Advanced Fiber Technologies (AFT) Trust v. J & L Fiber Services, Inc.

Filing 252

MEMORANDUM-DECISION and ORDERED, that Plaintiff AFTs Motion (Dkt. No. 208) for summary judgment of infringement and validity is GRANTED in part and DENIED in part consistent with this Memorandum-Decision and Order; and it is furtherORDERED, that Plai ntiff AFTs Motion (Dkt. No. 208) is GRANTED to the extent it seeks summary judgment on: (1) Defendants Reverse Doctrine of Equivalents defense; (2) validity on Defendants anticipation/obviousness arguments based on Gillespie; and (3) Defendants § ; 112(b) argument; and DENIED in all other respects; and it is further ORDERED, that Defendant J&Ls Motion (Dkt. No. 214) for summary judgment is DENIED; and it is further ORDERED, that Defendant J&Ls Motion (Dkt. No. 210) to exclude the lost profits opinion of Andrew W. Carter is DENIED; and it is further ORDERED, that Defendant J&Ls Motion (Dkt. No. 213) to strike AFTs new infringement contention is DENIED; and it is further ORDERED, that Defendant J&Ls Cross-Motion (Dkt. No. 231) for leave to file an amended answer is GRANTED. Signed by Senior Judge Lawrence E. Kahn on March 31, 2015. (sas)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
ADVANCED FIBER TECHNOLOGIES
(AFT) TRUST,
Plaintiff,
-against-

1:07-cv-1191 (LEK/DEP)

J&L FIBER SERVICES, INC.,
Defendant.

MEMORANDUM-DECISION and ORDER
I.

INTRODUCTION
This action, concerning the alleged infringement of U.S. Patent No. RE 39,940 (the “‘940

patent”), returns before the Court. Plaintiff Advanced Fiber Technologies (“Plaintiff” or “AFT”),
the owner of the ‘940 patent, asserts that the V-Max screen cylinder (“V-Max”) made by Defendant
J & L Fiber Services, Inc. (“Defendant” or “J&L”) infringes upon multiple claims of the ‘940
Patent. Dkt. No. 1 (“Complaint”). Presently before the Court are Cross Motions for summary
judgment. Dkt Nos. 208 (“Plaintiff Motion”); 214 (“Defendant Motion”). Also before the Court
are Defendant’s Motion in limine to exclude the lost profits opinion of Mr. Andrew W. Carter
(“Carter”), Defendant’s Motion to strike AFT’s new infringement contention, and Defendant’s
Cross-Motion to amend its answer. Dkt. Nos. 210 (“Motion to Exclude”); 213 (“Motion to Strike”);
231 (“Motion to Amend”).
II.

BACKGROUND
The facts stated herein are those relevant to the motions presently before the Court. For a

more complete background on this case, reference is made to Advanced Fiber Techs. (AFT) Trust v.

J & L Fiber Servs., Inc., 674 F.3d 1365, 1367-72 (Fed. Cir. 2012) (“AFT II”) and Advanced Fiber
Techs. (AFT) Trust v. J & L Fiber Servs.. Inc., 751 F. Supp. 2d 348, 353-54 (N.D.N.Y. 2010)
(Kahn, J.) (“AFT I”).
The ‘940 Patent,1 “relates to screen plates, e.g., screen cylinders and flat screen plates, for
use, for example, in the pulp and paper industry for screening pulps and to methods for their
manufacture.” Dkt. No. 208-9 (“‘940 Patent”). As described in the ‘940 Patent, screening is a
process “[i]n the formation of paper products from pulp,” whereby “impurities, such as sticks,
shives and other undesirable pulp constituents, are removed” from the pulp. Id., Col. 1, Lns. 16-18.
The ‘940 Patent “provides a screen formed of two separate layers. The first layer comprises a
screening plate having narrow slots or small apertures and the second layer comprises a backing
plate affording the screening plate the necessary structural strength for pressure screening in the
pulp and paper environment.” Id., Col. 2, Lns. 22-27.
Plaintiff commenced this action under 35 U.S.C. § 271 on November 9, 2007. Compl. On
February 22, 2008, Defendant answered, denying any infringement and asserting that the ‘940
Patent is invalid. Dkt. No. 12 (“Answer”) ¶¶ 23-25. At issue were the three independent claims of
the ‘940 Patent—claims 1, 10, and 18—and various dependent claims. See AFT II, 674 F.3d at
1368. Claim 1 claims a screen cylinder comprising a screening medium and a structural backing
plate, both of which have openings.2 ‘940 Pat., Col. 13, Lns. 24-30. Claim 10 claims “[a] screen

1

The ‘940 Patent is a reissue of U.S. Patent 5,200,072 (the “‘072 Patent”). See ‘940 Pat.;
Compl., Ex. A (the “‘072 Patent”). The ‘072 Patent was issued on April 6, 1993, based upon an
application filed August 16, 1990. ‘072 Pat. The ‘940 Patent was issued on December 18, 2007,
based upon an application filed September 12, 2003. ‘940 Pat.
2

Claim 1 of the ‘940 Patent reads:
2

plate for screening pulp” comprising a screening medium with slots and a structural backing plate
with openings. Id., Col. 14, Lns. 13-20. Claim 18 claims “a method of manufacturing a screen for
use in screening for pulp.” Id., Col. 15, Lns. 13-14.
In addressing the parties’ motions for summary judgment in AFT I, the Court construed all
then-disputed terms of the ‘940 Patent. AFT I, 751 F. Supp. 2d at 354. The Court construed the
following claim terms:
Screen Plate: “[A]n assembly comprising a ‘screening medium,’ also referred to
as a ‘screening plate’ and a backing plate.” Not synonymous with “screening
plate,” which is synonymous with “screening medium.” Id. at 356-58.

A screen cylinder comprising:
a generally cylindrical screening medium having a plurality of openings
therethrough; a generally cylindrical structural backing plate for structurally
supporting said screening medium and having a plurality of openings
therethrough; [and]
said screening medium and said structural backing plate lying concentrically one
within the other and having respective opposed surfaces in engagement with one
another at an interface therebetween whereby said backing plate structurally
supports said screening medium;
one of said screening medium and said backing plate having a plurality of
circumferentially extending recesses formed in its opposing surface and opening
at the opposing surface of the other of said screening medium and said backing
plate at the interface thereof establishing communication between the respective
openings of said screening medium and said backing plate; and
a plurality of axially spaced projections spaced one from the other in the axial
direction defining said recesses and projecting radially from one of said screening
medium and said backing plate at said interface;
the openings in said screening medium being elongated and extending in a
generally axial direction substantially normal to the circumferential extent of said
recesses.
‘940 Patent, Col. 13, Lns. 24-52.
3

Screening Medium: “A ‘screening medium’ is a perforated barrier through
which stock is passed to remove oversized, troublesome, and unwanted particles
from good fiber.” Synonymous with “screening plate,” which is distinct from
“screen plate. Id. at 357-61.
Backing Plate: “[A] structural support for the screening medium that includes
a metal plate.” Id. at 361-63.
Slots and Openings: “[O]penings or slots with widths less than 0.254 mm.” Id.
at 363-65.
Engagement With: “[T]o interlock or mesh with.” Id. at 365.
Means for Releasably Connecting: “A structure directly connected to the
[screening medium and backing plate] that must be broken or removed to permit
separation of the two parts, whereby welds, rivet screws, adhesives, solder and
equivalents are the only ‘means for releasably connecting.’” Id. at 365-71.
Shrink Fit: “A tight interference fit between mating inner and outer parts made
by heating the outer member to expand it or cooling the inner part to contract it
so that the outer part can fit into the inner part.” Id. at 368-71. Not a “means for
releasably connecting.”
Rivet: “[A] short rod having a head formed on one end and an opposite end
formed into a second head to produce a permanent joining of two or more parts.”
Id. at 370.
Adhesive: “[A] substance used to bond two or more solids so that they act or can
be used as a single piece.” Id. at 370-71.

The Court also construed “perforated,” which appeared in its construction of “screening medium,”
to mean, “pierced or punctured with holes.” Id. at 363.
Based on these constructions, the Court granted in part and denied in part Defendant’s
Motion for summary judgment and denied Plaintiff’s Motion for summary judgment. Id. at 381.
Both parties then moved for reconsideration of the Court’s decision. Id. at 382. Upon
reconsideration, the Court determined that, as construed, the term “screening medium” did not

4

encompass the “wedgewire” construction employed in the V-Max, because wedgewire is not
“perforated.” Id. at 386. The Court accordingly granted summary judgment of non-infringement to
Defendant on all remaining claims. Id. at 386-87. Plaintiff appealed. AFT II, 674 F.3d at 1367.
On appeal, the Federal Circuit reversed the Court’s grant of summary judgment on the
ground that the Court erred in interpreting “perforated” as “pierced or punctured with holes.” Id. at
1373-76. Rather, the Federal Circuit held that “‘perforated’ . . . simply means having holes or
openings,” in light of the ‘940 Patent’s brief disclosure of a wedgewire construction. Id. at 1375.
The Federal Circuit affirmed the Court’s other appealed constructions and declined to address the
Court’s denial of summary judgment as to validity. Id. at 1376-77.
On remand, both parties renewed their Motions for summary judgement. Dkt. Nos. 150;
161. In a Memorandum-Decision and Order dated September 30, 2013, the Court considered the
parties’ renewed Motions only insofar as the Mandate of the Federal Circuit compelled a different
result from that reached in AFT I. Advanced Fiber Techs. (AFT) Trust v. J & L Fiber Servs., Inc.,
No. 07-CV-1191, 2013 WL 5462684, at *5 (N.D.N.Y. Sept. 30, 2013) (Kahn, J.) (“AFT III”). Thus,
the Court did not address the parties’ arguments on validity because the Court’s prior analysis did
not turn on its erroneous construction of “perforated.” Id. The Court also granted summary
judgment for Defendant on Claim 18 and its dependent claims, and on any V-Max units that have
wedgewire screening medium whose slots or openings are at least 0.254mm wide. Id. at *5-6. The
Court denied summary judgment on all further grounds because the parties had not had opportunity
to adequately direct their positions to the Court’s claim construction. Id. at *6. Following the

