Waterton Polymer Products USA et al v. Edizone

Filing 65

MEMORANDUM DECISION and Order Granting Defendant-Counterclaimant's 45 Motion for Summary Judgment on Plaintiffs' Complaint and the First and Second Claims for Relief in its Counterclaims. Signed by Judge Ted Stewart on 5/13/2014. (tls)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
WATERTON POLYMER PRODUCTS
USA, INC. (formerly known as
WATERTON POLYMER PRODUCTS
USA, LLC), and WATERTON POLYMER
PRODUCTS, LTD.,

MEMORANDUM DECISION AND
ORDER GRANTING DEFENDANTCOUNTERCLAIMANT’S MOTION FOR
SUMMARY JUDGMENT ON
PLAINTIFFS’ COMPLAINT AND THE
FIRST AND SECOND CLAIMS FOR
RELIEF IN ITS COUNTERCLAIMS

Plaintiffs-Counterclaim Defendants,
v.
EDIZONE, LLC,

Case No. 2:12-CV-17 TS
Defendant-Counterclaimant.
District Judge Ted Stewart
This matter is before the Court on Defendant-Counterclaimant’s Motion for Summary
Judgment. Defendant seeks judgment on (1) Plaintiffs’ Complaint, which seeks declaratory
judgment of non-infringement, and (2) Defendant’s First and Second Claims for Relief in
Defendant’s counterclaim, which allege infringement of US Patent No. 5,749,111 (the “‘111
patent”) and US Patent No. 6,026,527 (the “‘527 patent”). For the reasons discussed below, the
Court will grant the Motion.
I. BACKGROUND
Plaintiffs filed this action seeking declaratory judgment that their products do not infringe
Defendant’s ‘111 and ‘527 patents. Defendant filed a counterclaim, asserting claims that
Plaintiffs’ products infringe Defendant’s ‘111 and ‘527 patents, as well as a third patent. 1 The

1

Defendant’s Third Claim for Relief asserting infringement of US Patent No. 6,797,765 (the
“‘765 patent) and Plaintiffs’ claims of invalidity as to the ‘765 patent are not currently before the
Court.
1

sole issue presented by this Motion is whether Defendant has met its burden on summary
judgment to demonstrate that Plaintiffs’ products exhibit the “buckling” required by the patents.2
Claim 1 of the ‘111 patent and claims 1 and 33 of the ‘527 patent are identical. They
state: “wherein at least one of said column walls is capable of buckling beneath a protuberance
that is located on the cushioned object.” The Court construed the relevant terms of the patents on
December 20, 2013. The Court construed buckling to mean “the planned failure or collapse of a
column wall resulting in redistribution or lessening of the load carried by the column when the
pressure is applied to the top of the column wall.”3
II. SUMMARY JUDGMENT STANDARD
Summary judgment is appropriate “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.”4 The “party
seeking summary judgment always bears the initial responsibility of informing the district court
of the basis for its motion, and identifying those portions of the pleadings, depositions, answers
to interrogatories, and admissions on file, together with the affidavits, if any, which it believes
demonstrate the absence of a genuine issue of material fact.”5 “Once the movant has made this

2

Defendant argues that Plaintiffs have waived the ability to assert that their products do not
exhibit buckling. As discussed below, the Court finds that Defendant is entitled to summary
judgment on the issue of infringement. Therefore, the Court need not discuss Defendant’s
waiver argument.
3

Docket No. 39, at 16.

4

Fed. R. Civ. P. 56(a).

5

Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986) (internal quotation marks omitted).

