Petter Investments, Inc. v. Hydro Engineering Inc. et al
Filing
91
OPINION REGARDING PARTIES' MOTIONS FOR SUMMARY JUDGMENT; signed by Judge Gordon J. Quist (Judge Gordon J. Quist, jmt)
UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
__________________________
PETTER INVESTMENTS, INC.
Plaintiff,
v.
Case No. 1:11-CV-207
HYDRO ENGINEERING, INC., and
HYDRO ENGINEERING
EQUIPMENT & SUPPLY CO.
HON. GORDON J. QUIST
Defendants.
______________________________/
OPINION REGARDING PARTIES’ MOTIONS
FOR SUMMARY JUDGMENT
Defendants/Counterclaim Plaintiffs (“Hydro”) move for summary judgment against
Plaintiff/Counterclaim Defendant (“Petter”), requesting that the Court hold that: (a) Petter’s
redesigned wash pads continue to employ an impervious top as recited in the claims of Hydro’s U.S.
Patent No. 6,779,591 (the “‘591" Patent); and (b) that Petter’s wash pad installation for the Borough
of Manasquan, New Jersey (the “Manasquan installation”) infringes the claims of the ‘591 Patent.
Petter also moves for summary judgment, requesting summary judgment on the meaning of
“impervious top” and of noninfringement of the ‘591 Patent, as well as Hydro’s U.S. Patent Nos.
7,258,749, 7,540,295 and 7,530,362 (respectively, the “‘749", “‘295", and “‘362" Patents).
For the reasons set forth below, the Court will grant Hydro’s motion and deny Petter’s
motion.
I. BACKGROUND
A.
Litigation History
The instant case is a continuation of a prior patent infringement case between the parties
before this Court, Case No. 1:07-CV-1033 (the “2007 Case”). In the 2007 Case the Court granted
Hydro’s motion for summary judgment of infringement, holding that Petter’s “water channel” wash
pads infringed certain claims of the ‘591 and ‘749 Patents. Following that ruling, the parties settled
the case and agreed to the entry of a Permanent Injunction. At some point before or after the 2007
Case was dismissed, Petter redesigned its wash pads into what Petter now refers to as a “pervious”
wash pad. On January 31, 2011, after learning of Petter’s new design, Hydro filed a motion to hold
Petter in contempt in the 2007 Case, alleging that Petter’s new design continued to infringe and
violated the Permanent Injunction.1 The Court held a hearing on the motion, and on July 18, 2011,
entered an Opinion and separate Order denying Hydro’s motion. In denying the motion, the Court
concluded that Petter’s redesigned wash pads were more than colorably different from the adjudged
infringing wash pads, such that infringement should be determined in a separate action. The Court
also concluded, however, that Petter’s redesigned wash pads do not infringe Hydro’s patents because
they do not meet the impervious top limitation. The Court subsequently granted Hydro’s motion
for reconsideration and vacated that portion of its July 18, 2011, Opinion finding that Petter’s
redesigned wash pads do not infringe Hydro’s patents.
Petter filed the instant lawsuit on March 2, 2011, in response to Hydro’s contempt motion
in the 2007 Case, alleging claims for declarations that its “pervious” wash pads do not infringe the
‘591, ‘749, ‘295, and ‘362 Patents.2 Hydro responded by filing counterclaims for infringement of
the ‘591 and ‘749 Patents.
1
The January 31, 2011, motion for contempt was Hydro’s second motion for contempt. Hydro filed its first
motion for contempt on June 24, 2010. (2007 Case, Dkt. no. 348.) That motion was referred to Magistrate Judge
Brenneman, who held a hearing and issued an Order of Proceedings, which directed Petter to take certain actions and
indicated that Hydro would be entitled to some costs and fees in bringing the motion. (2007 Case, Dkt. no. 366.)
However, Magistrate Judge Brenneman made no finding of contempt in that order.
2
In an Opinion and Order entered on November 2, 2011 (Dkt. no. 86), the Court granted Hydro’s motions to
dismiss and for summary judgment on Petter’s claims for declarations of invalidity of the ‘591, ‘749, ‘295, and ‘362
Patents.
2
B.
Petter’s Infringing Wash Pads
Petter’s infringing wash pads at issue in the 2007 Case were of two types, both of which had
a side trough for collecting the spent wash fluid and debris. The first type of wash pad had an
impervious top with “water channels” and the second type of wash pad had an impervious top
without “water channels.” (2007 Case, Dkt. no. 329 at 5.) Regarding its water channel wash pads,
Petter explained, “the top of the wash rack is constructed of a steel diamond plated sheet having
channels that are disposed at selected regions below the diamond plated sheet.” (2007 Case, Dkt.
no. 218 at 3.) Petter’s Hutto, Texas and Tulsa, Oklahoma installations exemplified installations of
side trough wash pads with water channels. The Court concluded that Petter’s water channel wash
pads infringed claim 15 of the ‘591 Patent. In doing so, it rejected Petter’s claim that its water
channel wash pads were not impervious because a gap between the steel diamond plated sheet and
the water channels allowed some water to pass underneath the top of the wash pad. (2007 Case, Dkt.
no. 329 at 10-12.) The Court further concluded that Petter contributorily infringed the ‘749 Patent
through its sale of side trough wash pads with and without water channels. (Id. at 14-16.)
