WCM Industries, Inc. v. IPS Corporation et al

Filing 389

ORDER denying 227 Motion for Partial Summary Judgment; denying 234 Motion for Partial Summary Judgment; denying 235 Sealed Motion; denying 236 Motion for Summary Judgment; denying 237 Sealed Motion; denying 238 Motion for Partial Su mmary Judgment; denying 239 Sealed Motion; denying 241 Motion for Partial Summary Judgment; denying 257 Sealed Motion; denying 261 Motion in Limine; denying 262 Sealed Motion; granting 263 Motion in Limine; granting 264 Sealed Motion. Signed by Judge Jon Phipps McCalla on 10/5/2015. (McCalla, Jon)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TENNESSEE
WESTERN DIVISION

WCM INDUSTRIES, INC.,
Plaintiff,
v.
IPS CORPORATION, et al.,
Defendants.

)
)
)
) Civil Action
) No. 2:13-cv-02019-JPM-tmp
)
)
) Jury Demanded
)
)
)

ORDER DENYING MOTIONS FOR SUMMARY JUDGMENT AND GRANTING IN PART
AND DENYING IN PART DAUBERT MOTIONS TO EXCLUDE EXPERT WITNESSES

Before the Court are eight motions:
1. Defendant WCM Industries, Inc.’s (“WCM”) Motion for Partial
Summary Judgment on Infringement (ECF No. 227), filed July
16, 2015;
2. Plaintiff IPS Corporation’s (“IPS”) Motion for Partial
Summary Judgment of Noninfringement (ECF No. 235), filed
July 17, 2015;
3. IPS’s Motion for Summary Judgment of No Willfulness (ECF
No. 237), filed July 17, 2015;
4. IPS’s Motion for Partial Summary Judgment of Invalidity
(ECF No. 239), filed July 17, 2015;
5. WCM’s Motion for Partial Summary Judgment on Invalidity
(ECF No. 241), filed July 17, 2015;

6. IPS’s Motion to Exclude Expert Testimony of Clarke B.
Nelson (ECF No. 257), filed July 30, 2015;
7. IPS’s Motion in Limine to Exclude the Report and Testimony
of Michael Thuma (ECF No. 262), filed July 31, 2015; and
8. IPS’s Motion in Limine to Exclude the Report and Testimony
of Dr. Richard Turley (ECF No. 264), filed July 31, 2015.
The Court held a hearing regarding the eight motions on
August 31, 2015.

(Min. Entry, ECF No. 330.)

For the reasons

stated below, IPS’s Motion in Limine (Daubert Motion) to Exclude
the Report and Testimony of Dr. Richard Turley is GRANTED.

The

other seven motions are DENIED.
I.

BACKGROUND
A.

Procedural History

On January 9, 2013, WCM filed a Complaint against all
Defendants, asserting infringement of three utility patents –
8,302,220 (“the ’220 patent”), 8,166,584 (“ the ’584 patent”),
and 8,321,970 (“ the ’970 patent”) – and three design patents –
D636,468 (“ the ’468 design patent”), D627,683 (“ the ’863
design patent”), and D665,062 (“ the ’062 design patent”).
No. 1.)

(ECF

On February 19, 2013, IPS filed its Answer and

Counterclaim. (ECF No. 12.)

On March 12, 2013, WCM filed its

Reply to the Answer and Counterclaim.

(ECF No. 14.)

On May 15, 2013, IPS filed a Motion to Consolidate Cases.
(ECF No. 27.)

On June 3, 2013, WCM filed a Response in
2

Opposition.

(ECF No. 34.)

On July 2, 2013, the Court entered

an Order denying the Motion.

(ECF No. 45.)

On May 14, 2013, IPS filed an unopposed Motion to Amend its
Answer and Counterclaim.

(ECF No. 25.)

On May 16, 2013, the

Court granted the Motion to Amend (ECF No. 29), and IPS filed
its First Amended Answer and Counterclaim the same day (ECF No.
30).

On May 30, 2013, WCM filed its Reply to Defendant’s First

Amended Answer and Counterclaim.

(ECF No. 32.)

On July 26, 2013, the Court held a Patent Scheduling
Conference, during which the parties presented the technology.
(ECF No. 48.)
On August 19, 2013, IPS filed a Motion to Strike Portions
of the Rebuttal Report of Michael Higgins.

(ECF No. 54.)

On

September 5, 2013, WCM filed its Response in Opposition to IPS’s
Motion to Strike.

(ECF No. 56.)

On September 12, 2013, IPS

filed a Motion for Leave to File Reply to IPS’s Motion to
Strike.

(ECF No. 59.)

On October 16, 2013, the Court entered

an Order denying IPS’s Motion to Strike and an Order directing
WCM to resubmit the rebuttal report.

(ECF No. 66.)

In the same

order, the Court also denied IPS’s Motion for Leave to File a
Reply.

(Id.)

Also on August 19, 2013, WCM filed a Motion for Leave to
File Amended Complaint, to add a count for infringement of U.S.
Patent No. 8,505,132, entitled “Overflow assembly for bathtubs
3

and the like,” which issued on August 13, 2013.

(ECF No. 53.)

On September 3, 2013, IPS filed its Response in Opposition to
the Motion for Leave to File Amended Complaint.

(ECF No. 55.)

On September 10, 2013, WCM filed a Motion for Leave to File
Reply in Support of Motion for Leave to Amend Complaint.
No. 57.)

(ECF

On September 11, 2013, WCM filed an Amended Motion for

Leave to File Reply in Support of its Motion for Leave to Amend
Complaint.