5

framework offered by the Local Patent Rules,3 the Court therefore held that its MDO would
constitute its decision on claim construction, and reopened discovery for the parties to supplement
expert reports and conduct discovery as otherwise necessitated by the Court’s claim construction.
Id. The Court ruled that the parties could not offer “new theories that would require construction of
a term not already construed.” Id.
Presently, Plaintiff seeks summary judgment of infringement and validity on claims 1, 4, 6,
8, 10-14, 16, 17, 27, 29, and 34 of the ‘940 Patent. Dkt. No. 208-1 (“Plaintiff Memorandum”).
Defendant moves for summary judgment of non-infringement as to claims 1, 2, 4, 6, 8, 10-17, 24,
27, 29, 31, 32, 34, 36, and 37-39, and summary judgment of invalidity under 35 U.S.C. § 112(a) on
claims 1 and 10, and all depending claims. Dkt. No. 214-1 (“Defendant Memorandum”).
Defendant also moves to strike as untimely Plaintiff’s infringement contention that the V-Max’s UClip (“U-clip” or “PosiLock”) joint satisfies the “in engagement with” limitation of claims 1 and 10;
Defendant argues that if the Court grants the Motion to strike, then summary judgment of noninfringement as to claims 1, 2, 4, 6, 8, 10-17, 27, 29, 31-32, 34, and 37-39 would be appropriate.
Dkt. No. 213-1 (“Motion to Strike Memorandum”); Def. Mem. at 10. Finally, Defendant moves to
exclude the Carter Opinion. Mot. Exclude. Defendant additionally argues that it is entitled to
summary judgment on Plaintiff’s claim for lost profits for the reasons set forth in the Motion to
exclude, whether or not the Court grants the Motion. Def. Mem. at 29-31.
III.

LEGAL STANDARD
Federal Rule of Civil Procedure 56(a) instructs a court to grant summary judgment if “there

3

The Local Patent Rules only became effective on January 1, 2012, after this action was
commenced.
6

is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of
law.” FED. R. CIV. P. 56(a). Although “[f]actual disputes that are irrelevant or unnecessary” will
not preclude summary judgment, “summary judgment will not lie if . . . the evidence is such that a
reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248 (1986); see also Taggart v. Time, Inc., 924 F.2d 43, 46 (2d Cir. 1991).
The party seeking summary judgment bears the burden of informing the court of the basis
for the motion and of identifying those portions of the record that the moving party claims will
demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317,
323 (1986). If the moving party shows that there is no genuine dispute as to any material fact, the
burden shifts to the nonmoving party to demonstrate “the existence of an element essential to that
party’s case, and on which that party will bear the burden of proof at trial.” Id. This requires the
nonmoving party to do “more than simply show that there is some metaphysical doubt as to the
material facts.” Matsushita Elec. Indus. Co. v. Zenith Corp., 475 U.S. 574, 586 (1986).
At the same time, a court must resolve all ambiguities and draw all reasonable inferences in
favor of the nonmoving party. Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150
(2000); Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 164 F.3d 736, 742 (2d Cir. 1998). A
court’s duty in ruling on a motion for summary judgment is “carefully limited” to finding genuine
disputes of fact, “not to deciding them.” Gallo v. Prudential Residential Servs., 22 F.3d 1219, 1224
(2d Cir. 1994).
IV.

INFRINGEMENT
Once a court has construed the meaning of a patent’s claims, the second part of a patent

infringement action is to compare “the properly construed claims to the accused device” to
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determine infringement. Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega
Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003) (citing Cybor Corp. v. FAS Techs., Inc., 138 F.3d
1448, 1454 (Fed. Cir. 1998) (en banc)). A device infringes a patent where “every limitation recited
in a properly construed claim either is or is not found in the accused device either literally or under
the doctrine of equivalents.” PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359,
1364 (Fed. Cir. 2005). Infringement is a question of fact, Ferguson, 350 F.3d at 1338, and summary
judgment is only appropriate where there is no genuine issue of material fact regarding the accused
device, Laitram Corp. v. Morehouse Indus., Inc., 143 F.3d 1456, 1461 (Fed. Cir. 1998).
The parties’ Motions raise four issues regarding infringement of the ‘940 Patent by the VMax. First, Defendant alleges that Plaintiff has untimely changed its theory of how the V-Max
infringes the “in engagement with” limitation, and accordingly moves to strike that contention.
Mot. Strike. Second, the parties dispute whether the V-Max contains an “adhesive,” as construed by
the Court, and therefore whether the V-Max infringes claims 4 and 34. Pl. Mem. at 9-10; Def. Me.
at 7-8. Third, Defendant argues that non-infringement is appropriate under the Reverse Doctrine of
Equivalents. Def. Mem. at 11-19. Finally, Defendant requests that the Court clarify its prior grant
of summary judgment of non-infringement on any “V-Max units whose wedgewire screening media
employ slots or openings at least 0.254 mm wide.” Def. Mem. at 31-33.
A. Motion to Strike
Defendant moves to strike Plaintiff’s infringement contention that the V-Max’s U-Clip joint
satisfies the “engagement” limitation of claims 1 and 10 as untimely.4 Mot. Strike; Def. Mem. at
4

Plaintiff argues that Defendant’s Motion to Strike is moot in light of Defendant’s
stipulation of literal infringement of claims 1 and 10 and all depending claims. Dkt. Nos. 228
(“Motion to Strike Response) at 6. Plaintiff further argues that Defendant stipulated to waive its
8

10. Defendant argues that Plaintiff’s purported change in position violates the Court’s rder in AFT
III, limiting supplementation of expert reports and discovery responses to those “necessitated” by
the Court’s claim construction. Mot. Strike at 4. Defendant further argues that this change of
position violates Plaintiff’s obligations under Rule 26 and Rule 37 of the Federal Rules of Civil
Procedure to timely and diligently update expert reports and discovery responses.5 Id. at 5.
The Court first considers Defendant’s allegations concerning Plaintiff’s shift in position.
Defendant alleges that Plaintiff’s preliminary infringement contention on the “engagement”
limitation did not rely on the U-Clip. Id. at 2. Defendant cites Plaintiff’s claim charts in the April
2009 report of its expert Gary M. Scott (“Scott”) and May 2009 report of its expert Robert Gooding
(“Gooding”). See Dkt. Nos. 213-5, Ex. C at 2; 213-6. The claim charts demonstrate the
“engagement” limitation at a location “where the screening medium and backing plate are in contact
with each other, but not a location where there is a U-Clip joint.” Mot. Strike at 2. Defendant
alleges that Plaintiff first changed its claim charts in a November 2013 Scott expert report, which

right to any “procedural defenses,” by not explicitly reserving such defense. Dkt. No. 251
(“Plaintiff Sur-Reply”) at 1. The Court does not agree with such a cramped reading of Defendant’s
stipulation; while the stipulation notes that Defendant “still has defenses of reverse doctrine of
equivalence . . . as well as any invalidity defenses as well,” the Court does not understand that to be
an inclusive list of Defendant’s defenses. Defendant did not stipulate to dropping any defense.
5

Rule 26(e) requires parties to supplement its discovery disclosures “in a timely manner if
the party learns that in some material respect the disclosure or response is incomplete or incorrect,
and if the additional or corrective information has not otherwise been made known to the other
parties during the discovery process.” FED. R. CIV. P. 26(e). “If a party fails to provide information
or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that information
or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was
substantially justified or is harmless.” FED. R. CIV. P. 37(c)(1). The Court may impose alternative
sanctions in lieu of precluding information or testimony at trial. See FED. R. CIV. P. 37(c)(1)(C).
9

includes a photograph of the V-Max’s U-Clips to demonstrate the “engagement with” limitation.6
Dkt. No. 213-10, Ex. C at 2. In later depositions, both Gooding and Scott have identified the U-Clip
as satisfying the “engagement with” limitation. Dkt. Nos. 213-3 at 163:16-20; 213-11 at 158:12-15.
Plaintiff, on the other hand, contends that its position that the V-Max contains the
“engagement with” limitation has been consistent throughout the litigation. Mot. Strike Resp. at 910; Pl. Sur-Reply at 2. Plaintiff argues that it has identified the claim limitation “respective opposed
surfaces in engagement with one another at an interface therebetween” in the V-Max since its initial
claim charts in 2009. Pl. Sur-Reply at 2. Plaintiff claims that Defendant originally admitted that the
V-Max had opposed surfaces in engagement with one another, see Dkt. Nos. 39-11 ¶¶ 31, 34; 86-2
¶¶ 15-16, and that it was therefore unnecessary for Plaintiff “to further address the issue,” Mot.
Strike Resp. at 9. Plaintiff contends, however, that after the Court’s claim construction, Defendant
changed course and argued that Plaintiff had not specifically identified the “engagement” limitation
in the V-Max. Pl. Sur-Reply at 2 (citing Dkt. No. 161-1 at 7-10). Plaintiff in response identified the
U-Clip as “an opposed surface” satisfying the “engagement” limitation. Id. (citing Dkt. No. 168 at
22-24). Plaintiff claims that any statement by its experts that the U-Clip meets the “engagement ”
limitation, “reflects the fact that the V-Max includes the claimed engaged opposed surfaces, and that
one of the surfaces may be located on the U-Clip,” and does not mean that “the U-Clip or any other
connector is required to meet the ‘engagement with’ limitation.” Id. at 3. Plaintiff’s claim is
therefore not that the U-Clip satisfies the limitation, but that the “the respective opposed
6

