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

Filing 674

MEMORANDUM Opinion and Order Signed by the Honorable Amy J. St. Eve on 11/20/2013:Mailed notice(kef, )

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

Plaintiff,
v.

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

Defendants.

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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 of its U.S. Patent No. 7,607,635 entitled “Flush Valve Handle Assembly
Providing Dual Mode Operation” (“the Wilson Patent”) and of the corresponding U.S. Patent
Application Publication No. 2006/0151729 (“the Wilson Patent Application”). In its Amended
and Supplemental Complaint, Sloan asserts claims of direct infringement of the Wilson patent,
infringement of the Wilson Patent Application, inducement to infringe the Wilson patent, and
contributory infringement. Sloan specifically alleges that Zurn infringed claims 1, 4-6, 10-12,
14, 19, 29-31, and 33-34 of the Wilson Patent.
Before the Court is Sloan’s motion for summary judgment on direct infringement of the
Wilson patent, Zurn’s invalidity defenses of anticipation and obviousness with respect to all
asserted claims of the Wilson patent other than claim 12, Zurn’s best mode defense, Zurn’s

enablement defense, and Zurn’s written description defense. Also before the court is Zurn’s
motion for summary judgment on Sloan’s infringement claims and Zurn’s non-infringement
claims, Zurn’s best mode invalidity defenses, and Sloan’s willful infringement claims.1 For the
reasons discussed below, Sloan’s motion is granted in part and denied in part, and Zurn’s motion
is denied.
BACKGROUND
I.

Northern District of Illinois Local Rule 56.1
“For litigants appearing in the Northern District of Illinois, the Rule 56.1 statement is a

critical, and required, component of a litigant’s response to a motion for summary judgment.
The purpose of the local rule is to make the summary judgment process less burdensome on
district courts, by requiring the parties to nail down the relevant facts and the way they propose
to support them.” Sojka v. Bovis Lend Lease, Inc., 686 F.3d 394, 398 (7th Cir. 2012). Local
Rule 56.1 assists the Court by “organizing the evidence, identifying undisputed facts, and
demonstrating precisely how each side propose[s] to prove a disputed fact with admissible
evidence.” Bordelon v. Chi. Sch. Reform Bd. of Trs., 233 F.3d 524, 527 (7th Cir. 2000). “The
Rule is designed, in part, to aid the district court, ‘which does not have the advantage of the
parties’ familiarity with the record and often cannot afford to spend the time combing the record
to locate the relevant information,’ in determining whether a trial is necessary.” Delapaz v.
Richardson, 634 F.3d 895, 899 (7th Cir. 2011) (citation omitted).
Local Rule 56.1(a)(3) requires the moving party to provide “a statement of material facts
as to which the moving party contends there is no genuine issue.” Cracco v. Vitran Exp., Inc.,
559 F.3d 625, 632 (7th Cir. 2009). “The opposing party is required to file “a response to each

1

 Zurn also moved for summary judgment on Sloan’s compensatory damages claims. The Court will address Zurn’s
damages arguments in a separate opinion. 

2 

numbered paragraph in the moving party’s statement, including, in the case of any disagreement,
specific references to the affidavits, parts of the record, and other supporting materials relied
upon.’” Id. (citing N.D. Ill. R. 56.1(b)(3)(B)). Pursuant to the Local Rules, the Court will not
consider any additional facts proposed in the nonmoving party’s Local Rule 56.1(b)(3)(B)
response, but must rely on the nonmovant’s Local Rule 56.1(b)(3)(C) statement of additional
facts. See Ciomber v. Coop. Plus, Inc., 527 F.3d 635, 643 (7th Cir. 2008). The Court disregards
Rule 56.1 statements and responses that do not cite to specific portions of the record, as well as
those that contain factual or legal argument. See Cracco, 559 F.3d at 632 (“When a responding
party’s statement fails to dispute the facts set forth in the moving party’s statement in the manner
dictated by the rule, those facts are deemed admitted for purposes of the motion.” ); Cady v.
Sheahan, 467 F.3d 1057, 1060 (7th Cir. 2006) (“statement of material facts did [ ] not comply
with Rule 56.1 as it failed to adequately cite the record and was filled with irrelevant
information, legal arguments, and conjecture”); Bordelon, 233 F.3d at 528 (“the requirements for
responses under Local Rule 56.1 are “not satisfied by evasive denials that do not fairly meet the
substance of the material facts asserted”); Cichon v. Exelon Gen. Co., L.L.C., 401 F.3d 803, 80910 (7th Cir. 2005) (“A district court does not abuse its discretion when, in imposing a penalty for
a litigant’s non-compliance with Local Rule 56.1, the court chooses to ignore and not consider
the additional facts that a litigant has proposed.”).
II.

The Parties Failed to Comply With Local Rule 56.1
Both parties’ Local Rule 56.1 statements contain significant problems. Both parties’

“statements of material facts” contain legal arguments or legal conclusions. In addition, several
of Zurn’s responsive statements dispute “statements of material facts” that Zurn has already
admitted in previous filings. As explained above, the purpose of Local Rule 56.1 statements is to

3 

identify the relevant admissible evidence supporting the material facts, not to make factual or
legal arguments. See Sojka, 686 F.3d at 398; Cady, 467 F.3d at 1060; see also Judson Atkinson
Candies, Inc. v. Latini-Hohberger Dhimantec, 529 F.3d 371, 382 n.2 (7th Cir. 2008) (“It is
inappropriate to make legal arguments in a Rule 56.1 statement of facts”). The parties’ failure to
comply with Local Rule 56.1 has made the Court’s job of deciphering the material facts at issue
in this patent case more difficult.
III.

The Parties and the Court’s Jurisdiction
Plaintiff Sloan is a corporation organized under the laws of the State of Delaware with its

principle place of business at 10500 Seymour Avenue, Franklin Park, Illinois 60131. (R. 555 &
608, Sloan’s Stmnt. of Undisputed Facts2, ¶ 1.) Sloan identifies itself as a leading manufacturer
of plumbing products. (R. 204, Am. and Supp. Compl., ¶ 7.) Zurn Industries LLC is a limited
liability company organized and existing under the laws of the State of Delaware, with its
principle place of business at 1801 Pittsburgh Avenue, Erie, Pennsylvania 16514. (Sloan’s
Stmnt. of Undisputed Facts, ¶ 2.) Zurn Industries, Inc. was a corporation merged into Zurn
Delaware Corporation with the surviving entity bearing the name “Zurn Industries, Inc.” Zurn
Industries, Inc. was converted to a Delaware limited liability company changing its name to Zurn
Industries, LLC on or about March 29, 2007. (Sloan’s Stmnt. of Undisputed Facts, ¶ 3.) This
Court has subject matter jurisdiction over Sloan’s patent claims under 28 U.S.C. §§ 1331 and
1338(a). (Id., ¶ 4.) Venue is proper in this District pursuant to 28 U.S.C. 1391 and 1400(b).3
(Id., ¶ 7.)

2

Citations to “Sloan’s Stmnt. of Undisputed Facts” refer collectively to Sloan’s Local Rule 56.1 Statement of Facts
(R. 555) and Zurn’s Local Rule 56.1 Responsive Statement of Facts (R. 608). For purposes of clarity, the Court will
use this citation reference where the fact preceding the citation is undisputed.
3
Zurn disputes that venue is proper in this District because it argues that Zurn Industries, Inc. ceased to exist on
March 29, 2007, and thus, could not do business in Illinois at the time the action commenced. In its First Amended
Answer, Zurn admitted that the Court has personal jurisdiction over Zurn LLC and admits that a “predecessor 

4 

IV.

The Patent-In-Suit
The Wilson Patent is directed to a dual mode flush valve and handle assembly. (R. 562 &

R. 617, Zurn’s Statement of Undisputed Facts4, ¶ 17.) 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. 546-6, Wilson Patent, col. 1, 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.)
The Wilson Patent abstract discloses:
A dual mode flush valve includes a handle assembly having a handle, a bushing
and a plunger. The bushing has a sleeve with a passage therethrough for
mounting the plunger for sliding and tilting. The passage is defined by first and
second partially overlapping bores that coincide at the inner end of the sleeve and
are spaced one above the other at the outer end of the sleeve. The bores define a
horizontal plunger travel axis and an angled plunger travel axis. Depending on
which direction the user actuates the handle the plunger will travel along one of
these axes. Travel along the angled axis will lower the plunger tip, allowing
earlier clearance of a relief valve and a reduced flow through the flush valve
compared to actuation with the plunger travel along the horizontal axis.
(Id.) Cross sectional representations of the preferred embodiment of the invention are
reproduced below for reference. These figures show the handle (38), bushing (68), and plunger
shank (80) for both a full flush (Figure 5) and for a reduced flush (Figure 6). (See id., col. 3, 11.
15-20.)

company merged into Zurn Industries on or about March 31, 2007.” Zurn also admitted that “Zurn LLC has done 
business in this district.” (R. 287, ¶¶ 72-75.) Further, Zurn did not assert improper venue as an affirmative defense.
4
Citations to “Zurn’s Stmnt. of Undisputed Facts” refer collectively to Zurn’s Local Rule 56.1 Statement of Facts
(R. 562) and Sloan’s Responsive Local Rule 56.1(b)(3) Statement of Facts (R. 617). For purposes of clarity, the
Court will use this citation reference where the fact preceding the citation is undisputed. 

5 

Figure 5

Figure 6

As depicted in Figure 5, in the full flush mode, the user pushes the handle (38) down,
which causes the plunger shank (80) to slide along the horizontal main axis (A) and hit the relief
valve stem at a location (108) that results in a full flush volume. (See id., col. 5, 9-19.) As
shown in Figure 6, in the reduced-volume flush mode, the user pulls the handle up, which causes
the plunger shank (80) to tilt and slide along an angled axis (B), as compared to the horizontal
axis, and hit the relief valve stem at a lower contact point (110). This results in a reduced
opening of the relief valve, and thus a reduced volume of water. (See id., col. 5, 19-34.)
Claim 1 is representative of the “dual mode flush valve claims. It recites:
A dual mode flush valve, comprising a body having an inlet and an outlet, a valve
seat between said inlet and outlet, a valve member movable to a closing position
on said valve seat to control water flow between said inlet and outlet, a pressure
chamber defined in said body above said valve member, a relief valve mounted on
the valve member for movement between seated and unseated positions which
close and open the pressure chamber, respectively, a handle assembly mounted on
the body and including an actuatable handle, a bushing having a passage defined
therethrough and a plunger slidably and tiltably mounted in said bushing passage,
the plunger having an outer end in the engagement with the handle and an inner
6 

end engageable with the relief valve, the plunger being movable to unseat the
relief valve, the bushing passage defining both a first axis of plunger travel and a
second axis of plunger travel which is angled with respect to the first axis of
plunger travel, wherein tilting of the handle in a first direction moves the plunger
along the first axis of plunger travel providing a first flush volume of water
adequate to evacuate solid waste and tilting of the handle in a second direction
tilts the plunger and moves the plunger along the second axis of plunger travel
providing a second flush volume of water adequate to evacuate liquid waste.
(Id., Reexam. Cert., col. 1, 31-54.) Claim 12 is representative of the “system for operating a
water flush valve” claims. It recites as follows:
A system for operating a water flush valve in a plurality of user selectable flush
volume modes including a liquid waste removal mode and a solid waste removal
mode, comprising a user handle operable in at least a first and second direction to
cause a face plate to pivot about a plurality of portions of the face plate; and the
face plate of the system coupled to the user handle and constructed to respond to
handle motion by at least the following: (1) motion in a first handle direction of
the user handle causing the face plate to pivot about a first face plate portion of
the face plate moving in a first face plate direction and a coupled lower portion of
a plunger head and coupled shank remaining substantially centered on a
horizontal axis of travel such that an end view of the shank remains substantially
centered on the horizontal axis of travel, thereby releasing a first flush volume of
water for solid waste flushing purposes in the solid waste removal mode and (2)
motion in a second handle direction of the user handle causing the face plate to
pivot about a second face plate portion of the face plate moving in a second face
plate direction and a coupled upper portion of the plunger head and the coupled
shank displaced away from a center of the horizontal axis of travel such that an
end view of the shank is displaced from the horizontal axis of travel, thereby
releasing a second flush volume of water adequate for liquid waste flushing
purposes in the liquid waste removal mode.
(Id., col. 1, 56 through col. 2, 13.) Claim 18 is representative of the “retrofit system for a flush
valve system” claims. It recites as follows:
A retrofit system for a flush valve system which can provide at least two volumes
of water during operation, a first flush volume required for removal of solid waste
and a second flush volume required for removal of liquid waste, comprising: a
user handle and coupled face plate; a bushing portion of a valve system having a
bushing passage to receive a plunger, the plunger engageable with the user handle
face plate at a first end and the bushing passage configured to accommodate a
tilting of the first end of the plunger and a pivoting of the plunger about a pivot
point defined within the bushing passage; and the user handle operable in at least
a first direction and a second direction wherein actuation of the user handle in the
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first direction causing the plunger to move laterally through the bushing passage
causing release of the first flush volume of water for removal of solid waste and
actuation of the user handle in the second direction causing the plunger to tilt
about the point within the bushing passage and to move through the bushing
passage causing release of a second flush volume of water for removal of liquid
waste.
(Id., col. 2, 15-36.)
V.

