Schuyleman v. Barnhart Crane and Rigging Co

1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON 8 AT SEATTLE 9 10 JAY SCHUYLEMAN, CASE NO. C23-0562JLR 11 Plaintiff, ORDER v. 12 BARNHART CRANE AND 13 RIGGING CO., et al., 14 Defendants. 15 I. INTRODUCTION 16 Before the court are (1) Defendants / Counter-Claimants Barnhart Crane and 17 Rigging Co., and Barnhart Crane and Rigging LLC’s (together, “Barnhart”) motion for 18 summary judgment on Plaintiff Jay Schuyleman’s direct and induced infringement claims 19 and on Barnhart’s invalidity counterclaim (Barnhart MSJ (Dkt. # 94); Barnhart MSJ 20 Reply (Dkt. # 109)); (2) Mr. Schuyleman’s motion for summary judgment on Barnhart’s 21 22 1 invalidity counterclaim (Schuyleman MSJ (Dkt. # 95))1; and the parties’ respective 2 motions in limine (Schuyleman Am. MILs (Dkt. # 115); Barnhart MILs (Dkt. # 116).) 3 Both of the summary judgment motions are opposed. (See Schuyleman Resp. (Dkt. 4 # 102); Barnhart Resp. (Dkt. # 104).) The court has considered the parties’ submissions, 5 the relevant portions of the record, and the applicable law. Being fully advised,2 the 6 court GRANTS Barnhart’s motion for summary judgment with respect to its invalidity 7 counterclaim, DENIES Mr. Schuyleman’s motion for summary judgment, and DENIES 8 the parties’ motions in limine as moot. 9 II. BACKGROUND 10 This case arises out of Barnhart’s alleged infringement of Mr. Schuyleman’s 11 intellectual property rights. Mr. Schuyleman owns United States Patent No. 8,317,244 12 (the “’244 Patent”). (See Third Am. Compl. (Dkt. # 42), Ex. 1.) The ’244 Patent claims 13 “an improvement for an offset hoisting apparatus for use with a crane to lift a load” that 14 purports to facilitate the safe depositing of a load into an opening of a building during 15 construction. (Id. at col. 2:13-14; see generally id.) The ’244 Patent uses an “offset 16 hoisting apparatus” with a “rigid boom” that is capable of being “selectively slid between 17 a refracted position and an extended position” through mounts attached to the offset 18 19 20 1 Mr. Schuyleman did not file a reply in support of his motion for summary judgment. (See generally Dkt.) 21 2 Barnhart requested oral argument on its motion for summary judgment. (See Barnhart MSJ at 1.) The court, however, concludes that oral argument would not aid its disposition of the 22 parties’ motions. See Local Rules W.D. Wash. LCR 7(b)(4). 1 hoisting apparatus. (Id. at col. 4:40-43.) A crane can lift the offset hoisting apparatus 2 and deposit the load several feet inside of an opening in the building. (See id. fig. 1.) 3 Mr. Schuyleman asserts that certain of Barnhart’s products infringe claims 1, 4, 4 16, and 17 of the ’244 Patent (the “Asserted Claims”),3 specifically: (1) the Moveable 5 Counterweight Cantilever System (“MOCCS”) (e.g., Standard Movable Counterweight 6 Cantilever System and Movable Counterweight Double Beam)4; (2) the Mini-MOCCS; 7 and (3) the Mega-MOCCS (collectively, the “Accused Products”). (Third Am. Compl. 8 ¶ 6.) Mr. Schuyleman asserts that Barnhart directly infringes the Asserted Claims by 9 making and using the Accused Products. (Third Am. Compl. ¶ 36; Schuyleman Resp. to 10 Fourth Set of Interrogatories (Dkt. # 94-19) No. 24.) Mr. Schuyleman further asserts that 11 Barnhart induced infringement of the Asserted Claims because it “ha[s] a number of 12 separate subsidiary companies that may use the Accused Products.” (Schuyleman Resp. 13 to Fourth Set of Interrogatories (Dkt. # 94-19) No. 24; see Third Am. Compl. ¶¶ 38, 40.) 14 On January 17, 2024, Mr. Schuyleman served his preliminary disclosure of 15 asserted claims and infringement contentions. (See Prelim. Cont. (Dkt. # 65-1).) Mr. 16 Schuyleman timely served amended infringement contentions on March 22, 2024. (See 17 18 3 At the outset of this case, Mr. Schuyleman asserted claims 1, 2, 4, 12, 13, 16, and 17 against Barnhart. (See Barnhart MSJ, Ex. 2 (“Infringement Contentions”).) However, when serving its 19 retained expert Dr. Richard Klopp’s opening report, Mr. Schuyleman informed Barnhart that claims 1, 4, 16, and 17 are “the claims [he] is pursuing at this time.” (See 10/19/24 Email (Dkt. # 94-4) at 2; 20 see Klopp Op. Report (Dkt. # 94-8) at 12-15 (noting that only claims 1, 4, 16, and 17 are asserted).) 4 Mr. Schuyleman did not accuse a single-beam configuration of the MOCCS in his 21 Infringement Contentions. (See generally Infringement Contentions); see Schuyleman Resp. to Third Set of RFAs (Dkt. # 94-17) Nos. 131-33.) 22 1 Barnhart MSJ, Ex. 2 (“Infringement Contentions”).) Barnhart subsequently served its 2 invalidity and non-infringement contentions. (See generally Contention Amend. Motion 3 (Dkt. # 76); 4/25/24 Order (Dkt. # 53) (setting 4/12/24 deadline for service of non- 4 infringement and invalidity contentions).) Following the Markman hearing and the 5 issuance of the court’s claim construction order (see 10/4/24 Min. Entry (Dkt. # 72); CC 6 Order (Dkt. # 73)), the court granted Barnhart leave to amend its invalidity and non- 7 infringement contentions (11/26/24 Order (Dkt. # 81)). On December 3, 2024, Barnhart 8 filed its amended invalidity and non-infringement contentions, claiming therein, as 9 relevant here, that the ’244 Patent is invalid as indefinite under pre-AIA 35 U.S.C. 10 § 112.5 (See Notice Barnhart Am. Cont. (Dkt. # 82) Ex. A at 11-27; see also Am. 11 Answer (Dkt. # 84) ¶¶ 18-27 (asserting invalidity counterclaim).) The parties 12 subsequently filed their respective motions for summary judgment and Daubert motions. 