IN RE: LIQUID TOPPINGS DISPENSING SYSTEM (‘447) PATENT LITIGATION (2023)

ORDER

THIS CAUSE came before the Court upon Plaintiff Kona Ice, Inc. (“Plaintiff” or “Kona”)’s Motion for Summary Judgment (ECF No. 136) (“Mot.”). Defendants filed a response in opposition, (ECF No. 142) (“Resp.”), and Plaintiff filed a reply (ECF No. 149) (“Reply”). The Motion is now ripe for review. For the following reasons, the Court GRANTS Plaintiff's Motion.

I. FACTUAL BACKGROUND 1

Kona and Defendant Tikiz Franchising, LLC operate competing franchises selling flavored shaved ice out of specially built service vehicles that resemble ice cream trucks. Kona Ice, Inc. v. Canedo, 0:17-cv-61842-KMM (S.D. Fla. Sept. 21, 2017), ECF No. 1 (“Kona Compl.”).² On February 27, 2013, Kona filed U.S. Patent Application No. 9,751,447 (hereinafter the “ ‘447 Patent”), claiming priority to provisional application No. 14/870,439. Pl. 56.1 ¶ 1; see also (ECF No. 136-2) (cited to as “ ‘447 Patent”). On September 5, 2017, the USPTO granted the ‘447 Patent, entitled “Liquid Toppings Dispensing System.”³ See id. Plaintiffs argue that the ‘447 Patent is valid, enforceable, and was infringed by Defendants. See generally Mot.

i. Kona's Intellectual Property

The ‘447 Patent generally relates to a mechanism from which an operator can dispense beverages or frozen confections from an external wall of a mobile vehicle. The ‘447 Patent includes the following diagrams:

Throughout this litigation, seven of the ten claims asserted in the ‘447 Patent have been contested: Claims 1–4, 6–7, and 10. The relevant claims read as follows:

Claim 1

A mobile confectionary apparatus, comprising:

a vehicle including at least one upstanding side wall;

an interior space surrounded by the at least one upstanding side wall and configured to receive at least one person;

an opening extending through the at least one upstanding side wall and through which an item may be passed from the interior space to outside of the vehicle; and

a liquid toppings dispensing system including a housing being positioned adjacent to, and opposing, the at least one upstanding side wall and including a plurality of liquid dispensers configured to dispense at least one liquid topping onto the item, each of the plurality of liquid dispensers being in fluid communication with at least one reservoir holding the at least one liquid topping, with the liquid toppings dispensing system being located externally of the at least one upstanding side wall and spaced entirely laterally therefrom by a gap.

Claim 2

The mobile confectionary apparatus of claim 1, wherein the plurality of liquid dispensers is arranged along an axis that is generally parallel to a longitudinal axis of the liquid toppings dispensing system.

Claim 3

The mobile confectionary apparatus of claim 1 further comprising at least one tube extending from the at least one reservoir and being coupled to at least one of the plurality of liquid dispensers.

Claim 4

The mobile confectionary apparatus of claim 1, wherein the vehicle is a truck.

Claim 6

The mobile confectionary apparatus of claim 1, further comprising a cover member configured to cover the plurality of liquid dispensers.

Claim 7

The mobile confectionary apparatus of claim 1, further comprising a catch basin supported by the housing and located beneath the plurality of liquid dispensers.

Claim 10

The mobile confectionary apparatus of claim 3, further comprising at least one port in the at least on [sic] upstanding side wall through which the at least one tube extends to couple the at least one reservoir to the at least one of the plurality of liquid dispensers.

See ‘447 Patent at 15.⁴

ii. Procedural History

On September 21, 2017, Kona filed the instant action, alleging patent infringement against Guillermo Canedo and Icetastic Enterprises, LLC pursuant to Title 35 of the United States Code. See generally Kona Compl. Upon motion by those Defendants, the United States Judicial Panel on Multidistrict Litigation ordered the transfer and consolidation of twelve actions, pending throughout ten districts, regarding Kona's claims of infringement. (ECF No. 1).

The Parties proceeded to brief the issue of claim construction. On July 29, 2019, the Court held a Markman Hearing ⁵ and on December 16, 2020, issued its Order following Markman Hearing. (“Markman Order”) (ECF No. 67). In its Markman Order, the Court construed the following terms: “confronts,” “being in fluid communication with,” “opposing,” “spaced entirely laterally,” and “gap.” Id. at 5 n.3. The Court construed (1) “confronts” and “opposing” to mean “being physically located opposite to”; (2) “being in fluid communication with” to mean “connected in a way that allows fluid to flow from one location to another location”; and (3) “spaced entirely laterally” and “gap” together to mean “entirely devoid of contact with the upstanding side wall in a lateral direction.” Id. at 13.

On February 18, 2021, this Court issued its Order on Defendants’ Motion for Summary Judgment. (ECF No. 160) (“Order on Def. MSJ”). Therein, the Court denied Defendants’ claim that the ‘447 Patent was invalidated by anticipation through US patent publication 2009/0078724 (a prior art described, based on the name of one of its co-creators, as “Lamb”). See generally id. Now, Plaintiff moves for summary judgment on its own claims, as well as several of Defendants’ arguments. See generally Mot.

