Quest Integrity USA, LLC v. Cokebusters USA Inc. , 924 F.3d 1220 ( 2019 )

United States Court of Appeals
for the Federal Circuit
______________________
QUEST INTEGRITY USA, LLC,
Plaintiff-Appellant
v.
COKEBUSTERS USA INC.,
Defendant-Appellee
______________________
2017-2423
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:14-cv-01483-SLR, Judge Sue
L. Robinson.
______________________
Decided: May 21, 2019
______________________
MICHAEL A. MORIN, Latham & Watkins LLP, Washing-
ton, DC, argued for plaintiff-appellant. Also represented
by GABRIEL BELL, ROBERT J. GAJARSA, MATTHEW J. MOORE,
ABIGAIL A. RIVES.
THOMAS MARTIN FULKERSON, Fulkerson Lotz LLP,
Houston, TX, argued for defendant-appellee. Also repre-
sented by DANIELLE J. HEALEY, Fish & Richardson, PC,
Houston, TX.
______________________
Before DYK, TARANTO, and HUGHES, Circuit Judges.
2 QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.
DYK, Circuit Judge.
Quest Integrity USA, LLC (“Quest”) appeals a judg-
ment of the U.S. District Court for the District of Delaware
in favor of Cokebusters USA Inc. (“Cokebusters”). On sum-
mary judgment, the district court held that claims 12, 24,
30, 33, and 40 of U.S. Patent No. 7,542,874 (“the ’874 pa-
tent”) were invalid under 35 U.S.C. § 102(b) because the
claimed invention was offered for sale more than one year
prior to the filing of the patent application. We conclude
that the district court properly construed the claims and
that claims 12, 24, and 33 are invalid based on this claim
construction.
However, we also conclude that the district court erred
in disregarding declarations of the inventors under the
sham affidavit doctrine, and that Quest raised a genuine
issue of material fact as to the validity of claims 30 and 40.
Accordingly, we affirm the judgment of invalidity as to
claims 12, 24, and 33, reverse the judgment of invalidity as
to claims 30 and 40, and remand for further proceedings.
BACKGROUND
I
Quest owns the ’874 patent. The ’874 patent relates to
a system and method for displaying inspection data col-
lected from certain commercial furnaces (e.g., a furnace
used in a refinery). The ’874 patent explains that “a fur-
nace is generally comprised of several hundred to several
thousand feet of serpentine tubing that is characterized by
straight tube segments . . . interconnected by angled
bends.” ’874 patent, col. 1, ll. 26–30. The bends allow the
tube segments of the furnace to stack for maximum heat
transfer and efficiency. The specification describes furnace
tube inspection systems that existed in the art to identify
furnace tubes in need of repair or replacement. In these
systems, an inspection tool (referred to in the industry as a
QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC. 3
“pig”) would be inserted in one end of the furnace tubing
from a launcher and “collect[] inspection data [(e.g., inside
radius of the furnace, readings of the wall thickness of the
furnace, and the like)] at pre-determined time intervals as
[the tool] progresse[d] through the furnace” to a receiver at
the other end of the furnace. Id. col. 1, ll. 49–59. The data
could then be extracted from the inspection tool, converted
to calibrated engineering units, and examined by an engi-
neer in order to identify the location of flaws within the
furnace (e.g., thinning or bulging of tubing).
The ’874 patent attempts to improve upon how these
prior art systems displayed the collected inspection data,
but it does not purport to improve upon how furnace in-
spection data is collected or the type of data that is col-
lected. The specification explains that the system of the
’874 patent comprises “a storage device for storing the in-
spection data collected by an inspection tool flushed
through the furnace” and a computer programmed to gen-
erate a plurality of data markers in relation to the inspec-
tion data, partition the inspection data at the data
markers, and generate a display of the partitioned inspec-
tion data, “wherein the display is a two-dimensional or
three-dimensional representation of one or more of the tube
segments of the furnace.” Id. col. 2, ll. 50–52; id. col. 3, ll.
25–27. Each data marker identifies the location of a phys-
ical feature of the furnace (e.g., a bend, an external raised
surface, cross-over piping, a thermal well, a weld, a flange,
a schedule change and/or a diameter change). “The [gener-
ated] display may be used to visually detect problem areas
within the furnace . . . .” Id. col. 3, ll. 27–30. The ’874 pa-
tent discloses various examples that “illustrate different
approaches that may be used to correlate the inspection
data to the physical geometry of the furnace and display
the inspection data in a manner that enables the visual de-
tection of problem areas within the furnace.” Id. col. 9, ll.
43–47.