13 (See generally Barnhart MSJ; Schuyleman MSJ; Klopp Mot. (Dkt. # 92); Klopp MTS 14 (Dkt. # 86); Morman Mot. (Dkt. # 91); Perkin Mot. (Dkt. # 93).) 15 The court ruled on the parties’ Daubert motions in a separate order. The parties’ 16 summary judgment motions are fully briefed and ripe for consideration. 17 18 19 5 Because the ’244 Patent does not contain any claim with an effective filing date on or 20 after September 16, 2012, the applicable version of section 112 is the one preceding the changes made by the America Invents Act. See Leahy-Smith America Invents Act, Pub. L. No. 112-29 § 4(e), 125 Stat. 284, 297 (2011); see also Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., 30 21 F.4th 1339, 1346 n.2 (Fed. Cir. 2022). The parties agree that the ’244 Patent is governed by the pre-America Invents Act (“AIA”) version of 35 U.S.C. § 112. (See Schuyleman MSJ at 1 n.1; 22 see Barnhart MSJ at 1.) 1 III. ANALYSIS 2 Barnhart moves for summary judgment on (1) Mr. Schuyleman’s claims for direct 3 infringement and induced infringement and (2) Barnhart’s counterclaim concerning 4 invalidity of the ’244 Patent. (See generally Barnhart MSJ.) Mr. Schuyleman moves for 5 summary judgment on Barnhart’s invalidity counterclaim. (See generally Schuyleman 6 MSJ.) The parties agree that Barnhart is entitled to summary judgment regarding Mr. 7 Schuyleman’s induced infringement claim. (See Barnhart MSJ at 24-26; Schuyleman 8 Resp. at 2 n.2.) The parties dispute, however, whether summary judgment in Barnhart’s 9 favor is appropriate with respect to Mr. Schuyleman’s direct infringement claim and 10 Barnhart’s invalidity counterclaim. (Barnhart MSJ at 26-33; Schuyleman Resp. at 11-16; 11 Schuyleman MSJ at 6-7.) 12 As explained below, the court grants Barnhart’s motion for summary judgment on 13 its invalidity counterclaim, and denies Mr. Schuyleman’s motion for summary judgment. 14 The court therefore need not decide the remaining issues raised in Barnhart’s summary 15 judgment motion. 16 A. Summary Judgment Legal Standard 17 Summary judgment is appropriate if the evidence viewed in the light most 18 favorable to the non-moving party shows “that there is no genuine dispute as to any 19 material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 20 56(a); see Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). Once the movant has 21 made this showing, the burden shifts to the nonmoving party to identify specific evidence 22 showing that a material factual issue remains for trial. Celotex, 477 U.S. at 323-24. 1 The nonmoving party may not rest on mere allegations or denials from its pleadings, but 2 must “cit[e] to particular parts of materials in the record” demonstrating the presence of a 3 material factual dispute. Fed. R. Civ. P. 56(c)(1)(A); see also Anderson v. Liberty Lobby, 4 Inc., 477 U.S. 242, 248 (1986). A fact is “material” if it might affect the outcome of the 5 case. Anderson, 477 U.S. at 248. A factual dispute is “‘genuine’ only if there is 6 sufficient evidence for a reasonable fact finder to find for the non-moving party.” Far 7 Out Prods., Inc. v. Oskar, 247 F.3d 986, 992 (9th Cir. 2001) (citing Anderson, 477 U.S. 8 at 248-49). 9 In deciding cross-motions for summary judgment, the court must consider each 10 motion “on its own merits.” Fair Hous. Council of Riverside Cnty., Inc. v. Riverside 11 Two, 249 F.3d 1132, 1136 (9th Cir. 2001) (citation omitted). Indeed, it is well-settled in 12 this circuit that “the filing of cross-motions for summary judgment, both parties asserting 13 that there are no uncontested issues of material fact, does not vitiate the court’s 14 responsibility to determine whether disputed issues of material fact are present.” Id. 15 (quoting United States v. Fred A. Arnold, Inc., 573 F.2d 605, 606 (9th Cir. 1978)). 16 B. Barnhart’s Invalidity Counterclaim 17 Barnhart contends that it is entitled to summary judgment on its invalidity 18 counterclaim because the ’244 Patent is invalid as indefinite. (See Barnhart MSJ at 19 26-33.) Specifically, Barnhart argues that the “description and depictions of the ‘offset 20 hoisting apparatus’ are internally inconsistent[,]” within the ’244 Patent and a person of 21 ordinary skill in the art (“POSITA”) therefore could not determine the scope of the claims 22 recited therein. (Id. at 26.) Mr. Schuyleman disagrees and separately moves for 1 summary judgment in his favor on Barnhart’s invalidity counterclaim. (See Schuyleman 2 Resp. at 11-15; Schuyleman MSJ.) Below, the court first discusses the legal standard 3 governing patent indefiniteness, and then addresses the parties’ respective arguments. 4 1. Indefiniteness Legal Standard 5 Section 112 of the Patent Act requires a patent specification to “conclude with one 6 or more claims particularly and distinctly claiming the subject matter which the applicant 7 regards as his invention.” 