PRECISION FABRICS GROUP, INC. v. TIETEX INTERNATIONAL, LTD.

Filing 152

MEMORANDUM OPINION AND ORDER signed by JUDGE THOMAS D. SCHROEDER on 11/21/2016. For the reasons stated herein, PFG's motion for partial summary judgment (Doc. 111 in case 1:13cv645, Doc. 81 in case 1:14cv650) is GRANTED IN PART AND DENIED IN PART and PFG's motion to exclude expert testimony (Doc. 116 in case 1:13cv645, Doc. 86 in case 1:14cv650) is GRANTED IN PART AND DENIED IN PART. Associated Cases: 1:13cv645, 1:14cv650 (Engle, Anita)

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA

PRECISION FABRICS GROUP, INC.,
Plaintiff,
v.
TIETEX INTERNATIONAL, LTD.,
Defendant.

PRECISION FABRICS GROUP, INC.,
Plaintiff,
v.
TIETEX INTERNATIONAL, LTD.,
Defendant.

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1:13-cv-645

1:14-cv-650

MEMORANDUM OPINION AND ORDER
THOMAS D. SCHROEDER, District Judge.
This is an action alleging patent infringement involving
flame-retardant technology for fabrics.
motions:

Before the court are two

Precision Fabrics Group, Inc. (“PFG”) moves for partial

summary judgment as to its claim against TieTex, Inc. (“TieTex”)
for infringement and TieTex’s counterclaims alleging inequitable
conduct and invalidity of PFG’s patents (Doc. 111); 1 and PFG moves

1 All citations are to the docket page in the record in case number
1:13cv645. TieTex has withdrawn its remaining counterclaims asserting
abuse of process and unfair and deceptive trade practices. (Doc. 147.)

to exclude the testimony of TieTex’s expert witness (Doc. 116).
The court heard argument on the motions on October 25, 2016.

For

the reasons explained below, PFG’s motion for summary judgment on
its claim of patent infringement will be denied, its motion to
exclude TieTex’s expert witness will be granted in part and denied
in

part,

and

counterclaims

its
for

motion

for

inequitable

summary
conduct

judgment

and

on

invalidity

TieTex’s
will

be

granted and those claims will be dismissed.
I.

BACKGROUND
PFG filed this action on August 6, 2013, alleging that certain

TieTex products incorporating flame-retardant fabrics infringe
PFG’s U.S.
('639

Patents

Patent). 2

Nos.

(Doc.

8,796,162
29

at

('162

2-3.)

Patent) and 8,501,639

PFG’s

patents

describe

lightweight materials designed to retard fire for a variety of
applications,
vehicles.

including

garments,

furniture,

appliances,

and

(Doc. 112-1 at 2; Doc. 112-2 at 2.)

PFG’s patents began with its provisional patent application
in May 2001. (Doc. 114 at 3.) Around 2004, TieTex began developing
a similar fabric that would operate as a fire-retardant cloth for

2

PFG’s initial complaint claimed infringement of the ‘639 patent. A
year after that lawsuit was filed, the ‘162 patent was issued. According
to PFG, the ‘162 patent is a continuation of the ‘639 patent. (Doc. 1
at 3, 1:14-CV-650.) PFG unsuccessfully sought TieTex’s consent to amend
the initial complaint to include the ‘162 patent, but TieTex refused.
(Id.) PFG thereafter filed a second complaint under docket number 1:14CV-650 for the ‘162 patent. With respect to all pending motions, the
docket filings are substantively identical.

2

mattresses.

(Id.)

TieTex coats its fabric with a solution known

as SV-X41 (id. at 4), which is manufactured by Royal Adhesives and
Sealants, Inc. (“Royal Adhesives”) (Doc. 114-7 at 21).
began infusing SV-X41 onto its fabrics around 2012.

TieTex

(Doc. 114 at

4.)
TieTex concedes that its fabrics generally function similarly
to PFG’s patented fabric but contends that they are not coated
with an “intumescent,” as covered by PFG’s patents.
7-8.)

(Doc. 133 at

The parties disputed the meaning of the term “intumescent”

(id.), and after briefing and a hearing on claim construction,
this court held that “intumescent,” as defined in PFG’s patents,
means “a substance that swells and chars upon exposure to heat or
flame”

(Doc. 57 at 20-21).

TieTex subsequently conceded that its

coating “charred” when exposed to heat or flame.

(Doc. 133 at 7.)

It continues to claim, however, that it does not “swell” under
those conditions and therefore that TieTex’s products do not
infringe PFG’s patents.

(Id. at 18-19.)

Thus, the parties agree

that this issue — whether SV-X41 swells upon exposure to heat or
flame — is the sole issue in PFG’s infringement claim against
TieTex.

(Doc.

114

at

5;

Doc.

133

at

7.)

By

way

of

its

counterclaims, TieTex seeks a declaration that PFG’s patents are
invalid, partly based on its alleged inequitable conduct.
32 at 10-22.)

(Doc.

Before reaching the merits-based claims, however,

the court must first address PFG’s motion to exclude the testimony
3

of TieTex’s expert witness, Dr. Richard Horrocks, upon whom TieTex
relies to oppose PFG’s infringement claim.
II.

ANALYSIS
A.

PFG’s Motion to Exclude Expert Witness

TieTex seeks to offer the expert testimony of Dr. Richard
Horrocks, a chemistry professor at the University of Bolton in
England, who performed tests on SV-X41 and concluded that it did
not swell under heat or flame.

(Doc. 114-11 at 7; Doc. 119-2.)

PFG moves to exclude his testimony on the grounds that it was not
timely disclosed, and, alternatively, that it is inadmissible
under Federal Rule of Evidence 702.

Each ground will be addressed

in turn.
1.

Timeliness of Disclosure

PFG argues that the court should exclude Horrocks’ expert
report and testimony under Federal Rule of Civil Procedure 37(c)(1)
because TieTex did not timely disclose what it describes as the
“fundamental premise” of his opinion pursuant to Federal Rule of
Civil Procedure 26(a)(2)(B).

(Doc. 119 at 8.)

TieTex contends

that Horrocks’ opinions and bases were adequately disclosed. (Doc.
132 at 10.)
Rule 37(c)(1) prevents a party from using testimony that it
previously failed to disclose under Rule 26(a)(2).

Under Rule

26(a), the party offering a retained testifying expert must provide
a written report containing various categories of information
4

about the expert and his opinions.

Fed. R. Civ. P. 26(a)(2)(B).

Pertinent here, the report must include “a complete statement of
all opinions the witness will express and the basis and reasons
for them.”

Fed. R. Civ. P. 26(a)(2)(B)(i).

Failure to timely

provide the information required by Rule 26(a) may result in
exclusion of the expert’s testimony.

Fed. R. Civ. P. 37(c)(1); S.

States Rack & Fixture, Inc. v. Sherwin-Williams Co., 318 F.3d 592,
596–97 (4th Cir. 2003).
According to PFG, Horrocks’ expert opinion that SV-X41 does
not swell when exposed to heat or flame is based on his conclusion
that an accurate test must involve a coating that is “thermally
thin” – that is, less than 100 microns thick.

(Doc. 119 at 8.)

PFG further interprets his opinion to be that a thermally thin
coating cannot be an intumescent.

(Id.)

It argues further that

this understanding was not included in Horrocks’ August 2015 expert
report (Doc. 119-2) and was not disclosed until Horrocks’ November
2015 deposition (Doc. 119-1), on the last day of expert discovery,
just a week before the deadline for filing motions to dismiss and
one month before the deadline for summary judgment motions.
119 at 9.)

(Doc.

PFG claims prejudice – because its expert, Dr. Gajanan

Bhat, conducted testing on much thicker applications of SV-X41,
which he opines resulted in swelling - and seeks preclusion as a
sanction under Rule 37(c)(1).

(Id. at 8.)

5

Application of a Rule 37 sanction depends first on a finding
that a party violated Rule 26(a)’s disclosure requirements.

Here,

the court agrees with TieTex that it did not violate Rule 26 in
not disclosing Horrocks’ understanding of thermally thin coatings
in his report.

Horrocks’ opinion is that SV-X41 does not swell

when exposed to heat or flame.

The basis for his opinion derives

from the results of his experiments and his analysis of SV-X41’s
chemical components, as explained in detail in his report.

(Doc.

119-2.)
Even assuming that TieTex violated Rule 26, however, the court
finds that a Rule 37 sanction is not appropriate.

A party who

fails to “provide information or identify a witness as required by
Rule 26(a)” may avoid exclusion if “the failure was substantially
justified or is harmless.”

Fed. R. Civ. P. 37(c)(1).

