D Three Enterprises, LLC v. Sunmodo Corporation , 890 F.3d 1042 ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
D THREE ENTERPRISES, LLC,
Plaintiff-Appellant
v.
SUNMODO CORPORATION,
Defendant-Appellee
---------------------------------------------------------------------------------
D THREE ENTERPRISES, LLC,
Plaintiff-Appellant
v.
RILLITO RIVER SOLAR LLC, DBA ECOFASTEN
SOLAR,
Defendant-Appellee
______________________
2017-1909, 2017-1910
______________________
Appeals from the United States District Court for the
District of Colorado in Nos. 1:15-cv-01148-CBS, 1:15-cv-
01151-CBS, Magistrate Judge Craig B. Shaffer.
______________________
Decided: May 21, 2018
______________________
2 D THREE ENTERS., LLC v. SUNMODO CORP.
DAVE R. GUNTER, Friedman, Suder & Cooke, Fort
Worth, TX, argued for plaintiff-appellant. Also represent-
ed by MICHAEL THOMAS COOKE, CORBY ROBERT VOWELL.
SCOTT E. DAVIS, Klarquist Sparkman, LLP, Portland,
OR, argued for defendants-appellees. Also represented by
SARAH ELISABETH JELSEMA, TODD M. SIEGEL.
______________________
Before REYNA, CLEVENGER, and WALLACH, Circuit Judges.
WALLACH, Circuit Judge.
Appellant D Three Enterprises, LLC (“D Three”) sued
Appellees SunModo Corporation (“SunModo”) and Rillito
River Solar LLC, doing business as EcoFasten Solar
(“EcoFasten”), (together, “Appellees”) in the U.S. District
Court for the District of Colorado (“District Court”),
alleging infringement of various claims of U.S. Patent
Nos. 8,689,517 (“the ’517 patent”), 9,068,339 (“the ’339
patent”), and 8,707,655 (“the ’655 patent”) (collectively,
the “Patents-in-Suit”). Appellees filed, inter alia, a joint
motion for summary judgment, arguing the various
claims were invalid based on a determination that
D Three could not claim priority from U.S. Patent Appli-
cation No. 61/150,301 (“the 2009 Application”), and the
District Court granted Appellees’ Motion. See D Three
Enters., LLC v. Rillito River Solar LLC, Nos. 15-cv-01148-
CBS, 15-cv-01151-CBS, 2017 WL 1023389, at *1, *14 (D.
Colo. Mar. 15, 2017); J.A. 31−34 (Final Judgments),
2212−48 (2009 Application). 1
1 The District Court invalidated claims 1−4, 6,
9−14, and 16 of the ’517 patent; claims 1−9, 11, and 13 of
the ’655 patent; and claims 1−2 and 4−10 of the ’339
patent (“the Asserted Claims”). See D Three, 2017 WL
1023389, at *2, *13. It deemed the validity of claim 3 of
D THREE ENTERS., LLC v. SUNMODO CORP. 3
D Three appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1) (2012). We affirm.
BACKGROUND
The Patents-in-Suit are directed to roof mount sealing
assemblies, which allow users to mount objects on a roof
and seal “the mounting location . . . against water.” ’517
patent, Abstract; ’655 patent, Abstract; see ’339 patent,
Abstract. For example, the ’517 patent claims, inter alia,
“[a] roof standoff device for use in mounting an object to a
roof” comprising “a base bracket,” “a flashing,” 2 “a core
body,” and “a second threaded attachment element.” ’517
patent col. 10 ll. 27−29, 33, 43, 45 (claim 1). It is undis-
puted that: SunModo’s allegedly infringing products were
available to the public in 2010; EcoFasten’s allegedly
infringing product was available to the public in June
2009, 3 see D Three, 2017 WL 1023389, at *13 & n.16; and
the ’339 patent moot in light of D Three no longer assert-
ing infringement of the claim and omitting the claim from
oral argument, see id. at *13, and that finding is not
challenged on appeal, see generally Appellant’s Br.; Appel-
lees’ Br.
2 The flashing is a piece that “exist[s] to seal pene-
trations on roofs.” ’517 patent col. 1 ll. 20–21.
