Dow Chemical Co. v. Mee Industries, No. 6:00CV437-ORL-31DAB.

CourtUnited States District Courts. 11th Circuit. United States District Court of Middle District of Florida
Writing for the CourtPresnell
Citation264 F.Supp.2d 1018
PartiesDOW CHEMICAL COMPANY, Plaintiff, v. MEE INDUSTRIES, a California corporation; and, Florida Power Corporation, a Florida corporation, Defendants.
Docket NumberNo. 6:00CV437-ORL-31DAB.
Decision Date19 September 2002
264 F.Supp.2d 1018
DOW CHEMICAL COMPANY, Plaintiff,
v.
MEE INDUSTRIES, a California corporation; and, Florida Power Corporation, a Florida corporation, Defendants.
No. 6:00CV437-ORL-31DAB.
United States District Court, M.D. Florida, Orlando Division.
September 19, 2002.

Page 1019

COPYRIGHT MATERIAL OMITTED

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Michael R. Levin, Baker & Hostetler, LLP, Orlando, FL, William J. Schramm, Andrew M. Grove, Reising, Ethington, Barnes, et al., Troy, MI, Keith D. Nowak, Lieberman & Novack, New York City, Christopher T. Hill, Scarborough, Hill & Rugh, P.L., Orlando, FL, Hugh Nilsen Smith, Frates & Smith, P.L.C., Belleair Bluffs, FL, for Plaintiff.

Herbert L. Allen, Brian R. Gilchrist, Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A., Harold E. Wurst, Howard A. Kroll, Christie, Parker & Hale, Pasadena, CA, Stephen D. Burbach, Christie, Parker & Hale, Pasadena, FL, Thomas C. Dearing, John Patrick Marino, LeBoeuf, Lamb, Greene & MacRae, Jackonville, FL, George G. Matava, John R. Posthumus, Brian A. Carpenter, LeBouef, Lamb, Greene & MacRae, L.L.P., Denver, CO, for Defendants.

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MEMORANDUM OPINION

PRESNELL, District Judge.


I. Introduction

In this case, Dow Chemical Company ("Dow") has alleged that Mee Industries, Inc. ("Mee") and Florida Power Corporation ("Florida Power") have infringed two of its patents. Mee and Florida Power have raised a number of defenses to this suit, including that the Dow patents at issue are invalid.

The Court tried this case without a jury during six days between December 10 and 18, 2001. The parties have each filed post-trial briefs and reply briefs (Docs. 257, 258, 260, and 261). This matter is ripe for decision.

II. Statement of the Case and Procedural History

Jurisdiction over this case is based on 28 U.S.C. § 1338, which provides the district courts with "original jurisdiction of any civil action arising under any Act of Congress relating to patents." 28 U.S.C. § 1338(a). Venue in this District was not disputed.

A. Dow's Patents at Issue and Complaint in this Case

Dow is the assignee of two patents, United States Patent No. 5,867,977 ("the '977 patent") and No. 5,930,990 ("the '990 patent"), entitled "Method and Apparatus for Achieving Power Augmentation in Gas Turbines Via Wet Compression." The inventors of the technology described in these patents are Richard E. Zachary and Roger D. Hudson. The patents at issue detail methods and apparatuses to increase the power output of a gas turbine by allowing nebulized, or fine particles of, water to flow into the compressor of a turbine.

Mee Industries sells fogging systems to be used to augment the power of gas turbines. Florida Power purchased eight of Mee's fogging systems. Dow has sued both Defendants alleging that they have infringed both patents. In Count I of its Complaint, Dow alleges that each of the Defendants has infringed the '977 patent by "making, using, offering to sell, and/or selling the inventions thereof, components of the inventions, apparatus for use in the practice of the inventions, and otherwise committing acts proscribed by 35 U.S.C. §§ 271(a), (b) and/or (c)." (Doc. 1, Compl. at ¶¶ 10, 14). In Count II of its Complaint, Dow alleges that each of the Defendants have similarly infringed the '990 patent by "making, using, offering to sell, and/or selling the inventions thereof, components of the inventions, apparatus for use in the practice of the inventions, and otherwise committing acts proscribed by 35 U.S.C. §§ 271(a), (b) and/or (c)." (Id. at ¶¶ 19, 23).

B. Defenses Asserted

Florida Power asserted a number of affirmative defenses and one counterclaim (Doc. 111). As its affirmative defenses, Florida Power alleged that: (1) Dow is barred by estoppel and waiver from asserting an interpretation of the claims of the two patents in issue inconsistent with the statements made during the prosecution of the patents before the U.S. Patent and Trademark Office ("PTO"), or inconsistent with amendments made to the claims during prosecution; (2) the two patents are invalid under 35 U.S.C. § 102 because the claimed subject matter is anticipated by prior art; (3) the patents are invalid under 35 U.S.C. § 103 because the claimed subject matter is obvious in light of the prior art; (4) the patents are invalid under 35 U.S.C. § 112 for indefiniteness and failure of the inventor to disclose the best mode; (5) Dow has misused its patents; and (6) Dow has engaged in inequitable conduct (violation of the duty of

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candor). Florida Power counterclaimed requesting a declaratory judgment that Florida Power has not infringed Dow's patents at issue, and that these patents are invalid and unenforceable.1

Mee asserted four affirmative defenses and one counterclaim (Doc. 112). Mee claims that: (1) Dow's Complaint fails to state a cause of action; (2) the patents at issue are invalid under 35 U.S.C. §§ 102(b) and 103, "in that the claimed combinations, or obvious variations of the claimed combinations, were placed on sale in the United States" by Mee more than one year before the earliest filing date of the patents at issue; (3) Dow's patents are unenforceable because of patent misuse; and (4) Bow committed inequitable conduct by violating the duty of candor. Mee has counterclaimed for declaratory relief that the patents at issue are invalid, not infringed, and unenforceable.

