indicator light marked “Wheels Ready,” which activates only when the wheels are in the correct position. These features are explained in a contemporaneous Mi-Jack user manual, which explains that the steering mode selector switch “is used to select the desired steering mode. ... ‘CIRCLE’ position is used to allow the machine to rotate about its center.” (Id. at 25.) There are also a number of schematics from 2002 depicting a “hydraulic gantry w/ circle steer.” (Id. at 63.) Finally, Joseph Cadile has submitted punch lists from June 2002 that indicate “circle steer is now functional.” (ECF No. 183-2 at 2.)
That the crane had the circle steering function upon delivery in 2002 (or immediately after) seems beyond question. Cadile, who was intimately involved in the project, testified that it did, and states that he personally witnessed it operating in carousel mode in 2002. (ECF No. 183, ¶3.) Zakula echoed that testimony. The manual, .schematics, control interface, and punch lists all point to the existence of a gantry crane with circular steering function operable in 2002.
MTI’s arguments to the contrary are all based essentially in speculation. As noted earlier, its primary argument is founded on the fact that the crane received a “GPS” upgrade in 2006. MTI notes that the upgrade cost some $200,000, which it views as suspiciously expensive—evidence that the GPS addition was not a minor one but must have included a substantial overhaul of the steering system to include circle steering. MTI’s speculation aside, there is no reason to believe that Mi-Jack added circle steering in 2006. First of all, there is nothing about the addition of a GPS-based feature that would lead one to imagine that such a feature would have anything to do with rotational steering. Global positioning systems by their very nature involve a longitude-latitude framework for establishing the location of something. If a machine is operating in a circular mode (i.e., around its own axis), then its coordinates will stay the same and the machine’s position with respect to longitude and latitude will not change at all. GPS, in short, does not have much to do with circular steering, and so in the abstract one would not expect circle steering to be part of a GPS-related upgrade.
Second, MTI cites no documentary evidence nor any testimony suggesting that circular steering was added to the crane in 2006 rather than 2002. Its argument stands in contrast to the documents cited above, as well as Cadile’s testimony, which indicates that the crane did have such a function in 2002 and that the GPS unit added in 2006 had “nothing whatsoever to do with ‘circle steer,’ ” (ECF No. 183, ¶ 6.) Daniel Zakula echoed that conclusion, explaining that GPS steering is a feature “only for tracking the machine up and down straight lines.” (ECF No. 236-1 at 52:5-6.) Asked point-blank whether the GPS steering system had anything to do with circle steering, he replied, “no.” (Id. at 52:3.) And, as Bruce Farber has explained, the 2006 schematics relating to the GPS feature show no modifications to the steering functions, nor to the hydraulic system, which means “nothing was modified on the 850 P with respect to the steering modes that were originally installed on the machine in 2002.” (ECF No. 188 at ¶ 11.) MTI’s argument is thus contradicted at every step, by testimony of disinterested parties as well as by documentary evidence.
MTI’s fallback argument is that even if the Mi-Jack crane did have circular steering in 2002, that does not mean it was same kind of steering as the patented technology. There are a number of different ways to achieve circular or carousel steering, it notes, and it is just as likely that the Mi-Jack machine used some other method to achieve that mode. But again, this is simply speculation. As described above, Cadile and Zakula testified that carousel mode was achieved by reversing the wheel direction, just as in the asserted claims. This testimony is supported by the 2014 video Cadile filmed, which clearly shows that functionality—each wheel turning only 22 or 23 degrees, rather than turning much more. (ECF No. 152-8.) The mere fact that the crane happened to receive an unrelated upgrade in 2006 is not enough to overcome the testimony and documentary evidence that the crane possessed the relevant features in 2002.
In a related vein, MTI suggests that some of the documents produced by Mi-Jack, such as the user manual dated October 2002, were not related to the 850P crane sold to the Huntsville airport. But again, this is purely speculative. The user manual discussed above, which describes the circle steering mode, is titled “Operator’s Manual ... Travelift Crane 850P,” which is the same model of crane delivered to Huntsville, and is dated contemporaneously with the in-service date of that machine. Mi-Jack engineer Myron Glickman authenticated the document, and indicated that it was the correct manual. (ECF No. 152-4 at 49-50.)
3. Controller
It is clear, then, that the Mi-Jack crane possessed circle steering, including the kind of circle steering taught by the asserted claims, which involves reversing the drive direction of some of the wheels. Even if that is true, MTI argues, ASCOM has not shown that the machine possessed a “controller” configured to reverse drive direction, as taught in several of the claims of the ’362 patent. That is, even if the Mi-Jack crane had the theoretical mechanical ability to carry out carousel steering, AS-COM has not shown that it actually carried out that function through a controller.
