United States District Court, D. Maryland
MEMORANDUM AND ORDER RE: SUMMARY JUDGMENT
J. Garbis United States District Judge
Court has before it Voortman USA Corp.'s Motion for
Summary Judgment that the Asserted Claims of U.S. Patent No.
7, 974, 719 are not Infringed and/or Invalid [ECF No. 80],
Plaintiff's Motion for [partial] Summary Judgment [ECF
No. 85], and the materials submitted relating thereto. The
Court has held a hearing and has had the benefit of the
arguments of counsel.
Corporation ("Ficep") and Voortman USA Corp.
("Voortman") are competitors that design, develop,
and manufacture machines and systems for the steel
construction and forging industries.
owns, by assignment, United States Patent No. 7, 974,
("the '719 Patent"), entitled "Method and
an apparatus for automatic manufacture of an object with
multiple intersecting components." The claimed invention
"relates to systems and methods for automatic
manufacture of an object based on automatic transmission of a
three-dimensional rendering of the object, such as a
rendering from a CAD to an assembly line for
manufacture." '719 Patent, col. 1:9-13.
case, Ficep sues Voortman for indirect infringement of the
'719 Patent based on direct infringement by its
customers. Complaint, ECF No. 1. Voortman counterclaims for a
declaratory judgment of noninfringement and invalidity.
Answer, ECF No. 19.
• Voortman seeks summary judgment based on no direct or
induced infringement and invalidity under 35 U.S.C.
§§ 102, 103 (anticipation, obviousness).
• Ficep seeks partial summary judgment establishing
direct infringement by Voortman's customers and denying
Voortman's invalidity claims.
SUMMARY JUDGMENT STANDARD
patent case, as in any other form of civil litigation, a
motion for summary judgment shall be granted if the pleadings
and supporting documents "show 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); Desper Prods., Inc. v. QSound Labs, Inc., 157
F.3d 1325, 1332 (Fed. Cir. 1998) .
well-established principles pertinent to summary judgment
motions can be distilled to a simple statement: The Court may
look at the evidence presented in regard to a motion for
summary judgment through the non-movant's rose-colored
glasses, but must view it realistically. After so doing, the
essential question is whether a reasonable fact finder could
return a verdict for the non-movant or whether the movant
would, at trial, be entitled to judgment as a matter of law.
See, e.g., Celotex Corp. v. Catrett, 477
U.S. 317, 322-323 (1986); Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986). Thus, in order to defeat
a motion for summary judgment, "the party opposing the
motion must present evidence of specific facts from
which the finder of fact could reasonably find for him or
her." Mackey v. Shalala, 43 F.Supp.2d 559, 564
(D. Md. 1999) (emphasis added).
evaluating a motion for summary judgment, the Court must bear
in mind that the "[s]ummary judgment procedure is
properly regarded not as a disfavored procedural shortcut,
but rather as an integral part of the Federal Rules as a
whole, which are designed 'to secure the just, speedy and
inexpensive determination of every action.'"
Celotex, 477 U.S. at 327 (quoting Rule 1 of the
Federal Rules of Civil Procedure).
motions for summary judgment Mo not automatically empower the
court to dispense with the determination whether questions of
material fact exist.'" Equal Rights Center v.
Archstone Smith Trust, 603 F.Supp.2d 814, 820 (D. Md.
2009) (quoting Lac Courte Oreilles Band of Lake Superior
Chippewa Indians v. Voigt, 700 F.2d 341, 349 (7th Cir.
1983)). Rather, the court must examine each party's
motion separately and determine whether summary judgment is
appropriate as to each under the Rule 56 standard.
Desmond v. PNGI Charles Town Gaming, L.L.C., 630
F.3d 351, 354 (4th Cir. 2011); Mingus Constructors, Inc.
v. United States, 812 F.2d 1387, 1391 (Fed. Cir. 1987).
The court may grant summary judgment in favor of one party,
deny both motions, or grant in part and deny in part each of
the parties' motions. See Rossignol v. Voorhaar,
316 F.3d 516, 523 (4th Cir. 2003).
parties have extensively (if not excessively) briefed the
instant motions. In view of the filings and the multiple
cross-references, the Court stated, at the commencement of
the motion hearing, that the briefing had been read for
background but that the parties' contentions had to be
stated at the hearing.
Naturally, I have read through the materials that you have
produced, and I will certainly in the course of the
proceeding have various questions to ask of you.