(ECF No. 58.)

On September 18, 2013, IPS filed its

Response in Opposition to WCM’s Motion for Leave to File Reply
in Support of Motion for Leave to Amend Complaint.
60.)

(ECF No.

On October 7, 2013, the Court entered an Order granting

WCM’s Motion for Leave to File an Amended Complaint, and finding
as moot WCM’s Motion for Leave to File a Reply and its Amended
Motion for Leave to File a Reply. (ECF No. 64.)
2013, WCM filed its First Amended Complaint.

On October 8,

(ECF No. 65.)

On

October 22, 2013, IPS filed its Second Amended Answer and
Counterclaim.

(ECF No. 68.)

On October 21, 2013, WCM filed an unopposed Motion for
Leave to File a Second Amended Complaint (ECF No. 67) to add the
patent issuing from U.S. Patent Application No. 13/691,405,
which the Court granted on October 22, 2013 (ECF No. 70).

On

October 22, 2013, IPS filed its unopposed Motion for Leave to
Amend Its Answer and Counterclaim (ECF No. 69), which the Court
denied as moot on October 28, 2013 (ECF No. 74).
4

On December 3,

2013, WCM filed its Second Amended Complaint.

(ECF No. 75.)

On

December 17, 2013, IPS filed its Third Amended Answer and
Counterclaim.

(ECF No. 76.)

On December 30, 2013, WCM filed

its Reply to Defendant’s Third Amended Answer and Counterclaim.
(ECF No. 77.)
On October 4, 2013, the parties filed their respective
Opening Claim Construction Briefs.

(ECF Nos. 62, 63.)

On

January 31, 2014, the parties filed their respective
Supplemental Claim Construction Briefs.

(ECF Nos. 78, 79.)

On

February 21, 2014, the parties filed their respective Responsive
Claim Construction Briefs.

(ECF Nos. 80, 81.)

On February 28,

2014, the parties filed their Joint Claim Construction and
Prehearing Statement.

(ECF No. 83.)

The Court held a claim

construction hearing on March 10, 2014.

(ECF No. 85.)

On July 11, 2014, WCM filed its Notice of Supplemental
Authority Regarding Claim Construction, citing a recent decision
by the United States Court of Appeals for the Federal Circuit in
Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367 (Fed.
Cir. 2014).

(ECF No. 87.)

On July 14, 2014, IPS filed its

Response to Plaintiff’s Notice of Supplemental Authority
Regarding Claim Construction, arguing “that the Hill-Rom opinion
does not introduce any new standard or otherwise change any
previous ruling of the” Court of Appeals.

5

(ECF No. 88 at 1.)

The Court entered an Order Following Claim Construction
Hearing on November 10, 2014, in which the Court construed the
disputed terms in the asserted patents.

(ECF No. 94.)

In

addition to terms in the asserted utility patents, the parties
disputed the scope of the Design Patents’ claims.

Accordingly,

the Court also construed the claim scope of each of the Design
Patents.

(Id. at 117-21.)

In construing each Design Patent’s

claim scope, the Court could discern no “aspects of the designs
[that] are dictated by ornamental considerations.”
120.)

(Id. at

Consequently, the Court found “that the designs for the

overflow pipe and bathtub waste pipe are dictated by functional
considerations.”

(Id. at 121.)

The Court concluded that “those

designs are not protected by the asserted design patents.”
(Id.)
On December 2, 2014, WCM filed a Motion for Revision of the
Court’s Order Following Claim Construction Hearing.
98.)

(ECF No.

The Court denied the Motion on January 7, 2015.

(ECF No.

105.)
On June 29, 2015, IPS filed a Motion for Leave to File a
Fourth Amended Answer and Counterclaim.

(ECF No. 201.)

15, 2015, WCM filed a Response in Opposition.

On July

(ECF No. 222.)

On July 22, 2015, IPS filed a Motion for Leave to Reply to WCM’s
Response in Opposition.

(ECF No. 249.)

The Court granted the

Motion for Leave to Reply on August 11, 2015.
6

(ECF No. 277.)

IPS filed its Reply to WCM’s Response in Opposition on August
12, 2015.

(ECF No. 278.)

The Court denied the Motion for Leave

to File a Fourth Amended Answer and Counterclaim on August 28,
2015.

(ECF No. 329.)

On July 13, 2015, WCM filed a Motion to Exclude the Expert
Testimony of Peter Smith.

(ECF No. 213.)

On July 14, 2015, WCM

filed a Motion to Exclude the Expert Testimony of James Paschal.
(ECF No. 218.)

IPS filed a Response in Opposition to Motion to

Exclude the Expert Testimony of Peter Smith on July 30, 2015
(ECF Nos. 255-56), and a Response in Opposition to the Motion to
Exclude the Expert Testimony of James Paschal on July 31, 2015
(ECF Nos. 265-66).

The Court held a Daubert hearing on these

motions on August 7, 2015.

(ECF No. 275.)

These motions remain

pending.
On July 16, 2015, WCM filed a Motion for Partial Summary
Judgment on Infringement.

(ECF No. 227.)

On July 17, 2015, IPS

filed a Motion for Partial Summary Judgment of Noninfringement.
(ECF Nos. 234-35.)

IPS filed a Motion for Summary Judgment of

No Willfulness on July 17, 2015.

(ECF Nos. 236-37.)

IPS filed

a Motion for Partial Summary Judgment of Invalidity on July 17,
2015.

(ECF Nos. 238-39.)