3 D Three initially alleged four of EcoFasten’s roof
mounting products infringed the Patents-in-Suit, see
D Three, 2017 WL 1023389, at *2 (listing allegations
against EcoFasten’s QuikFoot Roof Mount System, Eco-65
System, Tile Flashing System, and Eco-44R-NDD Sys-
tem), but attempted to withdraw its allegations based on
all but the QuikFoot Roof Mount System during suit, see
id. at *13; see also Reply Br. in Supp. of Mot. for Summ. J.
7, D Three Enters., LLC v. Rillito River Solar LLC, 1:15-
cv-01148-CBS (D. Colo. Oct. 14, 2016), ECF No. 77 (argu-
ing D Three’s requested withdrawal of infringement
allegations is not valid absent D Three “formally amend-
4 D THREE ENTERS., LLC v. SUNMODO CORP.
the U.S. Patent and Trademark Office issued the Patents-
in-Suit in 2014 and 2015. To successfully assert the
Patents-in-Suit against the allegedly infringing products,
D Three was required to claim priority from the 2009
Application’s effective filing date, February 5, 2009. See
id. at *3, *13; J.A. 2212.
On summary judgment, the District Court determined
that the Asserted Claims could not claim priority from the
2009 Application because they were broader than the
invention disclosed in the 2009 Application, such that
they did not meet the written description requirement
pursuant to 35 U.S.C. § 112(a) (2012). 4 See D Three, 2017
WL 1023389, at *5, *9−10, *12. Specifically, the District
Court divided the Asserted Claims into two categories––
claims that recited a washer and claims that did not––and
asked whether “the parent applications disclose roof
mount assemblies that (a) do not have a soft washer but
also do not limit the type of attachment bracket, and
(b) have a soft washer but do not limit its location.” Id. at
*7. The District Court held that the 2009 Application’s
only disclosure of a washerless assembly “requir[ed a]
W[-]pronged attachment bracket 1700,” but the Asserted
Claims disclosed broader configurations of washerless
ing its pleadings”); J.A. 3791 (explaining, by the District
Court, that it was not sure D Three’s attempts to narrow
infringement allegations were “adequate,” “sufficient,” or
“definitive”).
4 Congress amended § 112 when it enacted the
Leahy-Smith America Invents Act (“AIA”), Pub. L. No.
112-29, § 4(c), 125 Stat. 284, 296−97 (2011), and AIA
§ 4(e) made those changes applicable to “any patent
application that is filed on or after” September 16, 2012,
see id. at 297. Because the applications that led to the
Patents-in-Suit were filed after September 16, 2012, the
post-AIA version of § 112 applies.
D THREE ENTERS., LLC v. SUNMODO CORP. 5
assemblies. Id. at *10; see J.A. 2225 (discussing the
washerless assembly in the 2009 Application), 2246
(Figure 41). The District Court also held that the 2009
Application’s assemblies with washers only disclosed
washers situated “above the flashing,” but the Asserted
Claims covered assemblies with washers below the flash-
ing. D Three, 2017 WL 1023389, at *11, *12. D Three did
“not dispute that without the benefit of the 2009
[A]pplication’s filing date . . . the [P]atents[-]in[-S]uit
would be invalid due to intervening prior art,” i.e., Sun-
Modo’s allegedly infringing products and EcoFasten’s
QuikFoot Roof Mount System. Id. at *13. Accordingly,
the District Court invalidated all but one of the Asserted
Claims as anticipated based on D Three’s stipulation, and
found the remaining claim (claim 6 of the ’655 patent)
asserted against the purportedly-withdrawn EcoFasten’s
Tile Flashing System anticipated based on other prior art
that post-dated the 2009 Application. Id.; J.A. 2772–811,
2813–44. 5
DISCUSSION
D Three argues the District Court erred in granting
summary judgment because a genuine issue of material
fact exists as to whether the 2009 Application adequately
discloses the Asserted Claims of the Patents-in-Suit. See
Appellant’s Br. 21−34. Specifically, D Three avers that
the 2009 Application adequately discloses (1) washerless
assemblies with “various attachment brackets,” id. at 27,
such that there is a genuine issue as to whether a person
having ordinary skill in the art (“PHOSITA”) would
understand the 2009 Application to have disclosed differ-
ent types of washerless assemblies, and (2) assemblies
5 D Three also asserted claim 6 of the ’339 patent
against only the Tile Flashing System, see J.A. 342−46,
but this claim was not addressed separately below, see
generally D Three, 2017 WL 1023389.
