Petition for Writ of Certiorari — Petter Investments, dba Riveer, Petitioner v. Hydro Engineering

APPENDIX

i

APPENDIX

TABLE OF CONTENTS

Appendix A Judgment in the United States Court

of Appeals for the Federal Circuit

(September 11, 2017) . . . . . . . . . . App. 1

Appendix B Order Granting Defendants’ Motion

for Rule 54(b) Final Judgment,

Denying Defendants’ Motion for

Attorney Fees, and Denying the

Remainder of Plaintiff’s Motion to

Reconsider in the United States Court

for the District of Utah, Central Division

(July 18, 2016) . . . . . . . . . . . . . . . App. 3

Appendix C Judgment in a Civil Case in the

United States District Court, Central

Division for the District of Utah

(August 15, 2016) . . . . . . . . . . . . . App. 9

Appendix D Memorandum Decision and Order in

the United States Court for the

District of Utah, Central Division

(June 30, 2015) . . . . . . . . . . . . . . App. 10

Appendix E Memorandum Decision and Order in

the United States Court for the

District of Utah, Central Division

(January 9, 2015) . . . . . . . . . . . . App. 21

Appendix F Order Denying Petition for Panel

Rehearing in the United States Court

of Appeals for the Federal Circuit

(October 25, 2017) . . . . . . . . . . . App. 33

App. 1

APPENDIX A

NOTE: This disposition is nonprecedential.

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

2016-2634

[Filed September 11, 2017]

__________________________________________

PETTER INVESTMENTS, DBA RIVEER, )

Plaintiff-Appellant

)

)

v.

)

)

HYDRO ENGINEERING,

)

Defendant-Appellee

)

)

CALIFORNIA CLEANING SYSTEMS,

)

Defendant

)

_________________________________________ )

Appeal from the United States District Court for the

District of Utah in No. 2:14-cv-00045-DB-DBP, Senior

Judge Dee V. Benson.

______________________

JUDGMENT

______________________

STEPHEN M. LOBBIN, One LLP, Newport Beach, CA,

argued for plaintiff-appellant.

App. 2

MARK A. MILLER, Holland & Hart LLP, Salt Lake

City, UT, argued for defendant-appellee. Also

represented by BRETT L. FOSTER.

THIS CAUSE having been heard and considered, it is

ORDERED and ADJUDGED:

PER CURIAM (DYK, LINN, and HUGHES, Circuit

Judges).

AFFIRMED. See Fed. Cir. R. 36.

ENTERED BY ORDER OF THE COURT

September 11, 2017

Date

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

App. 3

APPENDIX B

IN THE UNITED STATES COURT

FOR THE DISTRICT OF UTAH

CENTRAL DIVISION

Case No. 2:14-CV-45-DB

[Filed July 18, 2016]

_______________________________________

PETTER INVESTMENTS, INC. d/b/a

)

RIVEER, a Michigan corporation,

)

Plaintiff,

)

)

vs.

)

)

HYDRO ENGINEERING, INC., a Utah )

corporation; CALIFORNIA CLEANING )

SYSTEMS, INC., a California company, )

Defendants.

)

______________________________________ )

ORDER GRANTING DEFENDANTS’ MOTION FOR

RULE 54(b) FINAL JUDGMENT, DENYING

DEFENDANTS’ MOTION FOR ATTORNEY FEES,

AND DENYING THE REMAINDER OF

PLAINTIFF’S MOTION TO RECONSIDER

Before the Court are Defendants’ Motion for Rule

54(b) Final Judgment [Dkt. 293] and Motion for

Attorneys Fees [Dkt. 287]. A hearing was held before

the Court on June 29, 2016. Plaintiff was represented

by Stephen Lobbin and Mark Ford. Defendants were

represented by Mark Miller and Brett Foster. Having

App. 4

considered the parties’ written and oral arguments and

the relevant facts and law, the Court hereby grants

Defendants’ Motion for Final Judgment and denies

Defendants’ Motion for Attorneys Fees. The Court also

denies the remainder of Plaintiff’s Motion to

Reconsider [Dkt. 221].

MOTION FOR ENTRY OF FINAL JUDGMENT

Defendants move the Court for entry of final

judgment on certain of Plaintiff’s causes of action,

pursuant to Federal Rule of Civil Procedure 54(b). In a

case involving multiple claims and counterclaims, Rule

54(b) provides that the court may “direct the entry of a

final judgment as to one or more but fewer than all

claims or parties only upon an express determination

that there is no just reason for delay. . . .”

An analysis of whether certification of a final

judgment under Rule 54(b) is appropriate requires the

court: (1) to determine that the order to be certified is

final judgment; and (2) to find that there is no just

reason for delay. Stockman’s Water Col, LLC v. Vaca

Partners, LP., 425 F.3d 1263 (10th Cir. 2005) (citing Old

Republic Ins. Co. v. Durango Air Serv., Inc., 283 F.3d

1222, 1225 n.5 (10th Cir. 2002); Oklahoma Turnpike

Auth. v. Bruner, 259 F.3d 1236 (10th Cir. 2001)). The

court weighs “Rule 54(b)’s policy of preventing

piecemeal appeals against the inequities that could

result from delaying an appeal.” Stockman’s Water Co.,

425 F.3d at 1265 (citing Curtiss-Wright Corp v. General

Electric Co., 446 U.S. 1, 8; Oklahoma Turnpike Auth.,

259 F.3d at 1241)). In doing so, the court considers

“whether the claims under review [are] separable from

the others remaining to be adjudicated and whether

the nature of the claims already determined [are] such

App. 5

that no appellate court would have to decide the same

issues more than once even if there were subsequent

appeals.” Id.