II. APPLICABLE LAW

Summary judgment is appropriate where there is “no genuine issue as to any material fact [such] that the moving party is entitled to judgment as a matter of law.” Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); see also Fed. R. Civ. P. 56. An issue of fact is “material” if it is a legal element of the claim under the applicable substantive law which might affect the outcome of the case. Allen v. Tyson Foods, Inc., 121 F.3d 642, 646 (11th Cir. 1997). An issue of fact is “genuine” if the record, taken as a whole, could lead a rational trier of fact to find for the non-moving party. Id. Additionally, speculation or conjecture cannot create a genuine issue of material fact. Cordoba v. Dillard's, Inc., 419 F.3d 1169, 1181 (11th Cir. 2005).

The moving party has the initial burden of showing the absence of a genuine issue as to any material fact. Id. (citation omitted). In assessing whether the moving party has met this burden, the court must view the movant's evidence and all factual inferences arising from it in the light most favorable to the non-moving party. Denney v. City of Albany, 247 F.3d 1172, 1181 (11th Cir. 2001). Once the moving party satisfies its initial burden, the burden shifts to the non-moving party to come forward with evidence showing a genuine issue of material fact that precludes summary judgment. Bailey v. Allgas, Inc., 284 F.3d 1237, 1243 (11th Cir. 2002); see also Fed. R. Civ. P. 56(e). “The mere existence of a scintilla of evidence in support of the [non-moving party's] position will be insufficient; there must be evidence on which the jury could reasonably find for the [non-movant].” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). “If reasonable minds could differ on the inferences arising from undisputed facts, then a court should deny summary judgment.” Miranda v. B & B Cash Grocery Store, Inc., 975 F.2d 1518, 1534 (11th Cir. 1992). But if the record, taken as a whole, cannot lead a rational trier of fact to find for the non-moving party, there is no genuine issue for trial, and summary judgment is proper. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

III. DISCUSSION

Plaintiff moves for summary judgment on five categories of issues: (1) Defendants’ infringement of the ‘447 Patent by both Defendants’ pre- and post-October 2017 vehicle designs; (2) the validity of the ‘447 Patent; (3) the enforceability of the ‘447 Patent; (4) Defendants Tikiz Franchising, LLC and Tikiz Enterprises, LLC (collectively, “the Tikiz Defendants” or “Tikiz”)’s claim for breach of a 2012 Settlement Agreement (ECF No. 136-13) (“2012 Settlement Agreement” or “2012 Agmt.”); and (5) Defendants’ equitable defenses of laches, estoppel, waiver, consent, and unclean hands. Mot. at 8. The Court addresses each issue in turn.

A. DEFENDANTS INFRINGED THE ‘447 PATENT.

Plaintiff asserts that Defendants’ pre- and post-2017 vehicle designs “have infringed Claims 1-4, 6-7 and 10 of the ‘447 Patent.” Mot. at 13. Although Plaintiff asserts facts and argument to support each of these contentions, see Mot. at 14–21, Defendants respond only to “the primary disagreement between the parties”: namely, “whether Defendants’ vehicles meet the claim requirement that the liquid toppings dispensing system [hereinafter “LTDS”] is located externally of the at least one upstanding side wall ‘and spaced entirely laterally therefrom by a gap’ ” (i.e., contesting the last limitation of Claim 1). Resp. at 3. The Court thus focuses its analysis on whether that limitation has been infringed.

iii. Legal Framework

A patent is infringed when a person “without authority makes, uses, offers to sell, or sells any patented invention, within the United States ․ during the term of the patent.” 35 U.S.C. § 271(a). Determining whether an accused device infringes a patent requires a two-step inquiry. See Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed. Cir. 2004). First, a court must determine the scope and meaning of “any disputed terms and limiting expressions in the [patent] claims” as a matter of law. Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Markman Order (ECF No. 67). Second, the fact finder compares “the properly construed claims to the allegedly infringing device.” Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1273 (Fed. Cir. 2004). Although there is no “per se rule that expert testimony is required to prove infringement when the art is complex,” Centricut, LLC v. Esab Grp., Inc., 390 F.3d 1361, 1370 (Fed. Cir. 2004), courts regularly approve of the use of expert testimony to establish infringement. See Ultradent Prods., Inc. v. Life-Like Cosmetics, Inc., 127 F.3d 1065, 1070 (Fed. Cir. 1997); see also AquaTex Indus., Inc. v. Techniche Sols., 479 F.3d 1320, 1329 (Fed. Cir. 2007) (“Even where literal infringement is involved, expert infringement testimony is generally required in cases involving complex technology.”).

It is the patentee's burden to prove infringement by a preponderance of the evidence. Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991). “If the patentee fails to meet that burden, the patentee loses regardless of whether the accused comes forward with any evidence to the contrary.” Creative Compounds, LLC v. Starmark Labs., 651 F.3d 1303, 1314 (Fed. Cir. 2011). The Federal Circuit teaches that “[s]ummary judgment on the issue of infringement is proper when no reasonable jury could find that every limitation recited in a properly construed claim either is or is not found in the accused device either literally or under the doctrine of equivalents.” PC Connector Sols. LLC v. SmartDisk Corp., 406 F.3d 1359, 1364 (Fed. Cir. 2005) (citing Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353–54 (Fed. Cir. 1998)). “Once the [patentee] has satisfied its initial burden, the ‘burden of production then shifts to the [accused] to identify genuine issue that preclude summary judgment.’ ” IQRIS Techs. LLC v. Point Blank Enters., Inc., No. 21-CV-61976, ––– F.Supp.3d ––––, ––––, 2023 WL 3003800, at *5 (S.D. Fla. Apr. 19, 2023) (citing Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 990 (Fed. Cir. 2006)).

iv. Plaintiff's Arguments

The last limitation of Claim 1 in the ‘447 Patent encompasses, in relevant part, a LTDS “being located externally of the at least one upstanding side wall and spaced entirely laterally therefrom by a gap.” In its Markman Order, the Court construed “spaced entirely laterally therefrom” and “gap” together to have their ordinary and customary meaning: “entirely devoid of contact with the upstanding side wall in a lateral direction.” See Markman Order at 11–13.