WCM filed a Motion for Partial

Summary Judgment on Invalidity on July 17, 2015.

(ECF No. 241.)

On July 30, 2015, IPS filed a motion to exclude expert testimony
of Clarke B. Nelson.

(ECF No. 257.)
7

On July 31, 2015, IPS

filed a motion to exclude the report and testimony of Michael
Thuma.

(ECF Nos. 261-62.)

IPS filed a motion to exclude the

report and testimony of Dr. Richard Turley on July 31, 2015.
(ECF Nos. 263-64.)

The Court held a hearing on these eight

motions on August 31, 2015.

(ECF No. 330.)

On August 19, 2015, WCM filed a Stipulation Regarding
Non-Asserted Claims and Patents in WCM’s Motion for Partial
Summary Judgment on Invalidity (ECF No. 241).

(ECF No. 310.)

WCM withdrew its Motion for Partial Summary Judgment on
Invalidity with respect only to the non-asserted claims and
non-asserted patents.
B.

(Id. at 2.)

Factual History

Plaintiff WCM Industries, Inc. (“WCM”) is a Colorado
corporation with its principal place of business in Colorado.
(Second Am. Compl. ¶ 1, ECF No. 75.)

Defendant IPS Corporation

(“IPS”) is a Delaware corporation with its principal place of
business in California.

(Id. ¶ 2.)

Defendant American Brass &

Aluminum Foundry Company (“AB&A”) is a California corporation
with its principal place of business in Tennessee.
AB&A was acquired by IPS in August 2010.

(Id. ¶ 5.)

(Id. ¶ 3.)
WCM

alleges that one or more John Doe defendants, whose identities
are presently unknown, have assisted, induced, contributed, or
cooperated with IPS, AB&A, or both to commit the acts complained
of in the Complaint.

(Id. ¶ 4.)
8

This case involves alleged infringement of the following
utility patents on “overflow assemblies” (collectively, the
“Utility Patents”):
U.S. Patent No.
8,302,220
(‘220 patent)
8,321,970
(‘970 patent)
8,584,272
(‘272 patent)

Title of Invention
Method and Apparatus for
Assembling and Sealing
Bathtub Overflow and Waste
Water Ports
Method and Associated
Apparatus for Assembling and
Testing a Plumbing System
Method and Associated
Apparatus for Assembling and
Testing a Plumbing System

Issued
Nov. 6, 2012

Dec. 4, 2012

Nov. 19, 2013

(See ECF Nos. 75-1, 75-4, 75-8.)
In the Court’s Order Following Claim Construction, the
Court found “that the designs for the overflow pipe and bathtub
waste pipe are dictated by functional considerations.”

(ECF No.

94 at 121.)
II.

LEGAL STANDARD
A.

Summary Judgment

“The court shall grant summary judgment if the movant shows
that there 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); see also Chapman v. UAW Local 1005, 670 F.3d 677,
680 (6th Cir. 2012).

“A fact is ‘material’ for purposes of

summary judgment if proof of that fact would establish or refute
an essential element of the cause of action or defense.”
Bruederle v. Louisville Metro Gov’t, 687 F.3d 771, 776 (6th Cir.
9

2012) (citing Kendall v. Hoover Co., 751 F.2d 171, 174 (6th Cir.
1984)).

“A dispute over material facts is ‘genuine’ ‘if the

evidence is such that a reasonable jury could return a verdict
for the nonmoving party.’”

Id. (quoting Anderson v. Liberty

Lobby, Inc., 477 U.S. 242, 248 (1986)).

“When the non-moving

party fails to make a sufficient showing of an essential element
of his case on which he bears the burden of proof, the moving
parties are entitled to judgment as a matter of law and summary
judgment is proper.”

Chapman, 670 F.3d at 680 (citing Celotex

Corp. v. Catrett, 477 U.S. 317, 323 (1986)); see also Kalich v.
AT & T Mobility, LLC, 679 F.3d 464, 469 (6th Cir. 2012).
“The moving party bears the initial burden of demonstrating
the absence of any genuine issue of material fact.”

Mosholder

v. Barnhardt, 679 F.3d 443, 448 (6th Cir. 2012) (citing Celotex,
477 U.S. at 323).

“Once the moving party satisfies its initial

burden, the burden shifts to the nonmoving party to set forth
specific facts showing a triable issue of material fact.”

Id.

at 448-49 (citing Matsushita Elec. Indus. Co. v. Zenith Radio
Corp., 475 U.S. 574, 587 (1986); see also Fed. R. Civ. P.
56(e)).
“To show that a fact is, or is not, genuinely disputed,
both parties are required to either ‘cite[] to particular parts
of materials in the record’ or ‘show[] that the materials cited
do not establish the absence or presence of a genuine dispute,
10

or that an adverse party cannot produce admissible evidence to
support the fact.’”

Bruederle, 687 F.3d at 776 (alterations in

original) (quoting Fed. R. Civ. P. 56(c)(1)); see also
Mosholder, 679 F.3d at 448 (“To support its motion, the moving
party may show ‘that there is an absence of evidence to support
the nonmoving party’s case.’” (quoting Celotex, 477 U.S. at
325)).
“The court need consider only the cited materials, but it
may consider other materials in the record.”

Fed. R. Civ. P.