On January 9, 2015, the Court entered summary

judgment in Defendants’ favor on Plaintiff’s first

(infringement of ‘298 patent), fourth (false advertising),

fifth (intentional interference with prospective

economic relations) and sixth (unfair competition)

causes of action. [Dkt. 216]. It also entered partial

summary judgment on Plaintiff’s third (infringement of

‘720 patent) cause of action. [Dkt. 216]. Following entry

of the Court’s Memorandum Decision and Order on

Claim Construction [Dkt. 235], the parties stipulated

to summary judgment of non-infringement on

Plaintiff’s second (infringement of ‘774 patent) and

third (infringement of ‘720 patent) causes of action.

[Dkt. 239]. The stipulated judgment was entered by the

Court on May 22, 2105. [Dkt. 252]. On June 30, 2015,

the Court granted Defendants’ Second Motion for

Summary Judgment on Plaintiff’s First Claim

(infringement of ‘298 patent), finding no infringement.

[Dkt. 253].

The Court finds that its orders granting summary

judgment on Plaintiff’s first, second, third, fourth, fifth

and sixth causes of action are final judgments. They

constitute final adjudications of the merits of claims

that are “distinct and separable from the claims left

unresolved.” Oklahoma Turnpike, 259 F.3d at 1243

(“To be considered ‘final,’ an order must be final in the

sense that it is an ultimate disposition of an individual

claim entered in the course of a multiple claims

action.”).

App. 6

There remain in the case, unresolved claims for

trademark infringement, tortious interference, trade

secret misappropriation, civil conspiracy, and unfair

competition (“the remaining claims”).1 These are

scheduled for trial on November 18, 2016.

The resolved claims are independent, both legally

and factually, from the remaining claims. All of the

patent claims have been adjudicated.2 As have all of the

causes of action arising out of the two competitive

bidding transactions.3 The remaining causes of action

do not involve either the patents or the bids upon

which the resolved claims were based. The remaining

claims arise from different facts and call on different

law. They are distinct and separable from the resolved

claims. Summary judgment was entered on all of the

resolved claims over one year ago.

The Court finds that there is no just reason to delay

entry of final judgment on Plaintiff’s first, second,

1

On November 18, 2015, the Court denied Plaintiff’s motion for

summary judgment on Defendants’ claims of trade secret

misappropriation, intentional interference with contractual

relations, and civil conspiracy. [Dkt. 284]. On January 4, 2016, the

Court denied the parties cross-motions related to competing

trademark infringement claims. [Dkt. 285].

2

These were Plaintiff’s first, second and third causes of action

(alleging infringement of Plaintiff’s ‘298, ‘774 and ‘720 patents,

respectively), on which judgment was entered in Defendants’ favor.

[Dkt. 216, 252, 253].

3

These were Plaintiff’s fourth, fifth and sixth causes of action (for

false advertising, intentional interference with prospective

economic relations, and unfair competition, respectively) that the

Court dismissed on summary judgment [Dkt. 216].

App. 7

third, fourth, fifth and sixth causes of action.

Defendants’ Motion for Entry of Final Judgment

pursuant to Rule 54(b) is hereby GRANTED.

MOTION FOR ATTORNEYS FEES

Defendants seek an award of their attorneys fees

and expenses incurred in defending Plaintiff’s patent

infringement and false advertising claims. They

contend those claims meet the “exceptional” case

standard under § 285 of the Patent Act as defined in

Octane Fitness LLC v. ICON Health & Fitness, Inc.,

134 S.Ct. 1749 (2014).

Section 285 of the Patent Act states that “[t]he court

in exceptional cases may award reasonable attorney

fees to the prevailing party.” 35 U.S.C. § 285. The

United States Supreme Court, in Octane Fitness,

defined “an exceptional case” for purposes of § 285 as

“one that stands out from others with respect to the

substantive strength of a party’s litigating position . . .

or the unreasonable manner in which the case was

litigated.” Id. at 1756. The determination of whether a

particular case is “exceptional” is within the court’s

discretion and based upon the “totality of the

circumstances.” Id.

Defendants contend that Plaintiffs actions in the

course of this litigation make this an exceptional case.

Specifically, they argue that Plaintiff’s claims were

baseless and pursued “in a diliatory manner.” They

assert that Plaintiff was motivated by “a desire to

impose an onerous lawsuit on Defendants” and that

Plaintiff demonstrated “bad faith and misconduct by its

disregard of the local patent rules.” Plaintiff disputes

this argument and contends the motion is premature

App. 8

given the remaining claims that are pending and

scheduled for trial in November 2016.

The Court finds that under the totality of the

circumstances, Plaintiff’s actions in the course of this

litigation do not rise to the level of “exceptional.”

Defendants’ Motion for Attorneys Fees is hereby

DENIED.

MOTION FOR RECONSIDERATION OF

SUMMARY ADJUDICATION

Plaintiff moved the Court for reconsideration of its

ruling denying Plaintiff’s motion for relief under

Federal Rule of Civil Procedure 56(d) and granting

Defendants’ motions for summary judgment and

partial summary judgment. [Dkt. 216, 221]. In its

Memorandum Decision and Order [Dkt. 253], the Court

denied Plaintiff’s motion to reconsider its Order

granting summary judgment on Plaintiff’s first cause

of action. The Court hereby DENIES the remainder of

Plaintiff’s motion for reconsideration.

IT IS SO ORDERED.

DATED this 18th day of July, 2016.