35 U.S.C. § 112, ¶ 2. A patent is invalid for indefiniteness, 8 however, “if its claims, read in light of the specification delineating the patent, and the 9 prosecution history, fail to inform, with reasonable certainty, those skilled in the art about 10 the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 11 (2014). These principles advance the important policy of enabling “a person of ordinary 12 skill in the art [to] determine whether or not an accused product . . . infringes the claim.” 13 Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., 30 F.4th 1339, 1347 (Fed. Cir. 2022) 14 (citation omitted). 15 The definiteness requirement “mandates clarity, while recognizing that absolute 16 precision is unattainable.” Nautilus, 572 U.S. at 910. The patent, however, must “be 17 precise enough to afford clear notice of what is claimed.” Id. A claim is accordingly 18 invalid as indefinite “if its language ‘might mean several different things and no informed 19 and confident choice is available among the contending definitions.’” Media Rts Techs., 20 Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1371 (Fed. Cir. 2015) (quoting Nautilus, 21 572 U.S. at 911 n.8). The moving party must prove invalidity by clear and convincing 22 1 evidence. Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP, 838 F.3d 1224, 1228 (Fed. 2 Cir. 2016). 3 Whether a patent is invalid for indefiniteness is a question of law. Id. The 4 “indefiniteness analysis involves general claim construction principles[.]” Sonix Tech. 5 Co. v. Publications Int’l, Ltd., 844 F.3d 1370, 1378 (Fed. Cir. 2017). In assessing a term 6 for indefiniteness, the court begins by examining the intrinsic evidence—including “the 7 [patent] claims, specification, and prosecution history.” Teva Pharms. USA, Inc. v. 8 Sandoz, Inc., 789 F.3d 1335, 1341 (Fed. Cir. 2015). The court may also consider 9 extrinsic evidence, such as expert or patentee testimony, if the intrinsic record is not 10 clear. See Sensor Elec. Tech., Inc. v. Bolb, Inc., No. 18-CV-05194-LHK, 2019 WL 11 4645338 at *3 (N.D. Cal. Sept. 24, 2019). Extrinsic evidence, however, is “generally of 12 less significance than the intrinsic record” when construing claim terms. Allergan Sales, 13 LLC v. Sandoz, Inc., 935 F.3d 1370, 173 (Fed. Cir. 2019). “If a claim is indefinite based 14 ‘only on intrinsic evidence,’” then it is “‘unnecessary to rely on . . . extrinsic evidence.’” 15 See Sensor Elec. Tech., 2019 WL 4645338 at *30 (quoting Interval Licensing LLC v. 16 AOL Inc., 766 F.3d 1364, 1370 n.6 (Fed. Cir. 2014)). The court considers these 17 principles in assessing the parties’ respective indefiniteness arguments. 18 2. Indefiniteness of the Term “Offset Hoisting Apparatus” 19 The parties dispute whether the term “offset hoisting apparatus” is indefinite. (See 20 Barnhart MSJ at 26-33; Schuyleman Resp. at 11-15; Barnhart MSJ Reply at 13-15.) The 21 court’s indefiniteness inquiry begins with the language of the claims. See Berkheimer v. 22 1 HP Inc., 881 F.3d 1360, 1363 (Fed. Cir. 2018). As relevant here, claim 1 of the ’244 2 Patent recites: 3 1. An improvement for an offset hoisting apparatus having at least a top side, a bottom side, a front side, and a rear side, the offset hoisting 4 apparatus for use with a crane apparatus to lift a load, the improvement comprising:6 5 a rigid boom having a distal end and a proximal end, the distal end including 6 a hook means for supporting the load; 7 a front mount having a front boom aperture adapted for confining the boom to slidable movement therethrough, the front mount fixed with the 8 offset hoisting apparatus, the distal end cantilevered from the front mount to extend the load through an opening in a wall; and 9 a rear mount having a rear boom aperture adapted for confining the boom to 10 slidable movement therethrough, the rear mount fixed with the offset hoisting apparatus; 11 whereby the boom may be selectively slid between a retracted and an 12 extended position, or therebetween, and the load may then be secured to the hook means at the distal end of the boom, the crane apparatus 13 then able to lift the load. 14 (’244 Patent, at col. 6:2-23 (emphasis added).) Barnhart asserts that the claim language 15 teaches that the front mount, rear mount, and rigid boom are elements of the improvement 16 to the offset hoisting apparatus, rather than to the offset hoisting apparatus itself. (See 17 Barnhart MSJ at 27.) In support of its argument, Barnhart argues that the claim language 18 describes the front mount, rear mount, and rigid boom as distinct components of the 19 claimed invention. (Id. at 28-29.) Specifically, Barnhart points to the language of claim 20 21 6 The ’244 Patent further provides that “the words ‘comprise,’ ‘comprising,’ and the like are to be construed in an inclusive sense as opposed to an exclusive or exhaustive sense: that is 22 to say, in the sense of ‘including, but not limited to.’” (’244 Patent at col. 3:18-21.) 1 || 1 requiring that the front mount and rear mount (both of which “hav[e] aperture[s] 2 || adapted for confining the [rigid] boom”) must be “fixed with”’ the offset hoisting 3 apparatus. (244 Patent at 6:10-16; Barnhart MSJ at 28-29.) In Barnhart’s view, “fixed 4 || with” “prescribes an attachment between physically separable components.” (/d. at 28.) 