MTI’s argument is not convincing. At the outset, I note that MTI’s argument does not suggest any reason why a machine would possess a mechanical ability to function a certain way but lack a means for a user to get it to function that way. In short, why would Mi-Jack have created a crane with circle steering functionality but then not create any way for a user to control the machine to effectuate that function? Of course it is theoretically possible that a machine would have more abilities than are reflected in its control units, but one expects that is the exception rather than the rule. More importantly, there is the testimony of Joseph Cadile, who stated quite clearly that he had witnessed the machine operating in circle steering mode in 2002, and that the function, which is described in the manual and schematics, was part of the crane’s original design. The punch list indicated in June 2002 that “circle steer is now functional.” (ECF No. 183-2 at 2.) It is not simply that the crane had the mechanical or theoretical ability to function in circle steering mode, then—the crane actually did function in that mode when the user selected the right setting on the selector switch, which is one of the “controls” described in the manual. This is shown in the hydraulic schematic dating to 2002, wherein a “circle steer valve solenoid” operates to reverse the wheel drive direction. (ECF No. 187-3 at 41.) Finally, Daniel Zakula testified that the 850P had a programmable logic controller (PLC), which was purchased from a company called Rexroth. The PLC communicates with a steer controller to activate steering valves to drive each wheel to its position. (ECF No. 236-1 at 46-47.) Ultimately, MTI has not suggested any way that a crane with circle steering functionality could function that way without having a “controller,” and the contemporary evidence and corroborated testimony demonstrate that the Mi-Jack crane did possess one.
In a final effort, MTI suggests that even if there was a controller, it did not necessarily perform the function of slowing down and stopping movement before the crane enters carousel mode, a limitation disclosed in several asserted claims apparently designed to prevent damage to the crane. For example, claim 6 of the ’362 patent indicates that the “controller is programmed to slow down movement of the frame structure before effecting the carousel steering mode.” (ECF No. 98-1 at 12:12-14.) The specification explains: “One safety feature is invoked when a new steering mode is selected by the operator. In this instance, the prior mode running at the time of the new selection will not change until the control system determines it is safe to change steering modes. This helps prevent damage to the crane or items attached to or carried by the crane, or an inadvertent change to the steering mode.” (Id. at 9:6-12.) In addition, the specification further explains: “the control system will not allow a change to certain steering modes unless the crane is stopped. Specifically, in the case of changing to the carousel steering mode, the control system will not allow the new steering mode until the crane is stopped.” (Id. at 9:18-23.)
MTI argues that there is no evidence that the controller is programmed to slow down or stop the machine before effectuating carousel steering mode. That is not true. Cadile testified, for example, that the Mi-Jack machine had to be in a stopped position or else “the processor won’t let the crane move.” (ECF No. 162-6 at 67-68.) In other words, it was part of the programmed operation that the crane must be in a stopped position “before effecting the carousel steering mode,” as the asserted claims teach. Similarly, Daniel Zakula testified quite clearly that the controller automatically prevented the user from switching modes while the crane was in motion. “The operator cannot cause the machine to go from one mode to another mode while it is in motion ... Because the control code in the MDC [controller] is designed such that the machine has to be stopped before it will allow the transition.” (ECF No. 236-1 at 63.) Their testimony is corroborated by the video of the Mi-Jack 850P in action. In short, the Mi-Jack crane had, as part of its programmed functionality, a feature requiring that the crane had to be stopped before carousel mode could be activated.
4. Public Use
A person is not entitled to a patent if the invention disclosed therein was in public use in this country more than one year before the application date for the patent. 35 U.S.C. § 102(b). The statutory phrase “public use” does not necessarily mean open and visible in the ordinary sense; it includes any use of the claimed invention by a person other than the inventor who is under no limitation, restriction, or obligation of secrecy to the inventor. New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1297 (Fed.Cir.2002). MTI argues that the Mi-Jack crane was not a “public” use because it was a one-off custom product that operated in non-public areas of an airport.
Public use includes “any use of [the claimed] invention by a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor.” “The public use bar serves the policies of the patent system, for it encourages prompt filing of patent applications after inventions have been completed and publicly used, and sets an outer limit to the term of exclusivity.”
Netscape Commc’ns Corp. v. Konrad, 295 F.3d 1315, 1320 (Fed.Cir.2002) (citations omitted).