4 QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.
One category of claims at issue on appeal is claims 12,
24, and 33. Claims 12 and 33 are method claims, and claim
24 is a computer-readable medium claim. By way of exam-
ple, claim 24 recites:
24. A computer-readable medium having com-
puter-executable instructions for performing a
method of displaying inspection data collected from
a furnace, wherein said furnace comprises a plural-
ity of tube segments interconnected by a plurality
of bends so as to allow stacking of at least a portion
of said tube segments, said method comprising:
generating a plurality of data markers each
of which identifies a location of a physical
feature of said furnace;
partitioning said inspection data at said
data markers so as to correlate said inspec-
tion data to an appropriate one of said tube
segments of said furnace;
generating a display of at least a portion of
said partitioned inspection data arranged
to represent said physical geometry of a
plurality of said tube segments and enable
visual detection of a problem area compris-
ing one or more of said tube segments; and
wherein said inspection data is collected by
one or more devices selected from the fol-
lowing group: an ultrasonic transducer, a
laser profilometer, and combinations
thereof.
Id. col. 18, ll. 26–45 (emphases added). Claims 12 and 33
each recite a method for displaying furnace inspection data
similar to the method performed by the computer-readable
medium of claim 24.
QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC. 5
There is another category of asserted claims at issue:
claims 30 and 40. Claims 30 and 40 recite additional limi-
tations. Claim 30, which depends from claims 24, 27, and
28, recites:
30. [A computer-readable medium having com-
puter-executable instructions for performing a
method of displaying inspection data collected from
a furnace, wherein said furnace comprises a plural-
ity of tube segments interconnected by a plurality
of bends so as to allow stacking of at least a portion
of said tube segments, said method comprising:
generating a plurality of data markers each
of which identifies a location of a physical
feature of said furnace;
partitioning said inspection data at said
data markers so as to correlate said inspec-
tion data to an appropriate one of said tube
segments of said furnace;
generating a display of at least a portion of
said partitioned inspection data arranged
to represent said physical geometry of a
plurality of said tube segments and enable
visual detection of a problem area compris-
ing one or more of said tube segments;
wherein said inspection data is collected by
one or more devices selected from the fol-
lowing group: an ultrasonic transducer, a
laser profilometer, and combinations
thereof;
wherein said inspection data comprises a
plurality of inspection readings selected
from the following group: wall thickness
readings of said furnace, inside radius
readings of said furnace, and combinations
thereof;
6 QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.
wherein sensor data is also collected from
said furnace, said sensor data comprising a
plurality of sensor readings collected by
one or more auxiliary sensors selected from
the following group: an axial encoder, an
accelerometer, a roll encoder, a gyroscope,
an inertial navigation system, and combi-
nations thereof; and]
wherein each of said data markers com-
prises a composite data marker derived
from a plurality of individual data mark-
ers.
Id. col. 19, ll. 4–6 (emphasis added); see id. col. 18, ll. 26–
45, 54–65 (emphases added). The specification gives the
example of composite data markers “that identify the loca-
tions of the furnace bends.” Id. col. 12, l. 63. Independent
claim 40 recites:
40. A system for displaying inspection data col-
lected from a furnace with a specified physical ge-
ometry, wherein said furnace comprises a plurality
of tube segments interconnected by a plurality of
bends so as to allow stacking of at least a portion of
said tube segments, said system comprising:
a storage device for storing said inspection
data and sensor data collected from said
furnace; and
a computer programmed to:
analyze said sensor data and gen-
erate a plurality of data markers
based upon said analysis of said
sensor data, wherein each of said
data markers identifies a location
of a physical feature of said furnace
so as to correlate said inspection
QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC. 7
data to said physical geometry of
said furnace;
partition said inspection data at
said data markers;
generate a display of at least a por-
tion of said partitioned inspection
data arranged to represent said
physical geometry of a plurality of
said tube segments and enable vis-
ual detection of a problem area
comprising one or more of said tube
segments; and
wherein said sensor data comprises
a plurality of readings collected by
one or more auxiliary sensors se-
lected from the following group: an
axial encoder, an accelerometer, a
roll encoder, a gyroscope, an iner-
tial navigation system, and combi-
nations thereof.
Id. col. 20, ll. 17–41 (emphases added). The ’874 patent
distinguishes between “inspection data” and “sensor data.”
Unlike the other asserted claims, claim 40 requires the
analysis of “sensor data” (data from one or more auxiliary
sensors) to generate data markers.
II
On December 15, 2014, Quest filed suit against
Cokebusters in the District of Delaware, alleging infringe-
ment of the ’874 patent. Cokebusters offers furnace clean-
ing and inspection services. Quest alleged that
Cokebusters “mak[es], us[es], offer[s] for sale, or sell[s]
products that infringe the ’874 Patent,” including
Cokebusters’s Merlin Tube Inspection PIG with Roxtail
Software. J.A. 30009.