Plaintiff first argues that, at a threshold level, Defendants have infringed upon this limitation by incorporating LTDS's in both their pre- and post-2017 vehicle designs in which “the housing and the dispensers are entirely devoid of contact with the upstanding side wall.” See Mot. at 17. To substantiate this claim, Plaintiff sets forth two main pieces of evidence. First, Plaintiff points to a set of drawings, produced by Defendants in discovery, showing side views of Defendants’ pre- and post-2017 LTDS's ⁶ :

See Hicks Report at 137, 139. Plaintiff avers that, in both Drawings J1 and J2, “the housing and the dispensers [of Defendants’ LTDS's] are entirely devoid of contact with the upstanding side wall.” Mot. at 16–17.

Second, Plaintiff sets forth the Expert Report of Timothy Hicks, a mechanical engineer with specific expertise in “design aspects of commercial vehicles, automobiles, and RVs, including metal fabricated, welded, machined, and stamped steel structural components and systems.” Hicks Report ¶ 6. Based on his review of Drawings J1 and J2, Defendants’ responses to requests for admission and other record documents, Hicks concludes that the limitation at issue “is found in the Defendants’ service vehicle design, before and after the October 2017 Design.” Id. ¶¶ 51–65.

On this evidence, the Court finds that Plaintiff has met its preliminary burden of demonstrating infringement. First, the Court credits Hicks’ detailed expert report, grounded in numerous record documents and a plain viewing of Drawings J1 and J2 (both documents produced by Defendants, and both clearly depicting a gap between the box described as “housing” and the truck's side wall). See generally Hicks Report; see also id. ¶¶ 54–57 (discussing Defendants’ discovery responses and Drawings J1 & J2). Moreover, Hicks’ opinion and the drawings are complemented by several record photographs displaying the installation and installed versions of Defendants’ LTDS's, both pre- and post-2017. See, e.g., See Hicks Report at 159–60, 179, 184. These images clearly evidence a gap, in both vehicle models, between the “housing” of the LTDS's and the side wall of at least some trucks in the Tikiz fleet.⁷ See id. Accordingly, the Court finds that Plaintiff has met its preliminary burden of showing the “gap” limitation's presence in Defendants’ vehicles, and the burden therefore shifts to Defendants to demonstrate a lack thereof.

v. Defendants’ Arguments

At its core, Defendants’ position is that the “gap” between their LTDS's and the side wall of their vehicles are “clearly occupied by a number of structures” which “destroy[ the] gap between [ ] the system and the wall.” Resp. at 3; see also id. at 4 (“To the extent that any structure is in the gap, the claim limitation is clearly not met.”). In support of this contention, Defendants advance two subsidiary arguments:

1. First, Defendants argue that certain structures depicted in the drawings above (e.g., the “support angle for syrup tubing” and “support bracket for syrup dispenser” depicted in Drawing J1, as well as the “seals” depicted in Drawing J2) are either components of their systems’ “housings” or otherwise components of the “systems” more generally. See Resp. at 5 (the structures “exist only as a part of the housing to the [LTDS's]”). This would potentially place the “systems” in contact with the wall, negating the presence of any “gap.” See, e.g., Def. 56.1 ¶ 10 (“Paragraph 57 is denied because Defendants’ drawing of the design shows that the seals are in contact with the system and the wall thereby negating any gap between the system and the wall.”). Defendants argue Plaintiff “ignores” these structures (often referred to as “attachment means”) as being present between Defendants’ LTDS's and the vehicle walls. See generally Resp. at 3–4.

2. Second, Defendants argue that its “gap-destroying structures” are present within the lateral planes created by the sides of its LTDS's, thereby rendering its systems non-infringing on the ‘447 Patent. In other words, Defendants argue the “gap-destroying structures” connect their systems to the wall directly behind and within the lateral planes created by the sides of Defendants’ systems. See, e.g., Resp. at 11 (“Defendants’ vehicle support bracket ․ destroys the gap completely by existing entirely in the gap between the [LTDS] and the side wall of the vehicle.”). Defendants urge this understanding as different from the limitations of the ‘447 Patent, which they characterize as having connections to the wall to the left and right of the lateral planes created by the sides of Plaintiff's LTDS, but not within those lateral planes.8 In support, Defendants provide an annotated version of Fig. 4B, a depiction of Plaintiff's LTDS contained within the ‘447 Patent:

To better explain this argument, the Court contrasts the above image with another produced by Defendants during discovery, showing a top-view drawing of Defendants’ pre-2017 LTDS.⁹ The reader should note the presence of the “syrup supply tubing support angle bracket” behind, but solely within the “bounds of the gap” of, Defendants’ LTDS:

vi. Analysis

Defendants’ arguments ultimately rest on this Court's interpretation of “gap-destroying structures” as being components of a liquid toppings dispensing system. After all, the limitation at issue defines a “liquid toppings dispensing system”—not “gap-destroying structures” or any other term—“being located externally of the at least one upstanding side wall and spaced entirely laterally therefrom by a gap.” See Claim 1, supra. Thus, Defendants’ “gap-destroying structures” (i.e., hinges, seals / gaskets, and brackets) must be considered as components of Defendants’ systems in order to successfully evade Claim 1's limitations. And this is true regardless of their relative positions to the “bounds of the gap”: Defendants set forth no record evidence that the “housing proper” of their LTDS's touch the wall,¹⁰ so if the “gap-destroying structures” are not construed as components of the housing or the system generally, any contention that the systems are not “spaced entirely laterally [from the vehicle's wall] by a gap” is baseless. See, e.g., Resp. at 5 (“Both the seals/gaskets of the October 217 Retrofit design and the support angle for supporting the syrup tubes of the design prior to October 2017 ․ exist only as part of the housing the to [LTDS].”).