5 || Therefore, according to Barnhart, the front mount, rear mount, and rigid boom must be 6 || physically separate components from the offset hoisting apparatus under the claim 7 |\ language. (/d. at 28.) Barnhart’s invalidity and non-infringement expert, Gregg S. 8 || Perkin, illustrates his understanding of the claimed configuration described in claim 1 as 9 || follows: 10 “Offset hoisting 11 apparatus” Rigid boom i ‘\ 12 \ Front Rear 3 mount mount 14 Claimed Configuration 15 at 29 (citing Perkin Op. Report 4 361).) 16 In contrast, Barnhart asserts, the abstract and specification® of the ’244 Patent M7 describes the offset hoisting apparatus, rather than the claimed improvement, as 18 19 7 During the claim construction phase, the court construed “fixed with” to mean “attached 20 |) in some way to.” (CC Order at 12.) 2] 8 Barnhart asserts that the abstract and specification are inconsistent. (See Barnhart MSJ at 27-28.) The court does not read the abstract and specification to be inconsistent; rather, the 0 abstract is simply less descriptive than the abstract. Because the written description in the specification is key to interpreting the claim language, see Vitronics Corp. v. Conceptronic, 1 || “encompassing” the front mount, rear mount, and rigid boom.’ (Barnhart MSJ at 27 2 (citing Perkin Op. Report 64, 357).) To illustrate its argument, Barnhart refers to a 3 || diagram in Mr. Perkin’s opening report depicting his understanding of the claimed 4 ||1mprovement as described in the written description of the ’244 Patent: 5 6 “Offset hoisting apparatus” 7 Rigid boom Front mount 8 Rear mount 9 10 11 ||(Barnhart MSJ at 27 (citing Perkin Op. Report § 361).) Barnhart therefore argues that 12 || reading the claim language and the written description of the ’244 Patent together renders 13 || the term “offset hoisting apparatus” indefinite. (See Barnhart MSJ at 26-28.) Mr. 14 || Schuyleman responds that the meaning of “offset hoisting apparatus” is “clear” under the 15 ||°244 Patent claims. (See Schuyleman Resp. at 12.) 16 17 18 || Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996), the court’s analysis relies on the written description in the specification, rather than the abstract. 19 Barnhart also argues that the specification could alternatively be interpreted to mean that the offset hoisting apparatus comprises only the rigid boom and front mount—and not the 20 || rear mount—because, in Barnhart’s view, the term “includes” is used inconsistently in the cited sections of the specification discussing the front and rear mounts. (Barnhart MSJ at 27-28 (citing 21 ||°244 Patent at col. 3:43-45, 3:49-51).) Barnhart does not explain, however, how “includes” is used inconsistently in these portions of the ’244 Patent, and the inconsistency 1s not readily 22 || apparent to the court. The court therefore does not address this portion of Barnhart’s argument. 1 In assessing a term for indefiniteness, the court must read the disputed claim 2 language with the written description. See Sonix Tech., 844 F.3d at 1378 (reading the 3 claim language alongside the written description to determine indefiniteness); Vitronics 4 Corp., 90 F.3d at 1582 (“The language of the asserted claims is “always read in view of 5 the written description.”). The language of claim 1 provides that “[w]hat is claimed 6 is . . . [a]n improvement for an offset hoisting apparatus . . . , the improvement 7 comprising” a rigid boom, a front mount, and rear mount. (’244 Patent at col. 6:1-23 8 (emphasis added).) The front mount and rear mount must be “fixed with” the offset 9 hoisting apparatus “with a clamping means.”10 (Id. at cols. 6:10-17, 3:61-62; see id. at 10 col. 6:65-67 (stating that the front and rear mounts are each selectively mounted to the 11 offset hoisting apparatus with a clamping means”) (emphasis added).) And the front and 12 rear mounts both have apertures “adapted for confining the [rigid] boom to slidable 13 movement therethrough.” (Id. at col. 6:10-11, 6:15-16.) Claim 4 further recites “[t]he 14 improvement of claim 1 wherein . . . the boom is prevented from slidable movement with 15 respect to the offset hoisting apparatus.” (Id. at 6:30-35 (emphasis added).) 16 Having reviewed the claim language, the court concludes that claim 1 of the ’244 17 Patent teaches that the claimed improvement to the offset hoisting apparatus, rather than 18 the offset hoisting apparatus itself, “comprises” the front mount, rear mount, and rigid 19 boom elements. This conclusion is reinforced by the claim language describing the 20 improvement as distinct from the offset hoisting apparatus. More specifically, under the 21 10 The ’244 Patent defines “clamping means” as “at least one bolt and nut.” (Id. at col. 22 3:62-63.) 1 language of claim 1, the front mount and rear mount could only be “selectively mounted 2 to” and “fixed with” the offset hoisting apparatus—and the rigid boom could only be 3 “prevented from slidable movement with respect to” the offset hoisting apparatus, if 4 those three elements are physically separable from the offset hoisting apparatus. 