Prosecution and Reexamination History of the Wilson Patent
A.

Prosecution History

Sloan filed Application No. 11/211,273, which ultimately issued as the Wilson Patent,
with the United States Patent and Trademark Office (“USPTO”) on August 25, 2005. (Sloan
Stmnt. of Undisputed Facts, ¶ 8.) John R. Wilson is the inventor of the Wilson Patent. (Id., ¶
10.) The application contained 14 claims, with independent claims 1, 7, 10 and 12. (R. 314-3 at
JA0212-32.) On April 7, 2006, Sloan filed a preliminary amendment, which, among other
things, added new claims 15-31. (Id. at JA0182-92). In an Office Action mailed on February 18,
2009, the examiner rejected claims 2, 3, 16, 21-25, and 30, which referred to a “first bore” and a
“second bore” in describing the bushing passage, as indefinite under 35 U.S.C. § 112. (Id. at
JA0133.) The examiner noted that it was “unclear . . . how the first and second bore can be two
different bores since it appears that the plunger passes through only a single bore,” and further
explained that “[d]escribing a single bore as multiple bores renders the claims indefinite.” (Id.)
In addition, the examiner also indicated that he would allow claims 16 and 30 if Sloan rewrote
them to overcome the rejection under 35 U.S.C. § 112. (Id. at JA0134.) Sloan replied on April
22, 2009, in which it added claims 35-41 and, among other things, amended claims 2, 3, 16, 2125, 29, and 30 to “clarify the description of the passage by removing the term ‘bore.’” (R. 314-1
at JA0100.) Sloan represented that it made the amendments to “overcome the § 112 rejection.”
(Id. at JA0100-01.) The ‘635 Patent issued on October 27, 2009. (Id. at JA0001.)
8 

B.

Reexamination History

On September 17, 2010, Zurn filed a request for ex parte reexamination of claims 1, 4-12,
14, 18, 19, 28-31, 33 and 34 of the ‘635 Patent, alleging that a substantial new question of
patentability existed. (R. 314-13 at JA0936-1033.) In particular, Zurn requested reexamination
of the ‘635 Patent in view of the following prior art: U.S. Patent No. 3,279,742 (“Billeter”); U.S.
Patent Application No. 2006/0033060 (“Funari”), ASME A112.19.14-2001, and U.S. Patent No.
4,134,570 (“Walker”). (Id. at JA0937.) The examiner granted Zurn’s request. (R. 314-12 at
JA0871-880; R. 314-11 at JA0734.)
In an Office Action mailed on January 10, 2011, the examiner rejected claims 1, 5, 7, 8,
12, 14, 18, 19, and 31 and confirmed the patentability of claims 4, 6, 9, 28-30, and 34. (R. 31411 at JA0733-62.) Specifically, the examiner rejected claims 1, 5, 7, 8, 12, and 14 under
35 U.S.C. § 102(b) as anticipated by Billeter. (Id. at JA0739-42.) The examiner also rejected
claims 18, 19, and 31 under 35 U.S.C. § 102(b) as anticipated by Billeter, or, in the alternative,
as obvious under 35 U.S.C. § 103(a) over Billeter. (Id. at JA0742-43.) Finally, the examiner
rejected claims 1, 5, 7, 8, 12, 14, 18, 19, and 31 under 35 U.S.C. § 103(a) as obvious over
Billeter in view of Walker. (Id. at JA0743-49.) The examiner interpreted Billeter as “inherently
a dual mode flush valve.” (See id. at JA0740-42; JA0745-48.) The examiner also interpreted
Walker as disclosing “a flush valve with a screw [] to limit the motion of the handle [] which
results in a lower flush volume.” (Id. at JA0745-46, 0749.)
During an interview with the examiner on March 31, 2011, the examiner “expressed that
[claim 1] may benefit from additional language to clarify that the claimed structure is related to
the dual mode concept set forth in the preamble.” (R. 314-5 at JA0386.) Sloan, in a
Supplemental Amendment and Reply filed on April 8, 2011, amended claim 1 to “explicitly

9 

recite[] language linking the first and second axes of plunger travel to a first flush volume and
second flush volume, respectively.” (Id.) Sloan further stated that “it would be understood that
the first flush volume and second flush volume are sufficiently different so as to effectuate dual
flush modes, that is a dual flush mode wherein one flush mode provides a flush volume adequate
for liquid evacuation and another flush mode provides a flush volume of greater volume
adequate for solid (or liquid) evacuation.” (Id.)
Sloan further responded to the examiner’s rejections on April 7, 2011, amending claims
12 and 18 to include language directed to “user selectable flush volume modes” and designating
“a first flush volume” relating to removal of solid waste and “a second flush volume” relating to
removal of liquid waste. (R. 314-5 at JA0392-422.) Sloan also proposed new claims 36-46.
(Id. at JA0394-97.) In responding to the Billeter reference, Sloan stated that “Billeter discloses
only a conventional single mode flush valve,” whereas a person of ordinary skill in the art
“would understand a ‘dual mode flush valve’ to be one that permits a user deliberately to select
between two distinct modes of flushing a fixture, either a reduced flush volume mode for
evacuating liquid waste or a full flush volume mode for both solid and liquid waste.” (Id. at
JA0401 (emphasis in original).) Further, Sloan stated that in a dual mode flush system,
“selection of one of the flush modes results in a flush volume of water being flushed that may
vary about the selected flush volume due to tolerances and variances in the flush valve and the
fixture (as noted below, such is contemplated by the relevant ASME standards).” (Id.) In
addition, Sloan provided that the “reduced flush volume is insufficient to effectively evacuate
solid waste but provides water savings over a single flush mode designed to reliably provide
sufficient water to evaluate solid waste (and thus wasting substantial water when only liquid
waste removal is needed).” (Id.) Sloan concluded that “one of ordinary skill in the art would

10 

understand the term ‘dual mode’ in regard to flush valves to correspond to the above
description,” referencing Sloan’s statements above. (Id.)
In response to the examiner’s concerns, Sloan also submitted a declaration from Mr.
Julius Ballanco (the “Reexamination Declaration”). In his Reexamination Declaration, Mr.
Ballanco concluded that “a dual mode flush means: having a user selectable specific full flush
volume for removing solid and liquid waste from the water closet and a specific lower flush
volume that is used to remove the liquid waste.” (Id. at JA0479.) Mr. Ballanco discussed
Billeter, stating that it “does not describe any large tolerances between the diameter of the
plunger [] and the diameter of the handle bushing [],” and that “movement of the plunger in
[Billeter] produces a single flush volume and certainly is not intended to provide a dual mode
flush valve.” (Id. at JA0481.) The Reexamination Declaration further characterized Billeter as
producing “a single flush volume when the handle was operated in either the down or up
orientation” which means that “a dual mode flush was not an inherent part of [Billeter].” (Id. at
JA0483.) Mr. Ballanco’s Declaration also discussed industry standards for various flush
volumes. (Id. at JA0476-79.)
The PTO mailed a Notice of Intent to Issue Ex Parte Reexamination Certificate on July
22, 2011. (R. 314-3 at JA0249-59.) In the “Statement of Reasons for Patentability and/or
Confirmation,” the examiner found that the amendment to the claims adding “that the first and
second flush volumes were for removing solid waste and liquid waste” is a claim limitation
which “give[s] the preamble breath and life.” (Id. at JA0253.) Thus, the examiner concluded
that the “dual mode” claim term has patentable weight. (Id.) The examiner observed that the
2003 ASME Dual Flush Devices for Water Closets defines dual flush as “a mechanism which
allows a full volume or a reduced volume,” and that it provides that the “reduced volume” is a

11 

30% reduction in the water volume. (Id.; see also R. 314-8 at JA0545-58, 2003 ASME Dual
Flush Devices for Water Closets, A112.19.10-2003.) Additionally, the examiner stated that the
inherent flush volume differentials in the Billeter reference do not meet the definition of a dual
mode flush valve. (Id.)
In addition, the examiner found claims 1, 12, 18 and 36 patentable over Billeter and
Walker due to the requirement that the claimed invention’s plunger is “able to move in a
horizontal axis of travel for one flush mode (full volume)” and is “tiltable for the other flush
volume (reduced volume).” (R. 314-3 at JA0253-54.) The examiner also found the claimed
invention patentable over Funari, Billeter, and Walker based on the fact that it has “at least one
axis of plunger travel and the second axis of plunger travel” and a “plunger [that] is tiltable.”
(Id. at JA0254.) In addressing the bushing passage, the examiner stated that “Billeter does not
disclose the first opening including extension portions joining the upper and lower arcuate
portions,” and further stated that “a circular opening includes an upper and a lower arcuate
portion, but does not include a pair of extensions.” (Id. at JA0256-57.) The PTO issued an Ex
Parte Reexamination Certificate on September 27, 2011. (Id. at JA0240.)
VI.

The Court’s Claim Construction Opinion
On August 28, 2012, the Court held a claim construction hearing. After the hearing, the

Court construed the claims as follows:
Claim Term or Phrase

Court’s Construction

“dual mode flush valve”

A water conservation valve that permits a user
deliberately to select between two distinct modes of
flushing a fixture: either a reduced flush volume mode
adequate to evacuate liquid waste or a full flush volume
mode adequate to evacuate solid waste.

“a first flush volume of water . . .
and . . . a second flush volume of
water”

A first volume of water that differs from a second volume
of water.
12 

“plunger mounted for sliding and
tilting”

Mounted so the plunger is capable of sliding along the
horizontal axis and tilting and sliding along an axis of
plunger travel that is at an angle to the horizontal axis.

“tilting the inner end of the
plunger”

Tilting the inner end of the plunger so that the plunger is
at an angle to the horizontal plunger travel axis.

“axis of plunger travel”

axis of plunger travel means “axis on which the plunger
travels”

–or–
and
“bushing passage defining both a
first axis of plunger travel and a
second axis of plunger travel
which is angled with respect to
the first axis of plunger travel”

“bushing passage defining both a first axis of plunger
travel and a second axis of plunger travel which is angled
with respect to the first axis of plunger travel” requires no
construction

“displaced away from a center of
the horizontal axis of travel such
that an end view of the shank is
displaced from the horizontal axis
of travel”

That viewed when facing the end of the plunger shank, the
end of the plunger shank is not substantially centered on
the horizontal plunger travel axis.

“tilted portion” (of the bushing
passage)

Portion with a tilted wall.

“arcuate portion”

Portion that is curved like a bow.

“extension portions”

Portions that extend from and join an end of the upper
arcuate portion to an end of the lower arcuate portion.

SUMMARY JUDGMENT STANDARD
Although this is a patent case that is appealable to the Federal Circuit, Seventh Circuit
law applies to procedural summary judgment issues. See, e.g., Shum v. Intel Corp., 633 F.3d
1067, 1076 (Fed. Cir. 2010) (“We review grants of summary judgment … under the law of the
regional circuit, since they present procedural issues not unique to patent law.”) (citing
Koninklijke Phillips Elects. N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326, 1332 (Fed. Cir.
2010)). 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.
13 

56(a). A genuine dispute as to any material fact exists 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, 106 S. Ct. 2505, 2510, 91 L. Ed. 2d 202 (1986).
In deciding summary judgment motions, “facts must be viewed in the light most
favorable to the nonmoving party only if there is a ‘genuine’ dispute as to those facts.” Scott v.
Harris, 560 U.S. 372, 380, 127 S. Ct. 1769, 167 L. Ed. 2d 686 (2007). The party seeking
summary judgment has the initial burden of establishing that there is no genuine dispute as to
any material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 91 L. Ed. 2d
265 (1986). After “a properly supported motion for summary judgment is made, the adverse
party ‘must set forth specific facts showing that there is a genuine issue for trial.” Anderson, 477
U.S. at 255 (citation omitted). “[D]istrict courts presiding over summary judgment proceedings
may not weigh conflicting evidence or make credibility determinations, both of which are the
province of the jury.” Omnicare, Inc. v. UnitedHealth Grp., Inc., 629 F.3d 697, 704-05 (7th Cir.
2011) (internal citations omitted).
ANALYSIS
I.