56(c)(3); see also Emerson v. Novartis Pharm. Corp., 446 F.
App’x 733, 736 (6th Cir. 2011) (“‘[J]udges are not like pigs,
hunting for truffles’ that might be buried in the record.”
(quoting United States v. Dunkel, 927 F.2d 955, 956 (7th Cir.
1991))); Chi. Title Ins. Corp. v. Magnuson, 487 F.3d 985, 995
(6th Cir. 2007) (“A district court is not required to ‘search
the entire record to establish that it is bereft of a genuine
issue of material fact.’” (quoting Street v. J.C. Bradford &
Co., 886 F.2d 1472, 1479-80 (6th Cir. 1989))).
“In considering a motion for summary judgment, [a court]
must draw all reasonable inferences in favor of the nonmoving
party.”

Phelps v. State Farm Mut. Auto. Ins. Co., 736 F.3d 697,

703-04 (6th Cir. 2012) (citing Matsushita, 475 U.S. at 587).
“The central issue is ‘whether the evidence presents a
sufficient disagreement to require submission to a jury or
11

whether it is so one-sided that one party must prevail as a
matter of law.’”

Id. (quoting Anderson, 477 U.S. at 251-52).

“[A] mere ‘scintilla’ of evidence in support of the non-moving
party’s position is insufficient to defeat summary judgment;
rather, the non-moving party must present evidence upon which a
reasonable jury could find in her favor.”

Tingle v. Arbors at

Hilliard, 692 F.3d 523, 529 (6th Cir. 2012) (quoting Anderson,
477 U.S. at 252).
B.

Daubert

Rule 702 of the Federal Rules of Evidence provides
that
A witness who is qualified as an expert by knowledge,
skill, experience, training, or education may testify
in the form of an opinion or otherwise if:
(a) the expert’s scientific, technical, or other
specialized knowledge will help the trier of fact to
understand the evidence or to determine a fact in
issue;
(b) the testimony is based on sufficient facts or
data;
(c) the testimony is the product of reliable
principles and methods; and
(d)
the
expert
has
reliably
applied
the
principles and methods to the facts of the case.
Fed. R. Evid. 702.

“District courts, as gatekeepers, must

nevertheless ensure that all expert testimony is rooted in firm
scientific or technical ground.”

Power Integrations, Inc. v.

Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1373 (Fed.
Cir. 2013) (citing Daubert v. Merrell Dow Pharm., Inc., 509 U.S.
579, 589-90 (1993), cert. denied, 134 S. Ct. 900 (2014); see

12

also Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 148
(1999)).

The Court of Appeals for the Federal Circuit applies

regional circuit law in reviewing a district court’s decision to
admit expert testimony.

Micro Chem., Inc. v. Lextron, Inc., 317

F.3d 1387, 1390-91 (Fed. Cir. 2003).
According to the Sixth Circuit, under Rule 702, “a proposed
expert’s opinion is admissible, at the discretion of the trial
court, if the opinion satisfies three requirements,” In re Scrap
Metal Antitrust Litig., 527 F.3d 517, 528–29 (6th Cir. 2008):
First, the witness must be qualified by “knowledge,
skill, experience, training, or education.” Fed. R.
Evid. 702.
Second, the testimony must be relevant,
meaning that it “will assist the trier of fact to
understand the evidence or to determine a fact in
issue.” Id.
Third, the testimony must be reliable.
Id.
Id. at 529.

The Sixth Circuit further instructed:

Rule 702 guides the trial court by providing general
standards to assess reliability: whether the testimony
is based upon “sufficient facts or data,” whether the
testimony is the “product of reliable principles and
methods,” and whether the expert “has applied the
principles and methods reliably to the facts of the
case.” [Fed R. Evid. 702.]
In addition, Daubert
provided a non-exclusive checklist for trial courts to
consult in evaluating the reliability of expert
testimony. These factors include: “testing, peer
review, publication, error rates, the existence and
maintenance of standards controlling the technique’s
operation, and general acceptance in the relevant
scientific community.” United States v. Langan, 263
F.3d 613, 621 (6th Cir. 2001) (citing Daubert, 509
U.S. at 593–94).
Id.

13

Although “[t]he party offering the expert’s testimony has
the obligation to prove the expert's qualifications by a
preponderance of the evidence,” Burgett v. Troy-Bilt LLC, 579 F.
App’x 372, 376 (6th Cir. 2014), “rejection of expert testimony
is the exception, rather than the rule . . . .”

In re Scrap

Metal, 527 F.3d at 530 (internal quotation marks omitted).
III. ANALYSIS
A.

WCM’s Motion for Partial Summary Judgment on
Infringement

WCM’s Motion for Partial Summary Judgment on Infringement
(ECF No. 227) is denied because WCM has failed to present
evidence in support of infringement, and there exists a genuine
issue of material fact as to the term “detachably engage.”
First, WCM argues for summary judgment based on IPS’s final
infringement contentions, which did not challenge WCM’s final
infringement contentions as to Claim 12 of the ’220 Patent,
Claim 1 of the ’970 Patent, and Claims 11-13 of the ’272 Patent.
(See ECF No. 229 at 4-7, 9.)

WCM does not present affirmative

evidence of infringement, which is necessary for the Court to
find in favor of WCM, the patentee, on this motion.
The patentee has the burden of proof “to show the presence
of every element or its equivalent in the accused device.”
Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1301 (Fed.