The Court notes that Defendant first made this argument in the briefing on the renewed
summary judgment motions following remand, and that there, Defendant contended that Plaintiff
first disclosed this new infringement contention in a November, 2012 response brief. See Dkt. No.
176 at 14-26. In Plaintiff’s November 30, 2012 Reply, Plaintiff relies on the U-Clip as satisfying
the “engagement” limitation. See Dkt. No. 168 at 24.
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surfaces” that are in “engagement” at the U-Clip satisfies the limitation.
The Court agrees that Plaintiff has not impermissibly changed its claim. The Court reiterates
that a “sea of troubles . . . can arise when dispositive motions are filed on the merits prior to final
claim construction.” AFT III, 2013 WL 5462584, at *6. This case, which was commenced before
the Local Patent Rules became effective, has followed a complicated schedule. Thus, where the
Local Patent Rules chart “a clear course for patent actions that provides for discovery, briefing, and
a final decision on claim construction before deadlines even begin to run for merits discovery and
expert reports,” id., in this case, the parties have filed several rounds of dispositive motions that
have delayed the setting of deadlines.
The parties filed renewed summary judgment motions post-appeal, without having first had
an opportunity to supplement their expert reports and conduct additional discovery in light of the
Court’s claim construction. The parties therefore were “reduced to basing their arguments on . . .
whether the other party is raising new arguments or could have anticipated the Court’s
construction.” Id. Defendant argued that Plaintiff had not shown that the “engagement” limitation,
construed by the Court to mean “to interlock.” Dkt. No. 161-1 at 7-10. When Plaintiff specifically
identified “the respective opposed surfaces” that are in “engagement” at the U-Clip, Defendant
argued that Plaintiff was impermissibly changing its claim. Dkt. No. 176 at 14-26. Thus, following
the model of the Local Patent Rules, the Court reopened discovery to allow the parties to
supplement their expert reports and conduct discovery. AFT III, 2013 WL 5462584, at *6. The
Court’s order aimed to allow the parties to “re-anchor their positions” to the Court’s claim
construction. Id.
The Court does not find that Plaintiff changed its infringement contention during the post11

appeal summary judgment briefing. Plaintiff merely clarified the “respective opposed surfaces” that
are in “engagement,” in response to a new argument made by Defendant in reliance on the Court’s
claim construction. Regardless, even if the Court did find that Plaintiff had changed its position, the
Court would not find it impermissible, specifically because the Court reopened discovery to enable
the parties to supplement expert reports and conduct additional discovery. See Dkt. No. 185.
Plaintiff disclosed its alleged new infringement contention in its supplemental Scott expert report on
November 6, 2013, following the schedule for serving supplemental expert reports set by the Court.
Dkt. No. 213-10, Ex. C at 2. Defendant subsequently submitted supplemental interrogatory
responses, supplemental expert reports, and deposed Plaintiff’s expert and fact witnesses. Mot.
Strike Resp. at 8 (citing Dkt. Nos. 208-10; 208-17; 208-18). The Court accordingly finds that
Plaintiff’s alleged amendment of its contention would have been timely and consistent with its 26(a)
obligations. Furthermore, Defendant is not prejudiced because it had the opportunity to conduct
discovery on Plaintiff’s amended contention consistent with AFT III.
Defendant’s Motion to strike is therefore denied.
B. Claims 4 and 34
The parties cross move for summary judgment on whether the V-Max contains the
“adhesive” limitation claimed in claims 4 and 34. Pl. Mem. at 9-10; Def. Mem. at 7-8. Claims 4
and 34 claim:
4. A screen cylinder according to claim 2, wherein said means for
releasably connecting includes and adhesive.
34. A screen plate according to claim 32, wherein said means for
connecting comprises an adhesive.
‘940 Patent.
12

The parties dispute whether the V-Max includes an “adhesive,” as construed by the Court.
Specifically, Plaintiff argues that it is undisputed that the V-Max contains “an epoxy between the
screening medium and backing plate,” and that the epoxy is an “adhesive” as construed by the
Court. Dkt. Nos. 208-2 (“Plaintiff Statement of Material Facts”) ¶¶ 14; 230-1 (“Defendant
Response to Statement of Material Facts”) ¶ 14-15. Defendant, on the other hand, states that
Plaintiff has no evidence that the epoxy used in the V-Max forms a bond strong enough to hold the
backing plate and screening medium together “so that they act or can be used as a single piece,” as
required by the Court’s construction of “adhesive.” Dkt. No. 214-2 (“Defendant Statement of
Material Facts”) ¶ 30. The epoxy, Defendant claims, is “applied to the U-clips to fill the channels of
the U-clips around the elongated pins;” what Plaintiff indicates in photographs is merely “residual
epoxy.” Def. Resp. SMF ¶¶ 14, 16.
Having reviewed the evidence presented by the parties, the Court finds that there are
disputed issues of material fact regarding whether the epoxy is an “adhesive.” Specifically, Plaintiff
has identified an epoxy on both the outer surface of the screening medium and inside surface of the
backing plate. Pl. SMF ¶¶ 16-17. Defendant, however, has responded with evidence that AFT has
not presented evidence that the epoxy forms a bond that holds the backing plate and screening
medium together “as a single piece.” Def. Resp. SMF ¶ 15. The Court has reviewed the deposition
testimony that Defendant cites for this proposition. In Scott’s February 18, 2014 Deposition, Scott
acknowledged that he could not state that the “epoxy” would be sufficient to hold together the
screening medium and backing plate; Gooding similarly acknowledged the lack of a test for the

13

bonding strength of the epoxy. Dkt. Nos. 214-7 at 144:17-145:3; 214-8 at 136:14-137:5.7 However,
both Scott and Gooding also stated that the appearance of the epoxy on both the screening medium
and backing plate was indicative of bonding. Dkt. Nos. 214-7 at 144:4-144:8; 136:7-136:11.
Mindful of the parties’ respective burdens of proof on summary judgment, the Court finds
that Defendant has created an issue of material fact with respect to the bonding strength of the
epoxy, but that Defendant has not presented sufficient evidence to warrant summary judgment in its
favor. The Court finds that a reasonable trier of fact, reviewing the deposition testimony cited by
Defendant and the evidence produced by Plaintiff, could find that the epoxy satisfies the Court’s
construction of “adhesive.” Accordingly, the Court denies both parties’ Motions for summary
judgment on claims 4 and 34.
C. Reverse Doctrine of Equivalents
Defendant has asserted a defense of non-infringement under the Reverse Doctrine of
Equivalents (the “RDOE”). Def. Mem. at 11-19. The RDOE applies “where a device is so far
changed in principle from a patented article that it performs the same or similar function in a
substantially different way, but nevertheless falls within the literal words of the claim.” Graver
Tank & Mfg. v. Linde Air Prods Co., 339 U.S. 605, 608-09 (1950). The RDOE may then be
invoked “to restrict the claim and defeat the patentee’s action for infringement.” Id. at 609. The
RDOE is an equitable doctrine intended “to prevent unwarranted extension of the claims beyond a
fair scope of the patentee’s invention.” Scripps Clinic & Research Found. v. Genentech, Inc., 927
F.2d 1565, 1581 (Fed. Cir. 1991).
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Defendant also cites the Declaration of Mark Lutz (“Lutz”), a J & L employee. Dkt. No.
86-2. Lutz states that the “residual epoxy” would not have “sufficient bond strength to connect or
secure the screen panels to the frame so that these components can act as a single piece.” Id. ¶ 21.
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1. Affirmative Defense
It is undisputed that Defendant did not raise the RDOE as an affirmative defense in its
Answer. Pl. SMF ¶ 22; Def. Resp. SMF ¶ 22. Plaintiff argues that Defendant therefore waived any
defense under the RDOE by failing to assert it in its answer. Pl. Mem. at 9-10. Defendant disputes
that the RDOE is an affirmative defense. Dkt. No. 230 (“Defendant Opposition”) at 5-6.
Alternatively, Defendant has moved for leave to amend its Answer to include the RDOE as an
affirmative defense. Mot. Am.; 231-1 (“Motion to Amend Memorandum”).
An affirmative defense is any defense “that does not controvert the opposing party’s prima
facie case.” Cornwall v. U.S. Cons. Mfg., Inc., 800 F.2d 250, 252 (Fed. Cir. 1986); see also Black’s
Law Dictionary 430 (7th ed. 1999) (defining “affirmative defense as “[a] defendant’s assertion of
facts and arguments that, if true, will defeat the plaintiff’s or prosecution’s claim, even if all the
allegations in the complaint are true.”). Failure to raise an affirmative defense in an answer to a
complaint results in waiver of that defense. Litton Indus., Inc. v. Lehman Bros. Kuhn Loeb Inc.,
967 F.2d 742, 751-52 (2d Cir. 1992).
While the minimal case-law is split, the Court agrees with Plaintiff that the RDOE is an
affirmative defense. SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107 (Fed. Cir. 1985), states that
“[w]hen a patentee establishes literal infringement, the accused infringer may undertake the burden
of going forward to establish the fact of non-infringement under the [RDOE].” 775 F.2d at 112324. The Court understands this statement to mean that: (1) the accused infringer bears the burden on
an RDOE defense; and (2) because an RDOE defense is made once the patentee has made its prima
facie case of literal infringement, the defense therefore does not controvert the patentee’s prima
facie case of literal infringement. The Court accordingly concludes that the RDOE is an affirmative
15

defense. See also Translogic Tech., Inc. v. Hitachi, Ltd., No. CV 99-407, 2005 WL 425465, at *1
(D. Or. Feb. 22, 2005) (referring to RDOE as an affirmative defense); Jewish Hosp. of St. Louis v.
IDEXX Labs., 973 F. Supp. 24, 27-28 (D. Me. 1997) (same).8
Because Defendant did not raise the RDOE in its answer, see Answer, the Court must
consider Defendant’s Motion to amend. Federal Rule of Civil Procedure 15(a) provides that leave
to amend should be “freely give[n].” FED. R. CIV. P. 15(a). Plaintiff argues that the stricter “good
cause” standard in Federal Rule of Civil Procedure 16(b)(4) applies, Dkt. No. 243 (“Plaintiff
Reply”) at 26, because the deadline for amended pleadings was May 1, 2008, see Dkt. No. 18. The
Court agrees that good cause provides the correct standard under which to review Defendant’s
Motion to amend. See Parker v. Columbia Pictures Indus., 204 F.3d 326, 340 (2d Cir. 2000).
Nonetheless, the Court finds that Defendant has shown good cause.
“[A] finding of ‘good cause’ depends on the diligence of the moving party.” Parker, 204
F.3d at 340. The parties agree that Defendant first raised its RDOE defense in its Supplemental
Rule 26(a)(2)(B) Rebuttal Expert Report of Peter Seifert on Non-infringement served on December
16, 2013. Pl. SMF ¶ 25; Def. Resp. SMF ¶ 25. The disclosure of that report was consistent with the
discovery schedule set by the Court after AFT III. Dkt. No. 185. As discussed above, the Court
reopened discovery in order to allow the parties to supplement their expert reports and conduct
discovery necessitated by the Court’s claim construction. AFT III, 2013 WL 5462584, at *6.
Defendant, after its construction of “engagement” was rejected by the Court in AFT I, therefore
8

