# Card-Monroe Corp. v. Tuftco Corp.

> District Court, E.D. Tennessee · September 1, 2017 · 270 F. Supp. 3d 967

URL: https://www.frixlaw.com/law-library/cases/7244926

## Case

- **Full name:** CARD-MONROE CORP. v. TUFTCO CORP.
- **Court:** District Court, E.D. Tennessee
- **Decided:** September 1, 2017
- **Citations:** 270 F. Supp. 3d 967
- **Precedential status:** Published
- **Opinion:** Opinion of the court by McDonough
- **Judges:** McDonough
- **Cited by:** 2 later opinions in the Frix Law Library

## Citator (automated)

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- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/7244926

## Opinion text

AMENDED MEMORANDUM AND ORDER 1
TRAVIS R. MCDONOUGH, UNITED STATES DISTRICT JUDGE
Before the Court are: (1) Defendant Tuftco Corp.’s ("Tuftco”) motion to strike and for sanctions (Doc. 317); (2) Tuftco’s motion for summary judgment (Doc. 450);' and (3) Plaintiff Card-Monroe Corp.’s (“CMC”) motion for summary judgment (Doc. 289). Having considered the record, the parties’ written submissions, and their oral-arguments at the hearing on July 14, 2017, the Court hereby DENIES Tuftco’s motion to strike and for sanctions (Doc. 317) and GRANTS IN PART and DENIES IN PART the parties’ summary judgment motions (Docs. 289, 450).
1. BACKGROUND
1. The Patents
The three patents at issue concern certain carpet-tufting machines and methods. U.S. Patent No. 8,141,505 . (the “’505 Patent”), entitled “Yarn Color Placement System,” was issued by the United States Patent and Trademark Office (“PTO”) on March 27, 2012. (Doc. 292-1, at 1-17.) 2 U.S. Patent No. 8,359,989 (the “’989 Patent”), entitled “Stitch Distribution Control System for .Tufting Machines,” was issued on January 29, 2013. (Id. at 18-51.) Finally, U.S. Patent No. 8,776,703 (the “’703 Patent”) (collectively, the “Asserted Patents”), entitled ‘Yarn Color Placement System,” was issued on July 15, 2014. (Id. at 52-68.) The ’989 Patent and ’703 Patent are continuations of the ’505 Patent and, as such, contain similar specifications. (Id. at 12, 40, 63.) CMC is the owner by assignment of all rights, title, and interest to the Asserted Patents.
The invention, marketed as “Color-Point,” “generally relates to tufting machines, and in particular, to a system for coordinating the feeding and placement of yarns of different' colors within a backing material passing through a tufting machine to enable formations of free-flowing patterns within a tufted article.” (Id. at 12, col. 1:11-15.) 3 According to the Asserted Patents’ specifications, before ColorPoint, the carpet tufting industry sought “new, more eye-catching” patterns that “replicate the look and feel of fabrics formed on a loom.” (Id., col, 1:20-25.) Though manufacturers could produce more vibrant pat *979 terns with specialty machines that individually placed yarns with a single needle, they could not produce those patterns on a commercial scale. (Id., col. 1:36-54.) CMC presented ColorPoint as the solution to this industry limitation. By coordinating yarn feed, needle bar shifts, and the feeding of backing material through the tufting machine, multiple colors of yarns are inserted at the same' stitch location. (Id. at 12-16.) Unwanted yarns (those not called for in a design) are then pulled low or out of the backing so they cannot be seen in the carpet’s face. (Id.) CMC’s new method inserts a higher number of yarns .into the backing than traditional tufting methods, while avoiding gaps between visible tufts in the face of the carpet. (Id.) The resulting products accommodate more intricate pattern designs while preserving sharpness and definition. (Id.)
2. The Claims
On February 8, 2016, the parties identified twelve claims to be severed for ongoing proceedings: Claims 8, 10, and 12 of the ’505 Patent; Claims 21, 22, 24, 27, 28, and 30 of the ’989 Patent; and Claims 1, 28, and 29 of the ’703 Patent (together, the “Severed Claims”). (Doc. 169.) Claim 1 of the ’703 Patent is the only machine claim at issue herein (the “Machine Claim”); the rest are method claims (the “Method Claims”).
i. Claims 8, 10, and 12 of the ’505 Patent
Claim 8 recites:
A method of operating a tufting machine to form patterned tufted articles having multiple colors, comprising:
feeding a backing material through the tufting machine;
feeding a plurality of yarns to a series of needles carried by a shiftable needle bar;
shifting the needle bar transversely according to a programmed shift profile for the pattern of the tufted article;
controlling the feeding of the yarns to the needles in accordance with programmed pattern instructions so as to feed desired amounts of the yarns to the needles as needed to form rows of high and low tufts of yarns in the backing materials;
forming the tufts of yarns at an increased effective stitch rate determined by multiplying the -number of colors being formed in the patterned tufted article by a desired fabric stitch rate that comprises a number of stitches per inch desired for the patterned tufted articles; and
wherein the feeding of the yarns to form the high and low tufts tracks the shifting of the needles so as to substantially maintain density of the tufts of yarns being formed in the backing material in a direction of the rows of tufts and location of the high tufts of yarns at desired positions across the backing to form the patterned, tufted articles.
(Doc. 292-1, at 16, col. 10:39-61.)
Claim 10, which is dependent on Claim 8, recites:
The method of claim 9[ 4 ] and wherein feeding a second, lesser amount of yarn comprises back-robbing the yarns fed to each needle to ap extent sufficient to *980 substantially hide or remove the- low tufts from the backing.
{Id. at 16-17, cols. 10:66-11:2.)
Claim 12, also dependent on Claim 8, recites:
The method of claim 8 and wherein the tufting machine is a l/10th gauge tufting machine and the desired fabric stitch rate is approximately ten stitches per inch.
{Id. at 17, col. 11:6-8.)
ii. Claims 21, 22, 24, 27, 28, and 30 of the ’989 Patent
Claim 21 recites:
A method of operating a tufting machine to form a patterned article including a series of different yarns, comprising:
receiving a pattern including a series of pattern steps for forming the patterned article;
determining an effective process stitch rate for the patterned article; feeding a backing material through the tufting machine at the effective process stitch rate;
as the backing material is fed through the tufting machine, reciprocating a series of needles to deliver the yarns into the backing material; and controlling feeding of the yarns to the needles in accordance with programmed pattern instructions to retain a tuft of a desired yarn for each stitch being formed in the backing material
wherein determining the effective process stitch rate for the patterned article comprises increasing the desired stitch rate for the pattern by a multiple approximately corresponding to a number of colors of yarns used to form the patterned article.
{Id. at 50, col. 21:28-49.)
Claim 22 recites:
A method of tufting a patterned article, comprising:
determining a desired fabric stitch rate for the patterned article;
feeding a series of yarns to a series of spaced needles;
feeding a backing material through a tufting zone;
as the backing material is fed through the tufting zone, reciprocating the needles carrying the yarns into, and out of the backing material;
shifting at least some of the needles transversely with respect to the backing material; and
at selected stitch locations, presenting a number of different yarns for insertion into the backing material and controlling the yarn feed to the needles so as to retain at least one desired yarn of the different yarns presented for each selected stitch location;
wherein feeding the backing material comprises moving the backing material through the tufting zone at an effective stitch rate approximately equivalent to the desired fabric stitch rate increased by an amount based upon a number of different yarns presented at a stitch location being tufted.
{Id., cols. 21:50-22:3.)
Claim 24 recites:
The method of Claim 22 and wherein presenting a number of different yarns and controlling the yarn feed to the needles comprises presenting a yarn of each color that could be tufted at a particular selected stitch location and feeding the yarn for a color corresponding to the selected stitch location to form a tuft, while controlling feeding of the yarns of remaining colors to pull such yarns low or remove them from the selected stitch location.
{Id., col. 22:9-16.)
Claim 27 recites:
*981 A method of tufting a patterned article comprising:
determining a desired fabric stitch rate for the patterned article;
feeding a series of yarns to series of spaced needles;
determining an effective process stitch rate for the patterned article, comprising increasing the desired stitch rate for the pattern by a multiple approximately corresponding to a number of colors of yarns used to form the patterned article;
feeding a backing material through a tufting zone;
as the backing material is fed through the tufting zone, reciprocating the needles carrying the yarns into and out of the backing material;
shifting at least some of the needles transversely with respect to the backing material; and
at selected stitch locations, presenting a number of yarns for insertion into the backing material and controlling the yarn feed to the needles so as to retain at least one desired yarn of the yarns presented for each selected stitch location.
(Id., col. 22:25-45.)
Claim 28 recites:
A method of forming tufted patterns in a backing, comprising:
determining a desired fabric stitch rate for a pattern to be formed;
feeding the backing material through a tufting machine;
as the backing is fed through the tufting machine, reciprocating a series of spaced needles carrying a series of yarns into and out of the backing to form a series of tufts in the backing; and
at selected stitch locations of the pattern being formed in the backing, presenting a desired number of yarns for insertion into the backing and selectively withholding non-retained yarns from such stitch locations;
wherein selectively withholding the non-retained yarns comprises controlling at one or more yarn feed mechanisms feeding the non-retained yarns to the needles so as to pull back such yarns; and
wherein feeding the backing through the tufting machine comprises feeding the backing at an effective process stitch rate approximately equivalent to the desired fabric stitch rate increased by a number of different yarns being used to form the pattern.
(Id., col. 22:46-67.)
Claim 30 recites:
A method of tufting a patterned article including a series of tufts of different color yarns, arranged according to pattern instructions for the article, comprising:
determining a desired fabric stitch rate for the patterned article; moving a backing through a tufting zone at an effective process stitch rate based upon the desired fabric stitch rate increased in view of a number of colors of yarns of the patterned article;
as the backing moves through the tufting zone, reciprocating a series of spaced needles to present a selected series of yarns to stitch locations in the backing; and
at each stitch location, controlling feeding of the series of yarns presented at each stitch location and selectively retaining a desired yarn of the series of yarns presented at each stitch location based upon the pattern instructions.
(Id. at 51, cols. 23:5-24:5.)
iii. Claims 1, 28, and 29 of the ’703 Patent
Claim 1 recites:
*982 A tufting machine for forming patterned tufted articles including different color yarns therein, comprising:
at least one needle bar having a series of needles mounted at a spacing based on a gauge of the tufting machine therealong;
backing feed rolls for feeding a back-in'g material through a tufting zone of the tufting-machine;
a pattern yarn feed mechanism for feeding a series of yarns to said needles;
hf least one "needle bar shifter for shifting said at least one needle bar transversely across the tufting zone; a series of gauge parts mounted below the tufting zone in a position to engage said- needles of said at least one needle bar as said needles are reciprocated into and out of the backing material to form tufts of yarns in the backing material; and
a control system for controlling said yarn feed mechanism in cooperating with said at least .one needle bar shifter shifting the at least one needle bar in accordance with a series of transverse pattern shift steps received by the control system, to control feeding of the yarns to said needles as the needles are reciprocated and as the needle bar is shifted in accordance with the transverse pattern shift steps as needed to form selected tufts of yarns of a desired height and to pull non-selected ones of the yarns low or out of the.backing material for each .pattern step;
wherein, the control system is linked to and controls the backing feed rolls for feeding the backing material, such that the tufts of yarns are formed in the backing material at an effective stitch rate that is determined by increasing a prescribed stitch rate of the patterned tufted article that is based on the gauge of the tufting machine by a selected amount so as to form the patterned articles with the selected tufts of yarns having an appearance of being formed at- the desired stitch rate.
(Id. at 67, col. 9:17-51.) The ’703 Patent’s specification expands on the “control system” software recited in Claim 1. It provides:
The tufting machine control system 25 generally will comprise a tufting machine control such as a “Command Performance™” tufting machine. control system as manufactured by Card-Monroe Corp. The control system also typically includes a computer/proeessor or controller 26 that can be programmed with various pattern information and which monitors and controls the operative elements of the tufting machines .The tufting machine control system ... further can receive and execute or store pattern information directly from a design center ... that can be separate and apart from the tufting machine control system, or which can be included as part of the tufting machine control system.
(Id. at 64, col. 4:8-24.)
Claim 28 recites:
A method .of forming tufted articles including tufts of multiple different color yarns, comprising: :
feeding a backing material through a tufting machine;
reciprocating a series of needles to deliver the yarns into the backing material to form tufts of yarns therein;
engaging the yarns-delivered into the backing material by the needles with a series of gauge parts to pull loops of yarns from the needles for forming the tufts of yarns in the backing material; «...
*983 shifting at least some of the needles transversely, wherein the needles are shifted by single shift steps, - double shift steps, or a combination of single and/or double shift steps according, to a shift profile based upon a number of colors of yarns of the pattern for the tufted artietó;.
controlling feeding of the yarns to the needles in accordance with the- shift profile of the pattern for the article.to selectively- form tufts of yarns of a .desired, pile -height and to selectively pull back loops of yarns to form the pattern; .
wherein the tufts of yarns are formed in the backing material at an increased effective, stitch rate that is at least two times ■ a prescribed stitch rate based upon a gauge .of the tufting machine, for the feeding of .the backing material for the pattern of the tufted article so as to form the patterned article with an appearance of an increased density.