8 QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.
Cokebusters defended on the ground that the claims
were invalid under 35 U.S.C. § 102(b) because there was a
commercial sale of services that used the claimed methods,
computer-readable media, and system more than one year
before June 1, 2004, the date the application that led to the
’874 patent was filed in the United States. 1
The basis for the on-sale bar defense was an offer by
Quest itself to provide furnace tube inspection services to a
client in the petrochemical industry. In February and
March 2003, Quest performed furnace tube inspection ser-
vices for Orion Norco Refinery in Norco, Louisiana in ex-
change for $72,060 (“the Norco Sale”). Cokebusters alleged
that these commercial activities rendered the claims inva-
lid because of the on-sale bar. Cokebusters argued that
during those inspections, Quest used its commercial fur-
nace tube inspection method, computer-readable medium,
and system and generated two inspection reports (“the
Norco Reports”), which Quest provided to the customer.
The Norco Reports contained two-dimensional, color-coded
strip charts displaying the collected furnace inspection
data (“the Norco Strip Charts”). Cokebusters alleged that
the method, computer-readable medium, and system used
to prepare the Norco Strip Charts satisfied the limitations
of the asserted claims. Quest did not sell any hardware or
software to the customer.
The district court held a claim construction hearing
and construed various disputed claim terms. One of the
claim terms is relevant to this appeal: “generating a dis-
play of at least a portion of said partitioned data arranged
to represent said physical geometry of said tube segments
and enable visual detection of a problem area comprising
1 Because the application that led to the ’874 patent
was filed before March 16, 2013, pre-AIA 35 U.S.C. § 102
applies here.
QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC. 9
one or more of said tube segments.” This limitation is re-
quired by claims 12, 24, and 30. Nearly identical language
appears in claims 33 and 40. The parties refer to these
limitations collectively as “the Display Limitation.” The
district court construed the Display Limitation as includ-
ing strip charts, such as those described in Example 1 of
the ’874 patent, and concluded that Example 1 was not dis-
claimed during prosecution.
After claim construction, the parties filed various mo-
tions for summary judgment. As is pertinent here, Quest
moved for summary judgment of no invalidity, and
Cokebusters moved for summary judgment of invalidity.
The district court held that the Norco Sale was a commer-
cial sale and thus was prior art under § 102(b). The district
court determined that the Norco Sale satisfied the Display
Limitation, which appears in all of the asserted claims, be-
cause the Norco Strip Charts were the same as Example 1
in the ’874 patent. For claims 12, 24, and 33, the dispute
was over the Display Limitation, and thus the district court
granted Cokebusters’s motion for summary judgment of in-
validity as to claims 12, 24, and 33. 2
For claims 30 and 40, in addition to the Display Limi-
tation, the question was whether the Norco Sale disclosed
the additional claim limitations regarding generating
“composite data marker[s]” (claim 30) and analyzing “sen-
sor data” (claim 40). The district court concluded that there
was no genuine issue of material fact as to whether the
2 As for claim 12, there was one additional claim lim-
itation in dispute, which the district court resolved in
Cokebusters’s favor. Quest does not challenge that deter-
mination on appeal.
10 QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.
Norco Sale satisfied those limitations, and thus granted
summary judgment of invalidity as to claims 30 and 40. 3
The district court relied on deposition testimony of
Robert De Lorenzo, a co-inventor of the ’874 patent who
conducted the furnace inspection for the Norco Sale and
served as Quest’s Federal Rule of Civil Procedure 30(b)(6)
witness. At his deposition, De Lorenzo testified that the
“composite data marker” and “sensor data” features of
claims 30 and 40 were used in the Norco Sale. In granting
summary judgment, the district court concluded that in-
ventor declarations that Quest submitted from De Lorenzo
and Phil Bondurant, another co-inventor of the ’874 patent,
which contradicted the earlier De Lorenzo testimony and
stated that the Norco Sale did not, in fact, produce the
Norco Reports using these features, were sham affidavits
and declined to consider them.
The district court subsequently entered judgment un-
der Federal Rule of Civil Procedure 54(b) in favor of
Cokebusters. 4
Quest appeals. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(1).
3 The district court originally “denied summary judg-
ment [of invalidity for claim 40], in part, because eight
pages of deposition testimony, to which defendant cited,
was missing from the record.” J.A. 50. Cokebusters filed a
motion for reconsideration, attaching the missing pages.
The district court granted the motion and held that the
Norco Sale satisfied each limitation of claim 40.
4 The district court bifurcated and stayed “all other
issues, including Cokebusters’[s] counterclaim for declara-
tory relief that claim 40 of the ’874 patent is not infringed”
pending resolution of this appeal. J.A. 70.
QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC. 11
DISCUSSION
We review a grant of summary judgment de novo.
Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1379
(Fed. Cir. 2009). Summary judgment is appropriate when
“there is no genuine issue as to any material fact and
. . . the moving party is entitled to a judgment as a matter
of law.” Fed. R. Civ. P. 56(c).
Section 102(b) prevents a person from receiving a pa-
tent if, “more than one year prior to the date of the appli-
cation for patent in the United States,” “the invention was
. . . on sale” in the United States. This is known as the “on-
sale bar.” The date exactly one year prior to the date of the
patent application is known as the critical date. As noted
above, since the application for the ’874 patent was filed on
June 1, 2004, the critical date here is June 1, 2003.