6 D THREE ENTERS., LLC v. SUNMODO CORP.
with washers below the flashing, id. at 32−34. 6 After
articulating the applicable standards of review and legal
standard, we address each issue in turn.
I. Standards of Review
In reviewing the grant of motions for summary judg-
ment, we apply the law of the regional circuit, see AbbVie
Deutschland GmbH & Co., KG v. Janssen Biotech, Inc.,
759 F.3d 1285, 1295 (Fed. Cir. 2014), here, the Tenth
Circuit. The Tenth Circuit reviews a grant of summary
judgment de novo. See Birch v. Polaris Indus., Inc., 812
F.3d 1238, 1251 (10th Cir. 2015). Summary judgment is
appropriate “if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled
to judgment as a matter of law.” Fed. R. Civ. P. 56(a); see
Birch, 812 F.3d at 1251. At summary judgment, “[t]he
evidence of the non-movant is to be believed, and all
justifiable inferences are to be drawn in his favor.” An-
derson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986); see
Argo v. Blue Cross & Blue Shield of Kan., Inc., 452 F.3d
1193, 1199 (10th Cir. 2006).
6 D Three also contests the District Court’s alterna-
tive finding that the 2009 Application did not disclose a
base “having at least one mounting hole.” Appellant’s
Br. 34; see id. at 34−36; see also D Three, 2017 WL
1023389, at *12 n.15 (“The 2009 [A]pplication also does
not support the ’517 and ’339 patents . . . because the
[2009 A]pplication discloses only mounting holes, plu-
ral.”). Because we affirm the District Court based on lack
of adequate written description for the washerless assem-
blies and position of the flashing on the assemblies with
washers, see infra Sections II.B.2–C, we decline to reach
this alternative finding, cf. Watts v. XL Sys., Inc., 232
F.3d 877, 879 & n.1 (Fed. Cir. 2000) (declining to address
alternative grounds of invalidity).
D THREE ENTERS., LLC v. SUNMODO CORP. 7
For issues unique to patent law, such as determina-
tion of priority date, we apply Federal Circuit law. See
AbbVie, 759 F.3d at 1295; see, e.g., Go Med. Indus. Pty.,
Ltd. v. Inmed Corp., 471 F.3d 1264, 1270–72 (Fed. Cir.
2006) (applying Federal Circuit precedent to claim of
priority date). “Compliance with the written description
requirement [of 35 U.S.C. § 112(a)] is a question of fact
but is amenable to summary judgment in cases where no
reasonable fact finder could return a verdict for the non-
moving party.” PowerOasis, Inc. v. T-Mobile USA, Inc.,
522 F.3d 1299, 1307 (Fed. Cir. 2008).
II. The Patents-in-Suit Cannot Claim Priority from the
2009 Application
A. Legal Standards
Pursuant to 35 U.S.C. § 120, 7
[a]n application for patent for an invention dis-
closed in the manner provided by [§] 112(a) . . . in
an application previously filed in the United
States . . . which names an inventor or joint in-
ventor in the previously filed application shall
have the same effect, as to such invention, as
though filed on the date of the prior application.
Section 112(a) requires that
[t]he specification shall contain a written descrip-
tion of the invention, and of the manner and pro-
cess of making and using it, in such full, clear,
concise, and exact terms as to enable [a
7 Congress amended § 120 when it passed the AIA,
which governs the Patents-in-Suit, but the language at
issue here was not changed. See AIA §§ 3(f), 15(b), 125
Stat. at 288, 328 (specifying the respective effective dates
of the amendments to § 120).
8 D THREE ENTERS., LLC v. SUNMODO CORP.
PHOSITA] to which it pertains . . . to make and
use the same.
