NLB CORP. v. PSI Pressure Systems LLC dba PSI Pressure Systems Corp.
Filing
67
MEMORANDUM AND ORDER granting PSI's Motion for Summary Judgment 52 as to the patent infringement claims and denying as to the Lanham Act false advertising claim; denying NLB's Motion for Summary Judgment and to Strike PSI's Expert Reports 53 ; denying as moot PSI's Motions to Exclude Expert Patent Infringement Testimony [50, 51].(Signed by Judge Nancy F Atlas) Parties notified.(TDR, 4)
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United States District Court
Southern District of Texas
ENTERED
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
NLB CORP.,
Plaintiff,
v.
PSI PRESSURE SYSTEMS LLC,
Defendant.
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§
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November 14, 2019
David J. Bradley, Clerk
CIVIL ACTION NO. H-18-1090
MEMORANDUM AND ORDER
This patent case is before the Court on the Motion to Exclude Patent
Infringement Testimony by NLB Witnesses [Doc. # 50] filed by Defendant PSI
Pressure Systems LLC d/b/a PSI Pressure Systems Corp. (“PSI”); Defendant’s Motion
to Exclude Testimony of Plaintiff’s Expert William Marscher [Doc. # 51];
Defendant’s Motion for Summary Judgment [Doc. # 52]; and Plaintiff NLB Corp.
(“NLB”)’s Motion for Summary Judgment and to Strike PSI’s Expert Reports [Doc.
# 53].1 Having reviewed the record and the governing legal authorities, the Court
grants summary judgment in favor of PSI as to literal infringement by the NX-series
1
Plaintiff NLB filed a Response to the Motion to Exclude Patent Infringement
Testimony by NLB Witnesses [Doc. # 54], and PSI filed a Reply [Doc. # 61]. NLB
filed a Response to the Motion to Exclude Testimony of William Marscher [Doc.
# 58], and PSI filed a Reply [Doc. # 60]. NLB filed a Response to PSI’s Motion for
Summary Judgment [Doc. # 56], and PSI filed a Reply [Doc. # 59]. PSI filed a
Response to NLB’s Motion for Summary Judgment and to Strike PSI’s Expert
Reports [Doc. # 62], NLB filed a Reply [Doc. # 63], and PSI filed a Sur-Reply [Doc.
# 66].
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products, as to infringement under the doctrine of equivalents by the NX-series
products, and as to PSI’s permissible repair defense in connection with the NLB-type
replacement parts. The Court denies summary judgment on the false advertising
claim. The Court denies NLB’s Motion for Summary Judgment. The Court denies
as moot the motions to exclude expert testimony of NLB corporate witnesses,
William Marscher, Dara Childs, and Randy Hinson.
I.
BACKGROUND
NLB designs, manufactures, and markets high pressure waterjet systems
(pumps) and components. NLB’s pumps can be used to clean industrial equipment
for the oil and gas industry.
NLB is the owner of United States Patent No. 7,121,812 (“the ’812 Patent”),
entitled High Pressure Pump Having Replaceable Plunger/Valve Cartridges.2 The
pump covered by the ’812 Patent is a double guided system. In single guided valve
assemblies, only the valve stem is guided. The double guided valve guide, however,
guides both the valve stem and the valve head. It includes one section with a reduced
diameter that guides the stem portion of the valve and a second section with an
2
Jamie Forrest, a former NLB employee, is the inventor of the pump covered by the
’812 Patent. Forrest now works for PSI as its Vice President of Engineering.
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increased diameter that guides the valve head. According to NLB, this double guiding
feature improves valve performance and increases the life of the valve.
PSI manufactures and sells competing high pressure waterjet pumps and
components. PSI sells NX-series pumps, NX-series cartridges, and NX-series
components (the “NX-series products”) that NLB alleges infringe Claim 33 of the
’812 Patent. Additionally, PSI manufactures and sells replacement parts for use with
NLB’s pumps (the “NLB-type” parts). NLB alleges that these NLB-type parts
infringe Claim 33 when used by PSI’s customers in a pump.