(Id, at 68, col. 12:4-30.)
Claim 29 recites:
A method of forming tufted articles in-eluding tufts of multiple different color yarns, comprising:
feeding a backing material through a tufting machine at ah effective stitch rate- that is increased over a desired stitch rate for the tufted article that is based on a gauge of the tufting machine;
reciprocating a series of needles to deliver the yarns into the backing material to form (tufts of yarns therein; engaging the yarns delivered into the -backing material by the needles with a series of gauge parts to pull loops of yarns from the needles for forming the-tufts of yarns in the backing material; .
shifting at least some of the needles transversely. according to á desired shift profile based upon a number of colors of yarns of the pattern for the tufted article;
controlling feeding of the yarns to the needles in accordance with the shift profile of the pattern for the article to selectively form a number of high tufts of yams and to selectively pull back loops of yarns to form the pattern;
wherein the tufts of yarns are formed in the backing material at an effective stitch rate, so as to form the patterned article with the number of high tufts formed substantially matching the desired stitch rate of the tufting machine and with the loops of yarns selectively pulled back being substantially hidden by the high tufts of yarns.
(Id., col. 12:31-56.)
3, The Accused Products
CMC accuses Tuftco of directly and indirectly infringing, the Asserted Patents. Specifically, CMC alleges Tuftco created a competing—but infringing—technology, and then manufactured' and sold products that perform that technology. According to CMC, Tuftco refers to this competing technology in multiple ways, including “Color-tuft,” “iTuft,” “iTuft c,” “Easy Pattern,” and “Easy Mode.” 5 (Doc. 442, at 11-12.) For simplicity, the Court will refer to the allegedly infringing technology as “Color-tuft/iTuft c.” At issue are twenty-nine tufting machines made by Tuftco (the “Accused Products”), including twenty-eight single-and double-needle-bar machines *984 sold by Tuftco (Doc. 457, at 1) and one in-house sample machine (Doc. 454-9, at 61). Though ColorPoint fabrics are typically made with single-needle-bar machines (Id. at 105; Doc. 292-1, at 14, col. 5:10-30), CMC alleges that the double-needle-bar Accused Products also infringe the Severed Claims. 6 Double-needle-bar machines operate similarly to single-needle-bar machines, but with some differences. The “gauge” of a single-needle-bar machine refers to the spacing between the needles on the needle bar. (Doc. 292-1, at 13, col. 4:43-46; Doc. 454-9 at 91.) A l/10th gauge machine, for example, will have needles spaced at l/10th of an inch, or ten needles per inch, on its needle bar. (Id.) Double-needle-bar machines have a “composite gauge,” which consists of the combined gauge of both of its needle bars. (Doc. 454-11, at 133.) For example, a l/10th gauge composite .double-needle-bar machine will have two l/5th gauge needle bars. (Id.) Each needle bar of the double-needle-bar Accused Products can carry all colors of the pattern being tufted. (Id.) The needle bars typically run parallel to each other. (Id., at 133-34; Doc. 292-1, at 104, ¶ 12.) The needle bars can either shift with one another or against each other. (Doc. 454-11, at 134.) The needle bars are offset and do not stitch in the same longitudinal path. (Id. at 135.) In other words, if the front needle bar is stitching the odd rows, the rear needle bar would be stitching only the even rows. (Id.) Of course, with a single-needle-bar tufting machine, the needle bar would tuft every longitudinal row.
During discovery, CMC’s expert, Steven Berger, conducted inspections on five of the Accused Products, including: (1) a l/10th gauge single-needle-bar machine sold to Lexmark; (2) a l/10th gauge single-needle-bar machine sold to Signature; (3) a l/12th composite gauge double-needle-bar machine with two staggered l/6th gauge needle bars sold to J & J Industries; (4) a l/10th gauge single-needle-bar machine sold to Shaw; and (5) a l/10th composite gauge double-needle-bar machine with two staggered l/5th needle bars, which Tuftco keeps in house as a sample machine (together, the “Inspected Machines”). 7 (Doc. 454-9, at 60-61.) CMC alleges that Tuftco directly infringed the Machine Claim—Claim 1 of the ’703 Patent—by manufacturing and selling the Accused Products. (Doc. 442, at 31.) Additionally, CMC alleges Tuftco directly infringed the Method Claims by producing in-house samples to market Colortufi/iTuft c. 8 (Id. at 31-32.) Finally, CMC asserts Tuftco indirectly infringed the Method Claims by inducing its customers to directly infringe them. (Id. at 32-33.)
4. Procedural History
CMC initiated this action on October 7, 2014, alleging infringement of the Asserted Patents. (Docs. 1,127.) As is relevant here, Tuftco asserted affirmative defenses of non-infringement, invalidity, inequitable conduct, and patent misuse. (Doc. 128.) Tuftco also asserted counterclaims for: (1) non-infringement, invalidity, and unen- *985 forceability; (2) tortious interference with business relationships; (3) unfair trade practices; and (4) unfair competition. (Id.) Pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 , 116 S.Ct. 1384 , 134 L.Ed.2d 577 (1996), the Court held a claim-construction hearing on April 19, 2016 (the “Markman hearing!’), and thereafter issued an order construing ten disputed terms in the Asserted Patents. (Doc, 220.) On October 20, 2016, the Court issued an order directing each party to file one comprehensive summary judgment motion supported by a forty-page memorandum, in lieu of serial motions and mem-oranda. (Doc. 280.)
On November 4, 2016, the parties filed their motions for summary judgment. (Docs. 288, 289, 450.) On November 28, 2016, each party responded in opposition to the other’s motion. (Docs. 319, 325, 445, 452.) Also on November 28, 2016, Tuftco filed a motion to strike and for sanctions. (Doc. 317.) On December .8, 2016, each party filed a reply in support of its motion. (Docs. 334, 336, 447, 453.) On December 15, 2016, CMC responded in opposition to Tuftco’s motion to strike (Doc. 345), and Tuftco replied on December 22, 2016 (Doc. 352). These motions are now ripe for the Court’s review.
II. MOTION TO STRIKE AND FOR SANCTIONS
The Court will first address Tuftco’s motion to strike. Tuftco moves to strike the portions of CMC’s summary judgment brief that exceed the Court’s page limitation on memoranda accompanying summary judgment motions. (Doc. 317.) Specifically, Tuftco argues that' CMC improperly-incorporated into its brief over fifty pages from its' expert’s infringement report in contravention of the Court’s order imposing a forty-page limit. (Id.) Tuftco cites a number of cases in support, including two from this district and one from the Sixth Circuit.
Unlike the cases cited by Tuftco, however, the document CMC “.incorporates” is not argument or submissions by an attorney, but portions of an expert report. Cf ., e.g., Cross v. Sbarro Am., Inc., No. 1:09-cv-275, 2011 WL 572415 , at *4 (E.D. Tenn. Feb. 15, 2011) (sustaining an objection to a party’s incorporation of an attached statement of undisputed facts). Under the Federal Rules of Civil Procedure, a party may support its motion for summary judgment by “citing to particular parts of materials in the record, including depositions, . documents, electronically stored information, affidavits or declarations,- stipulations (including those made for purposes .of the motion only), admissions, interrogatory answers, or other materials Fed. R. Civ. P. 56(c)(1)(A). Moreover, the importance of expert opinion at the summary judgment stage in patent litigation must not be ignored. See, e.g., Intellectual Sci. & Tech., Inc. v. Sony Elecs., Inc., 589 F.3d 1179, 1183 (Fed. Cir. 2009) (“To satisfy the summary judgment standard, a patentee’s expert must. set forth the factual foundation for his infringement opinion in sufficient detail for the court to be certain that features of the accused product would support a finding of infringement .... ”). CMC’s memorandum simply points to other portions of the record, in context, without unnecessarily burdening the Court with in-bulk reproductions of such content; There is nothing inappropriate—much less sanctionable— about CMC’s conduct. Accordingly, the Court finds that CMC has not improperly exceeded the page limitation. and will DENY Tuftco’s motion to strike and for sanctions (Doc. 317).
III. MOTIONS FOR SUMMARY JUDGMENT
Tuftco moves for summary judgment that the Asserted Patents are invalid due to indefiniteness and anticipation. In the *986 alternative, Tuftco seeks summary judgment that the “invention” in the Asserted Patents is limited to software CMC uses to run ColorPoint. (Doo.. 450.) Tuftco also moves for summary judgment of non-infringement and on a number of damages issues. (IcL)
CMC moves for summary judgment: (1) that the Severed Claims are valid with respect to- anticipation, obviousness, indefiniteness, and-ineligibility under 35 U.S.C. § 101 ; (2)-that the Inspected Machines are representative of all Accused Products; (3) that Tuftco has directly infringed the Machine Claim and the Method Claims; (4) that Tuftco has indirectly infringed the Method Claims; and (5) on Tufteo’s counterclaims and affirmative défenses of inequitable conduct, tortious interference, unfair competition, unfair trade practices, and patent misuse. (Doc.-289.)
I. Standard of Review
Summary judgment is proper when “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. Court views the evidence in the light most favorable to the nonmoving party and makes-all reasonable inferences in favor of the non-moving party. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 687 , 106 S.Ct., 1348 , 89 L.Ed.2d 538 (1986); Nat’l Satellite Sports, Inc., v. Eliadis Inc., 253 F.3d 900, 907 (6th Cir. 2001).
The moving party bears the burden of demonstrating that there is no genuine dispute as to any material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 , 106 S.Ct. 2548 , 91 L.Ed.2d 265 (1986); Leary v. Daeschner, 349 F.3d 888, 897 (6th Cir. 2003). The moving party may meet this burden either by affirmatively producing evidence establishing that there is no genuine issue of material fact or by pointing out the absence of support in the record for the nonmoving party’s case. Celotex Corp., 477 U.S. at 325 , 106 S.Ct. 2548 . Once the movant has discharged this burden, the nonmoving party can no longer rest upon the allegations in the pleadings; rather, it must point to specific facts supported by evidence in the-record demonstrating that there is a genuine issue for trial. Chao v. Hall Holding Co., Inc., 285 F.3d 415, 424 (6th Cir. 2002).
At summary judgment, the Court may not weigh the evidence; its role is limited to determining whether the record contains sufficient evidence from'which a jury could reasonably find for the non-movant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-49 , 106 S.Ct. 2505 , 91 L.Ed.2d 202 (1986). A mere scintilla of evidence is not enough;' the Court must determine whether a fair-minded jury could return a verdict in favor of the non-movant based on the record. Id. at 251-52 , 106 S.Ct. 2505 ; Lansing Dairy, Inc. v. Espy, 39 F.3d 1339, 1347 (6th Cir. 1994). If not, the Court must grant summary judgment. Celotex, 477 U.S. at 323 , 106 S.Ct. 2548 .
The standard of review when parties file cross-motions , for summary judgment is the same as when only one party moyes for summary judgment. Taft Broad. Co. v. United States, 929 F.2d 240, 248 (6th Cir. 1991). When there are cross-motions for summary judgment, the court must, “evaluate each party’s motion on its own .merits, taking care in each instance to draw all reasonable inferences against the party whose motion is under consideration.” Id. In considering cross motions for summary judgment, the court is “not require[d] ... to rule that no fact issue exists.” Begnaud v. White, 170 F.2d 323, 327 (6th Cir. 1948).
2. Invalidity
Generally,- patents are presumed valid, and the party challenging validity *987 bears the burden of proving invalidity by clear and convincing evidence, 35 U.S.C. § 282 (a); Microsoft Corp. v. I4I Ltd. P’ship, 564 U.S. 91, 95 , 131 S.Ct. 2238 , 180 L.Ed.2d 131 (2011). “Clear and convincing evidence is such evidence that produces ‘an abiding conviction that the truth of [the] factual contentions are highly probable.’ ” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (quoting Colorado v. New Mexico, 467 U.S. 310, 316 , 104 S.Ct. 2433 , 81 L.Ed.2d 247 (1984)).
Tuftco moves for summary judgment that: (1) Claim 1 of the ’703 Patent is invalid for indefiniteness under 35 U.S.C. § 112 , ¶ 6; and (2) the Severed Claims are invalid as anticipated. CMC moves for summary judgment on Tuftco’s invalidity defenses and counterclaims, asserting that insufficient evidence exists to support: (1) indefiniteness under § 112, ¶ 2 and ¶ 6; (2) anticipation; (3) obviousness; and (4) ineligibility under § 101.
i. Indefiniteness
Tuftco counterclaims that all three Asserted Patents are invalid under 35 U.S.C. § 112 . (Doc. 128, at 9.) Tuftco now .moves for summary judgment specifically on Claim 1 of the ’703 Patent, based on invalidity due to indefiniteness under 35 U.S.C. § 112 , ¶6. 9 CMC cross-moves for summary judgment on Tuftco’s invalidity counterclaim generally, arguing that' Tuftco cannot establish that the Asserted Patents are invalid under 35 U.S.C. § 112 , ¶ 2 or ¶ 6.