The written description “must clearly allow [a PHOSITA]
to recognize that the inventor invented what is claimed,”
such that “the disclosure of the application relied upon
reasonably conveys to [a PHOSITA] that the inventor had
possession of the claimed subject matter as of the filing
date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc) (emphasis added)
(internal quotation marks, brackets, and citations omit-
ted). “[T]he hallmark of written description is disclosure.”
Id. “This inquiry . . . is a question of fact,” which “var[ies]
depending on the context” and “requires an objective
inquiry into the four corners of the specification from the
perspective of a [PHOSITA].” Id. (citations omitted).
Demonstrating adequate written description “requires a
precise definition” of the invention. Id. at 1350. Relevant
here, to claim a genus, a patentee must disclose “a repre-
sentative number of species falling within the scope of the
genus or structural features common to the members of
the genus so that [a PHOSITA] can visualize or recognize
the members of the genus.” Id. (internal quotation marks
and citation omitted); see Amgen Inc. v. Sanofi, 872 F.3d
1367, 1373–74 (Fed. Cir. 2017) (applying Ariad to a
claimed genus).
B. The 2009 Application Lacks Adequate Written Descrip-
tion for the Washerless Assemblies in the Asserted
Claims
All Asserted Claims except claim 8 of the ’655 patent
and claim 4 of the ’339 patent recite washerless assem-
blies. See ’517 patent col. 10 ll. 27−67 (claims 1−4), col. 11
ll. 8−15 (claim 6), col. 11 l. 29−col. 12 l. 25 (claims 9−14),
col. 12 ll. 29−31 (claim 16); ’655 patent col. 10 l. 28−col. 11
l. 12 (claims 1−7), col. 11 ll. 17−21 (claim 9), col. 12
ll. 11−13 (claim 11), col. 12 ll. 19−20 (claim 13); ’339
patent col. 10 l. 47−col. 11 l. 14 (claims 1−2), col. 11
D THREE ENTERS., LLC v. SUNMODO CORP. 9
l. 27−col. 12 l. 3 (claims 5−10) (collectively, the “Washer-
less Claims”). Instead of washers, the Washerless Claims
recite, for instance, the use of any “attachment bracket
having a third attachment element disposed on an upper
portion of said attachment bracket for attaching an object
to said attachment bracket.” ’339 patent col. 11 ll. 8−10
(claim 1); see, e.g., ’517 patent col. 10 ll. 29−32 (claim 1);
’655 patent col. 10 ll. 29−34 (claim 1). 8
The District Court determined that the 2009 Applica-
tion disclosed one washerless assembly, depicted in Fig-
ures 27−33 and 41. D Three, 2017 WL 1023389, at *8.
The District Court then found that, “[i]n all of the applica-
tions” in the priority chain for the Patents-in-Suit, includ-
ing the 2009 Application, “the washerless assembly
consistently has one type of attachment bracket: no.
1700,” which is defined as “having W-shaped
prongs . . . and [a] face seat . . . that can hold a support
post . . . in a conventional male/female interaction when
needed.” Id. at *9 (internal quotation marks and citation
omitted). The District Court determined that a PHOSITA
would not understand bracket 1700 to be an “optional
feature.” Id. at *10. The parties do not dispute that the
Washerless Claims’ recitation of attachment assemblies
“are not limited to assemblies using attachment brackets
with the W[-]shaped prongs.” Id. at *9; see Appellant’s Br.
8 For purposes of summary judgment, the District
Court inferred in D Three’s favor that the disclosure of a
“third attachment element,” rather than bracket, in the
Washerless Claims of the ’517 and ’655 patents was
equivalent to an attachment bracket, D Three, 2017 WL
1023389, at *9 n.8 (emphasis added), and so will we, see
Anderson, 477 U.S. at 255 (assuming facts in favor of non-
moving party at summary judgment); In re Mouttet, 686
F.3d 1322, 1330 (Fed. Cir. 2012) (“The scope and content
of the prior art . . . are determinations of fact.”).