Direct and Literal Infringement
Zurn moves for summary judgment on Sloan’s claim of direct infringement. Zurn argues

that Sloan cannot establish that the accused devices literally infringe any of the asserted claims in
the Wilson patent. In addition, Zurn argues that Sloan cannot use the doctrine of equivalents to
establish infringement. Sloan also cross-moves for summary judgment on its claim of direct and
literal infringement. Specifically, Sloan argues that it is entitled to summary judgment that Zurn
directly and literally infringes claims 1, 4, 5, 6, 10, 11, 19, 29, 30, and 31 of the Wilson patent.

14 

For the following reasons, the Court denies both parties’ motions for summary judgment on
direct infringement.
Direct infringement exists when one “without authority makes, uses, offers to sell, or
sells” a patented product or process within the United States. 35 U.S.C. § 271(a). “To prove
direct infringement, the plaintiff must establish by a preponderance of the evidence that one or
more claims of the patent read on the accused device literally or under the doctrine of
equivalents.” Spansion, Inc. v. ITC, 629 F.3d 1331, 1349 (Fed. Cir. 2010).
“Determining literal infringement is a two-step process: the ‘proper construction of the
asserted claim and a determination whether the claim as properly construed reads on the accused
product or method.’” ActiveVideo Networks, Inc. v. Verizon Comm’cns, 694 F.3d 1312, 1319
(Fed. Cir. 2012) (quoting Georgia-Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1330 (Fed.
Cir. 1999)). While the first step is a question of law for the Court, the second step is a question
of fact. Id. “‘To prove literal infringement, the patentee must show that the accused device
contains every limitation in the asserted claims.’” Alcohol Monitoring Sys., Inc. v. Actsoft, Inc.,
Fed. Appx. 294, 300 (Fed. Cir. 2011) (quoting Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d
1206, 1211 (Fed. Cir. 1998)). “If any claim limitation is absent from the accused device, there is
no literal infringement as a matter of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d
1241, 1247 (Fed. Cir. 2000) (citation omitted).
“Under the doctrine of equivalents, ‘a product or process that does not literally infringe
upon the express terms of a patent claim may nonetheless be found to infringe if there is
‘equivalence’ between the elements of the accused product or process and the claimed element of
the patented invention.’” SanDisk Corp. v. Kingston Tech Co., Inc., 695 F.3d 1348, 1363 (Fed.
Cir. 2012) (quoting Warner-Jenkinson Co. v. Hilton Davis Chem Co., 520 U.S. 17, 21, 117 S. Ct.

15 

1040, 137 L. Ed. 2d 146 (1997)). “To prove infringement under the doctrine, the patentee must
show that the accused device ‘performs substantially the same function in substantially the same
way to obtain the same result.’” Textron Innovations, Inc. v. Am. Eurocopter Corp. 498 Fed.
Appx. 23, 31, 2012 WL 3871717 (Fed. Cir. 2012) (quoting Graver Tank & Mfg. Co. v. Linde Air
Prods. Co., 339 U.S. 605, 608, 70 S. Ct. 854, 94 L. Ed 1097 (1950)).
A.

Julius Ballanco

Zurn argues that it is entitled to summary judgment on direct infringement because
Sloan’s infringement expert, Julius Ballanco, has “either misunderstood or misapplied the
Court’s claim construction with respect to the ‘axis of plunger travel’ limitation and the claimed
modifier ‘providing a [first or second] flush volume of water” because, he asserts, a portion of
the plunger travel path can constitute the “axis of plunger travel.” (R. 574, Zurn Mem. at 10,
13-14.) Zurn contends that the asserted claims require a “first [horizontal] axis of plunger travel
providing a first [full] flush volume of water” and a “second [angled] axis of plunger travel
providing a second [reduced] flush volume of water.” (Id. at 10.) Zurn asserts that, “by
definition, a portion of the plunger travel path cannot be an axis of plunger travel providing a full
or reduced flush volume because that partial travel path never results in a full or reduced flush
volume.” (Id. at 12.) The Court, however, already has ruled on and rejected this argument. (R.
663, Ballanco Daubert Opinion at 9-14.) For the reasons articulated in the Court’s
Memorandum Opinion and Order on the Ballanco Daubert challenge, Zurn’s argument fails.
B.

Axes of Plunger Travel

In addition, Zurn argues that it is entitled to summary judgment on direct infringement
because the data shows its accused product does not have a horizontal or angled axis of plunger
travel. Sloan counters that it is entitled to summary judgment on direct infringement because the

16 

Zurn plunger is capable of traveling horizontally for at least some portion of its travel during the
full flush mode, and is capable of traveling in a straight line at an angle to horizontal for at least
some portion of its travel during the reduced flush mode. (R. 556, Sloan Mem. at 11.)
Sloan argues that there is no dispute regarding the existence in the accused products of
the elements in claims 1, 4-6, 10-11, 19, and 29-31 other than the limitation that the plunger “is
capable of sliding along the horizontal axis and tilting and sliding along an axis of plunger travel
that is at an angle to the horizontal axis.” (Id. at 4.) According to Sloan, Zurn has admitted that
its accused products include all other elements of claims 1, 4-6, 10-11, 19, and 29-31 in its noninfringement contentions and in its responses to Sloan’s requests for admission. (Id. at 19; see
also Sloan’s Stmnt. of Undisputed Facts, ¶¶ 27-49.) In support, Sloan provided a chart
identifying each claim element and the corresponding citation to Zurn’s admission in either
Sloan’s Statement of Undisputed Facts or in alternative record cites. (Sloan Mem. at 20-27.)
Although Zurn disputes many of the relevant Local Rule 56.1 facts cited in Sloan’s chart,
Zurn’s objections are improper because Zurn has already admitted the statement in previous
filings. Zurn, for example, disputes paragraphs 27-39 of Sloan’s Statement of Undisputed Facts
on the ground that the P6000 Zurn handle assembly model is not a flush valve. (R. 608, ¶¶ 2739.) Zurn’s Final Non-Infringement Contentions, however, moot this objection. In that
document, Zurn admits that notwithstanding that the P6000 is a handle assembly and not a flush
valve, “when the accused device is installed into a flush valve body, this element would be
present.” (R. 448, Zurn’s Final Non-Infringement Contentions, ¶ 11.) After reviewing the
underlying record citations in Sloan’s chart, the Court finds that Zurn’s only substantive
objection to the relevant claim elements is that the accused Zurn products do not meet the claim
limitation that the plunger is “capable of sliding along the horizontal axis and tilting and sliding

17 

along an axis of plunger travel that is at an angle to the horizontal axis.” Further, Zurn does not
address, let alone dispute, Sloan’s chart and assertion that “Zurn concedes all of the other
elements of its direct infringement of claims 1, 4-6, 10-11, 19, and 29-31 of the Wilson Patent
after the issuance of that patent.” (Sloan Mem. at 18.)
With respect to the “axis of plunger” limitation, the parties and their experts disagree on
whether the Zurn plunger travels along the horizontal axis of plunger in the “full flush” mode
and whether it travels along an angled axis of plunger in the “reduced flush” mode.
Sloan’s infringement expert, Mr. Ballanco, opines that “the plunger of the accused Zurn
products travels in a straight, horizontal line for a large portion of its travel in the ‘full flush’
mode, and it travels in a straight line at an angle to horizontal for a large portion of its travel in
the ‘reduced flush’ mode.” (R. 545, Ballanco Aff., ¶ 9.) Mr. Ballanco based this opinion, in
part, on CAD modeling of the Zurn plunger travel that used a CMM (Coordinate Measuring
Machine) capable of collecting measurement data as precise as ten-thousandths of an inch. (Id. ¶
10.) To form his opinions, Mr. Ballanco relied on the following data, which he claims measures
the travel of the midpoint of the plunger:

18 

(Id., ¶ 12.) In the above graph, the midpoint data for the “full flush” mode is reflected by the
blue line and the midpoint data for the “reduced flush” mode is reflected by the red line. (Sloan
Mem. at 16.)
Mr. Ballanco opines that if a portion of a path of plunger travel is less than 0.3° it is
horizontal and if it is 1° or greater it is angled. (Zurn’s Statement of Undisputed Facts, ¶ 29.)
Mr. Ballanco opined that in the “full flush” mode the “plunger tends to follows the upper
bushing wall” which is at an angle of 0.213° and in the “reduced flush” mode the “plunger tilts
and tends to follow the lower bushing wall which is at an angle of approximately 0.817°. (Id., ¶
26.) In his testing, Mr. Ballanco calculated the angle between data points 0.025” and 0.200” of
the plunger path in the “full flush” mode in the above graph to be 0.47°. (Id., ¶ 33.) Mr.
Ballanco also calculated the angle between data points 0.065” and 0.084” in the “full flush”
mode to be 0.22°. (Id., ¶ 34.) Mr. Ballanco acknowledges that the angle between data points
0.079942” and 0.094834” in the “full flush” mode is 3.385°. (Id., ¶ 35.) In addition, Sloan
acknowledges that the angle of the plunger path in the “reduced flush” mode is 1.91° between
data points 0.0128024” and 0.139955” and -0.063° between data points 0.114641 and 0.126546.
(Id., ¶ 38.) Thus, Mr. Ballanco found that there were portions of the plunger travel path in “full
flush” mode that were angled, and portions that were horizontal.
Zurn’s infringement expert, Dr. Richard Magee, calculated the angle between data points
0.025” and 0.200” of the plunger travel path in the “full flush” mode to be 0.755°. (Id., ¶ 30.)
Mr. Ballanco acknowledged that an angle of 0.817 would be “significantly angled.” (R. 577-22,
Ballanco I at 82.) Based on this data, Dr. Magee disagrees with Mr. Ballanco that the plunger
travel path in the “full flush” mode is substantially horizontal. (R. 546-11, Magee Expert Rep.,
¶¶ 59-60.) Dr. Magee also supervised and/or witnessed testing of Zurn flush valve handles that

19 

resulted in plot diagrams. (Id., ¶ 48.) Based on this testing, Dr. Magee opines that the Zurn
plunger “travels along two different paths, neither of which are an angled axis of plunger travel
nor a horizontal axis of plunger travel.” (Id.) An example of Dr. Magee’s plot diagrams of the
Zurn plunger travel paths is depicted below:

(Sloan Mem. at 16.) According to Dr. Magee, the dots that are circled represent the Zurn
plunger travel path in the “full flush” mode. (R. 557-1, Magee Dep. at 100:19-101:23.) Dr.
Magee testified that the diagrams indicate that the plunger does not travel along a horizontal axis
in the “full flush” mode and does not travel along an axis that is at an angle to the horizontal axis
in the “reduced flush” mode. (Id., 102:3-16) Dr. Magee further testified that the yellow
highlighted portion of the circled dots “appear to be moving horizontal.” (Magee Dep. at
102:10-20.) In addition, Dr. Magee testified that the Zurn plunger travels along a horizontal path
for at least some portion of its travel in full flush mode and along a path that is at an angle to
horizontal for at least some portion of its travel in the “reduced flush” mode. (Id. at 116:10-19.)
The Court considers this statement, however, in light of Dr. Magee’s testimony that one could
find “a portion” of any path to be horizontal. (Id. at 106:8-16.).
Although Zurn’s expert admits that “a portion” of the plunger travel path meets the claim
limitation in both the “full flush” and “reduced flush” modes, he contends that the axis of
plunger travel is not horizontal in the “full flush” mode and is not at an angle to horizontal in the
“reduced flush” mode. The question is whether his admission regarding “a portion” of the
20 

plunger travel path conclusively establishes that the Zurn plunger “travels along the horizontal
axis” in full flush mode and “along an axis of plunger travel that is at an angle to the horizontal
axis” in the reduced flush mode. It does not. Based on the record before the Court, and when
viewed in the light most favorable to Zurn, there is a question of fact as to whether the plunger in
Zurn’s accused device “is capable of sliding along the horizontal axis and tilting and sliding
along an axis of plunger travel that is at an angle to the horizontal axis” as defined in claims 1, 46, 10-11, 19, and 29-31.
C.

Flexible Bushing

Zurn next contends that during reexamination of the Wilson patent, Sloan specifically
argued that if the bushing of a handle is flexible, then “the plunger should not exhibit a
horizontal axis of travel from either the upward or the downward flush.” (Zurn Mem. at 11.)
Zurn further argues that Sloan’s experts have acknowledged that the accused devices, which
contain a bushing made of Delrin, have a flexible bushing. (Id.) Thus, according to Zurn, the
accused devices cannot have a horizontal axis of plunger travel and Zurn is therefore entitled to
summary judgment.
1.