“[W]hen an asserted prior use is not that of the applicant, § 102(b) is not a bar when that prior use or knowledge is not available to the public.” Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed.Cir.1998). That is, if a third party uses the invention in a manner that prevents the public from accessing it, the use might not be considered public. In W.L. Gore & Associates, Inc. v. Garlock, Inc., for example, the court found no public use when the claimed invention was used by third parties pursuant to a confidentiality agreement. 721 F.2d 1540, 1550 (Fed.Cir.1983) (“It was error to hold that Budd’s activity with the Cropper machine ... was a ‘public’ use of the processes claimed in the ’566 patent, that activity having been secret, not public.”) And in Baxter Int’l, Inc. v. COBE Labs., Inc., the court did find a public use due largely to the lack of confidentiality surrounding the technology. 88 F.3d 1054, 1059 (Fed.Cir.1996) (“Suaudeau’s lack of effort to maintain the centrifuge as confidential coupled with the free flow into his laboratory of people ... who observed the centrifuge in operation and who were under no duty of confidentiality supports only one conclusion: that the centrifuge was in public use.”) The court went on to find that, “[a]s between a prior inventor who benefits from a process by selling its product but suppresses, conceals, or otherwise keeps the process from the public, and a later inventor who promptly files a patent application from which the public will gain a disclosure of the process, the law favors the latter.” Id.
MTI argues that the use here cannot be a public one because it occurred in restricted areas of an airport, a facility surrounded by fences. But the cases do not make the public/private distinction simply by reference to whether an invention was out in the open. One reason is that some inventions are, by their nature, devices or processes that are out of sight by design. Nanotechnology, for example, could be all but invisible to the public, but that does not mean the entire field of nanotechnology is rendered “non-public” for purposes of patent law. The question of public versus private turns not on the physical characteristics of the use (under ground, hidden inside a computer, etc.) but on whether the use is theoretically available to the public, and that question depends largely on the degree of confidentiality surrounding the use. Dey, L.P. v. Sunovion Pharm., Inc., 715 F.3d 1351, 1355 (Fed.Cir.2013). Accordingly, the mere fact that the alleged public use took place in restricted areas of an airport does not mean the use was non-public.
The question, then, is whether Mi-Jack or the Huntsville Airport took steps to keep the invention confidential, not merely whether the entire crane was kept out of public sight due to the fact that it was used at an airport. Id. (“we have applied section 102(b) to invalidate a patent based on third-party use when the third party ‘made no attempt to maintain confidentiality or to deliberately evade disclosure,’ made no ‘discernible effort to maintain the [invention] as confidential,’ or ‘made no efforts to conceal the device or keep anything about it secret.’ ” (citations omitted)).
To support its public use defense, AS-COM notes that the Port of Huntsville—a public entity—owns the facility where the crane is operated. The crane is operated near a public roadway adjacent to the airport, where passers-by can view the crane. The crane itself is heavily used by numerous employees, none of whom are under any obligation of confidentiality. In fact, the airport’s gantry cranes were the subject of a 2004 story in the Huntsville Times, which included an interview with one of the crane’s operators. (Huntsville Times, “Equipment Operator Enjoys Being Outdoors,” Feb. 8, 2004. (ECF No. 189-2.))
It is true, as MTI argues, that a member of the public could not simply “walk up and inspect the crane” or view the crane from the adjacent road and discern what kind of drive features the crane possessed. (ECF No. 176-1 at 28.) But once again, such could be said of countless uses of inventions that nevertheless count as “public” use. Many, or most, inventions are commercialized in private companies, or on private property, and most companies do not allow members of the public to roam around their businesses “inspecting” equipment. New Railhead, 298 F.3d at 1299 (“[W]hether the use of an invention is public or private does not necessarily depend upon the number of persons to whom its use is known.” (quoting Egbert v. Lippmann, 104 U.S. 333, 336, 26 L.Ed. 755 (1881)). The point is not whether random members of the public can view an invention, it is whether the invention is generally out in open, or whether the owner made deliberate efforts to maintain its secrecy— some effort that would make the invention’s existence more confidential than any other of the countless technologies and products used in the normal course of business. Here, the crane was used by employees, who even discussed it in the newspaper, and there is no evidence that the airport made any effort to keep the crane or its features a secret.
Importantly, MTI does not explain why one would expect secrecy in such a situation. The airport authority did not invent the technology, and it had no natural reason to keep it confidential. And recall that the crane is at an airport, a quasi-public entity with something of a monopoly on airport services in its area. Unlike most businesses, it presumably has less of a need for confidentiality because it is not the kind of entity that is in stiff competition with competitors. In sum, without any evidence of efforts to keep the crane confidential, and without any plausible reason for confidentiality, I am satisfied that AS-COM has shown that neither Mi-Jack nor the third-party user made any effort to conceal the device, and so it qualifies as a public use. Dey, 715 F.3d at 1355.