10 D THREE ENTERS., LLC v. SUNMODO CORP.
7−8; Appellees’ Br. 35. Therefore, the District Court held
that because the Washerless Claims “are not limited to
such a bracket[,] the [Washerless C]laims are not sup-
ported by the 2009 [A]pplication and are not entitled to
the 2009 effective filing date.” D Three, 2017 WL
1023389, at *10. For the reasons set forth below, we
agree with the District Court.
1. The Attachment Bracket Disclosure Was Properly
Decided on Summary Judgment
As an initial matter, D Three argues that the District
Court erred because it acknowledged that Appellees “d[id]
not specifically argue” that the 2009 Application lacked
sufficient detail to disclose attachment brackets broadly,
Appellant’s Br. 23 (quoting D Three, 2017 WL 1023389, at
*9 n.8 (“[Appellees] recognize that Figure 41 regards the
bracket 1700 but do not specifically argue that the [Wash-
erless C]laims are generic on attachment brackets and
therefore not supported.”)), and “[i]t is not appropriate to
grant summary judgment based on facts the moving party
did not rely on, at least without giving the losing party
advance notice and an opportunity to be heard,” id.; see
id. (citing Fed. R. Civ. P. 56(f)). The grant of summary
judgment was appropriate.
Federal Rule of Civil Procedure 56(f) states that,
“[a]fter giving notice and a reasonable time to respond,
the court may: . . . (2) grant the motion [for summary
judgment] on grounds not raised by a party.” The Tenth
Circuit will not reverse for failure to comply with Rule
56(f) “absent evidence of prejudice. So long as the losing
party was on notice that it had to come forward with all of
its evidence, a sua sponte grant of summary judgment
may be appropriate.” First Am. Kickapoo Operations,
L.L.C. v. Multimedia Games, Inc., 412 F.3d 1166, 1170
(10th Cir. 2005) (internal quotation marks and citations
omitted). In other words, “[a] party is procedurally preju-
diced if it is surprised by the district court’s action and
D THREE ENTERS., LLC v. SUNMODO CORP. 11
that surprise results in the party’s failure to present
evidence in support of its position.” Kannady v. City of
Kiowa, 590 F.3d 1161, 1170 (10th Cir. 2010) (internal
quotation marks and citation omitted). Moreover, the
Tenth Circuit distinguishes cases like this, where a sum-
mary judgment motion was filed, from those where the
district court sua sponte grants summary judgment,
because “when one party has made a motion for summary
judgment, the failure of the court to provide notice may
not be as detrimental since the moving party is at least
aware that the issue has been raised.” Id. at 1170 n.8
(internal quotation marks and citation omitted).
Here, D Three “cannot demonstrate prejudice because
[it] clearly knew” the scope of the 2009 Application’s
disclosure of washerless assemblies “would be an issue,”
and it “had a full opportunity to present evidence to
support [its] position.” Id. at 1171. Appellees’ Motion for
Summary Judgment provided D Three with notice that
Appellees were arguing lack of benefit from an earlier
filing date, particularly based on the theory that D Three
claimed “different, broader inventions,” J.A. 2181 (capital-
ization modified), including those with “[w]asherless
assemblies,” J.A. 2182; see J.A. 2187−88 (describing, in
the Motion for Summary Judgment, case law rejecting
validity of patents claiming broader inventions than
disclosed), 2192−93 (disputing the 2009 Application’s
disclosure of washerless assemblies). Moreover, a “pa-
tentee bears the burden of establishing that its claimed
invention is entitled to an earlier priority date than an
asserted prior art reference.” In re Magnum Oil Tools
Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). There-
fore, D Three was “on notice that [it] needed to present
[its] entire argument and all [its] evidence regarding” why
the Patents-in-Suit could claim the earlier filing date from
receipt of the Motion for Summary Judgment, Evers v.
Regents of Univ. of Colo., 509 F.3d 1304, 1309 (10th Cir.
12 D THREE ENTERS., LLC v. SUNMODO CORP.
2007), and had ample opportunity to respond to the
Motion for Summary Judgment in the normal course.