Timeliness

Local Patent Rule (“LPR”) 3.1 states:
A party claiming patent infringement must serve on all parties ‘Final Infringement
Contentions’ containing the information required by LPR 2.2 (a)-(h) within
twenty-one (21) weeks after the due date for service of Initial Infringement
Contentions. Each party asserting invalidity or unenforceability of a patent claim
shall serve on all other parties, no later than the same time that the Final
Infringement Contentions are due, “Final Unenforceability and Invalidity
Contentions” containing the information required by LPR 2.3 (b) and (c).”
N.D. Ill. LPR 3.1 (emphasis added). LPR 3.4 provides that a party may amend its final
unenforceability and invalidity contentions only by order of court “upon a showing of good

21 

cause and absence of unfair prejudice to opposing parties made promptly upon discovery of the
basis for the amendment.” N.D. Ill. LPR 3.4; see also Fujitsu Ltd. v. Tellabs Ops. Inc., Nos. 08
C 3379, 09 C 4350 2012 WL 5444979, at *4 (N.D. Ill. Mar. 21, 2012). The purpose of these
local patent rules is to “prevent a shifting sands approach to claim construction by forcing the
parties to crystallize their theories of the case early in litigation.” Fujitsu, 2012 WL 5444979 at
*4 (internal quotations omitted). A party’s showing of good cause must also show diligence in
amending the contentions. See O2 Micro Int’l Ltd. v. Monolithic Power Sys. Inc., 467 F.3d 1355,
1366 (Fed. Cir. 2006) (The “good cause” showing is not met “merely because new evidence was
revealed during discovery” without also showing diligence in amending the contentions.) In
particular, the Local Patent Rules require the moving party “to proceed with diligence in
amending those contentions when new information comes to light in the course of discovery.”
Trading Techs, Int’l, Inc. v. BCG Partners, Inc., 10 C 715, 2011 WL 3946581 (N.D. Ill. Sept. 2,
2011). In showing diligence, the relevant inquiry is not when the party learned about the
information, but when it could have made the discovery. Thermapure, Inc. v. Giertsen Co. of
Ill., 10 C 4724, 2012 WL 6196912 at *2 (N.D. Ill. Dec. 11, 2012).
Zurn never previously disclosed this “flexible bushing” argument. For the first time in its
summary judgment brief, Zurn argues that its bushing is flexible and, thus, does not have a
horizontal axis of plunger travel. Zurn never disclosed this non-infringement theory in its final
contentions, never previously disclosed that its bushing was too flexible to allow a “horizontal
axis of plunger travel,” and never raised this theory in any of its expert reports. Sloan did not
have notice of this non-infringement argument. Further, Zurn failed to seek leave to amend its
final non-infringement contentions to include this theory. It is now too late to do so.

22 

Zurn does not dispute that it raises this argument for the first time in its summary
judgment briefing and that it has failed to seek leave to amend its final non-infringement
contentions. Zurn’s only response is that Sloan cannot complain about the untimeliness of its
claim because Sloan did not disclose the flexing in Zurn’s accused devices’ bushing until April
2013. This argument, however, is unpersuasive. Zurn knows that its accused device contains a
bushing made of Delrin. If it believed that the Delrin bushing was flexible, it did not need a
statement from Sloan’s expert to advance this argument. Regardless, even if the Court credits
Zurn’s assertion that it did not have notice of the material in the bushing in its product until April
5, 2013, Zurn still failed to seek leave to amend its non-infringement contentions between that
time and when it filed its summary judgment motion – more than two months later.
2.

Merits

Even if the Court permitted Zurn to pursue this untimely argument, Zurn is not entitled to
summary judgment on its “flexible bushing” argument. This issue arose out of the 2011
reexamination proceedings. After Zurn submitted a Request for Ex Parte Reexamination of the
Wilson patent, Zurn submitted a Declaration from Michael Funari, its former head of
engineering. (R. 611-4, Funari Decl.) Mr. Funari’s declaration addressed prior art – the Billeter
patent – which included a bushing made of Delrin®. On January 10, 2011, as part of the
reexamination, the USPTO rejected claims 1, 5, 7, 8, 12, 14, 18, 19, and 31 under §102(b) as
anticipated by, or under §103(a) as obvious over, the Billeter patent. (R. 611-5, Office Action.)
In rejecting these Wilson patent claims, the Examiner understood Zurn’s argument to be that the
Billeter plunger can travel along two axes because its bushing is flexible and the bushing passage
is larger than the plunger, thus allowing for a slight tilting movement. (Id. at 6.)

23 

In response to the Examiner’s office action, Sloan argued that the Billeter bushing was
not flexible because it was made of molded plastic such as Delrin® with a high degree of
stiffness. In support, Sloan stated “nothing in the Billeter reference supports a conclusion that
the bushing is ‘flexible’ … the Billeter reference explicitly teaches the use of a material that one
of ordinary skill in the art would understand to be rigid.” (R. 611-6, Reexamination
Amendment, at 20.) Sloan also specifically addressed Delrin® in the Reexamination
Amendment, stating “the Billeter reference specifically mentions that Delrin® … provides a high
degree of stiffness … in light of the Billeter reference, one of ordinary skill would not
understand the bushing to be ‘flexible’ in any appreciable manner.” (Id.)
The passage in Sloan’s Reexamination Amendment upon which Zurn bases this argument
is as follows:
If the bushing is “flexible,” as the Examiner has interpreted, or if the bushing
passage is sufficiently larger than the plunger, as is one of the Requestor’s
arguments, then the plunger should not exhibit a horizontal axis of travel from
either the upward or downward flush. Thus, the Billeter reference would not
teach the limitation of claim 12 where one of the axes of travel is substantially
horizontal and the other axis is “tilted” with respect thereto.
(Id. at 24.) On July 22, 2011, the Examiner found Sloan’s position regarding the flexibility of
the Billeter bushing persuasive and determined that the Billeter patent does not allow the plunger
to tilt. (R. 611-7, Notice of Intent to Issue Reexamination Certificate at 3-4.)
Zurn’s new argument focuses on a statement made by Sloan during expert discovery that
the Zurn bushing component “flexes ever-so-slightly (i.e., on the order of a few ten-thousandths
of an inch) with the movement of the plunger.” (R. 557-8, Ballanco Reply Rep. at 16.) Mr.
Ballanco made that statement as part of his objection to Dr. Magee’s calculation of the angle of
the horizontal plunger travel path. (Id.) Sloan argues that while this slight flex is relevant to the
precise angle calculations made by Dr. Magee and Mr. Ballanco of the Zurn plunger path, it is
24 

not the same type of flexibility that Sloan discussed in the reexamination with respect to the
Billeter bushing. (R. 616, Sloan Resp. at 12.) Sloan’s argument has merit. Sloan’s statement in
the reexamination referred to the Billeter bushing, which does not have a tilted portion. Thus, as
the Examiner understood it, the Billeter bushing would have to have sufficient flexibility for
there to be two axes of plunger travel. The Examiner explicitly found that this was not the case.
(Notice of Intent to Issue Reexam. Cert. at 3-4.)
Thus, at a minimum, Sloan has established that there is a question of material fact as to
whether it has conceded that the Zurn bushing is “flexible” and, thus, that it does not exhibit a
horizontal axis of plunger travel.
D.

Doctrine of Equivalents

Sloan’s doctrine of equivalents position is directed to the “horizontal axis of plunger
travel” limitation, which is incorporated in the “plunger mounted for sliding and tilting” claim
limitation. (R. 446, Sloan’s Final Infr. Contentions at 50.) “Under the doctrine of equivalents, a
‘product or process that does not literally infringe upon the express terms of a patent may
nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused
product or process and the claimed elements of the patented invention.’” SanDisk Corp. v.
Kingston Tech. Co., Inc., 695 F.3d 1348, 1362 (Fed. Cir. 2012) (citing Warner-Jenkinson Co.,
Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 21, 117 S. Ct. 1040, 137 L. Ed. 2d 146 (1997)). To
prove infringement under the doctrine, the patentee must show that the accused device “performs
substantially the same function in substantially the same way to obtain the same result.”
Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1340 (Fed. Cir. 2013). Zurn argues that
the Court should reject Sloan’s doctrine of equivalents argument because Sloan’s position (1) is
barred by the doctrine of prosecution history estoppel; (2) is unsupported and improperly vitiates

25 

a claim limitation; and (3) improperly results in a claim that reads on the prior art. The Court
addresses each argument in turn.
1.

Prosecution History Estoppel

Prosecution history estoppel may limit a patentee from using the doctrine of equivalents
to establish infringement. Festo Corp. v. Shoketsu Kinzoko Kogyu Kabushiki, 344 F.3d 1359,
1366-67 (Fed. Cir. 2003). “A voluntary claim amendment – i.e., one neither required by a patent
examiner nor made in response to a rejection by an examiner for a stated reason – may give rise
to prosecution history estoppel.” Id. at 1364, 1366. Whether prosecution history estoppel
applies presents a question of law. Id. at 1367-68. “As a legal limitation on the application of
the doctrine of equivalents, prosecution history estoppel is a matter to be determined by the
court.” Id. at 1368 (citing Warner-Jenkinson, 520 U.S. at 39 n. 8). When an amendment
“narrows the scope of the claims, and the amendment is adopted for a substantial reason related
to patentability, the amendment gives rise to a presumption of surrender for all equivalents that
reside in ‘the territory between the original claim and the amended claim.’” Intervet Inc. v.
Merial Ltd., 617 F.3d 1282, 1291 (Fed. Cir. 2010) (citing Festo Corp. v. Shoketsu Kinzoko
Kogyu Kabushiki Co., 535 U.S. 722, 740 (2002)). “A district court must look to the specifics of
the amendment and the rejection that provoked the amendment to determine whether estoppel
precludes the particular doctrine of equivalents argument being made.” Id.
Zurn contends that because Sloan amended the claims and made arguments to overcome
the prior art, Sloan is estopped from applying the doctrine of equivalents to the term “axis of
plunger travel.” (Zurn Mem. at 15.) Zurn bases this position, in part, on its “flexible bushing”
argument discussed above. Zurn argues that because of Sloan’s contentions during
Reexamination regarding flexible bushing, Sloan cannot assert that either of the paths on which

26 

the plunger in the accused devices travel are equivalent to a horizontal axis. (Id.) For the
reasons discussed above (see supra, pp. 21-25), this argument fails.
Zurn also argues that Sloan’s amendments narrowed the scope of the claims by defining
the claims in terms of how the plunger travels through the bushing, and not by geometry of the
passage. (Id. at 16-17.) These amendments, Zurn argues, narrowed the scope of protection
available to Sloan by adding limitations that were not present in the originally-filed claims and
by distinguishing the claims from the prior art by narrowing arguments. (Id. at 17.)
In response, Sloan contends that the challenged equivalent relates to a claim limitation –
“plunger mounted for sliding and tilting” – that was present in the originally filed claims 1 and
10 of the Wilson patent application. (Sloan’s Responsive Stmnt. of Undisputed Facts5, ¶ 118.)
Sloan did not substantially amend this claim during prosecution or reexamination. Indeed, it
only amended the phrase “plunger mounted for sliding and tilting” by replacing it with “plunger
slidably and tiltably mounted.” (R. 611-8, Claim Amendment at 17.) The parties agree that
these phrases have the same meaning. (R. 369, Rev. Joint Claim Construction at 4 n. 4.)
The challenged equivalent for purposes of Zurn’s prosecution history estoppel argument,
however, is not the “plunger mounted for sliding and tilting.” The equivalent at issue is the “axis
of plunger travel” claim limitation, which Sloan substantially amended during prosecution and
reexamination of the ‘635 patent. In particular, Sloan amended claim 1 in response to the
Examiner’s rejection during prosecution as follows:
the bushing passage defining both a horizontal first axis of plunger
travel and a[n] angled second axis of plunger travel which is
angled, nonparallel with respect to the first axis of plunger travel,
wherein tilting of the handle in a first direction moves the plunger
along the first axis of plunger travel and tilting of the handle in a

5

Citations to “Sloan’s Responsive Stmnt. of Undisputed Facts” refer collectively to Sloan’s Local Rule 56.1(b)(3)
Responsive Statement (R. 617) and Zurn’s Reply to Sloan’s Additional Statement of Material Facts (R. 630).

27 

second direction tilts the plunger and moves the plunger along the
second axis of plunger travel.
(Zurn’s Stmnt. of Undisputed Facts, ¶ 77) (additions in underline.) During reexamination, Sloan
amended claim 1 further to state
wherein tilting of the handle in a first direction move the plunger
along the first axis of plunger travel providing a first flush volume
of water adequate to evacuate solid waste and tilting of the handle
in a second direction tilts the plunger and moves the plunger along
the second axis of the plunger travel providing a second flush
volume of water adequate to evacuate liquid waste.
(Wilson Patent Reexam. Cert., col. 1, 47-54.) These amendments narrowed the scope of claim 1
by describing the axes in terms of how the plunger travels through the bushing passage along the
axes of plunger travel and further describing the result of tilting the handle in each direction.
Having established that Sloan made narrowing amendments in response to the Examiner’s
rejection, the question for purposes of prosecution history estoppel is whether these amendments
preclude Sloan from arguing that Zurn’s accused products infringe under the doctrine of
equivalents. They do not.
Applying prosecution history estoppel to the amendments made to claim 1, Sloan is
estopped from arguing the doctrine of equivalents to the extent it relies on the geometry of the
accused product’s bushing passage and to the extent that the plunger of Zurn’s accused products
does not move along the axes of plunger travel providing flush volumes of water. As described
above, because an underlying question of fact exists as to whether the plunger in Zurn’s accused
device tilts and slides along an axis of plunger travel as defined in the ‘635 patent, Zurn is not
entitled to summary judgment on the basis of prosecution history estoppel.