In sum, MTI’s challenges to ASCOM’s contention that the Mi-Jack 850P constitutes prior art rest more on speculation than evidence. MTI argues that a machine that clearly possessed a certain functionality in 2014 did not have that function in 2002, when it was placed into service. It argues that even if the machine had a theoretical mechanical ability to function a certain way, it did not have a controller allowing it to do so. It argues that manuals and schematics describing a gantry crane called an 850P and dated 2002 are not the right documents, despite the fact that the crane at issue is an 850P and was built and delivered in 2002. Finally, it argues that an upgrade adding a GPS-steering feature must have been the means that the crane acquired the functionality it now clearly possesses, despite no relationship between that feature and carousel steering. None of these arguments are founded in fact, and none are sufficient to overcome the evidence ASCOM has presented to establish that the Mi-Jack 850P operates today in essentially the same way it operated when delivered to the Huntsville Airport in 2002. I therefore conclude that the Defendants are entitled to summary judgment that the Mi-Jack 850P anticipates the relevant asserted claims. Unfortunately, the Defendants’ submissions lack the clarity needed to say precisely which claims those might be and so no greater specificity is possible at this time.
5. Obviousness: Hydraulic Motors at Each Corner
Above I have concluded that AS-COM has established, by clear and convincing evidence, that the Mi-Jack 850P gantry crane is prior art disclosing and anticipating carousel steering achieved (through a controller) by reversing the drive direction of the wheels and meeting other limitations of the asserted claims. ASCOM recognizes, however, that the Mi-Jack crane includes drive motors at only two of the crane’s four corners, whereas some of the asserted claims (8, 13, 15 and 16) describe a motor connected to all four wheels. It asserts, however, that including motors at all four corners of the crane would have been obvious to one skilled in the art. Thus, it argues that such a minor distinction between some of the claims of the ’362 patent and the Mi-Jack machine is not enough to render those claims novel or non-obvious.
MTI disputes this, but the bulk of its argument rests on its attempt to reject the Mi-Jack crane as prior art, as discussed above. For example, it argues that because the Mi-Jack machine did not incorporate the carousel steering features until the 2006 GPS steering upgrade, it cannot be the basis for any of the Defendants’ obviousness arguments. Since I have rejected that and other arguments that the 850P is not applicable prior art, these arguments fall away. The remainder of MTI’s argument on this point is quite limited. Specifically, it argues that Mi-Jack has not identified any other cranes it produced using four-wheel hydraulic drive and notes that Zakula testified that there was no reason to use four-wheel drive.
These limited objections do not overcome the powerful and common-sense argument that using four, instead of two, motors would have been an obvious option to anyone skilled in the art. First, it is notable that nothing in the asserted patent itself even suggests that the use of four motors was somehow novel or useful. The ’362 patent addresses a number of pre-existing problems in prior art steering systems, but four-wheel drive is not one of them. In fact, four-wheel drive had been shown in the Skaalen patent from 1986, which indicates that “each of the wheel assemblies [i.e., all four] is provided with independent hydrostatic drive motors.” (EOF No. 152-3 at 4:18-19.) Finally, Zaku-la’s testimony that four wheel drive was “not necessary” is simply a reflection of the market demand. He stated, for example, that his company’s cranes usually only “needed” two drive motors, but that if there were an application requiring more traction then four wheel drive could be desirable, and easily achievable. (ECF No 236-1 at 53-54.) Mi-Jack itself had used four-wheel drive in an application using steel wheels, which tended to slip more than wheels with rubber tires. (Id. at 54:10-14.) Ultimately, MTI’s argument that using four motors was somehow a novel idea is wholly unconvincing.
In sum, I agree with the Defendants that any reasonable jury would find, by clear and convincing evidence, that the Mi-Jack crane anticipates (or renders obvious) the asserted claims 1-3, 6-8, 11-17, and 20 of the ’362 patent. Those claims are therefore invalid.
B. Skaalen Patent
The Defendants also argue that the Skaalen patent, No. 4,599,030, anticipates the asserted claims of the ’362 and ’274 patents. The Skaalen patent describes a “marginal terrain container handler,” essentially a rugged vehicle designed to move shipping containers on rugged terrain, e.g., beaches and distressed soil, in extreme environments such as those encountered during amphibious military landings. In this court’s decision denying MTI’s motion for a preliminary injunction, I noted that Skaalen “discloses carousel steering, and it at least suggests the possibility of achieving carousel position essentially through the means described in the ’362 patent,” namely, by reversing the drive direction of the wheels.
The Skaalen reference was among those considered by the patent examiner. Accordingly, although the clear-and-con-vineing burden remains the same, a court must acknowledge that a “ ‘presumption of validity under 35 U.S.C. § 282 carries with it a presumption that the Examiner did his duty and knew what claims he was allowing.’ Therefore, the challenger’s ‘burden is especially difficult when the prior art was before the PTO examiner during prosecution of the application.’ ” Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1323 (Fed.Cir.1999) (citations omitted).