In fact, D Three did respond, arguing why it believed
washerless assemblies were adequately disclosed. See
J.A. 3353−57. In reply, Appellees further explained their
argument and pointed directly to the disclosure of bracket
1700. See J.A. 3647−50 (reply to D Three’s response to
the Motion for Summary Judgment), 3778 (hearing on
summary judgment). In addition, Appellees informed the
District Court that D Three had not responded to cases
showing that differences in the breadth of disclosure from
an earlier patent application could not satisfy the written
description requirement, see J.A. 3780, an argument to
which D Three responded during the hearing on the
Motion for Summary Judgment, see J.A. 3780 (stating, by
D Three’s counsel, in response to Appellees’ cases on
breadth of claims, that “I think we cited cases that we
think align with the facts and we may disagree on what
those are”). D Three had its opportunity to show why a
genus of attachment brackets is described by a single
attachment bracket shown in the 2009 Application, and
failed to make that showing. Because D Three was on
notice that it needed to submit evidence to show that the
washerless assemblies disclosed in the Washerless Claims
were adequately described in the 2009 Application and
had opportunities to do so, see Kannady, 590 F.3d at 1170,
we will not find a violation of Rule 56(f) here, cf. Massey v.
Del Labs., Inc., 118 F.3d 1568, 1573 (Fed. Cir. 1997)
(interpreting Rule 56 in a patent case under Ninth Circuit
law and finding error where the district court granted
judgment on obviousness, but only anticipation had been
asserted).
2. The District Court Properly Granted Summary Judg-
ment for Appellees on the Washerless Claims
We now turn to the merits of the District Court’s deci-
sion. “[D Three] does not dispute that except for claim 8
D THREE ENTERS., LLC v. SUNMODO CORP. 13
of the ’655 patent and claim 4 of the ’339 patent, the
[A]sserted [C]laims do not recite a . . . washer.” D Three,
2017 WL 1023389, at *7. See generally Appellant’s Br.
D Three argues that Figures 27−33 and 41 of the 2009
Application disclose a washerless assembly. See Appel-
lant’s Br. 21. Figure 41 shows a finished roof mount
assembly embodiment from a side angle, J.A. 2246, and
Figures 27−33 provide additional detail of the bracket
used in Figure 41, J.A. 2240−41. Figure 41 does not show
a washer, as Appellees admit, see Appellees’ Br. 25 (“No
view of the figures in the 2009 Application shows the
configuration of the bottom of the bracket 1700 in the
Figure 41 embodiment where a washer and recess would
be.”), and nothing in Figure 41’s narrative description
suggests Figure 41 must have a washer, see J.A. 2225
(describing Figure 41 as a “base” supporting a “bolt” that
holds “bracket 1700” onto a “flashing”). Therefore, for
purposes of summary judgment, we draw all reasonable
inferences in the light most favorable to D Three, Ander-
son, 477 U.S. at 255, and find that the 2009 Application
discloses one embodiment of a washerless assembly
depicted in Figures 27−33 and 41 and their corresponding
descriptions in the specification.
Having determined that the 2009 Application disclos-
es a washerless assembly, we must determine whether a
PHOSITA would recognize “upon reading the [2009
Application]” that any attachment brackets as claimed in
the Washerless Claims could be used in washerless as-
semblies. In re Owens, 710 F.3d 1362, 1368 (Fed. Cir.
2013). We agree with the District Court that washerless
assemblies using attachments other than attachment
bracket 1700, which has “W[-]shaped prongs,” J.A. 2223,
are not adequately disclosed, because the 2009 Applica-
tion in no way contemplates the use of other types of
attachment brackets in a washerless assembly, see
J.A. 2212−46 (failing to disclose in the 2009 Application
any other washerless assemblies). The 2009 Application
14 D THREE ENTERS., LLC v. SUNMODO CORP.
never uses the term washerless, or describes any other
types of attachment brackets that could be used in the
claimed roof mount assemblies. See J.A. 2212−46.
