United States District Court, D. Connecticut
MEMORANDUM OF DECISION
Hon. Vanessa L. Bryant United States District Judge
Plaintiff ProBatter Sports, LLC (“ProBatter”), a Connecticut business designing, manufacturing, selling, installing, and servicing pitching machines, produces a three-wheeled machine called ProBatter Simulator. ProBatter Simulator, which has been sold to professional baseball teams, professional baseball players, and colleges, simulates a real-at-bat experience by generating almost any pitch within seven to ten seconds. ProBatter Simulator accomplishes this feat by utilizing a combination of technologies including dynamic braking, a programmable controller, and horizontal and vertical linear actuators. To protect its invention, ProBatter obtained United States Patent Numbers 6, 182, 649 and 6, 546, 924 (“ProBatter Patents”).
Defendant Sports Tutor, Inc. (“Sports Tutor”), a California corporation also involved in the pitching-machine business, manufactures and sells two machines called HomePlate and HomePlate Premier (“HomePlate Machines”). HomePlate Machines similarly employ, inter alia, regenerative braking, a programmable controller, and horizontal and vertical linear actuators to automatically simulate almost any pitch within seven seconds. HomePlate Machines likewise have been sold to Major League Baseball teams, professional baseball players, and college programs, but they sell for substantially less than ProBatter Simulator. Sports Tutor introduced the HomePlate Machines after the approval of the ProBatter Patents. Sports Tutor does not hold a patent for its HomePlate Machines.
ProBatter brought this action for patent infringement against Sports Tutor. Sports Tutor answered, in relevant part, that the ProBatter Patents were invalid for obviousness. The Court granted summary judgment on the question of infringement but denied summary judgment on the question of invalidity. The Court held a five-day bench trial in July 2015 and subsequently ordered the parties to file proposed findings of fact and conclusions of law. Sports Tutor argues that the ProBatter Patents are invalid because at the time they were filed it would have been obvious to combine dynamic braking with existing pitching machines. Several companies had done so before ProBatter.
For the reasons stated below, the Court makes the following findings of fact and conclusions of law in accordance with Federal Rule of Civil Procedure 52(a). The Court finds that: (1) there is insufficient evidence to make findings on the scope and content of the prior art; (2) there is insufficient evidence to make findings on the differences between the prior art and the claims at issue; (3) a person with the level of ordinary skill is someone with knowledge of engineering principles who deals with motor control vendors in his work designing and manufacturing pitching machines; and (4) secondary considerations such as commercial success weigh in favor of non-obviousness. The Court rules that Sports Tutor has not established that the claims at issue would have been obvious to a person having ordinary skill in the art. The Court permanently enjoins Sports Tutor from making, using, offering for sale, or selling the HomePlate Machines.
FINDINGS OF FACT
“A patent shall be presumed valid.” 35 U.S.C. § 282. A challenger must present clear and convincing evidence to overcome the presumption of validity. Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91 (2011). This requirement derives from the principle “that the party challenging a patent in court bears the added burden of overcoming the deference that is due to a qualified government agency presumed to have done its job.” Dome Patent L.P. v. Lee, 799 F.3d 1372, 1378-79 (Fed. Cir. 2015) (internal quotation marks and citations omitted). Clear and convincing evidence “produces in the mind of the trier of fact an abiding conviction that the truth of the factual contentions [is] highly probable.” Buildex Inc. v. Kason Indus., Inc. 849 F.2d 1461, 1463 (Fed. Cir. 1988) (alterations, internal quotation marks, and citations omitted). A challenger must also produce “[p]hysical, documentary, or circumstantial evidence, or reliable testimony from individuals other than the alleged inventor or an interested party.” Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 412 F.3d 1331, 1339 (Fed. Cir. 2005). Corroboration is a question of fact. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1171 (Fed. Cir. 2006). Mindful of these requirements, the Court must address: (1) the scope and content of prior art; (2) the differences between prior art and the claims at issue; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations. Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334-35 (Fed. Cir. 2016).
1. Prior Art
Sports Tutor presented insufficient evidence at trial to enable the Court to make findings on the scope and content of prior art. The Court must know what prior art to consider before analyzing the scope and content of prior art. Sports Tutor doesn’t say. On the one hand, Sports Tutor proposes findings on one or two features of the MetalTek, Crown, and WNAN machines. ECF No. 462 at 8-18. On the other hand, Sport Tutor proposes a comparison between the patents considered on reexamination and the ProBatter Patents. Id. at 7-8. The Court cannot make any findings of fact with respect to this factor because Sports Tutor does not clearly articulate what prior art should be considered. See Radar Indus., Inc. v. Cleveland Die & Mfg. Co., 424 F. App’x 931, 936 (Fed. Cir. 2011) (observing that insufficient briefing results in waiver). The Court nonetheless offers additional reasons for finding that it cannot make any findings of fact with respect to the scope and content of either the MetalTek, Crown, and WNAN machines or the patents considered on reexamination.