District

courts have “broad discretion to determine whether a nondisclosure
of evidence is substantially justified or harmless.”
318 F.3d at 597.

S. States,

The Fourth Circuit has articulated five factors

the court should consider when exercising this discretion:
(1) the surprise to the party against whom the evidence
would be offered; (2) the ability of that party to cure
the surprise; (3) the extent to which allowing the
evidence would disrupt the trial; (4) the importance of
the evidence; and (5) the nondisclosing party’s
explanation for its failure to disclose the evidence.
Id.

The first four factors primarily relate to the question of

harmlessness, while the fifth factor relates to a showing of

6

substantial justification.
Before

weighing

the

Id.
five

factors,

it

is

important

to

contextualize Horrocks’ statements about thermally thin coatings.
As

demonstrated

by

Horrocks’

deposition,

PFG

overstates

his

testimony. Horrocks defined a thermally thin coating as “one which
when heated on the surface it is so thin that there is no heat
gradient” and where “[t]he back of it is assumed to be the front
temperature.”

(Doc. 119-1 at 89.)

He distinguished this from a

thermally thick coating, “where you have a hot surface, a cool
back and you have a thermal gradient.”

(Id.)

He explained:

Now, in a thermally thin system when you irradiate if
there is any chemistry and physics going to occur it all
occurs simultaneously.
In a thermally thick one it will occur at the surface
and other reactions will have time, depending on their
temperature rates and what have you, to take place
underneath that surface. So a thick material containing
a given flame-retardant will behave in many cases quite
differently than a thin material.
(Id. at 90.)

Horrocks distinguished this from a physically thin

or thick coating.

(Id. at 89.)

He did not say that testing SV-

X41 for swelling propensities required that he test a 45-micronthick coating of SV-X41 due to his understanding of thermally thin
coatings.

Rather, he based his testing conditions on what he

determined

to

be

TieTex’s fabrics.

the

typical

coating

(Doc. 133 at 12-13.)

thickness

of

SV-X41

on

Furthermore, Horrocks did

not say that thermally thin coatings cannot be intumescents as a

7

categorical matter.

Instead, after demurring to a question posed

by PFG’s counsel as to whether thicker SV-X41 coatings would have
an impact on his expert opinion, he said:
[I]n a thermally thin [situation], which means
a physically thin situation, you can have an
intumescent coating behave quite differently
from a thermally thick [coating]. And may not
even be intumescent at all, because there is
no time for the physics, this blowing process
which is physics to occur as fast as or faster
than the chemistry which is trying to form a
char.
(Doc. 119-1 at 91 (emphasis added).)

Horrocks later answered that

he would not “expect” a thermally thin coating to swell.

(Id. at

206.)
Horrocks was then asked if he had an opinion on the swelling
capacity of a 150-micron-thick film of SV-X41 – that is, one that
is physically thicker.
really have an opinion.”

(Id. at 214.)
(Id.)

He responded, “I do not

Referring to the testing by PFG’s

expert, Bhat, who tested SV-X41 at much thicker applications,
Horrocks said he would “take them [Bhat’s measurements from his
testing] as read.”

(Id.)

But he challenged “the model” that Bhat

used and explained that even a thicker coating of nylon (which is
not an intumescent) will swell and char when exposed to heat.
at

214-15.)

He

concluded

that,

because

nylon

can

(Id.

exhibit

intumescent properties under these circumstances, it “is relevant
to the thermal thick/thin argument” and falls “into a grey area”
that

highlights

the

complexity
8

of

intumescent

studies.

(Id.)

Ultimately, Horrocks opined that Bhat’s conclusion that SV-X41
swells is inaccurate, because he failed to take into account the
“relaxation” of the fabric strains on which Bhat coated SV-X41.
(Doc. 119-2 at 30-32, 34-35.)

Horrocks explained that Bhat should

have heated up and measured the swelling of the fabrics before
applying the solution.

(Id. at 32.)

According to Horrocks, this

practice would have allowed Bhat to isolate his analysis of SVX41, as he could subtract any measured degree of fabric swelling
when measuring for SV-X41 swelling.

(Id.)

With this understanding in mind, it becomes apparent that the
factors enumerated in Southern States do not favor PFG.

First, it

is unclear how much, if any, surprise Horrocks’ opinions could
have actually caused.

Horrocks’ expert report clearly reflected

that he tested SV-X41 at a thickness of 45 microns and chose that
amount because he calculated it to approximate TieTex’s actual
application.

He noted that “the degree of swelling in any coating

would be proportional either to the amount of swelling agent
present or to the thickness of the coating film.”

(Doc. 119-2 at

33.) Opining that “the coating formulation SV-X41 does not contain
a swelling agent designed to increase overall thickness,” he thus
put PFG on notice that the thickness of the coating film might
play a role in any observations.

(Id. at 33, 34.)

Moreover, PFG

has had ample time to respond to Horrocks’ report, which was filed
several months before the end of discovery.
9

Indeed, PFG’s expert,

Bhat, offered a rebuttal report challenging many of Horrocks’
conclusions based on what Bhat terms an “extremely thin coating.”
(Doc. 114-12 at 8.)

Horrocks’ deposition further reflects that he

had earlier mentioned in a declaration his criticism of Bhat’s
work because it used a thicker coating.
In

addition,

Horrocks’

curriculum

(Doc. 119-1 at 89-92.)
vitae

listed

previous

publications he had authored about thermally thin coatings.
Doc. 119-2 at 65 (citing ADVANCES
Horrocks

&

D.

Price

eds.,

IN

(See

FIRE RETARDANT MATERIALS 180 (A.R.

2008)

(discussing

fire-retardant

characteristics of thermally thin and thermally thick textiles);
HANDBOOK

OF

TECHNICAL TEXTILES 247 (A. Richard Horrocks & Subhash C.

Anand eds., 2000) (discussing thermally thin textiles)). 3

Thus,

in preparing for his expert deposition, PFG’s counsel and PFG’s
expert witness no doubt would have been aware of Horrocks’ writings
on the subject.
Second,

it

is

doubtful

PFG

would

have

done

anything

differently to “cure” the surprise, assuming there was any.

PFG

has based its argument of infringement on Bhat’s testing of SVX14 coating at an approximate thickness of 215 microns.

PFG has

done so because, presumably, that is the thickness it believes
TieTex’s coating to be.

In any event, if PFG were to contend that

thermally thin coatings can swell, it was never foreclosed from

3

Copies of the relevant pages were presented during the hearing on the
present motions.

10

preparing and submitting expert testimony to that effect.
Third, permitting Horrocks’ opinions would not disrupt trial.
Indeed, at oral argument, PFG repeatedly argued that the thickness
of the SV-X41 coating did not matter.

PFG’s criticism seems to be

that Horrocks’ use of a thermally thin coating facilitated a lesser
amount of swelling that would not be easily measurable by Horrocks’
use of his micrometer.
Fourth, for similar reasons and because Horrocks’ testimony
raises a genuine dispute as to the sole material issue remaining,
the evidence is important to resolving this lawsuit.
Fifth, as noted above, TieTex presents a reasonable argument
as to why it did not disclose Horrocks’ understanding of thermally
thin coatings before Horrocks’ deposition.

It is not clear that

Horrocks’ statements about thermally thin and thick coatings are
foundational to his opinions, and in any event what was disclosed
was adequate.
For all these reasons, PFG’s motion to exclude Horrocks’
testimony on this ground will be denied.
2.

PFG’s Daubert Challenge

PFG moves to exclude Horrocks’ testimony as inadmissible
under Federal Rule of Evidence 702 and Daubert v. Merrell Dow
Pharmaceuticals, Inc., 509 U.S. 579 (1993).
Under Rule 702, an expert witness is permitted to offer
opinion testimony if he “is qualified as an expert by knowledge,
11

skill,

experience,

training,

or

education.”

The

witness’s

knowledge must help the trier of fact understand the evidence or
determine

a

fact

in

issue,

the

testimony

must

be

based

on

sufficient facts or data, the testimony must be the product of
reliable principles and methods, and the witness must reliably
apply the principles and methods to the facts of the case.

Id.

This rule “imposes a special obligation upon a trial judge to
‘ensure that any and all [expert] testimony . . . is not only
relevant, but reliable.’”

Kumho Tire Co. v. Carmichael, 526 U.S.

137, 147 (1999) (quoting Daubert, 509 U.S. at 589).
that Horrocks’

testing

methods

disputed matter and reliable.

must

be

both

This means

relevant

to

the

Daubert, 509 U.S. at 597 (“[The]

trial judge [has] the task of ensuring that an expert's testimony
both rests on a reliable foundation and is relevant to the task at
hand.”).