PSI made a statement on its Facebook page that characterizes its NLB-type
parts as made from “superior materials” and “guaranteed to last longer” than
“competitors’ parts.” See Facebook Posts, Exh. 3 to First Amended Complaint [Doc.
# 6]. NLB alleges that these statements constitute false advertising under the Lanham
Act.
NLB filed this lawsuit alleging that the NX-series products infringe Claim 33
of the ’812 Patent, either literally or under the doctrine of equivalents. NLB alleges
further that PSI’s sale of the NLB-type parts induces infringement of Claim 33 in
violation of 35 U.S.C. § 271(b) and contributes to infringement in violation of
§ 271(c). NLB asserts a violation of the Lanham Act based on PSI’s statements on
its Facebook page.
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Following claim construction based on the parties’ agreement, and the
completion of discovery, each party moved for summary judgment on the
infringement and Lanham Act claims. Each party also moved to exclude certain
expert testimony offered by the opposing party. The Motions have been fully briefed
and are now ripe for decision.
II.
SUMMARY JUDGMENT STANDARD
Rule 56 of the Federal Rules of Civil Procedure mandates the entry of summary
judgment, after adequate time for discovery and upon motion, against a party who
fails to make a sufficient showing of the existence of an element essential to the
party’s case, and on which that party will bear the burden at trial. Celotex Corp. v.
Catrett, 477 U.S. 317, 322 (1986). “When evaluating a motion for summary
judgment, the court views the record evidence through the prism of the evidentiary
standard of proof that would pertain at a trial on the merits.” SRAM Corp. v. AD-II
Engineering, Inc., 465 F.3d 1351, 1357 (Fed. Cir. 2006).
Summary judgment on infringement is appropriate if there is no genuine issue
as to any material fact and the moving party is entitled to judgment as a matter of law.
See Ultimatepointer, L.L.C. v. Nintendo Co., Ltd., 816 F.3d 816, 824 (Fed. Cir. 2016).
The infringement analysis at the summary judgment stage requires the Court to
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compare the patent claims as construed with the accused device. See Convolve, Inc.
v. Compaq Computer Corp., 812 F.3d 1313, 1317 (Fed. Cir. 2016).
III.
LITERAL INFRINGEMENT
NLB argues that the NX-series products literally infringe Claim 33 of the ’812
Patent. Both NLB and PSI have moved for summary judgment on the literal
infringement claim.
A.
Governing Legal Principles
“[W]hoever without authority makes, uses, offers to sell, or sells any patented
invention, within the United States . . . infringes the patent.” 35 U.S.C. § 271(a);
Lexmark Int’l, Inc. v. Impression Prods., Inc., 816 F.3d 721, 726 (Fed. Cir. 2016);
Int’l Bus. Machines Corp. v. Booking Holdings Inc., 775 F. App’x 674, 677 (Fed. Cir.
May 22, 2019). “An infringement analysis has two steps.” Indivior Inc. v. Dr.
Reddy’s Labs., S.A., 930 F.3d 1325, 1336 (Fed. Cir. 2019) (citing Clare v. Chrysler
Grp. LLC, 819 F.3d 1323, 1326 (Fed. Cir. 2016)).
In the first step, the Court construes the asserted claims. Id. In this case, the
parties agreed on the proper construction of the relevant claim terms. See Joint
Proposed Claim Construction Chart [Doc. # 27]. The Court agreed with, and adopted,
the parties’ proposed claim construction. See Order [Doc. # 28].
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In the second step, the Court determines whether the accused product meets
each limitation of the claim as construed. See Indivior, 930 F.3d at 1336. The
comparison is only to the patent claims as construed, not to any specific embodiment
in the patent specification or to the patent holder’s commercial embodiment. See
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1347 (Fed. Cir. 2003);
Fleet Eng’rs, Inc. v. Mudguard Techs., LLC, 761 F. App’x 989, 992 (Fed. Cir.