I want it to be clear nobody is going to be inhibited from
saying everything you want to say here, but I want you to
understand that I'm going to be looking at the record of
this proceeding as stating what your arguments are.
And I'm not going to go, after this hearing, go back
rooting through the briefs to find what it is you're
contending. I think you have to say what you're
contending here so it's as clear as possible.
So don't omit anything that you want to have considered
as being your contention.
Tr. at 2-3.
invention at issue is a process to enable a user to start
with a design model of an object in electronic format and
manufacture the object without the possibility of human error
in the process. In essence, a human being can utilize
Computer Assisted Design ("CAD") software to create
a design model of an object. Thereafter, the design proceeds
through manufacturing automatically. It can be succinctly
stated that the data has gone from the design model to the
manufacturing machine "untouched by human hands."
'719 Patent discloses a preferred embodiment and flow
chart to practice the invention:
the process can be described in terms of 6 steps:
1. Creating a design model. An individual uses CAD
software,  to
create, in electronic format, a three-dimensional design
model of a multi-component object.
2. Receipt by Controller. The electronic
fileconstituting the design model is
to a device capable of processing a design model, referred to
as a programmable logic controller ("PLC").
3. Storing the Design Model. The design model is
stored in a database.
4. Extracting Dimensions and Parameters. A logic
system within the PLC extracts the component dimensions from
the design model and identifies and extracts intersection and
5. Transmitting Dimensions and Parameters. The
dimensions and the intersection and manufacturing parameters
are transmitted to one or more manufacturing machines.
6. Manufacturing. The components are manufactured
based on the transmitted dimensions and parameters.
Judge initially presiding over this case, Judge Quarles,
construed 19 claim terms in a Memorandum Opinion [ECF No. 70]
at 17-19. See Appendix A.
parties have demonstrated by their briefing and oral argument
on the instant motions that there is an actual dispute
requiring a construction of the term "programmable logic
controller" and a modification of the construction of
the parties raise an actual dispute regarding the proper
scope of [the asserted] claims, the court, not the jury, must
resolve that dispute." 02 Micro Int'l v. Beyond
Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir.
2008)(finding error in the district court's failure to
resolve "a fundamental dispute regarding the scope of a
claim term"); see also Teva Pharms. USA, Inc. v.
Sandoz, Inc., 135 S.Ct. 831, 835 (2015).
Programmable Logic Controller
Quarles was not asked to, and did not, construe the term
"programmable logic controller" ("PLC"),
considering that the term was to be given its plain and
now apparent that the parties dispute the "plain and
ordinary meaning" of the term. Hence, the Court finds it
necessary to construe the term.
'791 Patent specification states:
The programmable logic controller  is implemented in order
to control and monitor the manufacture of an object. Any
device capable of processing a design model as described
herein may be considered as a programmable logic controller.
In various embodiments, one or more logic devices or
processors may be used.
'719 Patent, col. 5:32-37.
states that it provides customers two VACAM software
programs, VACAM Office software and VACAM Machine software.
Tr. 84. VACAM Machine software "has a component that is
a programmable logic controller. It can control these
machines that Voortman sells." Id.
"It's the only VACAM application that can actually
convert these signals into the other signals that tells the
machine how to manufacture." Id. "The two
programs are on different components, different computers,
and they do different things." Id.
position is, succinctly, that the programmable logic
controller can be spread among more than one device.
[T]he programmable logic controller can be one or more
processors. So you can have one processor here and a
different processor there; and if they're together doing
it, that's one or more processors that are the
programmable logic controller.
does not contend, as Voortman asserts, that "for
purposes of claim interpretation, a programmable logic
controller doesn't need to control." Tr. 95.
position is logical and consistent with the specification
statement that "[i]n various embodiments, one or more
logic devices or processors may be used." '719
Patent, col. 5:32-37. Ficep acknowledges that the
programmable logic controller must control and must perform
all the other claimed functions. However, the programmable
logic controller need not be on one single device.
"[Y]ou can have a computer at the machine. You can have
a computer at the office. You can have a computer at two or
three machines. One or more devices can constitute the
programmable logic controller." Tr. 134.
Court construes the term "programmable logic
controller" to refer to:
A device that may comprise one or more logic devices or
processors and is capable of processing a design model to
control and monitor the manufacture of an object.
'719 Patent states that a "design model"
includes design specifications related to the object to be
manufactured. '719 Patent, col. 1:1-25.
claim construction process, Voortman stated that the claim
term "design model of an object" should be
construed as "an electronic file"
containing all data needed to allow assembly of an object.