D Three’s admission that “[t]here are no statements in the
2009 Application . . . that suggest the various attachment
brackets cannot be used in a washerless system,” Appel-
lant’s Br. 27 (emphasis added), further supports our
finding. As we have stated, “[i]t is not sufficient for
purposes of the written description requirement of § 112
that the disclosure, when combined with the knowledge in
the art, would lead one to speculate as to the modifica-
tions that the inventor might have envisioned, but failed
to disclose.” Lockwood v. Am. Airlines, Inc., 107 F.3d
1565, 1572 (Fed. Cir. 1997); see Amgen, 872 F.3d at 1374.
D Three points to language in the 2009 Application’s
specification as evidence that the 2009 Application dis-
closed alternative attachment brackets. See Appellant’s
Br. 28. Specifically, D Three identifies a statement that
“[PHOSITAs] will recognize certain modifications, permu-
tations, additions and sub-combinations therefore. It is
therefore intended that the following appended claims
hereinafter introduced are interpreted to include all such
modifications, permutations, additions and sub-
combinations are within their true sprit [sic] and scope.”
Id. (second alteration in original) (quoting J.A. 2225).
This boilerplate language at the end of the 2009 Applica-
tion’s specification is not sufficient to show adequate
disclosure of the actual combinations and attachments
used in the Washerless Claims. See Knowles Elecs. LLC
v. Cirrus Logic, Inc., 883 F.3d 1358, 1367−68 (Fed. Cir.
2018) (finding lack of adequate written description where
only general soldering was disclosed in a specification, but
claims disclosed a specific means of soldering).
D Three also incorrectly claims that this case is “anal-
ogous” to our non-precedential decision in Cordis Corp. v.
Boston Scientific Corp. Appellant’s Br. 29 (citing 188 F.
App’x 984 (Fed. Cir. 2006)); see id. at 29−31. In Cordis,
D THREE ENTERS., LLC v. SUNMODO CORP. 15
we found adequate written description where there was
“no doubt” that prior art disclosed two inventive compo-
nents, and the question was whether the disclosure
provided adequate written description for asserted claims
that were “directed to one of those inventive components
and not to the other.” 188 F. App’x at 990. Here, by
contrast, the 2009 Application discloses one inventive
component, and the Washerless Claims claim entirely
different inventive components in the same field. Com-
pare J.A. 2246 (Figure 41’s washerless assembly using a
W-shaped prong), with ’339 patent col. 11 ll. 8−9 (reciting
in claim 1 a washerless assembly using an “attachment
bracket having a third attachment element disposed on
an upper portion of said attachment bracket”). Cordis is
inapposite.