1. 35 U.S.C. § 112 , ¶ 6
Both parties move for partial summary judgment under 35 U.S.C. § 112 , ¶ 6. Whether a claim is subject to § 112, ¶6, is a matter of claim construction and, therefore, a question of law. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346 (Fed. Cir. 2015). However, in construing, a claim, the Court may make underlying findings of fact based on extrinsic evidence, such as expert testimony. Id. Pursuant to § 112, ¶ 6, a patent applicant may express an element of a claim “as a means or step for performing a specified function ... and such claim shall be construed to cover the corresponding structure ,.. described in the specification and equivalents thereof.” 35 U.S.C. § 112 , ¶ 6. Though paragraph six allows means-plus-function language, those claims are “still subject to the [§ 112, ¶ 2] requirement that a claim ‘particularly point out and distinctly claim’ the invention.” In re Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (quoting § 112, ¶ 2). Accordingly, if a patentee uses generic language ’ to claim function under § 112, ¶ 6, it must clearly identify and describe a corresponding structure in the specification for performing the claimed function. Williamson, 792 F.3d at 1361 . If the patentee does not specify such structure, the claim is considered purely functional’ and invalid for indefiniteness. Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1363 (Fed. Cir. 2012).
Tuftco argues that Claim 1 of the ’703 Patent is properly construed as a means-plus-function claim under § 112, ¶6, because it uses generic language—“control system”—to claim function.' (Doc. 450, at 10-13.) According to Tuftco, because the patent specification-fails to disélose sufficient structure as required of means-plus-function claims, Claim 1 is invalid for indefiniteness. (Id. at 13-15.)
*988 The first inquiry under § 112, ¶ 6, is whether Claim 1 of the ’703 Patent should -be construed as a means-plus-function. claim. In determining whether a means-plus-function construction applies, the Court analyzes “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Williamson, 792 F.3d at 1349 . A claim that does not include the word “means” carries a rebuttable presumption that the limitation is not subject to § 112, ¶ 6. 10 Id. The presumption is overcome if “the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). In other words, the Court asks whether “the claim language, read in light of the specification, recites sufficiently definite structure to avoid § 112, ¶ 6.” Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015) (quoting Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014)). In Williamson , for example, the Federal Circuit held that a limitation claiming a “distributed learning control module” and three functions it performed was subject to a means-plus-function construction. 792 F.3d at 1350-51 . Though the limitation did not contain the term “means,” the court noted that “[gjeneric terms such as ‘mechanism,’ ‘element,’ [and] ‘device’ ,.. that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ ....” Id. at 1350 . “[M]odule,”..the court found, “is a well-known ‘nonce word’ that can operate as a substitute for ‘means’ _” Id. Moreover, the prefix “distributed learning control” did not add structure to the phrase. Id. at 1351 . The court also noted that the claim language did not describe how the “ ‘distributed learning control module’ interacts with other components ... in a way that might inform the structural character of the limitation in question” and that nothing in the specification or prosecution history imparted structure into the phrase. Id.
Here, Claim 1 provides in pertinent part: “A tufting machine for forming pattern tufted articles including different color yarns therein, comprising: ...
a control system for controlling said yard feed mechanism in cooperation with said at least one needle bar shifter shifting the at least one needle bar in accordance with a series of transverse pattern shift steps received by the control system, to control feeding of the yarns to said needles as the needles are reciprocated and as the needle bar is shifted in accordance with the transverse pattern shift steps as needed to form selected tufts of yarns of a desired height and to' pull non-selected ones of the yarns low or out of the backing material for each pattern step; ’
wherein the control system is linked to and controls the backing feed rolls for feeding the backing material such that the tufts of yarns are formed in the backing material at an effective stitch rate that is determined by increasing a prescribed stitch rate of the patterned tufted article that is based on the gauge of the tufting machine by a selected amount so as to form the patterned articles with the selected tufts of yarns having an appearance of being formed at the desired stitch rate.”
*989 (Doc. 292-1, at 67, col. 9:17-18, 33-51 (emphasis added).) As the limitation in question lacks the word “means,” it carries a rebuttal presumption that § 112, ¶ 6, does not apply.
The presumption is not overcome, because the language of Claim 1, read in light of the specification, recites sufficiently definite structure to avoid § 112, ¶ 6. Turning first to the term itself, Tuftco argues that, like the terms “mechanism,” “element,” or. “device,” “system” is a generic substitute for “means.” In support, Tuftco cites Automotive Technologies International, Inc. v. Delphi Corp., a district court case from the Eastern District of Michigan which found that the phrase “a measurement system” indicates a means-plus-function limitation. No. 08-11048, 2009 WL 2960698 , at *12-13 (E.D. Mich. Sept. 11, 2009). Although the Automotive Technologies court found that “ ‘[s]ystem’ is the same sort of generic term as ‘means,’ ‘mechanism’ and ‘device,’” other district courts, including courts with a heavy patent docket, have disagreed. See, e.g., Blitzsafe Tex., LLC v. Honda Motor Co., No. 2:15-cv-1274-JRG-RSP, 2016 WL 4762083 , at *14 (E.D. Tex. Sept. 13, 2016) (finding “integration subsystem” to denote structure); Perdiem Co, LLC v. IndusTrack LLC, No. 2:15-cv-727-JRG-RSP, 2016 WL 3633627 , at *37 (E.D. Tex. July 1, 2016) (“The term ‘system’ as used here is different from the word ‘module’ in Williamson.”). Accordingly, Automotive Technologies does not persuade the Court that it should treat the phrase “control .system” as a mere means-plus-function limitation. 11
Moreover, the language of Claim 1, viewed in light of the specification, imparts structure to the term. Claim 1 specifies that the “control system” works “in cooperation with said at least one needle bar shifter” which receives a “series of transverse pattern shift steps” from the “control system.” (Doc. 292-1, at 67, col. 9:34— 37.) The “control system” is also “linked to and controls the backing feed rolls.” (Id. at col. 9:43-44.) This claim language structurally connects the control system and other components of the claimed tufting machine. Moreover, the ’703 Patent’s specification goes so far as to provide a specific example of a “control system” (“The tufting machine control system 25 generally will comprise a tufting machine control such as a ‘Command Performance™* tufting machine control system as manufactured by Card-Monroe Corp.”) 12 and further explains the structural components of a “control system” (“The control system also typically includes a- computer/processor or controller 26 that can be programmed with various pattern information and which monitors and controls the operative elements of the tufting machines — “The tufting machine control system .,. further can receive and execute or store pattern information directly from a design center ... that can be separate and apart from the tufting machine control system, or which can be included as part of the tufting machine control system.”). *990 (Doc. 292-1, at 64, col. 4:8-24.) Therefore, a person of ordinary skill in the art would understand the necessary structure of a “control system” as contemplated by Claim 1.
Notably, Tuftco does not offer any testimony or evidence to demonstrate that one of ordinary skill in the art would not understand the term “control system” to denote structure. (Doc. 450, at 10-13.) Meanwhile, there is evidence in the record that an ordinarily skilled artisan would understand “control system” as a name for structure. For example, CMC’s expert concluded that “control system” is a common industry term that requires no construction. (Doc. 113-12, at ¶¶ 24-27.) Moreover, Tuftco itself appears to understand the Structure of a “control system.” In another section of its brief, Tuftco states “the type of ‘control system’ that is referenced in [Claim 1] is the same type of ‘control system’ that existed in conventional tufting machines that predated the Asserted Patents.” (Dqc. 450, at 22.) Finally, during a deposition, one of Tuftco’s experts appeared to understand that CMC’s “Command Performance” and Tuftco’s “Encore” are “control systems” that are used for tufting machines. (Doc. 454-12, at 7.)
In short, Claim 1 provides far more description of the structure of the “control system” than a mere meañs-plus-functión claim. For the foregoing reasons, the Court finds that Claim 1 of the ’703 Patent is not a means-plus-fúriction claim subject to 35 U.S.C. § 11⅜ ¶ 6. Because Claim l’s use of the term “control system” does not render it a means-plus-function claim, Tuftco’s motion for summary judgment that Claim 1 of, the ,’703 Patent is invalid for. indefiniteness under 35 U.S.C.. § 112, ¶ 6, is DENIED, and CMC’s cross-motion for summary judgment on this ground is GRANTED.
2. 35 U.S.C., § 112 , ¶ 2
CMC moves for summary judgment on Tuftco’s invalidity counterclaim that the Severed Claims are indefinite under 35 U.S.C. § 112 , ¶2. Tuftco did not respond to CMC’s' motion with respect to § 112, ¶ 2. Tuftco did, however, argue that Claim 1 of the ’703 Patent is indefinite with respect to the term “selected amount” in its own motion for summary judgment, though it did not move for summary judgment of invalidity under § 112, ¶ 2. (Doc. 450, 15-16.) Additionally, Tuftco’s expert, Ian Slattery, . opines that the Severed Claims are indefinite based on the following terms: (a) “desired stitch rate”; (b) “a gauge of the tufting machine”; (c) “by a selected amount”; (d) “a shift'profile based upon a number of colors of yarn of the pattern” or “a number of colors” or “a number of different yarns” or “a desired number of yarns”; and (e) “an appearance of increased density.” (Doc. 292-2, at 17-18.)
“Indefiniteness is a question of law....” Eli Lilly & Co. v. Teva Parenteral Meds., Inc., 845 F.3d 1357, 1370 (Fed. Cir. 2017). In determining whether a claim is indefinite, “general principles of claim construction apply ....” Id. As such, the Court may make underlying findings of fact based on extrinsic evidence. Id. Because patents are presumed valid, “any fact critical to a holding on indefiniteness .,. must be proven by the challenger by clear and convincing evidence.” One-E-Way, Inc. v. Int’l Trade Comm’n, 859 F.3d 1059, 1062 (Fed. Cir. 2017) (internal quotation omitted). To be definite under 35 U.S.C. § 112 , a claim must “point[] out and distinctly claim[ ]” the invention. § 112, ¶ 2. “A lack of definiteness renders invalid ‘the patent or any claim in suit.’ ” Nautilus, Inc. v. Biosig Instruments, Inc., — U.S. —, 134 S.Ct. 2120, 2125 , 189 L.Ed.2d 37 (2014) (quoting § 282, ¶2(3)). *991 As the Supreme Court has explained, § 112, ¶ 2, requires “that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” 13 Id. at 2129. This requirement “strikes a ‘delicate balance’ between ‘the inherent limitations of language’ and providing ‘dear notice of what is claimed.’ ” Sonix Tech. Co., Ltd. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017) (quoting Nautilus, 134 S.Ct. at 2129 ). After Nautilus, the Federal Circuit clarified the standard further, holding that, to satisfy § 112, ¶2, a claim “must provide objective boundaries for those of skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (citing Nautilus, 134 S.Ct. at 2130 & n.8).
a. “by a selected amount”
Claim 1 of the ’703 Patent provides for forming tufts of yarns in the backing material:
at an effective stitch rate that is determined by increasing a prescribed stitch rate of the patterned tufted article that is based on the gauge of the tufting machine by a selected amount so as to form the patterned articles with the selected tufts of yarns having-an appearance of being formed at the desired stitch rate.
(Doc. 292-1, at 67, col. 9:45-51 (emphasis added).) Slattery opines that the term is indefinite because it “provides no technique for determining the - ‘selected amount[.]’ ” (Doc, 292-2, at 17.) Tufted argues that because both CMC and its expert Steven Berger cannot define the term, it is indefinite. (Doc. .450, 15-16.) After a claim construction hearing the Court construed the term “selected” to mean “chosen in accordance with the pattern.” (Doc. 220, at 19.) Though the Court was cautious to read a limitation into the Severed Claims, it found that this construction was not only consistent with the dictionary definition of “selected,” but also supported by the claim language itself. (Id. at 18-19.)
Construing the term “by a selected amount” to mean “by an amount in accordance with the pattern” provides a technique for determining the “sélected amount,” i.e., the pattern. Moreover, the ’703 Patent’s specification makes clear that “a selected amount” is approximate to the number of colors in the pattern. For example, the specification provides that “[t]ypically,' the operative or effective stitch rate' run' .'., will be approximately equivalent to a desired or prescribed number of stitches per inch ..., multiplied by the number of colors being run in the programmed pattern.” (Doc. 292-1, at 64, col. 3:2-6 (emphasis added); see also id. at 65, col. 5:31-34.) Further, it provides that the “effective stitch rate is substantially faster than conventional stitch rates (i.e., by a factor approximately equivalent to the number of colors being tufted) in order to provide sufficient density for the tufts being fomied in the pattern fields to hide those color yarns not to be shown.” (Id. at 66, col. 8:6-10 (emphasis added).) The specification, therefore, makes clear that the term “by a selected amount” should be a number approximating the number of colors in the pattern, adjusted to achieve *992 the characteristics the customer ultimately wants to see in the finished patterned article. The term “by a selected amount” does not fail to inform those skilled in the art about the scope of the invention.
b. “desired stitch rate”
The term “desired stitch rate,” or its synonyms “desired fabric stitch rate” and “prescribed stitch rate,” 14 appears in Claim 8 of the ’505 Patent, in Claims 21, 22, 27, 28, 29, and 30 of the ’989 Patent, and in Claims 1, 28, and 29 of the ’703 Patent. After the claim-construction hearing, the Court construed the term “desired stitch rate” to mean “the number of tufts of yarn per linear inch dictated by the pattern design to be visible in the face of the pattern.” (Doc. 220, at 4-9.) Despite the Court’s construction, Slattery opines that, unless the term “desired stitch rate” is construed to mean “equal to the gauge of the tufting machine,” 15 the term is indefinite, because “the actual stitch rate applied is a result of several factors including the appearance and weight of samples.” (Doc. 292-2, at 17.) Slattery provides an example:
So, if a 10th gauge sample is tufted at 10 stitches per inch and results in a weight of 20 ounces when the manufacturer was looking for a 24 ounce product, the stitch rate may be increased by 20%. This adjustment results in a stitch rate of 12 stitches per inch, but the desired result might not be the particular stitch rate, but the weight of the face yarn.