28 

2.

Vitiation

Zurn next argues that Sloan’s application of the function-way-result test improperly
vitiates the “horizontal axis of plunger travel” and “angled axis of plunger travel” claim terms
and would read on the prior art. (Zurn Mem. at 17.) “There is no set formula for determining
whether a finding of equivalence would vitiate a claim limitation, and thereby violate the all
limitations rule.” Freedman Seating Co. v. American Seating Co., 420 F.3d 1350, 1359 (Fed.
Cir. 2005). “Courts must consider the totality of the circumstances of each case and determine
whether the alleged equivalent can be fairly characterized as an insubstantial change from the
claimed subject matter without rendering the pertinent limitation meaningless.” Id. “Vitiation is
not an exception to the doctrine of equivalents, but instead a legal determination that ‘the
evidence is such that no reasonable jury could determine two elements to be equivalent.’” Deere
& Co. v. Bush Hog, LLC, 703 F.3d 1349 (Fed. Cir. 2012) (citing Warner-Jenkinson, 520 U.S. at
39 n. 8).
Zurn asserts that because Sloan made an affirmative choice to claim the term “axis”,
when it could have claimed the arguably broader term “path,” Sloan cannot utilize the doctrine of
equivalents. (Zurn Mem. at 17.)

In addition, Zurn argues that Sloan cannot assert the doctrine

of equivalents by generically stating the plunger in the Zurn product travels in a similar manner
to achieve a similar result, but rather must present particularized evidence with regard to each of
the function, way, and result. Zurn further argues that Sloan’s expert provides no data or opinion
that would tend to support Sloan’s theory of equivalence. (Id. at 19.) Finally, Zurn contends that
only claim 19 uses the limitation “substantially horizontally” and that the use of different words
in separate claims is presumed to impart a different scope. (Id.) For the following reasons, the
Court disagrees with each of Zurn’s arguments.

29 

First, it is true that Sloan made an affirmative choice to claim the term “axis” and instead
could have claimed the term “path.” Zurn, however, does not provide any evidence that Sloan’s
doctrine of equivalents position is that a “path is substantially equivalent to an axis.” (Zurn
Mem. at 17.) In fact, Sloan’s doctrine of equivalents position does not mention the word “path”
and, instead, asserts that “Zurn’s accused products have a plunger capable of sliding along a
substantially horizontal axis that has substantially the same function as a plunger capable of
sliding along a horizontal axis …” (R. 446, Sloan’s Final Infr. Contentions at 50.) In addition,
Zurn does not provide any support for its argument that the term “axis” is more narrow that
“path.” Sloan is correct that the Court has not construed either “axis” or “path,” therefore, the
Court cannot determine that the term “axis” is narrower in scope than the term “path.” Nor can
the Court conclusively determine whether “axis” would have an equivalent meaning to the term
“path.” As a result, Sloan’s choice to claim an “axis” does not warrant summary judgment in
favor of Zurn on Sloan’s doctrine of equivalents argument.
Second, Sloan has not made only superficial allegations that Zurn’s accused products
meet the function-way-result test for application of the doctrine of equivalents. As described
above, Sloan has provided, for example, detailed CAD models of the accused product’s path of
plunger travel, including calculations of the plunger’s position and the angle of each of the
accused product’s flush modes. While Zurn and Sloan’s respective experts dispute these models
and calculations, the evidence supplied by Sloan plausibly supports its theory of infringement
under the doctrine of equivalents. Material issues of fact remain, however, as to whether Zurn’s
accused product satisfies the function-way-result test.
Finally, Zurn’s claim differentiation argument fails. Sloan argues that Zurn misapplies
the doctrine of claim differentiation, specifically pointing out that claim 19 depends from claim

30 

18, which includes several claim elements that are not recited in any other claim. The Court
agrees with Sloan that, to the extent Zurn relies on the “substantially horizontal” claim limitation
in claim 19 to limit the term “horizontal” in claim 1, Zurn has misused the doctrine of claim
differentiation. Several differences in meaning and scope exist between claim 19 and claim 1,
including, for example, that claim 1 describes “a dual mode flush valve” and claim 19 describes
“a retrofit system for a flush valve system.” Because of these differences, and because claim 19
is not dependent on claim 1, the Court need not presume that the use of “substantially horizontal”
in claim 19 dictates a more strict construction of “horizontal” in claim 1 for purposes of the
doctrine of equivalents. Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 138081 (Fed. Cir. 2006) (stating, in a scenario involving claims that are independent of one another,
“[d]ifferent claims with different words can, of course, define different subject matter within the
ambit of the invention.”).
3.

Broadening of the Term “Horizontal Axis of Plunger Travel”

Zurn next seeks summary judgment on the grounds that Sloan’s assertion of the doctrine
of equivalents is impermissible because any broadening of the term “horizontal axis of plunger
travel” to cover the non-linear path seen in the accused devices would read on the prior art.
(Zurn Mem. at 17.)
In support of this argument, Zurn points to the Whiteside patent that was cited by the
Examiner during prosecution of the Wilson patent as evidence that Sloan’s doctrine of
equivalents argument would expand the Wilson patent to read on prior art. (R. 631, Zurn Rep. at
10.) Specifically, Zurn points to the Examiner’s statement that “the patent to Whiteside had
every claim limitation recited in the pending claims except for the plunger ‘traveling along a first
axis and a second axis as well as a non-symmetrical bushing passage.’” (Id.)

31 

The Court disagrees that application of the doctrine of equivalents to the “horizontal axis
of plunger travel” claim term would cause the claim to read on prior art Whiteside patent.
Application of the doctrine of equivalents would not vitiate the requirement of the claim that the
plunger moves along a first axis and a second axis of plunger travel. These claimed axes remain
distinct under any proper application of the doctrine of equivalents. Thus, both axes of plunger
travel are required to infringe the claims of the ‘635 patent. Therefore, as the Examiner asserted,
the patent to Whiteside could not read on the claims of the ‘635 patent as currently amended
because the Whiteside patent does not have the limitation of “traveling along a first axis and a
second axis.” (Id.) Because Zurn has failed to point to any additional prior art flush valves that
application of the doctrine of equivalents would allegedly cause the ‘635 patent to read on, the
Court declines to address Zurn’s further arguments in abstraction. For these reasons, the Court
denies Zurn’s motion for summary judgment on Sloan’s doctrine of equivalents argument.
For all of the foregoing reasons, the Court denies both Sloan’s and Zurn’s cross-motions
for summary judgment on direct infringement.
II.

Zurn’s Counterclaim and Affirmative Defense that Claims 1, 4-8, 10-11, 19,
28-31 and 33-34 are Invalid Under §§ 102 or 103
“Because patents are presumed valid, see 35 U.S.C. § 282, the challenging party must

prove invalidity by clear and convincing evidence.” Microsoft Corp v. i4i Ltd. P’ship, - U.S. -,
131 S. Ct. 2238, 2245, 180 L. Ed. 2d 131 (2011); Santarus, Inc. v. Par Pharm., Inc., 694 F.3d
1344, 1351-52 (Fed. Cir. 2012) (citing Microsoft, 131 S. Ct. at 2242). Sloan moves for summary
judgment on Zurn’s counterclaim and affirmative defense that claims 1, 4-8, 10-11, 19, 28-31,
and 33-34 are invalid under §§ 102 or 103. Sloan contends that Zurn has failed to provide either
contentions or an expert report that assert that these claims are invalid as anticipated or obvious,

32 

and, therefore, that Zurn has abandoned those defenses and is precluded from introducing any
evidence at trial on those subjects.
A.

Anticipation

“If the claimed invention was ‘described in a printed publication’ either before the date of
invention, 35 U.S.C. §102(a), or more than one year before the U.S. patent application was filed,
35 U.S.C. § 102(b), then that prior art anticipates the patent.” Finisar Corp. v. DirecTV Grp.,
Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). “[I]nvalidity by anticipation requires that the four
corners of a single, prior art document describe every element of the claimed invention, either
expressly or inherently, such that a person of ordinary skill in the art could practice the invention
without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d
1272, 1282 (Fed. Cir. 2000); see also Old Reliable Wholesale, Inc. v. Cornell Corp., 635 F.3d
539, 544 (Fed. Cir. 2011) (“anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference.”) (citation omitted). Even though § 102
“refers to ‘the invention’ generally, the anticipation inquiry proceeds on a claim-by-claim basis.”
Finisar Corp., 523 F.3d at 1334 (citing Hakim v. Cannon Avent Group, PLC, 479 F.3d 1313,
1319 (Fed. Cir. 2007)). Anticipation is a question of fact. Id.
B.

Obviousness

“A patent may not issue ‘if the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art to which said subject
matter pertains.” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
676 F.3d 1063, 1068 (Fed. Cir. 2012) (citing 35 U.S.C. § 103(a)(2006)). Obviousness is a
question of law based on underlying factual findings: (1) the scope and content of the prior art;

33 

(2) the differences between the claims and the prior art; (3) the level of ordinary skill in the art;
and (4) objective considerations of nonobviousness.” Id. Objective considerations of
nonobviousness include, among other factors, the “commercial success of the patented
invention.” Id. at 1075.
C.

Zurn’s Failure to Assert Anticipation or Obviousness

Zurn does not dispute that it has not asserted invalidity contentions of anticipation or
obviousness against claims 1, 4-8, 10, 11, 19, 28-31, 33 and 34 of the Wilson patent. (R. 606,
Zurn Resp. at 34; Sloan’s Stmnt. of Undisputed Facts, ¶ 50.) Zurn’s invalidity and
unenforceability contentions include only § 103 invalidity contentions as to claim 12 of the
Wilson patent. (R. 447 at 2-4.) Zurn also does not dispute that its only invalidity expert, Dr.
Magee, expressed no opinion in his report as to the anticipation or obviousness of claims 1, 4-8,
10-11, 19, 28-31, 33 and 34. (Id. ¶ 51.) Zurn’s response is that it did not raise these contentions
because its accused devices do not have a horizontal axis of plunger travel or an angled axis of
plunger travel. (Zurn Resp. at 34.) Zurn also contends that under Sloan’s application of “axis of
plunger travel” the asserted claims would be invalid because Zurn’s expert asserts that prior art
handles available for sale more than one year prior to the filing date have plunger travel paths
with horizontal and/or angled portions. (Id.) Thus, Zurn requests that if the Court agrees with
Sloan’s construction of the “axis of plunger travel,” it be granted leave to amend its Amended
Final Invalidity and Unenforceability Contentions to add contentions directed to anticipation and
obviousness of the asserted claims. (Id. at 35.)
As noted above, Local Patent Rule (“LPR”) 3.1 states:
A party claiming patent infringement must serve on all parties ‘Final Infringement
Contentions’ containing the information required by LPR 2.2 (a)-(h) within
twenty-one (21) weeks after the due date for service of Initial Infringement
Contentions. Each party asserting invalidity or unenforceability of a patent claim
34 

shall serve on all other parties, no later than the same time that the Final
Infringement Contentions are due, “Final Unenforceability and Invalidity
Contentions” containing the information required by LPR 2.3 (b) and (c).”
N.D. Ill. LPR 3.1 (emphasis added). LPR 3.4 provides that a party may amend its final
unenforceability and invalidity contentions only by order of court “upon a showing of good
cause and absence of unfair prejudice to opposing parties made promptly upon discovery of the
basis for the amendment.” N.D. Ill. LPR 3.4; see also Fujitsu Ltd. v. Tellabs Ops. Inc., Nos. 08
C 3379, 09 C 4350 2012 WL 5444979, at *4 (N.D. Ill. Mar. 21, 2012). The purpose of such
local patent rules is to “prevent a shifting sands approach to claim construction by forcing the
parties to crystallize their theories of the case early in litigation.” Fujitsu, 2012 WL 5444979 at
*4 (internal quotations omitted). A party’s showing of good cause must also show diligence in
amending the contentions. See O2 Micro Int’l Ltd. v. Monolithic Power Sys. Inc., 467 F.3d 1355,
1366 (Fed. Cir. 2006) (The “good cause” showing is not met “merely because new evidence was
revealed during discovery” without also showing diligence in amending the contentions.) In
particular, the Local Patent Rules require the moving party “to proceed with diligence in
amending those contentions when new information comes to light in the course of discovery.”
Trading Techs, Int’l, Inc. v. BCG Partners, Inc., 10 C 715, 2011 WL 3946581 (N.D. Ill. Sept. 2,
2011). In showing diligence, the relevant inquiry is not when the party learned about the
information, but when it could have made the discovery. Thermapure, Inc. v. Giertsen Co. of Ill.
10 C 4724, 2012 WL 6196912 (N.D. Ill. Dec. 11, 2012).
Zurn learned of Mr. Ballanco’s “portion of the path” theory, at the latest, on April 5,
2013. (Id.) Zurn did not raise the issue of seeking leave to amend its Invalidity and
Unenforceability Contentions until July 25, 2013 (nearly four months later) and only did so in
response to Sloan’s motion for summary judgment. Further, Zurn’s January 2012 Invalidity and