/s/ Dee Benson

Dee Benson

United States District Judge

App. 9

APPENDIX C

United States District Court

Central Division for the District of Utah

Case Number: 2:14cv45 DB

[Filed August 15, 2016]

_______________________________________

PETTER INVESTMENTS, INC. d/b/a

)

RIVEER, a Michigan corporation,

)

Plaintiff,

)

)

v.

)

)

HYDRO ENGINEERING, INC., a Utah )

corporation; CALIFORNIA CLEANING )

SYSTEMS, INC., a California company, )

Defendants.

)

______________________________________ )

JUDGMENT IN A CIVIL CASE

IT IS ORDERED AND ADJUDGED

that final judgment pursuant to Rule 54(b) of the

Federal Rules of Civil Procedure be entered, granting

summary judgment on Plaintiff’s first, second, third,

fourth, fifth, and sixth causes of action.

August 15, 2016

Date

D. Mark Jones

Clerk of Court

/s/

(By) Deputy Clerk

App. 10

APPENDIX D

IN THE UNITED STATES COURT

FOR THE DISTRICT OF UTAH

CENTRAL DIVISION

District Judge Dee V. Benson

Case No. 2:14-CV-00045

[Filed June 30, 2015]

_______________________________________

PETTER INVESTMENTS, INC. d/b/a

)

RIVEER, a Michigan corporation,

)

Plaintiff,

)

)

vs.

)

)

HYDRO ENGINEERING, INC., a Utah )

corporation; CALIFORNIA CLEANING )

SYSTEMS, INC., a California company, )

Defendants,

)

______________________________________ )

MEMORANDUM DECISION AND ORDER

Before the Court are four motions: Defendant’s

Second Motion for Summary Judgment on the First

Claim for Relief [Dkt 179]; Plaintiff’s Motion for

Reconsideration of Summary Judgment [Dkt 221];

Plaintiff’s Motion Requesting Leave to Serve Amended

Final Infringement Contentions [Dkt 236]; and

Defendants’ Motion for Supplemental Claim

Construction [Dkt 243]. A hearing was held before the

Court on May 22, 2015 at which these motions were

App. 11

argued by Stephen Lobbin on behalf of Plaintiff and

Mark Miller on behalf of Defendants. Having

considered the relevant facts and law, the Court enters

this Memorandum Decision and Order.

I. DEFENDANTS’ SECOND MOTION FOR

SUMMARY JUDGMENT ON PLAINTIFF’S

FIRST CLAIM FOR RELIEF

Background

This case arises from alleged patent infringement

by Hydro Engineering, Inc. and California Cleaning

Systems, Inc. (“Defendants”) of U.S. Patent 6,164,298

(‘298 Patent) owned by Petter Investments, Inc., d/b/a/

Riveer (“Plaintiff”). Plaintiff and Defendants both

operate cleaning systems for equipment and vehicles.

Defendants’ device, which allegedly infringes the ‘298

patent, features a wash pad that is an impervious

washing surface that directs wash fluid and debris

across the surface and over the edge into a side trough

for collection and removal. The ‘298 patent claims a

modular cleaning system comprising a modular wash

rack that features a grate for supporting the item to be

washed, which is positioned over a bottom surface

acting as a basin for collecting water and debris for

removal from the system.

Plaintiff asserts against Defendants four claims of

the ‘298 patent: independent Claim 1 and dependent

Claims 2–4. Because a finding of non-infringement of

the independent claim precludes a finding of

infringement of the dependent claims, independent

Claim 1 will be considered first.

App. 12

Claim 1 from the ‘298 patent recites:

1. A modular cleaning system comprising:

at least one modular wash rack for supporting an item

to be washed, including:

a frame having a first wall, a second wall, a

third wall, a fourth wall, each wall having

an inner and an outer surface, and a

bottom surface extending between the

inner surfaces of said first, second, third,

and fourth walls of said frame to define a

basin for collecting water used to clean

the item as well as any debris removed

from the item;

a grate operatively associated with said first,

second, third, and fourth walls for

supporting an item to be washed above

said bottom surface while allowing water

and any debris to flow into said basin;

a drainage fitting attached to the outer

surface of one of said walls so as to allow

water collected in said basin to flow out of

said drainage fitting, and coupling means

for coupling said modular wash rack to

another modular wash rack;

a tube having a first end connected to said

drainage fitting; and

a pump for causing water to flow from the basin,

through the drainage fitting and through said

tube.

App. 13

Dependent Claim 4 includes all of the limitations of

claim 1, and adds the limitation of a “sloped tray”:

4. The modular cleaning system as defined in Claim

1 and further including a trough adjacent said first

wall, said trough having a bottom sloping downward

toward said drainage fitting, said frame including a

sloped tray, said their wall being opposite said first

wall, said sloped tray having its highest point at said

third wall and terminating at its lowest point at said

trough.

Standard of Review

Summary judgment is proper if the pleadings,

depositions, answers to interrogatories, and admissions

on file, together with the affidavits, if any, show that

there is no genuine issue as to any material fact, and

that the moving party is entitled to judgment as a

matter of law. See Fed.R.Civ.P. 56(c). In applying this

standard, the court must construe all facts and

reasonable inferences therefrom in the light most

favorable to the nonmoving party. Matsushita Elec.

Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587,

106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Wright v.

Southwestern Bell Tel. Co., 925 F.2d 1288, 1292 (10th

Cir.1991).

Standard for Infringement

An infringement analysis involves two steps. First,

the Court must determine the meaning and scope of

the patent claims asserted to be infringed. Second, the

Court compares the properly construed claims to the

device accused of infringing. Markman v. Westview

Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995), affd,

App. 14

517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577, 38

U.S.P.Q.2d 1461 (1996).