14

Cir. 2011); see also L & W, Inc. v. Shertech, Inc., 471 F.3d
1311, 1317-18 (Fed. Cir. 2006).
If, for example, the movant bears the burden and its
motion fails to satisfy that burden, the non-movant is
“not required to come forward” with opposing evidence.
Adickes v. S.H. Kress & Co., 398 U.S. 144, 160, 90 S.
Ct. 1598, 26 L.Ed.2d 142 (1970) (citing the advisory
committee's note to Fed. R. Civ. P. 56(e)).
As the
leading commentator on federal procedure puts it,
“[i]f the motion is brought by a party with the
ultimate burden of proof, the movant must still
satisfy its burden by showing that it is entitled to
judgment as a matter of law even in the absence of an
adequate response by the nonmovant.” 11 James Wm.
Moore et al., Moore’s Federal Practice ¶ 56.13[1] (3d
ed.2005).
Saab Cars USA, Inc. v. United States, 434 F.3d 1359, 1368
(Fed. Cir. 2006) (alteration in original); see also Fed. R. Civ.
P. 56(c)(1)(A).

Even though IPS does not contend that the

accused products lack elements of the above Claims, the absence
of a challenge from IPS, the non-moving party, is not grounds to
grant summary judgment to WCM, the moving party.

Although WCM

may have established IPS’s waiver of a defense against the
elements cited, WCM’s failure to present any evidence in support
of its motion precludes a grant of summary judgment in its
favor.
Second, WCM argues for summary judgment because there are
no genuine issues of material fact as to the terms “detachably
interconnected,” “detachably associated,” and “detachably
engage.”

(See ECF No. 229 at 10-18.)

15

The question of whether

the Court’s claim construction of “detachably engage”
necessarily includes a “snap-fit connection,” however, is a
genuine issue of material fact for the jury to determine.

In

its Order Following Claim Construction, the Court did not
exclude snap-fit connections from the scope of the term
“detachably engage.”

(See ECF No. 94.)

Rather, the Court found

that the scope of that term was broader than that of a snap-fit
connection.

(Id. at 90-92, 133-134.)

This finding suggests

that “detachably engage” may include a snap-fit connection so
long as the snap-fit connection satisfies the other requirements
of the Court’s construction.

Whether each individual snap-fit

connection satisfies those requirements is a question of fact
appropriate for a jury determination.
Accordingly, IPS may argue that factually, the individual
snap-fit connections do not fall within the Court’s
construction; however, IPS should be precluded from arguing that
snap-fit connections generally are excluded from the Court’s
construction.

See Exergen Corp. v. Wal-Mart Stores, Inc., 575

F.3d 1312, 1322 (Fed. Cir. 2009).
WCM also asserts that IPS should be precluded from arguing
new positions for the term “detachably engage,” and related
terms “detachably interconnected,” and “detachably associated.”
(ECF No. 229 at 15.)

WCM, however, fails to cite to any case

law prohibiting a party from advocating new legal theories based
16

on a court’s claim construction rulings.

IPS’s change of

positions is reasonable and required based on the Court’s
rejection of IPS’s proposed claim constructions.
Thus, because WCM has not presented facts of its own in
support of infringement, and because there remains a genuine
issue of material fact as to the term “detachably engage” with
respect to snap-fit connections, WCM’s Motion for Partial
Summary Judgment on Infringement (ECF No. 227) is denied.
B.

IPS’s Motion for Partial Summary Judgment of
Noninfringement

IPS’s Motion for Partial Summary Judgment of
Noninfringement (ECF No. 235) is denied because there exist
genuine issues of material fact for the jury to decide.

IPS

argues that summary judgment of noninfringement is appropriate
as to the “revised locknut” on IPS’s “Classic” products because
the locknut has no “lugs” or “cap retention elements” and
because the cap and locknut attach to each other by a snap-fit
connection.

(Id. at 3-16.)

IPS also asserts that there is no

issue of material fact as to noninfringement under the doctrine
of equivalents.

(Id. at 16-20.)

IPS asserts that the revised locknut practices the prior
art; specifically, IPS states that “the ‘revised locknut’ has
the same shape and features as AB&A’s ‘shower locknut,’ which
was on sale as early as 1996.”

(Id. at 8.)

17

The Federal

Circuit, however, has not accepted “practicing the prior art” as
a defense to infringement.

Tate Access Floors, Inc. v.

Interface Architectural Res., 279 F.3d 1357, 1365 (Fed. Cir.
2002).

Whether IPS’s revised locknut is an express adoption of

the prior art, AB&A’s shower locknut in particular, is a
question of fact for the jury.
Further, whether the revised locknut infringes under the
doctrine of equivalents or literally infringes the asserted
patents is an issue for the jury to determine.

There are

questions of fact as to whether lugs or cap retention elements
exist on the revised locknut, in light of IPS’s own instructions
for its Classic products which refer to “high points” on the
locknut.

(See ECF No. 235-2 at 14.)

The Court, as a matter of

law, finds that the entire circular periphery cannot be
considered lugs or cap retention elements, but the jury must
resolve whether the high points constitute the lugs or cap
retention elements recited in the claims.

IPS also misconstrues

the Court’s construction of “detachably engage” to refer only to
connections that rely solely on friction.
9.)

(See ECF No. 235 at

While a frictional connection is necessary, the Court’s

construction does not require the caps to be held on by friction
alone, as IPS asserts.

(ECF No. 94 at 95 (“the Court finds that

that connection between the lugs and cap are limited to a
frictional connection”).)

The Court’s construction does not
18

exclude snap-fit connections (see ECF No. 94 at 90-92), and WCM
did not disclaim all snap-fit connections during prosecution.
(See ECF No. 302 at 7, 13.)

There is a question of fact as to

whether the interconnection between the cap and revised locknut
is a snap-fit connection that is excluded by the Court’s
construction of “detachably engaged.”
IPS argues that summary judgment as to the doctrine of
equivalents is appropriate because WCM’s expert, Dr. Turley,
failed to perform an element-by-element analysis of IPS’s
products and the asserted claims.

