United States District Court, N.D. New York
MEMORANDUM-DECISION and ORDER
LAWRENCE E. KAHN, District Judge.
This action, concerning the alleged infringement of U.S. Patent No. RE 39, 940 (the "940 patent"), returns before the Court. Plaintiff Advanced Fiber Technologies ("Plaintiff" or "AFT"), the owner of the 940 patent, asserts that the V-Max screen cylinder ("V-Max") made by Defendant J & L Fiber Services, Inc. ("Defendant" or "J&L") infringes upon multiple claims of the 940 Patent. Dkt. No. 1 ("Complaint"). Presently before the Court are Cross Motions for summary judgment. Dkt Nos. 208 ("Plaintiff Motion"); 214 ("Defendant Motion"). Also before the Court are Defendant's Motion in limine to exclude the lost profits opinion of Mr. Andrew W. Carter ("Carter"), Defendant's Motion to strike AFT's new infringement contention, and Defendant's Cross-Motion to amend its answer. Dkt. Nos. 210 ("Motion to Exclude"); 213 ("Motion to Strike"); 231 ("Motion to Amend").
The facts stated herein are those relevant to the motions presently before the Court. For a more complete background on this case, reference is made to Advanced Fiber Techs. (AFT) Trust v. J & L Fiber Servs., Inc., 674 F.3d 1365, 1367-72 (Fed. Cir. 2012) ("AFT II") and Advanced Fiber Techs. (AFT) Trust v. J & L Fiber Servs., Inc., 751 F.Supp.2d 348, 353-54 (N.D.N.Y. 2010) (Kahn, J.) ("AFT I").
The 940 Patent,  "relates to screen plates, e.g., screen cylinders and flat screen plates, for use, for example, in the pulp and paper industry for screening pulps and to methods for their manufacture." Dkt. No. 208-9 ("940 Patent"). As described in the 940 Patent, screening is a process "[i]n the formation of paper products from pulp, " whereby "impurities, such as sticks, shives and other undesirable pulp constituents, are removed" from the pulp. Id., Col. 1, Lns. 16-18. The 940 Patent "provides a screen formed of two separate layers. The first layer comprises a screening plate having narrow slots or small apertures and the second layer comprises a backing plate affording the screening plate the necessary structural strength for pressure screening in the pulp and paper environment." Id., Col. 2, Lns. 22-27.
Plaintiff commenced this action under 35 U.S.C. § 271 on November 9, 2007. Compl. On February 22, 2008, Defendant answered, denying any infringement and asserting that the 940 Patent is invalid. Dkt. No. 12 ("Answer") ¶¶ 23-25. At issue were the three independent claims of the 940 Patent-claims 1, 10, and 18-and various dependent claims. See AFT II, 674 F.3d at 1368. Claim 1 claims a screen cylinder comprising a screening medium and a structural backing plate, both of which have openings. 940 Pat., Col. 13, Lns. 24-30. Claim 10 claims "[a] screen plate for screening pulp" comprising a screening medium with slots and a structural backing plate with openings. Id., Col. 14, Lns. 13-20. Claim 18 claims "a method of manufacturing a screen for use in screening for pulp." Id., Col. 15, Lns. 13-14.
In addressing the parties' motions for summary judgment in AFT I, the Court construed all then-disputed terms of the 940 Patent. AFT I, 751 F.Supp.2d at 354. The Court construed the following claim terms:
Screen Plate: "[A]n assembly comprising a screening medium, ' also referred to as a screening plate' and a backing plate." Not synonymous with "screening plate, " which is synonymous with "screening medium." Id. at 356-58.
Screening Medium: "A screening medium' is a perforated barrier through which stock is passed to remove oversized, troublesome, and unwanted particles from good fiber." Synonymous with "screening plate, " which is distinct from "screen plate. Id. at 357-61.
Backing Plate: "[A] structural support for the screening medium that includes a metal plate." Id. at 361-63.
Slots and Openings: "[O]penings or slots with widths less than 0.254 mm." Id. at 363-65.
Engagement With: "[T]o interlock or mesh with." Id. at 365.