A device may infringe a patented invention by

literal infringement or under the Doctrine of

Equivalents. For literal infringement of a patent, the

accused device must possess every claim limitation, as

construed by the court. Laitram Corp. v. Rexnord, Inc.,

939 F.2d 1533, 1535 (Fed. Cir. 1991). In other words,

the claim, as construed, must “read[] on the accused

device exactly.” DeMarini Sports, Inc. v. Worth, Inc.,

239 F.3d 1314, 1331 (Fed. Cir. 2001) (emphasis added).

If even one claim limitation is missing from the accused

device, there is no literal infringement. Mas-Hamilton

Group v. LaGard, Inc., 156 F.3d 1206, 1211 (Fed. Cir.

1998) (citations omitted).

For a device to infringe under the Doctrine of

Equivalents, there must exist only “insubstantial”

differences between the accused device and the patent

claim(s). Warner-Jenkinson Co. v. Hilton Davis Chem.

Co., 520 U.S. 17, 39–40 (1997). Infringement may be

found under the Doctrine of Equivalents where the

accused device infringes performs substantially the

same function, in substantially the same way, to yield

substantially the same result as the patented

invention. Graver Tank & Mfg. Co. v. Linde Air Prods.

Co., 339 U.S. 605, 608 (1950). The Doctrine of

Equivalents prevents infringement via “simple acts of

copying” or “[u]nimportant and insubstantial

substitutes for certain elements.” Festo Corp. v.

Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722,

731 (2002).

App. 15

Literal Infringement

The following elements from the ‘298 patent are in

dispute: (i) “frame;” (ii) “bottom surface;” (iii) “grate;”

and (iv) “sloped tray.” The relevant portion of claim 1

recites:

a frame having a first wall, a second wall, a

third wall, a fourth wall, each wall having an

inner and an outer surface, and

a bottom surface extending between the inner

surfaces of said first, second, third, and fourth

walls of said frame to define a basin for

collecting water used to clean the item as well as

any debris removed from the item,

a grate operatively associated with said first,

second, third, and fourth walls for supporting an

item to be washed above said bottom surface

while allowing water and any debris to flow into

said basin,

Claim 4 recites:

The modular cleaning system as defined in

claim 1 and further including a trough adjacent

said first wall, said trough having a bottom

sloping downward toward said drainage fitting,

said frame including a sloped tray, said third

wall being opposite said first wall, said sloped

tray having its highest point at said third wall

and terminating at its lowest point at said

trough.

The Court construed the relevant claim terms as

follows:

App. 16

1. “frame”: “a weight-bearing frame made up of four

interconnected walls that define a single enclosed

area such that each wall has an inner surface facing

toward the enclosed area and an outer surface

facing away from the enclosed area.”

2. “bottom surface”: “a surface that fills a horizontal

cross-section of the enclosed area and intersects the

bottom portion of the inner surfaces of all four

frame walls, and which defines a basin for collecting

water and debris.”

3. “grate”: “a porous framework of parallel or crossed

bars that fills a horizontal cross-section of the

enclosed area and engages the top portion of the

inner surfaces of all four frame walls.”

4. “sloped tray”: “a slanted tray positioned within the

enclosed area at a level above the bottom surface

and below the grate.

Petter Investments, Inc. v. Hydro Engineering, Inc.,

No. 2:14–CV–00045–DB, 2015 WL 1442592, at *2-4 (D.

Utah, March 27, 2015). The Court determined that

“grate,” as defined in the ‘298 Patent, is a pervious

surface which allows debris to pass through the grate

into the basin. Any other construction would render the

“bottom surface . . . defining a basin for collecting

water used to clean the item as well as any debris

removed from the item” mere surplusage. The

Defendants’ accused device features an impervious

surface and therefore does not possess the limitation

from Claim 1 of “grate” as interpreted by this Court in

the ‘298 patent. Because the accused device is missing

one claim element, the Court need not consider the

other elements in dispute. The allegedly infringing

App. 17

device does not possess every limitation of Claim 1, so

there can be no literal infringement. Because a finding

of non-infringement of the independent claim precludes

a finding of infringement of the dependent claims, this

Court finds no literal infringement by the accused

device of Claims 1–4 of the ‘298 patent.

Infringement Under the Doctrine of

Equivalents

Plaintiff waived the issue of infringement under the

Doctrine of Equivalents when it failed to assert it in its

infringement contentions. However, given the Court’s

construction of “grate,” relative to the accused device’s

impervious wash surface, the Court would have found

that no reasonable jury could conclude that the accused

device performs substantially the same function, in

substantially the same way, to yield substantially the

same result as the invention in Claims 1–4 of the ‘298

patent.

Defendant’s Second Motion for Summary Judgment

is GRANTED on the issues of literal infringement and

infringement under the Doctrine of Equivalents.

II. PLAINTIFF’S MOTION FOR

RECONSIDERATION OF SUMMARY

JUDGMENT ON PLAINTIFF’S FIRST CLAIM

FOR RELIEF

In January, 2015, the Court entered summary

judgment on Plaintiff’s First Claim for Relief on the

basis that it is barred by the doctrine of laches.

Plaintiff moves the Court to Reconsider that ruling.

Given this Order granting Defendants’ Second Motion

for Summary Judgment on the First Claim for Relief,

Plaintiff’s motion is moot and therefore DENIED.

App. 18

III. PLAINTIFF’S MOTION REQUESTING

LEAVE TO SERVE AMENDED FINAL

INFRINGEMENT CONTENTIONS

Plaintiff seeks leave to amend its Final

Infringement Contentions pursuant to Local Patent

Rule (LPR)3.4. LPR 3.4 provides that “[a] party may

amend its Final Infringement Contentions . . . only by

order of the court upon a showing of good cause and

absence of unfair prejudice to opposing parties . . . .”