(ECF No. 235 at 18.)

This

failure, however, is not dispositive because the jury can be
instructed to perform an element-by-element analysis under the
doctrine of equivalents. 1

Since there are still issues of fact

for the jury to resolve on the issue of noninfringement, IPS’s
Motion for Partial Summary Judgment of Noninfringement (ECF No.
235) is denied.
C.

IPS’s Motion for Summary Judgment of No Willfulness

IPS’s Motion for Summary Judgment of No Willfulness (ECF
No. 237) is denied because there is a genuine issue of material
fact as to whether IPS’s pre- or post-litigation conduct was
objectively reckless.

“[P]roof of willful infringement

permitting enhanced damages requires at least a showing of
1

IPS’s Motion in Limine to Exclude the Report and Testimony of Dr. Richard
Turley is granted in this Order, see infra Part III.H. Although Dr. Turley’s
testimony is excluded, IPS cannot prevail on its motion for partial summary
judgment because the jury must resolve the doctrine of equivalents issue.

19

objective recklessness.”

In re Seagate Tech., LLC, 497 F.3d

1360, 1371 (Fed. Cir. 2007) (en banc).

“Willfulness . . .

consists of two elements: (1) an objective element that is
often, but not always, a question of law, and (2) a subjective
element that is inherently a question of fact, to be decided by
the jury.”

Stryker Corp. v. Zimmer Inc., No. 1:10-CV-1223, 2013

WL 6231533, at *11 (W.D. Mich. Aug. 7, 2013) (citing Bard
Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d
1003, 1007 (Fed. Cir. 2012)), rev’d in part on other grounds,
782 F.3d 649 (Fed. Cir. 2014).
WCM argues that IPS engaged in unreasonable conduct by
failing to secure an outside legal opinion as to infringement or
invalidity of WCM’s patents.

(ECF No. 294 at 3-4.)

The Federal

Circuit has held, however, that “[a]n adverse inference that a
legal opinion was or would have been unfavorable shall not be
drawn . . .

from failure to consult with counsel.”

Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383
F.3d 1337, 1347 (Fed. Cir. 2004) (en banc).

A “requirement . .

. for early and full study by counsel of every potentially
adverse patent of which the defendant had knowledge” in order to
avoid liability for willful infringement would be burdensome and
costly and could “occasion[] extensive satellite litigation.”
Id. at 1345.

Thus, willfulness cannot be inferred from IPS’s

failure to seek outside counsel.
20

While the issue of securing a legal opinion does not
establish an issue of material fact as to willfulness, WCM’s
allegations of copying by IPS do establish an issue of material
fact.

WCM asserts that IPS, through its predecessor AB&A,

copied WCM’s Innovator product.

(ECF No. 294 at 8.)

WCM

provides evidence of substantial similarity between IPS’s
Classic products and WCM’s Innovator products and presents
deposition testimony from a former WCM employee, stating that an
AB&A representative told him in 2005, “We just wait until Watco
[a division of WCM] introduces a new product, we copy it and get
it made cheaper and cut the price in the field.”

(ECF No. 250-1

at 200:4-24; see ECF No. 294 at 8-9.)
The Court does not find a genuine issue of material fact as
to willfulness in IPS’s post-litigation conduct.

IPS asserts

that it revised its locknut design in an attempt to avoid
infringing the asserted claims, which contradicts a finding of
willfulness.

(See ECF No. 237 at 11.)

IPS also asserts that

WCM should have moved for a preliminary injunction to challenge
post-litigation conduct and that WCM’s failure to do so prevents
WCM from seeking enhanced damages based on post-litigation
willfulness.

(Id. at 1-2.)

WCM’s failure to move for a

preliminary injunction is substantial evidence against a claim
of post-litigation willfulness.

See Seagate, 497 F.3d at 1374

(“[W]hen an accused infringer’s post-filing conduct is reckless,
21

a patentee can move for a preliminary injunction, which
generally provides an adequate remedy . . . . A patentee who
does not attempt to stop an accused infringer’s activities in
this manner should not be allowed to accrue enhanced damages
based solely on the infringer’s post-filing conduct.”)

Although

the evidence does not create a genuine issue of material fact as
to post-litigation willfulness, it does create a genuine issue
of material fact as to willfulness in IPS’s pre-litigation
conduct.

Thus, IPS’s Motion for Summary Judgment of No

Willfulness (ECF No. 237) is denied.
D.

IPS’s Motion for Partial Summary Judgment of
Invalidity

IPS’s Motion for Partial Summary Judgment of Invalidity
(ECF No. 239) is denied because IPS’s assertion of invalidity is
procedurally barred.

Local Patent Rule 3.5(d) requires

disclosure of invalidity contentions based on § 102 to be served
on the opposing party.

LPR 3.5(d).

IPS’s sole basis for its

assertion of invalidity pursuant to 35 U.S.C. § 102(b), the
on-sale bar, is a citation to exhibit A of its final invalidity
contentions (ECF No. 238-20).
is a list of prior art.

(ECF No. 239-1 ¶ 34.)

Exhibit A

Entry 27 states, “‘New WATCO Eliminator

Bath Waste,’ WATCO, as early as Aug. 8, 2001, pp. 1-2.”

Entry

28 states, “Tubular Plastic Innovator® 590,’ Woodford
Manufacturing Company, first sold Aug. 16, 2001, pp. 1-2.”

22

(ECF

No. 238-20 at 2.)

