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.
R. Gunter, Friedman, Suder & Cooke, Fort Worth, TX,
argued for plaintiff-appellant. Also represented by Michael
Thomas Cooke, Corby Robert Vowell.
E. Davis, Klarquist Sparkman, LLP, Portland, OR, argued for
defendants-appellees. Also represented by Sarah Elisabeth
Jelsema, Todd M. Siegel.
Reyna, Clevenger, and Wallach, Circuit Judges.
WALLACH, CIRCUIT JUDGE.
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 Application 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
appeals. We have jurisdiction pursuant to 28 U.S.C. §
1295(a)(1) (2012). We affirm.
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,
" "a core body, " and "a
second threaded attachment element." '517 patent
col. 10 ll. 27-29, 33, 43, 45 (claim 1). It is undisputed
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,
see D Three, 2017 WL 1023389, at *13 & n.16; and
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.
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). 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
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
flashing. 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,
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 different
types of washerless assemblies, and (2) assemblies with
washers below the flashing, id. at
32-34. After articulating the applicable
standards of review and legal standard, we address each issue
Standards of Review
reviewing the grant of motions for summary judgment, 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." Anderson 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.
issues unique to patent law, such as determination 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 ...