The on-sale bar seeks to prevent “[a]ny attempt to use
[the claimed invention] for a profit, and not by way of ex-
periment,” for more than one year before filing for a patent
application. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 65
(1998); see Medicines Co. v. Hospira, Inc., 827 F.3d 1363,
1372, 1377 (Fed. Cir. 2016) (en banc) (collecting cases).
And “[i]t is a condition upon an inventor’s right to a patent
that he shall not exploit his discovery competitively after it
is ready for patenting; he must content himself with either
secrecy, or legal monopoly.” Pfaff, 525 U.S. at 68 (quoting
Metallizing Eng’g Co. v. Kenyon Bearing & Auto Parts Co.,
153 F.2d 516, 520 (2d Cir. 1946)).
In Pfaff, the Supreme Court outlined a two-part test for
determining whether an invention is “on sale” within the
meaning of § 102(b). The patented invention must have
been (1) “the subject of a commercial offer for sale” and (2)
“ready for patenting.” Id. at 67. There is no dispute here
that the method, system, and computer-readable medium
used by Quest during the Norco Sale were ready for patent-
ing at the time of the Norco Sale. The question is whether
12 QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.
the invention was the subject of a commercial offer for sale
before the critical date. This inquiry requires there have
been a “commercial offer,” and “the invention that [wa]s the
subject matter of the offer for sale must satisfy each claim
limitation of the patent, though it may do so inherently.”
Scaltech, Inc. v. Retec/Tetra, LLC, 269 F.3d 1321, 1328–29
(Fed. Cir. 2001). Further, “a sale or offer of sale need not
make an invention available to the public,” and “‘secret
sales’ can invalidate a patent.” Helsinn Healthcare S.A. v.
Teva Pharm. USA, Inc., 139 S. Ct. 628, 633 (2019).
The parties agree on appeal that the Norco Sale, which
includes the Norco Strip Charts, was “a commercial offer
for sale” under § 102(b). 5 The fact that Quest did not sell
its furnace inspection hardware or software (i.e., its
method, computer-readable medium, or system) does not
take Quest’s commercial activities outside the on-sale bar
rule. Rather, Quest used its method, computer-readable
medium, and system commercially to perform furnace in-
spection services and produce the Norco Reports for its cus-
tomer.
Sale of a product (here, sale of the Norco Reports) pro-
duced by performing a claimed process implicates the on-
sale bar. Medicines, 827 F.3d at 1376; D.L. Auld Co. v.
Chroma Graphics Corp., 714 F.2d 1144, 1147–48 (Fed. Cir.
1983); cf. Quanta Comput., Inc. v. LG Elecs., Inc., 553 U.S.
617, 629 (2008) (“[T]his Court has repeatedly held that
5 At summary judgment, Quest argued that the
Norco Sale was not “a commercial offer for sale” under
§ 102(b) because it was an “experimental use” of its furnace
inspection method, system, and computer-readable me-
dium. See Pfaff, 525 U.S. at 64–65, 67. The district court
concluded that the Norco Sale was not an experimental
use, and Quest does not challenge the district court’s deter-
mination on appeal.
QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC. 13
method patents were exhausted by the sale of an item that
embodied the method.”). Performance of a claimed method
for compensation, or a commercial offer to perform the
method, can also trigger the on-sale bar, even where no
product is sold or offered for sale. Scaltech, 269 F.3d at
1328; Plumtree Software, Inc. v. Datamize, LLC, 473 F.3d
1152, 1162–63 (Fed. Cir. 2006). As we held in Scaltech,
“[t]he on sale bar rule applies to the sale of an ‘invention,’
and in this case, the invention was a process.” 269 F.3d at
1328.
The same approach necessarily applies where a service
(here, furnace tube inspection) is performed for compensa-
tion using a claimed computer-readable medium or system
that generates a “product” (here, the Norco Reports). 6 The
method, system, and software used during the Norco Sale
to perform furnace inspection services for compensation for
a customer were thus “on sale.” See Medicines, 827 F.3d at
1376–77. The parties do not seriously dispute these prop-
ositions. 7 The question is whether the Norco Sale satisfied
6 This is different from the situation in which an in-
ventor outsources and purchases manufacturing services
from a contract manufacturer to produce the claimed prod-
uct before the critical date, which we have held does not
trigger the on-sale bar. Medicines, 827 F.3d at 1381.
7 The parties agree that it makes no difference here
whether the use of Quest’s furnace tube inspection method
and system during the Norco Sale is characterized as “on
sale” or a “public use” under § 102(b). “Many decisions con-
sider Section 102(b) without carefully differentiating pub-
lic use and on sale. . . .” 2A Donald S. Chisum, Chisum on
Patents § 6.02[6] (2017). Our court has also stated that the
standard for what is considered a “public use” is “whether
the purported use: (1) was accessible to the public; or (2)
was commercially exploited,” and that “[c]ommercial
14 QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.
each limitation of the claims, or whether there is a factual
dispute that precludes summary judgment.