(Id.)
The Court concludes that the term “desired stitch rate” does not have to be construed as “equal to the gauge of the tufting machine” to satisfy § 112, ¶ 2. The claim language and specifications clearly indicate that the term “desired stitch rate” is equivalent to the number of yarns per linear inch the designer wishes to be visible in the face of the pattern. For example, Claim 8 of the ’505 Patent provides that the “desired fabric stitch rate ... comprises a number of stitches per inch desired for the patterned tufted, article.” (Doc. 291-1, at 16, col. 10:53-55.) The ’505 Patent’s specification confirms that “the number of high tufts (the colors that are visible in the finished tufted article), generally can be matched to the desired stitch rate for the tufting machine ....” (Id. at 16, col. 9:26-29.)
Where a claim term is subjective, claim language and specifications can provide sufficient guidance to satisfy the definiteness requirement. Sonix Tech., 844 F.3d at 1378 ; Interval Licensing, 766 F.3d at 1371 . Here, the language of the Severed Claims and their specifications provide objective boundaries for those skilled in the art. The specifications clarify that the end goal of the patented methods is a pattern with a full, consistent density across its face. For example, Claim 8 of the ’505 Patent provides that high and low tufts are formed in the patterned tufted article “so as to substantially maintain density of the tufts of yarns being formed in the backing material .... ” (Id. at 16, col. 10:57-59.) The ’505 Patent’s specification provides that “the increased number of stitches per inch will provide sufficient enhanced density between the high and low tufts of the finished patterned tufted article to avoid a missing color or gap being shown or otherwise appearing in the patterned tufted article.” (Id. at 13, col. 3:6-10.) Accordingly, *993 the above language instructs one skilled in the art to avoid gaps in the face of the pattern. Moreover, the claim language and specifications make clear that the desired stitch rate is necessarily a fraction of the effective stitch rate. Claim 21 of the ’989 Patent, for example, provides that the effective stitch rate “comprises increasing the desired stitch rate for .the pattern by a multiple approximately corresponding to a number of colors of yarns used to form the patterned articles.” (Id. at 50, col. 21:45-49.) Accordingly, if the pattern has two colors, the desired stitch rate will be approximately half the effective stitch rate, with three colors, it will be approximately a third, and so on. The ’989 Patent’s specification confirms this: “the operative or effective process stitch rate run by the stitch distribution control system will be substantially higher than such typical conventional desired fabric stitch rates.” (Id. at 44, col. 9:8-11.) The specification even provides examples: “for a tenth gauge machine generally run to achieve a desired fabric stitch rate of approximately ten stitches per inch ... if there are three colors in the pattern, the operative or effective stitch rate .., [will be] approximately thirty stitches per inch .,.(Id., col. 9:19-27.) The fact that the “desired stitch rate” may vary based on customer weight preference does not render the term indefinite. Finally, Tuftco uses synonyms for the term “desired stitch rate,” such as “desired stitches per inch,” in its own user manuals, suggesting that the term does not fail to inform those skilled in the art about the scope of the invention. (See, e.g., Doc. 454-4, at 18.) Accordingly, a person of skill in the art considering the term “desired stitch rate” is provided an objective baseline through which to interpret the Severed Claims and would understand their scope with reasonable certainty.-
c. “a gauge of the tufting Machine”
This term appears in Claims 1, 28, and' 29 of the ’703 Patent.' Claim 1 provides for a machine with “at least one needle bar having a series of needles mounted at a spacing based on a gauge of the tufting machine ....” (Doc. 292-1, at 67, col. 9:19-20.) 16 Claims 28'and 29 provide for methods with a' “prescribed” or “desired stitch rate” that is “based upon a gauge of the. tufting machine ....” (Id. at 68, col 12:26-27, 35-37.) Tuftco did not propose the term “a gauge of the tufting machine” as a disputed claim term' before the claim construction hearing (Doc. 169), so the Court did not construe it. Slattery opines that this term is indefinite with regard to double-needle-bar machines because those machines have multiple “gauges.” (Doc. 292-2, at 17.) For example, a double-needle-bar machine may be “called a 10th gauge machine,” but it also has two l/5th gauge needle bars. (Id.) Because Tuftco did not respond to CMC’s motion for summary judgment on indefiniteness with respect to § 112, ¶ 2, or move for summary judgment on § 112, ¶ 2, in its own summary judgment motion, Slattery’s opinion is the only basis that Tuftco provides for a determination that the term “a gauge of the tufting machine” is indefinite.
As a fact critical to a holding on indefiniteness, Tuftco must prove by clear and convincing evidence that those skilled in the art of tufting consider the gauge of each needle bar to be “a gauge of the tufting machine.” See One-E-Way, 859 F.3d at 1062 . Other evidence of record, including evidence intrinsic to the ’703 Patent, establishes that no reasonable jury could conclude based on Slattery’s opinion *994 alone that there is more than one “gauge of the tufting machine.” The ’703 Patent’s specification notes that a “typical desired stitch 'rate” in- a conventional tufting system “generally has been matched to the gauge of the tufting machine, i.e., for a tenth gauge tufting machine, the: stitch rate typically will be approximately ten stitches per inch .. . .” (Doc. 292-1, at 65, col.,5:22-26.) Further,-it spates “for a tenth, gauge machine generally run using a desired stitch rate of approximately ten stitches per inch,” the effective-stitch rate for a three-color pattern will be “approximately thirty stitches per inch_” (Id,, col. 5:35-42.) Accordingly, it’ is clear that the specification does not contemplate a desired stitch rate'based on the gaugé of a needle bar. Additionally, extrinsic evidence contradicts Slattery’s assertion that there is more than one “gauge of the tufting machine.” For example, in a deposition, Tuftco’s expert Lynne Paige referred to one double-needle-bar machine as “a 12 gauge:,.. That was two needle bars.” (Doc. 435, at 166, 167-68.) Steve Frost, Tuftco’s CEO, testified that how much the needle bars of a double-needle-bar machine are offset “will depend upon the gauge of the tufting machine_ [For a tenth-gauge machine] [i]t would be offset ... -by a tenth.” (Doc. 454-11, at 134 (emphasis added).). This evidence confirms that, although a .double-needle-bar machine may have two needle bars with their own gauges, those skilled in the art understand there is only one “gauge of the tufting machine,” 17 For this reason, the Court concludes that the term “a gauge of the tufting machine” does not fail to inform those skilled in the art about the scope of Claims 1, 28, and. 29 of the ’703 Patent with reasonable certainty.
d. “w shift profile based upon a numbe r of colors of,yam of the pattern” or “a number of colors” or “a member of different yams” or ‘‘a desired-number of yams”
The term “a shift profile based upon a number of colors of yarn of the pattern” appears in Claims 28 and 29 of the ’703 Patent. The term “a number of colors” appears in Claims 21, 27, and 30 of the ’989 Patent. The term “a number of different yarns” appears in Claims 22 and 28 of the ’989 Patent. The term “a desired number of yarns” also appears in Claim 28 of the ’989 Patent.’ Tuftco did not propose these terms as disputed claim- terms before the claim construction hearing (Doc. 169), so the Court did not construe them; Slat-tery opines that these-terms are indefinite because they “do[ ] not define whether it is the total number of different colors or yarns in the pattern or whether it is a number that does not exceed the number in the pattern.” (Doc. 292-2, at 17.)
The cláim language and specifications, however, demonstrate that these terms refer to the number of colors in the pattern being tufted. For example, Claim 21 of the ’989 Patent provides for increasing the desired stitch rate by a multiple corresponding to “a number of colors of yarns used to form the patterned article.” (Doc. 292-1, at 50, col. 21:47-49.) The ’703 Patent specification states that the effective stitch rate is faster “by a factor approximately equivalent to the number of colors being tufted ....” (Id. at 66, col. 8:6-8.) Accordingly, the terms “a shift profile based upon a number of colors of yarn of the pattern,” “a number of colors,” “a number of different yarns,” and “a desired *995 number of yarns” do not fail to inform those skilled in the art about the scope of the invention with reasonable certainty.
e. “an appearance- of increased density”.
This term appears in Claim 28 of the 703 Patent, which provides:
wherein the tufts of yarns are formed in the backing material at an increased effective stitch rate that is at least two times a prescribed stitch rate based upon a gauge of the tufting machine, for the feeding of the backing material for the pattern of the tufted article so as tp form the patterned article with an appearance of an increased density.
{Id. at 68, col. 12:24-30 (emphasis added).) Slattery opines that the term “does not have a reference point, and the method described in the patents appears to be. to create square density, i.e., 10 stitches per inch on a 10th gauge tufting machine, which is a standard density _” (Doc. 292-2, at 18.)
In light of the specifications, the term “an appearance of increased density” does not fail to inform those skilled in the art about the scope of the invention with reasonable certainty. The 703 Patent’s specification makes clear that the 'term refers to a face density that does hot have missing colors or gaps as compared to patterns tufted with conventional methods—not to have a face density" that is necessarily higher than standard density. For example, the specification provides that “the increased numbér of stitches per inch will provide sufficient enhanced density to the finished pattern tufted article to avoid a missing color or gap being shown or otherwise appearing in the patterned tufted article.” {Id. at 64, col. 3:10-13.) Accordingly, the term “an appearance of increased density” informs those skilled in the art about the scope of Claim 28 of the 703 Patent with reasonable certainty.
The Court, therefore, concludes that the Severed Claims are not invalid for indefiniteness and will GRANT CMC’s motion for summary judgment- that the Severed Claims are not indefinite under 35 U.S.C. § 112 , ¶ 2.
ii. Anticipation
Tuftco moves for summary judgment that: (1) the Severed Claims are invalid as anticipated by graphics tufting machines; (2) 'Claim 12 of the ’505 Patent is invalid as anticipated by the Silhouette Carpet and the Thorn Carpet; and (3) Claim 1 of the 703 Patent is invalid as anticipated by conventional tufting machines. CMC cross-moves for summary judgment that the Severed Claims are not anticipated.
1. Standard
Whether a claim has been anticipated under 35 U.S.C. § 102 is a question of fact. ActiveVideo Networks, Inc. v. Verizon Commc’ns, 694 F.3d 1312, 1327 (Fed. Cir. 2012). A claim is invalid as anticipated under § 102 if a single prior art reference contains every claim limitation. Id.
2. Tuftco’s Motion for Summary Judgment
Tuftco makes three arguments in regard to anticipation. First, Tuftco argues that the operation of a single needle bar on a graphics machine, as reflected, in the “Medallion” rug, anticipates the Severed Claims. (Doc. 450, at 23-24.) Second, Tuft-co argues that both the Silhouette Carpet, sold by Dixie Home, and the Thorn Carpet, produced by Tuftco, anticipated Claim 12 of the ’505 Patent. (Id. at 16-19.) Finally, Tuftco insists that conventional tufting machines anticipate Claim 1 of the 703 Patent. {Id. at 19-22.) Tuftco is required to prove by clear and convincing evidence that every limitation of a claim was contained, in a single prior art reference in order to prove anticipation. Zenith Elecs. Corp. v. PDI Commc’n Sys., Inc., 522 F.3d *996 1348, 1363 (Fed. Cir. 2008). To succeed on its motion, Tuftco must show that no reasonable jury would have a legally sufficient basis to find for CMC on Tuftco’s anticipation defense.
a. Graphics Tufting Machines’ Anticipation of the Severed Claims
Tuftco argues that the action of a one needle bar of a graphics machine, 18 which operates with two shifting needle bars and has existed in the tufting industry for thirty-five years, anticipated the Severed Claims. Tuftco relies specifically on the Medallion rug, which was tufted by a graphics machine, described in the 2002 International Carpet Yearbook, and displayed at the 2003 Domotex International Floor Covering and Carpet Show in Hanover, Germany. 19 According to Tuftco:
One needle bar of the graphics tufting machine creating the Medallion design had needles spaced at 5/32nds gauge (6.4 per inch), backing feed rolls feeding a backing material through a tufting zone; a single end scroll yarn feed attachment for feeding yarns to the needles; a needle bar shifter for shifting the needle bar; series of loopers (gauge parts) mounted below the tufting zone to form tufts of yarn in the backing material; and Tuftco’s Win PCCI Operating System to control the yarn feed mechanism and pull selected yarns low. This 5/32nds needle bar carried two different color yarns, was shifting, and made 12.8 penetrations per longitudinal inch as the backing was fed through the machine (twice the gauge of the needle bar). Furthermore, in the areas of the pattern where one of the two yarns carried by the needle bar was pulled low, it produced an appearance of having been tufted at a 5/32nds (6.4 per inch) stitch rate because the low stitches are hidden. Thus the 5/32nds gauge needle bar tufted at a desired stitch rate equal to the gauge of the needle bar and at an effective stitch rate of 12.8 stitches per inch while tufting two colors of yarn—or exactly twice the desired btitch rate.