The court has “broad latitude” to consider any “factors

bearing on validity that the court finds to be useful.”

EEOC v.

Freeman, 778 F.3d 463, 466 (4th Cir. 2015) (quoting Westberry v.
Gislaved Gummi AB, 178 F.3d 257, 261 (4th Cir. 1999)).

However,

“[e]xpert testimony rooted in subjective belief or unsupported
speculation does not suffice.” Zuckerman v. Wal-Mart Stores E.,
L.P., 611 F. App’x 138, 138 (4th Cir. 2015) (per curiam) (internal
quotation marks omitted). 4

4

Unpublished opinions of the Fourth Circuit are not precedential.

12

See

PFG does not argue that Horrocks is not qualified.

He is a

chemistry professor at the University of Bolton in England (Doc.
119-1 at 8) and has over 40 years of experience studying flameretardant materials and intumescent chemistry (Doc. 133 at 20).
He has published over 200 times as to his testing of flameretardant fabrics, including in a host of peer-reviewed journals.
(Doc. 119-1 at 66-74, 256-59, 266-68).

Nor does PFG argue that

Horrocks’ opinions are not relevant to the issue of infringement,
which at this point involves whether SV-X41 swells when exposed to
heat or flame.
answers

this

Indeed, Horrocks’ testing directly analyzes and
question

in

the

negative.

PFG

reliability of Horrocks’ methods and results.

challenges

the

(Doc. 119 at 5.)

To assess whether SV-X41 swelled when exposed to heat or
flame, Horrocks applied a 45-micron-thick layer of the coating to
two surfaces: a steel plate and a glass woven fabric.
2 at 8-17.)

(Doc. 119-

He used this thickness because he concluded, based on

a series of calculations, that it was the approximate thickness of
SV-X41 used on TieTex fabrics.

(Doc. 119-1 at 83-84.)

After

exposing the SV-X41-coated surfaces to heat and open flame, he
concluded that, as to the steel surface and based only on his
visual observation, SV-X41 did not swell.

(Doc. 119-2 at 8-17.)

Collins v. Pond Creek Mining Co., 468 F.3d 213, 219 (4th Cir. 2006)
(recognizing that “we ordinarily do not accord precedential value to our
unpublished decisions” and that such decisions “are entitled only to the
weight they generate by the persuasiveness of their reasoning” (citation
omitted)).

13

He did, however, measure the coating applied to glass fabric. (Id.
at 14.)

Using an engineering-quality electronic micrometer with

a movable thumbwheel that measured with an accuracy of 2.5 microns
(that is, one tenth of one thousandth of an inch) 5 (Doc.

119-1 at

30, 34, 36), he observed that the coating grew by 10 microns (to
a total of 55 microns) but believed this result to be within his
calculated 22 percent experimental rate of error.

(Doc. 119-2 at

15-16.)
PFG argues that Horrocks’ testing is unreliable because it
(1) employed a thumbwheel caliper, which involved a “subjective”
method of measurement; (2) improperly compared measurements of
heat-exposed and non-heat-exposed regions of the tested fabrics;
(3) included an ill-defined error rate that allowed him to ignore
any swelling less than 22 percent of measured samples; (4) was
premised on an incorrect assumption on the thickness of SV-X41
coating on TieTex fabrics; (5) failed to account for the structure
of the glass fabric he used in his testing; and (6) contradicted
his own research and efforts to evaluate intumescence.

(Doc. 137

at 2-3, 5.)
TieTex argues that these are criticisms that affect the weight
to be given Horrocks’ testimony but not its admissibility.

(Doc.

5 A micron is one thousandth of a millimeter.
By comparison, the width
of a human hair is 40 to 80 microns. (Doc. 133-7 at 115; Doc. 133-6 at
8 (citing ROBERT R. OGLE, JR. & MICHELLE J. FOX, ATLAS OF HUMAN HAIR: MICROSCOPIC
CHARACTERISTICS 28 (1998)).)

14

132 at 14-18.)

TieTex is correct, with one exception.

The bulk of PFG’s criticisms relate to Horrocks’ application
of SV-X41 to glass fabric and his use of an electronic micrometer
to measure for swelling.

Horrocks employed glass fabrics because

he

his

believed,

based

on

extensive

experience

in

testing

intumescent fabrics, they would be the best substrate to allow him
to test for intumescent capabilities.

(Doc. 119-1 at 13-16.)

He

concedes that glass fabrics have an uneven surface, which could
mask intumescent swelling, and that a microscopic technique would
be

needed

to

detect

any

swelling

depressions in the fabric.
62.)

that

may

occur

into

any

(Id. at 33, 73, 77-78, 149-50, 160-

But he defends his use of a thumbwheel micrometer and the

application of his error rate as necessary to ensure the accuracy
of his results.
According

(Id. at 31, 235.)
to

Horrocks,

a

thumbwheel

micrometer

is

very

sensitive – using a digital read-out measuring increments of 2.5
microns - and is sufficiently objective for his purposes to conduct
such miniscule measurements.

(Id. at

36-37, 41-42.)

PFG argues

that a micrometer is an unreliable device in this setting because
it must be manipulated manually by turning a thumbwheel in an
effort

to

flexible.

sense

resistance

(Doc. 119 at 18.)

in

measuring

a

substance

that

is

Horrocks responds that it is actually

more accurate than the “standard method” of using a device with a
“pressure foot” because the foot was larger than the flame surface
15

sought to be measured.

(Doc. 119-1 at 37-38.)

Thus, according to

Horrocks, the micrometer can be reliably operated on these surfaces
with “quite reproducible” results, and the slight variability of
the

results

is

inherent

in

the

ordinary

application

instrument and the swelling of the fabric itself.

of

the

(Id. at 41-42,

59, 77, 205, 226, 234-36.)
PFG criticizes the thickness of SV-X41 that Horrocks tested.
Horrocks’ testing of SV-X41 at a thickness of 45 microns differs
substantially from the 215-micron thickness used by PFG’s expert.
Horrocks contends that the thickness he used best represented the
typical thickness of SV-X41 used on TieTex fabrics. (Id. at 20102.)

Horrocks’

assumed

thickness

was

based

on

a

series

of

calculations applying the average density, weight, and volume of
other TieTex fabrics.

(Id. at 199-202.) Horrocks criticizes the

thickness

PFG’s

used

“unrealistic[]”

by

because

it

expert

as

simulated

a

“inappropriate”
“completely

and

different”

model (i.e., thicker application) than that used by TieTex in its
fabrics.

(Id. at 191, 194.)

measurements on

PFG’s expert, Bhat, based his

magnified photographs of TieTex fabrics.

(Doc.

114 at 7-9; Doc. 114-2, ¶¶ 22, 24.)
On the current record, the court cannot say that either
expert’s testing is the only proper application of SV-X41 for
producing

reliable

results,

or

even

which

expert

approximated the application used in TieTex fabrics.
16

has

best

PFG’s images

of

TieTex’s

acknowledges

SV-X41
that

coatings

TieTex

are

“foams”

thickness of the coating layer.

probative,

its

coating,

but

PFG

increasing

also
the

(Doc. 119 at 7; Doc. 132 at 15.)

Whether and how foaming affects intumescence qualities is unclear
on this record and remains a disputed issue of fact.
Whatever the criticisms of Horrocks’ techniques in performing
his measurements (Doc. 119-1 at 5, 16-18), it is clear that his
methods of testing flame-retardant fabrics have been peer-reviewed
and published approximately 200 times (id. at 66-74, 256-59, 26668).

Apart from his use of a micrometer rather than a device with

a pressure foot and his decision to measure different areas of the
fabric after exposure to heat, it is not clear that his method
differed so substantially from prior methods as to render his
results unreliable.

Horrocks confirmed that he used a similar

method of coating and drying SV-X41 as he did in past testing of
intumescent fabrics.

(Id. at 99.)

He also explained that many of

the techniques that PFG cites in its criticism of his testing
concerned

different

types

of

fabrics

and

coatings

therefore not appropriate when testing SV-X41.
267-69.)

and

were

(Id. at 64-65,

He defended his methodology of testing heat-exposed and

unexposed areas of the glass fabric on the grounds that the mere
testing of the fabric (i.e., before exposing to heat or flame)
“itself can change the results of what you are trying to measure”
and lead to unreliable results.

(Id. at 180.)
17

Horrocks also explained how he calculated his experimental
rate of error.

His testing involved coating glass fabric samples

with SV-X41 before exposing them to heat.

(Doc. 119-1 at 160-77,

234-37; 258, 260-62.) He used the electronic micrometer to measure
the thickness on each surface eight times.

