United States District Court, D. New Jersey, Camden Vicinage
Eagle View Technologies, Inc. et al., Plaintiffs,
Xactware Solutions, Inc. et al., Defendants.
B. KUGLER United States District Court Judge.
a patent infringement action brought by Eagle View
Technologies and Pictometry International [together
“Plaintiffs”] against Xactware Solutions and
Verisk Analytics [together “Defendants”]. Before
the Court is Plaintiffs' motion for Partial Summary
Judgment [“motion”] under Federal Rule of Civil
Procedure [“Fed. R. Civ. P.” or
“Rule”] 56(a) to exclude U.S. Patent Number
[“Pat. No.”] 8, 417, 061
[“Sungevity”] as prior art to the asserted claims
of U.S. Pat. No. 8, 078, 436 [“ ‘436
patent”]. For the reasons below, Plaintiffs' motion
for partial summary judgment is DENIED.
appropriate Order accompanies this Opinion.
Background and Procedure
are the owners of the patents at issue that recite,
among other things, business methods, systems, and computer
readable storage media for providing a roof repair estimate.
The claimed invention applies photogrammetric methods, that
is, trigonometric calculations, to images of rooves in aerial
photographs to compute roof measurements, in particular, roof
pitch. Defendant Xactware Solutions, Inc., is a subsidiary of
Defendant Verisk Analytics, and provides online technology
tools and systems to insurance carriers, remodelers and
construction service providers for determining
replacement-cost. The parties have asserted they are
competitors to each other (Doc. 15:¶1).
Court assumes the parties' familiarity with the many
proceedings in this litigation and summarizes only those
events relevant to the motion. On 23 September 2015,
plaintiffs filed their original complaint against defendants
and on 30 November 2015, an amended complaint. Both of these
(Docs. 1 and 30) allege direct and indirect infringement
under 35 U.S.C. § § 271(a) and (b) of at least one
claim of each patent at issue. On 27 January 2017, defendants
filed a motion to amend their invalidity contentions (Doc.
160) to add U.S. Pat. No. 8, 417, 062 to Sungevity as a prior
art reference against certain claims of the ‘436
patent, which on 2 May 2012, Magistrate Judge Schneider
seek partial summary judgment that Sungevity be excluded as
prior art to the asserted claims of the ‘436 patent.
Their contention is that defendants have not met the burden
of production by presenting no expert testimony that shows
Sungevity's entitlement to the filing date of both its
provisional applications. Doc. 473: 3. Plaintiffs contend,
since defendants have not affirmatively detailed how both
Sungevity provisional applications enable the Sungevity
claims as granted, there is no evidence that Sungevity is
prior art to the ‘436 patent. Therefore, no genuine
dispute of material fact can exist regarding the invalidity
of the ‘436 patent claims, which motivates for a grant
of this motion. Id. at 5-7.
assert they have met their burden of proof. They argue it was
the U.S. patent examiner's removal of the ‘436
patent as prior art over the Sungevity claims that cleared
the way for the Sungevity grant. Defendants' argument is
based on remarks of Sungevity's patent practitioner in
the 04 September 2012 response to a Non-Final Rejection.
There it is asserted the Pershing provisional application,
U.S. Prov. App. 60/925, 073, does not support the ‘436
patent claims as granted. Further asserted there is that the
priority date of the ‘436 patent is its filing date of
16 October 2008, which is eight months later than
Sungevity's priority date of 1 February 2008 from its
earliest provisional filing.
this point, the parties do not generally dispute any material
fact. Distilled to its essence, the point of contention is
whether defendants have met their burden of persuasion, which
plaintiffs assert requires defendants to show in detail how
the Sungevity provisional applications support under 35
U.S.C. 112(1) (pre-A.I.A.)-or in a term of art, enable--the
Sungevity claims as granted. Defendants argue the very
allowance of Sungevity must evidence that the Sungevity
provisionals enable the granted claims, else why would the
U.S. patent examiner issue the Sungevity allowance.
reviewing motions for summary judgment, the Court determines
whether there is a “genuine dispute as to any material
fact.” Fed. R. Civ. P. 56(a). The moving party
has the initial burden of showing no such genuine dispute
exists. Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986). If this showing is made, the burden then shifts to
the non-moving party to offer evidence establishing the
existence of a genuine dispute that compels a trial.
Id. at 324. To meet its burden, the non-moving party
must present more than mere allegations or denials, that is,
“identify those facts of record which would contradict
the facts identified by the movant.” Port Auth. of
N.Y. and N.J. v. Affiliated FM Ins. Co., 311 F.3d 226,
233 (3d Cir. 2002). If the non-movant fails to do so, the
Court must grant summary judgment. Big Apple BMW v. BMW
of North America, 974 F.2d 1358, 1363 (3d Cir.1992);
is material only if it can “affect the outcome of the
suit under governing law” (Kaucher v. Cty. of
Bucks, 455 F.3d 418, 423 (3d Cir. 2006)). A material
fact raises a genuine dispute “if the evidence is such
that a reasonable jury could return a verdict” for the
non-moving party. Healy v. N.Y. Life Ins. Co., 860
F.2d 1209, 1219 n. 3 (3d Cir.1988). The Court considers all
facts, their logical inferences, and all ambiguities in the
light most favorable to the non-moving party (Anderson v.
Liberty Lobby, 477 U.S. 242, 255; Burton v. Teleflex
Inc., 707 F.3d 417, 425 (3d Cir.2013)) and determines
not “the truth of the matter, ” but whether a
genuine dispute necessitates a trial. Anderson, 477
U.S. at 242; Petruzzi's IGA Supermarkets v.
Darling-Delaware Co., 998 F.2d 1224, 1230 (3d Cir.1993).
contradictory, material facts are presented, a genuine
dispute is raised and undercuts a decision for summary
judgment. However, even with a presentation of contradictory
facts, there can be no genuine dispute when one party fails
“to make a showing sufficient to establish the
existence of an element essential to that party's case,
and on which that party will bear the burden of proof at
trial.” Celotex, 477 U.S. at 322-23. When the
movant has completely failed to show an ...