5 Accordingly, the court agrees with Barnhart that, under the claim language, the front 6 mount, the rear mount,11 and the rigid boom must be separate from the offset hoisting 7 apparatus. 8 Portions of the written description of the ’244 Patent, however, depart from the 9 teachings of the claim language. Although certain parts of the written description 10 describe the front mount, rear mount, and rigid boom as physically separate from the 11 offset hoisting apparatus (see, e.g., id. at col. 3:45-46, 3:51-52 (describing the front 12 mount and rear mount as “fixed with” the offset hoisting apparatus); id. at col. 4:37-38 13 (describing the boom as being “prevented from slidable movement with respect to the 14 offset hoisting apparatus”)), other parts of the written description provide that the offset 15 hoisting apparatus—not the improvement to the offset hoisting apparatus—“comprises” 16 the rigid boom and “includes” the front mount and rear mount. (Id. at col. 3:38-43, 17 3:49-50.) This description directly conflicts with the language of claim 1 ascribing these 18 claim elements to the improvement, rather than to the offset hoisting apparatus. (See id. 19 20 21 11 For purposes of resolving Barnhart’s motion, the court narrowly concludes that the front and rear mounts must be separate from the offset hoisting apparatus. The court offers no 22 opinion as to whether the front and rear mounts must be individually separate components. 1 || at col. 6:1-23 (stating that “the improvement compris[es]” a rigid boom, a front mount, 2 || and rear mount) (emphasis added).) 3 The figures in the ’244 Patent further compound the apparent discrepancy between 4 || the claim language and the written description. For instance, figure 1 purports to show 5 improvement 10 for an offset hoisting apparatus 20 for use with a crane apparatus 30 6 || to lift a load.” Cd. at col. 3:35-36.) Figure 1, however, identifies the offset hoisting 7 || apparatus as the complete structure including the front mount (60), rear mount (70), and 8 || the rigid boom (40), and the claimed improvement is not separately identified. (See id., 9 || fig. 1.) In figure 2, however, the improvement is identified as the complete structure, and 10 || the offset hoisting apparatus is identified as a discrete structure separate from the other 11 ||claim elements. (See id., fig. 2; see also Barnhart MSJ at 30 (arguing that figure 2 12 || “identiffies] [the offset hoisting apparatus as] a strut or a bridled bar’).) Figures 1 and 2 13 || from the ’244 Patent are reproduced below: 14 20 i 28 16 27 I 208 [NE AC SRN □□ / ha keg 18 484g | f 202 g9 ——/—\—, bs 4 0 7 4 ei 20 AH i se ey 27 CH FIG. 1 1 2 ————"\ ° E Wm 162 10 ta, 20 re 16. 4 a, os x \ [ete 100 60 ‘ 160 7 eve [3 182 Syed 4? / ao = Pls 7 ween 180 188 A en ie he 10 pe} FIG. 2 11 In his response, Mr. Schuyleman does not address the identified inconsistencies 12 between the claim language, the written description, and the figures. (See generally 13 Schuyleman Resp.) Instead, he asserts that the meaning of the term “offset hoisting 14 apparatus” can be derived from the language of claim 1. (Schuyleman Resp. at 12; see 15 id. at 11 (stating that the claim language “makes clear” the claimed configuration of the 16 invention).) In support, Mr. Schuyleman cites to Dr. Klopp’s rebuttal report, which 17 posits that “the term ‘offset hoisting apparatus’ is clear” because claim 1 is written in 18 “Jepson” format and “the ’244 Patent[] disclos[es] [] prior art such as Wheeler’? upon 19 20 The meaning of a “Jepson” claim is discussed below. 71 '3 Tn discussing the Wheeler prior art reference, Dr. Klopp refers to U.S. Patent No. 9 3,675,961. (See Klopp Reb. Report (Dkt. # 102-4) at 22.) That patent is titled “Horizontal Load Positioner” and describes a “horizontal load positioner to facilitate depositing a load within or 1 || which the Jepson format claimed improvements are applied[.]” (Ud. at 12.) Mr. 2 || Schuyleman further contends that the following diagram is the correct configuration of 3 || his claimed improvement: (c) 5 “Offset hoisting apparatus” 6 Rigid boom 4 Front mount Rear mount 8 9 10 (Id. at 13 (citing Klopp Reb. Report at 39).)'* In reply, Barnhart asserts that Mr. Schuyleman improperly “[b]lur[s] the line” between the elements of the claimed 12 improvement and the offset hosting apparatus, and that the Jepson format does not render 13 the term “offset hoisting apparatus” definite. (See Barnhart MSJ Reply at 13-14.) For 14 the reasons explained below, the court agrees with Barnhart. 15 “[A] Jepson claim is directed to the improvement it makes to the prior art.” Jn re 16 Xencor, Inc., 130 F.4th 1350, 1361 (Fed. Cir. 2025). A “Jepson” claim contains three M7 parts: 18 19 removing a load from an opening in a building with the aid of a hoist line[.]” (961 Patent at col. 8:70-73.) 20 '4 The court observes that this is the same figure that Barnhart used in support of its 21 || argument that the abstract and specification describe the offset hoisting apparatus—rather than the improvement—as “encompassing” the front mount, rear mount, and rigid boom. (See 22 || Barnhart MSJ at 27.) 