35 

Unenforceability Contentions included §§ 102 and/or 103 invalidity contentions as to all of the
asserted claims: 1, 4-8, 10-12, 14, 19, 29-31, and 33-34. (R. 635-3, Defendant’s Updated Final
Invalidity and Unenforceability Contentions at 2-4.) Zurn removed these contentions from its
January 2013 invalidity and unenforceability contentions, which it filed after the Markman
hearing. (R. 447.)
Even if it had shown good cause to amend its contentions, Zurn has not shown that it
sought leave to add these invalidity contentions “promptly upon discovery of the basis for the
amendment.” L.P.R. 3.4. This lack of diligence and delay by Zurn undermines any good cause
it could have to warrant amendment, which it also has not shown. See, e.g., Thermapure, Inc. v.
Giertsen Co. of Illinois, 10 C 4724, 2012 WL 6196912 at *2 (N.D. Ill. Dec. 11, 2012) (finding
that the Local Patent Rules require the moving party to “proceed with diligence in amending
those contentions when new information comes to light in the course of discovery.”) (citing O2
Micro Int’l Ltd., 467 F.3d at 1368 (Fed. Cir. 2006)); see also Fujitsu, 2011 WL 4577906 at *3.
Therefore, the Court will not consider Zurn’s request for leave to amend its Amended Final
Invalidity and Unenforceability Contentions.
For these reasons, the Court grants Sloan’s motion for summary judgment on Zurn’s
counterclaim and affirmative defenses that claims 1, 4-8, 10-11, 19, 28-31, and 33-34 are invalid
under §§ 102 or 103.
III.

Zurn’s Best Mode Defense
Zurn seeks to invalidate the Wilson Patent based on its best mode defense. Zurn must

prove this defense by clear and convincing evidence. Wellman, Inc. v. Eastman Chem. Co., 642
F.3d 1355, 1360 (Fed. Cir. 2011). “35 U.S.C. §112 requires that a patent’s specification shall set
forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”

36 

Ateliers De La Haute-Garonne v. Broetje Automation USA Inc., 717 F.3d 1351, 1356 (Fed. Cir.
2013) (internal quotations omitted). As the Federal Circuit teaches, in order to establish patent
invalidity based on a violation of the best mode, “it must be shown that the inventor possessed a
better mode than was described in the patent, and that such better mode was intentionally
concealed.” Id. at 356-57.
“To determine whether a best mode disclosure violation exists, a fact finder applies a
two-prong test.” Eurand, Inc. v. Mylan Pharms., Inc., 676 F.3d 1063, 1084 (Fed. Cir. 2012).
The first prong is subjective and focuses on whether “the inventor possessed a best mode of
practicing the claimed invention at the time of filing the patent application.” Ateliers, 717 F.3d
at 1357. This inquiry focuses on “the inventor’s state of mind at the time he filed the patent
application, and asks whether the inventor considered a particular mode of practicing the
invention to be superior to all other modes at the time of filing.” Eurand, 676 F.3d at 1085. If
the first prong is satisfied, the second prong requires the fact finder “to determine whether the
specification discloses sufficient information such that one reasonably skilled in the art could
practice the best mode.” Eurand, 676 F.3d at 1085 (citing Eli Lilly & Co. v. Barr Labs, Inc., 251
F.3d 955, 963 (Fed. Cir. 2001)). “The second step is an objective inquiry to determine whether
the inventor concealed from the public the best mode of practicing the invention.” Ateliers, 717
F.3d at 1357 (citations omitted). “Violation requires intentional concealment; innocent or
inadvertent failure of disclosure does not of itself invalidate the patent.” Id.
Zurn and Sloan both move for summary judgment on Zurn’s defense that the Wilson
Patent fails to satisfy the best mode requirement. The Court addresses their arguments in turn.

37 

A.

Angle of the Tilted Portion

Zurn claims that John Wilson, the inventor, violated the best mode requirement when he
failed to disclose a specific angle of the tilted portion of the bushing passage. Both parties seek
summary judgment on this defense.
The first prong of the best mode test depends on what the inventor believed when he filed
the patent application. It is undisputed that the patent does not disclose the degree of tilt in the
bushing passage. Zurn argues that John Wilson failed to disclose that there was a specific, best
angle for the tilted portion of the bushing passage at the time he filed the patent application.
(Zurn Mem. at 21-30.)
In January 2004, Mr. Wilson began working on developing a manual dual mode flush
valve. (Zurn’s Statement of Undisputed Facts, ¶ 46.) In November 2004, Mr. Wilson drafted a
memo that stated that the Sloan dual flush manual handle would provide “a ½ flush with the
handle push up, a full flush when the handle is push down.” (Id.) Through internal testing,
Sloan determined that an appropriate flush volume reduction for its dual flush manual handle
would be 30% when activated in the up direction. (Id., ¶ 55.) It is undisputed that Mr. Wilson
experimented for months fine-tuning the bushing passage to arrive at the desired geometry that
would consistently produce that 30% reduction in flush volume, and that the reduction was
achieved by boring out the bushing passage at a specific angle. (Id., ¶ 51-52, 55.) Zurn argues,
that Mr. Wilson also settled upon a specific angle of 1° in the bushing passage to achieve the
reduced flush volume. (Zurn Mem. at 24.)
Mr. Wilson testified that he did not settle on an angle for the invention. (R. 546-13,
Wilson Dep. 69:22-24.) Mr. Wilson also testified that he did not settle on the specific angle for
the specific Sloan commercial product until after the Wilson patent application was filed:

38 

Q:

Well, when did you get to the point where you had the dimensions in the
angle determined that exist presently in today’s production version of the
Sloan Uppercut handle?

A:

That would be just prior to true production when all the molds were
approved.

Q:

When was that?

A:

The exact date, I don’t know.

Q:

Was it in 2005?

A:

I believe it was in 2005.

Q:

In the first half of 2005?

A:

I would have to look it up.

Q:

Was it before you filed your patent application?

A:

Did I finalize the molds before I submitted the application?

Q:

That’s the question, right.

A:

No, that happened after.

(Id. at 77:18-78:11.)
Q:

At what point in time did you settle on the bore bushing profile that is
opposite to what is shown in your patent?

A:

The exact date, I don’t recall.

Q:

Was it before you filed the patent?

A:

After the patent application because it was still in development at the time.

Q:

So it was after you filed the patent?

A:

Correct, the patent application.

(Id. at 100:6-14.) Further, it is undisputed that Mr. Wilson sent an email one month after the
Wilson patent filing date that indicated that the mold used to manufacture Sloan’s bushings was
still being revised to account for a revised tilt angle “to increase the GPF [gallons per flush]
reduction.” (R. 557-2.)
39 

In addition, Zurn’s expert, Dr. Magee, also testified that the best angle of the tilted
portion of the bushing component of the handle “would be dependent on the other components of
the valve” and that the best angle for the Sloan valve might not be the best angle for the Zurn
valve:
Q:

So the best angle would depend on a number of variables on the valve
itself, correct?

A:

The – for a given output, it would be dependent on the other components
of the valve, that’s correct. So there would be some valve specificity
connected to it.

Q:

So what might be the best angle for a Sloan valve might not be the best
angle for a Zurn valve?

A:

That is correct, but I doubt that they would be much different.

Q:

Well, in fact, you know what the two values are in the valves involved,
right? You know that the angle for the Zurn valve is 0.75, correct?

A:

That’s correct.

Q:

And you know that the angle for the Sloan valve is around 1 degree,
correct?

A:

Attorneys’ eyes only.

Q:

Yes?

A:

Yes.

(R. 557-1, Magee Dep. 68:11-70-3.)
This evidence does not support that Wilson subjectively considered there to be a best
mode for carrying out the invention at the time of filing – even viewing it in the light most
favorable to Zurn. Zurn’s reliance on Wellman, Inc. v. Eastman Chemical Co., 642 F.3d 1355
(Fed. Cir. 2011) for the proposition that “[a] concession that claimed aspects of a commercial
embodiment are within the scope of the asserted claims of the patent shows the subjective
preference for the commercial embodiment” is misplaced. Indeed, the Federal Circuit in
40 

Wellman specifically noted that “[a] party’s failure to disclose its commercial mode does not ipso
facto result in a § 112 violation because the focus of a best mode inquiry remains on the claimed
invention rather than the marketed product.” Id. at 1364 (citing Zygo Corp. v. Wyko Corp., 79
F.3d 1563, 1567 (Fed. Cir. 1996)). See also Bayer AG v. Schein Pharmaceuticals, Inc., 301 F.3d
1306, 1315 (Fed. Cir. 2002) (noting that “in keeping with the statutory mandate, our precedent is
clear that the parameters of a section 112 inquiry are set by the CLAIMS”) (citations and
quotations omitted). Thus, Zurn’s focus on the commercial embodiment as the sole basis for
granting summary judgment in its favor fails.
Zurn further claims that it has established that Wilson subjectively knew that there was a
specific, best angle for the tilted portion of the bushing passage at the time he filed the patent
application because “Sloan had four different prototypes in its possession, each with a different
angle, yet none of these prototypes found their way into the [Wilson] Patent.” (Zurn Resp. at
23.) As the Federal Circuit has explained:
The best mode requirement does not mandate the disclosure of each detail of
prototypes made prior to filing for a patent. Wahl Instruments, Inc. v. Acvious,
Inc., 950 F.2d 1575, 1581, 21 U.S.P.Q. 2d 1123, 1128 (Fed. Cir. 1991). The
record indicates that the defendants questioned Parisi about several modifications
made to his prototype devices during their development and then tried to induce
him to agree that at least one of these modifications was made because he
considered it “best” to make it. However, the best mode inquiry is not
mechanical.
Mentor H/S, Inc. v. Medical Device Alliance, Inc., 244 F.3d 1365, 1375 (Fed. Cir. 2001). In
addition, the fact that Mr. Wilson had four different embodiments with different angles supports
that Mr. Wilson contemplated more than just one angle.
Regarding the objective prong, Zurn contends that the “clear weight of Federal Circuit
authority holds that intentional concealment is not required for best mode violations.” (Zurn
Mem. at 26.) The Federal Circuit, however, specifically rejected this position just three weeks
41 

before Zurn filed its memorandum in support of summary judgment. Specifically, the Federal
Circuit held that intentional concealment is necessary for a violation of best mode – the “issue is
whether the inventors knew of and deliberately concealed a better mode than they disclosed.”
Ateliers, 717 F.3d at 1357-59. The primary thrust of Zurn’s objective inquiry argument is
premised on a faulty reading of the law, namely, that it does not have to establish that Wilson
intentionally concealed the best mode. Accordingly, many of its arguments fail.
The only evidence Zurn identifies in support of “intentional concealment” is a May 20,
2005 email from Greg Spoor at Sloan to Jim Allen, Julie Shireman, Steve Mader, John Wilson,
and John Lauer regarding “Dual-Flush repair kit.” (R. 563-5, Exhibit 15.) It is unclear what role
Greg Spoor plays at Sloan. In the email, Spoor writes the following:
I would vote no. My reasons are:
I doubt anyone will know exactly how this system works enough to buy the
correct part, other than the obvious Handle broken etc.
If it is something that obvious it is a part that makes up the bulk of the assembly
so why not sell the entire item.
Most importantly, we are assembling these to a spec and defined orientation. If a
customer takes it apart all that is lost and personally I think we need to keep that a
very big secret. I am sure the competition may someday figure out how John did
this but let’s not speed up the process!
(Id.) Wilson responded that he also voted “no” and that “[w]e would have to include installation
instructions with the repair kit, and the installer would have to follow the instructions.” (Id.)
Viewing this email exchange in the light most favorable to Zurn, it does not raise an issue of fact
regarding Wilson’s intentionally concealing the specific angle of the tilted portion of the bushing
passage. This email pertains to a repair kit. Even looking at it in the light most favorable to
Zurn, it does not mention the angle of the tilted portion. Zurn cannot rely on this vague email to
establish clear and convincing evidence that Wilson intentionally concealed the specific angle.
42 

Viewing this evidence in the light most favorable to Sloan, Zurn has not submitted clear
and convincing evidence of invalidity based on best mode that no reasonable juror could find
otherwise. In fact, Sloan is entitled to summary judgment on this aspect of Zurn’s best mode
defense. There simply is no evidence in the record upon which a reasonable jury could rely to
find that Wilson intentionally concealed the specific angle of the tilted portion of the bushing
passage for practicing his invention.
B. The 30% Reduction
Zurn next claims that Wilson failed to disclose the best mode of the invention when he
failed to disclose that the amount of water reduction necessary for an adequate reduced flush
volume is 30%.
Zurn failed to disclose its 30% theory in its Final Non-Infringement Contentions. Local
Patent Rule 3.2 provides:
Each party asserting non-infringement of a patent claim shall serve on all other
parties “Final Non-infringement Contentions” within twenty-eight (28) days after
service of the Final Infringement Contentions, containing the information called
for in LPR 2.3(a).
N.D. Ill. LPR 3.2.) Zurn cannot now add an additional invalidity contention without notice.
Accordingly, the Court grants summary judgment on this aspect of the best mode defense as a
matter of law.
Furthermore, as noted above, Zurn must establish intentional concealment for a best
mode violation. 717 F.3d at 1357-59. Not only does Zurn argue that intentional concealment is
not necessary, it fails to set forth any evidence regarding any intent on Wilson’s part to conceal
the adequate reduced flush volume. Sloan, therefore, is entitled to summary judgment because
Zurn has not identified any issue of material fact as to intentional concealment.

