The Ohio Willow Wood Company v. ALPS South, LLC

Filing 211

ORDER denying 183 Plaintiff's Motion for Reconsideration of Opinion and Order regarding Collateral Estoppel. Signed by Judge Gregory L Frost on 8/13/12. (sem)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION

THE OHIO WILLOW WOOD COMPANY,
Plaintiff,
Case No. 2:04-cv-1223
JUDGE GREGORY L. FROST
Magistrate Judge Mark R. Abel

v.
ALPS SOUTH, LLC,
Defendant.

OPINION AND ORDER
Before the Court is Plaintiff Ohio Willow Wood Company’s (“OWW”) Motion for
Reconsideration of Opinion and Order Regarding Collateral Estoppel. (ECF No. 183.) Also
before the Court are the memorandum in opposition of Defendant ALPS South, LLC (“ALPS”)
(ECF No. 186), and OWW’s Reply in Support (ECF No. 205). For the reasons set forth below,
OWW’s motion for reconsideration is DENIED.
On June 15, 2012, this Court granted Defendant ALPS South, LLC’s motion for
summary judgment on the issue of collateral estoppel, invalidating claims 1, 2, 4, 15, 16, and 20
of the patent in suit, U.S. Patent No. 5,830,237 (“the ’237 Patent”), based on the collateral
estoppel effect of Ohio Willow Wood Co. v. Thermo-Ply, Inc., No. 9:07-cv-274, 2009 U.S. Dist.
LEXIS 127488 (E.D. Tex. Nov. 20, 2009), aff’d, 440 F. App’x 926 (Fed. Cir. 2011). (Opinion
and Order, ECF No. 182.) OWW asks this Court to reconsider its collateral estoppel ruling,
arguing primarily that the Court erred in applying collateral estoppel without first conducting a
claims construction hearing to ascertain the meaning of the terms “block copolymer” in the ’237
Patent and “polymeric” in U.S. Patent No. 7,291,182 (“the ’182 Patent”), the continuation of the

’237 Patent invalidated in Thermo-Ply. OWW argues that it was “clear error” to apply collateral
estoppel without conducting a claims construction hearing on these terms because such a hearing
would have “arrived at the well recognized conclusion that a ‘block copolymer’ is a sub-set of
the broader group of materials known as ‘polymers.’” (Pl.’s Mot. for Recons. 4, ECF No. 183.)
This “error,” argues OWW, resulted in the Court failing to apply the proper summary judgment
standard. (Id.)
Although the Federal Rules of Civil Procedure do not explicitly address motions for
reconsideration of interlocutory orders, the authority for a district court to hear such motions is
found in both the common law and in Rule 54(b) of the Federal Rules of Civil Procedure.
Rodriguez v. Tenn. Laborers Health & Welfare Fund, 89 F. App’x 949, 959 (6th Cir. 2004).
Traditionally, courts will find justification for reconsidering interlocutory orders when there is
(1) an intervening change of controlling law; (2) new evidence available; or (3) a need to correct
a clear error or prevent manifest injustice. Id. (citing Reich v. Hall Holding Co., 990 F. Supp.
955, 965 (N.D. Ohio 1998)). OWW argues here that the Court should reconsider its collateral
estoppel ruling to correct a clear error and/or to prevent manifest injustice. The Court does not
find that OWW has presented a valid basis for reconsideration.
The Court’s Opinion and Order adequately – and correctly – addressed the “block
copolymer” issue that OWW raises in its motion for reconsideration. OWW greatly emphasizes
the notion that the “specific issue of a block copolymer was never litigated” in the Thermo-Ply
case and that, therefore, collateral estoppel principles should not bar OWW from litigating the
validity of the ’237 Patent claims asserted in this case. But this Court squarely addressed the
potential difference between the “block copolymer” term in the ’237 Patent and the “polymeric”