I. THE DISPLAY LIMITATION
Quest first argues that the Norco Strip Charts do not
meet the Display Limitation. This turns on whether the
district court properly construed the scope of the claims.
We review a district court’s claim construction de novo
where, as here, the district court considered only intrinsic
evidence. Poly-Am., L.P. v. API Indus., Inc., 839 F.3d 1131,
1135–36 (Fed. Cir. 2016) (citing Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 840–42 (2015)).
The parties agree that the Norco Strip Charts fit within
Example 1 of the specification. Example 1 (depicted in Fig-
ure 3 below) teaches that two-dimensional color-coded strip
charts that “correlate the [furnace inspection] readings to
the appropriate tube segments of the furnace” can be gen-
erated and “used to visually detect problem areas within
the furnace.” ’874 patent, col. 10, ll. 66–67; id. col. 11, ll.
37–38.
exploitation [of the claimed invention] is a clear indication
of public use.” Invitrogen Corp. v. Biocrest Mfg., L.P., 424
F.3d 1374, 1380 (Fed. Cir. 2005) (emphasis added). There-
fore, in the circumstances of this case, whether Quest’s ac-
tivities are considered a “public use” or “on sale” does not
affect the result.
QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC. 15
The inspection data is plotted across a plurality of horizon-
tal strips as a function of time “from left-to-right and bot-
tom-to top.” Id. col. 9, l. 66–col. 10, l. 4. In other words, the
“the lower left-hand corner of the chart corresponds to the
time when the inspection tool leaves the launcher . . . and
the upper right-hand corner of the chart corresponds to the
time when the inspection tool reaches the receiver.” Id. col.
10, ll. 4–8. Bends in the furnace are indicated with an “x.”
In addition to Example 1, the specification discloses
other ways of displaying the inspection data. Examples 2
and 3 of the specification teach that the inspection data
could also be displayed as a stacked set of bars wherein
“[e]ach vertical bar displays [inspection data] from a single
tube segment” of the furnace,” thereby “position[ing] [the
tube segments] in their proper orientation (but with the
connecting bends removed).” Id. col. 11, ll. 60–63; id. col.
12, ll. 29–32. Example 4 describes displaying the data in
“a three-dimensional” format in which the structure of “the
tube segments . . . matches the actual physical geometry of
16 QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.
the furnace.” Id. col.14, ll. 65–66. Examples 2, 3, and 4
display the data as a function of distance, rather than time.
Since the parties agree that the Norco Strip Charts fit
within Example 1, the issue is whether Example 1 (like Ex-
amples 2, 3, and 4) is within the scope of the claims as al-
lowed. There is no dispute that Example 1 was within the
scope of the claims as originally drafted. The specification
states that Example 1 is “provided to further describe the
furnace tube inspection system of the present invention.”
Id. col. 9, ll. 41–42 (emphasis added). The issue is whether
the scope of the claims was narrowed during prosecution.
We conclude that the asserted claims were not narrowed to
exclude Example 1 because there was neither “clear and
unmistakable disclaimer” of the claim scope, see Thorner v.
Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1366–67
(Fed. Cir. 2012), nor any other indication that the claims
should be read to exclude Example 1, see Trs. of Columbia
Univ. v. Symantec Corp., 811 F.3d 1359, 1363–64, 1367–68
(Fed. Cir. 2016).
Here, the examiner rejected the claims multiple times
over U.S. Patent No. 6,359,434 to Winslow (“Winslow”).
The applicant eventually amended the claims to add the
Display Limitation to overcome the examiner’s rejections.
Winslow disclosed a method of analyzing and display-
ing data obtained from water pipes to approximate the lo-
cation of defects in the water pipes in relation to the pipe
joints. Winslow taught displaying located defects on a
“strip chart” as a function of distance in relation to the wa-
ter pipe joints. An example of a “strip chart” taught by
Winslow is shown below.
QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC. 17
The applicant distinguished the amended claims from
Winslow, arguing that Winslow does not generate a display
of furnace tube inspection data arranged to represent the
physical geometry of a furnace. Specifically, the applicant
argued that the “physical geometry of the water pipeline
[in Winslow] is not known.” J.A. 14950. Rather, the appli-
cant argued that “[e]ach of the located defects is displayed
in an approximate location with reference to the detected
pipe joints, with no reference whatsoever to the actual
physical geometry of the water pipeline.” J.A. 14949 (sec-
ond emphasis in original). This was in contrast to the
amended claims, which the applicant argued required that
“the inspection data collected from the furnace is displayed
such that the data is arranged to represent the physical
geometry of the furnace[,] [t]hus . . . allow[ing] a user to
visually detect and immediately ascertain any problem ar-
eas within the furnace.” J.A. 14950 (emphasis in original).