Plaintiff argues good cause exists to amend its

contentions because it claims that LPR 2.3(d) required

it to choose either literal infringement or infringement

under the Doctrine of Equivilents at the time it filed its

Initial Infringement Contentions. Following discovery

and this Court’s claim construction, Plaintiff asserts its

theory of infringement with regard to the ‘298 Patent

turned from literal to the Doctrine of Equivilents.

Plaintiffs argument is without merit and misconstrues

LPR 2.3(d). The Court finds that Plaintiff has failed to

show good cause and an absence of unfair prejudice as

required by LPR 3.4. Additionally, given the Court’s

ruling herein on Defendant’s Second Motion for

Summary Judgment on the First Claim for Relief, an

amendment of Plaintiff’s Final Infringement

Contentions would be futile. The motion is DENIED.

IV. DEFENDANTS’ MOTION FOR

SUPPLEMENTAL CLAIM CONSTRUCTION

Defendant requests the Court supplement its

construction of the term “grate” to clarify that the word

“porous” requires that water and debris fall through

the washing surface into the basin below. The Court

adopted the following construction for the term “grate:”

“a porous framework of parallel or crossed bars that

App. 19

fills a horizontal cross-section of the enclosed area and

engages the top portion of the inner surfaces of all four

frame walls.” Memorandum Decision and Order on

Claim Construction [Dkt 235 at p.6]. The Court further

explained that “‘[a] grate that does not allow debris to

pass through the grate into the basin would render the

‘bottom surface . . . defining a basin for collecting water

used to clean the item as well as any debris removed

from the item’ an inoperative element of the claim, ie.

mere ‘surplusage.’” [Dkt. 235 at p.7]

Plaintiff suggested at the summary judgment

hearing on April 29, 2015, that the Court’s use of the

term “porous” would include a surface with mere

indentations that water could flow off of but not

through. In doing so, Plaintiff has attempted to twist

the Court’s construction in a way that is contrary to the

Court’s intent.

Defendants’ motion is GRANTED and the Court

hereby supplements its construction of the term “grate”

as follows: “a porous framework of parallel or crossed

bars that fills a horizontal cross-section of the enclosed

area and engages the top portion of the inner surfaces

of all for frame walls and allows the debris to pass

through it into the basin.”

CONCLUSION

For the foregoing reasons, Defendants’ Second

Motion for Summary Judgment on Plaintiff’s First

Claim for Relief is GRANTED. Plaintiff’s Motion for

Reconsideration of Summary Judgment on Plaintiff’s

First Claim for Relief is DENIED. Plaintiff’s Motion

Requesting Leave to Serve Amended Final

Infringement Contentions is DENIED. Defendants’

App. 20

Motion for Supplemental Claim Construction is

GRANTED.

DATED this 30th day of June, 2015.

BY THE COURT:

/s/ Dee Benson

Dee Benson

United States District Judge

App. 21

APPENDIX E

IN THE UNITED STATES COURT

FOR THE DISTRICT OF UTAH

CENTRAL DIVISION

Judge Dee Benson

Case No. 2:14-cv-00045-DB

[Filed January 9, 2015]

_______________________________________

PETTER INVESTMENTS, INC. d/b/a

)

RIVEER, a Michigan corporation,

)

Plaintiff,

)

)

vs.

)

)

HYDRO ENGINEERING, INC., a Utah )

corporation; CA CLEANING

)

SYSTEMS, INC., a California company, )

Defendants.

)

______________________________________ )

MEMORANDUM DECISION AND ORDER

Before the Court are Plaintiff’s Motions for Relief

under Federal Rule of Civil Procedure 56(d) and

Defendants’ Motions for Summary Judgment and

Partial Summary Judgment. A hearing was held before

the Court on November 21, 2014. Plaintiff was

represented by Stephen M. Lobbin. Defendants were

represented by Brett L. Foster and Mark A. Miller.

Having considered the relevant facts and law, the

Court enters the following order denying Plaintiff’s

App. 22

Motions for Relief under FRCP 56(d) and granting

Defendants’ Motions for Summary Judgment and

Partial Summary Judgment. The court also hereby

grants Defendants’ Motion to Compel with Local

Patent Rules 4.1 and 4.2.

PLAINTIFF’S RULE 56(d) MOTIONS

Plaintiff filed motions under Federal Rule of Civil

Procedure 56(d), seeking dismissal of, or in the

alternative, suspension on the rulings of Defendants’

motions for summary judgment and partial summary

judgment on the basis that the motions are premature

and that Plaintiff requires more time for discovery in

order to more fully respond. The Court finds these

arguments unpersuasive.

Federal Rule of Civil Procedure 56(d) requires a

party seeking to enlarge the discovery period to provide

with specificity what additional facts it expects to

uncover. Plaintiff filed this lawsuit in the Southern

District of California on May 24, 2013. Plaintiff did not

seek any discovery during the eight month pendency of

the suit. The case was transferred to Utah on

January 22, 2014. On June 6, 2014, the court entered

a scheduling order setting the phase I fact discovery

deadline for December 1, 2014. Defendants provided

responses to all of Plaintiff’s written discovery and

accommodated the one deposition Plaintiff scheduled

within the discovery period. Plaintiff has failed to meet

the rule’s requirement of providing specificity as to

what facts it expects to uncover if it is allowed more

time to conduct discovery. For these reasons, Plaintiff’s

Motions for Relief under FRCP 56(d) are hereby

DENIED.