Clearly Skaalen discloses a kind of carousel steering, which the patent describes as “tight radius turning within vehicle length.” However, MTI argues that the Skaalen patent does not disclose several of the features described in the asserted claims. I address these arguments below.
1. Controller Configured to Control Wheel Movement
First, MTI argues that Skaalen does not anticipate a controller configured to control movement of the wheels in response to the selection of any given steering mode. Skaalen has a controller, but MTI argues the controller is merely directed toward integrating individual steering motor functions to produce Ackermann steering for that steering mode function. (ECF No. 152-3 at 4:60-68.) Ackermann steering, which dates to the days of horse-drawn carriages, is a solution to the problem posed by the geometrical fact that when a four-wheeled vehicle turns, the radii of the turning wheels are different— that is, the wheels on the outside of the vehicle have a larger arc to negotiate than the wheels on the inside of the circle. Thus, MTI explains, a processor directed to control “Ackermann steering” is only relevant to controlling the movement of the two steerable wheels; it is not a concept or feature that would be relevant to carousel steering, wherein all four wheels are turned to angles to produce a circular motion.
ASCOM responds that Skaalen clearly teaches “360 degree steering of wheel assembly 16,17,18 and 19” which “offers wheel positioning alternatives and steering options which greatly facilitate container handling.” (ECF No. 152-3, 15:21-24.) It also notes that Skaalen explains that “the microprocessor functions as the steering mode selector in that various steering functions displayed at the operator’s consol can be electrically selected. ... Various modes of operation of the 360 degree full traverse / hydraulic drive system is illustrated in FIG. 8.” (Id. at 5:12-20.) Contrary to MTI’s argument, the mere fact that Skaalen refers to “ackerman steering” [sic] does not mean its controller is limited to that sole application. Instead, Skaalen explains:
Each of the four ... motors can be controlled independently, individually, or hydraulically integrated to produce typical ackerman steering as required for all modes of steering including conventional front wheel steer, rear wheel steer, oblique steering, crab steering, or circular pivot steering wherein wheels on diagonals are hydraulically integrated and rotated to produce circle steering.”
(ECF No. 152-3 at 4:60-69.)
The patent further explains that the motors are “integrated through an electrical feedback steering shaft position sensing circuit which feeds steering shaft positioning information ... to a micro processor.” (Id. at 5:1-5.) “The micro processor functions as the steering mode selector in that various steering functions displayed at the operator’s console can be electrically selected.” (Id. at 5:12-14.) Thus, it is clear that the machine disclosed in Skaalen has a controller configured to control the movement of the wheels.
2. Four Wheel Coordinated Steering Mode
Second, MTI argues that Skaalen does not teach a four-wheel coordinated steering mode, as taught by claims 9-10 and 17-18 of the ’299 patent. ASCOM concedes that coordinated steering is not explicitly described in the patent, but argues that Figures 8(g) and (h) show how the wheels could be coordinated to be turned with all four wheels. ASCOM also argues that four-wheel coordinated turning would be obvious to one skilled in the art.
I cannot conclude from ASCOM’s brief argument that coordinated steering is either anticipated by Skaalen or obvious. It is true that the depictions shown in Figure 8 are not intended to be an exhaustive depiction of every kind of steering that the disclosed crane might possess, but the mere fact that a feature such as four-wheel coordinated steering is not excluded by a patent does not mean that feature is anticipated or obvious. Similarly, the fact that two figures shown in Skaalen could be combined in a way suggestive of four-wheel coordinated steering is not enough, at the summary judgment stage, to surmount the high hurdle ASCOM faces in showing invalidity—particularly when Skaalen was before the examiner.
3. Minimize Wheel Turning
MTI also argues that Skaalen does not disclose a controller configured to minimize the turning of each wheel, one of the key teachings of the asserted claims. As noted earlier, at the preliminary injunction stage I concluded that the Skaalen patent appears to disclose the possibility of minimized wheel turn, i.e., the concept that two of the wheels turn only part of the way around and then reverse drive direction to achieve carousel steering. However, it is impossible at the summary judgment stage to conclude that the patent demonstrates this feature by clear and convincing evidence, especially when the patent examiner was aware of Skaalen. What the patent shows is carousel steering, but the only suggestion that the wheels minimize their turn in the way taught by the asserted claims is found in the diagram of Figure 8(J), showing “tight radius turning within vehicle length.” (ECF No. 142-3 at 5.) It is possible to read the figure as suggesting that some of the wheels, shown in carousel mode, have traveled to their turned position by taking the “shortcut” suggested in the asserted claims. But such a reading is based solely on an interpretation of which way the wheels are facing (front or rear) after being turned, and the figure is not completely clear on that point. For example, if the wheels truly turned only the minimum required, then one would expect them to be drawn with positions similar to Figure 8(A) (showing “normal operation”), except that the wheels would have turned 45 degrees or less. Instead, Figure 8(J) appears to show that the wheels could have turned much more than that. For example, as compared to the “normal operation” wheel shown in 8(A), the lower wheels in 8(J) appear no longer to be facing the same direction but instead are turned backwards, as though they did not turn a mere 45 degrees but instead traversed a much longer journey. (ECF No. 142-3 at 5.) In a footnote to this court’s decision denying a preliminary injunction, I noted this fact but found that the wheels could be “amenable to turning in the exact fashion disclosed in the ’362 patent.” (ECF No. 88 at 8 n.2.) Although they could indeed be amenable to such a function, it is less than clear that the Skaalen patent actually anticipates or teaches that function. After all, Skaalen is silent on the degree of wheel turn and does not disclose that as a feature, much less a novel and useful one. Therefore, at the summary judgment stage it would be impossible to conclude, by clear and convincing evidence, that.Skaalen anticipates that feature of the asserted claims.