The Court also considered Integra Lifesciences I, Ltd. v. Merck KgaA, No. 96-CV-1307,
2000 WL 35717874 (S.D. Cal. Feb. 3, 2000), which was cited by Defendant. The Court does not
agree with the conclusion in Integra that the RDOE merely controverts the patentee’s prima facie
case of literal infringement, 2000 WL 35717874, at *3, because the RDOE applies to restrict the
meaning of the patentee’s claim, regardless of the claim’s literal meaning.
16

disclosed a defense that it believe necessitated by the Court’s accepted construction. The Court
does not find that it showed a lack of diligence in disclosing its RDOE defense at that time; AFT III
provides the proper reference for viewing Defendant’s diligence, since that decision constituted the
Court’s decision on claim construction. Id. Defendant therefore acted diligently in disclosing its
RDOE defense in accordance with the discovery deadlines set up by the Court following AFT III.
The Court acknowledges Plaintiff’s arguments that it is prejudiced, Dkt. No. 243-1, but does
not find them compelling. Plaintiff had two months to conduct discovery on Defendant’s RDOE,
and deposed Defendant’s expert on the RDOE. Dkt. No. 232-4. The schedule for expert reports
and discovery deadlines was the same as that contemplated in the Local Patent Rules. Moreover,
Plaintiff did not request an extension for discovery, even though it was aware of Defendant’s RDOE
defense. If two months were insufficient for it to conduct discovery on the RDOE defense, then
Plaintiff should have requested an extension. See Dkt. No. 187 (stating that extensions may be
granted upon a showing of “good cause”).
The Court therefore grants Defendant’s Motion to amend its Answer.
2. Analysis
Defendant has stipulated to literal infringement of claims 1 and 10, and all depending
claims, but argues that summary judgment of non-infringement is appropriate under the RDOE
“because the V-Max performs the function of engaging the screening medium to the backing plate
in a substantially different, innovative and considerably better way than the ‘940 Patent.” Def. Mot.
at 11-12.
To prevail on a RDOE defense, a defendant must first establish the “principle” or “equitable
scope of the claims” of the patented invention, “determined in light of the specification, the
17

prosecution history, and the prior art.” Scripps, 927 F.2d at 1581. A defendant must then show that
the accused device “preforms the same or similar function in a substantially different way.” Graver
Tank, 339 U.S. at 608-09. Non-infringement under the RDOE raises a question of fact. SRI, 775
F.2d at 1124 (“Words like ‘so far’ ‘principle’ and ‘substantially’ are not subject to rigid predefinition.”). “If the accused infringer makes a prima facie case” under the RDOE, then “the
patentee, who retains the burden of persuasion on infringement, must rebut that prima facie case.”
Id.
Defendant proposes that the principle of the “engagement” limitation is “to provide an easily
replaceable screening medium to enable re-use of the backing cylinder.” Def. Mot. at 12. In
support of its contention, Defendant cites to several places in the specification that describe how the
screening medium can be replaced. ‘940 Pat., Col. 2, Lns. 18-19; Col. 4, Lns. 19-25; Col. 10, Lns.
10-15. Moreover, Defendant observes that fourteen of the thirty-six dependent claims recite
“releasably connecting” the screening medium and backing plate. Id., Col. 13, Ln. 24 to Col. 16,
Ln. 47. Because the specification and claims indicate that the screening medium is “replaceable”
and “releasable,” Defendant therefore argues that the function of the “engagement” limitation must
be to enable “replacement” of the screening medium; Defendant states that “it would be illogical to
permanently ‘interlock or mesh’ the screening medium and backing plate and then add a “releasable
connector.’” Def. Mot. at 13.
Defendant next argues that the “way” the “engagement” limitation functions in the ‘940
Patent is by “a shrink fit.” Id. Defendant claims that a shrink fit is the appropriate scope of the
“engagement” limitation because it is: (1) the only disclosed method of “engagement” in the
specification and (2) the prior art and prosecution history show that other types of
18

connectors—welds, rivets, solders, screws, and adhesives—were all known in the art. Id. at 14-15.
Moreover, Defendant argues that a shrink fit “does not enable ‘easy replacement,’ but rather
provides a tight, immobile interference fit between the screening medium and the backing plate.”
Id. at 13. Thus, Defendant argues that the “engagement” limitation should not be given the broad
scope as construed, but should be equitably narrowed. Id. at 13-15.
Plaintiff argues that Defendant has failed to establish the correct principle of the ‘940 Patent
and therefore, has failed to make a prima facie defense under the RDOE. Dkt. No. 232 (“Plaintiff
Opposition”) at 13-17. Specifically, Plaintiff argues that the claims, specification, and prosecution
history neither support Defendant’s proposed principle of “an easily replaceable screening medium,”
nor limiting the scope of the “engagement” limitation to a shrink fit. Id. The Court agrees.
Nothing Defendant cites in the specification and claims supports its argument that the ‘940
Patent provides an easily replaceable screening medium; rather, the specification merely discloses
that the screening medium is “replaceable.” ‘940 Pat., Col. 4, Lns. 19-20 (“[T]he screening plate
can be replaced when worn by breaking the welds or other securing means between the backing and
screening plates.”); Id., Col. 2, Lns. 17-19 (“[T]he present invention enables substantially reduced
replacement costs of the screen plates when worn.”). Indeed, replacement of the screening medium
may require “machining,” “cutting,” or “breaking” the screening plate apart. Id., Col. 4, Lns. 19-25;
Col. 10, Lns. 15-18; Col. 11, Lns. 52-56. These processes do not suggest that the screening medium
is easily replaced, only that it can be replaced. The reference to “substantially reduced costs” does
not indicate ease of replacement; it merely indicates that the cost of replacing the screening medium
is substantially less than replacing the entire screen cylinder. Id., Col. 7, Lns. 16-18. Defendant
also offers descriptions by Plaintiff’s experts of an “easily replaceable” screening medium, see Dkt.
19

No. 242 (“Defendant Reply”) at 3, but such statements are irrelevant to determining a patent’s
principle under the RDOE, Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372, 1378 (Fed Cir.
2009). Therefore, neither the specification, nor the claims, support finding that the principle of the
“engagement” limitation is “an easily replaceable screening medium.”
The Court also disagrees to the extent Defendant argues that the scope of the “engagement”
limitation should be limited to a shrink fit, based on the specification, prior art, and prosecution
history. The Court notes at the outset that “[t]he Federal Circuit has counseled against limiting
claims to the preferred embodiments or specific examples in the specification.” Ciena Corp. v.
Corvis Corp., 334 F. Supp. 2d 598, 605 (D. Del. 2004).
The Court disagrees with Defendant’s characterization of the specification as only describing
“engagement” by shrink fit. Def. Mot. at 13-14. It is true that the Court in AFT I recognized that
the “means for releasably connecting” are “welds, rivets, screws, adhesives, solders, and
equivalents.” AFT I, 751 F. Supp. at 371. Moreover, the Court recognized that a shrink fit is not a
“means for releasably connecting,” id. at 370, and is a method of “engagement,” id. at 365.
However, the Court did not therefore “equate” the “means for releasably connecting” with welds,
rivets, screws, and adhesives, and “engagement” with a shrink fit. Def. Reply at 8. The Court did
not find that the only support for its construction of “engagement” was the disclosed shrink fit.
Rather, the Court cited to an embodiment of a “flat screen plate,” where “the two flat plates are
registered one with the other . . . and secured one to the other, for example, by welding, soldering,
riveting or adhesives. The backing plate thus engages the screening plate.” AFT I, 751 F. Supp. 2d
at 365 (citing ‘940 Pat., Col. 3, Lns. 5-11).
Defendant argues that the flat screen plate embodiment “should be disregarded,” because it
20

is inconsistent with “the claims and the Court’s claim construction.” Def. Reply at 8. Defendant
contends “there are no claims that either cover or are supported by the embodiment,” since Plaintiff
claimed welds, rivets, screws, and adhesives as “means for releasably connecting.” Id. On the
contrary, claim 10 claims a “screen plate,” with “respective opposed surfaces in engagement with
one another,” as described in the embodiment. Pat. ‘940, Col. 14, Lns. 21-26. The embodiment
clearly describes a screening plate and backing plate that are “secured to one another,” by “welding,
soldering, riveting or adhesives,” and thus are “engaged” to one another. Id., Col. 3, Lns. 5-11.
Thus, while welds, rivets, solders, adhesives may be “means for releasably connecting” in other
embodiments where the components are engaged by a shrink fit, in the flat screen plate
embodiment, those techniques are a method of “engagement.” The specification therefore shows
that a shrink fit is not the only technique for “engaging” the screening medium and backing plate.
The Court is not persuaded by Defendant’s attempt to show, through the prosecution history
and prior art, that a “shrink fit was the only claim to any type of connection that would have been
allowed by the PTO, had the connector been considered part of the independent claim.” Def. Reply
at 7. The Court does not find this evidence compelling in light of the specification and claims.
Having failed to establish the correct principle of the ‘940 Patent, Defendant has failed to
make out a prima facie case under the RDOE. Roche, 531 F.3d at 1378. Summary judgment is
therefore granted in favor of Plaintiff on Defendant’s RDOE defense.
D. “Slots and Openings” at Least 0.254mm
Defendant moves to clarify the Court's grant of summary judgment in its favor in AFT III “as
to any V-Max units whose wedgewire screening media employ slots or openings at least 0.254 mm
wide.” Def. Mem. at 31-33. The parties sharply dispute the meaning of the Court’s order. Plaintiff
21

contends that the Court’s claim construction of claims 1 and 10 requires a “plurality of slots [or
openings] less than .254 mm wide”; therefore, a V-Max will infringe if it has a plurality—two or
more slots—less than 0.254 mm, even if it includes some slots greater than 0.254 mm. Pl. Opp’n at
34. Defendant, on the other hand, contends that the Court’s order granted summary judgment as to
any V-Max that employs more than one slot or opening at least 0.254mm wide. Def. Mem. at 32.
The Court in AFT I did not construe the phrase in claim 1, “a plurality of openings
therethrough,” or in claim 10, “a plurality of slots therethrough.” The Court did, however, construe
“openings and slots,” AFT I, 751 F. Supp. at 363-65, and the parties do not dispute that “plurality”
means “more than one” or “at least two,” Pl. Opp’n at 34. Although the Court has stated that it will
not consider theories that would require construction of a term not already construed, AFT III, 2013
WL 5462584, at *6, the Court will clarify its construction of “openings and slots,” and thus, its
grant of summary judgment in AFT III.
The Court in AFT I construed “openings” and “slots” to mean “openings or slots with widths
less than 0.254 mm.” AFT I, 751 F. Supp. at 365. The Court’s construction was based on the
prosecution history, when Plaintiff “disavowed any slot width that was not suitable for screening
pulp.” Id. Plaintiff, the Court found, “unequivocally disavowed any slot with a width equal to or
greater than 0.254 mm.” Id. (emphasis added). The Court’s claim construction then was clear: a
“screening medium having a plurality of openings therethrough” means a screening medium with
more than one opening, where all such openings are less than 0.254 mm wide. Plaintiff attempts to
re-argue the Court’s claim construction, stating that there is nothing in the specification or
prosecution history that would require a “plurality of openings” to mean all openings. Pl. Opp’n at
34. The Court will not consider further argument on the issue.
22

The Court therefore finds that its prior grant of summary judgment in AFT III applies to any
V-Max employing more than one slot or opening at least 0.254 mm wide.
V.