(Doc. 450, at 24.) In support, Tuftco cites only to deposition testimony by Steve Frost, Tuftco’s CEO, in which he describes the Medallion rug and the method used to produce it in response to a question about when Tuftco began experimenting with compressing stitch rates and displacing color. (Doc. 454-11, at 150-51, 155-57.) Frost’s testimony regarding the Medallion rug states in its entirety:-
Q. Do you recall the first sample or experimentation Tuftco made with compressing stitch rates and displacing color?
A. Yes.
Q. Tell me about that one.
A. Well, we have samples, that I think we’ve produced to you, that are dated in 2001 that—we have some' two-color samples that are tenth-gauge samples with fifteen stitches per inch. We produced this medallion rug, that was in a magazine in 2001 or 2002, that was four colors. It was five-sixty-fourth-gauge composite gauge. Each of the needlebars was five-thirty-second gauge, or six-point-four. needles per inch. We were tyfting twelve-point- *997 eight stitches per inch, which was twice the gauge of each needlebar at that time; but it was certainly not twice the composite gauge. But, again, it was a tradeoff between getting multicolor images into a fabric versus significantly lower output .with a higher stitch rate, as well as, the more colors, the more yarn you’re putting on the back when you’re not showing those colors.
Q. That Two—that 2001 sample, how many colors?
A. Well, one of these was the medallion rug that was four colors, and then we had some two-color samples..
[[Image here]]
A. That particular sample was made in our design center on a two-meter Moog-based PCCI machines sometime in 2001, and' it was depicted in a—I believe—my best recollection is in a 2002 International Carpet Yearbook and described in that article as a four-color rug manufactured on Tuftco’s single-end Servo Scroll machine.
Q. How many colors?
A. Four colors.
Q. Do you know what the effective stitch rate was per longitudinal inch?
A. Well, it will vary in that sample, because we—the sample was twelve-point-four stitches per inch, but there are some areas where there is this tweeding or double density of that. So, in those areas, there are twelve stitches, twelverpoint-four stitches, per longitudinal inch. In other areas, there’s only six-point—excuse me— twelve-point-eight, I should have said. Six-poirit-four in some other areas, where it’s more the single color. But, in that particular sample, we were trying to create so many different looks, in terms of the combination of those four colors, we weren’t always totally burying or trying to hide one end. We were actually trying to. show a whole variation of combinations of colors..
Q. Okay. So your-' effective stitch rate is in the area of twelve-point-eight, you said?
A. Yes. In some areas. In some areas, it’s only six-point-four in terms of what’s really totally at the high pile, but not necessarily only seen.
Q. Gotcha. Was—and that was a shifting needlebar?
A. There was two shifting needlebars.
Q. Double-needlebar machine?
A. Double needlebar. It was five-thirty-second gauge on each needlebar.
Q. Were those needlebars in line with one another, or were they offset laterally?
A. They were offset, but I think the backstitch of that would show that they were basically tufting in the same general direction most of the time.
Q. But not in the same stitch location?
A. No. I mean, not in the way that we described that previously, in terms of every stitch location. There were stitch locations for the front bar and stitch locations for the back bar.
(Id.)
Tuftco has not produced clear and convincing evidence that every limitation of the Severed Claims was contained in the actions of one needle bar of a graphics machine. “Typically, testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses’ interpretation of the claim element, and explain in detail how each claim element is contained in the prior art reference.” 20 *998 Schumer v. Lab. Comput. Sys., Inc., 308 F.3d 1304 , 1315 (Fed. Cir. 2002). In Schumer, in support of its anticipation argument, the alleged infringer, LOS, submitted a declaration from its president that described “his understanding of the operation and steps performed”' by the alleged prior art reference. Id. at 1309, 1316. The prior art reference was developed by LCS and, more specifically, programmed by LCS’s president. Id. at 1309. Relying on the president’s declaration, the district court granted LCS summary judgment of invalidity by anticipation. Id, The Federal Circuit reversed, finding that LCS did not prove by. clear and convincing evidence that the prior art anticipated the claim at issue, because the declaration “[did] not clearly describe the operative steps of the method recited in [the claim at issue], nor how those operative steps [were] performed by the [alleged prior art].” Id.; see also Creative Compounds, LLC v. Starmark Labs., 651 F.3d 1303, 1313 (Fed. Cir. 2011) (affirming a finding that patent was not invalid where movant “failed to provide any testimony from one skilled in the art identifying each claim element and explaining how each claim element is disclosed in the prior art reference”); Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004) (holding that where an alleged in-fringer failed to articulate how a prior art reference anticipates the patent, it has not presented sufficient evidence for a jury to find anticipation “even when the reference has been submitted into evidence”).
Here, Tuftco has failed to provide testimony from one skilled in the art that identifies each claim element of the Severed Claims and explains how each element is contained in the operation of one needle bar of a graphics machine. Similar to the alleged infringer in Schumer, in support of its anticipation argument, Tuft-co merely cites deposition testimony from Steve Frost, its CEO, that describes the Medallion rug and how it was produced. 21 Although Tuftco attempts to articulate how a graphics machine needle bar has anticipated the Severed Claims in its brief—albeit without, identifying each claim element—“arguments of counsel cannot take the place of evidence lacking in the record.” Whitserve, LLC v. Comput. Packages, Inc., 694 F.3d 10, 23 (Fed. Cir. 2012) (internal quotation omitted).
*999 Even if Tuftco’s argument were supported by sufficient evidence, it would still fail. First, Tuftco errs by calculating the effective stitch rate by multiplying the “desired stitch rate” for the pattern by the number of colors one needle bar tufted during the creation of the Medallion rug, ¿a, two. The Severed Claims, with the exception of Claims 28 and 29 of the ’703 Patent, determine the effective stitch rate by multiplying the number of colors in the pattern, not the number of colors one needle bar carries. For example, Claim 8 of the ’505 Patent provides that the effective stitch rate is determined by multiplying the desired stitch rate by “the number of colors being formed in the patterned tufted article —” (Doc. 292-1, at 16, col. 10:51-53.) Frost testified that the Medallion rag contained four colors. (Doc. 454-9, at 150.) Accordingly, to anticipate the Severed Claims, the Medallion rag would have to have been tufted at an effective stitch rate that is four times the purported desired stitch rate (25.6 stitches per inch,-not 12.8), regardless of how many colors each needle bar carries. To hold otherwise would be to ignore the full four-color pattern, reflected-in the Medallion rag and to pretend that only a portion of that pattern existed.
As noted, this conclusion does not apply to Claims 28 and 29 of the ’703 Patent, which do not calculate an effective stitch rate by the number of colors in the pattern. , Claim 28 provides that the effective stitch rate is “at least two times a prescribed stitch rate based upon a gauge of the tufting machine ....” (Doc. 292-1, at 69, col. 12:25-27.) Claim 29 provides for an effective stitch rate “that is increased over a desired stitch rate ... that is based on a gauge of the tufting machine.” (Id. col. 12:35-36.) Tuftco argues that one bar of a graphics machine tufting the Medallion rug accomplished the increased effective stitch rate required by these claims, because the needle bar stitched 12.8 stitches per inch, or twice the “desired stitch rate,” which is based upon the gauge of the needle bar at 6.4 per inch.
However, the record reflects that the tufting industry considers the gauge of a graphics machine to be the composite gauge of both needle bars. For example, in a deposition, Tuftco’s expert Lynnfe Paige referred to Tuftco’s double-needle-bar machine as a “twelfth gauge.” (Doc. 435, at 166, 167-68.) When asked whether the Medallion rug used an “enhanced stitch rate,” she responded: “No. It had a twelve-point-eight stitch rate.” (Doc. 454-11, at 263.) Further, Frost acknowledged “twelve-point-eight stitches per inch .;. was twice the gauge of each needle bar at that time; but it was certainly not twice the-composite gauge.” (Id. at 150-51.) Tuftco does not provide any evidence that the gauge of one needle bar is considered a gauge of the tufting machine by those skilled in the art. See also supra Part III(b)(i)(2)(b). Accordingly, the “desired stitch rate” of Claims 28 and 29 of the ’703 Patent would be based on the gauge of the machine, or approximately 12.8. An effective stitch rate of 12.8 in the Medallion rag is, therefore, not an “increased effective stitch rate” as contemplated by Claims 28 and 29.
The Medallion rag did not anticipate the Severed Claims. Accordingly, the Court will DENY Tuftco’s motion for summary judgment that one needle bar of a graphics machine anticipated the Severed Claims.
b. Claim 12 of the ’505 Patent
Claim 12 of the ’505 Patent provides: “The method of claim 8 and wherein the tufting machine is a 1/10th gauge tufting machine and the desired fabric stitch rate is approximately ten stitches per inch.” (Doc. 292-1, at 17, col. 11:3-5 (emphasis added).) Tuftco relies on two prior art references to argue Claim 12 is anticipat *1000 ed: (1) the Silhouette Carpet; and (2) the Thorn Carpet. 22
i. The Silhouette Carpet
Tuftco argues that the Silhouette Carpet, sold by Dixie Home in 2004, anticipated Claim 12. Relying heavily on a selection of deposition testimony of CMC expert Steven Berger, Tuftco construes Claim 12’s “approximately ten stitches per inch” as “eight to twelve” stitches per inch. 23 Based on this construction, Tuftco concludes that a two-color carpet created on a l/10th gauge machine would anticipate Claim 12 if it has an effective stitch rate between sixteen and twenty-four stitches per inch. The Silhouette Carpet, Tuftco argues, contains all such elements: it is a two-color fabric that was created on a l/10th gauge machine with an effective stitch rate of sixteen stitches per inch.
Tuftco has not demonstrated that a reasonable jury would have no legally sufficient basis to find that the Silhouette Carpet did not anticipate Claim 12. First, Tuftco relies on a definition of “approximately” that is inconsistent with this Court’s claim-construction ruling. A court’s construction of a claim defines the scope of a limitation and guides anticipation analysis. Toro Co. v. Deere & Co., 355 F.3d 1313, 1319 (Fed. Cir. 2004). Following a Mark-man hearing, this Court declined to construe “approximately” when modifying a numeric value, finding that the term should take its ordinary meaning, (Doc. 220, at 13-14.) Accordingly, Tuftco’s premise that “approximately ten” equates to “eight to twelve” is inconsistent with the Court’s construction ruling and should not be relied upon when considering an anticipation defense.
Second, as already noted, “testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses’ interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference.” Schumer, 308 F.3d at 1315; see also ActiveVideo, 694 F.3d at 1329 (finding that where an expert fails to explain how a prior-art reference describes every limitation in a claim, no reasonable jury could conclude that the reference anticipates the claim). Tuftco’s expert Ian. Slattery’s report neither identifies each element of Claim 12 nor explains how each element is contained in the Silhouette Carpet. (Doc. 292-2, at 12, 15-16.) When deposed, Slat-tery acknowledged that his report fails to explain how “every element is met by a single prior-art reference.” (Doc. 454-11, at 288.) Though he opines broadly that the Severed Claims are “invalid due to anticipation” and that “[t]he Silhouette carpet ... anticipates Claims 21 and 28 of the ’989 Patent,” his report never affirmatively states that the Silhouette Carpet anticipated Claim 12 in particular, much less explains in detail how each element of *1001 Claim 12 was contained in the Silhouette Carpet. (Doc. 292-2, at 15-16; see also Doc. 454-11, at 285 (Slattery’s deposition testimony confirming that this section of his report contains the entirety of his opinions regarding anticipation).)
Finally, it is undisputed that the Silhouette Carpet does not contain every limitation of Claim 12. Claim 12 incorporates Claim 8 of the ’505 Patent, which requires “shifting the needle bar transversely according to a programmed shift profile for'the pattern of the tufted article ....” (Doc. 292-1, at 16, col. 10:44-45.) Tuftco does not claim to have evidence that a needle bar shifted to create the Silhouette Carpet. {See Doc. 450, at 18.) It merely argues, without the support of any legal authority, that the absence of needle bar shifting is “virtually"meaningless” because the machine at issue had the capability to shift the needle bar. 24 (Id.) But Federal Circuit precedent requires a prior-art reference to contain each and every claim limitation, without exception, in order to support the defense of anticipation. See, e.g., ActiveVideo, 694 F.3d at 1327; In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012); Net MoneyIN, Inc. v. Veri-Sign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Accordingly, because the Silhouette Carpet-was not-made by shifting the needle bar, as required by Claim-12, it did not anticipate Claim 12.