A. MetalTek, Crown, and WNAN Machines
Sports Tutor has not presented sufficient evidence on the scope and content of the MetalTek, Crown, and WNAN machines to enable the Court to make any findings of fact. Relying on these machines as prior art renders incomprehensible Sports Tutor’s proposed findings of fact and conclusions of law. The only proposed findings on “the differences between the prior art and claims at issue” concerns the evidence considered on reexamination. ECF No. 462 at 7-8. Sports Tutor does not propose findings on the differences between the MetalTek, Crown, and WNAN machines and the ProBatter Patents. Id.
Without specifically proposing these findings, the obviousness defense would fail as a matter of law. Further, evening assuming that the only difference between these machines and the ProBatter Patents is the use of dynamic braking,  Sports Tutor would not have an obviousness defense. How could ProBatter have made an obvious improvement to the MetalTek, Crown, and WNAN machines, which allegedly used dynamic braking, by adding dynamic braking? That’s a novelty defense, and Sports Tutor doesn’t raise it.
The Court runs into another problem examining the MetalTek, Crown, and WNAN machines as prior art. Sports Tutor proposes the following findings of fact: (1) “Decades before Plaintiff’s patents were filed, MetalTek began selling tennis machines that used dynamic braking to rapidly slow the pitching wheels;” (2) “Years before Plaintiff filed its patents Crown publicly used both tennis and baseball machines that used dynamic braking to slow the wheel”; and (3) “By January 1998, WNAN had publicly demonstrated a programmable baseball machine, the Program-A-Pitch, which used dynamic braking to slow the wheels.” ECF No. 462 at 8, 10, 16. This information alone is insufficient to understand the scope and content of the prior art. See In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (“[T]he prior art as a whole must be considered. The teachings are to be viewed as they would have been viewed by one of ordinary skill.”). After all, the parties do not dispute that dynamic braking existed before the time of the claimed invention. The legal issue is whether it would have been obvious to a person skilled in the art to employ dynamic braking in the many combinations employed by ProBatter. Without proposing findings about the other salient attributes of the MetalTek, Crown, and WNAN machines, the proposed finding of facts do not help answer the legal question.
Putting these issues aside, there is insufficient evidence on the use of dynamic braking by MetalTek, Crown, or WNAN. With respect to the MetalTek, the primary evidence consists of deposition testimony from Alfred Yarur, the President of MetalTek. See ECF 462 at 8-10 (citing Ex. CW-1). Yarur is an interested witness because he has a business interest in invalidating the ProBatter Patents. Ex. CW-1 at 54:7-10 (Yarur Dep. Tr.). No evidence corroborates his interested testimony. Sports Tutor relies solely on MetalTek’s 1995 promotional materials. See ECF 462 at 8-10 (citing Ex. CW-7). The promotional materials refer to “comprehensive deceleration component, ” not dynamic breaking. Ex. CW-7 at 8. The single sentence using “comprehensive deceleration component” provides insufficient information for the Court to determine whether this term refers to dynamic braking. Id. Sports Tutor does not rely on a photograph of an actual circuit with the word “dynamic brake” scribbled on top. Exhibit CW-3 at ST-001450. In any event, this evidence is unreliable because Yarur admitted that the photograph would be impossible to make sense of unless he had later written “dynamic brake.” Ex. CW-1 at 66:5-11; 68:2-13 (Yarur Dep. Tr.). The absence of corroborating evidence is further supported by Sports Tutor’s failure to produce extant, corroborating evidence-for example, bills of material and blueprints. Id. at 69:13-70:5. Yarur’s interested, uncorroborated testimony does not leave the Court with an abiding conviction that a MetalTek machine used dynamic braking.
With respect to Crown, the primary evidence consists of testimony from James Scott, the former President of Crown. ECF No. 462 at 10-14 (citing ECF No. 456). Scott was an interested witness because he was being financially compensated for his assistance with case preparation and testimony. ECF No. 456 at 247:7-249:7 (Scott Testimony). Scott was more interested than the average paid-for witness because he was unemployed when he was first hired to work on this case and was at times paid more than $45.00 per hour-hardly a “meager” wage. Id. Scott admitted that he did not possess any documents corroborating his testimony. Id. at 235:3-7; 236:23-237:2. Scott’s testimony was not credible. For example, this Court pointed out that Scott provided conflicting testimony at trial. See, e.g., ECF No. 452 at 44:21-23 (“You’re giving conflicting testimony.”). Further, after this Court explained the concept of personal knowledge, Scott admitted that he testified to facts outside of his personal knowledge and that he had no idea when he did so. Id. at 52:6-54:8. Scott’s interested, uncorroborated, unreliable testimony does not leave the Court with an abiding conviction that a Crown machine used dynamic braking.
Sports Tutor offered testimony from Jim Hill, the owner of a manufacturing representative firm called Hill & Associates. ECF No. 462 at 12-13 (citing ECF No. 452). Hill testified that he sold ten regenerative motor controls to Crown. ECF No. 452 at 103:5-106:21 (Hill Testimony). This evidence is circumstantial because Hill also testified that he had no personal knowledge whether those drives were ever used in a pitching machine. Id. at 133:22-25. His testimony was not persuasive, in part, because he admitted that his earlier affidavit concerning the type of regenerative braking control circuits sold to Crown-a material issue- was false. Id. ...