VALIDITY
Plaintiff moves for summary judgment of validity on claims 1, 4, 6, 8, 10-14, 16, 17, 27, 29,

and 34 with respect to Defendant’s four remaining invalidity arguments. Pl. Mem. at 12.
Specifically, Plaintiff moves for summary judgment on the following invalidity arguments: “(1)
obviousness based upon the Johnson Screens Brochure alone; (2) anticipation and/or obviousness
based upon Gillespie alone; (3) obviousness based upon the combination of the PIMA Article,
Burgess and other references; and (4) invalidity under 35 U.S.C. § 112.” Id.
Defendant has cross-moved for summary judgment of invalidity on claims 1 and 10 and all
depending claims, under 35 U.S.C. § 112(a). See Def. Mem. at 21-29.
The Court notes that in AFT III it reserved judgment on the renewed Motions on validity
because the Court of Appeals’ decision in AFT II did not affect the Court’s analysis in AFT I. AFT
III, 2013 WL 5462584, at *5. Therefore, the Court will not consider any arguments on validity or
invalidity offered by the parties that the Court previously decided in AFT I.
A. Legal Standard
Patents enjoy a presumption of validity. 35 U.S.C. § 282. That presumption can be
overcome only through facts supported by clear and convincing evidence. See SRAM Corp. v. ADII Eng’g, 465 F.3d 1351, 1357 (Fed. Cir. 2006) (citing U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d
1554, 1563 (Fed. Cir. 1997)). Thus, where a party seeks summary judgment invalidating a patent, it
can prevail only by submitting such clear and convincing evidence of the patent’s invalidity that no
reasonable jury could find otherwise. Id. (citing Perkin-Elmer Corp. v. Computervision Corp., 732
23

F.2d 888, 893 (Fed. Cir. 1984)). A party may challenge a patent’s validity by introducing clear and
convincing evidence that the patent was anticipated by prior art. 35 U.S.C. § 102(a); Linear Tech.
Corp. v. Int’l Trade Comm’n, 566 F.3d 1049, 1066 (2009). Alternatively, a party may challenge a
patent’s validity based on its obviousness to a person of ordinary skill in the art at the time of the
patent application. 35 U.S.C. § 103; KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). A party
may also prove a claim’s invalidity by showing its failure to comply with 35 U.S.C. § 112, ¶ 4.
Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006) (citing Curtiss-Wright
Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006)).
1. Anticipation
A party is not entitled to a patent where “the invention was known or used by others in this
country, or patented or described in a printed publication . . . before the invention thereof by the
applicant for patent, or the invention was patented or described in a printed publication . . . or in
public use or on sale . . . more than one year prior to the date of the application for patent.” 35
U.S.C. § 102. A party challenging the validity of a patent may prevail by demonstrating the
existence of prior art that “was sufficiently accessible, at least to the public interested in the art, so
that such a one by examining the reference could make the claimed invention without further
research or experimentation.” In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986); see also In re Wyer,
655 F.2d 221, 226 (C.C.P.A. 1981). “A prior art reference anticipates a patent claim if the reference
discloses, either expressly or inherently, all of the limitations of the claim.” Finnigan Corp. v. Int’l
Trade Comm’n, 180 F.3d 1354, 1365 (Fed. Cir. 1999). Where the validity of a device claim is
challenged on anticipation grounds, the challenger need only show that the prior art is structurally
equivalent to the challenged patent; in the face of such a challenge, the patent owner cannot prove
24

the validity of its patent by reference to its different use or function. In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997); Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990).
2. Obviousness
Section 103 prohibits the issuance of patents where “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.” 35 U.S.C. § 103. Patents issued in violation of this rule are invalid.
While “the ultimate question of patent validity is one of law,” validity ultimately rests on factual
inquiries as to (1) the scope and content of prior art; (2) differences between that prior art and the
claimed invention; (3) the level of ordinary skill in the pertinent art; and (4) any other indicia of
obviousness or non-obviousness. Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966);
KSR, 550 U.S. 398 (2007). “The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416.
B. Johnson Screens Brochure
Plaintiff moves for summary judgment that claims 1 and 10, and all depending claims, are
not obvious based on the Johnson Screens Brochure (“Johnson”) alone. Pl. Mem. at 15. Plaintiff
claims that Defendant’s obviousness argument based on Johnson alone is new, and therefore is not
subject to the Court’s decision not to revisit its invalidity decisions in AFT I. Id.
Plaintiff asserts that the Court already held in AFT I, as a matter of law, that Johnson “does
not disclose a ‘screening medium’ that is ‘in engagement with’ a ‘backing plate’”; therefore,
Defendant’s new claim fails as a matter of law. Id. Defendant, however, correctly states that the
25

Court did not grant summary judgment of validity in favor of Plaintiff. Dkt. No. 230 (“Defendant
Opposition”) at 22. Rather, the Court held that Johnson fails to “conclusively” disclose a “screening
medium” that is “in engagement with” a “backing plate.” AFT I, 751 F. Supp. 2d at 377. Thus, the
Court found that there was a genuine issue of material fact and denied Defendant’s Motion of
summary judgment of invalidity on Johnson. Plaintiff has not made other arguments that
Defendant’s new obviousness argument is otherwise inadequate as a matter of law. The Court
therefore denies Plaintiff’s Motion for summary judgment of validity on Defendant’s new
obviousness argument.
C. Gillespie
Plaintiff moves for summary judgment on Defendant’s argument that claims 1, 6, 8, 10-12,
17, 27, and 29 are either anticipated or rendered obvious by Gillespie. Pl. Mem. at 7. Defendant’s
argument is new and was not addressed by the Court in AFT I.
Plaintiff claims that summary judgment of validity over Gillespie is appropriate because
Gillespie fails to disclose a “screening medium,” “openings and slots with widths less than 0.254
mm,” or “opposed surfaces in engagement with one another at an interface therebetween.” Pl.
Mem. at 16. Plaintiff states that this is clear from the prosecution history: the PTO initially rejected
claims 1 and 10 based on Gillespie, but Plaintiff successfully argued that Gillespie does not disclose
a “screening medium” because it does not disclose the process of screening pulp and its slots are too
large for screening pulp.
In a novel argument, and without citation, Defendant argues that prosecution disclaimer does
not protect the patentee for the purposes of an invalidity challenge; thus, Plaintiff cannot invoke the
finding by the PTO that Gillespie did not disclose “openings and slots with widths less than 0.254
26

mm” against an invalidity challenge. Def. Opp’n at 12. Defendant argues that there is evidence,
which indicates that the slot widths in Gillespie could be used for screening pulp, that the PTO did
not have. Id. at 14. Defendant therefore argues that the Court’s construction of “slots and
openings” should not limit the invalidating effect of Gillespie, and that, in light of Defendant’s
evidence, “the Court should consider the claim terms the way the PTO evaluates claim scope.” Id.
The Court does not agree. As Defendant acknowledges, “[i]t is axiomatic that claims are construed
the same way for both invalidity and infringement.” Amgen, Inc. v. Hoechst Marion Roussel, Inc.,
314 F.3d 1313, 1330 (Fed. Cir. 2003). The Court has construed the claim term “slots and openings”
in light of the prosecution history disclaiming the slot sizes in Gillespie; the question, therefore, is
whether Gillespie discloses “openings and slots with widths of less than 0.254 mm.” Because it is
undisputed that Gillespie does not disclose openings and slots of that width, and Defendant has not
created an issue of fact regarding the obviousness of modifying the slot widths in Gillespie,
summary judgment of validity on Gillespie is appropriate.
D. PIMA Article
Plaintiff moves for summary judgment on whether the PIMA Article (“PIMA”) discloses a
“backing plate,” in light of new evidence. Pl. Mem. at 17-18. Plaintiff acknowledges that the Court
already denied summary judgment of validity in AFT I because Plaintiff relied on pre-claim
construction testimony; however, Plaintiff argues that it is appropriate for the Court to reconsider
the issue in light of post-claim construction testimony. Id. at 12-13. The Court agrees and will
consider the new evidence.
Plaintiff claims that new evidence shows that PIMA does not include a metal plate as a
matter of law. Pl. Mem. at 18. In a deposition on February 6, 2014, Mark Lutz (“Lutz”), one of the
27

primary designers of the V-Max, Dkt. No. 208-14 (“Lutz Deposition”) at 9:11-14, stated, with
respect to the rings in PIMA, that he “would consider them to be a frame,” id. at 24:13-14, “after
[they] are cut from whatever they are cut from and they’re assembled into this frame,” id. at 24:7-9.
Defendant asserts that this mischaracterizes Lutz’s testimony; earlier Lutz affirmatively answered
the question, “[d]o you consider that frame to be a structural support for a screening medium that
includes a metal plate?” Id. at 23:9-12. Lutz identified the “metal plate” as “[t]he rings,” which he
assumed, “would be made from a plate, would be cut out of a plate.” Id. at 23:13-19.
Plaintiff also relies on the testimony of Timothy Cromell, a product engineer for Defendant,
who stated that he would not consider PIMA to be a structural support for screening medium which
includes a metal plate. Dkt. No. 208-16 at 42:19-23. Defendant’s expert, Peter Seifert, has testified
that PIMA includes a metal plate. Dkt. No. 230-8 at 189:4-190:16.
Construing the evidence in the light most favorable to Defendant, the Court finds that there
are disputed issues of material fact as to whether PIMA discloses a “backing plate” that preclude
granting summary judgment. Defendant has presented expert testimony that PIMA does “include a
metal plate,” and the testimony of Lutz, construed favorably to Defendant, indicates the same. A
jury may not agree with Seifert’s and Lutz’s assumption that PIMA discloses rings made out of a
plate, but that is not a determination for the Court to make. Therefore, Plaintiff’s Motion of
summary judgment of validity on PIMA is denied.
E. Enablement - § 112(a)
Defendant claims that the ‘940 Patent fails to enable the full scope of the “engagement”
limitation and of the “screening medium” limitation under 35 U.S.C. § 112(a). Def. Mem. 20-28.
Section 112(a) provides that “the specification must teach those skilled in the art how to
28