4. Controller Programmed to Stop/Slow Down Movement and/or Disable Engine Drive Prior to Carousel Mode
Certain claims of the ’362 patent teach a controller programmed to “slow down movement of the frame structure before effecting the carousel steering mode.” Other claims in the ’299 patent teach a controller that disables the engine drive upon selection of carousel mode. Skaalen does not explicitly disclose these features. ASCOM argues that even if that is true, slowing down or stopping movement prior to entering carousel mode would have been obyious. It cites the testimony of the Plaintiffs co-inventor, Jerry Wierzba, who testified that he knew, by virtue of being a developer of gantry cranes, that “if you try to drive a machine that has wheel[s] that are misaligned, it causes inputs into the structure that you don’t necessarily want because it affects the machine.” (ECF No. 152-2 at 11-14.) In addition, Wierzba testified that the rest of the engineering staff also understood that driving the machine before the wheels were in their proper position would cause damage.
Although Wierzba and his staff may have understood that the machine must be stopped before carousel mode was effectuated, that does not, in and of itself, render the disclosure obvious. The standard is what a reasonable individual skilled in the art would have known, not what the actual inventor himself knew—after all, he was the inventor, and so naturally he would have understood the attraction of the very component that he invented. Given that Skaalen was before the patent examiner, and given that obviousness is generally a fact question, I cannot conclude that having a controller programmed to slow down movement or stop engine drive is disclosed or obvious in light of Skaalen or other patents.
5. Controller Configured to Reverse Drive Direction
MTI also argues that claims of both the ’362 and ’299 patent require that, when carousel steering mode is selected, the motor for one front wheel and one rear wheel reverse drive direction. Reversing drive direction of two wheels is necessary because otherwise the wheels, having turned in the “shortcut” path, would otherwise be heading in the wrong direction, not allowing the crane to rotate in a circle.
ASCOM believes that Skaalen anticipates reverse drive direction because each wheel assembly has an independent hydrostatic drive motor that allows the wheel to be rotated by 360 degrees. But, as with the minimizing of wheel turning discussed above, the fact that the crane disclosed in Skaalen might go into reverse drive (and minimize wheel turn) does not mean that feature is necessarily anticipated. As with minimized wheel turn, nowhere does Skaalen mention this feature. Minimized-turn carousel steering requires both the minimized turn as well as reverse drive in two wheels. The fact that the patent discusses neither of these features makes it impossible to find, on summary judgment, that the features are anticipated.
6. Controller Configured to Monitor an Operating Parameter
ASCOM also argues that Skaalen anticipates asserted claims of the ’299 patent. That patent discloses only a few limitations in addition to those found in the ’362 teachings, including a controller configured to monitor an operating parameter of a crane and the crane’s wheel position. Another teaching of the ’299 patent is that the controller disables the engine drive before a steering mode is selected. (ECF No. 98-2 at claims 8, 9, 23, 24.) ASCOM argues that Skaalen clearly discloses these features. As addressed above, Skaalen teaches a microprocessor that controls the various modes of steering, which means the controller and electrical feedback system necessarily control wheel movement.
MTI responds that ASCOM is conflating the concept of monitoring wheel position with monitoring an operating parameter. Claims 9-10, 17-18 of the ’299 patent require this feature, and the Skaalen patent is silent about it. The ’299 patent’s claim that the device monitors a “parameter” is quite vague. The specification explains that the controller can monitor a parameter of the crane “such as engine RPMs” (ECF No. 24-9 at 2:47), or speed, oil pressure, coolant temperature, wheel position, etc. (Id. at 10:7-10.) ASCOM says that Skaalen teaches a microprocessor that monitors both the wheel position (one parameter) as well as wheel rotation (a second parameter). That is, wheel rotation on an angle— for example, for carousel steering—is one parameter clearly disclosed. In addition, Skaalen discloses other wheel positions where the wheels extend outward or retract inward—i.e., the wheels themselves move outward or inward, not just forward, backward, circular, etc. These positions are parameters that the machine shown in Skaalen monitors in addition to the wheel angles required for various steering modes. Thus, ASCOM concludes that Skaalen monitors a parameter.