(Id.)

He rounded his

measurements to the nearest hundredth of a millimeter, rounding
down if the caliper recorded a measurement of five thousandths of
a millimeter (i.e., a measurement of .365 millimeters was recorded
as .360).

(Id. at 37, 75-77.)

Horrocks then added these sixteen

measurements (Doc. 119-2 at 14-15) and divided the sum by sixteen
to calculate an average measurement.
37; 258, 260-62.)

(Doc. 119-1 at 160-77, 234-

He then calculated the differences between his

16 measurements and the mean.

(Id.)

He added those figures and

divided them by 16 to calculate the average deviation in his
measurements, equaling .02 millimeters, or 20 microns.

(Id.)

Because the coated fabric Horrocks used in his testing was 45
microns thick, he divided his average measurement deviation, 20,
by 45, producing a 44 percent difference.

(Id.)

This 44 percent

figure became his rate of error in measuring unexposed samples of
SV-X41.

(Id.)

He used the same method to calculate his rate of

error when measuring heat-exposed samples of SV-X41, finding an
average measurement deviation of .01 millimeters, or 10 microns.
(Id.

at

162-64.)

Divided

by

45,

this

equaled

22

percent,

reflecting a 22 percent error rate for his measurement of charred
18

regions.

(Id. at 162-64, 167-68.)

Horrocks

explained

that

these

error

rates

reflect

“composite[s] of human error and technical error, the error in
making those readings.”

Id.

 ( at 260-61.)

He also noted that his

error rates reflected the error-prone nature inherent in measuring
such thin coatings:
[T]he measurements they are quite error prone,
but combined with the other evidence this is
not a swelling material. When it is at the
thickness of the thickness that it is in the
Tietex fabrics, which is 50 microns or less,
it is - you have to take all the evidence
together. It is a typical - of any scientific
conclusion. You do not use one technique to
prove
something.
You
use
a
number
of
techniques. Some are semi-qualitative. Some
are quantitative. Some are semi-quantitative.
So taking it on balance there is no swelling
property in a film - in this coating for a
film of that thickness.
(Id. at 172.)
Horrocks opined that his methodology in calculating his error
rate would not be criticized in peer-reviewed journals in his area
of applied polymer science.

(Id. at 258-59.)

Moreover, PFG’s

expert, Bhat, did not criticize Horrocks’ calculation of it.

Bhat

also conceded that the practice of calculating and using an error
rate when conducting scientific tests is “widely used,” despite
not calculating or applying an error rate in his own testing.
(Doc. 133-10 at 147, 151.)
Horrocks’

error

rate

was

Bhat also agreed that, assuming
accurately

19

calculated,

his

testing

revealed that SV-X41 did not swell when exposed to heat.

(Doc.

133-10 at 150-52, 168-69.)
The court is satisfied that Horrocks’ calculated rate of error
meets the third factor under Daubert.
94.

Daubert, 509 U.S. at 593-

Horrocks has calculated his error rate by way of “scientific

studies, [and] not by assumption.”
F.3d 261, 274 (4th Cir. 2003).

United States v. Crisp, 324

While PFG criticizes Horrocks’

calculation and application of his error rate, (Doc. 119 at 1920),

“[t]he

potential

rate

of

error

need

not

accurate,” but based on sufficient evidence.
States, 75 Fed. Cl. 294, 301 (2007).

be

completely

Banks v. United

PFG’s disagreements with

Horrocks’ potential rate of error are therefore insufficient to
exclude his testimony at this stage.

Id.

Moreover, Horrocks made use of standards and controls when
conducting his experiments.

When measuring SV-X41 for swelling,

he compared sections of SV-X41 that were exposed to heat with
control specimens that were not.

(Id. at 138, 151-52.)

He also

used surfaces and flame sources that complied with standards
commonly used when testing textiles. (Id. at 15, 27-29.) Finally,
his method also appears to enjoy “general acceptance” within his
relevant community, based on its having been extensively published
and approved in peer-reviewed articles.

(Id. at 66-74, 256-59.)

Notably, the inventors of PFG’s patented fabrics submitted several
references

of

Horrocks’

work

in
20

applying

for

the

patents

in

question, indicating some respect for Horrocks’ studies in the
field of intumescent technology.

(Doc. 32 at 19.)

Daubert calls for courts to assess the evidentiary reliability
of scientific evidence “based upon scientific validity.”
509 U.S. at 590 n.9 (emphasis in original).

Daubert,

Scientific validity

asks, “Does the principle support what it purports to show?”

Id.

In this case, as to the testing on glass fabrics the answer appears
to be yes.

Horrocks’ testing methods support their ultimate

purpose - to determine whether SV-X41 swells when exposed to heat.
In this respect, PFG’s motion is something short of a “true Daubert
challenge,” as it fails to argue that Horrocks’ methodology has no
standards for application, cannot be replicated, and has not been
peer-reviewed.

TFWS, Inc. v. Schaefer, 325 F.3d 234, 240 (4th

Cir. 2003) (“TFWS does not mount a true Daubert challenge, for it
does not argue that these methods have not been tested, have not
withstood peer review and publication, have excessive rates of
error, have no standards for their application, or have not been
accepted in their field.”)
Assessing the credibility and weight of the testimony is the
role of the jury.

“Vigorous cross-examination, presentation of

contrary evidence, and careful instruction on the burden of proof
are the traditional and appropriate means of attacking shaky but
admissible evidence.”
v.

Baller,

519

F.2d

Daubert, 509 U.S. at 596; see United States
463,

466
21

(4th

Cir.

1975)

(“Unless

an

exaggerated

popular

opinion

of

the

accuracy

of

a

particular

technique makes its use prejudicial or likely to mislead the jury,
it is better to admit relevant scientific evidence in the same
manner as other expert testimony and allow its weight to be
attacked by cross-examination and refutation.”).
testing

methods

inadmissible.

differ

from

Bhat’s,

his

While Horrocks’

results

are

not

Heller v. Shaw, Inc., 167 F.3d 146, 160 (3d Cir.

1999) (expert testimony cannot be excluded simply because the
expert uses one test rather than another, when both tests are
accepted in the field and both reach reliable results); see also
United States v. Bonds, 12 F.3d 540, 562 (6th Cir. 1993).
For all these reasons, PFG’s motion to exclude Horrocks’
testimony concerning his testing and measuring of SV-X41 on glass
fabrics will be denied.
Horrocks’

testimony

as

to

his

tests

of

SV-X41

surfaces, however, rests on a different footing.

on

steel

In particular,

Horrocks’ opinion that he found no swelling is based on his unaided
visual observation. (Doc. 119-1 at 15-16.) During his deposition,
Horrocks defended this methodology by stating that he can observe
swelling occurring at 5 to 10 microns - a nearly microscopic level,
which are at levels significantly smaller than the width of a human
hair.

(Id.

at

114-18.)

There

testimony.

22

are

two

problems

with

this

First, it strains credulity to believe that anyone can measure
near microscopic swelling of a 45-micron sized film.

Second, even

if Horrocks has such extraordinary vision, in this context its use
is not proven to produce reliable results.

Ruffin v. Shaw Indus.,

Inc., 149 F.3d 294, 299 (4th Cir. 1998) (excluding the testimony
of

the

plaintiff’s

expert

on

Rule

702

grounds

because

“[n]o

organization, public or private, has been able to independently
obtain consistent findings using the techniques employed by” the
expert and his equipment).

In some instances visual observation

could produce a reliable result (such as when something changes
color), but here Horrocks’ testimony is no more than an ipse dixit
declaration unsupported by testable, reliable science.

Durkin v.

Equifax Check Servs., Inc., 406 F.3d 410, 420–22 (7th Cir. 2005)
(excluding expert testimony as “untestable say-so”); BASF Corp. v.
Sublime Restorations, Inc., 880 F. Supp. 2d 205, 212–14 (D. Mass.
2012) (holding that an expert “eyeballing” the products at issue
in a breach of contract case produced “an unknown error rate” and
lacked reliability); R.F.M.A.S., Inc. v. So, 748 F. Supp. 2d 244,
282–83

(S.D.N.Y.

2010)

(excluding

expert

testimony

that

was

“little more than conclusory say-so”); United States v. Frabizio,
445 F. Supp. 2d 152, 159 (D. Mass. 2006) (excluding expert's
testimony distinguishing between real and digitally altered images
because his methodology of visual observation was unreliable).

23

The

court

will

therefore

grant

PFG’s

motion

to

exclude

Horrocks’ testimony to the extent it is founded solely on his
visual observations as to quantitative swelling on the SV-X41
tested on steel surfaces.