C. The Court's Prior Orders

On August 10, 2000, Bow filed a motion for a preliminary injunction against Mee (Doc. 45). On February 5, 2001, this Court entered an Order denying Dow's motion on the grounds that Bow had failed to meet its burden of showing a likelihood of success on the merits. (Doc. 74).

On August 2, 2001, the Court held a Markman2 hearing concerning the disputed claim language. This Court then construed the claim terms at issue in its Order of August 17, 2001 (Doc. 185).

During the course of this litigation, the parties filed multiple motions for summary judgment. Dow filed a motion for summary judgment on inequitable conduct, which this Court granted with no objection from the Defendants (Doc. 193). This Court twice denied Defendants' motions for summary judgment as to the best mode defense (Docs. 120, 198). Florida Power filed a motion for partial summary judgment contending that it does not infringe the patents at issue. The Court denied this motion, finding that disputed issues of fact precluded summary judgment (Doc. 199). Lastly, Bow filed a motion for summary judgment on Defendants' patent misuse defense. The Court denied this motion as well (Doc. 201).

A significant feature of the trial was the result of Defendants' motion in limine to exclude certain of Plaintiffs evidence on infringement filed on November 5, 2001 (Doc. 212). During a discovery conference held on July 6, 2001, Dow represented that it stood by its answers to certain of the Defendants' interrogatories in response to Defendants' motion to compel; the answers consisted of references to the expert reports of George Howard, Steven Jasper, and Ray Weber dated April 13, 2001. Accordingly, on July 6, 2001, Magistrate Judge David A. Baker denied the Defendants' motion to compel as to some interrogatories (Florida Power Interrogatory No. 8 and Mee Interrogatories 3, 7, 8, 13, and 14), but with the limitation that "Plaintiff is bound by and limited in proof to the answers it has provided. In particular, to the extent Plaintiff relies on expert reports as its answers, it will not be permitted to offer theories or proof outside the scope of those reports." (Doc. 162 at 2-3). Consistent with this Order, Magistrate Judge Baker granted the Defendants' motion in limine, but allowed Dow the opportunity to supplement its expert reports to the extent that the supplements were based on documents produced by the Defendants after

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July 6, 2001 (Doc. 224). This Court affirmed the Magistrate Judge's Order on December 5, 2001 (Doc. 235). As a result of these Orders, Dow was limited at trial to presenting theories and proof of infringement that had been disclosed in the referenced expert reports.

D. Issues Resolved at Trial

1. Claims 16 and 55 of the '990 Patent

At trial, Dow dismissed its allegations of infringement of Claims 16 and 55 of the '990 patent with prejudice. Thus, judgment for the Defendant on these claims as to non-infringement will be entered.3

2. Damages

To establish its claimed damages, Dow offered Michael Pirc as an expert and submitted license agreements it had entered into based on its patents. At the close of Dow's case in chief, the Defendants presented three oral motions under Federal Rule of Civil Procedure 52(c), including a motion for judgment of no proof of awardable damages. Defendants argued that Pirc did not qualify as an expert under Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993), and that Pirc did not present sufficient information on the hypothetical negotiation that is called for under the case law regarding damages. The Court ruled from the bench on Defendants' motion on damages,4 declining to credit Pirc's testimony regarding a reasonable royalty and finding that Dow had not carried its burden to establish damages.5

3. Defenses Abandoned

The Defendants have alleged that the '977 and '990 patents violate the best mode requirement of 35 U.S.C. § 112 since the patents fail to disclose the inventors' best mode concerning the timing of increments to add water for overspray. The Defendants did not produce any additional evidence at trial concerning their best mode defense, relying instead on the deposition testimony that is in the record. The Court has already summarized the relevant facts in its two prior Orders denying summary judgment (Docs. 120, 198) and incorporates those summaries as its findings of fact herein. The Court finds that the Dow patents do not violate 35 U.S.C. § 112 for the reasons expressed in its prior Orders. In particular, the first prong of...

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1 practice notes
  • Mee Industries v. Dow Chemical Company, No. 08-16747 (11th Cir. 6/15/2010), No. 08-16747.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (11th Circuit)
    • 15 June 2010
    ...motion, finding that Dow had failed to meet its burden of showing a likelihood of success on the merits. Dow Chem. Co. v. Mee Indus., 264 F. Supp. 2d 1018, 1022 (M.D. Fla. 2002), aff'd in part, rev'd in part, 341 F.3d 1370 (Fed. Cir. 2003). Florida Power sought summary judgment on the groun......
1 cases
  • Mee Industries v. Dow Chemical Company, No. 08-16747 (11th Cir. 6/15/2010), No. 08-16747.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (11th Circuit)
    • 15 June 2010
    ...motion, finding that Dow had failed to meet its burden of showing a likelihood of success on the merits. Dow Chem. Co. v. Mee Indus., 264 F. Supp. 2d 1018, 1022 (M.D. Fla. 2002), aff'd in part, rev'd in part, 341 F.3d 1370 (Fed. Cir. 2003). Florida Power sought summary judgment on the groun......

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