App. 23

DEFENDANTS’ MOTIONS FOR

SUMMARY JUDGMENT

Defendants seek summary judgment on Plaintiff’s

first, fourth, fifth and sixth causes of action and partial

summary judgment on Plaintiff’s third cause of action

in the second Amended Complaint. Summary judgment

is proper where there is “no genuine issue of material

fact for determination, and the moving party is entitled

to judgment as a matter of law.” Durham v. Herbert

Olbrich GMBH & Co., 404 F.3d 1249, 1250 (10th Cir.

2005). When addressing a summary judgment motion,

the court is required to “view the facts and draw

reasonable inferences in the light most favorable to the

party opposing the summary judgment.” Cavanaugh v.

Woods Cross City, 625 F.3d 661, 662 (10th Cir. 2010).

A. First Cause of Action

Plaintiff’s complaint alleges that Defendants’

Hydropad design infringes Plaintiff’s ‘298 patent under

35 U.S.C. section 271. Plaintiff and Defendants are

engaged in the business of making and selling portable

wash pad systems. As competitors in a small

specialized industry, they regularly bid against each

other on projects. Both companies have been awarded

patents on the designs of their products. Plaintiff was

awarded two patents covering its portable grate/basin

wash pad design in the year 2000: U.S. Patent

No. 6,021,792 (“the ‘792 patent”) entitled “Modular

Cleaning Facility”; and U.S. Patent No. 6,164,298 (“the

‘298 patent”) also entitled “Modular Cleaning Facility”

and specifically for the use of a “grate” over a collection

“basin for collecting water.” The ‘792 patent is the

parent of the ‘298 patent, and the two patents share

App. 24

the same specification, including drawings and

description, and the same patent term.

In 2007, Plaintiff filed a complaint against

Defendants in the Western District of Michigan,

alleging infringement of Plaintiffs ‘792 patent. Petter

Investments, Inc. v. Hydro Engineering, Inc., Case

No. 1:07-cv-1033 (the “Michigan case”). Plaintiff did not

allege a violation of the ‘298 patent. It did, however,

rely on its ‘298 patent to support its invalidity defenses

against Defendants’ patent infringement claims and

also produced several copies of the ‘298 patent during

discovery.

The Michigan District Court entered summary

judgment in Defendants’ favor on all issues of liability

and found as a matter of law that Defendants’

Hydropad does not infringe the ‘792 patent claims.

Thereafter, the parties entered into a settlement

agreement that resolved all remaining issues in the

Michigan case.

Four years later, in 2013, and more than twelve

years after the ‘298 patent was granted, Plaintiff filed

a complaint commencing the present action alleging

that Defendants’ Hydropad wash pad system infringes

the ‘298 patent. Defendants have moved for summary

judgment on this claim on the basis that it is barred by

the doctrine of laches.

Laches bars a claim where: (a) the plaintiff

unreasonably delayed in asserting the claim, and

(b) the defendant was materially prejudiced by that

delay. A. C. Aukerman Co. v. R.L. Chaiedes Constr. Col,

960 F.3d 1020, 1029, 1031, 1039-41 (Fed. Cir. 1992)(en

banc). The laches defense is intended to “prevent

App. 25

patentees from ‘intentionally [lying] silently in wait

watching damages escalate, particularly where an

infringer, if he had notice, could have switched to a

noninfringing product.”’ A.C. Aukerman, 960 F.2d at

1033.

A patentee has a duty to police its rights-especially

when it has already been put on notice of potential

infringement. See Wanlass v. General Elec. Co., 148

F.3d 1334, 1338 (Fed. Cir. 1998). When the accused

infringer’s activities are “pervasive, open, and

notorious” in the same industry as the patentee, then

the patentee at least should have known of the activity

and its claim against the activity. See, e.g., Hall v.

Aqua Queen Mfg, Inc. 93 F.3d 1548, 1553-55 (Fed. Cir.

1996).

“A presumption of laches arises where a patentee

delays bringing suit for more than six years after the

date the patentee knew or should have known of the

alleged infringer’s activity.” A.C. Aukerman, 960 F.2d

at 1028, 1037. See also, Wanlass, 148 F.3d at 1337.

Once the laches presumption is established, the

patentee’s unreasonable delay and material prejudice

to the accused infringer “must be inferred, absent

rebuttal evidence.” A.C. Aukerman, 960 F.2d at 1036.

A patentee can rebut the presumption of laches “‘by

offering evidence to show an excuse for the delay or

that the delay was reasonable’ or by offering evidence

‘sufficient to place the matters of prejudice . . .

genuinely in issue.”’ Serdarevic v. Advanced Medical

Optics, Inc., 532 F.3d 1352, 1359-60 (Fed. Cir.

2008)(quoting A.C. Aukerman, 960 F.2d at 1038).

App. 26

In determining whether a claim is barred by laches,

a court is to balance “all pertinant equities,” including

“the length of delay, the seriousness of prejudice, the

reasonableness of excuses, and the defendant’s conduct

or culpability.” A.C. Aukerman, 960 F.2d at 1034; see

also Gasser Chair, 60 F.3d at 773, 775-76.

The undisputed facts in the record establish that

Plaintiff knew Defendants were selling wash pads at

least as of the year 2000, when the parties exchanged

multiple letters that included pictures of Defendants’

wash pads and advertisements describing their

features. During this same time Plaintiff prosecuted

the ‘298 patent, which issued Dec. 26, 2000. Upon its

issuance, Plaintiff knew, or should have known of its

potential ‘298 patent claim against Defendants’ wash

pads.

Instead of pursuing its claim, however, Plaintiff

waited for over 12 years to file the present case alleging

infringement of the ‘298 patent. That delay is more

than double the six-year presumptive period the law

establishes.