Ultimately, the Court disagrees with Defendants’ “gap-destroying structures as components of the housing / system” argument for several reasons. First, the language of the ‘447 Patent expressly counsels against such an interpretation in its own design. Regarding the position of the system relative to the wall, the ‘447 Patent's “Detailed Description of the Invention” states as follows:

[O]ne or more hinges 56 may be utilized to pivotably attach the housing 44 to the wall 20 of the structure 18. In this regard, the hinges 56 provide an axis of rotation about which the liquid toppings dispensing system 12 may be pivoted relative to the structure 18 (indicated by arrow 58 in FIG. 3A). It will be appreciated that the hinges 56 may allow the liquid toppings dispensing system 12 to be oriented in any one of a number of orientations relative to the rear wall 26 and the side wall 24 as set out above.

‘447 Patent at 8:1–10. This passage clearly contemplates the hinges (component 56) as distinct from the housing (component 44) and the LTDS at large (component 12). See id.; accord ‘447 Patent at 8:30–34 (“[W]hen the liquid toppings dispensing system 12 is oriented in the position shown in FIG. 4A, it may be releasably secured to the rear wall 26 by the hinges 56 provided on one end thereof and by a latch mechanism 72 provided at the other end thereof.”). Thus, contrary to Defendants’ interpretation, the Court finds those “attachment means” were not contemplated as part of Plaintiff's LTDS in the ‘447 Patent, but instead permit “the liquid toppings dispensing system 12 to be oriented in any one of a number of orientations relative to the rear wall 26 and the side wall 24.” Id.

These passages also refute the notion that Plaintiff is “ignoring ‘attachment means.’ ” Resp. at 5. Defendants’ fundamental position is that, “[t]o the extent that any structure is in the gap, the claim limitation is clearly not met.” Resp. at 4 (emphasis added). Not so. The claim limitation could not be clearer in this respect: it is the “liquid toppings dispensing system” which is “spaced entirely laterally [from the vehicle wall] by a gap.” See Claim 1, supra. While Defendants are right to note that “[t]here is no exception for ‘attachment means’ or any other type of structure in the claim,” the language of the ‘447 Patent clearly contemplates and permits Plaintiff's LTDS 12 to be entirely spaced from the wall by very way of such attachment means (hinge 56 and latch 72). See ‘447 Patent at 8:1–10, 8:30–34. And correspondingly, the ‘447 Patent makes no mention of the “bounds of the gap,” no mention of “gap-destroying structures,” and no mention of such structures as being permitted / not permitted to be within / without certain bounds. Such discussion overcomplicates (what the Court considers to be) the clear implication of the limitation, which is that Plaintiff's system was to be “spaced entirely laterally” from “at least one upstanding side wall” by a gap created by, not in spite of, attachment means like hinges 56 and latches 72. Accordingly, the Court finds that “attachment means” are not components of a LTDS, and their very presence in Defendants’ devices creates, not destroys, the gap contemplated by Claim 1 of the ‘447 Patent.

The Court's conclusion here is further bolstered by the unrefuted report of Plaintiff's expert. As mentioned above, courts routinely use expert testimony to aid in the establishment of infringement. See Ultradent Prods., Inc., 127 F.3d at 1070. In his report, Plaintiff's expert Timothy Hicks concludes—over several pages of analysis, based on record evidence such as the ‘447 Patent's prosecution history, photographs of Defendants’ vehicles (pre- and post-2017), and design diagrams of Defendants’ LTDS's—that the claim limitation at issue “is found in the Defendants’ service vehicle design, before and after the October 2017 Design.” See Hicks Report ¶¶ 51–65.¹¹ Of particular note is Hicks’ interpretation of the Patent Examiner's consideration of Figure 4B, from which Hicks concludes that “the system is ․ spaced entirely laterally [from the at least one upstanding side wall] by a gap,” despite the facts that “the hinge (56) and latch (72) are in contact with the wall, and that contact occurs in the space between the system and the housing.” Id. ¶ 56. Hicks further details several reasons why a person of skill in the art would not understand “means of attachment” as “not a part of the housing or the system,” many of which the Court has already stated above. See id. ¶¶ 25–29. And most importantly, without the Tollefson Declaration, Defendants present no evidence for the Court to find otherwise—only attorney argument disputing Plaintiff's record-based contentions. See generally Resp. at 4–12; Def. 56.1 ¶¶ 10–16. Such a showing is insufficient where “the ‘burden of production [has shifted] to the [accused] to identify genuine issue that preclude summary judgment.’ ” IQRIS Techs. LLC, ––– F.Supp.3d at ––––, 2023 WL 3003800, at *5. Accordingly, the Court finds that Defendants have not met the burden of production necessary to preclude summary judgment on Plaintiff's infringement claims, and summary judgment for Plaintiff is therefore proper.¹²

