Broussard v. Go-Devil Manufacturing Co. of LA, Inc. d/b/a Go-Devil Manufacturers of Louisiana, Inc.
3:08-cv-00124
M.D. La.Jan 6, 2014Background
- Gator Tail, LLC owns two patents (U.S. Patent Nos. 7,052,340 and 7,297,035) for outboard air-cooled motors/assemblies for shallow/muddy-water boating.
- Go-Devil and Mud Buddy were sued for patent infringement; each counterclaimed that the patents are invalid or unenforceable.
- Defendants initiated USPTO ex parte reexaminations; the PTO issued certificates affirming patentability in Nov. 2010 and Jan. 2011.
- The parties had Markman claim-construction hearings; the court scheduled a consolidated bench trial on validity and individual trials on infringement if necessary.
- Defendants moved for summary judgment of patent invalidity; Gator Tail opposed and moved to strike certain exhibits relied on by defendants.
- The district court denied defendants’ summary-judgment motions, finding the PTO reexamination findings create a genuine dispute of material fact as to validity; motions to strike were denied as moot insofar as they related to the summary-judgment motions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether patents are invalid as a matter of law (summary judgment) | Patents were reexamined and confirmed by the USPTO; those findings create factual dispute precluding summary judgment | Patents are invalid/obvious; USPTO reexamination findings warrant no deference, allegedly misapplied KSR | Denied — PTO reexamination certificates constitute evidence creating a genuine issue of fact on validity, precluding summary judgment |
| Weight to accord USPTO reexamination findings | Reexamination confirmation is probative and must be considered; supports denying summary judgment | PTO findings should be disregarded because examiner misapplied obviousness law | Court: PTO findings are evidence the court must consider; cannot be ignored and are sufficient to defeat summary judgment |
| Applicability of KSR obviousness standard to PTO analysis | PTO applied KSR and its insights on combining references; thus its analysis was proper | Examiner failed to apply KSR commonsense principle and used a "blinders-on" approach | Court found PTO addressed KSR and defendants failed to substantiate claim of flawed analysis; PTO not entitled to no deference |
| Motions to strike exhibits relied on in summary-judgment briefing | Gator Tail sought to exclude certain exhibits defendants used | Defendants relied on those exhibits in support of summary judgment | Court denied motions to strike as moot only to the extent they related to the denied summary-judgment motions |
Key Cases Cited
- KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (Sup. Ct. 2007) (obviousness standard and combining prior art references)
- Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955 (Fed. Cir. 1986) (PTO examiner decisions are evidence courts must consider on invalidity)
- Ethicon, Inc. v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988) (reexamination provides analysis valuable to district courts even if claims unchanged)
- Celotex Corp. v. Catrett, 477 U.S. 317 (Sup. Ct. 1986) (summary judgment burden-shifting framework)
- Little v. Liquid Air Corp., 37 F.3d 1069 (5th Cir. 1994) (nonmovant cannot rely on conclusory or scintilla evidence to defeat summary judgment)
- Pylant v. Hartford Life & Acc. Ins. Co., 497 F.3d 536 (5th Cir. 2007) (court's role at summary judgment is to determine existence of genuine issues, not weigh evidence)