make and use the full scope of the claimed invention without undue experimentation.” Genentech,
Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (internal quotation marks omitted).
“That some experimentation may be required is not fatal; the issue is whether the amount of
experimentation required is ‘undue.’” In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991) (citing In re
Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988)). The specification need not “necessarily describe
how to make and use every possible variant of the claimed invention, for the artisan’s knowledge of
the prior art and routine experimentation can often fill gaps.” AK Steel Corp. v. Sollax & Ugine,
344 F.3d 1234, 1244 (Fed. Cir. 2003).
Enablement is a question of law, based on underlying factual issues. Automotive Techs.
Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1281 (Fed. Cir. 2007). “The evidentiary burden
to show facts supporting a conclusion of invalidity is one of clear and convincing evidence because
a patent is presumed valid.” Strick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008).
1. Engagement
Defendant claims Plaintiff cannot satisfy the standard for enablement because: (1) the ‘940
Patent does not enable the full scope of the “engagement” limitation, which “encompass[es]
virtually all connections between a screening medium and a backing plate,” Def. Mot. at 22, and (2)
the Patent does not enable one of ordinary skill to produce an adequate shrink fit without undue
experimentation, id.
a. Scope of Enablement
The parties sharply dispute whether the ‘940 Patent enables the fulls scope of the
engagement limitation as construed by the Court. See, e.g., Pl. Mem. at 19-20; Pl. Opp’n at 25-27;
Def. Reply at 9-10. Plaintiff claims that it is well established that “[t]he enablement requirement is
29

met if the description enables any mode of making and using the invention.” Pl. Opp’n at 27-28
(citing John Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1361 (Fed. Cir. 1998); LizardTech, Inc.
v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344 (Fed. Cir. 2005); Amgen Inc. v. Hoechst Marion
Roussel, Inc., 314 F.3d 1313, 1335 (Fed. Cir. 2003); Durel Corp. v. Osram Slyvania Inc., 256 F.3d
1298, 1307 (Fed. Cir. 2001); Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1533 (Fed. Cir.
1991)). Defendant, on the other hand, claims that “enabling a single embodiment does not enable
the full scope of broad claims.” Def. Reply at 9-10 (citing, inter alia, MagSil Corp. v. Hitachi
Global Storage Techs., Inc., 687 F.3d 1377, 1382 (Fed. Cir. 2012); Sitrick v. Dreamworks, LLC,
516 F.3d 993, 1000 (Fed. Cir. 2008); Auto. Techs., 501 F.3d at 1282; Liebel-Flarsheim Co. v.
Medrad, Inc., 481 F.3d 1371, 1380 (Fed. Cir. 2007)).
Having carefully reviewed the cited cases, the Court finds it is sufficient that the
specification enable any mode of “engaging” the screening medium and the backing plate. While
Defendant is correct that there are many modes of connecting a screening medium and a backing
plate that would satisfy the claim language as construed, it does not therefore follow that the full
scope of the claim extends over all of those possible types of connection. The Court finds that the
full scope of the claim is, “respective opposed surfaces in engagement with one another at an
interface therebetween;” the scope of the claim is not the hundreds of methods of connecting two
components.
Considering the case-law helps to clarify the distinction between alternative modes of
making an invention and claims that have a broad scope. In Durel Corp., the court rejected the
defendant’s argument that the patent was not enabled because the inventors had not prepared
coatings from each of the precursors suggested in the specification; it was sufficient, the court
30

stated, so long as the claimed oxide coating was enabled from at least one of the suggested
precursors. 256 F.3d at 1307. Similarly, in John Hopkins, the court rejected the defendant’s
argument that certain disclosed alternatives modes were not enabled, because the preferred mode
was enabled. 152 F.3d at 1361. In the cases relied upon by Defendant, by contrast, it is the scope of
the claims that is at issue. In Auto Techs, the claim was construed to cover both mechanical and
electronic sensors; the court, however, found that the full scope of the claim was then not enabled
because the specification only enabled mechanical sensors. 501 F.3d at 1282. In MagSil, the claims
were construed to cover resistance changes “up to infinity;” the court, however, found that the
specification did not enable that entire scope. 687 F.3d at 1381.
The Court finds the present case analogous to Durel Corp. and John Hopkins, and not to
Auto Techs and MagSil. The full scope of the claim is simply a screening medium “engaged” to a
backing plate; it is not, as Defendant suggests, all theoretical methods of connecting two
components, Def. Reply at 12. Therefore, so long as a single method “engaging” a screening
medium to a backing plate is enabled, the ‘940 Patent satisfies § 112(a).
b. Whether the ‘940 Patent Enables “Engagement”
The Court must next consider whether the ‘940 Patent enables “engagement.” A disclosure
is enabled where it would not require “undue experimentation;” Wands articulated factors relevant
to whether experimentation is “undue”: “(1) the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the
nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.” Wands, 858 F.2d at
737.
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Defendant argues that, applying the Wands factors, the specification of the ‘940 Patent does
not provide adequate guidance to produce a shrink fit without undue experimentation. Def. Mem. at
22-23. Defendant specifically relies on testimony of Gooding, Plaintiff’s expert, who testified to the
challenges of shrink-fitting, among which he included: “obtaining uniformity;” the “great diversity
of sizes and models and operating environments;” “predicatability in terms of controlling the
temperature;” and “high level of stresses.” See Dkt. No. 214-8 (“Gooding Deposition”) at 35:17 to
37:7. However, the specification, Defendant contends, merely describes a shrink fit without
addressing any of these challenges. Def. Mem. at 24. Plaintiff states in response that Seifert,
Defendant’s expert, has admitted that a shrink fit would require only routine experimentation. Pl.
Opp’n at 26. In context, Seifert stated that the disclosure was an “invitation to experiment” and that
“you may get away with it and may not get away with it.” Dkt. No. 232-4 at 61:4-8. On other
occasions, Seifert testified that a shrink fit would work “in some instances but not in other
instances.” Dkt. No. 232-4 at 54:13-15. Based on the foregoing testimony, the Court finds that
there are issues of material fact regarding whether a shrink fit could be achieved from the
specification without undue experimentation.
However, the Court has also found that the specification’s disclosure of “engagement” is not
limited to a shrink fit and Plaintiff claims that regardless of whether the specification enables a
shrink, it is undisputed that it also contains a “working example” of engagement by weld. Pl. Opp’n
at 25. Plaintiff, however, has not presented evidence under the Wands factors to establish
enablement by weld.
Accordingly, to the extent the parties move for summary judgment on the enablement of the
“engagement” limitation, those motions are denied.
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2. Screening Medium
Defendant also moves for summary judgment on whether the specification enables a
“screening medium.” Def. Mem. at 24-29. Similar to its enablement argument on “engagement,”
Defendant asserts that the ‘940 Patent does not enable the full scope of the “screening medium”
limitation because it does not enable a wedgewire screen. Id. at 25. However, Defendant’s
argument again fails because it is sufficient that the specification “enable any mode of making and
using the invention.” John Hopkins, 152 F.3d at 1361. Plaintiff has produced evidence that the
specification does enable a non-wedgewire screening medium, see Dkt. No. 232-4 at 33:6-18, and
therefore, Defendant’s Motion for summary judgment on the enablement of a screening medium is
denied.
F. Enablement - § 112(b)
Plaintiff moves for summary judgment on Defendant’s claim that claims 1 and 10 are invalid
under 35 U.S.C. § 112(b) because Plaintiff did not claim what it now asserts is the invention. Pl.
Mem. at 20. Defendant’s claim is that “the invention recited in claims 1 and 10 requires an
additional ‘connector’ in order to function as a screen cylinder (e.g., a weld, rivet, etc.), and since
claims 1 and 10 do not include an additional connector, AFT failed to claim what it regards as the
invention.” Pl. SMF ¶ 60; Def. Resp. SMF ¶ 60. However, Defendant’s claim fails because the
Court has determined that “engagement” is not, as Defendant assumes, limited to a shrink fit. The
specification describes “engaged” opposed surfaces by “welding, soldering, riveting or adhesives,”
without any additional connector. ‘940 Pat., Col. 3, Lns. 5-11. Accordingly, summary judgment is
granted in favor of Plaintiff to the extent Defendant makes a claim under § 112(b).
VI.

