Sloan Valve Company v. Zurn Industries, Inc. et al

Filing 661

MEMORANDUM Opinion and Order Signed by the Honorable Amy J. St. Eve on 10/3/2013:Mailed notice(kef, )

IN THE UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
SLOAN VALVE COMPANY,

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Plaintiff,
v.

ZURN INDUSTRIES, INC., and
ZURN INDUSTRIES, LLC,

Defendants.

Case No. 10-cv-00204

MEMORANDUM OPINION AND ORDER
AMY J. ST. EVE, District Court Judge:
Plaintiff Sloan Valve Company (“Sloan”) filed the present civil action against Defendant
Zurn Industries, Inc. and Zurn Industries, LLC (collectively “Zurn”) alleging various patent
infringement claims on its U.S. Patent No. 7,607,635 (“the Wilson patent”), including willful
infringement. Sloan has disclosed Michael C. Thuma as one of its technical experts for trial.
Zurn has moved to exclude the expert testimony of Thuma pursuant to Federal Rule of Evidence
702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 113 S. Ct. 2786, 125 L.
Ed. 2d 469 (1993). For the reasons discussed below, the Court grants the motion in part and
denies it in part.
BACKGROUND
Sloan alleges that Zurn willfully infringed the Wilson patent. Specifically, Sloan has
alleged that Zurn appropriated its “dual mode flush valve invention,” therefore infringing the
Wilson patent, entitled “Flush Valve Handle Assembly Providing Dual Mode Operation” and the
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corresponding U.S. Patent Application Publication No. 2006/0151729 (the “‘729 Patent
Application”). The Wilson Patent “relates to flush valves for use with plumbing fixtures such as
toilets, and more specifically to improvements in the bushing of the actuating handle assembly
that will provide for user-selectable, dual mode operation of the flush valve.” (R. 314-1, Wilson
Patent, col1, 6-10.) The improvement is a mechanism that allows a user to select one of two
flush volumes based on the direction of actuation of the handle: a full flush volume to evacuate
solid waste from the bowl or a reduced flush volume to remove liquid waste. (Id., col. 1, 11-19,
col. 2, 27-33.)
Sloan disclosed Michael C. Thuma as one of its technical experts. Sloan asked Thuma
“to consider how long it would have taken to design and make the fixture that Zurn uses in a
milling operation to machine an angled axis through the central passage of the retainer used in
Zurn’s dual flush handle.” Based on this information, Sloan asked Thuma to opine on “the
complexity of fabricating Zurn’s fixture with respect to level of skill and amount of time.”
LEGAL STANDARD
“The admissibility of expert testimony is governed by Federal Rule of Evidence 702 and
the Supreme Court’s opinion in Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579,
113 S. Ct. 2786, 125 L. Ed. 2d 469 (1993).” Lewis v. Citgo Petroleum Corp., 561 F.3d 698, 705
(7th Cir. 2009). Rule 702 provides, in relevant part, that “[i]f scientific, technical or other
specialized knowledge will assist the trier of fact[,] . . . a witness qualified as an expert by
knowledge, skill, experience, training or education, may testify thereto in the form of an
opinion. . . .” Id. See also Happel v. Walmart Stores, Inc., 602 F.3d 820, 824 (7th Cir. 2010).
Under the expert-testimony framework, courts perform the gatekeeping function of
determining whether the expert testimony is both relevant and reliable prior to its admission at

