Advanced Fiber Techs. (Aft) Trust v. J&L Fiber Servs., Inc.

• Decision Date: 31 March 2015
• Docket Number: 1:07-cv-1191 (LEK/DEP)
• Court: U.S. District Court — Northern District of New York
• Parties: ADVANCED FIBER TECHNOLOGIES (AFT) TRUST, Plaintiff, v. J&L FIBER SERVICES, INC., Defendant.

ADVANCED FIBER TECHNOLOGIES (AFT) TRUST, Plaintiff, v. J&L FIBER SERVICES, INC., Defendant.

1:07-cv-1191 (LEK/DEP)

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF NEW YORK

March 31, 2015

MEMORANDUM-DECISION and ORDER

I. INTRODUCTION

This action, concerning the alleged infringement of U.S. Patent No. RE 39,940 (the "'940 patent"), returns before the Court. Plaintiff Advanced Fiber Technologies ("Plaintiff" or "AFT"), the owner of the '940 patent, asserts that the V-Max screen cylinder ("V-Max") made by Defendant J & L Fiber Services, Inc. ("Defendant" or "J&L") infringes upon multiple claims of the '940 Patent. Dkt. No. 1 ("Complaint"). Presently before the Court are Cross Motions for summary judgment. Dkt Nos. 208 ("Plaintiff Motion"); 214 ("Defendant Motion"). Also before the Court are Defendant's Motion in limine to exclude the lost profits opinion of Mr. Andrew W. Carter ("Carter"), Defendant's Motion to strike AFT's new infringement contention, and Defendant's Cross-Motion to amend its answer. Dkt. Nos. 210 ("Motion to Exclude"); 213 ("Motion to Strike"); 231 ("Motion to Amend").

II. BACKGROUND

The facts stated herein are those relevant to the motions presently before the Court. For a more complete background on this case, reference is made to Advanced Fiber Techs. (AFT) Trust v.J & L Fiber Servs., Inc., 674 F.3d 1365, 1367-72 (Fed. Cir. 2012) ("AFT II") and Advanced Fiber Techs. (AFT) Trust v. J & L Fiber Servs.. Inc., 751 F. Supp. 2d 348, 353-54 (N.D.N.Y. 2010) (Kahn, J.) ("AFT I").

The '940 Patent,¹ "relates to screen plates, e.g., screen cylinders and flat screen plates, for use, for example, in the pulp and paper industry for screening pulps and to methods for their manufacture." Dkt. No. 208-9 ("'940 Patent"). As described in the '940 Patent, screening is a process "[i]n the formation of paper products from pulp," whereby "impurities, such as sticks, shives and other undesirable pulp constituents, are removed" from the pulp. Id., Col. 1, Lns. 16-18. The '940 Patent "provides a screen formed of two separate layers. The first layer comprises a screening plate having narrow slots or small apertures and the second layer comprises a backing plate affording the screening plate the necessary structural strength for pressure screening in the pulp and paper environment." Id., Col. 2, Lns. 22-27.

Plaintiff commenced this action under 35 U.S.C. § 271 on November 9, 2007. Compl. On February 22, 2008, Defendant answered, denying any infringement and asserting that the '940 Patent is invalid. Dkt. No. 12 ("Answer") ¶¶ 23-25. At issue were the three independent claims of the '940 Patent—claims 1, 10, and 18—and various dependent claims. See AFT II, 674 F.3d at 1368. Claim 1 claims a screen cylinder comprising a screening medium and a structural backing plate, both of which have openings.² '940 Pat., Col. 13, Lns. 24-30. Claim 10 claims "[a] screenplate for screening pulp" comprising a screening medium with slots and a structural backing plate with openings. Id., Col. 14, Lns. 13-20. Claim 18 claims "a method of manufacturing a screen for use in screening for pulp." Id., Col. 15, Lns. 13-14.

In addressing the parties' motions for summary judgment in AFT I, the Court construed all then-disputed terms of the '940 Patent. AFT I, 751 F. Supp. 2d at 354. The Court construed the following claim terms:

Screen Plate: "[A]n assembly comprising a 'screening medium,' also referred to as a 'screening plate' and a backing plate." Not synonymous with "screening plate," which is synonymous with "screening medium." Id. at 356-58.

Screening Medium: "A 'screening medium' is a perforated barrier through which stock is passed to remove oversized, troublesome, and unwanted particles from good fiber." Synonymous with "screening plate," which is distinct from "screen plate. Id. at 357-61.

Backing Plate: "[A] structural support for the screening medium that includes a metal plate." Id. at 361-63.

Slots and Openings: "[O]penings or slots with widths less than 0.254 mm." Id. at 363-65.

Engagement With: "[T]o interlock or mesh with." Id. at 365.

Means for Releasably Connecting: "A structure directly connected to the [screening medium and backing plate] that must be broken or removed to permit separation of the two parts, whereby welds, rivet screws, adhesives, solder and equivalents are the only 'means for releasably connecting.'" Id. at 365-71.