LOST PROFITS
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A. Motion to Exclude Carter Opinion
Plaintiff offered Carter’s initial Expert Report on May 1, 2009 and his Supplemental Expert
Report on July 29, 2009. Dkt. Nos. 210-3, Ex. A; 210-4, Ex. B. Carter was asked to identify the
damages that would be appropriate in the event Defendant was found to infringe any of the asserted
claims of the ‘940 Patent. Dkt. 210-3, Ex. A at 2. On March 1, 2013, Plaintiff served Carter’s
Second Supplemental Expert Report, which took account of the Court’s ruling that the only
openings or slots less than 0.254 mm infringe the ‘940 Patent. Dkt. No. 210-5, Ex. C at 3. On
January 29, 2014, Plaintiff served the Third Supplemental Carter Expert Report, which reflected
Plaintiff’s belief, based on new analysis of Defendant’s “slot size tolerances,” that V-Max cylinders
with a stated slot size of up to 0.28 and/or 0.30 mm “are likely to fall within the Court’s slot size
restriction.” Dkt. 201-6, Ex. D at 4.
To recover lost profits, a patentee bears the burden of establishing “a reasonable probability
that, but for the infringement, it would have made the infringer’s sales.” Oiness v. Walgreen Co.,
88 F.3d 1025, 1029 (Fed. Cir. 1996). “The ‘but for’ inquiry . . . requires a reconstruction of the
market, as it would have developed absent the infringing product, to determine what the patentee
would . . . have made.” Grain Processing Corp. v. Am. Maize-Prods. Co., 185 F.3d 1341, 1350
(Fed. Cir. 1999). Market reconstruction requires “project[ing] economic results that did not occur,”
and therefore, “sound economic proof of the nature of the market and likely outcomes with
infringement factored out of the economic picture.” Id.
Carter’s analysis of Plaintiff’s entitlement to lost profits followed the four factor test set out
by the Sixth Circuit in Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152, 1156 (6th
Cir. 1978). Dkt. No. 201-3, Ex. A at 21. The Panduit factors require that a patent owner
34

demonstrate: “(1) demand for the patented product, (2) absence of acceptable infringing substitutes,
(3) his manufacturing and marketing capability to exploit the demand, and (4) the amount of the
profit he would have made.” 575 F.2d at 1156. The Panduit test is a recognized method for a
patentee to prove lost profits. See Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1545 (Fed. Cir.
1995).
Defendant moves to exclude Carter’s Report insofar as it offers an opinion on lost profits
under Federal Rule of Evidence 702 for the following reasons: (1) Carter is unqualified to offer
expert opinion on lost profits; (2) Carter’s methodology for identifying acceptable non-infringing
alternatives is inherently flawed; (3) Carter’s methodology for determining his “base case” is not
based on plausible market reconstruction; and (4) Carter’s analysis is grounded in incorrect data.
Mot. Exclude. For the following reasons, Defendant’s Motion is denied.
1. Legal Standard
Where “scientific, technical, or other specialized knowledge will assist the trier of fact . . . a
witness qualified as an expert by knowledge, skill, experience, training, or education” may offer an
opinion, if the proposed testimony “is based upon sufficient facts or data, . . . is the product of
reliable principles and methods, and [ ] the witness has applied the principles and methods reliably
to the facts of the case.” FED. R. EVID. 702. The Court has a “gatekeeping responsibility” to
“ensur[e] that an expert’s testimony both rests on a reliable foundation and is relevant to the task at
hand.” Daubert v. Merrell-Dow Pharm., Inc., 509 U.S. 579, 597 (1993). In assuming this role, the
Court applies a “presumption of admissibility.” See Borawick v. Shay, 68 F.3d 597, 610 (2d Cir.
1995); Lappe v. American Honda Motor Co., Inc., 857 F. Supp. 222, 226 (N.D.N.Y. 1994).
The Court’s inquiry under Daubert focuses not on the substance of the expert’s conclusions,
35

but on the principles and methodology used to generate the conclusions. Daubert, 509 U.S. at 595.
To assist with this inquiry, the Court may consider the following factors laid out in Daubert: (1)
whether the expert’s technique or theory can be or has been tested; (2) whether it has been subjected
to peer review and publication; (3) whether it has a high known or potential rate of error; and (4)
whether it is generally accepted in the relevant scientific community. Kumho, 526 U.S. at 149-50
(citing Daubert, 509 U.S. at 592-94). This list “neither necessarily nor exclusively applies to all
experts or in every case.” Id. at 141. Indeed, the trial court has “the same kind of latitude in
deciding how to test an expert’s reliability . . . as it enjoys when it decides whether or not that
expert’s relevant testimony is reliable.” Id. at 152.
Under this framework, courts first examine whether the proposed witness qualifies as an
expert; that is, whether the proposed witness has specialized knowledge, skill, experience, training,
or education that would assist the trier of fact in understanding the evidence or deciding on
particular issues in the case. Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 485 F. Supp. 2d 310, 318
(S.D.N.Y. 2007) (citing Baker v. Urban Outfitters, Inc., 254 F. Supp. 2d 346, 352 (S.D.N.Y. 2003));
see also Nora Beverages, 164 F.3d at 746.
Second, the Court must examine the relevance and reliability of the proposed expert
testimony. With respect to reliability, “[t]he district court should consider the indicia of reliability
identified in Rule 702: (1) that the testimony is grounded on sufficient facts or data; (2) that the
testimony is the product of reliable principles and methods; and (3) that the witness has applied the
principles and methods reliably to the facts of the case.” Aspex, 483 F. Supp. 2d at 319 (citations
and internal quotations omitted).
2. Qualifications
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Carter is a founding member of Ocean Tomo, LLC, an intellectual capital firm, which
provides intellectual property expert services, valuation, asset and risk management, and corporate
finance. Dkt. No. 210-3, Ex. A at 1. As indicated by his resume, Carter’s work at Ocean Tomo is
focused on intellectual property asset purchase and licensing, damages expert witness testimony in
infringement lawsuits, and intellectual property risk management. Id., Ex. 1 (“Carter CV”).
Previously, Carter was a founding partner at Duff & Phelps Capital Partners Sale/License-Back
Fund, where Carter was co-head of the patent purchase and licensing team. Id. at 1. Carter has
fifteen years of experience participating in the determination of damages in commercial litigation, in
most cases, for intellectual property infringement claims. Id. Carter has testified regarding lost
profits in at least four cases at trial, and in other cases that settled or were arbitrated. Dkt. Nos. 2252, Ex. A at 17-28; 225-3, Ex. B at 6-7. Carter is a Certified Public Accountant (“CPA”), and holds
an MBA, and an undergraduate degree in chemical engineering. Dkt. No. 210-3, Ex. A at 1. He has
taught a masters level course on intellectual property management, which includes a class on
damages. Dkt. No. 225-5.
Defendant asserts that, whatever Carter’s experience in intellectual property valuation, there
is no evidence that he is qualified in market reconstruction. Defendant argues that Carter does not
have education or training in economics, and has not published any economic papers in peerreviewed journals. Mot. Exclude at 7-9. Carter’s only experience with market reconstruction,
Defendant suggests, is from testifying as an expert, which is insufficient experience to qualify him
to offer expert testimony. Id. at 10 (citing IBEW 90 Pension Fund v. Deutsche Bank AG , No. 11
Civ. 4209, 2013 WL 5815472 (S.D.N.Y. Oct. 28, 2013)). Furthermore, Defendant argues that, even
if Carter’s experience testifying as an expert is considered, that experience is “extremely limited.”
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Id.
The Court agrees with Plaintiff that Defendant’s arguments are inconsistent with the Second
Circuit’s liberal application of expert qualification requirements. TC Sys. Inc. v. Town of Colonie,
N.Y., 213 F. Supp. 2d 171, 174 (N.D.N.Y. 2002); Henry v. Champlin Enters., Inc., 288 F. Supp. 2d
202, 220 (N.D.N.Y. 2003) (“Liberality and flexibility in evaluating qualifications should be the rule;
the proposed expert should not be required to satisfy an overly narrow test of his own
qualifications.”). “[C]ourts have not barred an expert from testifying merely because he or she lacks
a degree or training narrowly matching the point of dispute in the lawsuit.” Canino v. HRP, Inc.,
105 F. Supp. 2d 21, 27 (N.D.N.Y. 2000). In the Court’s opinion, Carter’s education and experience
are sufficient to qualify him to testify as an expert on lost profits, and specifically, with respect to
consumer demand and market principles. The Court agrees with Plaintiff that Carter’s opinion
applies “methodologies, analyses and principles” that he would use in other related non-litigation
services. Dkt. No. 225 at 10. It is undisputed that Carter has significant experience in the valuation
and licensing of intellectual property. Mot. Exclude at 7. While not an economist, Carter has
studied economics as part of his MBA and as an undergraduate, Dkt. No. 225, Ex. B at 129, and has
also taught a graduate level course that included a class on lost profits. Finally, Carter has testified
regarding lost profits in at least four other trials and a number of other cases. The Court therefore
finds that Carter has sufficient experience to qualify as an expert under Daubert and Rule 702.
Defendant’s challenges to the strength of Carter’s credentials, “go to the weight, not the
admissibility, of his testimony.” McCullock v. H.B. Fuller Co., 61 F.3d 1038, 1044 (2d Cir. 1995).
3. Reliability of Carter’s Opinion
As stated supra, Carter’s analysis followed the Panduit factors. On the first two factors,
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Carter found that: (1) demand for V-Max can be attributed to the features of the ‘940 Patent and (2)
there were no acceptable non-infringing alternatives. Dkt. No. 210-3 at 23. Carter next determined
Plaintiff’s manufacturing and marketing capacity. Id. at 26. Finally, Carter calculated the profit
Plaintiff would have made but for Defendant’s infringement. Id. at 28-30. The Court considers
Defendant’s specific objections to Carter’s analysis.
a. Methodology for Determining Acceptable Non-infringing Alternatives
The Second Panduit factor requires the patentee to show the “absence of acceptable
noninfringing substitutes.” 576 F.2d at 1156; see generally Grain-Processing, 185 F.3d at 1350-51
(“[A] fair and accurate reconstruction of the ‘but for’ market also must take into account, where
relevant, alternative actions the infringer foreseeably would have undertaken had he not infringed.
Without the infringing product, a rational would-be infringer is likely to offer an acceptable
noninfringing alternative, if available, to compete with the patent owner rather than leave the market
altogether.”). Defendant attacks Carter’s determination that there were no acceptable noninfringing alternatives available to Defendant as being contrary to evidence that there were viable
alternatives. Mot. Exclude at 11-17. Defendant asserts that Carter’s report does not set forth a
methodology for determining whether customers find an alternative to be an acceptable substitute.
Id. at 13.
Carter considered a number of screen cylinder offerings as potentially non-infringing
substitutes. Dkt. No. 210-3, Ex. A at 23. The products he considered included: Defendant’s nonaccused screen cylinders; alternative screen concepts Defendant considered prior to its decision to
manufacture the V-Max; and screen cylinders offered by Plaintiff’s and Defendant’s mutual
competitors. Id. at 24. Carter’s analysis was based on Defendant’s and Plaintiff’s sales, and
39

available information on their customers. Id. at 23. Carter looked at “thousands of customer call
records.” Dkt. No. 225-2, Ex. A at 71-72. Carter’s analysis found—based on the sales data and call
reports—that the potential substitutes did not provide the same benefits as the V-Max or Durashell,9
and therefore were not acceptable alternatives. Dkt. No. 210-3, Ex. A at 26.
The Court finds that Carter’s opinion on the absence of acceptable substitutes is grounded on
“sufficient fact and data” and is the “product of reliable principles and methods.” Carter considered
potential substitutes, but concluded that they were not acceptable based on extensive sales data and
call reports. For example, the V-Max was priced at a premium among Defendant’s range of screen
cylinders, yet its sales consistently grew relative to those other cylinders; Carter therefore concluded
that Defendant’s other cylinders were not acceptable alternatives because they did not have the
benefits of the V-Max.
Defendant essentially argues that Carter did not weigh certain evidence adequately,
including an internal AFT memorandum and certain call reports. The Court finds that these
challenges again go to the weight of Carter’s opinion, not its admissibility. McCullock, 61 F.3d at
1044.
b. “Base Case” Methodology
The Fourth Panduit factor requires a patentee to quantify the profit it would have realized
but for the infringement. Panduit, 575 F.2d at 1156. In a situation where the patentee and infringer
are the only suppliers in the market, the patentee might then seek to “recover profits lost through
every sale made by the infringer.” St. Indus., Inc. v. Mor-Flo Indus., Inc., 883 F.2d 1573, 1578