43 

IV.

Zurn’s Enablement Defense

Zurn next contends that the asserted claims are invalid under 35 U.S.C. § 112 because the
specification does not enable one to make or use the invention as recited. (Amended Final
Invalidity and Unenforceability Contentions, ¶¶ 4-7, 10-11, 13-16.) Sloan moves for summary
judgment on Zurn’s affirmative defense of lack of enablement.
It is well established that, in order to be valid, a patent specification must meet the
enablement requirement of § 112. Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333, 1342
(Fed. Cir. 2010). “To be enabling, the specification of a patent must teach those skilled in the art
how to make and use the full scope of the claimed invention without undue experimentation.”
Teva Pharms. USA v. Sandoz, Inc., 723 F.3d 1363, 1370 (Fed. Cir. 2013) (internal quotations
omitted). To prove a lack of enablement, one must show that at the time of filing the application
one skilled in the art, having read the specification could not practice the invention without
“undue experimentation.” Cephalon, Inc. v. Watson Pharms., 707 F.3d 1330, 1336 (Fed. Cir.
2013) (citation omitted). The party asserting the enablement defense must prove lack of
enablement by clear and convincing evidence. Id. at 1337. Whether the subject matter of a
patent claim satisfies the enablement requirement is a question of law. Auto. Techs. Intern., Inc.
v. BMW of North America, Inc., 501 F.3d 1274, 1281 (Fed. Cir. 2007).
Sloan contends that the basis for Zurn’s lack of enablement defense – its “undue
experimentation” argument – is directed not at the claimed invention, but rather at the
commercial embodiment. (Sloan Mem. at 45-46.) Indeed, Zurn’s Amended Final Invalidity and
Unenforceability Contentions attack the specification because it “fails to provide the degree of
tilt between the claimed first and second axes of plunger travel” (R. 447, ¶ 4), “fails to provide
any degree or range of degrees of the angle between the two axes or the relative dimensions of

44 

the bushing passage” (Id., ¶ 5), “fails to provide any instructions on the necessary quantitative
difference between the two volumes of water” (Id., ¶ 6), and “does not define the first flush
volume of water or second flush volume of water” (Id., ¶¶ 14-16). Such specific details describe
Sloan’s commercial embodiment rather than the claimed invention. Zurn’s attack on the
specification for failing to disclose the specific flush volumes, for example, misses the mark.
The Court did not limit the claims to a flush valve that achieves a specific 30% reduction in flush
volume. (R. 391, Markman Opinion at 19.) Instead, the Court found that the patent requires
only that the flush valve permit two distinct flush volume modes. (Id. at 16-25.) The invalidity
report of Zurn’s expert, Dr. Magee, also addressed Sloan’s commercial embodiment rather than
the claimed invention. Dr. Magee opined, “[w]ithout this information, one would have to resort
to undue experimentation to arrive at the Sloan Uppercut® handle…” (R. 546-10, Magee
Invalidity Report, ¶¶ 47.) The Wilson patent claims, however, are not limited to the specific
Sloan Uppercut® embodiment. (Sloan’s Stmnt. of Undisputed Facts, ¶ 60.)
Zurn responds that its actual enablement contention is that one of skill “cannot make and
use a flush valve with a horizontal and an angled axis of plunger travel by following the
teachings of the ‘635 patent.” (Zurn Resp. at 23.) This argument, however, was not disclosed in
Zurn’s Amended Final Invalidity and Unenforceability Contentions and Zurn does not provide
any citation to any place in the record where it disclosed such an enablement argument. Thus,
Zurn is precluded from raising this invalidity argument at this late date. See N.D. Ill. LPR 3.1
and 3.4; see also Fujitsu Ltd., 2012 WL 5444979 at *4, Trading Techs, 2011 WL 3946581,
Thermapure, 2012 WL 6196912, supra, pp. 21-23.
Further, Dr. Magee’s “undue experimentation” opinion fails because it is conclusory and
unsupported by fact. (Sloan Mem. at 47.) The only actual evidence Dr. Magee cites in support

45 

of his argument is “the amount of time that Mr. Wilson took to arrive at a final product (i.e.,
January 2004 – August 2005), and Mr. Ballanco’s alleged disclaimer that even with the
disclosure of the Wilson Patent, additional fine-tuning, component compatibility testing, or other
performance testing would be required to arrive at a fully functioning product.”6 (R. 546-12,
Magee Invalidity Reply Report, ¶ 45.) These statements refer to the Sloan Uppercut® and not
the claimed invention. The remaining enablement arguments proffered by Dr. Magee are
conclusory statements. (Magee Invalidity Report, ¶ 50: “it is my opinion that if one builds a
handle assembly as disclosed in the [Wilson] Patent, one would not have achieved a handle
assembly that has an angled axis of plunger travel or a horizontal axis of plunger travel because
the handle is a complex system with many forces acting on the plunger…”) Unsupported expert
opinions regarding factual determinations carry little probative weight and have a high hurdle to
clear in meeting the clear and convincing standard. Cephalon, 707 F.3d at 1338 (Fed. Cir. 2013)
(citing Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.3d 281, 294 (Fed. Cir. 1985).
Moreover, Dr. Magee testified that he is not certified as a plumbing designer, has no experience
in designing any plumbing device, and would have no basis to contest an opinion by one who has
experience designing flush valves. (Magee Dep., 7:24-8:2; 10:8-10; 89:21-90:5.) On that basis,
the Court found that Dr. Magee is not one skilled in the ordinary art. (R. 672, Magee Daubert
Opinion.) Thus, Dr. Magee is not qualified to opine about what constitutes undue
experimentation in the flush valve industry.
For these reasons, even viewing the evidence in the light most favorable to Zurn, Zurn is
not able to prove lack of enablement by clear and convincing evidence and the Court grants
Sloan’s motion for summary judgment on Zurn’s enablement defense.

6

Dr. Magee’s reference to Mr. Ballanco’s alleged disclaimer does not include a citation and the Court is unable to
determine whether Dr. Magee’s citation is accurate.

46 

V.

Zurn’s Written Description Defense
Sloan next moves for summary judgment on Zurn’s written description defense under 35

U.S.C. § 112(a). “Compliance with patent law’s written description requirement 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.” Spine Solutions, Inc. v. Medtronic Sofamor Danek USA,
Inc., 620 F.3d 1305, 1312-13 (Fed. Cir. 2010) (quoting PowerOasis, Inc. v. T-Mobile USA, Inc.,
522 F.3d 1299, 1307 (Fed. Cir. 2008)). The Federal Circuit has explained that the written
description provision of section 112 “requires that the specification objectively demonstrate that
the applicant actually invented – was in possession of – the claimed subject matter.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010); see also Synthes USA,
LLC v. Spinal Kinetics, Inc., 2013 WL 5788675 at *4 (Fed. Cir. Oct. 29, 2013). “Assessing
possession as shown in the disclosure requires an objective inquiry into the four corners of the
specification. Ultimately, the specification must disclose an invention understandable to [a]
skilled artisan and show that the inventor actually invented the invention claimed.” Novozymes
A/S v. Dupont Nutrition Biosciences APS, 723 F.3d 1336, 1344 (Fed. Cir. 2013) (citations and
quotations omitted).
As an initial matter, Sloan correctly notes that Zurn’s response raises a defense that it
failed to disclose in its Amended Final Invalidity and Unenforceability Contentions – that the
Wilson patent specification allegedly does not provide an adequate written description of how to
achieve a horizontal axis of plunger travel and an angled axis of plunger travel. (Sloan Reply at
26.) Sloan argues that the Court should therefore preclude Zurn from raising it at this stage.
Zurn’s only written description invalidity contentions state:
7.
Claims 12, 14, 19, 28, 29, and 30 are invalid under 35 U.S.C. §112, first
paragraph, because the specification does not enable one of ordinary skill to make
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or use, and does not provide a written description of the invention as recited. The
claims recite a “system” for operating a water flush valve. However, the
specification does not enable one of ordinary skill in the art to make and use the
claimed system without undue experimentation because the description fails to
provide any details on the nature or description of the bowls to be used in the
system.
9.
Claims 12 and 14 are invalid under 35 U.S.C. § 112, first paragraph,
because the specification fails to establish that the inventors had possession of
system (sic) that would flush a “first volume of water” and a “second volume of
water.” The specification fails to provide any volumes of water, and therefore, it
fails to establish that the inventors had possession of a system that could flush a
first volume of water and a second volume of water.
(Zurn Am. Final Invalidity and Unenforceability Contentions, ¶¶ 7, 9.) Zurn did, however, assert
this argument in Dr. Magee’s corresponding Invalidity Report, where he opined, “the [Wilson]
specification does not provide an adequate written description of how to achieve a horizontal
axis of plunger travel and an angled axis of plunger travel, and fails to comply with the 35 U.S.C.
§ 112, first paragraph, written description requirement.” (Magee Invalidity Report, ¶ 51.)
Further, Sloan was clearly on notice of Zurn’s argument because Sloan addressed the merits of
Dr. Magee’s written description invalidity opinion in its memorandum in support of its motion
for summary judgment. (Sloan Mem. at 49.) Therefore, the Court will not preclude Zurn from
raising this defense.
Ultimately, Zurn’s written description defense rests on its argument that the specification
could not have adequately described the invention because the plunger in Sloan’s product does
not travel along a horizontal axis of plunger travel and an angled axis of plunger travel. The
Court has already decided that there remains a genuine dispute regarding this material fact,
therefore, Sloan is not entitled to summary judgment on Zurn’s written description defense.
VI.

Sloan’s Willful Infringement Claims
Zurn seeks summary judgment on Sloan’s willful infringement claim on four grounds: (1)

Sloan declined to seek a temporary injunction at any point; (2) Sloan’s bases for willful
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infringement are unpersuasive; (3) Zurn’s defenses to infringement are reasonable; and (4) Zurn
successfully sought reexamination of the Wilson Patent. (Zurn Mem. at 30-36.) The Court
addresses each argument in turn.
In order to make the requisite showing for willful infringement, the patentee must show
by clear and convincing evidence that the accused infringer “acted despite an objectively high
likelihood that its actions constituted infringement of a valid patent.” Bard Peripheral Vascular,
Inv. v. W.L. Gore & Assoc., Inc., 682 F.3d 1003, 1005 (Fed. Cir. 2012) (citing In re Seagate
Tech., 497 F.3d 1360, 1371 (Fed. Cir. 2007)). “The state of mind of the accused infringer is not
relevant to this objective inquiry.” Seagate, 497 F.3d at 1371. If the patentee satisfies this
objective standard, it then “must also demonstrate that this objectively-defined risk (determined
by the record developed in the infringement proceeding) was either known or so obvious that it
should have been known to the accused infringer.” Id. The objective prong tends not to be met
where an accused infringer relies on a reasonable defense to a charge of infringement. Advanced
Fiber Techs. Trust v. J & L Fiber Svcs., Inc., 674 F.3d 1365, 1377 (Fed. Cir. 2012). The
threshold objective prong of Seagate is a question of law based on underlying mixed questions of
law and fact. Bard Peripheral Vascular, Inc. v. W.L. Gore & Assoc., Inc., 682 F.3d 1003, 1005
(Fed. Cir. 2012).
A.