Feb. 25, 2019).
“The patentee has the burden of proving infringement by a
preponderance of the evidence.” Eli Lilly & Co. v. Hospira, Inc., 933 F.3d 1320, 1328
(Fed. Cir. 2019).
B.
Analysis
Claim 33 of the ’812 Patent covers a discharge valve assembly for a high
pressure fluid jetting system comprising:
a discharge valve guide having a discharge valve guide skirt and a
discharge valve guide stem said discharge valve guide skirt is of
a greater diameter than said discharge valve guide stem;
a discharge valve having a discharge valve stem and a discharge valve
head of a greater diameter than said discharge valve stem, said
discharge valve stem axially guided within said discharge valve
guide stem and said discharge valve head axially guided within
said discharge valve guide skirt along a common axis; and
a discharge valve spring located within said discharge valve stem.
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’812 Patent, Claim 33 (emphasis added). PSI argues that its NX-series products do
not infringe Claim 33 because the valve head is not guided in PSI’s products.
NLB alleges that PSI’s NX-series products infringe Claim 33 of the ’812 Patent
because the “discharge valve guide skirt has a certain geometry that causes fluid
(water) flowing through the valve to exhibit a centering force that axially guides the
valve head within the valve guide skirt.”3 NLB’s Motion, p. 14. Stated differently,
NLB argues that “‘indirect’ guiding is provided by water in the valve that behaves in
a certain manner due to the geometry of PSI’s valve guide.” Id. at 15.
The parties agreed to the proper construction of certain claim terms in Claim 33,
and the Court adopted the parties’ agreed construction. The “valve guide” is
construed to mean a “valve element that steadies or directs movement of a valve.”
Joint Proposed Claim Construction Chart [Doc. # 27], p. 3. The Court adopted the
parties’ agreed construction that the valve guide has a forward portion, referred to as
the “valve guide skirt,” and an aft portion, the “valve guide stem.” See id. The “valve
guide skirt” has been construed, in accordance with the parties’ agreement, to mean
“a forward portion of the valve guide” and the “valve guide” has been construed to
3
In support of its argument that water and geometry guide the valve head, NLB relies
on the expert report and testimony of William Marscher. PSI has moved to exclude
Marscher’s testimony regarding this “Lomakin effect,” arguing that it does not apply
to PSI’s NX-series products. For purposes of the motions for summary judgment, the
Court assumes, but does not find, that water and geometry can guide the valve head
in PSI’s NX-series products.
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mean a valve element. See id. Therefore, the “valve guide skirt” is a forward portion
of a valve “element.”
Further, the Court, based on the parties’ agreement, construed the claim term
“said discharge valve head axially guided within said discharge valve guide skirt” in
Claim 33 to mean “the valve guide skirt steadies or directs movement of the valve
head along a longitudinal axis.” See id. Therefore, it is the “valve guide skirt” that
“directs movement of the valve head.” As noted above, the “valve guide skirt” is a
forward portion of a “valve element.” To infringe Claim 33 literally, the valve head
must be guided by the forward portion of a valve element. Neither water nor
“geometry” is a “valve element.” Consequently, guiding the valve head with water
or geometry does not literally infringe Claim 33 of the ’812 Patent. PSI is entitled to
summary judgment on NLB’s literal infringement claim. NLB’s motion for summary
judgment on this issue is denied.
IV.
DOCTRINE OF EQUIVALENTS
NLB argues that even if there is no literal infringement, the NX-series products
infringe Claim 33 of the ’812 Patent under the doctrine of equivalents because guiding
with water is the equivalent of guiding with an element of the valve. PSI argues that
the doctrine of equivalents cannot apply as asserted by NLB because the equivalent
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on which NLB relies – guiding with water – would “ensnare” the prior art. Both NLB
and PSI have moved for summary judgment on this claim.