. ii. The Thorn Carpet
Tuftco-next argues that its Thorn Carpet, made in 2001, anticipates Claim 12. According to Tuftco, the Thorn Carpet was made on a l/10th gauge machine, was created using a shiftable needle bar, and had an effective stitch rate of fifteen stitches per inch. (Doc. 450, at 19.) Even ignoring that an effective stitch rate of fifteen does not fall within the range of sixteen-to twenty-four Tuftco identifies as the breadth of Claim 12, Tuftco fails to meet its’ burden of demonstrating that a reasonable jury would not have a legally sufficient basis to find for CMC. Tuftco relies exclusively oh Slattery’s report for facts underlying its argument. {Id.) As with the Silhouette Carpet, Slattery does not explain how the Thorn Carpet contains every limitation in Claim 12. 25 {See Doc. 292-2, at 16.)
Moreover; there is evidence that the Thorn Carpet does not contain every limitation of Claim 12. First, the design file associated with the Thorn Carpet indicates an effective stitch rate of just twelve. 26 (Doc. 454-12, at 31.) Second, Slattery ac *1002 knowledged that “[i]n: areas of solid color, [the Thorn Carpet] would be half density,’? which is inconsistent with .the increased effective stitch rate required by Claim 12. (Doc. 454-11, at 306.) Finally, GMC’s expert Berger opined that the Thorn carpet “represents nothing more than.a traditional scroll pattern that used a slightly higher stitch rate than normal while leaving all of the. yarns,. including unwanted yarns, in the face.” (Doc. 454-9, at 160.) This is inconsistent with Claim 12’s limitation that requires feeding the yarns so as to, leave only “high tufts,of yarns at desired positions.” (Doc. 292-1, at 16, col. 10:56-60.) Accordingly, there exists .a.genuine issue of material fact as to whether the Thorn Carpet anticipated Claim 12. The Court will, therefore, DENY Tuftco’s motion, for summary judgment that Claim 12 was anticipated.
c; Claim 1 of the■ ’70S Patent
Tuftco again asks the Court to. find anticipation even though it cannot meet its burden under binding precedent. Tuftco argues .that Claim l’s first six limitations are contained in machines predating the Asserted Patents, leaving only the seventh limitation as the unanticipated “invention,” According to Tuftco, because the seventh limitation contains elements that “are merely rudimentary software changes designed to slow down the backing speed in order to increase the stitch rate,” Claim 1 of the ’703 Patent is invalid as anticipated. (Doc. 450, at 22.)
Yet again, Tuftco cites no legal authority for its proposition that a .prior-art-reference need not contain every limitation of a claim in order to anticipate that claim. In contrast, Supreme Court and Fedéral Circuit precedent suggests that claims should not be separated into novel and non-novel elements and that a new combination of old components is patentable. See, e.g., Diamond v. Diehr, 450 U.S. 175, 188 , 101 S.Ct. 1048 , 67 L.Ed.2d 155 (1981) (“It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of' old elements in the analysis.... [A] new combination of steps iñ a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made,”); Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1378 (Fed. Cir. 2005) (“New uses of old products or processes are indeed patentable subject matter.”), Tuftco has failed to establish an issue of material fact in support of its motion, much less to establish by clear, and convincing evidence that every limitation of Claim 1 was contained in a single prior-art reference. Zenith Elecs. Corp., 522 F.3d at 1363 . Accordingly, the Court will DENY Tuftco’s motion for summary judgment that Claim 1 of the ’703 Patent was anticipated.
3. CMC’s Motion for Summary .Judgment
CMC cross-moves for summary judgment of validity as to Tuftco’s anticipation defense and counterclaim as to the Severed Claims. To be granted summary judgment that its patents are not invalid due to anticipation, CMC must show that Tuftco “failed to produce, clear and convincing evidence on an essential element of [anticipation] upon which a reasonable jury could invalidate the patent.” Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955 , 962 (Fed. Cir. 2001).
CMC asserts Tuftco has not provided clear and convincing evidence of anticipation. Tuftco first responds that every Severed Claim, was' anticipated by the operation of one needle bar on its graphics machines. Even' viewing the evidence ‘in the light most favorable to Tuftco, for the same reasons 'explained above in" Part III (b) (ii) (2)(a), Tuftco has not created a disputed issue of material fact that any single prior-art reference anticipated all *1003 the limitations of any of the Severed Claims. No reasonable jury could find clear and convincing evidence that one needle bar in a graphics machine anticipated all Severed Claims. Specifically, Tuftco has not provided testimony from one skilled in the art that identifies each Severed Claim element and explains how each element was contained in the operation of one needle bar of a double-needle-bar machine, as required to prove anticipation. See Schumer, 308 F.3d at 1315. Moreover, Tuftco improperly: (1) calculates the “effective stitch rate” required' by the Severed Claims by multiplying the “desired stitch rate” by the number of colors on one needle bar, when the Severed Claims, other than Claims 28 and 29 of the ’703 Patent, require that the “effective stitch rate” be calculated by the number of colors in the entire pattern-, and (2) uses the gauge of one needle bar to determine the “desired stitch rate,” instead of the gauge of the entire tufting machine, as required by Claims 28 and 29 of the ’703 Patent.
Tuftco next argues that Claims 21 and 27 of the ’989 Patent are invalid as anticipated by the Colortec and Tufted Weaver machines. 27 According to Tuftco, as Ciatos 21 and 27 of the ’989 Patent “merely require the presentation of yarns, rather than seizing tufts of-yarn,” the novelty of these Claims amounts to “determining an effective process stitch rate increased over the desired stitch rate for the pattern.” 28 (Doc. 452, at 25-26.) Tuftco’s expert, Ian Slattery, opines that both the Colortec and Tufted Weaver machines “form the tufts of yarn at an increased effective stitch fate determined by multiplying the number of colors being formed in the patterned tufted article by a'desired fabric stitch fate that comprises a’ number of stitches per inch desired for the patterned] tufted article.” (Doc. 320, at 50.) As such, Tuftco concludes,- Claims 21 and 27 were anticipated by the Colortec and Tufted Weaver machines.
Even viewing the evidence in the light most favorable to Tuftco, no reasonable jury could find anticipation of Claims 21 and 27 of the- ’989 Patent. 29 Slattery’s opinion is based on a construction of “effective stitch rate” that is inconsistent with not only the Court’s prior ruling,'but also Tuftco’s own argument at the Markman hearing (Doc. 219, at 82). After the Mark-man hearing, and by agreement of the parties, the Court defined “effective stitch rate” and “effective process stitch rate” as “the number of-tufts of yarn inserted into *1004 the backing per linear inch in the longitudinal direction.” (Doc. 220, at 3-4 (emphasis added).) Slattery ignores this ruling and uses a definition of “effective stitch rate” that includes not only- the actual insertion of yarn, but also the number of needle , bar strokes. According to Slattery, in the Colortec and Tufted Weaver machines, “a 10th gauge tufting machine with six colors tufting ten visible stitches per inch would require ten stitches per inch multiplied by six colors or sixty yarn presentations corresponding to the ‘effective stitch rate of 60.’ ”.(Doc. 320, at 50 (emphasis added).) Because the ’989 Patent Claims, “merely require the presentation of yarns,” he concludes that they were anticipated by the Colortec and Tufted Weaver machines. (Id. at 52.) Slattery confirms this construction of “effective stitch rate” in deposition testimony:
A: Well, in our Color Tech machine, - every color of yarn is presented in every stitch location.
Q: And, when you say “presented,” - what do you mean?
A: It indexes over the looper that will pick it up if you engage the needle.
.Q: Okay. What if the needle’s not engaged?
A: It’s still being presented.
Q: Is it stitched?
A:' No. But it’s presented.
Q: So it’s presented, but it never actually pierces the backing?
A: That’s right. Yeah.
[[Image here]]
Q: Unwanted stitches aren’t even tufted, are they?
A: No.
(Doc. 454-11, at 290-92.)
A court’s construction of a claim guides anticipation analysis and defines the precise scope of a limitation. Toro Co., 355 F.3d at 1319 . The Court’s construction of “effective stitch rate” requires that the needles actually insert the yarns into the backing, not just “present” them. (Doc. 220, at 4.) Indeed, this requirement is implied in the term “stitch” itself. (Id.) Therefore, Slattery’s report does not establish that the Colortec and Tufted Weaver machines use an “effective-stitch rate” as the Court has interpreted that term in Claims 21 and 27. Because Tuftco presents no other evidence in support of its argument, no reasonable jury could find anticipation of Claims 21 and 27 of the ’989 Patent. Accordingly, the Court will GRANT CMC summary judgment that the Severed Claims are not invalid by anticipation.
iii. Obviousness
Next, CMC moves for summary judgment of validity, asserting that there is no genuine issue of material fact and that the Severed Claims are not invalid for obviousness under 35 U.S.C. § 103 .
1. Standard
Under 35 U.S.C. § 103 , a patent is invalid if “the differences between the subject matter sought to be patented 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.” “To invalidate a patent claim based on obviousness, a challenger must demonstrate by clear and convincing eyidence 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.” ActiveVideo, 694 F.3d at 1327 (internal quotation marks omitted).
Obviousness under § 103 is a question of law based on determinations of underlying facts. Id. The underlying factual determinations, often referred to as the Graham factors, include: 1) “the scope and content of the prior art[;]”.2) differences between the prior art and the claims *1005 at issue[;]” 3) “the level of ordinary skill in the pertinent art[;]” and 4) relevant secondary considerations,- such as “commercial success, long felt but unsolved needs, failure of others, etc.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 , 127 S.Ct. 1727 , 167 L.Ed.2d 705 (2007) (quoting Graham v. John Deere Co., 383 U.S. 1, 17-18 , 86 S.Ct. 684 , 15 L.Ed.2d 545 (1966)). All four Graham factors bear weight on the obviousness analysis. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016).
2. Analysis
CMC asserts that it is entitled to summary judgment on the Severed Claims because Tufteo cannot prove obviousness by clear and convincing evidence based on the record. Tufteo responds that: (1) secondary considerations of non-obviousness should prevent summary judgment for CMC on all of the Severed Claims; and (2) Claims 21 and 27 of the ’989 Patent are invalid as obvious.
a. All Severed Claims
Tufteo first argues that CMC should be denied summary judgment of validity on all Severed Claims. (Doc. 452, at 35-38.) However, Tufteo does not discuss the first three Graham factors of obviousness. (Id.) Instead, Tuftco’s only explicit argument in favor of obviousness of all of the Severed Claims relies exclusively on the fourth Graham factor—secondary considerations. (Id.) Secondary considerations of non-obviousness involve objective indicia, such as commercial success, long-felt need, industry praise, failure of others, unexpected results, licensing, skepticism, and copying. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012). Tufteo argues that CMC should be denied summary judgment because these secondary considerations alone preclude a finding of non-obviousness. Tufteo points to record evidence that, over a period of three and a half years, the total amount of ColorPoint and ColorTuft fabrics produced by a large carpet manufacturer, a customer of the parties, amounted to less than .5% of its total carpet production. (Doc. 435, at 190-91.) Additionally, Tufteo cites evidence suggesting that two of CMC’s customers rarely make Color-Point fabrics with their ColorPoint machines and have had some technical issues with the machines. (See, e.g., id. at 188-89, 291.) Tufteo contends these facts establish ColorPoint is not a commercial success and that there was no long-felt need for the product, as contemplated in the fourth Graham factor.
The Federal Circuit has made clear that “objective considerations of non-obviousness must be considered in every case.” WBIP, 829 F.3d at 1328 (emphasis in original). This precedent, however, requires analysis of secondary considerations before holding a patent ‘invalid. See, e.g., TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1343 (Fed. Cir. 2010). Tufteo does not cite, and the Court is unaware of, any case law suggesting the inverse: that secondary considerations alone can defeat a motion for summary judgment that a patent is valid. Tufteo simply does not argue that all the Graham factors—properly weighed— could result in a factual finding supporting a legal ruling of. obviousness. Given that “the strength of each of the Graham factors must be weighed in every case and must be weighted en route to the final determination of obviousness or non-obviousness,” the Court finds that secondary considerations of non-obviousness, alone, cannot support a finding of obviousness. 30 *1006 WBIP, 829 F.3d at 1328 ; see also Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1299 (Fed. Cir. 2012) (declining to consider evidence of secondary considerations of non-obvio.usness . after the .court, concluded that the prior art would not have provided one of, ordinary skill with a reason or motivation to make the claimed invention).