Although Winslow is different from Example 1 of the
specification, Quest argues that the claims were broadly
amended to exclude time-based strip charts (i.e., those that
18 QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.
display the inspection data as a function of time, such as
Example 1’s strip charts or the Norco Strip Charts). The
theory is that time-based strip charts do not arrange the
data to represent the physical geometry of the furnace. But
the applicant made no such statement during prosecution.
Nor did the applicant in any way suggest that Example 1
was now excluded from the scope of the claims. And Wins-
low was not distinguished as displaying the inspection data
as a function of time. In fact, Winslow displays the water
pipe data as a function of distance.
Also, the added claim language did not exclude Exam-
ple 1. Quest argues that the claims were narrowed to “re-
quire[] displaying the actual physical geometry of the
stacked furnace tubes (similar to Examples 2, 3, and 4)
. . . to represent not just the ‘physical geometry’ of the fur-
nace generally, but the ‘physical geometry’ of those stacked
tube segments.” Appellant’s Br. 19–20. But the asserted
claims do not use that language. The Display Limitation
requires, in pertinent part, “generating a display of at least
a portion of said partitioned inspection data arranged to
represent said physical geometry of said tube segments.”
The specification uses almost identical language to de-
scribe Example 1. For example, the specification states
that, in Example 1, a “display of [partitioned inspection
data] collected from a furnace” is generated “to thereby cor-
relate the various readings to the appropriate tube seg-
ments of the furnace.” ’874 patent, col. 9, ll. 54–61.
Since Example 1 continues to be within the scope of the
claims, the Norco Strip Charts meet the Display Limita-
tion. 8 We affirm the judgment as to claims 12, 24, and 33.
8 On February 22, 2019, we ordered the parties to
submit supplemental briefs addressing whether any claim
QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC. 19
II. CLAIMS 30 AND 40
As for claims 30 and 40, the additional question is
whether the Norco Sale satisfied the additional limitations
concerning generating “composite data markers” and ana-
lyzing “sensor data.” 9 Claim 30 requires generating a plu-
rality of “composite data markers.” Claim 40 does not
require generating any “composite data markers,” but re-
quires analyzing “sensor data,” which is not required by
claim 30. The ’874 patent makes clear there is a difference
between “inspection data” and “sensor data.”
The district court determined that both of these addi-
tional features of claims 30 and 40 would have been satis-
fied by a “composite bend indicator” function that indicated
bends in the inspected furnace and generated “composite
data markers” based on “sensor data.” Thus, whether the
Norco Sale renders claims 30 and 40 invalid depends on
whether the software used during the Norco Sale had a
“composite bend indicator” function. The question on ap-
peal is whether there is a material dispute of fact regarding
the presence of this function in the software Quest used for
the Norco Sale.
In this respect, the district court relied on the deposi-
tion testimony of De Lorenzo. Although the witness did not
use the “composite bend indicator” language, the district
court interpreted his deposition testimony as confirming
that software with the composite bend indicator function
was available and used during the Norco Sale to generate
limitation at issue should not be given patentable weight
under the printed matter doctrine. Our conclusion that the
Norco Strip Charts meet the Display Limitation makes it
unnecessary for us to address the printed matter doctrine.
9 Of course, the Norco Sale satisfied the Display Lim-
itation of claims 30 and 40 just as it satisfied the Display
Limitation of claims 12, 24, and 33.
20 QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.
composite data markers in the Norco Strip Charts based on
sensor data. For example, De Lorenzo was shown an ex-
cerpted portion of Quest’s source code at his deposition and
testified that, “as of roughly August 28th, 2002” (i.e., before
the Norco Sale), “[Quest’s] software allowed [Quest] to uti-
lize and give to [its] customers . . . displays that had com-
posite data markers in them” and that Quest used this
“automatic composite data marker function” for its custom-
ers. J.A. 39–40. De Lorenzo also testified that axial en-
coder data (i.e., sensor data) was collected and actually
used to establish the location of the inspection data in re-
lation to the furnace bends during the Norco Sale.
Quest argues that there was a genuine issue of mate-
rial fact that precluded summary judgment because there
was also contrary evidence in the form of declarations by
De Lorenzo and Bondurant contradicting the earlier depo-
sition testimony of De Lorenzo and explaining why De Lo-
renzo had made an error. The district court rejected
Quest’s arguments, concluding that De Lorenzo and Bon-
durant’s declarations were sham affidavits because they
contradicted De Lorenzo’s earlier deposition testimony.
The Third Circuit “review[s] a district court’s decision
to exclude materials under the sham affidavit doctrine for
abuse of discretion.” Daubert v. NRA Grp., LLC, 861 F.3d
382, 389 (3d Cir. 2017). Under the Third Circuit’s sham
affidavit doctrine, “a party may not create a material issue
of fact to defeat summary judgment by filing an affidavit
disputing his or her own sworn testimony without demon-
strating a plausible explanation for the conflict.” Baer v.