A.
Governing Legal Principles
“The doctrine of equivalents prevents an accused infringer from avoiding
infringement by changing only minor or insubstantial details of a claimed invention
while retaining their essential functionality.” Sage Prod., Inc. v. Devon Indus., Inc.,
126 F.3d 1420, 1424 (Fed. Cir. 1997); Choon’s Design, LLC v. Idea Vill. Prod. Corp.,
776 F. App’x 691, 697 (Fed. Cir. June 24, 2019). “A finding of infringement under
the doctrine of equivalents requires a showing that the difference between the claimed
invention and the accused product was insubstantial.” Crown Packaging Tech., Inc.
v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009).
The Federal Circuit has emphasized that the doctrine of equivalents is the
exception and “not the rule.” Eli Lilly & Co. v. Hospira, Inc., 933 F.3d 1320, 1330
(Fed. Cir. 2019). “Patent infringement is principally determined by examining
whether the accused subject matter falls within the scope of the claims.” Id.
Therefore, “courts have placed important limitations on a patentee’s ability to assert
infringement under the doctrine of equivalents.” Id.
One of those limitations is referred to as “ensnarement.” A doctrine of
equivalents theory cannot succeed if it will encompass or “ensnare” the prior art. See
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G. David Jang, M.D. v. Bos. Sci. Corp., 872 F.3d 1275, 1285 (Fed. Cir. 2017), cert.
denied, __ U.S. __, 139 S. Ct. 58 (2018). The “ensnarement” limitation applies even
if there is equivalence as to each element of the asserted claim. See id.
Ensnarement is generally determined using a “hypothetical claim analysis.” See
id. “Under a hypothetical claim analysis, a patentee proposes a hypothetical claim
that is sufficiently broad in scope to literally encompass the accused product or
process.” Ultra-Tex Surfaces, Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360, 1364 (Fed.
Cir. 2000) (emphasis added). “The burden of producing evidence of prior art to
challenge a hypothetical claim rests with an accused infringer, but the burden of
proving patentability of the hypothetical claim rests with the patentee.” Jang, 872
F.3d at 1285, 1287 (the patentee has the burden of “proposing a proper hypothetical
claim”).
When the patentee fails to submit a proper hypothetical claim for
consideration, the patentee has “failed to meet his burden of proving that his doctrine
of equivalents theory did not ensnare the prior art.” Id. at 1287.
B.
Analysis
PSI has presented evidence that a prior art NLB valve assembly and the valve
assembly covered by prior art United States Patent No. 2,339,101 (the “Parker
Patent”) used water to guide the valve. See Declaration of Jamie Forrest, Exh. 1 to
PSI’s Motion, ¶ 15; Parker Patent, Exh. B to Forrest Declaration. Therefore, NLB’s
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doctrine of equivalents theory – that guiding with water is the equivalent of guiding
with an element of the valve – cannot succeed unless NLB can show that its theory
will not encompass or “ensnare” the cited prior art.
NLB argues that PSI cannot rely on the ensnarement defense because “PSI has
never presented a hypothetical claim so that the parties could meaningfully engage in
this analysis.” See NLB’s Response to PSI’s Motion, p. 6. In support of its position
that PSI has the burden to present the hypothetical claim, NLB cites a district court
case from 2010, Tesco Corp. v. Weatherford Int’l, Inc., 750 F. Supp. 2d 780, 805
(S.D. Tex. 2010). See id. at 6-7. After the Tesco decision was issued, however, the
Federal Circuit stated clearly and unequivocally that the patentee has the burden of
“proposing a proper hypothetical claim.” Jang, 872 F.3d at 1287. Although PSI cited
the Federal Circuit’s Jang decision in its Reply filed September 30, 2019, NLB
continued to argue that PSI has the burden to present the hypothetical claim, again
citing Tesco. See NLB’s Reply (filed October 14, 2019), p. 5.