Although' Tuftco does not cite its expert’s report in' opposing summary- judgment (Doc. 432, at 35-38; Doc. 452, at 35-38), the Court will consider it. With regard to obviousness, Slattery’s report states in its entirety:
B. Prior Art Carpets, Industry Design Practices and Software, and Color Placement Techniques Render The Asserted Claims Obvious. '
47. In the carpet industry, the stitch rate of the carpet is readily recognized as a variable factor that can be used to alter the weight and stitch density of tufted fabrics.. Shifting' needlebars has been recognized as a technique to place yarns from different needles in different longitudinal columns of stitches, and particularly to place colors from different-needles in the same row of stitches. Shifting patterns such as 0, +1 or 0,0, +1, + 1, or 0,0, +1, +1,0,0,—1,-1 can all be used to effectively place two different yarns from adjacent needles in the same longitudinal row so that each yarn penetrates the backing in a group of two needle bar reciprocations. 48. In a more complex situation, Smith, el al., Tufting Machine and Process of Variable Stitch Rate Tufting, U.S. Patent No. 7,426,895, teaches the use of the backing feed drive to maintain a relatively uniform yarn tuft density. While Smith was primarily directed at a method of tufting involving changing the backing feed rates throughout the course of tufting.a pattern, -it is also noted at Col. 5, line 53:
The backing may be fed at a variable rate when tufting rows of high and low yarn bights so that the backing is advanced in smaller increments when rows of low pilé height bights are tufted and the backing is advanced at a relatively greater' distance when rows of 'high pile bights of yarns are tufted. In this fashion the resulting fabric maintains a somewhat uniform density of face yarns even though high and low pile heights are being tufted.
49. Once precision yarn feed control was available, it became obvious to persons' of ordinary skill that ColorTec-type or Axminster type patterns could be manufactured on tufting machines with servo controlled yarn feed mechanisms -and backing feeds with high/low yarn feeds, and compensating for yarn tuft density by adjusting the backing fabric feed rates.
(Doc. 292-2, at 16—17.) Slattery fails to consider the Graham factors relevant to an obviousness inquiry. His report does not fully consider the scope and content of the Smith patent or any other prior art, explain the differences between prior art and the Severed Claims, expound the level of ordinary skill in the tufting industry, or consider relevant secondary considerations. See KSR, 550 U.S. at 406 , 127 S.Ct. 1727 . The Federal Circuit has repeatedly noted that conclusory statements that a patent is invalid do not raise a genuine issue of material fact, even if they mention alleged prior art. See, e.g,, Creative Com *1007 pounds, 651 F.3d at 1313 ; Koito, 381 F.3d at 1152 ; Schumer, 308 F.3d at 1315-16; Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1353 (Fed. Cir. 2001). 31 In fact, “to accept confusing or generalized testimony as evidence of invalidity is improper.” Schumer, 308 F.3d at 1316. Because Slat-tery’s report fails to articulate how alleged prior-art references make the claims at issue obvious, it fails to create a genuine issue of material fact.
b. Claims 21 and 27 of the ’989 Patent
Finally, with regard to Tuftco’s assertion that Claims 21 and 27 of the ’989 Patent are obvious, its evidentiary basis is unclear. Tuftco’s ’.argument regarding these claims is tacked onto its argument that Claims 21 and 27 are anticipated. (Doc. 452, at 26 (“If for any reason these claims are not deemed to be anticipated, they are nonetheless obvious under Section 103 .... ”).) Tuftco cites the text of the statute, 35 U.S.C. § 103 , and states the four Graham• factors, but offers no other argument. The Court will assume Tuftco is relying on the same evidence cited in its anticipation argument, ie., Slattery’s invalidity report. (Doc. 320, at 48-53.) As already noted,. Slattery’s report is insufficient to raise a genuine issue of material fact on the issue of obviousness, and, as such, Tuftco’s argument that Claims 21 and 27 of the ’989 Patent are obvious fails.
CMC has met its burden of demonstrating that it is entitled to summary judgment as a matter of law on validity of the Severed Claims .with respect to obviousness, and Tuftco has not provided sufficient evidence of obviousness to prevent summary judgment Accordingly, the Court will GRANT summary judgment in favor of CMC that the Severed Claims are not invalid due to obviousness.
iv. Ineligibility Under § 101
Next, CMC moves for summary, judgment that the Severed Claims are not invalid as ineligible under 35 U.S.C. § 101 . Tuftco responds that the Severed Claims are invalid under § 101 because they attempt to patent the abstract idea of high-stitch-rate tufting, rendering them ineligible for patent protection.
1. Standard
Invalidity under 35 U.S.C. § 101 is a question of law. In re Comiskey, 554 F.3d 967, 975 (Fed. Cir. 2009). A patent may be obtained under § 101 for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101 . The Supreme Court and the Federal Circuit, however, have long recognized § 101’s implicit exception that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 , 133 S.Ct. 2107, 2116 , 186 L.Ed.2d 124 (2013)). A two-step inquiry resolves whether a patent is ineligible under § 101. First the Court should “determine whether the claims at issue are directed to a patent-ineligible concept.” Id. (quoting Alice Corp. v. CLS Bank Int’l, — U.S. —, 134 S.Ct. 2347 , 2355, 189 L.Ed.2d 236 (2014)). If the claims are directed toward such a concept, the Court should then “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of *1008 the claim’ into a patent-eligible application.” Id. (quoting Alice, 134 S.Ct. at 2355 ).
As for the first inquiry, neither the Supreme Court nor the Federal Circuit has established a definitive rule governing whether a claim is directed toward an “abstract idea.” Id. Instead, a court should compare the claims at issue with claims found to be directed to an abstract idea in other cases. Id. For example, “fundamental economic and conventional business practices are often found to be abstract ideas ....” Id. at 1335. A claim that merely involves an abstract idea, however, does not necessarily fail step one “because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon .... ” Id. (emphasis in original). Rather, the Court should consider “whether the claims ... focus on a specific means or method ... or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In other words, “claims that amount to nothing significantly more than instruction to apply an abstract idea are not patent eligible.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 809 F.3d 1282, 1285 (Fed. Cir. 2015) (emphasis in original).
2. Analysis'
Tuftco argues' that the Severed Claims attempt to patent the abstract idea of high-stitch rate-tufting, rendering them ineligible for patent protection under § 101. (Doc. 452, at 29-35.) According to Tuftco, CMC’s patents claim the idea of carpets manufactured with increased stitch rates and use conventional tufting methods to accomplish an increased stitch rate. In support, Tuftco relies heavily on Alice Corp. v. CLS Bank International, — U.S. —, 134 S.Ct. 2347 , 189 L.Ed.2d 296 (2014). In Alice, the Supreme Court held that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” 134 S.Ct. at 2358 . Similarly, Tuftco argues, the use of a conventional tufting machine to achieve higher stitch rates cannot transform the abstract idea of higher stitch rates into a patent-eligible invention. In other words, attempting to claim the abstract idea of high-stitch-rate tufting “while adding the words ‘apply it with a [Conventional tufting machine]’ ” is not sufficient for patent eligibility. See id. .
Tuftco’s position stretches Alice’s, holding too far. The Supreme Court’s holding in Alice was directed at step two of the § 101 inquiry and, therefore, necessarily requires that the claim at issue be directed at an abstract idea, Tuftco takes step one for granted and assumes that the Claims are directed to the idea of high-rate stitching, then focuses almost entirely on step two: whether the Claims contain an inventive concept sufficient to transform the idea of high-rate stitching into an eligible claim. Tuftco devotes substantial argument to discussing established methods for achieving relatively high stitch rates, but never bothers to establish step one of the § 101 inquiry.
Before considering step two, the Court must first determine whether the focus of the Severed Claims as a whole is directed to the idea of high-rate stitching. The Federal Circuit’s decision in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), is helpful to the determination. In Enfish, the court considered whether patents claiming a logical model for a computer database were directed to an abstract idea. 822 F.3d at 1335-38 . The Federal Circuit found that the claims were directed to “a specific improvement to the way computers operate, embodied in the self-referential table,” not to the abstract idea of *1009 “organizing information using tabular formats.” Id. at 1336-37 . In other words, the claims in Enfish were patent-eligible because they were not directed to just any form of storing data, but to a specific way of storing data. Additionally, the court emphasized that the claimed tables “function[ed] differently than conventional database structures.” Id. at 1337 .
Applying the Federal Circuit’s principles here demonstrates that the Severed Claims are not directed toward the abstract idea of high-stitch-rate tufting. They do not claim the production of all carpets with relatively high stitch rates. Instead, they claim a specific way of achieving a high stitch rate—a manner of stitching far more yarns per longitudinal inch than in conventional tufting systems, then pulling yarns not wanted in the face of the pattern out of the backing or so low they cannot be seen. This results in a fabric where only the desired stitches in the face of the pattern can be seen and allows for greater precision in creating patterns. Moreover, like the claimed tables in Enfish, a tufting machine performing the Severed Claims “functions differently than conventional [tufting machines].” Id. Traditional techniques for achieving higher stitch rates are not coupled with the technique of pulling low or completely removing yarns that are not desired to be shown in the face of the pattern, while maintaining an increased surface density. Even if Tuftco correctly asserts that the Claims use conventional tufting machines, 32 it has presented no evidence to suggest that’ these- tufting machines perform purely conventional steps. And, though the Claims unquestionably involve increased stitch rates, “an invention is not rendered ineligible for patent simply because it involves an abstract concept.” Alice, 134 S.Ct. at 2354 . 33
Because the Claims are not directed to an abstract idea under step one of the § 101 analysis, the Court does not need to proceed to step two. Enfish, 822 F.3d at 1339 . Accordingly, the Court will GRANT CMC summary judgment of eligibility under 35 U.S.C. § 101 .
v. Lack of Enablement
In its response to CMC’s motion for summary judgment, Tuftco argues that the Severed Claims are invalid due to a lack of enablement. In reply, CMC argues that the Court should not consider this argument because it is being raised for the first time in Tuftco’s response brief. CMC notes that Tuftco did not raise this defense in its response to CMC’s interrogatories (Doc. 292-4, at 4-6), its invalidity contentions (id. at 32-91), its expert reports (Doc. 292-2; Doc. 292-3, at 1-17), or its opening brief in support of its motion for summary judgment (Doc. 450).
Many district courts refuse to consider summary judgment arguments not made in a party’s invalidity contentions. See, e.g., WCM Indus., Inc. v. IPS Corp., No. 2:13- cv-02019, 2015 WL 5821639 , at *10 (W.D. *1010 Tenn. Oct. 5, 2015). Those districts, however, typically have a local patent rule requiring that disclosure of invalidity contentions be served on the opposing party. See id. (citing W.D. Tenn. Local Patent Rule 3.5(d)). The Eastern District of Tennessee has no such rule. Nonetheless, Tuftco had an obligation under Federal Rule of Civil Procedure 26(e) to supplement both its expert reports and its interrogatory responses in a timely manner if they were incomplete, or.,- incorrect. Under Rule 37(c)(1) of the Federal Rules of Civil Procedure, a party who fails to supplement under Rule 26(e) “is not allowed to use that information ... to supply evidence on a motion .., unless the failure was substantially justified or is harmless.” Moreover, the Sixth Circuit 34 has recognized that a district court’s ability’to strike a document under Rule 37(c)(1) due to failure to comply with Rule 26(e) “does not require a showing of bad faith by the offending party.” Emanuel v. Cty. of Wayne, 652 Fed.Appx. 417, 424 (6th Cir. 2016) (citing Youn v. Track, Inc., 324 F.3d 409, 421 (6th Cir. 2003)).
Tuftco has not shown that its failure to comply,,with Rule 26(e) “was substantially justified or is harmless.” While this matter has been pending since October 2014, Tuftco’s deadline to disclose expert testimony for its iriyalidity claims was August 19, 2016, and the discovery period ended on October 10, 2016. (Doc. 228.) Despite these deadlines, Tuftco raised its enablement argument for the first timé in' its response to CMC’s motion for summary judgment, filed on November 28, 2016. (Doc. 319.) And it has offered no justification for this delay, either in its filings (Doc. 452, at 38-40) or in response to the Court’s in-person questioning (Doc. 474, at 40-43). Indeed, Tuftco’s enablement argument re lies on deposition testimony taken before the end of the discovery period, so it is difficult to imagine a justification for the failure .to supplement, interrogatory responses or invalidity contentions. More-, oyer, Tuftco’s untimely argument is not. harmless. CMC had no notice that Tuftco would assert that CMC’s patents were invalid due to lack of enablement until after not only the close of the discovery period but also the deadline for filing dispositive motions. Accordingly, the Court will not consider Tuftco’s argument that the Asserted Patents are invalid due to a lack of enablement.
Even if the Court were to consider Tuftco’s argument, it would still fail. “Enablement is a question of law ... based on underlying factual, inquiries.” Cephalon, Inc. v. Watson Pharm., Inc., 707 F.3d 1330, 1336 (Fed. Cir. 2013). To meet the enablement standard, a person of ordinary skill in the art, having read the specification, must be able to practice the invention without “undue experimentation.” Id, Determining whether experimentation is undue involves weighing factual considerations such as:
(l) 'the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability' or 'unpredictability of the art,- and (8) the breadth of the claims.
Id. (quoting In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)), However, “a reasonable amount of routine experimentation required to practice a claimed invention does not violate the enablement requirement.” Id.; cf. White Consol. Indus., Inc. v. Vega Servo-Control, Inc., 713 F.2d 788, 791 *1011 (Fed. Cir. 1983) (finding experimentation undue where an expert testified it would take from eighteen months to two years to practice the invention). Moreover, “[b]e-cause we must presume a patent enabled, the challenger bears, the burden, throughout the litigation, of proving lack of enablement by clear and, convincing evidence.” Cephalon, 707 F.3d at 1337 .