Chase, 392 F.3d 609, 624 (3d Cir. 2004). The Third Circuit
has explained its approach in applying the sham affidavit
doctrine as a “flexible” one, “giving due regard to the ‘sur-
rounding circumstances’”:
If, for example, the witness shows she was confused
at the earlier deposition or for some other reason
QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC. 21
misspoke, the subsequent correcting or clarifying
affidavit may be sufficient to create a material dis-
pute of fact. Same result if there’s independent ev-
idence in the record to bolster an otherwise
questionable affidavit. The court may, on the other
hand, disregard an affidavit when the affiant was
carefully questioned on the issue, had access to the
relevant information at that time, and provided no
satisfactory explanation for the later contradiction.
It may similarly disregard an affidavit entirely un-
supported by the record and directly contrary to
other relevant testimony, or if it’s clear the affida-
vit was offered solely to defeat summary judgment.
Daubert, 861 F.3d at 391–92 (citations, alterations, and in-
ternal quotation marks omitted); see Jiminez v. All Am.
Rathskeller, Inc., 503 F.3d 247, 254 (3d Cir. 2007) (“[W]hen
there is independent evidence in the record to bolster an
otherwise questionable affidavit, courts generally have re-
fused to disregard the affidavit.”); see also Gemmy Indus.
Corp. v. Chrisha Creations Ltd., 452 F.3d 1353, 1359 (Fed.
Cir. 2006) (“[A]lthough a party cannot simply contradict an
earlier sworn statement” to overcome summary judgment,
the court should not disregard the later testimony where
there is “credible evidence supporting the contradiction.”).
For example, in Baer, the district court disregarded an
affidavit by Baer at summary judgment because it contra-
dicted his earlier deposition testimony. 392 F.3d at 624–
25. The Third Circuit reversed and remanded because
“Baer[] [was able] to point to evidence in the record that
corroborate[d] his later affidavit[, which] alleviate[d] the
concern that he merely filed an erroneous certification out
of desperation to avoid summary judgment.” Id. at 626.
We conclude that the declarations of De Lorenzo and
Bondurant cannot be dismissed as sham affidavits. First,
Bondurant’s declaration did not contradict any earlier tes-
timony that he gave. The general rule is that the sham
22 QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.
affidavit doctrine provides for disregarding “an offsetting
affidavit that is submitted in opposition to a motion for
summary judgment when the affidavit contradicts the affi-
ant’s prior deposition testimony,” not another witness’s
prior deposition testimony. 10 Id. at 624 (emphasis added)
(internal quotation marks omitted); see Nelson v. City of
Davis, 571 F.3d 924, 926 (9th Cir. 2009) (“[T]he ‘sham affi-
davit’ rule [does not] preclude[] the introduction of testi-
mony from other witnesses that is arguably inconsistent
with a plaintiff’s deposition testimony.”); see also Cleveland
v. Policy Mgmt. Sys. Corp., 526 U.S. 795, 806 (1998) (de-
scribing the sham affidavit doctrine as preventing a party
from “creat[ing] a genuine issue of fact sufficient to survive
summary judgment simply by contradicting his or her own
previous sworn statement (by, say, filing a later affidavit
that flatly contradicts that party’s earlier sworn deposi-
tion) without explaining the contradiction or attempting to
resolve the disparity”). The district court erred for this rea-
son in disregarding the Bondurant declaration. Addition-
ally, the district court erred in disregarding Bondurant’s
declaration for the same reasons it erred in disregarding
De Lorenzo’s declaration, as we now discuss.
10 In one case, the Third Circuit affirmed the district
court’s decision to disregard an affidavit that contradicted
deposition testimony of a different witness. See Daubert,
861 F.3d at 391–92 (affirming the district court’s decision
to disregard the affidavit of a witness that contradicted tes-
timony of the NRA’s Rule 30(b)(6) witness because the
30(b)(6) deponent said she could have talked to the witness,
the NRA did not point to any independent evidence corrob-
orating the affidavit, nor did it explain why it believed its
Rule 30(b)(6) deponent was mistaken, confused, or not in
position of all the facts). We see no such circumstances
here.
QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC. 23
Second, De Lorenzo did not simply contradict his ear-
lier testimony. He submitted a detailed declaration in
which he explained why his deposition testimony was in-
correct. In the declaration, he stated that the source code
shows that the composite bend indicator function was still
under development as of July 8, 2004, and was not availa-
ble for use until after the Norco Sale because the source
code shows that the most recent comment line for the com-
posite bend indicator function is dated July 8, 2004 (i.e.,
after the Norco Sale). He further explained that he was
only given a portion of the source code during his deposition
and was not given the page with the July 8, 2004, date. He
stated that had he seen the July 8, 2004, comment during
his deposition, he would have known that the source code
was not commercially available on August 28, 2002.
De Lorenzo thus offered a plausible explanation for
why he misspoke at his deposition, and Cokebusters does
not dispute that De Lorenzo was not given access to the full
source code during his deposition. Nor does Cokebusters
dispute that the source code contains the July 8, 2004, mod-
ification date.