1 (1) a preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known, (2) a phrase 2 such as ‘wherein the improvement comprises,’ and (3) those elements, steps and/or relationships which constitute that portion of the claimed 3 combination which the applicant considers as the new or improved portion. 4 37 C.F.R. § 1.75(e). The parties agree—and the court has held—that claim 1 is written in 5 “Jepson” format. (5/6/25 Min. Order (Dkt. # 117); see Barnhart Supp. Br. (Dkt. # 118); 6 Schuyleman Supp. Br. (Dkt. # 119).) The parties dispute, however, whether the “Jepson” 7 format of claim 1 renders the term “offset hoisting apparatus” sufficiently definite such 8 that a POSITA would understand the scope of the claimed invention. (See Barnhart MSJ; 9 Schuyleman Resp.) 10 The term “offset hoisting apparatus” appears in the preamble of independent claim 11 1, and each of claims 4, 16, and 17—the dependent claims asserted by Mr. Schuyleman— 12 contain that term. (See ’244 Patent at cols. 6:1-5, 6:30-37, 8:1-10.) During the claim 13 construction phase of this case, the court held that the preamble of claim 1 is limiting. 14 (See Markman Hr’g Tr. (Dkt. # 75) at 6:2-5, 6:13-19; see also CC Order at 5.) This 15 means that the preamble “recites limitations of [] claim [1], or . . . is necessary to give 16 life, meaning, and vitality to th[at] claim.” See Xencor, 130 F.4th at 1357 (citation and 17 internal quotations omitted). Moreover, when the “Jepson” format is used in a claim, as 18 it is in claim 1 of the ’244 Patent, the preamble of that claim “recites prior art which 19 forms no part of the inventor’s patentable contribution” and “defines, in part, structural 20 limitations of the claimed invention” described in the prior art. Boston Sci. Corp. v. 21 Micrus Corp., 556 F. Supp. 2d 1045, 1059-60 (N.D. Cal. 2008) (citing Epcon Gas Sys. 22 Inc. v. Baur Compressors, Inc., 279 F.3d 1022, 1029 (Fed. Cir. 2002)); see also Dali 1 Wireless, Inc. v. Corning Optical Commc’ns LLC, No. 20-CV-06469-EMC, 2021 WL 2 3037700, at *3 n.2 (N.D. Cal. July 19, 2021) (“[t]he preamble in a Jepson claim 3 constitutes a limitation”). Said differently, the preamble in a Jepson claim “describ[es] 4 the conventional or known elements” of the claimed invention, and the language 5 following the transition phrase, “the improvement compris[ing],” identifies the elements 6 the inventor considers “the new or improved portion” of the claimed invention. 37 7 C.F.R. § 1.75; see Arctic Cat Inc. v. GEP Power Prods, Inc., 919 F.3d 1320, 1330 (Fed. 8 Cir. 2019) (discussing the Jepson claim format). Accordingly, because the term “offset 9 hoisting apparatus” appears in the preamble of the Jepson claim, that term functions to 10 define the “conventional or known” structural limitations on Mr. Schuyleman’s claimed 11 invention, and the body of the claim recites the limitations constituting the improvement 12 over the prior art. See Arctic Cat, 919 F.3d at 1330; Boston Sci. Corp., 556 F. Supp. 2d at 13 1060. Logically speaking, therefore, the “offset hoisting apparatus” cannot 14 simultaneously comprise the prior art and the “new and improved portion” of Mr. 15 Schuyleman’s invention. See Boston Sci. Corp., 556 F. Supp. 2d at 1060; Arctic Cat Inc, 16 919 F.3d at 1330.15 17 18 19 15 Indeed, in the context of deciding whether the preamble in a Jepson claim had a 20 sufficient written description, the Federal Circuit affirmed that the preamble of a Jepson claim recites limitations that are distinct from the claimed improvement: “A patentee cannot be permitted to use a Jepson claim to avoid the requirement that []he be in possession of the claimed 21 invention simply by asserting something is well-known in the prior art. For example, a patentee cannot obtain a Jepson claim with a preamble that says that a time machine is well-known in the 22 art without describing a time machine.” Xencor, 130 F.4th at 1362. 1 Mr. Schuyleman agrees that the “offset hoisting apparatus” is the prior art. (See 2 Schuyleman Resp. at 12 (citing Klopp Reb. Report at 38 (“Thus, the prior art is an offset 3 hoisting apparatus.”).) And he does not dispute that “the improvement [he] claimed in 4 the [’244 P]atent is different from an offset hoisting apparatus.” (See 11/8/24 Dep. of J. 5 Schuyleman (Dkt. # 94-21) at 41:3-6.) Rather, Mr. Schuyleman is “just [claiming] the 6 improvement to” an offset hoisting apparatus. (Id. at 40:3-19.) Yet, the ’244 Patent 7 vacillates between describing the offset hoisting apparatus and the improvement as 8 distinct structures and as one and the same. (Compare ’244 Patent at col. 6:5-23 (reciting 9 that the improvement “comprises” a rigid boom, front mount, and rear mount), with id. at 10 col. 3:38-50 (reciting that the offset hoisting apparatus “comprises” a rigid boom and 11 “includes” a front mount, and rear mount).) Mr. Schuyleman makes no attempt to 12 reconcile these inconsistencies in the intrinsic evidence in his response. (See generally 13 Schuyleman Resp.) 14 Instead, relying on extrinsic evidence, Mr. Schuyleman posits that the term “offset 15 hoisting apparatus” is “clear” because “[c]laim 1 adds improvements to the prior art 16 offset hoisting apparatus” and the “improved offset hoisting apparatus . . . includes, 17 among other improvements, a rigid boom, a front mount, and a rear mount.” (Id. at 12-13 18 (quoting Klopp Reb. Report at 38-39).) This circular argument, however, merely 19 describes what a Jepson claim is—an improvement over the prior art—and fails to 20 distinguish the offset hoisting apparatus from Mr. Schuyleman’s claimed improvement. 