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term in the ’182 Patent and explained why collateral estoppel may still apply based on settled
patent law authority:
Turning to the differences between claim 1 of the ’237 Patent and the invalidated
claims of the ’182 Patent, OWW argues that the “foamed or non-foamed block
copolymer” limitation was not recited in any of the claims at issue in Thermo-Ply.
But the Thermo-Ply court invalidated for obviousness dependent claims 9, 19, 30, 40,
50, and 62 of the ’182 patent, all of which claim “a polymeric gel with mineral oil.”
Thermo-Ply at 16. Grouping all of these claims as the “mineral oil claims,” the
Thermo-Ply court observed that mineral oil “was used in the gel of the Silipos
sheaths—like the Silosheath—prior to 1995, as admitted by OWW’s expert, Mr.
Michael, at deposition.” Id. OWW does not explain how the limitation on the
mineral oil gel as being a “foamed or non-foamed block copolymer” distinguishes
the claim 1 of the ’237 Patent in a meaningful way from the mineral oil “polymeric
gel” specified in the invalidated claims of the ’182 Patent. OWW has therefore
failed to establish how the limitation creates a substantive difference between claim
1 of the ’237 Patent and the invalidated claims of the ’182 Patent, much less how the
difference “distinguish[es] the claimed combination as a whole from the prior art.”
Bourns [v. United States, 537 F.2d 486, 493 (Ct. Cl. 1976)] (emphasis added).
. . . The question is not whether these limitations contained in the ’237 Patent
were adjudicated in the prior case, but whether the difference “lends patentable
significance to the claimed combination, thereby altering the issues bearing on the
obviousness determination.” Medinol Ltd. v. Guidant Corp., 341 F. Supp. 2d 301,
322 (S.D.N.Y. 2004). While OWW cites these differences, it makes no argument
in its summary judgment opposition as to how these differences are “of a substantive
nature,” such that they could conceivably differentiate claim 1 of the ’237 Patent
claim from invalidated claim 1 of the ’182 Patent. Westwood [Chem., Inc. v. United
States, 525 F.2d 1367, 1375 (Ct. Cl. 1975)]. Without such a showing in response to
ALPS’s motion for summary judgment, OWW cannot escape the collateral estoppel
bar.
(Opinion and Order 17-19, ECF No. 182.)
Though OWW argues that the Court failed to indulge inferences in its favor as the
nonmoving party on summary judgment, the Court did nothing more than hold OWW to its
summary judgment burden of coming forward with evidence to create a genuine issue of material
fact. OWW did not come forward with evidence to establish how the “block copolymer”
language in the ’237 Patent created a substantive difference between the ‘237 Patent claims and
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the ‘182 Patent claims invalidated in Thermo-Ply, much less how those differences distinguished
“the claimed combination as a whole from the prior art.” (Id. at 18.) That OWW now says it
may have been able to do that if the Court had convened a claim construction hearing is a tardy
attempt to blame the Court for its own failure to adequately oppose ALPS’s motion for summary
judgment on collateral estoppel.
If the “block copolymer” vs. “polymeric” distinction was so important to the
determination of whether Thermo-Ply had collateral estoppel effect on the claims at issue in this
case, the Court would have expected OWW to explain those differences specifically in the
summary judgment briefing, supported by evidentiary materials described in Fed. R. Civ. P. 56.
But OWW did not do so, leaving this Court with no basis upon which to conclude that the
distinction carried any patentable significance. Accordingly, the Court can find no basis for
reconsideration: rather than pointing out an error in the Court’s ruling, OWW is untimely raising
an argument it failed to assert when it had the chance.
OWW’s second argument for reconsideration fares somewhat better in terms of having
some record support. In footnote 9 of the Opinion and Order, the Court referred to a decision of
the Board of Patent Appeals and Interferences, which last year reversed a PTO Examiner’s
decision to reject Claims 1 to 23 of the ’237 Patent. Ex Parte Ohio Willow Wood Co., No. 2011010158 (B.P.A.I. Sept. 30, 2011) (slip opinion). This Court observed that there was a “question”
of whether the BPAI may have ruled differently in OWW’s appeal had it been aware of the
court’s summary judgment decision in Thermo-Ply. (Opinion and Order 26 n.9, ECF No. 182.)
As both OWW and ALPS note, however, the BPAI was made aware of the Thermo-Ply summary
judgment during the briefing and argument on OWW’s appeal. (Pl.’s Mot. 5-6, ECF No. 183;

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Def.’s Memo. In Opp. 6-7, ECF No. 186.) OWW contends that this Court’s misunderstanding of
the record creates a “manifest injustice” if this Court does not reconsider its decision.
Though the Court may have been mistaken about the BPAI’s awareness of the ThermoPly decision, this does not provide a basis for reconsideration. The Court’s observation at the
end of footnote 9 was not a material basis for its decision. Footnote 9 came at the end of the
section of the Opinion and Order that explained why the BPAI decision and the reexaminations
by the United States Patent and Trademark Office (“PTO”) had no bearing upon the application
of collateral estoppel. (Opinion and Order 26, ECF No. 182.) The Court held that the
“presumption of validity” accorded to patents issued by the PTO did not trump application of
collateral estoppel. (Id.) The Court further noted at the beginning of Footnote 9 that, for
purposes of applying collateral estoppel, it did not matter that the Thermo-Ply court did not have
the “benefit” of the BPAI decision upholding validity. (Id. at n.9.) Though the Court went on to
state erroneously that the BPAI was not aware of the Thermo-Ply decision, the fact that the BPAI
knew about Thermo-Ply is equally insignificant to the application of collateral estoppel.
OWW has failed to show that reconsideration of the Court’s collateral estoppel ruling is
necessary to correct a “clear error” or to prevent a “manifest injustice.” Accordingly, OWW’s
Motion for Reconsideration (ECF No. 183) is DENIED.
IT IS SO ORDERED.
/s/ Gregory L. Frost
GREGORY L. FROST
UNITED STATES DISTRICT JUDGE

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