2

showing, the burden shifts to the nonmovant to designate specific facts showing that there is a
genuine issue for trial.”6
III. DISCUSSION
The “patentee must supply sufficient evidence to prove that the accused product or
process meets every element or limitation of a claim.”7 Plaintiffs argue that Defendant has failed
to provide sufficient evidence to meet its burden on summary judgment. The Court disagrees.
First, Defendant has provided pictographic evidence showing that the walls of Plaintiffs’
products fail or collapse when a protuberance is applied to the top of the column wall.
Defendant further demonstrated this failure or collapse at oral argument, where the Court was
able to observe that Plaintiffs’ products buckle, as that term has been defined.
Second, Defendant provided the expert testimony of Evan W. Call. Mr. Call has
compared the claims of the ‘111 and ‘527 patents as construed by the Court to Plaintiffs’
products. Relevant to this Motion, Mr. Call states that “[w]hen an irregular shaped object where
one surface is broken by a protruding structure is placed on the sample, the columns of the
sample buckle beneath the protuberance as described in this claim.”8 Mr. Call concludes by
finding that “each and every element listed in claim 1 of the ‘111 patent and claims 1 and 33 of
the ‘527 patent are found in the samples identified in Exhibits A-D.”9

6

Novartis Corp. v. Ben Venue Lab., Inc., 271 F.3d 1043, 1046 (Fed. Cir. 2001).

7

Rohm & Hass Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997).

8

Docket No. 48 ¶¶ 17, 26, 34.

9

Id. ¶ 36. Plaintiffs contend that Mr. Call may lack the appropriate qualifications to offer an
expert opinion in this field. However, the Court notes that Mr. Call is a research scientist and
has experience testing elastomeric materials. Therefore, for the purposes of this Motion, the
Court finds that Mr. Call is adequately qualified to offer an opinion.

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Finally, Defendant provided Plaintiffs’ own advertising materials, which demonstrate that
Plaintiffs’ products exhibit buckling. In discussing their products, Plaintiffs explain that “[a]n
engineering process of ‘column collapsing’ enables each ReviveGel column to support a certain
amount of weight. If the shoulder or hip load gets too heavy for a particular column, it will
buckle or collapse and not push back until the weight has been redistributed to surrounding
columns.”10 At oral argument, Plaintiffs acknowledged that these statements refer to the
allegedly infringing products. As set forth above, the Court construed buckling as “the planned
failure or collapse of a column wall resulting in redistribution or lessening of the load carried by
the column when the pressure is applied to the top of the column wall.” This is precisely what
Plaintiffs state their products do.
Despite this evidence, Plaintiffs argue that Defendant has failed to meet its burden.
Plaintiffs first argue that Defendant offered merely conclusory statements, which are insufficient
to demonstrate infringement. In support, Plaintiffs rely on Rohm & Hass Co. v. Brotech Corp.
In that case, the patentee “offered nothing more than its expert’s general opinion that the accused
product or process infringed the patents.”11 The court found such evidence insufficient for the
patentee to meet its burden of proof.12
The evidence in this case is much more substantial than that offered in Rohm. In this
case, Defendant has provided a picture demonstrating that Plaintiffs’ products fail or collapse
when pressure is applied to the top of the column wall and further demonstrated that failure or
collapse during oral argument. Turning specifically to Mr. Call’s declaration, the Court finds
10

Docket No. 46 Ex. K, at EDIZONE 4242 (emphasis added).

11

Rohm & Hass Co., 127 F.3d at 1092.

12

Id. at 1093.

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that it does more than merely state that Plaintiffs’ products infringe. Rather, Mr. Call states that
the samples of Plaintiffs’ products he examined buckle beneath a protuberance that is placed on
the sample. While Mr. Call’s statements on the issue of buckling are brief, there is little more
that needs to be said on that issue. Moreover, Plaintiffs’ own advertising materials admit that
their products buckle, as that term has been defined by the Court. Those materials tout that
buckling is an important component of the products at issue. Therefore, this argument fails.
Plaintiffs further argue that Defendant has not met its burden on summary judgment
because the products at issue require more testing. In support, Plaintiffs have provided the
Declaration of Douglas G. Schmucker, Ph.D. Dr. Schmucker states that “[b]uckling may occur
in the Waterton product,”13 but states that further testing “will indicate to what extent it develops
and whether there is a directly predictable pattern such that it could be utilized as a planned
aspect of the product.”14
Dr. Schmucker’s opinion does nothing to alter the Court’s conclusion. Dr. Schmucker
recommends testing in part to determine the extent to which buckling develops. However, the
Court need not determine the extent of the buckling, only that buckling occurs. As the Court has
already stated, “buckling can occur in varying degrees.”15 Thus, the degree to which Plaintiffs’
products buckle is irrelevant. Further, the fact that Plaintiffs’ products may exhibit other
behaviors, such as bending or dimpling, does not take away from the fact that Plaintiffs’ columns
exhibit buckling.