The Federal Circuit in Jang held that the patentee has the burden to propose a
hypothetical claim for purposes of an ensnarement defense to infringement under the
doctrine of equivalents. NLB has failed to propose a hypothetical claim in this case,
and the time to do so has expired. As noted by the Federal Circuit, when the patentee
fails to submit a proper hypothetical claim for consideration, the patentee has “failed
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to meet his burden of proving that his doctrine of equivalents theory did not ensnare
the prior art.” Jang, 872 F.3d at 1287. PSI is entitled to summary judgment on
NLB’s claim that the NX-series products infringe Claim 33 of the ’812 Patent under
the doctrine of equivalents.
V.
DOCTRINE OF PERMISSIBLE REPAIR
NLB argues that PSI sells the NLB-type parts that, when used by a customer
in a pump, include all limitations in Claim 33 of the ’812 Patent. On that basis, NLB
asserts a contributory infringement claim under 35 U.S.C. § 271(c) and an induced
infringement claim under 35 U.S.C. § 271(b).4
PSI argues that there is no
infringement, induced or contributory, because the sale of these replacement parts is
protected by the permissible repair doctrine. Both parties have moved for summary
judgment on PSI’s permissible repair defense.
4
“Whoever offers to sell or sells within the United States . . . a component of a
patented machine, manufacture, combination or composition, or a material or
apparatus for use in practicing a patented process, constituting a material part of the
invention, knowing the same to be especially made or especially adapted for use in
an infringement of such patent, and not a staple article or commodity of commerce
suitable for substantial noninfringing use, shall be liable as a contributory infringer.”
35 U.S.C. § 271(c).
“Whoever actively induces infringement of a patent shall be liable as an infringer.”
35 U.S.C. § 271(b).
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A.
Governing Legal Principles
It has long been established that “replacement of individual unpatented parts,
one at a time, whether of the same part repeatedly or different parts successively, is
no more than the lawful right of the owner to repair his property.” Aro Mfg. Co. v.
Convertible Top Replacement Co., 365 U.S. 336, 346 (1961). This is true because the
“right of use transferred to a purchaser by an authorized sale ‘include[s] the right to
repair the patented article.’” Auto. Body Parts Ass’n v. Ford Glob. Techs., LLC, 930
F.3d 1314, 1323 (Fed. Cir. 2019) (quoting Kendall Co. v. Progressive Med. Tech.,
Inc., 85 F.3d 1570, 1573 (Fed. Cir. 1996)). “The Supreme Court has taken an
expansive view of conduct that constitutes permissible repair for a patented
combination of unpatented elements.” Sage Prods., Inc. v. Devon Indus., Inc., 45 F.3d
1575, 1578 (Fed. Cir. 1995).
Permissible repair exists if the part at issue is a readily replaceable part. See
Husky Injection Molding Sys. Ltd. v. R & D Tool Eng’g Co., 291 F.3d 780, 787 (Fed.
Cir. 2002). The doctrine of permissible repair is directed primarily to the replacement
of broken or worn parts, but applies also to the “replacement of parts that are neither
broken nor worn.” Id. at 788. If a part is readily replaceable, “it is irrelevant whether
the part was an essential element of the invention.” Id. The doctrine of permissible
repair is not limited to temporary or minor repairs but, instead, encompasses any
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repair that is necessary for the “maintenance of the ‘use of the whole’ of the patented
combination through replacement of a spent, unpatented element.” See Sage, 45 F.3d
at 1578 (quoting Aro, 365 U.S. at 346).
The burden of proof is on the party asserting permissible repair. See Fuji Photo
Film Co. v. Int’l Trade Comm’n, 474 F.3d 1281, 1295 (Fed. Cir. 2007). Accordingly,
PSI bears this burden here.
B.