21 22 1 See Boston Sci. Corp., 556 F. Supp. 2d at 1059-60 (stating that the preamble of a Jepson 2 claim “recites prior art which forms no part of the inventor’s patentable contribution”).16 3 The court gains no clarity from reviewing other portions of Dr. Klopp’s report. 4 Indeed, Dr. Klopp similarly blends the claim limitations together, opining that “the 5 improved offset hoisting apparatus comprises a front mount having a front boom aperture 6 and a rear mount having a rear boom aperture.” (Klopp Reb. Report at 16 (emphasis 7 added).) Dr. Klopp advances that “[a] POSITA would know” what an “offset hoisting 8 apparatus” is because, in his view, the Wheeler patent teaches “an offset hoisting 9 apparatus without the improvements claimed in the ’244 Patent[.]” (Id. at 22.) But 10 conclusory statements about what a POSITA would understand are insufficient to create a 11 genuine dispute of material fact to survive summary judgment. Horizon Pharm., Inc. v. 12 Dr. Reddy’s Labs. Inc., 839 F. App’x 500, 505 (Fed. Cir. 2021); see also Imperial 13 Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 1581 (Fed. Cir. 1990) (“[A] 14 conclusory statement on the ultimate issue does not create a genuine issue of fact.”) 15 (emphasis in original).) Dr. Klopp further opines that the Wheeler patent “describes the 16 application of placing a load into an opening in a building using a crane.” (Klopp Reb. 17 Report at 38.) But this opinion not only fails to describe what an offset hoisting 18 apparatus is, it also fails to differentiate between the prior art and Mr. Schuyleman’s 19 claimed invention over that prior art. More importantly, even assuming that a POSITA 20 21 16 At deposition, Mr. Schuyleman testified that he “d[id]n’t know how to describe” an “offset hoisting apparatus” and that “putting [it] in words [wa]s difficult.” (12/9/24 Dep. of J. 22 Schuyleman (Dkt. # 94-3) at 52:22-24, 53:1-2.) 1 could determine the meaning of an “offset hoisting apparatus” by reviewing the prior art, 2 such fact would not resolve the inconsistencies in the claim language, the written 3 description, and the figures.17 4 The issue here is that the ’244 Patent simultaneously ascribes the front mount, rear 5 mount, and rigid boom as elements of the “offset hoisting apparatus”—the “prior art 6 which forms no part of [Mr. Schuyleman’s] patentable contribution,” Boston Sci. Corp., 7 556 F. Supp. 2d at 1059-60—and of the “improvement” to the offset hoisting apparatus— 8 the “new or improved portion” of the claimed invention. See Arctic Cat, 919 F.3d at 9 1330. But under the Jepson claim format, and as taught by the ’244 Patent, the “offset 10 hoisting apparatus” and the elements of the improvement function as separate structural 11 limitations. See id. Mr. Schuyleman asserts that a POSITA would understand the scope 12 of the claimed invention from the claim language, but he does not cite any evidence 13 resolving the discrepancy between the claim language and the written description and 14 figures in the specification. (See generally Schuyleman Resp.) Indeed, in construing 15 claim terms, a POSITA is “deemed to read the [disputed] claim term not only in the 16 context of the particular claim in which the disputed term appears, but in the context of 17 the entire patent, including the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 18 1313 (Fed. Cir. 2005). Consequently, the court concludes that, in reviewing the claim 19 20 17 At deposition, Dr. Klopp agreed that there was a “disconnect between what’s happening in Figure 1 and the 20 in Figure 2[.]” (Dep. of R. Klopp (Dkt. # 94-10) at 72:4-12.) 21 In Dr. Klopp’s opinion, however, that disconnect was “not relevant because when you look at the broad claim and specification of figures in toto, you do understand what—what an offset hoisting 22 apparatus is.” (Id. at 72:10-12.) 1 language, the written description, and the figures of the ’244 Patent, a POSITA could not 2 with “reasonable certainty” determine the scope of the claimed invention. Nautilus, 572 3 U.S. at 910; see VLSI Tech. LLC v. Intel Corp., 706 F. Supp. 3d 953, 988 (N.D. Cal. 4 2023) (reaching the same conclusion). 