13

Docket No. 55 ¶ 2.

14

Id.

15

Docket No. 39, at 9.

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Dr. Schmucker also states that further testing is required to determine whether there is a
directly predictable pattern such that it could be utilized as a planned aspect of the product. This,
however, seems to misinterpret the Court’s construction of buckling. The Court construed
buckling as the planned failure or collapse of a column wall, but nowhere in the claim or the
Court’s construction is there a requirement that such failure or collapse occur in a predictable
pattern. The use of the word “planned” by the Court was meant to show that it is the intent of the
design to allow for the column walls to fail or collapse when pressure is applied, not that there
must be some directly predictable pattern such that it could be utilized as a planned aspect of the
product. Therefore, this argument also fails and the Court finds that Defendant has met its
burden of showing infringement.
In addition to arguing that Defendant has failed to meet its burden on summary judgment,
Plaintiffs request additional time to conduct discovery pursuant to Rule 56(d).
Rule 56(d) states that “[i]f a nonmovant shows by affidavit or declaration that, for
specified reasons, it cannot present facts essential to justify its opposition, the court may: (1)
defer considering the motion or deny it; (2) allow time to obtain affidavits or declarations or to
take discovery; or (3) issue any other appropriate order.”16 “A party seeking to defer a ruling on
summary judgment under Rule [56(d)] must ‘file an affidavit that explain[s] why facts
precluding summary judgment cannot be presented. This includes identifying the probable facts
not available and what steps have been taken to obtain these facts.’”17 “[T]he nonmovant also

16

Fed. R. Civ. P. 56(d).

17

Libertarian Party of N.M. v. Herrera, 506 F.3d 1303, 1308 (10th Cir. 2007) (quoting Trask v.
Franco, 446 F.3d 1036, 1042 (10th Cir. 2006)) (alteration in original).
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must explain how additional time will enable him to rebut movant’s allegations of no genuine
issue of fact.”18
Plaintiffs have submitted the declaration of their counsel. Plaintiffs reference the opinion
of Dr. Schmucker and his recommendation concerning the testing of Plaintiffs’ products.
Plaintiffs seek “time to conduct discovery regarding any such testing conducted on behalf of
EdiZONE.”19
As set forth above, the testing recommended by Dr. Schmucker is irrelevant to the issues
before the Court. Therefore, no additional discovery on these issues is required. Even if the
testing recommended were relevant, Plaintiffs’ request under Rule 56(d) still fails. Plaintiffs fail
to explain why they have been unable to conduct these tests, nor have they explained the steps
they have taken to complete these tests. Plaintiffs suggest that Defendant, as the party with the
burden on summary judgment, should conduct this testing. However, as set forth above, the
Court finds that Defendants have met their burden on summary judgment. As a result, the
burden shifts to Plaintiffs to demonstrate a genuine issue of fact. Plaintiffs have failed to do so.
Defendant requests that the Court enter an immediate injunction. The issue of an
injunction has not been fully briefed. Therefore, the Court declines to enter an injunction at this
time. However, Defendant may file a properly supported motion for injunctive relief, if it so
chooses. In addition, the Court directs the parties to meet and confer within fourteen (14) days
of this order to determine how they wish to proceed on the remaining issues.

18

Comm. for First Amendment v. Campbell, 962 F.2d 1517, 1522 (10th Cir. 1992) (quotation
marks and citation omitted).

19

Docket No. 56 ¶ 4.

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III. CONCLUSION
It is therefore
ORDERED that Defendant-Counterclaimant’s Motion for Summary Judgment (Docket
No. 45) is GRANTED. The parties are directed to submit a proposed scheduling order by June
12, 2014.
DATED this 13th day of May, 2014.
BY THE COURT:

Ted Stewart
United States District Judge

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