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trial. See id.; Power Integrations, Inc. v. Fairchild Semiconductor Intern., Inc., 711 F.3d 1348,
1373 (Fed. Cir. 2013); United States v. Pansier, 576 F.3d 726, 737 (7th Cir. 2009) (“To
determine reliability, the court should consider the proposed expert’s full range of experience
and training, as well as the methodology used to arrive [at] a particular conclusion.”). In doing
so, courts “make the following inquiries before admitting expert testimony: first, the expert must
be qualified as an expert by knowledge, skill, experience, training, or education; second, the
proposed expert must assist the trier of fact in determining a relevant fact at issue in the case;
third, the expert’s testimony must be based on sufficient facts or data and reliable principles and
methods; and fourth, the expert must have reliably applied the principles and methods to the facts
of the case.” Lees v. Carthage College, 714 F.3d 516, 521-22 (7th Cir. 2013); see also Stollings
v. Ryobi Tech., Inc., 725 F.3d 753, 765 (7th Cir. 2013); Power Integrations, 711 F.3d at 1373;
Pansier, 576 F.3d at 737.
In assessing the admissibility of an expert’s testimony, the Court’s focus “must be solely
on principles and methodology, not on the conclusions they generate.’” Winters, 498 F.3d at 742
(quoting Chapman v. Maytag Corp., 297 F.3d 682, 687 (7th Cir. 2002)). See also Stollings, 725
F.3d at 765. “The goal of Daubert is to assure that experts employ the same ‘intellectual rigor’
in their courtroom testimony as would be employed by an expert in the relevant field.” Jenkins
v. Bartlett, 487 F.3d 482, 489 (7th Cir. 2007) (quoting Kumho Tire, 526 U.S. at 152). “A
Daubert inquiry is not designed to have the district judge take the place of the jury to decide
ultimate issues of credibility and accuracy.” Lapsley v. Xtek, Inc., 689 F.3d 802, 805 (7th Cir.
2012).

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ANALYSIS
Zurn seeks to exclude the expert testimony of Mr. Michael Thuma pursuant to Rule 702
and Daubert. See Fed.R.Evid. 702; Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 113 S.
Ct. 2786, 125 L.Ed.2d 469 (1993). Zurn contends that Mr. Thuma’s opinions are pure
speculation and that they amount to improper credibility testimony.
I.

Mr. Thuma
Mr. Thuma has served as the Director of Product Development and Innovation for

Suncast Corporation, a consumer goods company and manufacturer of outdoor products. (R.
560-1, Thuma Report ¶ 3.) Mr. Thuma has a Bachelor of Fine Arts in Industrial Design from the
University of Illinois and a Master of Science in New Product Development from Northwestern
University. (Id.) His Master of Science program consisted of a combination of classes “geared
towards the process of developing new products.” (R. 659, Transcript of Thuma Daubert
Hearing (“Tr.”) at 24.) Mr. Thuma has “extensive experience in the design, prototyping,
manufacturing, and reverse-engineering of machined metal components.” (Thuma Report, ¶ 4.)
Zurn has not challenged his credentials.
II.

Mr. Thuma’s Opinions
Mr. Thuma’s report explains that Sloan has asked him “to consider how long it would

have taken to design and make the fixture that Zurn uses in a milling operation to machine an
angled axis through the central passage of the retainer used in Zurn’s dual flush handle.” (Id., ¶
7.) In reaching his opinions, Mr. Thuma looked at the Sloan and Zurn flush handles and
analyzed the Operating Method Sheet for Zurn’s dual flush retainer machine process which
included photographs of the fixture that Zurn used in making its dual flush retainer. The
Operating Method Sheet included “step by step instructions about how to assert a standard

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bushing into the fixture and use a mill to remove portions of the plastic from the central
passageway to create the dual flush retainer.” (Tr. at 35.) Mr. Thuma did not physically inspect
Zurn’s fixture. He also did not review deposition testimony from the case. (Report, at ¶ 10.)
In his report, Mr. Thuma offers four opinions:
1.

With the benefit of having specimens of Sloan’s dual flush handle, Zurn would
have been able to inspect and measure Sloan’s dual flush bushing to ascertain that
the bushing has a second, angled axis of plunger travel that allows the handle to
provide a reduced flush. (Opinion #1)

2.

Zurn’s fixture that it uses to machine the angled axis into its retainer is a
simplistic design that appears to require only a handful of machining operations to
create from stock aluminum plating. I would expect anyone having ordinary skill
in the machining trade to be able to design and fabricate a fixture similar to
Zurn’s within a day or less. (Opinion #2)

3.

