Integrated Liner Technologies, Inc. v. Specialty Silicone Products, Inc. et al

Filing 62

MEMORANDUM-DECISION and ORDER - That Magistrate Judge Peebles' April 7, 2011 Report-Recommendation (Dkt. No. 55) is ADOPTED in its entirety. That the parties notify Magistrate Judge Peebles in order to schedule further proceedings in accordance with this order. Signed by Judge Gary L. Sharpe on 10/26/2011. (Attachments: # 1 Report-Recommendation) (jel, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
____________________________________
INTEGRATED LINER TECHNOLOGIES,
INC.,
Plaintiff,

1:09-cv-1285
(GLS/DEP)

v.
SPECIALTY SILICONE PRODUCTS,
INC. and SSP, INC.,
Defendants.
____________________________________
APPEARANCES:
OF COUNSEL:
FOR THE PLAINTIFF:
Heslin, Rothenberg Law Firm
5 Columbia Circle
Albany, NY 12203

BRETT M. HUTTON, ESQ.
DAVID P. MIRANDA, ESQ.

FOR THE DEFENDANTS:
Stocki, Slevin Law Firm
90 State Street, Suite 701
Albany, NY 12207

MARY ELIZABETH SLEVIN,
ESQ.

Kenealy Vaidya LLP
515 East Braddock Rd.
Alexandria, VA 22314

AJIT J. VAIDYA, ESQ.
WILLIAM T. SLAVEN, IV, ESQ.

Gary L. Sharpe
District Court Judge

MEMORANDUM-DECISION AND ORDER

I. Introduction
Plaintiff Integrated Liner Technologies, Inc. (ILT) commenced this
action against Specialty Silicone Products, Inc. and SSP, Inc. (SSP
defendants),1 asserting claims of patent infringement. (Compl., Dkt. No. 1.)
Pursuant to an order by Magistrate Judge Peebles, the parties agreed on
the construction of certain of the terms encompassed in the claims of the
two patents in issue. (Dkt. Nos. 43, 44.) Despite their efforts, the parties
were unable to agree on the construction of the following terms: (1)
“adhesive”; (2) “primer”; (3) “bond directly/directly bonded”; and (4) “layer.”
(Dkt. No. 44.)
After examining the parties’ comprehensive submissions and
presiding over a February 15, 2011 Markman hearing, Judge Peebles
memorialized his findings and recommendations in an April 7 ReportRecommendation (R&R). (Dkt. No. 55.) Pending are the objections of ILT
and SSP defendants to that R&R. (Dkt. Nos. 56, 57.) For the reasons that
follow, the R&R is adopted in its entirety.
III. Standard of Review

1

ILT also named Streck, Inc. as a defendant, but subsequently filed a notice of
voluntary dismissal of claims against that defendant pursuant to Fed. R. Civ. P. 41(a)(1)(i).
(Dkt. Nos. 15, 16.)

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Where a party timely objects to a magistrate judge’s decision
regarding a non-dispositive pre-trial matter, the district court must “modify
or set aside any part of the order that is clearly erroneous or is contrary to
law.” Fed. R. Civ. P. 72(a).
IV. Discussion
A.

Motion to Strike
In response to a motion to strike by SSP defendants, Magistrate

Judge Peebles recommended that paragraphs 23, 26, 28, 33, 34 and 36 of
the declaration of ILT’s expert, Patrick T. Mather, Ph. D., be stricken. (Dkt.
No. 55 at 8; Dkt. No. 49, Attach. 1.) ILT did not object on this point.
Accordingly, the court adopts Judge Peebles’ recommendation that
paragraphs 23, 26, 28, 33, 34 and 36 of the declaration of Patrick T.
Mather, Ph. D., be stricken. (Dkt. No. 49, Attach. 1.)
B.

Claim Terms in Dispute
Following submissions by the parties and a Markman hearing, Judge

Peebles recommended definitions of the following disputed claim terms: (1)
“adhesive”; (2) “primer”; (3) “bond directly/directly bonded”; and (4) “layer.”
(Dkt. No. 55.) SSP defendants objected to the definitions of “primer” and
“bond directly/directly bonded,” while ILT objected to the recommended
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definition of “layer.” (Dkt. Nos. 56, 57.)
Judge Peebles recommended that the term “adhesive” be defined as
“a substance that is capable of bonding two or more solids together by
surface attachment.” (Dkt. No. 55 at 26.) Neither party objected to this
recommendation. As such, the court adopts Judge Peebles’ recommended
definition for the term “adhesive.”
As for “primer,” Judge Peebles recommended that the term be
construed as “a non-adhesive substance utilized as a surface treatment
that enhances bond strength.” (Dkt. No. 55 at 22.) SSP defendants
objected to this recommendation on the grounds that a proper definition of
“primer” should include compositional language and mention of the fact that
“a suitable primer should ‘increase[] the time allowed for bonding.’” (Dkt.
No. 57 at 3-4.)
SSP defendants further objected to Judge Peebles’ recommendation
that “bond directly/directly bonded” be construed to mean “joined together
through surface contact, potentially with the presence of an intervening
material.” (Dkt. No. 55 at 30; Dkt. No. 57 at 4-9.) SSP argued that the
phrase “potentially with the presence of an intervening material” was
“overbroad and . . . unsupported by the patents.” (Dkt. No. 57 at 5.)
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Lastly, Judge Peebles recommended that the term “layer” be defined
as “a detectable quantity of a material that is at least partially distributed on
a surface.” (Dkt. No. 55 at 32-33.) ILT objected to this definition, arguing
that “‘layer should be construed based on its common dictionary definitions
that require ‘covering a surface.’” (Dkt. No. 56 at 2.) For the reasons
articulated in Judge Peebles’ R&R, and because the recommendations
contained therein are not clearly erroneous or contrary to law, the court
adopts Judge Peebles’ recommended definitions for the terms “primer,”
“bond directly/directly bonded,” and “layer.”
V. Conclusion
WHEREFORE, for the foregoing reasons, it is hereby
ORDERED that Magistrate Judge Peebles’ April 7, 2011 ReportRecommendation (Dkt. No. 55) is ADOPTED in its entirety; and it is further
ORDERED that the parties notify Magistrate Judge Peebles in order
to schedule further proceedings in accordance with this order; and it is
further
ORDERED that the Clerk provide a copy of this MemorandumDecision and Order to the parties.
IT IS SO ORDERED.
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October 26, 2011
Albany, New York

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