Analysis
PSI has presented evidence that the NLB-type parts are readily replaceable
parts. The parts are sold by PSI to replace parts that need to be replaced during the
useful life of the NLB pump and valve assembly. See PSI Response to NLB
Interrogatory No. 18, Exh. K to NLB’s Motion. NLB sells similar replacement parts
because the parts are “wear products” that “wear out” and need to be replaced. See
Deposition of Drew Waltenbaugh (NLB’s President and Chief Executive Officer), pp.
42-43. PSI presented deposition testimony from Donald Anthony Wojciechowski,
NLB’s engineer, that NLB expects a customer to “get at least 1,000 hours of run time
out of a valve before it needs to be replaced.” See Wojciechowski Depo., p. 114. The
entire machine, on the other hand, would have a “limitless” lifetime if worn parts are
replaced, except that the engine may “give up” after 4,000 or 5,000 hours of run time,
“sometimes more.” See id. It is not relevant to the permissible repair defense whether
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the parts need to be replaced because of normal wear or because they are damaged due
to abnormal operating conditions. Indeed, this has been established law since 1850,
when the Supreme Court held that when the patentee sells a machine to a purchaser
and the purchaser “repairs the damages which may be done to it, it is no more than the
exercise of that right of care which every one may use to give duration to that which
he owns, or has a right to use as a whole.” Wilson v. Simpson, 50 U.S. 109, 123
(1850); see also Aro, 365 U.S. at 342 (Supreme Court “decisions specifically dealing
with whether the replacement of an unpatented part, in a patented combination, that
has worn out, been broken or otherwise spent, is permissible ‘repair’ or infringing
‘reconstruction,’ have steadfastly refused to extend the patent monopoly beyond the
terms of the grant”).
NLB argues that PSI has failed to substantiate its permissible repair defense, but
the record refutes NLB’s argument. PSI has presented evidence – much of it from
NLB witnesses – that the NLB-type parts it sells are true replacement parts protected
by the permissible repair doctrine. As a result, PSI is entitled to summary judgment
on the contributory infringement claim under § 271(c) and the induced infringement
claim under § 271(b) as to the NLB-type parts. NLB’s cross-motion on this theory is
denied.
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VI.
FALSE ADVERTISING CLAIM
NLB asserts a false advertising claim under the Lanham Act, alleging that
statements by PSI on its Facebook page were false. The Facebook page reads:
Get all of your Replacement NLB Pump Parts from PSI! Discharge
valves for NLB 225 Series and 325 Series pumps are now available for
only $99! Made from superior materials, our non-flaking parts are
guaranteed to last longer than our competitors’ parts.
Facebook page, Exh. 3 to Amended Complaint [Doc. # 6]. NLB challenges the
statements that PSI parts are made from “superior materials” and are “guaranteed to
last longer” that competitors’ parts. Both parties have moved for summary judgment
on the false advertising claim.
A.
Governing Legal Principles
The Lanham Act focuses on commercial interests that have been harmed by a
competitor’s false advertising. See IQ Prod. Co. v. Pennzoil Prod. Co., 305 F.3d 368,
375 (5th Cir. 2002). The elements of a false advertising claim under the Lanham Act
are: (1) a false or misleading statement of fact about a product; (2) the statement
“either deceived or had the capacity to deceive a substantial segment of potential
consumers;” (3) the deception was material, i.e., likely to influence the consumer’s
purchasing decision; (4) the product moved in interstate commerce; and (5) the
plaintiff has been or is likely to be injured as a result of the statement. See id.
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To obtain money damages for false advertising under the Lanham Act, the
plaintiff must first demonstrate that the statement was “(1) literally false; or (2) likely
to mislead and confuse customers.” Id. If the statement at issue is literally false, there
is a presumption that it actually misled consumers and no evidence of deception is
required. See id. If, however, the statement is misleading or ambiguous, “the plaintiff
must demonstrate actual deception through direct evidence of consumer reaction to
the advertising or evidence of consumer surveys or consumer reaction tests.” Id.