Means for Releasably Connecting: "A structure directly connected to the [screening medium and backing plate] that must be broken or removed to permit separation of the two parts, whereby welds, rivet screws, adhesives, solder and equivalents are the only means for releasably connecting.'" Id. at 365-71.
Shrink Fit: "A tight interference fit between mating inner and outer parts made by heating the outer member to expand it or cooling the inner part to contract it so that the outer part can fit into the inner part." Id. at 368-71. Not a "means for releasably connecting."
Rivet: "[A] short rod having a head formed on one end and an opposite end formed into a second head to produce a permanent joining of two or more parts." Id. at 370.
Adhesive: "[A] substance used to bond two or more solids so that they act or can be used as a single piece." Id. at 370-71.
The Court also construed "perforated, " which appeared in its construction of "screening medium, " to mean, "pierced or punctured with holes." Id. at 363.
Based on these constructions, the Court granted in part and denied in part Defendant's Motion for summary judgment and denied Plaintiff's Motion for summary judgment. Id. at 381. Both parties then moved for reconsideration of the Court's decision. Id. at 382. Upon reconsideration, the Court determined that, as construed, the term "screening medium" did not encompass the "wedgewire" construction employed in the V-Max, because wedgewire is not "perforated." Id. at 386. The Court accordingly granted summary judgment of non-infringement to Defendant on all remaining claims. Id. at 386-87. Plaintiff appealed. AFT II, 674 F.3d at 1367.
On appeal, the Federal Circuit reversed the Court's grant of summary judgment on the ground that the Court erred in interpreting "perforated" as "pierced or punctured with holes." Id. at 1373-76. Rather, the Federal Circuit held that "perforated'... simply means having holes or openings, " in light of the 940 Patent's brief disclosure of a wedgewire construction. Id. at 1375. The Federal Circuit affirmed the Court's other appealed constructions and declined to address the Court's denial of summary judgment as to validity. Id. at 1376-77.
On remand, both parties renewed their Motions for summary judgement. Dkt. Nos. 150; 161. In a Memorandum-Decision and Order dated September 30, 2013, the Court considered the parties' renewed Motions only insofar as the Mandate of the Federal Circuit compelled a different result from that reached in AFT I. Advanced Fiber Techs. (AFT) Trust v. J & L Fiber Servs., Inc., No. 07-CV-1191, 2013 WL 5462684, at *5 (N.D.N.Y. Sept. 30, 2013) (Kahn, J.) ("AFT III"). Thus, the Court did not address the parties' arguments on validity because the Court's prior analysis did not turn on its erroneous construction of "perforated." Id . The Court also granted summary judgment for Defendant on Claim 18 and its dependent claims, and on any V-Max units that have wedgewire screening medium whose slots or openings are at least 0.254mm wide. Id. at *5-6. The Court denied summary judgment on all further grounds because the parties had not had opportunity to adequately direct their positions to the Court's claim construction. Id. at *6. Following the framework offered by the Local Patent Rules,  the Court therefore held that its MDO would constitute its decision on claim construction, and reopened discovery for the parties to supplement expert reports and conduct discovery as otherwise necessitated by the Court's claim construction. Id . The Court ruled that the parties could not offer "new theories that would require construction of a term not already construed." Id.
Presently, Plaintiff seeks summary judgment of infringement and validity on claims 1, 4, 6, 8, 10-14, 16, 17, 27, 29, and 34 of the 940 Patent. Dkt. No. 208-1 ("Plaintiff Memorandum"). Defendant moves for summary judgment of non-infringement as to claims 1, 2, 4, 6, 8, 10-17, 24, 27, 29, 31, 32, 34, 36, and 37-39, and summary judgment of invalidity under 35 U.S.C. § 112(a) on claims 1 and 10, and all depending claims. Dkt. No. 214-1 ("Defendant Memorandum"). Defendant also moves to strike as untimely Plaintiff's infringement contention that the V-Max's U-Clip ("U-clip" or "PosiLock") joint satisfies the "in engagement with" limitation of claims 1 and 10; Defendant argues that if the Court grants the Motion to strike, then summary judgment of non-infringement as to claims 1, 2, 4, 6, 8, 10-17, 27, 29, 31-32, 34, and 37-39 would be appropriate. Dkt. No. 213-1 ("Motion to Strike Memorandum"); Def. Mem. at 10. Finally, Defendant moves to exclude the Carter Opinion. Mot. Exclude. Defendant additionally argues that it is entitled to summary judgment on Plaintiff's claim for lost profits for the reasons set forth in the Motion to exclude, whether or not the Court grants the Motion. Def. Mem. at 29-31.