This reference, by itself, does not comply

with the requirements of Local Patent Rule 3.5(a) that “[p]rior
art under 35 U.S.C. § 102(b) shall be identified by specifying
the item offered for sale or publicly used or known, the date
the offer or use took place or the information became known, and
the identity of the person or entity which made the use or which
made and received the offer, or the person or entity which made
the information known or to whom it was made known.”

LPR

3.5(a).
IPS’s noncompliance with local patent rules justifies the
denial of IPS’s assertion of invalidity.

IPS’s procedural

violations are sufficiently analogous to Genentech’s violation
in Genentech, Inc. v. Amgen, Inc., in which the Federal Circuit
upheld a district court’s decision to preclude Genentech from
asserting an infringement theory when Genentech did not include
the theory in a claim chart, as required by a local rule.
F.3d 761, 773-74 (2002).

289

Further, IPS did not seek to amend its

final invalidity contentions (ECF No. 224-11) to include the §
102(b) defense when it could have done so in its Motion for
Leave to File a Fourth Amended Answer and Counterclaim (ECF No.
329.).

Local Patent Rule 3.8(d) allows amendment to final

contentions “only by order of the Court upon a showing of good
cause and absence of unfair prejudice, made in timely fashion,
following discovery of the basis for such amendment.”
23

LPR

3.8(d).

Thus, WCM would be substantially prejudiced if the

Court were to allow IPS to raise this defense at this stage of
proceedings because WCM was not put on sufficient notice of the
§ 102(b) defense.

IPS also has not shown good cause to delay

trial in order to assert this defense.

Therefore, IPS’s Motion

for Partial Summary Judgment of Invalidity (ECF No. 239) is
denied.
E.

WCM’s Motion for Partial Summary Judgment on
Invalidity

WCM’s Motion for Partial Summary Judgment on Invalidity
(ECF No. 241) is denied.

Since WCM withdrew the parts of this

motion that concerned non-asserted claims and non-asserted
patents (ECF No. 310), the Court will consider only the
remaining issues asserted in the motion.

There is a genuine

issue of material fact as to whether IPS can prove by clear and
convincing evidence that WCM disavowed a snap-fit attachment
during patent prosecution.

WCM alleges that IPS’s expert, Mr.

Paschal, has impermissibly relied on a construction of terms
that disavow a snap-fit attachment.

(ECF No. 243 at 6.)

There

is no obvious indication, however, that Mr. Paschal has argued
that WCM has disavowed a snap-fit attachment.
286-2.)

(See ECF No.

WCM has cited only the Court’s Claim Construction Order

(ECF No. 94) and its own memorandum for summary judgment on
infringement (ECF No. 229) to further its argument, and has

24

failed to cite to a document in the record relevant to
invalidity to support its claim.
Also, as to the issue of whether Mr. Paschal improperly
failed to consider and give weight to the presumption of
validity, the Court finds that the failure does not preclude Mr.
Paschal from testifying.

See Iplearn, LLC v. Blackboard Inc.,

C.A. No. 11-876 (RGA), 2014 WL 4967122, at *2 (D. Del. Oct. 2,
2014) (“Clear and convincing evidence and the presumption of
validity are not standards required of expert opinion on
invalidity, but standards used by a factfinder.

These are legal

concepts that are for jury determinations, not for expert
witnesses.”)

Thus, because Mr. Paschal’s testimony is

admissible, it would be inappropriate to grant summary judgment
in favor of WCM on the issue of validity.

Accordingly, WCM’s

Motion for Partial Summary Judgment on Invalidity (ECF No. 241)
is denied.
F.

IPS’s Motion to Exclude Expert Testimony of Clarke B.
Nelson

IPS’s Motion to Exclude Expert Testimony of Clarke B.
Nelson (ECF No. 257) is denied because Nelson’s expert testimony
is based on sufficient facts and data and is the product of
reliable principles and methods that have been reliably applied
to the facts of the case.

Mr. Nelson’s expert testimony as to a

reasonable royalty of $1.50 to $1.90 per infringing unit is

25

based on numerous quantitative data points and apportionment
calculations.

(See ECF No. 257-1.)

Under Federal Circuit precedent, there is no rigid
requirement for formulaic calculations and a “starting point.”
See Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1232
(Fed. Cir. 2014) (“Although we recognize the desire for bright
line rules and the need for district courts to start somewhere,
courts must consider the facts of record when instructing the
jury and should avoid rote reference to any particular damages
formula.”).

The fifteen factors listed in Georgia-Pacific Corp.

v. U.S. Plywood Corp. are commonly used to determine a
reasonable royalty for a patent license, but these factors are
not necessary for a royalty calculation.
1120 (S.D.N.Y. 1970).

318 F. Supp. 1116,

“We do not require that witnesses use any

or all of the Georgia-Pacific factors when testifying about
damages in patent cases. . . .

Expert witnesses should

concentrate on fully analyzing the applicable factors, not
cursorily reciting all fifteen. And, while mathematical
precision is not required, some explanation of both why and
generally to what extent the particular factor impacts the
royalty calculation is needed.”

Whitserve, LLC v. Computer

Packages, Inc., 694 F.3d 10, 31 (Fed. Cir. 2012).
Mr. Nelson’s consideration of qualitative factors is
consistent with the Georgia-Pacific factors.
26

For example, the

fourth factor requires the court to consider “[t]he licensor’s
established policy and marketing program to maintain his patent
monopoly . . . .”

Georgia-Pacific, 318 F. Supp. at 1120.