Kumho Tire Co. v. Carmichael, 526 U.S.

137, 154-56 (1999) (finding expert’s testimony based on “simple
visual-inspection

methodology”

unreliable

and

therefore

inadmissible). 7
B.

PFG’s Motion for Partial Summary Judgment

Summary

judgment

is

appropriate

where

the

pleadings,

affidavits, and other proper discovery materials demonstrate that
no genuine dispute as to any material fact exists and the moving
party is entitled to judgment as a matter of law.

Fed. R. Civ. P.

56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322-33 (1986).

The

party seeking summary judgment bears the burden of initially
demonstrating the absence of a genuine dispute as to any material
fact.

Celotex, 477 U.S. at 323.

If this burden is met, the

nonmoving party must then affirmatively demonstrate a genuine
dispute of material fact which requires trial.

Matsushita Elec.

Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).

7

There

PFG does not challenge, and the court therefore does not address,
Horrocks’ other testimony about visual observations related to the
testing in this case.
(See, e.g., Doc. 119-1 at 169-70 (the “very
intensely observable warp and weft” he claims can been seen in a swelling
fabric), at 170 (three dimensional swelling he argues would be observable
such that “the pores in the fabric would [be] filled”), and at 171
(describing the obliteration of underlying fabric structure in swelling
material).)

24

is no issue for trial unless sufficient evidence favoring the
nonmoving party exists for a factfinder to return a verdict for
that party.

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249-

50, 257 (1986).

In addition, the nonmoving party is entitled to

have the “credibility of his evidence as forecast assumed, his
version of all that is in dispute accepted, [and] all internal
conflicts in it resolved favorably to him.”

Metric/Kvaerner

Fayetteville v. Fed. Ins. Co., 403 F.3d 188, 197 (4th Cir. 2005)
(quoting Charbonnages de France v. Smith, 597 F.2d 406, 414 (4th
Cir. 1979)) (initial quotation marks omitted).
1.

TieTex Counterclaim Alleging Patent Invalidity

Counts III and IV of TieTex’s counterclaim against PFG seek
a declaration that the ‘639 and ‘162 patents are “invalid pursuant
to one or more of the provisions of 35 U.S.C. §§ 102, 103 and/or
112.”

(Doc. 32 at 14-15.)

The allegations are conclusory and are

bereft of any factual support.

PFG argues that summary judgment

is appropriate because an invalidity claim requires expert opinion
and TieTex never declared an expert or served an expert report in
support of its claim.

(Doc. 114 at 19-20.)

TieTex responded that

the claim was moot because it had put the question of invalidity
before the Patent Trial and Appeal Board (“PTAB”) and was awaiting
a decision.
To

(Doc. 133 at 25-26.)

prevail

on

these

claims,

TieTex

must

demonstrate

invalidity with clear and convincing evidence, as issued patents
25

enjoy a presumption of validity.

35 U.S.C. § 282; U.S. Surgical

Corp. v. Ethicon, Inc., 103 F.3d 1554, 1564 (Fed. Cir. 1997).
Because this is an equitable claim, its resolution is ultimately
for the court.

Ross Coal Co. v. Cole, 249 F.2d 600 (4th Cir.

1957).
TieTex’s arguments to avoid summary judgment are unavailing.
Its contention that the issue of validity is moot due to a thenpending challenge before the PTAB is factually incorrect and was
so when the contention was made.

By the time TieTex filed its

response brief, the PTAB had rendered its final decision, rejecting
every challenge by PFG to the ‘639 patent.

(Doc. 138-1.)

At the

hearing on these motions, TieTex conceded that it was estopped
from arguing invalidity on the basis of three references (known as
Rowan, Murch, and Radwanski) pursuant to 35 U.S.C. § 315(e)(2).
But TieTex

maintained

that

it

was

not

estopped

from

arguing

invalidity on the basis of three other references (known as Külper,
Rowan, and Horrocks), as the PTAB did not address these references
in its final decision.

(See Doc. 138-1.)

However, 35 U.S.C.

§ 315(e)(2) estops TieTex from asserting that the ‘639 patent is
invalid not only on grounds raised during the inter partes review,
but also on grounds that “reasonably could have [been] raised”
during the inter partes review. 8

8

TieTex is therefore foreclosed

A party seeking an inter partes review is limited to arguing invalidity

26

from asserting the invalidity of the ‘639 patent during this
proceeding.

SAS Inst., Inc. v. ComplementSoft, LLC., 825 F.3d

1341, 1351 (Fed. Cir. 2016).

The PTAB also denied TieTex’s

petition to commence an inter partes review of PFG’s challenges to
all claims of the ‘162 patent.

(Doc. 138-2.)

The estoppel

provisions of 35 U.S.C. § 315(e)(2) do not apply to a denial of an
inter partes review.

But the PTAB’s refusal to institute an inter

partes review is indicative of the weakness of TieTex’s claim of
invalidity as to the ‘162 patent, as the PTAB will not authorize
an inter partes review unless “there is a reasonable likelihood”
that a petitioner would prevail in proving invalidity.

35 U.S.C.

§ 314(a); Husky Injection Molding Sys. Ltd. v. Athena Automation
Ltd., 838 F.3d 1236, 1246 (Fed. Cir. 2016).
Moreover, TieTex’s claims fail on the merits.

TieTex argues

that PFG should not have been granted the patents at issue because
PFG’s fabrics comprised prior art elements, the combination of

on the grounds that the patent in question is not novel or would be
obvious to a person of ordinary skill in the art to which the claimed
invention pertains. 36 U.S.C. § 311(b). TieTex could not, therefore,
argue invalidity on the basis of inequitable conduct in its inter partes
review, so the estoppel provisions of 35 U.S.C. § 315(e)(2) do not apply
to TieTex’s counterclaim of inequitable conduct. Conair Corp. v. Tre
Milano, LLC, No. 3:14-CV-1554 AWT, 2015 WL 4041724, at *3 (D. Conn. July
1, 2015); Arlington Indus., Inc. v. Bridgeport Fittings, Inc., No. 3:CV06-1105, 2008 WL 2595106, at *3 (M.D. Pa. June 27, 2008), vacated in
part on other grounds by 2009 WL 364937 (2009) (“[T]he PTO will only
examine the validity of the ′831 Patent based upon prior art, and will
not consider other grounds of invalidity or unenforceability, such as
inequitable conduct.”)
That counterclaim is addressed separately in
this opinion.

27

which would have been obvious to a person of ordinary skill at the
time of the invention.

If true, PFG’s patents would be invalid

under 35 U.S.C. § 103.

Senju Pharm. Co. v. Lupin Ltd., 780 F.3d

1337, 1341 (Fed. Cir. 2015) (stating that “a defendant asserting
obviousness in view of a combination of references has the burden
to show that a person of ordinary skill in the relevant field had
a reason to combine the elements in the manner claimed” (quoting
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007))).
However, proof of obviousness in a complex area of fire retardants,
chemistry, and textiles would require expert testimony.

See

INVISTA N. Am. S.A.R.L. v. M&G USA Corp., 951 F. Supp. 2d 626,
651-52 (D. Del. 2013).

As PFG points out, TieTex never disclosed

an expert on this issue.
In an effort to overcome this default, TieTex now seeks to
rely on its submission to the PTAB, which includes an affidavit
from Horrocks, all of which TieTex has attached to its response
brief on the present motion.

(Docs. 133-11, 133-12.)

As PFG

argues, this is not a proper disclosure of expert evidence under
Federal Rule of Civil Procedure 26(a)(2)(B), however.

Russell v.

Absolute Collection Servs., Inc., 763 F.3d 385, 396-98 (4th Cir.
2014) (affirming district court’s exclusion of expert testimony
for a failure of disclosure).
properly

identified

substantially

Moreover, TieTex’s failure to have

Horrocks

justified

nor

for

this

harmless.
28

If

claim
the

was
court

neither
were

to

construe Horrocks’ affidavit as an expert disclosure, its lateness
after discovery has closed would constitute surprise to PFG that
will be very difficult to cure without retaining a further expert
to rebut it.

This would require reopening discovery and delay the

proceedings.

That the evidence is important to TieTex’s claim

renders

it

even

more

curious

why

TieTex

has

no

reasonable

explanation for not having prepared for the possibility of the
PTAB ruling against it.

A careful consideration of all these

factors leads

to

violation.

the

court

decline

to

excuse

the

disclosure

S. States, 318 F.3d at 597.

As a result, TieTex has not made a showing from which the
court could find liability by clear and convincing evidence. PFG’s
motion for summary judgment as to invalidity will therefore be
granted,

and

Counts

III

and

IV

of

the

counterclaim

will

be

dismissed.
2.