III. LEGAL STANDARD
Federal Rule of Civil Procedure 56(a) instructs a court to grant summary judgment if "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). Although "[f]actual disputes that are irrelevant or unnecessary" will not preclude summary judgment, "summary judgment will not lie if... the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); see also Taggart v. Time, Inc., 924 F.2d 43, 46 (2d Cir. 1991).
The party seeking summary judgment bears the burden of informing the court of the basis for the motion and of identifying those portions of the record that the moving party claims will demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the moving party shows that there is no genuine dispute as to any material fact, the burden shifts to the nonmoving party to demonstrate "the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Id . This requires the nonmoving party to do "more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Corp., 475 U.S. 574, 586 (1986).
At the same time, a court must resolve all ambiguities and draw all reasonable inferences in favor of the nonmoving party. Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000); Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 164 F.3d 736, 742 (2d Cir. 1998). A court's duty in ruling on a motion for summary judgment is "carefully limited" to finding genuine disputes of fact, "not to deciding them." Gallo v. Prudential Residential Servs., 22 F.3d 1219, 1224 (2d Cir. 1994).
Once a court has construed the meaning of a patent's claims, the second part of a patent infringement action is to compare "the properly construed claims to the accused device" to determine infringement. Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003) (citing Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc)). A device infringes a patent where "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 Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1364 (Fed. Cir. 2005). Infringement is a question of fact, Ferguson, 350 F.3d at 1338, and summary judgment is only appropriate where there is no genuine issue of material fact regarding the accused device, Laitram Corp. v. Morehouse Indus., Inc., 143 F.3d 1456, 1461 (Fed. Cir. 1998).
The parties' Motions raise four issues regarding infringement of the 940 Patent by the V-Max. First, Defendant alleges that Plaintiff has untimely changed its theory of how the V-Max infringes the "in engagement with" limitation, and accordingly moves to strike that contention. Mot. Strike. Second, the parties dispute whether the V-Max contains an "adhesive, " as construed by the Court, and therefore whether the V-Max infringes claims 4 and 34. Pl. Mem. at 9-10; Def. Me. at 7-8. Third, Defendant argues that non-infringement is appropriate under the Reverse Doctrine of Equivalents. Def. Mem. at 11-19. Finally, Defendant requests that the Court clarify its prior grant of summary judgment of non-infringement on any "V-Max units whose wedgewire screening media employ slots or openings at least 0.254 mm wide." Def. Mem. at 31-33.
A. Motion to Strike
Defendant moves to strike Plaintiff's infringement contention that the V-Max's U-Clip joint satisfies the "engagement" limitation of claims 1 and 10 as untimely. Mot. Strike; Def. Mem. at 10. Defendant argues that Plaintiff's purported change in position violates the Court's rder in AFT III, limiting supplementation of expert reports and discovery responses to those "necessitated" by the Court's claim construction. Mot. Strike at 4. Defendant further argues that this change of position violates Plaintiff's obligations under Rule 26 and Rule 37 of the Federal Rules of Civil Procedure to timely and diligently update expert reports and discovery responses. Id. at 5.
The Court first considers Defendant's allegations concerning Plaintiff's shift in position. Defendant alleges that Plaintiff's preliminary infringement contention on the "engagement" limitation did not rely on the U-Clip. Id. at 2. Defendant cites Plaintiff's claim charts in the April 2009 report of its expert Gary M. Scott ("Scott") and May 2009 report of its expert Robert Gooding ("Gooding"). See Dkt. Nos. 213-5, Ex. C at 2; 213-6. The claim charts demonstrate the "engagement" limitation at a location "where the screening medium and backing plate are in contact with each other, but not a location where there is a U-Clip joint." Mot. Strike at 2. Defendant alleges that Plaintiff first changed its claim charts in a November 2013 Scott expert report, which includes a photograph of the V-Max's U-Clips to demonstrate the "engagement with" limitation. Dkt. No. 213-10, Ex. C at 2. In later depositions, both Gooding and Scott have identified the U-Clip as satisfying the "engagement with" limitation. Dkt. Nos. 213-3 at 163:16-20; 213-11 at 158:12-15.