Preliminary Injunction

The Wilson patent issued on October 27, 2009. (Sloan’s Stmnt. of Undisputed Facts, ¶
3.) Sloan filed this suit on January 13, 2010. (R. 1, Compl.) Sloan bases its willfulness claim,
in part, on Zurn’s alleged intentional copying of Sloan’s patented product, and its continuing
infringement from October 27, 2009 through the date of the filing of this suit. (Sloan Resp. at
30.) Zurn argues that Seagate precludes a patentee from succeeding on a willfulness claim

49 

where the patentee does not seek a preliminary injunction. (Zurn Mem. at 31.) Zurn’s quoted
passage from Seagate, however, refers to a patentee’s failure to seek a preliminary injunction
based solely on the accused infringer’s post-filing conduct. 497 F.3d at 1374. See also Krippelz
v. Ford Motor Co., 675 F. Supp. 2d 881, 898 (N.D. Ill. 2009), rev’d on other grounds, 667 F.3d
1261 (Fed. Cir. 2012) (finding that Seagate does not impose obstacle to discovery based on the
failure to seek preliminary injunctive relief where the defendant’s alleged willful conduct began
before the start of litigation). Zurn ignores that Sloan’s willful infringement claim is based in
part on Zurn’s alleged intentional copying of Sloan’s product and its continuing infringement in
October through December of 2009 and early January 2010 before Sloan commenced this
litigation. As a result, Sloan’s failure to seek preliminary injunctive relief does not preclude
relief on its claim of willful infringement.
B.

Sloan’s Bases for Willful Infringement

Zurn argues that Sloan bases its willful infringement claim solely on the expert testimony
of Michael Thuma, Dr. Edward Caulfield, and Harry Gwinnell. (Zurn Mem. at 32.) Sloan
disclosed Mr. Thuma as one of its technical experts and asked him to opine on “the complexity
of fabricating Zurn’s fixture with respect to level of skill and amount of time.” Sloan disclosed
Dr. Caulfield as a technical expert to challenge the adequacy of Zurn’s “life cycle testing
procedures,” which formed the basis of Zurn’s opinion of counsel. Sloan disclosed Mr.
Gwinnell to provide opinion testimony that Zurn was reckless in continuing to sell its accused
products after the USPTO rejected the invalidity arguments on which its counsel had relied and
in relying on the opinion of counsel to the extent it was based on unreliable data. Zurn moved to
exclude the testimony of each of these witnesses pursuant to Fed. R. Evid. 702 and Daubert. (R.

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519, R. 522, R. 524.) Zurn argues that because the Court should exclude the witnesses under
Daubert and Federal Rule of Evidence 702, Sloan cannot establish willful infringement.7
As the Court explained in its rulings on Zurn’s Daubert challenges, Mr. Thuma and Dr.
Caulfield may offer their opinions at trial, but Mr. Gwinell may not. (R. 640, R. 645, R. 661.)
Mr. Thuma may provide his opinion 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. As the
Court previously explained, this opinion is 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).
Viewing the evidence in the light most favorable to Sloan, an issue of fact exists as to
whether Zurn intentionally copied Sloan’s product. Specifically, Zurn learned of Sloan’s manual
dual mode flush valve in May 2005 and expressed concern about coming “up with something.”
(R. 619-34, Funari Dep. 107:12-21; R. 611-12, ZP002752.) On June 24, 2005, Zurn’s engineer,
Michael Funari, purportedly completed the design of a Zurn dual flush valve and stated, “we
designed a dual flush handle today during lunch hour . . . this shouldn’t be a problem for us.” (R.

7

Zurn also states, “even if Sloan’s experts were not excluded, as Sloan cannot meet the objective prong of Seagate,
its claim for willfulness must fail as a matter of law.” (R. 574 at 33.) Zurn provides no further support or
development for this conclusory statement. Therefore, Zurn has waived this argument. ADT Sec. Servs., Inc. v.
Lisle-Woodwridge Fire Protection Dist., 724 F.3d 854 (7th Cir. 2013) (undeveloped arguments are waived).

51 

611-13, ZP002731.) In a July 13, 2005 email, Mr. Funari stated, “we can even dupbetter [sic].”
(R. 611-14, ZP00673.) On July 21, 2005, Mr. Funari wrote in an email “we have some tools on
order that should allow us to complete our design . . . we would need a week to tweak some
dimensions, water test and finalize drawings . . . two weeks sounds reasonable.” (R. 611-15,
ZP002789.) On August 4, 2005, Zurn announced that it had a commercially available dual flush
valve product. (R. 611-16, SVC0007488.) Internal Zurn correspondence, however, indicates
that its product was not ready for commercial use at that time. (R. 611-17, ZP003410.) One
week after Zurn announced that it had a commercially available dual flush valve product, a Zurn
employee asked, “can we get a Sloan unit? Would like to see what they are up to?” (Id.) On
August 19, 2005, Zurn arranged to obtain six copies of Sloan’s dual flush valve. (R. 611-18,
ZP002824.) Zurn tested the flush volume of its dual flush product in September and October
2005, and Mr. Funari admitted the results of this testing were erratic. (R. 619-5, ZP004004;
Funari Dep. 143:9-18.) According to Sloan, Zurn obtained Sloan’s dual flush handles on
November 11, 2005. (R. 591, Sloan Thuma Daubert Resp. at 5.) An internal Zurn email
indicates that its product was still not ready on November 30, 2005. (R. 611-19; ZP003030
(“When is our Sucker Punch going to be ready . . . the competition will never see it coming.”)
By that same date, Zurn had obtained and tested the Sloan dual mode flush handles. (Funari
Dep. 172:18-173:4; R. 619-6, ZP004092-95.) On December 12, 2005, Zurn created drawings for
its own dual flush handle. (R. 619-7, ZP003154.) Zurn released its dual flush valve product at
the end of December 2005. (Sloan Stmnt. of Undisputed Facts, ¶ 12.)
Furthermore, in June 2005, Zurn represented that the only issue that prevented it from
completing its design was “tooling.” Viewing this evidence in the light most favorable to Sloan,
on November 14, 2005, Zurn told its counsel that it was still waiting for tooling. Based on

52 

certain email correspondence, the only tooling Zurn had to develop was the fixture which it 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.
C.

Zurn’s Non-Infringement and Invalidity Defenses

Zurn argues that its non-infringement positions are objectively reasonable and weigh in
favor of granting summary judgment for Zurn on Sloan’s willful infringement claim. (Zurn
Mem. at 33.) In support, Zurn contends that its proposed claim constructions, which it argues are
central to its reasonable non-infringement positions, are objectively reasonable because the Court
adopted part of them. (Id. at 33-34.) Zurn also argues that its invalidity defenses and
unenforceability positions are also credible. (Id. at 34-36.)
As an initial matter, Zurn cites no case law supporting its conclusory argument that its
non-infringement positions are objectively reasonable because the Court adopted some of its
claim construction positions. “Perfunctory and undeveloped arguments, and arguments that are
unsupported by pertinent authority, are waived.” United States v. Hook, 471 F.3d 766, 775 (7th
Cir. 2006). Further, claim construction defines the scope of the invention. See Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (“It is a ‘bedrock principle’ of patent law
that ‘the claims of a patent define the invention to which the patentee is entitled the right to
exclude.’”) (citation omitted). A literal infringement analysis is a two-step process: determining
the proper claim construction and applying that construction to the accused product. ActiveVideo
Networks, Inc. 694 F.3d at 1319. Zurn’s argument ignores the second step of that process. Its
argument, therefore, fails.
When the objective prong of the willful infringement analysis turns on fact questions or
on legal questions dependent on the underlying facts, the Court decides whether the defense was

53 

reasonable. Bard v. Peripheral Vascular, Inc. v. W.L. Gore & Associates, 682 F.3d 1003, 1007
(Fed. Cir. 2012). The Court does so “even when the underlying fact question is sent to a jury.”
Id. Here, Sloan’s infringement claims survive summary judgment and will be tried before a jury.
It is more appropriate to decide the objective reasonableness of Zurn’s non-infringement
defenses with the benefit of the jury’s factual findings on infringement. See Fujitsu Ltd. v.
Belkin Int’l, Inc., 2012 WL 4497966 at *39 (N.D. Cal. 2012) (stating “in light of Bard
Peripheral…it would be more appropriate to decide the legal issue of willfulness with the benefit
of the jury’s factual findings”); WesternGeco L.L.C. v. ION Geophysical Corp., 876 F. Supp. 2d
857, 906 (S.D. Tex. 2012) (“[i]t is up to a jury to determine whether the Defendants’ invalidity
arguments … are credible, and whether they demonstrate that Defendants did not act despite an
objectively high likelihood that their actions constituted infringement of a valid patent”).
Further, the Court is granting summary judgment to Sloan on Zurn’s invalidity defenses of
anticipation, obviousness, best mode, and enablement. Zurn’s remaining invalidity defenses will
go to a jury. As with infringement, the Court will rule on the objective reasonableness of Zurn’s
remaining invalidity defenses with the benefit of the jury’s factual findings.
D.

The USPTO’s Decision to Grant Zurn’s Request for Reexamination

In further support of its summary judgment motion on willful infringement, Zurn
contends that the USPTO’s decision to grant Zurn’s ex parte request for reexamination of the
Wilson patent favors a grant of summary judgment of no willful infringement. Zurn argues that
its request was based on a reasonable theory – that the prior art (the Billeter patent) teaches
handles with a larger diameter than the diameter of the plunger, thereby allowing for two
different axes of plunger travel. (Zurn Mem. at 36.) In an initial office action, the USPTO
rejected claims 1, 5, 7, 8, 12, 14, 19, and 31. (Zurn’s Statement of Undisputed Facts, ¶ 80.)

54 

During the reexamination, Sloan amended claims 1, 12, and 18, and these claims were
confirmed. (Id. at 81.) Zurn argues that these amendments were made to overcome the prior art
and, thus, warrant summary judgment of no willful infringement. (Zurn Mem. at 37.)
In Hoechst Celanese Corp. v. BP Chemicals Ltd., 78 F.3d 1575, 1584 (Fed. Cir. 1996),
the Federal Circuit rejected Zurn’s argument. It specifically held that “the grant of a request for
reexamination … does not establish a likelihood of patent invalidity.” Id.; see also Acoustical
Design, Inc. v. Control Electronics Co. Inc., 932 F.2d 939, 942 (Fed. Cir. 1991). Zurn’s reliance
on Seagate as overruling Hoechst fails. As the court in Krippelz v. Ford Motor Co., 675 F. Supp.
2d 881, 895 (N.D. Ill. 2009) (reversed on other grounds) noted, the “Federal Circuit’s Seagate
decision did not disturb this holding of Hoechst Celanese.” Zurn also cited no cases indicating
that Seagate overruled Hoechst on this issue. Further, since the Seagate decision, courts have
consistently followed Hoechst for the proposition that the grant of a request for reexamination is
not probative of unpatentability. See Dataquill, Ltd. v. High Tech. Computer Corp., 887 F. Supp.
2d 999, 1017 (S.D. Cal. 2011); Tesco Corp. v. Weatherford Int’l., Inc., 750 F. Supp. 2d 780, 794
(S.D. Tex. 2010); Power Integrations Inc. v. Fairchild Semiconductor Int’l, 762 F. Supp. 2d 710,
718 (D. Del. 2009) (finding defendant’s arguments about the PTO proceedings “unavailing” and
stating “[e]vidence relating to reexaminations is not necessarily ‘essential’ or ‘basic’ to the
willfulness issue”).
Even if Seagate had impacted the decision in Hoechst, Zurn concedes that the USPTO’s
grant of a reexamination request is only a “factor” to consider in determining whether an accused
infringer acted in an objectively reckless manner. (Zurn Mem. at 36.) Given that the asserted
Wilson Patent claims survived the reexamination proceedings, this factor does not weigh

55 

exclusively in Zurn’s favor and cannot be dispositive as to whether Zurn acted in an objectively
reckless manner.
For the reasons identified above, the Court finds that a reasonable jury could find for
Sloan on its willful infringement claim and denies Zurn’s motion for summary judgment on
willful infringement.
CONCLUSION
For the foregoing reasons, the Court grants Sloan’s motion for summary judgment on
Zurn’s anticipation and obviousness defenses under §§ 102 and 103; Zurn’s best mode defense;
and Zurn’s enablement defense. The Court denies Sloan’s motion for summary judgment on
direct infringement and written description. The Court also denies Zurn’s motion for summary
judgment in its entirety.

DATED: November 20, 2013

ENTERED

___________________________________
AMY J. ST. EVE
U.S. District Court Judge

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