TieTex Counterclaim Alleging Inequitable Conduct

Count V 9 of TieTex’s counterclaim seeks a declaratory judgment
that PFG’s patents are invalid because PFG engaged in inequitable
conduct during their prosecution.

(Doc. 32 at 15-20.)

TieTex

alleges that the inventors of both patents “failed to disclose,
and deliberately withheld, information from the [United States

9

The counterclaim has two counts labeled “V.” They are identical except
that the first addresses the ‘639 Patent and the second addresses the
‘162 Patent. The second count is obviously mislabeled.

29

Patent and Trademark Office (“USPTO”)] that they knew was material
to patentability of the '639 [and ‘162] patent.”

(Id. at 16, 18.)

For each allegation, TieTex lists six references (four articles
and two patents) that it believes were deliberately withheld from
the USPTO.

(Id.)

To prove PFG’s inequitable conduct, TieTex “must prove by
clear and convincing evidence both of the ‘separate requirements’
that: (1) ‘the patentee acted with the specific intent to deceive
the PTO’; and that (2) the non-disclosed reference was ‘but-for
material.’”

1st Media, LLC v. Elec. Arts, Inc., 694 F.3d 1367,

1372 (Fed. Cir. 2012) (citing Therasense, Inc. v. Becton, Dickinson
&

Co.,

649

F.3d

1276,

1290-92

(Fed.

Cir.

2011)

(en

banc)).

Moreover, the specific intent to deceive must be “the single most
reasonable

inference

able

to

be

drawn

from

the

evidence.”

Therasense, 649 F.3d at 1290 (quoting Star Sci., Inc. v. R.J.
Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008)).

“A

finding that the misrepresentation or omission amounts to gross
negligence or negligence under a ‘should have known’ standard does
not

satisfy

this

intent

requirement.”

Id.

at

1290

(citing

Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867,
876 (Fed. Cir. 1988)).

And, when “there are multiple reasonable

inferences that may be drawn, intent to deceive cannot be found.”
Id. at 1290–91.
TieTex argues that materiality is evident from the fact that
30

the PTAB entertained TieTex’s inter partes review of the ‘639
Patent based on three of the six references – Rowan, Radwanski,
and Murch (Doc. 138-1 at 6) - and because TieTex believes that the
PTAB may institute an inter partes review of the ‘162 Patent on
the same basis (Doc. 133 at 26).

In advancing its arguments during

claim construction, TieTex cited one of these references to argue
how a person of ordinary skill would define the term “intumescent.”
(Doc. 57 at 18-19.)

TieTex also argued that the patent examiner

would not have issued the ‘639 patent if she had been aware of
that undisclosed patent at the time of issue.

(Doc. 41 at 18 n.8.)

Of course, the PTAB rejected TieTex’s obviousness arguments
as to the prior patents in the inter partes review of the ‘639
Patent.

The PTAB not only refused to institute an inter partes

review as to the ‘162 Patent on these same grounds, but all six
references TieTex cites in its counterclaim were submitted to the
USPTO by the inventors during PFG’s prosecution of the ‘162 patent
and appear on its face (Doc. 114 at 21); the ‘162 Patent was issued
despite the prior patents (Doc. 112-2).
TieTex nevertheless contends that, while the references were
disclosed in the ‘162 Patent, it is invalid as a continuation of
the ‘639 Patent under the doctrine of unclean hands.

See, e.g.,

Consol. Aluminum Corp. v. Foseco Int'l Ltd., 910 F.2d 804, 809
(Fed. Cir. 1990) (finding that inequitable conduct in prosecution
of one patent “infect[ed]” subsequently procured patent under the
31

unclean hands doctrine, as there was an "immediate and necessary
relation" between the earlier inequitable conduct and the equity
the patent holder sought in enforcing the second patent).

But

TieTex has failed to proffer sufficient evidence from which the
court could find specific intent to deceive the USPTO as to the
‘639 Patent. “Because direct evidence of deceptive intent is rare,
a district court may infer intent from indirect and circumstantial
evidence.”

Therasense, 649 F.3d at 1290 (citing Larson Mfg. Co.

of S.D., Inc. v. Aluminart Prods. Ltd., 559 F.3d 1317, 1340 (Fed.
Cir. 2009)). However, “the evidence ‘must be sufficient to require
a

finding

of

circumstances.’”

deceitful
Id.

intent

(quoting

in

the

light

Kingsdown,

863

of
F.2d

all
at

the
873).

“Hence, when there are multiple reasonable inferences that may be
drawn, intent to deceive cannot be found.”

Id. at 1290-91 (citing

Scanner Techs. Corp. v. ICOS Vision Sys. Corp., 528 F.3d 1365,
1376 (Fed. Cir. 2008) (“Whenever evidence proffered to show either
materiality

or

intent

is

susceptible

of

multiple

reasonable

inferences, a district court clearly errs in overlooking one
inference in favor of another equally reasonable inference.”).
Here, TieTex deposed two of the three inventors on the patents
in question.

In early 2000, one inventor, Larry Fraser, received

certain reports from “NERAC,” a research and advisory firm, when
trying to learn more about intumescents.

(Doc. 112-8 at 8-9.)

The reports contained the titles and descriptions of six references
32

TieTex now claims were intentionally withheld from the USPTO.
(Doc. 114 at 20; Doc. 133 at 16.)

There is some evidence that

NERAC may have sent a copy of one of the references – the Rowan
patent - to Fraser in March 2000, but there is no evidence that he
received it or that it was in his file.
19 at 4.)

(Doc. 133-16 at 3-7; 133-

The other inventor, Vincent Monfalcone, III, testified

that he had no recollection of ever having seen the references.
(Doc. 112-9 at 6-7.)

The third inventor was never deposed.

In a short paragraph, TieTex argues that this circumstantial
evidence supports the inference “that at least one of the inventors
knew of [the] Rowan [patent] and actually asked for a copy,” thus
providing “enough [evidence] to allow the Court to ‘infer intent
from indirect and circumstantial evidence.’”

(Doc. 133 at 26.)

“The law is clear that ‘inequitable conduct requires not intent to
withhold, but rather intent to deceive.

Intent to deceive cannot

be inferred simply from the decision to withhold [information]
where

the

reasons

given

for

the

withholding

are

plausible.”

Astrazeneca Pharm. LP v. Teva Pharm. USA, Inc., 583 F.3d 766, 770,
777

(Fed.

Cir.

2009)

(quoting

Dayco

Products,

Inc.

v.

Containment, Inc., 329 F.3d 1358, 1367 (Fed. Cir. 2003)).

Total
Here,

it is not even apparent that TieTex ever had a copy of the
references.
testimony
references.

TieTex fails to point to any portion of Fraser’s
to

suggest

that

he

intentionally

withheld

these

Taken together, the record lacks sufficient evidence
33

from which “the single most reasonable inference” is that PFG made
a “deliberate decision to withhold a known material reference.”
See 1st Media, 694 F.3d at 1372, 1374 (emphasis omitted).
All of this is consistent with TieTex’s candid concession at
the claim construction hearing in these cases in December 2014
(after the aforementioned depositions of the two inventors) that
it lacked evidence that PFG ever had a copy of the Rowan patent.
(Doc. 56 at 131:8-22 (“We don’t have any evidence yet that they
actually had the full copy of Rowan in front of them . . . but if
we can find that evidence, we’ll certainly present it to the Court
and

make

an

additional

inequitable

evidence

has

conduct
been

argument”).)
submitted

To

on

date,

this

no

claim.

Consequently, there is no genuine dispute of material fact as to
the allegedly inequitable conduct of PFG, and PFG’s motion for
summary judgment on both Count Vs of the counterclaim will be
granted.

Optium Corp. v. Emcore Corp., 603 F.3d 1313, 1319–20,

1322 (Fed. Cir. 2010) (affirming district court’s grant of summary
judgment

of

no

inequitable

conduct

where

party

claiming

inequitable conduct failed to proffer sufficient evidence from
which to infer a deliberate decision to mislead the patent examiner
by clear and convincing proof of an allegedly “highly material”
reference).

34

3.

PFG Claim of Patent Infringement
a.

Counts

I

Literal Infringement

and

II

of

PFG’s

complaint

allege

that

TieTex

infringes PFG’s ‘162 and ‘639 patents by making, offering, and
selling

fabrics

that

are

covered

violation of 35 U.S.C. § 271.

by

the

patents’

(Doc. 29 at 4-6.)

infringement involves a two-step analysis.

claims,

in

Determining

Carroll Touch, Inc. v.

Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993).
First, a court must construe the claim at issue in order to
determine its scope and meaning.

Id.

Second, the court must

compare the claim to the alleged infringer’s products.

Id.; see

also ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1578
(Fed. Cir. 1988).

Literal infringement is found if the accused

products embody every limitation of the claim.

Carroll Touch, 15

F.3d at 1576.
The court has previously construed the claims, and TieTex has
conceded that all of the claim limitations set forth in PFG’s
patents are “present literally” in its fabrics, with the exception
that its products are not treated with an “intumescent finish,”
defined as “a substance that swells and chars upon exposure to
heat or flame.”

(Doc. 112-5; Doc. 112-6.)

Because TieTex has

conceded that its coating “chars” when exposed to heat or flame
(Doc. 133 at 7), the sole disputed issue is whether SV-X41 swells
when exposed to heat or flame, as the parties agree (Doc. 114 at
35

5; Doc. 133 at 7).

Thus, for the court to grant PFG’s motion for

summary judgment, PFG must show that TieTex has failed to proffer
sufficient facts to raise a genuine dispute that SV-X41 swells
when exposed to heat or flame.

PFG’s motion relies on both the

evidence of its expert, Bhat, that SV-X41 swells when exposed to
heat and flame (Doc.

119-5 at 36-38), and its argument that the

testimony of Tietex’s expert, Horrocks, who concluded to the
contrary, should be excluded.

For the reasons stated above,

however, the court has declined to exclude most of Horrocks’ report
and testimony.
In light of the court’s denial of the motion to exclude
Horrocks’ testimony, it is clear that Horrocks provides sufficient
evidence that, if believed by the trier of fact, would support the
conclusion that SV-X41 does not swell when exposed to heat or
flame.
to

As detailed in the court’s discussion as to PFG’s motion

exclude

Horrocks’

testimony,

Horrocks

testified

that

his

testing reveals no measurable swelling of SV-X41 on an inert glass
substrate.

Whether he tested an appropriate thickness of SV-X41

and whether his testimony is to be believed remain questions of
fact that cannot be decided at this stage.
relies

on

Horrocks’

testimony

composition prevents any swelling.

as

to

how

In addition, TieTex
SV-X41’s

(Doc. 132 at 17.)

chemical

As Horrocks

stated in his report, “Based on my expertise and understanding of
the chemistry behind intumescents, it is my opinion that the
36

individual components [of SV-X41], either alone or in combination,
would not be expected to swell upon exposure to heat or flame.”
(Doc. 119-2 at 7.)
PFG does not argue that Horrocks is not qualified to assess
SV-X41’s chemistry.

Instead, it criticizes Horrocks for allegedly

stating only his “expectation” rather than an opinion based on SVX41’s actual reaction to heat or flame.
is

unpersuasive.

Horrocks’

(Doc. 135 at 8-9.)

statements

set

forth

his

This
expert

opinion, based on his extensive experience with intumescents and
fabrics, his understanding of the chemistry of SV-X41, and his
experiments conducted on samples of the coatings.

This is a

disputed fact, as PFG relies on its expert, Bhat, who opines that
he would expect SV-X41 to swell based on a chemical analysis
because it contains components that release gas when exposed to
heat and therefore expand.
PFG

argues

that

observed is unrebutted.

(Doc. 133-6 at 22-23.)

Bhat’s

testimony

(Doc. 135 at 4.)

as

to

the

swelling

he

But Horrocks’ opinion,

if believed, would also rebut Bhat’s testimony in at least two
ways.

First, Horrocks opines that, based on his understanding of

the chemistry of SV-X41 and fabrics under heat and flame, what
Bhat claims is swelling is actually the “relaxing” of the fabric
that causes it to thicken, and not the SV-X41.
32.)

(Doc. 119-2 at 30-

Second, Horrocks’ opinion as to the chemical composition of

SV-X41 would explain why any swelling Bhat claims to have observed
37

cannot be attributed to the coating.

(Id. at 7.)

Based on the record evidence, a reasonable jury could find
that SV-X41 cannot and does not swell because of its chemical
makeup and Horrocks’ testing results showing no swelling beyond a
calculated rate of error.

Anderson, 477 U.S. at 248 (summary

judgment will not be granted where “the evidence is such that a
reasonable jury could return a verdict for the nonmoving party”).
“While a non-movant cannot defeat summary judgment with merely a
scintilla of evidence,” Am. Arms Int'l v. Herbert, 563 F.3d 78, 82
(4th

Cir.

2009)

(citation

omitted),

TieTex’s

evidence

sufficient to defeat PFG’s motion for summary judgment.
“merely colorable” but is “significantly probative.”
50.

is

It is not

Id. at 249-

Whether it is to be believed is for the factfinder to

determine. 11

11

TieTex also relies on the testimony of Holland of Royal Adhesives, the
maker of SV-X41. (Doc. 133 at 8.) In his deposition, Holland explained,
among other things, that SV-X41 was “never designed to [swell] and hasn’t
performed that way either.” (Doc. 114-7 at 25.) According to Holland,
SV-X41 “doesn’t swell by observation” but becomes a “white powder” under
heated conditions that “doesn’t spread out or swell” yet “snuffs the
flame immediately on the site.”
(Id. at 23, 25-26.)
He based his
statements on both visual inspection and chemical analysis, noting that
SV-X41’s chemical composition (e.g., aluminum trihydrate) prevents it
from swelling. (Id. at 25-26.)
PFG urges the court to disregard Holland’s statements as “not
credible,” to the extent Holland is testifying as to his visual
observation of an almost-microscopic effect, and as undisclosed expert
opinion, to the extent he describes the chemical performance of SV-X41.
(Doc. 135 at 7 & n.4.) As to the former, it is the court’s role on
summary judgment to assess whether a genuine dispute exists, not whether
proffered evidence is credible. Reeves v. Sanderson Plumbing Prods.,
530 U.S. 133, 150 (2000). As with Horrocks’ testimony as to testing on

38

For these reasons, PFG’s motion for summary judgment on the
issue of infringement will be denied.
b.

Doctrine of Equivalents

PFG argues in the alternative that even if SV-X41 is not an
intumescent within the meaning of the patents in suit, TieTex’s
products nevertheless infringe under the doctrine of equivalents.
(Doc. 114 at 18.)

PFG advances two arguments.

First, it argues

that even if SV-X41 is not a “‘true’ intumescent,” Bhat opines
that TieTex’s fabrics perform substantially the same function in
substantially the same way with substantially the same result as
the claims of PFG’s patents.

(Id. at 18-19.)

That is, PFG argues,

Bhat’s testing demonstrates that TieTex’s products swell when
exposed to heat or flame, and TieTex has not performed any tests
on its products to rebut that conclusion.

(Id. at 18.)

Second,

PFG claims that TieTex has admitted that it coats its products
with a “char-forming finish,” citing Holland’s description of SV-

steel surfaces, however, the court need not credit testimony that is
manifestly incredible. Jarman v. Philadelphia-Detroit Lines, 131 F.2d
728, 730 (4th Cir. 1942) (noting that “evidence may be completely
disregarded as without probative force if it is manifestly incredible
when tested by accepted physical laws in the light of incontrovertible
facts”).
Holland’s familiarity with his company’s product and
observation of the operation of SV-X41 as applied to various fabrics may
permit him to provide relevant fact witness testimony – e.g., as to SVX41’s chemical makeup. But TieTex’s failure to identify him as an expert
puts the admissibility of any opinions as to SV-X41’s chemical
performance at issue. Because TieTex has proffered sufficient evidence
otherwise to oppose PFG’s motion for summary judgment, the court need
not consider Holland’s evidence for purposes of the present motion,
leaving whether and to what extent Holland’s specific testimony should
be admissible for the trial court to determine.

39

X41

forming

barrier.”

an

“intumescent

(Id. at 19.)

char”

and

a

“thermal

insulation

PFG also notes Horrocks’ statement that

he would expect the composition of SV-X41 “to contribute to the
finish intumescing upon exposure to heat or flame,” creating “an
interactive

finish

and

fiber

composition."

(Id.)

TieTex

acknowledges the arguments but responds by relying on its evidence
that SV-X41 does not swell.

(Doc. 133 at 18.)

The parties agreed at the hearing on these motions that the
proper

test

result” test.

for

assessing

infringement

is

the

“function-way-

Graver Tank & Mfg. Co. v. Linde Air Prod. Co., 339

U.S. 605, 608 (1950). Under the function-way-result test, an
accused element is equivalent to a claim limitation “if it performs
substantially the same function in substantially the same way to
obtain the same result.”