B.
Analysis
NLB argues that Facebook page statements that PSI parts are made from
“superior materials” and are “guaranteed to last longer” than competitors’ parts are
literally false and, therefore, presumed to be confusing to consumers. NLB has
presented evidence that PSI’s parts lack a “sacrificial coating” that is present on the
NLB parts. Therefore, NLB argues, it is nonsensical for the absence of this coating
to constitute a “superior material.” See, e.g., NLB Response to PSI’s Motion, p. 9.
PSI has presented evidence from the person who posted the statement, its
President and Chief Executive Officer Todd Shawver, that the statements are true.
Shawver states that PSI “undertook to solve the well-known problem of NLB’s
discharge valves whereby the coating on the valve stem cracks and flakes off.” See
Shawver Declaration, Exh. 2 to PSI’s Motion, ¶ 2. Shawver states that PSI uses “a
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stainless steel that is roller burnished to make the valve stem harder and smoother, and
then electro-polished to further reduce the friction when the stem contacts the guide.”
Id. Because the material used by PSI does not flake off, Shawver deems the material
“superior” to that used by NLB. Id.
The parties have presented conflicting evidence regarding whether the statement
that PSI uses “superior material” is true or is “literally false.”5 Because there is a
genuine issue of material fact on this element, summary judgment is inappropriate on
the false advertising claim. Each parties’ motion for summary judgment on this claim
is denied.
VII. MOTIONS TO EXCLUDE EXPERT TESTIMONY
Both parties have moved to exclude expert testimony offered by the opposing
party. The expert testimony relates only to infringement issues. Because there are no
infringement issues remaining, there will be no need for testimony – expert or
5
In its Reply in connection with the false advertising claim, NLB argues only that the
Facebook page statements were literally false, not that they were simply misleading.
See Reply [Doc. # 63], pp. 7-9. To the extent NLB has not abandoned its claim that
the Facebook page statements were misleading, there is a genuine issue of material
fact regarding consumer confusion because NLB’s cited evidence is hearsay and
inadequate for summary judgment. Evidence of customers’ general “concerns” and
of lost sales of NLB replacement parts to PSI does not demonstrate consumer
confusion. Therefore, to the extent NLB seeks summary judgment on the false
advertising claim based on misleading statements and consumer confusion, that
motion is denied.
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otherwise – on infringement. Therefore, the Motions to Exclude regarding expert
testimony on infringement are now moot.
VIII. CONCLUSION AND ORDER
Based on the foregoing, PSI is entitled to summary judgment on NLB’s claim
of literal infringement by PSI’s NX-series products, on NLB’s claim of infringement
under the doctrine of equivalents by the NX-series products, and on its permissible
repair defense in connection with the NLB-type replacement parts. There are genuine
issues of material fact that preclude summary judgment on the false advertising claim.
Because there are no infringement issues remaining, the parties’ respective motions
to exclude expert testimony are moot. Therefore, it is hereby
ORDERED that PSI’s Motion for Summary Judgment [Doc. # 52] is
GRANTED as to the patent infringement claims and DENIED as to the Lanham Act
false advertising claim. It is further
ORDERED that NLB’s Motion for Summary Judgment [Doc. # 53] is
DENIED. It is further
ORDERED that PSI’s Motion to Exclude Patent Infringement Testimony by
NLB Witnesses [Doc. # 50], PSI’s Motion to Exclude Testimony of Plaintiff’s Expert
William Marscher [Doc. # 51], and NLB’s Motion to Strike PSI’s Expert Reports
[Doc. # 53] are DENIED AS MOOT.
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Case 4:18-cv-01090 Document 67 Filed on 11/14/19 in TXSD Page 20 of 20
SIGNED at Houston, Texas, this 14th day of November, 2019.
NAN Y F. ATLAS
SENIOR UNI
STATES DISTRICT JUDGE
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