Shrink Fit: "A tight interference fit between mating inner and outer parts made by heating the outer member to expand it or cooling the inner part to contract it so that the outer part can fit into the inner part." Id. at 368-71. Not a "means for releasably connecting."

Rivet: "[A] short rod having a head formed on one end and an opposite end formed into a second head to produce a permanent joining of two or more parts." Id. at 370.

Adhesive: "[A] substance used to bond two or more solids so that they act or can be used as a single piece." Id. at 370-71.

The Court also construed "perforated," which appeared in its construction of "screening medium," to mean, "pierced or punctured with holes." Id. at 363.

Based on these constructions, the Court granted in part and denied in part Defendant's Motion for summary judgment and denied Plaintiff's Motion for summary judgment. Id. at 381. Both parties then moved for reconsideration of the Court's decision. Id. at 382. Upon reconsideration, the Court determined that, as construed, the term "screening medium" did notencompass the "wedgewire" construction employed in the V-Max, because wedgewire is not "perforated." Id. at 386. The Court accordingly granted summary judgment of non-infringement to Defendant on all remaining claims. Id. at 386-87. Plaintiff appealed. AFT II, 674 F.3d at 1367.

On appeal, the Federal Circuit reversed the Court's grant of summary judgment on the ground that the Court erred in interpreting "perforated" as "pierced or punctured with holes." Id. at 1373-76. Rather, the Federal Circuit held that "'perforated' . . . simply means having holes or openings," in light of the '940 Patent's brief disclosure of a wedgewire construction. Id. at 1375. The Federal Circuit affirmed the Court's other appealed constructions and declined to address the Court's denial of summary judgment as to validity. Id. at 1376-77.

On remand, both parties renewed their Motions for summary judgement. Dkt. Nos. 150; 161. In a Memorandum-Decision and Order dated September 30, 2013, the Court considered the parties' renewed Motions only insofar as the Mandate of the Federal Circuit compelled a different result from that reached in AFT I. Advanced Fiber Techs. (AFT) Trust v. J & L Fiber Servs., Inc., No. 07-CV-1191, 2013 WL 5462684, at *5 (N.D.N.Y. Sept. 30, 2013) (Kahn, J.) ("AFT III"). Thus, the Court did not address the parties' arguments on validity because the Court's prior analysis did not turn on its erroneous construction of "perforated." Id. The Court also granted summary judgment for Defendant on Claim 18 and its dependent claims, and on any V-Max units that have wedgewire screening medium whose slots or openings are at least 0.254mm wide. Id. at *5-6. The Court denied summary judgment on all further grounds because the parties had not had opportunity to adequately direct their positions to the Court's claim construction. Id. at *6. Following theframework offered by the Local Patent Rules,³ the Court therefore held that its MDO would constitute its decision on claim construction, and reopened discovery for the parties to supplement expert reports and conduct discovery as otherwise necessitated by the Court's claim construction. Id. The Court ruled that the parties could not offer "new theories that would require construction of a term not already construed." Id.

Presently, Plaintiff seeks summary judgment of infringement and validity on claims 1, 4, 6, 8, 10-14, 16, 17, 27, 29, and 34 of the '940 Patent. Dkt. No. 208-1 ("Plaintiff Memorandum"). Defendant moves for summary judgment of non-infringement as to claims 1, 2, 4, 6, 8, 10-17, 24, 27, 29, 31, 32, 34, 36, and 37-39, and summary judgment of invalidity under 35 U.S.C. § 112(a) on claims 1 and 10, and all depending claims. Dkt. No. 214-1 ("Defendant Memorandum"). Defendant also moves to strike as untimely Plaintiff's infringement contention that the V-Max's U-Clip ("U-clip" or "PosiLock") joint satisfies the "in engagement with" limitation of claims 1 and 10; Defendant argues that if the Court grants the Motion to strike, then summary judgment of non-infringement as to claims 1, 2, 4, 6, 8, 10-17, 27, 29, 31-32, 34, and 37-39 would be appropriate. Dkt. No. 213-1 ("Motion to Strike Memorandum"); Def. Mem. at 10. Finally, Defendant moves to exclude the Carter Opinion. Mot. Exclude. Defendant additionally argues that it is entitled to summary judgment on Plaintiff's claim for lost profits for the reasons set forth in the Motion to exclude, whether or not the Court grants the Motion. Def. Mem. at 29-31.

III. LEGAL STANDARD

Federal Rule of Civil Procedure 56(a) instructs a court to grant summary judgment if "thereis 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). Although "[f]actual disputes that are irrelevant or unnecessary" will not preclude summary judgment, "summary judgment will not lie if . . . the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); see also Taggart v. Time, Inc., 924 F.2d 43, 46 (2d Cir. 1991).

The party seeking summary judgment bears the burden of informing the court of the basis for the motion and of identifying those portions of the record that the moving party claims will demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the moving party shows that there is no genuine dispute as to any material fact, the burden shifts to the nonmoving party to...