9

The Durashell is the screen cylinder manufactured and markted by AFT. Dkt. no. 210-3,
Ex. A at 17.
40

(Fed. Cir. 1989). Carter, while noting it would not be “unreasonable to assume” that Plaintiff lost
all of Defendant’s V-Max sales as a result of the alleged infringement, alternatively calculated a
“conservative ‘base case’ based upon an analysis of the sales records produced by the parties.” Dkt.
No. 210-3, Ex. A at 28-29. Carter’s initial methodology for calculating the “base case,” identified
“those customers to which J & L sold an accused V-Max after that customer had initially purchased
an AFT Durashell.” Id. at 29. In his first supplemental report, Carter revised his “base case”
calculation to add “[a]ny J & L V-Max sale recorded after which AFT was confirmed to have been
actively promoting its Durashell to the same mill.” Dkt. No. 210-4, Ex. B at 4.
Defendant argues that Carter has provided no explanation why these assumptions would
reliably identify customers to which a Durashell would have been sold if the V-Max had been
unavailable. Mot. Exclude at 18. Defendant claims that this approach is wholly unprecedented. Id.
at 19. Defendant further argues that by offering the “base case,” Plaintiff recognizes that other
products compete with the V-Max and the Durashell; in a market with multiple competitors, the
“market share” approach is appropriate. Id. Defendant also states that Carter’s opinion lacks indicia
of reliability. Id. at 20-22.
The Court first addresses Defendant’s contention that Carter’s base case methodology is
novel. Plaintiff has cited case-law in response. See Haemonetics Corp. v. Baxter Healthcare Corp.,
593 F. Supp.2d 303, 306 (D. Mass. 2009); Yarway Corp. v. Eur-Control USA, Inc., 775 F.2d 268,
276 (Fed. Cir. 1985). In Haemonetics, for example, the patentee’s expert opined that the patentee
would have only captured 90% of the infringer’s sales “to be conservative” and “taking into account
his ‘experience’ that there are always some customers of the patent infringer would have been
unwilling to buy from the patentee for reasons completely unrelated to the product itself.”
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Haemonetics, 593 F. Supp. 2d at 306. The court found that “[s]uch methodology is not pure
speculation.” Id. Carter’s “base case” methodology is similar, and therefore is not inadmissible
merely because it is novel.
The Court also finds that Defendant’s indicia of unreliability do not warrant excluding
Carter’s opinion. For example, Defendant cites Carter’s failure to consider the amount of time
between when a customer learned about the Durashell and when the customer first purchased a VMax; citing one instance, Defendant argues that it is not “sound economics” to infer that a customer
who purchased a V-Max four-and-a-half years after learning about the Durashell, did so because of
its rebuildability and would have instead bought a Durashell “but for” the infringement. Mot.
Exclude at 20. Defendant states that this is one of many such call reports. Dkt. No. 210-6, Ex. D at
Ex. 13. However, Defendant’s argument, while challenging Carter’s conclusion, does not establish
that Carter’s analysis is unreliable. Defendant’s other arguments similarly go to the weight of
Carter’s opinion, and not its admissibility.
c. Manufacturing Capacity Data
Finally, Defendant contends that Carter’s determination that Plaintiff had “sufficient
manufacturing capacity to meet the incremental demand represented by any quantity of J&L’s
accused sales,” Dkt. No. 210-3, Ex. A at 27, is based on insufficient data, because he used data from
AFT, Inc., not AFT, Mot. Exclude at 23. Defendant contends that AFT does not have any
employees and that it is AFT, Inc. that provides “general services” to operate the business for a
monthly fee paid by AFT. Mot. Exclude at 23. Furthermore, Defendant claims that during the
relevant period AFT, not AFT, Inc., was the owner of the ‘940 Patent. Id. Accordingly, Defendant
claims that Carter’s analysis of AFT’s profit margin should have looked at the amount AFT paid
42

AFT, Inc., in monthly fees, and not AFT, Inc.’s direct fees. Id. at 23-24.
Carter relied on conversations with Mr. Michael Stevens, Dr. Robert Gooding, and M.
Jacques Beauchemin, top level employees at AFT, for his determination that AFT had sufficient
manufacturing capacity. Dkt. No. 210-3, Ex. A at 2, 27. The Exhibits Defendant cites to as
showing that Carter considered AFT, Inc.’s direct costs nowhere indicate that the data is for AFT,
Inc. See, e.g., Dkt. No. 210-6, Ex. D at Ex.7.1 (“Summary of AFT’s Incremental Profit Margin”);
Ex. 7.3 (“Summary of AFT’s Historical Direct Costs”). To the extent Defendant contends that
Carter relies on incorrect facts, that is again an issue of weight, not admissibility.
B. Defendant Summary Judgment Motion on Lost Profits
Defendant moves for summary judgment on Plaintiff’s entitlement to lost profits, even if the
Court denies its Motion to exclude the Carter Opinion, because it contends that the Carter opinion is
insufficient evidence to meet Plaintiff’s burden on lost profits. Def. Mem. at 30. For the same
reasons the Court denied Defendant’s Motion to exclude, Defendant’s Motion for summary
judgment on Plaintiff’s entitlement to lost profits is also denied.
Alternatively, Defendant requests that the Court grant summary judgment on Plaintiff’s
entitlement to lost profits as to any sales of V-Max units in Asia or Europe. Def. Mem. at 30.
Defendant contends that Plaintiff’s customers in Europe and Korea are invoiced by local
subsidiaries, from which the cash flows to AFT, Inc., and then to AFT. Id. Defendant claims that
Plaintiff has not produced evidence that all of the profits for sales by its European and Korean
subsidiaries flow to it and cannot therefore recover lost profits for those sales. Id. (citing Poly-Am.,
L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310-11 (Fed. Cir. 2004) (holding that patent owner
cannot recover the lost profits of its non-exclusive licensee sister corporation )); see also Mars, Inc.
43

v. Coin Acceptors, Inc., 527 F.3d 1359, 1367 (Fed. Cir. 2008) (finding that record did record did not
show subsidiary’s profits flowed “inexorably” to parent and therefore affirming grant of summary
judgment that parent could not recover).
Plaintiff responds that all Durashell screen cylinders are assembled in AFT’s Canada
manufacturing facility, Pl. Opp’n at 31; when a Durashell is sold in Europe or Asia, there is an
intercompany sale between AFT and the local subsidiary, Dkt. No. 232-4, Ex. B (“Beauchemin
Declaration”) ¶ 4. For such an intercompany sale, the local subsidiaries would transfer funds to
AFT, which would make a profit from the sale; the profit made by AFT would be “essentially the
same as if the product was sold to a customer in North America.” Beauchemin Decl. ¶ 6.
Defendant argues that Plaintiff’s evidence is insufficient to establish that the profits flow
“inexorably” to AFT. Def. Reply at 15-16. “Inexorable” means that the profits flow automatically
from the subsidiary to the parent; in other words, the subsidiary’s profits are the parent’s profits.
See Kowalski v. Mommy Gina Tuna Res., 574 F. Supp. 2d 1160, 1163 (D. Haw. 2008) (holding that
profits did not inexorably flow to sole owner of corporation where the flow was “no more
inexorable than [his] intent that it be so”). Mindful of its duty to construe facts in the light most
favorable to the non-moving party, the Court finds that Plaintiff has produced enough evidence that
a rational trier of facts could conclude that the profits of its European and Asian subsidiaries flow
inexorably to AFT. Specifically, Plaintiff has shown that the structure of the relationship between
AFT and its European and Asian subsidiaries is such that the profits for all Durashells sold in
Europe or Asia flow to AFT by intercompany sale. While the qualification that the profit is
“essentially” the same as when AFT invoices the sales itself, suggests that the profits of foreign
sales do not flow automatically to AFT, the Court must construe this in the light most favorable to
44

Plaintiff. Accordingly, Defendant’s Motion for summary judgment on Plaintiff’s entitlement to lost
profits in Europe and Asia is denied.
VII.

CONCLUSION
Accordingly, it is hereby:
ORDERED, that Plaintiff AFT’s Motion (Dkt. No. 208) for summary judgment of

infringement and validity is GRANTED in part and DENIED in part consistent with this
Memorandum-Decision and Order; and it is further
ORDERED, that Plaintiff AFT’s Motion (Dkt. No. 208) is GRANTED to the extent it
seeks summary judgment on: (1) Defendant’s Reverse Doctrine of Equivalents defense; (2) validity
on Defendant’s anticipation/obviousness arguments based on Gillespie; and (3) Defendant’s §
112(b) argument; and DENIED in all other respects; and it is further
ORDERED, that Defendant J&L’s Motion (Dkt. No. 214) for summary judgment is
DENIED; and it is further
ORDERED, that Defendant J&L’s Motion (Dkt. No. 210) to exclude the lost profits opinion
of Andrew W. Carter is DENIED; and it is further
ORDERED, that Defendant J&L’s Motion (Dkt. No. 213) to strike AFT’s new infringement
contention is DENIED; and it is further
ORDERED, that Defendant J&L’s Cross-Motion (Dkt. No. 231) for leave to file an
amended answer is GRANTED; and it is further
ORDERED, that the Clerk of the Court serve a copy of this Memorandum-Decision and
Order on all parties in accordance with the Local Rules.
IT IS SO ORDERED.
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DATED:

March 31, 2015
Albany, NY

46