B. THE ‘447 PATENT IS VALID.

Plaintiff moves for summary judgment on the validity the ‘447 Patent. See generally Mot. at 14–24. To wit, Plaintiff moves for a ruling that the ‘447 Patent is not invalidated by the defenses of anticipation or obviousness.¹³

All issued patents are entitled to a presumption of validity. 35 U.S.C. § 282; see also Novo Nordisk A/S v. Caraco Pharm. Labs., Ltd., 719 F.3d 1346, 1352 (Fed. Cir. 2013) (noting that “[i]t is black-letter law that a patent is presumed valid”). To overcome this presumption, a party challenging the validity of a patent bears the burden of proving its case with clear and convincing evidence. Impax Labs., Inc. v. Aventis Pharm., Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008); see also Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1260 (Fed. Cir. 2012) (noting that this high burden of proof stems from the fact that the party challenging a patent “bear[s] the added burden of overcoming the deference that is due to a qualified government agency presumed to have done its job”) (citation omitted). This standard requires a party moving for invalidation of a patent at the summary judgment stage to “submit such clear and convincing evidence of invalidity” that “no reasonable jury could find otherwise.” Eli Lilly & Co. v. Barr Lab'ys., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001). Or, as the case is here, the “party seeking to have a patent held not invalid at summary judgment must show that the nonmoving party, who bears the burden of proof at trial, failed to produce clear and convincing evidence on an essential element of a defense upon which a reasonable jury could invalidate the patent.” Id.

Here, the Parties do not contest that Plaintiff's ‘447 Patent is entitled to a threshold presumption of validity. 35 U.S.C. § 282; see also Resp. at 13–14 (failing to acknowledge the presumption of validity). Accordingly, for the Court to grant summary judgment in Plaintiff's favor on the issue of invalidity, Plaintiff must show that Defendants “failed to produce clear and convincing evidence” on their defenses of anticipation and obviousness.

vii. Anticipation

A party may assert invalidity on several grounds, including anticipation by prior art, obviousness, and indefiniteness. See 35 U.S.C. §§ 102, 103, 112. Under 35 U.S.C. § 102, a claim will be “invalid for anticipation when the same device or method, having all of the elements contained in the claim limitations, is described in a single prior art reference.” Crown Operations Int'l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1375 (Fed. Cir. 2002); Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (“[I]nvalidity by anticipation requires that the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.”). “A reference patent anticipates an invention ․ only if the reference patent's effective filing date is before the date of the invention.” Spansion, Inc. v. Int'l Trade Comm'n, 629 F.3d 1331, 1356 (Fed. Cir. 2010). While “anticipation is a question of fact, it may be decided on summary judgment if the record reveals no genuine dispute of material fact.” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1327 (Fed. Cir. 2001). The Federal Circuit notes that “testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses’ interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference.” Schumer v. Lab. Comput. Sys., Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002).

The Court has already determined that Defendants, when presenting their own evidence and arguments at summary judgment, failed to meet the burden of showing, by clear and convincing evidence, invalidity via anticipation. See (ECF No. 160) (Order denying Defendants’ Motion for Summary Judgment on invalidity by anticipation). The Court will not waste ink rehashing the same arguments here where Defendants have set forth no new evidence nor contentions. Compare Resp. at 15–22 (asserting again that the “ ‘447 patent is invalid because it is anticipated by the disclosure of [US patent publication 2009/0078724 (“Lamb”)]) with (ECF No. 160) (“Defendants have failed to meet their burden of showing the absence of a genuine issue of material fact as to whether Lamb disclosed a gap between the liquid toppings dispensing system and the side wall.”). Accordingly, for the same reasons articulated in its February 18, 2021 Order (ECF No. 160), the Court finds Plaintiff has demonstrated that Defendants cannot present clear and convincing evidence showing invalidity by anticipation, and therefore grants summary judgment in favor of Plaintiff on this issue.

viii. Obviousness

A patent is invalid for obviousness “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (quoting 35 U.S.C. § 103)). Obviousness is a question of law based on underlying factual findings. Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). “A claimed invention may be obvious even when the prior art does not teach each claim limitation, so long as the record contains some reason why one of skill in the art would modify the prior art to obtain the claimed invention.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016) (emphasis added), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). And this Court specifically requires that, “[i]f obviousness is alleged, [the proponent must set forth] an explanation of why the prior art renders the asserted claim obvious, including an identification of any combinations of prior art showing obviousness.” (ECF No. 42) (Patent Pretrial Order).

Here, Plaintiff succeeds in showing that Defendants cannot carry their heavy burden of demonstrating invalidity by obviousness. First, while Defendants argue that Lamb “discloses all of the elements recited in claims 1–4, 6–7, and 10 of the ‘447 Patent,” see Resp. at 23, the Court has already determined that it is, at the very least, not “obvious” from Lamb that there must exist a gap between the LTDS and the vehicle's upstanding wall in the designs contemplated there. See (ECF No. 160) at 10–15. To the contrary, the Court's prior Order pointed out the apparent flaws in such an unreasonable interpretation of the prior art, and drew attention to the “significantly more obvious, sound design whereby the liquid toppings dispensing system is safely mounted to the side wall.” (ECF No. 160) at 14. Defendants then pivot to the position that “any person having an understanding of well-known principles of physics would understand that the [LTDS] of Lamb could be modified to hang from hangar brackets (106, 108) such that the [LTDS] is entirely, laterally spaced from the side wall (28) by a gap.” Resp. at 23. Yet Defendants offer no authority or citations, of record or otherwise, in support this contention; and in fact, Defendants once again fail to articulate a reasonable basis for why the prior art should be understood as having contemplated such a poor design, when there exists a sounder and more obvious alternative.¹⁴