Plaintiff argues that its delay in bringing this cause

of action is justified for three reasons: (1) Plaintiff was

involved in other litigation, specifically; the Michigan

case; (2) Plaintiff lacked financial resources to bring

this claim earlier; and (3) Defendants have made

changes to their design that now infringe patent ‘298.

This Court is not persuaded by either of the first two

assertions given that the Michigan case involved the

same parties and the same products and the parent of

patent ‘298 that has the same specifications. Given the

similarities of the claims, it is unreasonable to suggest

that a twelve-year delay was necessary or reasonable.

App. 27

Regarding its third assertion, while Defendants

acknowledge they have made minor changes to their

wash pads over the years, the undisputed facts

establish that these changes do not relate to any

element of the ‘298 patent claims. See Acumed v.

Stryker Corp., 525 F.3d 1319, 1327 (Fed. Cir. 2008).

Minor differences having no effect on the accused

operation of the devices are merely colorable. See, e.g.,

id; Hako-Med USA, Inc., v. Axiom Worldwide, Inc.,

2010 WL 4448824, *4 (D. Haw. Oct. 29, 2010 aff’d, 424

F. App’x 961 (Fed. Cir. 2010) D-Beam v. Roller Derby

Skate Corp., 316 F.App’x 966, 969 (Fed. Cir. 2008).

Even assuming the changes were more than

deminimous, the law does not require that the products

be exactly the same, only that they be “essentially the

same.” See, e.g., id; Acumend, 525 F.3d at 1325.

Plaintiff’s unreasonable delay has materially

prejudiced Defendants. Economic prejudice arises

where a defendant “will suffer the loss of monetary

investments or incur damages which likely would have

been prevented by earlier suit.” Gasser Chair Co., v.

Infanti Chair Mfg. Corp., 60 F.3d 770, 774 (Fed. Cir.

1995)(citing A.C. Aukerman, 960 F.2d at 1033); accord

State Contracting & Eng’g Corp. v. Cordotte Am., Inc.,

346 F.3d 1057, 1066 (Fed. Cir. 2003). Had Plaintiff

promptly filed suit, Defendants could have altered their

design development and refinements. Instead, during

the twelve years that Plaintiff waited to bring this

claim, Defendants expanded their wash pad business

operations, purchased additional supply and

manufacturing facilities, upgrading their equipment,

and worked on improvements. Further, Defendants

invested resources in successfully defending their wash

App. 28

pads against Plaintiff’s infringement claims in the

Michigan case.

This Court finds, based on the undisputed facts in

the record, that Plaintiff’s delay in bringing this cause

of action is unreasonable, that Defendants have been

materially prejudiced by the delay, and it is therefore

barred by the doctrine of laches. Defendants’ Motion for

Summary Judgment on Plaintiff’s First Cause of Action

is hereby GRANTED.

B. Plaintiff’s Third Cause of Action

Defendants also move this court for partial

summary judgment on Plaintiff’s claim that

Defendants’ website advertising infringes Plaintiff’s

U.S. Patent No. 8,506,720 (“the ‘720 patent”) by

offering to sell an infringing product, specifically a

wash rack referred to as a Skid Steer Side Trough

(“SSST”), in violation of 35 U.S.C. section 271(a).

“[W]hoever 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.” 35 U.S.C. section 271(a).

Plaintiff contends that two aspects of Defendants’

website constitute offers to sell the SSST: (1) an image

of an SSST that was on Defendants’ website in the

past; and (2) a link to a 2010 Press Release mentioning

the SSST. The issue presented here is whether either

the image or the press release link on Defendants’

website constituted an offer to sale a SSST after the

‘720 Patent issued on August 13, 2013.

The undisputed facts establish that Defendants

displayed a picture of an SSST on their website

App. 29

beginning in or about 2010 and removed it when

Plaintiffs ‘720 patent issued on August 13, 2013. In

July, 2009, three years before the ‘720 patent issued,

Defendants authored a press release discussing several

of their innovations, including one sentence mentioning

an SSST. The press release did not appear on

Defendants’ website. Instead, a link to it appeared as

the last of eleven links on one of their web pages. The

non-descript link was left on the website as an

oversight, after the ‘720 patent issued, but was

immediately removed upon learning of it.

Neither the picture nor the press release contained

any pricing information, specifications, or other terms

of sale for a SSST. Defendants’ vice president testified

in his deposition that they had no intention to offer the

SSST for sale after the patent issued, nor did they have

any customers interested in purchasing one. It is

undisputed that since the issuance of the ‘720 patent,

Defendants have not made, used, or sold a SSST.

Regarding the image of the SSST on Defendants’

website, in order to assert infringement a patent must

exist. Gayler v. Wilder, 51 U.S. 477, 493 (1850).

Infringement can only occur “during the term of the

patent.” 35 U.S.C. section 271(a). The term of the ‘720

patent began when it issued on August 13, 2013. The

undisputed facts establish that the SSST image first

appeared on Defendants’ website in or about 2010 and

was removed when the ‘720 patent issued. Therefore,

the image cannot be considered an infringement of the

‘720 patent.

With regard to the press release, in construing the

phrase “offer to sell” when interpreting section 271,

courts have defined liability for an “offer to sell”

App. 30

“according to the norms of traditional contractual

analysis.” Rotec Indus. v. Mitsubishi Corp., 215 F.3d

1246, 1255 (Fed. Cir. 2000). Accordingly, an actionable

offer to sell exists where a defendant has

“communicated a ‘manifestation of willingness to enter

into a bargain, so made as to justify another person in

understanding that his assent to that bargain is invited

and will conclude it.”’ Id., 215 F.3d at 1257(quoting

Restatement (Second) of Contracts section 24 (1979)).