This

factor requires a qualitative analysis of the relevant policy.
Moreover, Mr. Nelson’s analysis of the Georgia-Pacific factors
is well-reasoned and not merely conclusory.
at 8-29.)

(See ECF No. 257-1

Accordingly, Mr. Nelson’s testimony is admissible.

IPS’s Motion to Exclude Expert Testimony of Clarke B. Nelson
(ECF No. 257) is denied.
G.

IPS’s Motion in Limine to Exclude the Report and
Testimony of Michael Thuma

IPS’s Motion to Exclude the Report and Testimony of Michael
Thuma (ECF No. 262) is denied because Mr. Thuma, a rebuttal
expert, qualifies as a person of ordinary skill in the art.

IPS

argues that Mr. Thuma is not qualified to testify because a
person of ordinary skill in the art, by IPS’s definition and
WCM’s initial definition, would have “years of experience in the
plumbing industry,” while Mr. Thuma has never worked in the
plumbing industry.

(See id. at 9.)

WCM argues that the

remaining asserted claims are not plumbing-specific and do not
require “working knowledge of residential and commercial
plumbing testing procedures.”

(ECF No. 308 at 8-9.)

Mr. Thuma

has extensive experience in design and development across
multiple industries.

(See ECF No. 262-2 at 2-3.)

27

His degrees

in industrial design and product development and his technical
work experience qualify him as an expert on the “simple
mechanical relationships invoked by the claims asserted in the
present case.”

(ECF No. 308 at 7; see also ECF No. 262-2 at 3,

ECF No. 308-2.)
IPS also argues that Mr. Thuma “did not actually consider
Dr. Turley’s infringement expert report or WCM’s Final
Infringement Contentions in forming the opinions found in his
rebuttal report on validity.”

(ECF No. 262 at 14-16.)

Mr.

Thuma’s consideration of Dr. Turley’s infringement report is
irrelevant, since Dr. Turley’s report and testimony are
inadmissible, see infra Part III.H.

Moreover, Mr. Thuma stated

in his deposition that he believed he had reviewed sections of
WCM’s Final Infringement Contentions and “recall[ed] elements of
[it] with the claim charts.”

(ECF No. 262-4 at 170:14-23.)

The

Court agrees with WCM that IPS’s argument as to Mr. Thuma’s
review of WCM’s Final Infringement Contentions goes only to the
weight, not the reliability, of Mr. Thuma’s testimony.
IPS further argues that Mr. Thuma did not engage in a
priority analysis in his report and that he should be precluded
from testifying about priority dates.

(ECF No. 262 at 16-18.)

Rule 26 requires an expert witness to disclose an
expert report that contains “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). The purpose of the expert disclosure
28

rule is to “provide opposing parties reasonable
opportunity to prepare for effective cross examination
and perhaps arrange for expert testimony from other
witnesses.”
Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care,
Inc., 725 F.3d 1377, 1381 (Fed. Cir. 2013).

WCM argues that Mr.

Thuma did not need to engage in a priority analysis because Mr.
Thuma’s testimony as a rebuttal expert was limited to addressing
positions advanced by IPS’s expert.

(ECF No. 308 at 10.)

Whether or not Mr. Thuma was required to analyze priority dates
in his report, he will not be able to present testimony about
priority dates or any other opinions not disclosed in his expert
report.
Mr. Thuma’s testimony as it comports with opinions in his
expert report is admissible.

Thus, IPS’s Motion to Exclude the

Report and Testimony of Michael Thuma (ECF No. 262) is denied.
H.

IPS’s Motion in Limine to Exclude the Report and
Testimony of Dr. Richard Turley

IPS’s Motion to Exclude the Report and Testimony of Dr.
Richard Turley (ECF No. 264) is granted because Dr. Turley’s
testimony is not based on sufficient facts and data and is not
reliable.

Dr. Turley’s analysis is based on only three samples

of the hundreds of accused products.
9-12.)

(See ECF No. 264-2 at

More importantly, in his measurement of high points on

the revised locknut, he only used one sample per product and did
not perform an error analysis.

(Id. at 43.)
29

The Court is

persuaded by IPS’s contention that, when variations in the
measurements are in the thousandths of an inch, it is
inappropriate to draw conclusions from single samples and not to
account for differences in the molds that create the locknuts.
(ECF No. 264 at 18.)

Dr. Turley’s testimony is based on

insufficient data and is likely unreliable.

Thus, IPS’s Motion

to Exclude the Report and Testimony of Dr. Richard Turley (ECF
No. 264) is granted.
IV.

CONCLUSION
For the reasons stated above, IPS’s Motion in Limine to

Exclude the Report and Testimony of Dr. Richard Turley (ECF No.
264) is GRANTED.

WCM’s Motion for Partial Summary Judgment on

Infringement (ECF No. 227); IPS’s Motion for Partial Summary
Judgment of Noninfringement (ECF No. 235); IPS’s Motion for
Summary Judgment of No Willfulness (ECF No. 237); IPS’s Motion
for Partial Summary Judgment of Invalidity (ECF No. 239); WCM’s
Motion for Partial Summary Judgment on Invalidity (ECF No. 241);
IPS’s Motion to Exclude Expert Testimony of Clarke B. Nelson
(ECF No. 257); and IPS’s Motion in Limine to Exclude the Report
and Testimony of Michael Thuma (ECF No. 262) are DENIED.
IT IS SO ORDERED, this 5th day of October, 2015.

/s/ Jon P. McCalla
JON P. McCALLA
UNITED STATES DISTRICT JUDGE
30