Voortman Opening Brief [ECF No. 33] at 29. Ficep stated that
"[t]here is no disagreement that the claimed Mesign
model' involves one or more electronic files to
be employed with a computer." Ficep Opening Brief [ECF
No. 34] at 13 (emphasis added). Neither party addressed the
issue in its responsive brief.
Quarles construed the term "design model of an
object" as "the design model of an object in the
form of an electronic file." Judge Quarles did not
discuss his use of the words "an electronic file"
and did not address the party's present dispute regarding
the content of the design model.
does not now deny that, in terms of the number of files, the
"design model" should be construed as Ficep
contends. As stated by Voortman regarding the design model
claim construction issue:
It's not the number of files that matters; it's
what's in the files that matter.
regard to content, Voortman presents an issue best understood
and considered in the context of infringement. That is,
whether, when Voortman's customers extract and use the
specifications of a single component from a design model of a
multi-component object, they infringe. In other words, the design
model of a multi-component object to be manufactured (e.g., a
coffee mug) includes specifications of each separate
component (the cylinder and the handle). That design model is
not processed to result in a manufactured ultimate product
(the coffee mug). Rather, the Voortman customer extracts from
the design model the specifications for a single component
(the cylinder) that includes what is necessary for the
connection of the other component (the handle).
Court does not find that the term, "design model"
should be limited to an electronic file or files including
the specifications of a single component of a multi-component
contends that during the prosecution of the '719 Patent,
there was a disclaimer of an intention to include within the
term "design model" a design model of an object
having multiple individual components. Tr. 103.
asserts that during the prosecution of the '719 Patent,
Ficep,  in
distinguishing the Jones patent, "clearly disclaimed" a
construction of "design model" that would include
specifications of more than one component of a
multi-component object to be manufactured. In this regard,
Jones does not disclose or suggest an automatic manufacturing
system incorporating and utilizing a design model of an
object having multiple individual components, wherein at
least two of the individual components define an intersection
at which the two components are in contact with one another.
Concomitantly, Jones does not disclose or suggest an
automatic manufacturing system with elements that identify
and extract intersection parameters from a design model. The
manufacturing system of Jones et al. is concerned exclusively
with the manufacture of individual or separate components
from respective design specifications of the individual
components. In contrast to the present invention, there is
nothing in the Jones reference that provides for a design
model of an entire object having multiple components in
contact with one another at one or more intersection points.
Accordingly, the Jones system does not include componentry
(such as a programmable logic controller) that identifies and
extracts intersection information or parameters from a design
model of an object having multiple components in contact with
one another at one or more intersection points.
Def.'s Mot. Ex. C 9, ECF No. 82-3 (quoting Prosecution
History for '719 Patent at VRTFCP0008494).
amended the independent claims to delete the phraseology
"an object with multiple intersecting components"
and to insert the language "the object has multiple
individual components, at least two of the individual
components defining an intersection at which the two
components are in contact with one another." Def.'s
Mot. Ex. B 26, ECF No. 82-2 (quoting Prosecution History at
essence of the distinction between Jones and the '719
Patent lies in the requirement, in the Jones process, that,
once the design model is done, a human operator must
thereafter insert manufacturing specifications prior to
manufacturing. In the '719 Patent process, once the
design model is done, the specifications therein are
extracted and, without the risk of human
"contamination" of the data, manufacturing proceeds
pursuant to the design model.
Court concludes that the construction of the term
"design model" should be stated as:
The design model of an object is in the format of one or more
electronic files. In regard to a multi-component ultimate
object, the design model may include the specifications of
one or more of the separate components of the multi-component
patent owner has the burden of establishing infringement by a
preponderance of the evidence. Creative Compounds, LLC v.
Starmark Labs., 651 F.3d 1303, 1314 (Fed. Cir.
2011)(citing SRI Int'l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1123 (Fed. Cir. 1985).
case, Ficep accuses Voortman of indirect infringement by
inducing or contributing to direct infringement by its
customers. To establish its claim for indirect infringement,
Ficep must prove direct infringement and intentional
inducement. That is, that:
• Voortman's customers directly infringed, and
• Voortman intentionally acted to induce infringement
and "knew or should have known [its] actions would
induce actual infringements." Eli Lilly & Co. v.
Teva Parenteral Medicines, Inc., ___ F.3d ___, No.