Given how broad the concept of monitoring “a parameter” is, I conclude Skaalen’s teachings suffice to demonstrate that the Skaalen device monitors an operating parameter of a crane. It monitors wheel angle as well as wheel position, and the ’299 patent itself describes “wheel position” as one of the “parameters” at issue. (Id. at 10:7-10.)
7. Gear Drive Mechanisms
Finally, claims in both the ’362 and ’274 patent teach a gear drive mechanism for turning the wheels. Skaalen, by contrast, teaches a chain and sprocket rotary drive system. ASCOM argues that, even so, the use of a gear drive mechanism would have been obvious to one of ordinary skill in the art in light of the Zakula patent. Zakula, issued in' 2001, describes a steering mechanism for a gantry crane and indicates that the steering may be of any number of types, including gear drive or chain/sprocket drives. (ECF No. 152-5 at 3:41.) Zakula, however, was also before the patent examiner and, as MTI notes, the Mi-Jack company owned the Zakula patent but did not use gear drive mechanisms. Although it is certainly conceivable that the use of gear drives would have been obvious to one skilled in the art, ASCOM cannot meet its burden at the summary judgment stage merely by citing another patent and stating it would have been obvious to combine its teachings with Skaalen.
C. Minty Patent
The Minty patent, issued in 1963, describes a “steerable gantry crane” designed for maneuverability and the ability to lift very heavy loads. (ECF No. 152-13.) The crane has “separate motors driving the inner and outer wheels of each truck, which motors may be operated in opposite directions.” (Id. at 2:5-8.) The Defendants argue that Minty, issued more than 50 years ago, anticipates almost all of the claims of the ’362 patent and all claims of the ’274 patent. In contrast to their anticipation argument based on the Mi-Jack crane, however, the Defendants’ argument that Minty anticipates all asserted claims is somewhat brief.
1. Controller
The main problem MTI identifies is that Minty does not seem to teach the use of a controller. Of course, being a complex gantry crane, parts of the crane are necessarily “controlled” by systems, motors, and the like. But nowhere, MTI argues, does the patent describe a controller in the sense of a device or piece of equipment that operates the steering system. ASCOM argues, however, that the controller on Minty is the “control board” and “panel board” described in the patent. As the specification discloses, “the operation of the instant invention is extremely simple and can be accomplished with only one operator upon the crane. ... [who] need only move designated switches or push buttons to effect the various controls desired. By proper operation of the eight truck motors, the gantry crane may be cause[d] to travel and be steered in the proper and desired direction, even to almost a precise degree.” (ECF No. 152-13 at 13:16-28.)
There is no doubt that Minty shows a control system whereby the user drives and steers the gantry crane. But presumably every gantry crane ever invented has some kind of user interface by which the user “controls” the machine. As MTI argues, however, that generic sense of “control” does not seem to reflect the kind of “controller” disclosed in the ’372 patent. There is nothing in the Minty disclosures, for example, whereby the user could simply press a button marked “carousel steering” (for example) and the crane’s controls would automatically turn the wheels and motors to the proper direction to effectuate that function. As MTI’s expert notes, it is really the user-operator of the Minty crane that places the crane in various steering modes, not a controller. (ECF No. 167-1 at ¶ 47.) To be sure, the user operates the crane with controls, but that appears to carry a different meaning than the term “controller” as it is used in the asserted claims. From this it also follows that there is no controller that is programmed to minimize the turning of the wheels, a point about which Minty is silent. Accordingly, I conclude that ASCOM has not shown by clear and convincing evidence that Minty anticipates the kind of controller taught by the asserted claims, especially a controller that minimizes wheel turn, which is one of the salient teachings of those claims.
2. Controller Configured to Reverse a Drive Direction
The asserted claims describe a controller configured to reverse a drive direction of one front wheel and a rear wheel in response to the selection of carousel steering mode. As noted above, reversing the drive direction on two wheels is a necessary element of achieving carousel steering by minimizing wheel turn. AS-COM argues that Minty teaches “a reversible drive motor on each truck connected to actuate the outer wheel of the truck, and a reversible drive motor on each truck connected to actuate the inner wheel of the truck.” (ECF No. 152-13 at 14:9-10.) Moreover, the patent describes trucks that may be aligned at various angles, which would allow for carousel steering.