Specifically, based on my experience with machining metal parts, including my
experience as a prototype shop manager, I would expect anyone having ordinary
skill in the machining trade to be able to design a fixture similar to Zurn’s within
1-2 hours, and to fabricate such a fixture within 2-3 hours. (Opinion #3)

4.

Thus, if the new dual flush valve handle design that Zurn had created in June
2005 truly was the same as the dual flush handle that Zurn began producing in
December 2005, the absence of the fixture that Zurn uses to create its dual flush
retainer, which could have been designed and fabricated in a matter of hours,
would not explain why Zurn’s June 2005 design did not go into production until
several months later – after Zurn obtained samples of Sloan’s dual flush handle in
November, 2005. (Opinion #4)

(Report, ¶¶ 19-22.)
During his deposition, Mr. Thuma stated that he believes the “the Sloan Uppercut was
reverse engineered to create the Zurn product, the Zurn bushing.” He repeatedly offered
opinions during this deposition testimony that Zurn had copied or reverse engineered the Sloan
product. Sloan subsequently represented that “Mr. Thuma will not express opinions about
reverse engineering of Sloan’s commercial product or the length of time that Zurn took to
develop the accused products. Rather, Mr. Thuma provides opinions that the simplistic fixture

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that Zurn uses to mill out the central passage of a standard handle retainer to create a dual flush
retainer could have been designed and fabricated within a day.” (R. 597, at 3) (emphasis in
original).
Sloan modified Opinion # 1 in a filing four days before the Daubert hearing and in
response to an inquiry from the Court. (R. 648, Supplement.) Specifically, Sloan proposed a
modified opinion as follows:
With the benefit of having specimens of Sloan’s dual flush handle, Zurn would
have been able to inspect and measure Sloan’s dual flush bushing to ascertain that
the bushing has a second, angled passage.
(Id. at 2.) In addition, during the course of the hearing, Sloan modified Opinion #4 as follows:
Thus, if the new dual flush valve handle design that Zurn had created in June
2005 truly was the same as the dual flush handle that Zurn began producing in
December 2005, the absence of the fixture that Zurn uses to create its dual flush
retainer, which could have been designed and fabricated in a matter of hours,
would not explain why Zurn’s June 2005 design did not go into production until
several months later.
(Tr. at 98-100.)
III.

Mr. Thuma May Not Opine on Reverse Engineering or Copying
Zurn challenged the admissibility of Mr. Thuma’s opinions regarding reverse engineering

and copying of the Sloan product on the grounds that such opinions amount to mere speculation.
Sloan essentially concedes this point by withdrawing any reverse engineering or copying
opinions from Mr. Thuma. Although Sloan has represented that Mr. Thuma will not opine on
reverse engineering or copying, Opinion 1 and Opinion 4 both opine on this issue. Even Mr.
Thuma admitted that both of these Opinions pertain to reverse engineering or copying. (Tr. at
63-64 (Opinion #4), 77 (Opinion # 1.) These opinions are speculative on Mr. Thuma’s part
because they are not based on sufficient data or scientific principles. As such, they are
inadmissible.
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In addition, Opinion # 1 lacks any grounding in reliable scientific principles. Sloan even
concedes that “Mr. Thuma has not performed any technical analysis of Sloan’s dual flush handle
….” (R. 648 at 2.) Regarding Opinion #1, Mr. Thuma opines that Zurn would have been able to
“inspect and measure Sloan’s dual flush bushing to ascertain that the bushing has a second,
angled passage.” Yet, Mr. Thuma conceded at the Daubert hearing that he could not determine
that Sloan’s dual flush bushing had a second, angled passage by merely inspecting Sloan’s dual
flush handle. (Tr. at 77-83.) Although he could “see an opening at the top of this bushing,” he
“could not see what that opening was.” (Id. at 83.) Mr. Thuma also did not measure Sloan’s
dual flush bushing, thus he cannot opine that Zurn could have done so and made a determination
regarding a second, angled passage. In essence, he has not based Opinion #1 on any scientific
methodology or principles. Instead, he speculates about what could have happened without any
scientific grounding. His personal experience in design is not sufficient for Opinion #1 given
that he admitted he did not see the second angle through mere inspection and did not measure the
dual flush bushing. Accordingly, he cannot give Opinion #1
IV.