C.
Petter’s Redesigned Wash Pads
Petter redesigned its wash pads in two respects. First, while the redesigned wash pads still
incorporate water channels, or grooves, the water channels are spaced closer together and are
covered by steel diamond plating with uniformly-spaced lines of holes centered over the water
channels. (Miller Decl. Ex. 1, attached to Hydro’s Br. Supp. as ex. D.) The second aspect of the
redesign is that the trough has been moved from the side to the interior and toward the back of the
wash pad, such that it would be perpendicular to a vehicle placed on the pad for washing. (Id.)
D.
The Manasquan Installation
The Manasquan Installation appears to be Petter’s only post-Permanent Injunction
installation of its redesigned wash pad which continues to employ a side trough. In other words,
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although that installation incorporates Petter’s redesigned top with continuous steel decking and
holes over the water channels, spent wash fluid and debris continues to drain into a trough located
at the side of the wash pad, as was the case with the prior infringing Tulsa installation. (Hydro’s Br.
Supp. at 12.)
II. DISCUSSION
A.
Hydro’s Motion For Summary Judgment
In its motion for summary judgment, Hydro requests that the Court determine that Petter’s
redesigned wash pads continue to employ an impervious top and therefore meet that limitation in
claims 1 and 15 of the ‘591 Patent. Hydro further requests summary judgment of infringement with
regard to the Manasquan installation.3 Given that Petter does not dispute that the Manasquan
installation employs the same side trough as the infringing Tulsa installation, the sole issue is
whether Petter’s redesigned wash pads meet the impervious top limitation.
Determining whether a patent has been infringed involves a two-step process. First, the court
must construe the claim to determine its proper scope, and second, the court must determine whether
the properly construed claim covers the accused device. Bai v. L & L Wings, Inc., 160 F.3d 1350,
1353 (Fed. Cir. 1998). The Court has construed the term “impervious top” to mean the impervious
structure resting on the support base that can consist of a combination of elements with upper and
lower portions. In light of this construction, the Court concludes that Petter’s redesigned wash pads
meet the impervious top limitation as set forth in claim 15 of the ‘591 Patent.4 The pertinent claim
language provides:
3
Hydro’s motion, which was filed before the Court issued its order denying Hydro’s motion for contempt in
the 2007 Case, requested that the Court rule that Petter’s noninfringement claims are barred by claim preclusion.
Because the Court has concluded that the issue of infringement should be determined in a separate infringement action
rather than a contempt proceeding, the Court declines to apply claim preclusion and will consider infringement anew.
4
The Court does not conclude that claim 1 is infringed because it is not clear that the new top meets the
undulating limitation. In its infringement opinion in the 2007 Case, the Court concluded that it could not decide
infringement regarding claim 1 on summary judgment. The Court reaches the same conclusion here.
4
an impervious top comprising: (a) spaced generally transversely directed ridge
portions upon which vehicles, and other items are supported in load-transferring
relation for exterior cleaning using a cleaning liquid; and (b) impervious generally
transversely directed sloped drainage corridors disposed below the ridge portions
into which used cleaning liquid and removed debris collectively flow, each drainage
corridor being sloped toward at least one side of the pad . . . .
(‘591 Patent, col. 7, ll. 28-38.)
Petter’s redesigned top meets these limitations and is therefore an impervious top. The top
has upper portions, on which the vehicle to be washed rests, and lower portions – drainage channels
– disposed below the upper portions. In fact, Petter’s own description of its prior water channel
wash pad – “the top of the wash rack is constructed of a steel diamond plated sheet having channels
that are disposed at selected regions below the diamond plated sheet,” (2007 Case, Dkt. no. 218 at
3), also describes its redesigned top. In addition, the impervious structure, consisting of the steel
plated decking with attached water channels, sits or rests upon the support structure. Moreover,
Petter’s new top is even more impervious than the old top because the water channels are attached
to the steel decking so that they are water tight. (8/17/10 Contempt Hr’g Tr. at 77.) In fact, wash
fluid and debris still flows from the diamond plated steel sheeting into the drainage channels, just
as it did in the prior infringing design. The only difference is that the channels are exposed through
small openings rather than a gap between the diamond plating surface. This difference is immaterial
because Petter’s new top is still impervious. Accordingly, Petter’s new wash pads meet the
impervious top limitation, and Petter’s Manasquan installation infringes claim 15 of the ‘591 Patent.
B.
Petter’s Motion For Summary Judgment
Petter moves for summary judgment of non-infringement based on the meaning of
impervious top. Petter filed its motion after the Court issued its ruling on the contempt motion in
the 2007 Case but before the Court reconsidered its noninfringement conclusion in the contempt
ruling. Petter’s motion is based entirely upon the Court’s prior construction of impervious top.
5
Because the Court has withdrawn its prior construction, Petter no longer has a viable basis for its
motion.
III. CONCLUSION
For the foregoing reasons, the Court will grant Hydro’s motion for summary judgment re:
impervious top and deny Petter’s motion for summary judgment on the meaning of impervious top
and of noninfringement.
An Order consistent with this Opinion will be entered.
Dated: November 16, 2011
/s/ Gordon J. Quist
GORDON J. QUIST
UNITED STATES DISTRICT JUDGE
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