Plaintiff, on the other hand, contends that its position that the V-Max contains the "engagement with" limitation has been consistent throughout the litigation. Mot. Strike Resp. at 9-10; Pl. Sur-Reply at 2. Plaintiff argues that it has identified the claim limitation "respective opposed surfaces in engagement with one another at an interface therebetween" in the V-Max since its initial claim charts in 2009. Pl. Sur-Reply at 2. Plaintiff claims that Defendant originally admitted that the V-Max had opposed surfaces in engagement with one another, see Dkt. Nos. 39-11 ¶¶ 31, 34; 86-2 ¶¶ 15-16, and that it was therefore unnecessary for Plaintiff "to further address the issue, " Mot. Strike Resp. at 9. Plaintiff contends, however, that after the Court's claim construction, Defendant changed course and argued that Plaintiff had not specifically identified the "engagement" limitation in the V-Max. Pl. Sur-Reply at 2 (citing Dkt. No. 161-1 at 7-10). Plaintiff in response identified the U-Clip as "an opposed surface" satisfying the "engagement" limitation. Id . (citing Dkt. No. 168 at 22-24). Plaintiff claims that any statement by its experts that the U-Clip meets the "engagement" limitation, "reflects the fact that the V-Max includes the claimed engaged opposed surfaces, and that one of the surfaces may be located on the U-Clip, " and does not mean that "the U-Clip or any other connector is required to meet the engagement with' limitation." Id. at 3. Plaintiff's claim is therefore not that the U-Clip satisfies the limitation, but that the "the respective opposed surfaces" that are in "engagement" at the U-Clip satisfies the limitation.
The Court agrees that Plaintiff has not impermissibly changed its claim. The Court reiterates that a "sea of troubles... can arise when dispositive motions are filed on the merits prior to final claim construction." AFT III, 2013 WL 5462584, at *6. This case, which was commenced before the Local Patent Rules became effective, has followed a complicated schedule. Thus, where the Local Patent Rules chart "a clear course for patent actions that provides for discovery, briefing, and a final decision on claim construction before deadlines even begin to run for merits discovery and expert reports, " Id., in this case, the parties have filed several rounds of dispositive motions that have delayed the setting of deadlines.
The parties filed renewed summary judgment motions post-appeal, without having first had an opportunity to supplement their expert reports and conduct additional discovery in light of the Court's claim construction. The parties therefore were "reduced to basing their arguments on... whether the other party is raising new arguments or could have anticipated the Court's construction." Id . Defendant argued that Plaintiff had not shown that the "engagement" limitation, construed by the Court to mean "to interlock." Dkt. No. 161-1 at 7-10. When Plaintiff specifically identified "the respective opposed surfaces" that are in "engagement" at the U-Clip, Defendant argued that Plaintiff was impermissibly changing its claim. Dkt. No. 176 at 14-26. Thus, following the model of the Local Patent Rules, the Court reopened discovery to allow the parties to supplement their expert reports and conduct discovery. AFT III, 2013 WL 5462584, at *6. The Court's order aimed to allow the parties to "re-anchor their positions" to the Court's claim construction. Id.
The Court does not find that Plaintiff changed its infringement contention during the postappeal summary judgment briefing. Plaintiff merely clarified the "respective opposed surfaces" that are in "engagement, " in response to a new argument made by Defendant in reliance on the Court's claim construction. Regardless, even if the Court did find that Plaintiff had changed its position, the Court would not find it impermissible, specifically because the Court reopened discovery to enable the parties to supplement expert reports and conduct additional discovery. See Dkt. No. 185. Plaintiff disclosed its alleged new infringement contention in its supplemental Scott expert report on November 6, 2013, following the schedule for serving supplemental expert reports set by the Court. Dkt. No. 213-10, Ex. C at 2. Defendant subsequently submitted supplemental interrogatory responses, supplemental expert reports, and deposed Plaintiff's expert and fact witnesses. Mot. Strike Resp. at 8 (citing Dkt. Nos. 208-10; 208-17; 208-18). The Court accordingly finds that Plaintiff's alleged amendment of its contention would have been timely and consistent with its 26(a) obligations. Furthermore, Defendant is not prejudiced because it had the opportunity to conduct discovery on Plaintiff's amended contention consistent with AFT III.