Even if Defendants did set forth such an argument, however, they most certainly fail to demonstrate the merit of their position through clear and convincing evidence. As Plaintiff points out, Defendants’ Invalidity Contentions—in direct contravention of this Court's Pretrial Order—fail to set forth “an explanation of why the prior art renders the asserted claim obvious, including an identification of any combinations of prior art showing obviousness.” (ECF No. 42). Defendants’ Invalidity Contentions simply list 21 prior art references but do nothing to explain how those references (or any combination thereof) render Claim 1's “gap” limitation obvious. See generally Invalidity Contentions (identifying 21 prior art references but failing to explain how they render any limitation in the ‘447 Patent obvious).¹⁵ Without any such evidence before it, the Court cannot see how Defendants might meet their ‘clear and convincing’ burden of demonstrating invalidation by obviousness, and summary judgment for Plaintiff on this issue is therefore proper.

C. THE ‘447 PATENT IS ENFORCEABLE.

Plaintiff next moves for summary judgment on the enforceability of the ‘447 Patent. Mot. at 24–27. Yet in their Response to Plaintiff's Statement of Material Facts, Defendants concede any remaining arguments pertaining to enforceability. See Def. 56.1 ¶¶ 40–43; accord Resp. (failing to address Plaintiff's enforceability argument). Accordingly, the Court GRANTS summary judgment for Plaintiff as to the enforceability of the ‘447 Patent.

D. PLAINTIFF IS ENTITLED TO SUMMARY JUDGMENT AS TO TIKIZ'S BREACH CLAIM ON THE 2012 SETTLEMENT AGREEMENT.

Plaintiff additionally moves for summary judgment on the Tikiz Defendants’ breach claim. Based on a prior infringement suit involving a different patent (the “ ‘137 Patent”), Plaintiff and the Tikiz Defendants entered into a settlement agreement in 2012. See (ECF No. 136-13) (“2012 Settlement Agreement” or “2012 Agmt.”). In the instant action, the Tikiz Defendants allege that Plaintiff has now “breached the [2012] Settlement Agreement ․ by filing at least 18 actions for patent infringement in breach of the Release and Covenant not to Sue.” (ECF No. 136-8) (“Tikiz Compl.”) ¶ 50. Two of those eighteen actions pertained solely to the infringement of the '387 Patent, see id. ¶ 14, and the balance pertained to the ‘447 Patent, id. ¶ 11.

“A settlement agreement is a contract and, as such, its construction and enforcement are governed by principles of Florida's general contract law.” Schwartz v. Fla. Bd. of Regents, 807 F.2d 901, 905 (11th Cir. 1987). To prove a breach of contract under Florida law, a plaintiff must demonstrate “the existence of a contract, the breach of the contract, and damages resulting from the breach.” Sun Life Assurance Co. of Can. v. Imperial Premium Fin., LLC, 904 F.3d 1197, 1217 (11th Cir. 2018) (citing DNA Sports Performance Lab, Inc. v. Club Atlantis Condo. Assoc., Inc., 219 So.3d 107, 109 (Fla. 3d DCA 2017)). Words contained in the settlement agreement “are to be given their plain and ordinary meaning, and it is not for the court to add or subtract any language from the face of a clearly worded agreement.” Schwartz, 807 F.2d at 905.

Both Parties agree that the breach claim involves paragraphs 6, 8, and 20 of the 2012 Settlement Agreement. Those paragraphs, in relevant part, state:

6. Tikiz agrees to cease using its current service vehicle design within five (5) days of the last date of signature on this Agreement. Tikiz agrees to redesign its service vehicle, including removing the current flavor dispensing system, and provide Kona Ice with photographic evidence thereof.

[․]

8. Kona Ice covenants not to sue Tikiz for infringement of the ‘136 patent based on the service vehicle design provided to counsel for Kona Ice on August 15, 2012 and the redesigned service vehicle as described in paragraph 6 above. A copy of the drawings, which shall remain confidential, are attached as Exhibit A.

[․]

20. Release and Covenant not to Sue: Kona Ice ․ hereby fully, irrevocably and unconditionally releases and forever discharges, and covenants not to sue Tikiz ․ [for] any charges, claims, complaints, demands, liabilities, causes of action, losses, costs or expenses (including related attorneys’ fees and costs) of every nature and description whatsoever that it had, has or may have, whether in law or equity, or hereafter can, shall, or may have, whether known or unknown, arising by, under or related to the Litigation, the redesigned service vehicle or any subject matter related thereto.

2012 Agmt. ¶¶ 8, 20.

Plaintiff argues it has not violated the agreement's terms by filing suit against Tikiz for infringement of the ‘447 Patent. Specifically, Plaintiff avers that: (1) Paragraph 8 “is not a covenant not to sue that relates in any manner to the ‘447 Patent,” because it is expressly limited to “infringement of the ‘136 Patent,” see Mot. at 37; (2) Paragraph 20 releases Tikiz only from claims pertaining to “the Litigation, the redesigned service vehicle or any subject matter related thereto,” id. at 38–39; (3) the 2012 Settlement Agreement expressly defines “the Litigation” as Plaintiff's “Complaint against Tikiz for patent infringement of United States Patent No. 8,157,136 (“the ‘136 patent”) in Civil Action No. 9:12-cv-80572,” and is confined to the “one service vehicle sold and/or in operation by Tikiz which was the subject of the Litigation,” see 2012 Agmt. at 1 & ¶ 2; and (4) the “redesigned service vehicle,” as defined by Paragraph 6, is that which Defendants agreed to “provide Kona Ice with photographic evidence thereof.” Mot. at 38–39.