I agree with MTI, however, that the mere fact that an invention has a reversible drive motor does not mean that it teaches that reversing the drive on two wheels is a means of obtaining carousel steering and minimizing wheel turn. After all, the novelty isn’t in the technology of a reversible drive motor itself, it is in the application of that technology whereby two of the wheels on the crane are placed into reverse so as to allow for minimized wheel turn. The asserted claims teach that the invention reverses “a drive direction of the second front wheel and the second rear wheel in response to the selection of carousel steering mode,” and that is a very specific application of reverse drive. The presence of reversible drive motors in Minty is not enough, on its own, to anticipate that very particular function.
3. Pinion Drive Gear
Finally, MTI argues that Minty does not anticipate the asserted claims that require a “pinion drive gear” for turning at least one wheel to steer the crane. (ECF No. 98-1 at claims 24, 28, 32 and 35.) ASCOM argues, very briefly, that Minty explains that “there are a number of ways and means for locking each truck in position of angular adjustment with the utilization of reversible worm or spur gear assemblies equipped with magnetic brakes.” (ECF No. 152-13 at 9:63-67.) As AS-COM’s expert explains, a spur gear may be a pinion gear. (ECF No. 155 at 12.6.) But a spur gear may also not be a pinion gear, and so the mere fact that Minty (implicitly) accounts for the possibility of pinion gears is not enough to say that it anticipates them. Otherwise, any feature may be “anticipated” simply because a patent did not explicitly exclude it, and that is not what the law of anticipation provides. “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed.Cir.2008).
D. Obviousness of the ’441 Patent
The Defendants also argue that the alleged invention of the ’441 patent is obvious in light of Skaalen and/or Minty and/or other prior art. Under 35 U.S.C. § 103(a), a patent is invalid “if the differences between the [claimed] subject matter ... and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” A party seeking to invalidate a patent on obviousness grounds must demonstrate “by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed.Cir.2007). On summary judgment, the evi dence must be viewed favorably to the nonmovant, with doubts resolved and reasonable inferences drawn in the nonmov-ant’s favor. Rockwell Int’l Corp. v. United States, 147 F.3d 1358, 1366 (Fed.Cir.1998).
1. Obviousness Arguments
The focus of ASCOM’s argument is that controlling proper wheel alignment was well-known in the art at the time of the invention disclosed in the ’441 patent. That patent describes a controller configured to control wheel position and “stop movement of the remaining wheels” when it senses a wheel is out of alignment by a certain number of degrees. (ECF No. 98-4 at 13: 8-16.) ASCOM argues that it was obvious, based on basic design requirements inherent in a four-wheel steering crane, that the. wheels must be stopped if a wheel was out of alignment.
Many of ASCOM’s arguments on obviousness are conclusory. It does, however, cite a patent to Voelz, which discloses a steering control system that prevents the wheels from turning “unless the wheels are in predetermined orientation” and “maintain[s] proper alignment of the wheels in all angular positions.” (ECF No. 152-15 at 50-55.) Voelz, ASCOM states, discloses a system for monitoring wheel position based on photocells, which prevents wheel turn when any of the wheels are out of position. Because Voelz was issued in 1981, the disclosed safety features of the ’441 patent would have been obvious to someone two decades later.
But the claim cited by ASCOM appears to relate to the crane’s transition between two-wheel and four-wheel steering operations, and not to the invention of a system for monitoring wheel position and then stopping movement if out of alignment. The specification does not highlight the invention disclosed in the ’441 patent or anything similar, and neither does it describe a problem in the prior art that Voelz solves with such a feature. Accordingly, it is impossible to draw the conclusion from Voelz’ claim 6, on which the Defendants rely, that one of ordinary skill in the art would necessarily find the ’441 patent’s disclosure of a wheel monitoring system obvious.
The same holds true with respect to ASCOM’s other obviousness arguments. It is likely true that one skilled in the art would have understood that stopping the machine when the wheels were out of alignment would, in general, be a useful and possibly predictable feature of a gantry crane. But it does not necessarily follow from that general principle that it would have been obvious to include the specific features described in the ’441 patent, which describes (for example) a controller configured such that when at least one wheel has a sensed position a predetermined distance from a programmed position, the controller stops movement of the remaining wheels. (ECF No. 98-4 at 13: 8-16.) There could be other ways of stopping the wheels that do not employ the specific means disclosed in the asserted claim. Accordingly, at this stage I cannot conclude that the Defendants’ evidence meets the clear and convincing standard to show that the ’441 patent’s disclosure of that particular means of managing the misalignment of the crane’s wheels was obvious.
2. Objective Factors
ASCOM also argues that MTI has not produced any meaningful evidence of the secondary factors that may be suggestive of non-obviousness. These factors include the failure of others to make the patented invention; long-felt but unsolved needs fulfilled by the patented invention; commercial success of the patented invention; an