Defendant's Motion to strike is therefore denied.
B. Claims 4 and 34
The parties cross move for summary judgment on whether the V-Max contains the "adhesive" limitation claimed in claims 4 and 34. Pl. Mem. at 9-10; Def. Mem. at 7-8. Claims 4 and 34 claim:
4. A screen cylinder according to claim 2, wherein said means for releasably connecting includes and adhesive.
34. A screen plate according to claim 32, wherein said means for connecting comprises an adhesive.
The parties dispute whether the V-Max includes an "adhesive, " as construed by the Court. Specifically, Plaintiff argues that it is undisputed that the V-Max contains "an epoxy between the screening medium and backing plate, " and that the epoxy is an "adhesive" as construed by the Court. Dkt. Nos. 208-2 ("Plaintiff Statement of Material Facts") ¶¶ 14; 230-1 ("Defendant Response to Statement of Material Facts") ¶ 14-15. Defendant, on the other hand, states that Plaintiff has no evidence that the epoxy used in the V-Max forms a bond strong enough to hold the backing plate and screening medium together "so that they act or can be used as a single piece, " as required by the Court's construction of "adhesive." Dkt. No. 214-2 ("Defendant Statement of Material Facts") ¶ 30. The epoxy, Defendant claims, is "applied to the U-clips to fill the channels of the U-clips around the elongated pins;" what Plaintiff indicates in photographs is merely "residual epoxy." Def. Resp. SMF ¶¶ 14, 16.
Having reviewed the evidence presented by the parties, the Court finds that there are disputed issues of material fact regarding whether the epoxy is an "adhesive." Specifically, Plaintiff has identified an epoxy on both the outer surface of the screening medium and inside surface of the backing plate. Pl. SMF ¶¶ 16-17. Defendant, however, has responded with evidence that AFT has not presented evidence that the epoxy forms a bond that holds the backing plate and screening medium together "as a single piece." Def. Resp. SMF ¶ 15. The Court has reviewed the deposition testimony that Defendant cites for this proposition. In Scott's February 18, 2014 Deposition, Scott acknowledged that he could not state that the "epoxy" would be sufficient to hold together the screening medium and backing plate; Gooding similarly acknowledged the lack of a test for the bonding strength of the epoxy. Dkt. Nos. 214-7 at 144:17-145:3; 214-8 at 136:14-137:5. However, both Scott and Gooding also stated that the appearance of the epoxy on both the screening medium and backing plate was indicative of bonding. Dkt. Nos. 214-7 at 144:4-144:8; 136:7-136:11.
Mindful of the parties' respective burdens of proof on summary judgment, the Court finds that Defendant has created an issue of material fact with respect to the bonding strength of the epoxy, but that Defendant has not presented sufficient evidence to warrant summary judgment in its favor. The Court finds that a reasonable trier of fact, reviewing the deposition testimony cited by Defendant and the evidence produced by Plaintiff, could find that the epoxy satisfies the Court's construction of "adhesive." Accordingly, the Court denies both parties' Motions for summary judgment on claims 4 and 34.
C. Reverse Doctrine of Equivalents
Defendant has asserted a defense of non-infringement under the Reverse Doctrine of Equivalents (the "RDOE"). Def. Mem. at 11-19. The RDOE applies "where a device is so far changed in principle from a patented article that it performs the same or similar function in a substantially different way, but nevertheless falls within the literal words of the claim." Graver Tank & Mfg. v. Linde Air Prods Co., 339 U.S. 605, 608-09 (1950). The RDOE may then be invoked "to restrict the claim and defeat the patentee's action for infringement." Id. at 609. The RDOE is an equitable doctrine intended "to prevent unwarranted ...