Opinions Regarding the Timing for the Design and Manufacture of the Fixture
Although Zurn initially challenged Mr. Thuma’s opinions -- Opinion ## 2 and 3 --

regarding the time it would take to design and fabricate a fixture similar to the fixture that Zurn
uses to machine the angled axis into its retainer, at the Daubert hearing Zurn conceded that it is
not challenging “the substance” of these opinions. (Tr. at 92.) Indeed, Mr. Thuma is qualified to
give these opinions based on his experience in the industry, his experience in having made
fixtures, and his knowledge in working with people who make fixtures.

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V.

Relevance of Timeframe to Sloan’s Intentional Copying Claim
Zurn nonetheless challenges the relevance of these opinions and further argues that expert

testimony is not necessary on the issue. The Court disagrees.
Mr. Thuma’s opinions regarding the time it would take to design and fabricate a fixture
similar to Zurn’s are relevant to Sloan’s argument regarding copying. It is clear that evidence of
intentional copying is relevant to a willfulness determination. Advanced Display Sys., Inc. v.
Kent State Univ., 212 F.3d 1272, 1285 (Fed. Cir. 2000); see also In re Hayes Microcomputer
Prods., Inc. Patent Litig., 982 F.2d 1527, 1543 (Fed.Cir.1992) (“Whether the infringer
intentionally copied the ideas of another” is a relevant factor to a willfulness determination).
Intentional copying is also a relevant factor in determining whether a case is “exceptional” when
a court determines whether to award fees. Spectralytics, Inc. v. Cordis Corp., 649 F.3d 1336,
1347-48 (Fed. Cir. 2011); i4i Ltd. P’Ship v. Microsoft Corp., 598 F.3d 831, 859 (Fed. Cir. 2010).
Here, Sloan asserts that Zurn became aware of Sloan’s dual flush valve when it
discovered Sloan’s literature describing the product in May of 2005. Sloan contends that the
facts will establish that Zurn claims it developed its dual flush design in June 2005 – before it
saw Sloan’s Uppercut dual flush valve. On August 4, 2005, Zurn announced that it had a
commercially-available dual flush valve product. Zurn, however, did not offer its dual flush
valve to its customers until six months later because it did not have such a product to offer for
sale. According to Sloan, Zurn ordered samples of Sloan’s dual mode flush valve on August 11,
2005, and obtained Sloan’s dual flush handles on November 11, 2005 – approximately a month
before Zurn offered its product to its customers. Sloan contends that Zurn completed its
engineering drawings on December 12, 2005 and released its dual flush valve product at the end
of December 2005.

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In addition, Sloan argues that the evidence at trial will establish that in June 2005, Zurn
stated that the only issue that prevented it from completing its design was “tooling.” On
November 14, 2005, according to Sloan, Zurn told its counsel that it was still waiting for tooling.
Sloan intends to argue, based on this evidence, that Zurn’s “tooling story” will not withstand
scrutiny because the only tooling it had to develop was the fixture which Zurn uses to mill out
the second, angled bore in its retainer. According to Mr. Thuma, Zurn could have designed and
fabricated such a fixture in less than a day. Such testimony is appropriate expert testimony
because the time required to complete this task is not necessarily within the realm of
understanding of a lay person. Based on this evidence that Sloan contends it will establish at
trial, Mr. Thuma’s opinions regarding the timing it would take to design and fabricate the fixture
are relevant to the issue of copying. As such, the Court denies this aspect of the Daubert motion.
If Sloan fails to introduce this factual evidence at trial, Zurn may renew this aspect of the motion.
CONCLUSION
For the reasons discussed above, the Court grants in part, and denies in part, and denies in
part as moot Zurn’s motion to exclude testimony of Mr. Thuma.

Dated: October 3, 2013

ENTERED:

AMY J. ST. EVE
United States District Court Judge

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