In response, Defendants try to broaden the scope of the “redesigned service vehicle” as encompassing all those incorporating “the pivoting system show in in the letter of August 15, 2012.” Resp. at 26. To the Court's understanding, this would mean that two of the infringement suits filed by Plaintiff involving the '387 Patent,¹⁶ which “could have covered the redesigned system that Tikiz had submitted to Plaintiff to conclude the 2012 litigation,” were brought in breach of the 2012 Settlement Agreement. See Resp. at 26–27; Tikiz Compl. ¶¶ 14–17.

A plain reading of the contractual provisions at hand dispenses with most of Defendants’ arguments. First, Paragraph 8 quite clearly limits Plaintiff's covenant of non-suit to “infringement of the ‘136 patent,” regardless of the object of that suit (i.e., “the service vehicle design provided to counsel for Kona Ice on August 15, 2012” or “the redesigned service vehicle as described in paragraph 6”). Defendants do not claim that any of the 18 purportedly-breaching suits contain claims for infringement of the ‘136 Patent. See Def. 56.1 ¶¶ 44, 52, 56 (undisputed). As for the Paragraph 20 covenant, “the Litigation” expressly encompasses only the “one service vehicle sold and/or in operation by Tikiz,” and once again pertains solely to Plaintiff's claim for infringement of the ‘136 Patent ¹⁷ ; thus, “the Litigation” cannot constitute the basis for Defendants’ breach allegations here, which all pertain to vehicles designed after 2012 Settlement Agreement and involve infringement claims on the ‘387 and ‘447 Patents. See generally Tikiz Compl.

Further, Defendants fail on Paragraph 20 even if their definition of the “redesigned service vehicle” is to be adopted. By pointing to the absence of material facts supporting the claim that a “redesigned service vehicle” (even construed as any utilizing “the pivoting system show in in the letter of August 15, 2012”) was at issue in either of the two purportedly-breaching suits described above, Plaintiff has put the proverbial ball into Defendants’ court. Thus, Defendants had the burden of presenting evidence showing a genuine issue of material fact that precludes summary judgment on the issue. Bailey v. Allgas, Inc., 284 F.3d 1237, 1243 (11th Cir. 2002). Yet Defendants have presented no tangible evidence demonstrating that such a design was at issue in any of the suits which allegedly violated the Parties’ 2012 Settlement Agreement—only a single paragraph of attorney argument in their Response.¹⁸ See Resp. at 27 (implying in a single paragraph that the redesigned system may have been at issue in the '387 Patent suits). Such conclusory argument is not sufficient to refute summary judgment without reference to record facts. Accordingly, the Court finds that the Tikiz Defendants have failed to adduce evidence showing a genuine issue of material fact on its breach claim, and summary judgment for Plaintiff is therefore proper.

E. DEFENDANTS’ EQUITABLE DEFENSES FAIL.

Finally, Plaintiff moves for summary judgment on Defendants’ equitable defenses. See Mot. at 34–40. In their Response to Plaintiff's Statement of Material Facts, Defendants again concede each such defense. See Def. 56.1 ¶¶ 58–62; Resp. (failing to address or support any of the purported equitable defenses). Accordingly, the Court GRANTS summary judgment for Plaintiff on the equitable defenses of laches, estoppel, waiver, consent, and unclean hands.

IV. CONCLUSION

UPON CONSIDERATION of the Motion, the pertinent portions of the record, and being otherwise fully advised in the premises, it is hereby ORDERED AND ADJUDGED that Plaintiff's Motion for Summary Judgment (ECF No. 136) is GRANTED. Plaintiff's Motion in Limine (ECF No. 132), dealing solely with the presentation to the jury of issues already decided by this Order,¹⁹ is DENIED AS MOOT.

Within thirty (30) days of this Order, the Parties are ORDERED to file a Joint Status Report, consisting of no more than seven (7) pages, detailing what, if any, issues remain open for resolution (as well as a proposed timeline for briefing those issues).

DONE AND ORDERED in Chambers at Miami, Florida this 31st day of July, 2023.

FOOTNOTES

2.   This multi-district litigation is a consolidation of several cases all of which concern the alleged infringement of Kona's patents. Because Kona alleges similar facts in the complaints that underly each of these individual cases, allegations here are drawn from the Kona Complaint.

3.   For ease of reference, the Court abbreviates the term “Liquid Toppings Dispensing System” throughout this Order as “LTDS.”

4.   Page references to the Parties’ briefings refer to those documents’ PDF pagination (as opposed to the numbers concluding each page).

5.   It is the Court's duty to construe the claims of the disputed patent. Markman v. Westview Instruments, Inc., 517 U.S. 370, 388–90, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).

6.   See Mot. at 16–17. Here, Plaintiff cites to its own Statement of Material Facts at paragraphs 10–11. Those paragraphs, in turn, cite to paragraphs 51 through 65 of the Infringement Expert Report of Timothy M. Hicks. (ECF No. 136-5) (“Hicks Report”). Finally, the Hicks Report identifies these drawings as being appended to Defendants’ Responses to Kona Ice Inc.’s Third Set of Interrogatories, attached to Hicks’ Report at Exhibit J. See Hicks Report at 137, 139. The Court thus refers to these drawings as “Drawing J1” and “Drawing J2.”