Id.; see also Warner-Jenkinson Co. v.

Hilton

520

Davis

Chem.

Co.,

U.S.

17,

38

(1997).

To

find

equivalence, all three prongs must be met.
Here, the parties agree that the functionality and results of
TieTex’s products are substantially the same as the claims: they
adopt flame-retardant capabilities when exposed to heat or flame
by forming a thermal insulation barrier.

TieTex also concedes

that its fabrics satisfy all other limitations of the asserted
claims, with the exception that its fabrics were not treated with
an “intumescent” finish, as defined in PFG’s patents.
at 5; Doc. 133 at 7.)

(Doc. 114

Thus, the sole focus of the inquiry turns
40

on the way in which TieTex’s product operates when exposed to heat
or flame.

For the reasons set forth below, both of PFG’s arguments

fail.
In general, the Federal Circuit has restricted the application
of the doctrine of equivalents since courts began to apply it in
equity.

Tex. Instruments, Inc. v. U.S. Int'l Trade Comm'n, 805

F.2d 1558, 1572 (Fed. Cir. 1986) (“The determination of equivalency
by its nature is inimical to the basic precept of patent law that
claims are the measure of the grant.”); Fairfax Dental (Ireland)
Ltd. v. Sterling Optical Corp., 808 F. Supp. 326, 335-36 (S.D.N.Y.
1992).

The Federal Circuit has also advised caution in applying

the doctrine of equivalents, reminding courts that it is the terms
of the claims, and not the products themselves, that are the focus
of the inquiry.

Read Corp. v. Portec, Inc., 970 F.2d 816, 822 n.2

(Fed. Cir. 1992) (“For example, a pen and a pencil may for many
purposes or uses be generally equivalent, but claim limitations
drawn to a pen would not under the doctrine of equivalents cover
a

pencil

and

vice

versa.”),

superseded

on

other

grounds

as

recognized by Markman v. Westview Instruments, Inc., 52 F.3d 967
(Fed. Cir. 1995).
This has led courts to deny claims for infringement under the
doctrine of equivalents, even when the products in question seem
exceedingly similar.

See Hill–Rom Co. v. Kinetic Concepts, Inc.,

209 F.3d 1337 (Fed. Cir. 2000) (no infringement in case involving
41

hospital beds, because defendant’s beds used cushions that were
used to rotate patients as opposed to “comfort” and “support,” as
“cushion” was defined in the patents in question); Kemco Sales,
Inc. v. Control Papers Co., 208 F.3d 1352 (Fed. Cir. 2000) (no
infringement in case involving secure envelopes where envelopes
closed

in

“substantially

different”

ways,

with

one

envelope

closing by way of a flap folding over, while the other closed using
a

dual-lip

structure

with

a

binding

adhesive);

Chiuminatta

Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303
(Fed. Cir. 1998) (no infringement in case involving concrete saws,
where one product used wheels that rolled over the concrete while
the other used a flat plate that “skids” over the concrete);
Atlanta Motoring Accessories, Inc. v. Saratoga Tech., Inc., 33
F.3d 1362 (Fed. Cir. 1994) (no infringement because accused party’s
automobile luggage racks were shaped differently from patentee’s
claims and therefore operated in a substantially different way,
despite performing the same function with the same result); Read
Corp., 970 F.2d at 822 n.2 (discussing the possible hazards of the
doctrine of equivalents, where “laymen may be led to comparison of
devices, rather than between the accused device and the claim, and
to rely on generalities in the overall purpose of the devices”).
PFG’s first argument for infringement under the doctrine of
equivalents focuses on the performance of TieTex’s coated fabric.
But PFG’s focus on TieTex’s fabrics, as opposed to the finish on
42

those fabrics, is misplaced.

The claims of the patents at issue

relate to an intumescent finish.
(“wherein

the

comprising

an

non-woven

(See Doc. 112-1 at 9, claim 12

substrate

intumescent,

flame

is

treated

retardant

with

a

coating”).)

finish
PFG

vigorously argued against a claim construction that defined an
“intumescent system,” which would have been a definition that
included more than just the solution coated on PFG’s fabrics.
(Doc. 36 at 15-18.)

Indeed, the court defined “intumescent” as “a

substance that swells . . . when exposed to heat or flame” at PFG’s
urging.

(Doc. 57 at 20-21.)

By advancing the argument that the

meaning of this term is insubstantial, PFG contradicts its own
earlier position: “it is PFG’s position — as well as a longstanding and settled legal principle — that claim elements should
not be ignored.”

(Doc. 46 at 9.)

The court cannot apply the function-way-result test so as to
vitiate a term used in the accusing party’s patent.

Ethicon Endo-

Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1320 (Fed.
Cir. 1998); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931,
935 (Fed. Cir. 1987) (en banc) (“The claim limitations, however,
require

the

performance

of

certain

specified

functions.”),

abrogated on other grounds by Cardinal Chem. Co. v. Morton Int'l,
508 U.S. 83 (1993); see also Vehicular Techs. Corp. v. Titan Wheel
Int'l, Inc., 141 F.3d 1084, 1090 (Fed. Cir. 1998) (“[I]f a claim
limitation must play a role in the context of the specific claim
43

language, then an accused device which cannot play that role, or
which plays a substantially different role, cannot infringe under
the doctrine of equivalents.

The question of whether an explicit

function has been identified with a claim limitation entails an
examination of the claim and the explanation of it found in the
written description of the patent.”) Granting PFG summary judgment
on the issue of infringement under the doctrine of equivalents
would require a finding that the way in which TieTex’s fabrics
allegedly combat fire – by becoming a white powder that snuffs out
flame immediately, without swelling – is insubstantially different
from the patent claim of swelling to retard flame.

This would

vitiate the claim requiring an “intumescent.”
TieTex has proffered evidence that SV-X41 does not swell upon
exposure to heat or flame.

TieTex contends, and its evidence

supports the proposition, that SV-X41 is chemically incapable of
swelling but changes composition to become a “white powder” that
“snuffs out” flames.

(Doc. 133-12 at 10-11.)

TieTex’s evidence

describes this reaction as indeed forming a “barrier,” but through
a

“completely

different”

method

than

that

patents, without any swelling occurring.
sufficient

to

survive

summary

judgment

employed

(Id. at 11.)
on

the

by

PFG’s

This is

doctrine

of

equivalents.
For similar reasons, PFG’s second argument – that TieTex’s
fabrics use a “char-forming” compound that is “an intumescent
44

finish comprising one or more flame retardant phosphorus compounds
or nitrogen compounds” – fails.

(Doc. 114 at 18-19.)

Here, too,

PFG’s argument relies on the meaning of the term “intumescent,”
and there is a genuine dispute as to whether SV-X41 swells when
exposed

to

statements

heat
by

or

flame.

Royal

PFG

Adhesives

also
that

relies
its

too

heavily

on

forms

an

product

“intumescent char” and a “thermal insulation barrier.”
19.)

(Id. at

Royal Adhesives is not a party to this action, and so while

these statements are evidence, they are not admissions by TieTex
as PFG would have them treated.

Similarly, PFG leans on Horrocks’

testimony a little too heavily.

What Horrocks actually said in

his deposition, in response to an inquiry by PFG, was that he
agreed that he would expect the substrate of an uncoated fabric to
contribute to the finish intumescing on exposure to heat or flame.
(Doc. 114-11 at 198-99.)

This speaks to the effect of the fabric,

not to the effect of the coating, which is the claim in the patents
in suit, and is consistent with his opinion that swelling observed
by Bhat is attributable to the thickening of the fabric.
This

court

will

therefore

deny

PFG’s

motion

for

summary

judgment on its claim for infringement under the doctrine of
equivalents.

TieTex’s evidence, if believed, supports the finding

that TieTex’s fabrics as coated with SV-X41 do not perform in a
way substantially similar to the claims of the patents in question.

45

III. CONCLUSION
For the reasons stated above,
IT IS THEREFORE ORDERED that PFG’s motion for partial summary
judgment (Doc. 111 in case 1:13cv645, Doc. 81 in case 1:14cv650)
is GRANTED IN PART AND DENIED IN PART as follows: PFG’s motion as
to TieTex’s counterclaims of inequitable conduct and validity
(Counts III, IV and V (both Counts V) is GRANTED, and those claims
are DISMISSED; the motion is otherwise DENIED.
IT IS FURTHER ORDERED that PFG’s motion to exclude expert
testimony (Doc. 116 in case 1:13cv645, Doc. 86 in case 1:14cv650)
is GRANTED IN PART AND DENIED IN PART, as noted herein.

/s/
Thomas D. Schroeder
United States District Judge
November 21, 2016

46