5 Mr. Schuyleman argues that Barnhart’s indefiniteness argument is “undercut” by 6 Mr. Perkin’s report because he opines that the term “offset hoisting apparatus” is 7 indefinite, but, in the alternative, identifies an “offset hoisting apparatus” in his prior art 8 analyses. (See Schuyleman Resp. at 13 (citing Perkin Op. Report (Dkt. # 94-13) ¶ 82); 9 id. at 14-15.)18 Mr. Schuyleman asserts that Barnhart’s indefiniteness argument is 10 meritless because Mr. Perkin can “identify, define and describe an ‘offset hoisting 11 apparatus’ in every circumstance but for that required to . . . find that the claims of the 12 ’244 Patent are definite.” (See id. at 15-16.) The court is not persuaded. As discussed in 13 the court’s Daubert order, Mr. Schuyleman provides no authority holding that Mr. Perkin 14 cannot advance alternative arguments in his expert reports. Indeed, the Federal Circuit 15 has held that even indefinite claims can be compared to the prior art for purposes of an 16 anticipation or obviousness analysis. See Cochlear Bone Anchored Sols. AB v. Oticon 17 Med. AB, 958 F.3d 1348, 1360 (Fed. Cir. 2020); cf. Sonix Tech. Co. v. Publications Int’l, 18 Ltd., 844 F.3d 1370, 1381 (Fed. Cir. 2017) (“Neither does the fact that an expert has 19 20 18 Specifically, in paragraph 82 of his opening report, Mr. Perkin opines that “[f]or the purpose of analyzing the term with respect to the prior art, the term ‘offset hoisting apparatus’ 21 constitutes an umbrella term for a suspended lifting device designed to lift a load which is not positioned directly under the suspension point.” (Perkin Op. Report ¶ 82; see also id. ¶ 60 22 (describing an offset hoisting apparatus as an “offset lifting device”).) 1 applied a contested claim term without difficulty render a claim immune from an 2 indefiniteness challenge.”). 3 Barnhart has set forth intrinsic and extrinsic evidence from the ’244 Patent 4 demonstrating that the term “offset hoisting apparatus” is indefinite. (See Barnhart MSJ 5 at 26-33; Barnhart MSJ Reply.) Mr. Schuyleman has not provided intrinsic or extrinsic 6 evidence sufficient to raise a genuine dispute of material fact regarding the indefiniteness 7 of that term. (See generally Schuyleman Resp.) In reading the claim language in tandem 8 with the written description and figures, the ’244 Patent lacks the precision required to 9 “afford clear notice of what is claimed.” Nautilus, 572 U.S. at 910. Accordingly, the 10 court concludes that Barnhart has provided clear and convincing evidence that the term 11 “offset hoisting apparatus” is indefinite and that claim 1 is therefore invalid. See Cox 12 Commc’ns, 838 F.3d at 1228; see also MyMedicalRecords, Inc. v. Walgreen Co., Nos. 13 2:13-CV-00631 ODW (SHx), 2:13-cv-02538-ODW (SHx), 2:13-cv-03560-ODW (SHx), 14 2:13-cv-07285-ODW (SHx), 2014 WL 7338822, at *1 (C.D. Cal. Dec. 22, 2014) 15 (granting defendants’ summary judgment motion and holding that “a claim that includes 16 an indefinite limitation is invalid pursuant to 35 U.S.C. § 112”). 17 Because Asserted Claims 4, 16, and 17 are dependent claims that incorporate 18 claim 1 and the term “offset hoisting apparatus,” those claims are also invalid as 19 indefinite. (See ’244 Patent at cols. 6:30-37, 8:1-10); see also Interval Licensing, 766 20 F.3d at 1374 (finding “the [phrase] ‘unobtrusive manner that does not distract a user’” to 21 be indefinite and that “[t]he claims that depend on that phrase are thus invalid for 22 indefiniteness”); Fargo Elecs., Inc. v. Iris, Ltd., Inc., 287 F. App’x 96, 99 (Fed. Cir. 1 2008) (holding that “independent claim 8 is invalid as indefinite” and “[b]ecause 2 dependent claims 9 through 15 depend from claim 8 . . . they are also invalid as 3 indefinite”). Thus, the court concludes that Barnhart is entitled to summary judgment 4 with respect to its invalidity counterclaim. See VLSI Tech., 706 F. Supp. 3d at 988 5 (granting summary judgment after concluding patent was invalid as indefinite). Because 6 the court concludes that the ’244 Patent is invalid as indefinite, the court does not reach 7 the remaining arguments in Barnhart’s motion for summary judgment. Richdel, Inc. v. 8 Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983) (“The claim being invalid there is 9 nothing to be infringed.”). 10 3. Mr. Schuyleman’s Motion for Summary Judgment 11 The court independently considers the merits of Mr. Schuyleman’s summary 12 judgment motion. Fair Hous. Council of Riverside Cnty., 249 F.3d at 1136. Mr. 13 Schuyleman asserts that he is entitled to summary judgment on Barnhart’s invalidity 14 counterclaim. (See generally Schuyleman MSJ.) He does not, however, provide any 15 evidence in support of his motion. Rather, Mr. Schuyleman asserts that “[s]hould the 16 [c]ourt exclude the testimony of Mr. Perkin, Barnhart will be without evidence to support 17 its claim of invalidity and [Mr.] Schuyleman would be entitled to summary judgment of 18 no invalidity.” (Id. at 2.) As further detailed in the court’s Daubert order, the court did 19 not exclude the portions of Mr. Perkin’s testimony or report bearing on the parties’ 20 indefiniteness dispute. Furthermore, the court has reviewed Mr. Schuyleman’s summary 21 judgment motion and concludes that none of the arguments raised in his motion 22 1 undermine the conclusion that Barnhart is entitled to summary judgment on its invalidity 2 counterclaim. Accordingly, Mr. Schuyleman’s summary judgment motion is denied. 3 IV. CONCLUSION 4 For the foregoing reasons, the court GRANTS Barnhart’s motion for summary 5 judgment with respect to its invalidity counterclaim and Mr. Schuyleman’s direct and 6 induced infringement claims (Dkt. # 94). Mr. Schuyleman’s motion for summary 7 judgment is DENIED (Dkt. # 95). The parties’ respective motions in limine are DENIED 8 as moot (Dkt. ## 115, 116). The court DISMISSES this action with prejudice. 9 Dated this 15th day of May, 2025. A 10 JAMES L. ROBART 11 United States District Judge 12 13 14 15 16 17 18 19 20 21 22