In support of its lack of enablement argument, Tuftco notes that some Severed Claims require that tufts of yarn either be pulled low or removed from the backing. For example, Claim 24 of the ’989 Patent provides for “controlling feeding of the yarns ... to pull such yarns low or remove them from the selected stitch locations.” (Doc. 292-1, at 50, col. 22:14-16.) CMC’s expert Steven Berger, however, testified that the “goal” of ColorPoint is to pull unwanted or unused yams all the way out of the backing. (Doc. 320, at 56-57.) Wilton Hall, a named inventor of the Asserted Patents, similarly testified that “[i]f you’re trying to pull something down really low, essentially,"to not see it, it’s basically pulling it out.” (Doc. 454-12, at 98.) Charles Monroe, CMC’s CEO, testified that with the ColorPoint method, “[f]or the most part, you’re going to have to pull [the tufts] out of the backing or not leave them in the backing.” (Doc. 320, at 43.) According to Tuftco, this deposition testimony “reveal[s] that pulling yarns low is not a viable option when creating ColorPoint-type fabrics under the Asserted Patents.” (Doc. 452, at 39.)
Tuftco fails to raise a genuine issue of material fact - concerning enablement. First, much 'of the testimony cited by Tuftco concerns ColorPoint, the commercial embodiment of the Severed Claims. The Federal Circuit has “repeatedly warned” against confining claims to their commercial embodiments. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). Moreover, the ’505 Patent’s specification provides that:
for each color to be taken out or back-robbed .and thus hidden in the finished patterned article, the increased number ,of stitches per inch will provide sufficient enhanced density between the high and low tufts .of the finished patterned tufted article to avoid a>missing color or gap being shown or otherwise appearing in the patterned article.
(Doc. 292-1, at 64, col. 3:8-13.) Thus, the specification clarifies that' the goal of the Severed Claims is to avoid- a missing color or gap in the finished patterned tufted article, not necessarily, to completely remove yarns from selected stitch locations. While avoiding a missing color or gap in the finished pattern may involve some amount of experimentation, Tuftco does not present any evidence—much less clear and convincing evidence—to show that the experimentation is “undue.” As such, Tuftco’s enablement argument fails. 35
3. Limiting “Invention” to Colorr Point Software
In the. alternative to summary judgment of invalidity, Tuftco moves for partial summary judgment “limiting the ‘invention’ in the Asserted Patents to the ColorPoint software.” (Doc. 450, at 25-27.) Tuftco argues that, because the first six subsections and parts of the seventh subsection of Claim 1 of the ’703 Patent claim preexisting technology, 36 the Court should enter an order limiting the “invention” in the As *1012 serted Patents to the portion of Claim 1 that is “new”—the software that converts a “prescribed stitch rate” into an “effective stitch rate.” (Id.)
Tuftco fails to demonstrate that it is entitled to summary judgment. First, Tuft-co does not cite any legal authority for the proposition that the Court may enter an order limiting the “invention” in a patent or set of patents to a certain claim element. (Id.; Doc. 474, at 86-88.) Second, the Court has already noted that: 1) claims should not be separated into old and new elements; and 2) a new combination of old components is patentable. See supra Part III(b)(ii)(2)(c). Indeed, “inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR, 550 U.S. at 418-19 , 127 S.Ct. 1727 . Accordingly, the Court will DENY Tuftco summary judgment limiting the “invention” in the Asserted Patents to the ColorPoint software.
4. Infringement
Tuftco seeks summary judgment of non-infringement of all of the Severed Claims. Additionally, Tuftco independently seeks summary judgment of non-infringement on Claims 1, 28, and 29 of the ’703 Patent. CMC seeks summary judgment of infringement of the Machine Claim (Claim 1 of the ’703 Patent) and the following Method Claims: (1) ■ Claims 8, 10, and 12 of the ’505 Patent; (2) Claim 28 of the ’703 Patent; and (3) Claims 21 and 27 of the ’989 Patent.
i. Standard
Under 35 U.S.C. § 271 (a), “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.” An infringement analysis involves two steps. “First, the court determines the scope and meaning of the asserted patent claims.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1318 (Fed. Cir. 2011). Better known as claim construction, the first step is a question of law. Id. at 1319 . Next, the court “compares the properly construed claims to the allegedly infringing device to determine whether all of the claim limitations are present, either literally or by a substantial equivalent.” Id. at 1318-19 . “[[Infringement, whether literal or under the doctrine of equivalents, is a question of fact.” Id. at 1319 . Summary judgment is proper “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.” Id. (internal quotation marks omitted).
ii. Tuftco’s Motion for Summary Judgment of Non-Infringement
An accused infringer is entitled to summary judgment if it shows “that the patentee failed to put forth evidence to support a finding that a limitation of the asserted claim was met by the structure in the accused devices.” Johnston v. IVAC Corp., 885 F.2d 1574, 1578 (Fed. Cir. 1989).
1. All Claims
Tuftco argues it is entitled to summary judgment of non-infringement on all Severed Claims because the Accused Products do not convert a programmed desired stitch rate to determine an effective stitch rate. 37 Tuftco’s argument requires that the *1013 Court reconsider its claim-construction ruling refusing to limit the term “desired stitch rate” 38 to a particular numerical value entered into the control system. (See Doc. 220, at 4-9.) In its ruling, the Court construed the term to be defined as “the number of tufts of yarn per linear inch dictated by the pattern design to be visible in the face of the pattern.” (Id.) Tuftco requests reconsideration on three bases: (1) “subsequently developed evidence,” (2) “the prohibition of patenting mental processes,” and (3) “the prosecution history of the Patents-In-Issue.” (Doc. 450, at 35.)
A district court may reconsider an interlocutory order where “there is (1) an intervening change of controlling law; (2) new evidence available; or (3) a need to correct clear error or prevent manifest injustice.” Louisville, Jefferson Cty. Metro Gov’t v. Hotels.com, L.P., 590 F.3d 381, 389 (6th Cir. 2009) (internal quotation omitted); see also Flexsys Am. LP v. Kumho Tire U.S.A., Inc., 726 F.Supp.2d 778, 786-87 (N.D. Ohio 2010) (construing a request to revisit a claim-construction ruling as a motion for reconsideration under Sixth Circuit law and applying the foregoing three factors). Further, “parties cannot use a motion for reconsideration to raise new legal arguments that could have been raised before [the order] was issued.” Roger Miller Music, Inc. v. Sony/ATV Publ’g, LLC, 477 F.3d 383, 395 (6th Cir. 2007) (citation omitted). Accordingly, the Court will not consider Tuftco’s arguments pertaining to the prohibition of patenting mental processes and prosecution history because they: (1) are not contemplated by the three situations in which' a district court may reconsider an interlocutory order; and (2) were raised for the first time in Tuftco’s motion for reconsideration (see Doc. 174, at 11-14; Doc. 182, at 4-6). 39 The Court will, however, consider Tuftco’s “subséquently developed evidence,” which consists of a number of admissions made by CMC during the course of discovery.
Tuftco’s “new” evidence, being external to the patent and prosecution history, is extrinsic. See Phillips, 415 F.3d at 1317 . Where the analysis 'of intrinsic evidence alone resolves ambiguity about a term, it is improper for the Court to consider evidence outside the patent and prosecution history. Kara Tech., Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009). Because the Court relied on claim language in construing the term “desired stitch rate” (Doc. 220, at 7), it is improper to reconsider that ruling based on the evidence Tuftco now provides. See id, (“While helpful, extrinsic sources ... cannot overcome more persuasive intrinsic evidence.”);, see also Chien-Lu Lin v. Twins Enter., Inc., No. CV 01-07390, 2002 WL 34455514 , at *15 n.48 (C.D. Cal. Nov. 12, 2002) (considering admissions in a party’s claim-construction chart as extrinsic evidence and refusing to consider it where claim terms were unambiguous).
Second, each piece of subsequently developed evidence Tuftco presents is an ad *1014 mission based on the operation of GMC’s ColorPoint tufting machine. For example, CMC admitted that “ColorPoint machines determine and operate at an effective stitch rate.” (Doc. 292-4, at 29.) In accordance with Federal Circuit precedent, the Court will not- construe terms so as to confine the Claims to their commercial embodiment—here, ColorPoint tufting. machines. Phillips, 415 F.3d at 1323 ; Int’l Visual Corp. v. Crown Metal Mfg. Co., 991 F.2d 768, 771-72 (Fed. Cir. 1993). Accordingly, admissions as to-the operation of ColorPoint tufting machines are not compelling enough evidence for the Court to reconsidér its claim-construction ruling. The Court will therefore DENY Tuftco summary judgment of non-infringement on all the Severed Claims.
2. Claims 1, 28, and 29 of the ’703 Patent
Next, Tuftco seeks summary judgment on Claims 1, 28, and 29 of the '703 Patent, arguing that its machines do not perform critical elements of the '703 claims. Tuftco asserts that, given the prosécution history of the '703 Patent, the term “based on the gauge of the tufting machine” should be construed as “equal to the gauge of the tufting machine.” (Doc. 450, at 27-34.)
Tuftco’s argument fails for a number of reasons. First and foremost, Tuftco does not cite any evidence indicating that its products do not perform the elements of the '703 claims. In eight pages' of argument, Tuftco does not make one evidentia-ry citation to the Accused Products. (Id.) As noted, to be entitled to summary judgment, Tuftco must show “that [CMC] failed to put forth' evidence to support a finding that a limitation of the asserted claim was met by the structure in 'the accused devices.” Johnston, 885 F.2d at 1578 . Without any mention of the “accused devices,” Tuftco fails to meet its burden on summary-judgment.
Moreover, Tuftco’s reading of the prosecution history is unconvincing. For example, Tuftco notes that the PTO rejected as indefinite a limitation that read: “the tufts of yarns are formed in the backing material at an increased effective process stitch rate based upon a desired stitch rate of the pattern tufted article multiplied by the number of different color yarns of the pattern ...” (Doc. 292-4, at 113 (emphasis altered).) Tuftco argues the December 22, 2011 Office Action demonstrates that the PTO believed that “based upon” was indefinite “relative terminology.” However, the PTO’s issue -with the original claim language was not necessarily the term “based upon,” but that “desired stitch rate”—and by extension “effective process stitch rate”—was undefined and could be interpreted as any stitch rate, subjecting the claim to anticipation and indefiniteness concerns. 40 (See id. at 113-14.) Additionally, the PTO noted that if the “number of different color yarns, of the pattern” was one, the effective process stitch rate would be the same as the desired stitch rate. (Id. at 114.)
The amended language in Claim 1 of the ’703 Patent provides that the effective stitch rate “is determined by increasing-a prescribed stitch rate of the patterned tufted article that is based on the gauge of the tufting machine by a selected amount ...(Doc. 292-1, at 67, col. 9:46-49 (emphasis added).) The amended claim language ties the prescribed stitch rate to a *1015 numerical value—ie., the gauge of the tufting machine.' Further, it defines “prescribed stitch rate,” and by extension “effective stitch rate.” Additionally, Claim 1 specifies that it forms patterned tufted articles with multiple colors, i.e.; patterns “including different color yarns therein,” ensuring that the prescribed stitch rate and effective stitch rate will not be equivalent. (Id., col. 9:17-18.) Accordingly, the Court finds that the prosecution history of the 703 Patent does not compel a construction of “based upon the gauge of the tufting machine” as “equal to the gauge of the tufting machine.” 41 The Court will, therefore, DENY Tufteo summary judgment of non-infringement of Claims 1, 28, and 29 Of the 703 Patent.
iii. CMC’s Motion for Summary Judgment of Infringement
CMC moves for summary judgment of infringement on: (1) Claims 8, 10, and 12 of the ’505 Patent; (2) Claims 1 and 28 of the 703 Patent; and (3) Claims 21 and 27 of the ’989 Patent. 42 A patentee may be granted summary judgment of infringement if it can show that it is “more likely than not” that the accused product possesses all of the elements of the asserted claim. Warner-Lambert Co. v. Teva Pharm. USA, Inc., 418 F.3d 1326, 1341 (Fed. Cir. 2005) (citing Liberty Lobby, 477 U.S. at 252 , 106 S.Ct. 2505 ). Once a patentee has made this prima facie showing that all claim limitations are met, the accused infringer must present more than a scintilla of evidence to create a genuine issue of material fact. Id.
1. Inspected Machines Representative of All Accused Products
Before the. Court turns to the infringement analysis, it will consider CMC’s argument that the Inspected Machines, inspected by its expert Steven Berger in preparation of his expert report, are representative of , all of the Accused Products. Tufteo does not respond (see Doc. 452) and acknowledged at the summary judgment hearing that the Inspected Machines are “typical” of the Accused Products (Doc. 474, at 80-81). 43 Berger based his opinions on five machines either sold or owned by Tufteo: three 1/10th gauge single-needle-bar machines, one 1/12th composite gauge double-needle-bar machine with two staggered 1/6th gauge needle bars, and one 1/10th composite gauge mac

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/7244926. Public record. Not legal advice.