7.   Defendants argue that other structures between the housing and the wall, such as the seal / gasket depicted in Hicks 59–60 and the “support angle” / “support bracket” depicted in Drawings J1 & J2, should be construed as components of the system (thereby rendering the system not “entirely devoid of contact with” the truck's wall for various reasons). See Resp. at 3–13. These notions are discussed and refuted below.

8.   Id. (“[U]nlike the hinge 56 and the latch 72 of the ‘447 Patent, this bracket does not merely reduce the amount of the gap, but instead, occupies all the space between the [LTDS] and the side wall of the vehicle.”).

9.   See Hicks Report at 137.

10.   To the Court's eye, the only evidence of this contention set forth on the record was contained in the stricken Declaration of Brian Tollefson. See (ECF No. 142-1) (“Tollefson Decl.”) at ¶¶ 3–12. For the reasons outlined in this Court's June 14, 2021 Order (ECF No. 170), however, the Tollefson Declaration was stricken, and the Court shall not consider any evidence therein at the summary judgment phase. Defendants’ only other arguments on this point pertain to “gap destroying structures.” See Def. 56.1 ¶ 10 (arguing that the “support angle for tubing,” “hinge and latch,” “seals” and “bolt-nut arrangement below the syrup faucet” “place the system in contact with the wall when mounted”).

11.   In a single paragraph of this analysis, Hicks references a video attached to his report as “Exhibit L.” Hicks Report ¶ 53. Defendants note that this video is not of record. Def. 56.1 ¶ 10. The Court agrees and does not consider this portion of Hicks’ opinion in its analysis.

12.   Despite Plaintiff's assertion of record facts supporting its contentions for the infringement of Claims 2-4, 6-7 and 10 of the ‘447 Patent, see Pl. 56.1 ¶¶ 18–25, Defendants do not substantively argue (nor support with citations to material fact) any of the purported “disputes” which they claim to maintain in their Statement of Material Facts. See, e.g., Resp. at 4–13 (wholly failing to support any of the “disputes” set forth in Defendants’ 56.1); Def. 56.1 ¶¶ 18–25 (“denying” several of Plaintiff's factual, cited contentions with few, if any, citations to the record as required by Local Rule 56.1(a)(2) and Local Rule 56.1(b)(2)(C)). The Court will not waste time analyzing the infringement of these claims where Defendants felt it unnecessary to contest them. Accordingly, based on its review of the facts set forth in Plaintiff's Statement of Material Facts, the Court finds that summary judgment for Plaintiff is proper as to the infringement of Claims 2-4, 6-7 and 10 of the ‘447 Patent.

13.   Plaintiff also moves for the Court to rule that the ‘447 Patent is not invalid for a host of other defenses presented in Defendants’ Invalidity Contentions, (ECF No. 136-10) (“Invalidity Contentions”). Defendants do not dispute, however, that they “have presented no evidence in support, or any expert testimony in support, of these defenses” other than anticipation and obviousness. See Pl. 56.1 ¶¶ 26–27; Def. 56.1 ¶¶ 26–27. The Court therefore GRANTS summary judgment in favor of Plaintiff as to those unenumerated defenses not explicitly analyzed above.

14.   The only justification for such an interpretation of Lamb offered by Defendants in their Response is that the LTDS's free-hanging position would “negate[e] the need for any specialized configuration or set up.” Id. at 24–25. Yet without any evidence to support this contention, the Court is hardly persuaded that the designers of Lamb intentionally forewent the stabilization of their truck-mounted and internally complex LTDS, designed to be used by untrained customers and children, only to avoid the need for “specialized configuration or set up.” Such a conclusory and unsubstantiated claim falls far short of Defendants’ evidentiary burden here.

15.   Defendants assert that their Invalidity Contentions “were accompanied with the 21 cited references and 39 claim charts which are not are not of record that explain why the ‘447 Patent would have been obvious.” Def. 56.1 ¶ 37. Yet those charts are not present before the Court on the summary judgment record before it, nor is a single explanation of how any prior art reference (or combination thereof) renders the ‘447 Patent obvious.

16.   “The actions are as follows: Kona Ice, Inc. v. Lorraine E. English and Wayne Strickland, M.D. Florida, 6:16-00951, filed June 1, 2016 and dismissed October 24, 2016; and Kona Ice. Inc. v. T-N-T Ice, LLC, D. Maryland, 0:16-01734, filed May 31, 2016 and dismissed October 5, 2016.” Tikiz Compl. ¶ 14.

17.   See 2012 Agmt. at 1 & ¶ 2.

18.   And to the extent that Defendants have put forth such evidence, it is neither apparent from their briefings on the issue, see Resp. at 26–27, nor their responsive Statement of Material Facts, see Def. 56.1 at 6–8. The Court will not scour the record evidence in an attempt to make out Defendants’ arguments for them. See S.D. Fla. L.R. 56.1(b)(2).

19.   See id. at 6 (setting forth motions in limine pertaining to the definiteness of the ‘447 Patent, Defendant's equitable defenses, Defendant's defenses to infringement, opinion testimony on infringement and invalidity, and the 2012 Settlement Agreement).

K. MICHAEL MOORE, UNITED STATES DISTRICT JUDGE