In his declaration, De Lorenzo further stated that the
absence of any “x”s in the Norco Strip Charts conclusively
proves that the composite bend indicator function was not
available or used for the Norco Sale. As he explained, the
source code with the July 8, 2004, date shows that, when a
bend was detected, the code would instruct the software to
display an “x” at the detected bend. The Norco Strip Charts
have no such “x”s. De Lorenzo testified at his deposition
that he manually marked the bends in the Norco Strip
Charts himself with black ticks.
De Lorenzo also stated in his declaration that, even if
the source code with the July 8, 2004, date was available
at the time of the Norco Sale, the composite bend indicator
function was “commented out.” It is difficult to tell from
24 QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.
the record what it means for a function to be “commented
out” of the source code, but the parties at least agree that
a function “commented out” could not be used by the pro-
gram. De Lorenzo explained in his declaration that the
composite bend indicator function is preceded by a particu-
lar symbol in the source code, and that the particular sym-
bol means that the function was commented out and thus
could not have been used to generate composite data mark-
ers.
Cokebusters does not dispute that the source code
shows that the composite bend indicator function was com-
mented out of the program. Cokebusters only argues that
the function was not commented out until after the Norco
Sale based, in part, on De Lorenzo’s deposition testimony
where he suggested that the function was available at the
time of the Norco Sale. However, in another part of the
deposition, De Lorenzo explained that the function was
commented out, and his declaration now explains why that
is accurate. 11
11 The district court stated that whether a claimed
function was “commented out” of the source code, and thus
not used, is irrelevant under Finjan, Inc. v. Secure Compu-
ting Corp., 626 F.3d 1197 (Fed. Cir. 2010). In Finjan, we
held that accused software products sold to customers in-
fringed the system and computer-readable medium claims
even though the relevant program source code was locked
or inactive when sold because customers could unlock or
activate the claimed functions by purchasing keys. 626
F.3d at 1204–05. However, even assuming that the ques-
tion of a “sale” or “offer for sale” is the same both for pur-
poses of infringement under 35 U.S.C. § 271(a) and the on-
sale bar, Finjan is inapplicable to the Norco Sale. Quest
did not sell the system or computer-readable medium itself,
QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC. 25
Third, there is also present here “independent evidence
in the record” that bolsters De Lorenzo’s declaration.
Jiminez, 503 F.3d at 254. De Lorenzo’s declaration is sup-
ported by Bondurant’s declaration, testimony from Quest’s
own experts, Drs. Robert Caligiuri and Shukri J. Souri, and
the source code itself, which support that the composite
bend indicator function would have produced black “x”s
near furnace bend locations if the function had been used.
Drs. Caligiuri and Souri also testified that, even if the com-
posite data marker function was used during the Norco
Sale to generate composite data markers, the function
would not have used “sensor data” to generate data mark-
ers, as required by claim 40, because the source code shows
sensor data would have been discarded, and not analyzed,
after being collected. Rather, they testified that the com-
posite bend indicator function would have only used inspec-
tion data to create data markers.
The detailed explanation in De Lorenzo’s declaration
and corroborating evidence took the declaration out of the
sham affidavit doctrine. At trial, the jury may credit the
deposition testimony over the declaration. But that is a
question for the jury, not for the court on summary judg-
ment.
In summary, it was error for the district court to disre-
gard the declarations of De Lorenzo and Bondurant, even
applying the deferential standard of review, particularly
since Cokebusters has the burden to show by clear and
but rather used its system and computer-readable medium
to perform commercial services and generate the Norco Re-
ports. Therefore, if the composite bend indicator function
was commented out at the time of the Norco Sale, the com-
mercial activity did not satisfy each claim limitation of
claims 30 and 40.
26 QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.
convincing evidence that the Norco Sale satisfied all of the
limitations of claims 30 and 40. 12 The district court could
not disregard the De Lorenzo and Bondurant declarations,
and there is a genuine issue of material fact as to whether
the Norco Sale satisfied the limitations of claims 30 and 40.
Accordingly, we reverse the judgment as to claims 30 and
40 and remand for a trial.
CONCLUSION
We affirm the district court’s judgment that claims 12,
24, and 33 of the ’874 patent are invalid under the on-sale
bar. We reverse the judgment as to claims 30 and 40 and
remand for further proceedings consistent with this opin-
ion.
AFFIRMED-IN-PART, REVERSED IN-PART, AND
REMANDED
COSTS
No costs.
12 The district court seems to have also disregarded
the declarations because they contradicted an invention
disclosure drafted by Bondurant and dated August 30,
2002. That is not consistent with the sham affidavit doc-
trine, which precludes a party from creating a genuine dis-
pute of material fact “by filing an affidavit disputing his or
her own sworn testimony without demonstrating a plausi-
ble explanation for the conflict.” Baer, 392 F.3d at 624 (em-
phasis added). The draft inventor disclosure is not sworn
testimony.