Testimony from D Three’s expert does not convince us
otherwise. D Three admits that its expert “did not specif-
ically address why a washerless roof mount assembly that
uses other attachment brackets than Figure 41 is dis-
closed.” Appellant’s Br. 32 (emphasis added); see
J.A. 3570−74 (expert’s declaration). “[C]onclusory expert
assertions do not give rise to a genuine issue of material
fact.” Streck, Inc. v. Research & Diagnostic Sys., Inc., 665
F.3d 1269, 1290 (Fed. Cir. 2012). For these reasons, we
agree with the District Court that all Washerless Claims
lack sufficient written description, meaning they cannot
claim priority from the 2009 Application. All Washerless
Claims except claim 6 of the ’339 patent and claim 6 of the
’655 patent are therefore invalid by stipulation, see D
Three, 2017 WL 1023389, at *13, and we affirm the Dis-
trict Court’s holding that claim 6 of the ’339 patent and
claim 6 of the ’655 patent are invalid because D Three
does not separately challenge the District Court’s deter-
minations with respect to these claims, see id. (discussing
evidence that certain post-2009 Application prior art
16 D THREE ENTERS., LLC v. SUNMODO CORP.
anticipated or made obvious all claims of the ’655 and ’339
patents). See generally Appellant’s Br. 9
C. The 2009 Application Lacks Adequate Written Descrip-
tion for the Assemblies with Washers in the Asserted
Claims
At issue is the District Court’s determination that the
2009 Application disclosed a washer “only above the
flashing,” D Three, 2017 WL 1023389, at *11, such that it
did not provide adequate written description for the
inventions recited in claim 8 of the ’655 patent and claim
4 of the ’339 patent, id. at *12. Claim 8 of the ’655 patent
and claim 4 of the ’339 patent recite an assembly with a
washer. See ’655 patent col. 11 ll. 12−16; ’339 patent
col. 11 ll. 21−26. In claim 8 of the ’655 patent, the washer
is placed “between” the bracket attached to the roof and a
recess in the bottom surface of a sheet member and also
“at least partially surrounds [an] aperture.” ’655 patent
col. 11 ll. 13−15. Claim 4 of the ’339 patent depends from
9 The District Court found that the validity of claim
6 of the ’655 patent “appear[ed] moot” but, to the extent it
was still argued, was invalid. See D Three, 2017 WL
1023389, at *13. Because D Three does not argue the
validity of the claim should be moot or make any mention
of the specific claim, see generally Appellant’s Br., we do
not consider the claim moot and instead consider the
District Court’s determination of invalidity, see Glaxo
Grp. Ltd. v. TorPharm, Inc., 153 F.3d 1366, 1371 (Fed.
Cir. 1998) (stating an appellate court may affirm a judg-
ment “on any ground the law and the record will sup-
port”); cf. Studiengesellschaft Kohle, M.B.H. v. Shell Oil
Co., 112 F.3d 1561, 1565–66 (Fed. Cir. 1997) (considering
the validity of a claim alleged to have been “implicitly
dropped” because “[t]he record does not reveal, nor does
the district court offer, any valid reason for declining to
consider” it).
D THREE ENTERS., LLC v. SUNMODO CORP. 17
claim 2, which depends from claim 1, and recites the
device of claim 2 with the addition of a “washer disposed
around [an] aperture in [a] flashing, wherein said soft
washer surrounds said aperture in said flashing and is
compressed upon said first and second threaded attach-
ment elements being threadably engaged.” ’339 patent
col. 11 ll. 22−26 (emphasis added).
D Three does not contest the District Court’s finding
that “[c]laim 8 requires the washer be[] located below the
flashing and [c]laim 4 recites a washer that can be either
above or below the flashing,” Appellant’s Br. 32; see
D Three, 2017 WL 1023389, at *11−12, or that the 2009
Application discloses a washer only above the flashing, see
Appellant’s Br. 33. Instead, D Three contends the 2009
Application provides adequate written description be-
cause it discloses “a washerless system . . . as well as a
system in which a washer is shown above the flashing.”
Id. The disclosure of a washerless system does not sup-
port a finding of adequate written description because it
does not show that the inventor “invented what is
claimed,” here, an assembly with a washer. Ariad, 598
F.3d at 1351 (internal quotation marks and citation
omitted). D Three also states that “[n]owhere in the
specification is there a disclaimer that would require the
washer to be atop the flashing as opposed to below.”
Appellant’s Br. 33. Again, adequate written description
does not ask what is permissible, rather, it asks what is
disclosed. See Ariad, 598 F.3d at 1351. The lack of any
disclosure of an assembly with a washer below the flash-
ing, or statement on the flexibility of the position of the
washer, is fatal to D Three’s argument. Therefore, we
conclude that claim 8 of the ’655 patent and claim 4 of the
’339 patent lack sufficient written description in the 2009
Application, meaning they cannot claim priority from the
2009 Application and are therefore invalid. See D Three,
2017 WL 1023389, at *13.
18 D THREE ENTERS., LLC v. SUNMODO CORP.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. 10 Accordingly, the Final
Judgments of the U.S. District Court for the District of
Colorado are
AFFIRMED
10 Appellees alternatively argue we may find all
claims asserted against the purportedly-abandoned
EcoFasten products anticipated because D Three did not
properly abandon its claims against those products, see
supra n.3, meaning D Three’s infringement accusations
act as a “judicial admission” of invalidity, Appellees’ Br. 2,
11; see id. at 59 (citing to cases holding that an “accusa-
tion that a product infringes satisfies [the] burden of
proving that [a] product’s . . . sales anticipate” if the
product is considered prior art). Like the District Court,
we find “it is unnecessary to reach that issue.” D Three,
2017 WL 1023389, at *13; see Watts, 232 F.3d at 879
(following the district court and declining to address an
alternative argument when we could affirm based on
issues considered below).