See, e.g., Eli Lilly & Co. v. Medtronic Inc., 915 F.2d

670, 673 (Fed. Cir. 1990); McElmurry v. Arkansas

Power & Light Co., 995 F.2d 1576, 1583 (Fed. Cir.

1993). On the other hand, a communication by a

defendant that describes the allegedly infringing

materials but does “not contain any price terms . . . on

its face . . . cannot be construed as an ‘offer’ which [the

offeree] could make into a binding contract by simple

acceptance.” MEMC Electronic Materials, Inc. v.

Mitsubishi Materials Silicon Corp., 420 F.3d 1369,

1376 (Fed. Cir. 2005). See also Superior Industries v.

Thor Global Enterprises, 700 F.3d 1287, 1290 (Fed. Cir.

2013).

The Court finds that based on the undisputed facts,

no reasonable jury could find that either the image or

the press release link constituted an offer to sell.

Defendants’ Motion for Partial Summary Judgment on

Plaintiff’s Third Claim for Relief is hereby GRANTED.

C. Fourth, Fifth and Sixth Causes of Action

Plaintiff’s complaint also alleges false advertising,

intentional interference with prospective economic

advantage and unfair competition under both state and

federal law. These three causes of action allegedly arise

out of two competitive bidding transactions with the

App. 31

United States Military. Plaintiff claims that

Defendants misrepresented the nature of their

products when they submitted their bid to supply the

Marine Corps with wash rack systems. Plaintiff also

claims that Defendants submitted a bid to the U.S.

Army “knowing that it did not meet the specifications”

of the Army’s solicitation.

A false advertising claim, whether brought under

the Lanham Act, the California False Advertising Law

or the Utah Truth in Advertising Act, prequires proof

of a false or misleading statement of fact. See, e.g.,

Zoller Laboratories v. NBTY, Inc., 111 Fed.App’x. 978,

982 (10th Cir. 2004); Cal. Bus. & Prof. Code section

17500; Momenta, Inc. v. Seccion Amarilla, 2009 WL

1974798 at *3 (N.D.Cal.2009); Utah Code Ann. Section

13-11a-3. Likewise, Plaintiff’s claim for intentional

interference with economic relations as alleged

requires proof that Defendants used “improper means”

such as “deceit or misrepresentations.” St. Benedict’s

Dev. Co. v. St. Benedict’s Hospital, 811 P.2d 194, 201

(Utah 1991). See, e.g., Anderson Development Co. v.

Tobias, 116 P.3d 323, 331 (Utah 2005); Settimo

Associates v. Environ Systems, Inc., 14 Cal. App.4th

842, 845 (Cal.App. 1993); San Jose Construction v.

S.B.C.C. Inc., 155 Cal.App.4th 1528, 1544-45

(Cal.App.2007). Finally, Plaintiff’s claim for unfair

competition requires proof of a misrepresentation

concerning a party’s good or wares. See Utah Code

Ann. Section 13-5-8; Cal. Bus. & Prof. Code section

17200.

Therefore, in order to successfully assert these

causes of action, Plaintiff must present evidence that

Defendants made a false or misleading representation

App. 32

regarding their products in their bids. Plaintiff has

failed to do so. Rather, Plaintiff has asserted nothing

more than the mere possibility that a

misrepresentation may have been made. The Court

finds that Plaintiff lacks any facts sufficient to support

these causes of action and therefore, Defendants’

Motion for Summary Judgment on Plaintiff’s Fourth,

Fifth and Sixth Claim for Relief is hereby GRANTED.

MOTION TO COMPEL

Defendants filed a motion to compel Plaintiff to

comply with Local Patent Rules 4.1 and 4.2.

Specifically, Defendants ask that Plaintiff be required

to: (1) provide the proposed terms Plaintiff argues must

be construed, together with proposed construction of

those terms pursuant to LPR 4.1; and (2) file a crossmotion for claim construction pursuant to LPR 4.2.

Plaintiff asserted that no claim construction is

necessary and that the rules do not require it to file a

motion. The parties argued this motion to compel

before the Court at the November 21, 2014 hearing.

Since that time, both parties have filed their motions

for claim construction, although Plaintiff reserved its

right to object to being required to do so under the

Local Rules. The Court disagrees with Plaintiff’s

objection and Defendants’ Motion to Compel Plaintiff to

Comply with LPR 4.1 and 4.2 is hereby GRANTED.

January 7, 2015.

BY THE COURT:

/s/ Dee Benson

Dee Benson

United States District Judge

App. 33

APPENDIX F

NOTE: This disposition is nonprecedential.

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

2016-2634

[Filed October 25, 2017]

__________________________________________

PETTER INVESTMENTS, DBA RIVEER, )

Plaintiff-Appellant

)

)

v.

)

)

HYDRO ENGINEERING,

)

Defendant-Appellee

)

)

CALIFORNIA CLEANING SYSTEMS,

)

Defendant

)

_________________________________________ )

Appeal from the United States District Court for the

District of Utah in No. 2:14-cv-00045-DB-DBP, Senior

Judge Dee V. Benson.

______________________

ON PETITION FOR PANEL REHEARING

______________________

Before DYK, LINN, and HUGHES, Circuit Judges. PER

CURIAM.

App. 34

ORDER

Appellant Petter Investments filed a petition for

panel rehearing.

Upon consideration thereof,

IT IS ORDERED THAT:

The petition for panel rehearing is denied.

The mandate of the court will issue on November 1,

2017.

FOR THE COURT

October 25, 2017

Date

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court