Ecolab, Inc. v. Amerikem Laboratories, Inc.

• Decision Date: 23 May 2000
• Docket Number: No. Civ.A. 90-4712(JAG).,No. Civ.A. 96-437(JAG).,Civ.A. 96-437(JAG).,Civ.A. 90-4712(JAG).
• Citation: 98 F.Supp.2d 569
• Parties: ECOLAB, INC., Plaintiff, v. AMERIKEM LABORATORIES, INC., and Envirochem, Inc., Defendants.
• Court: U.S. District Court — District of New Jersey

98 F.Supp.2d 569

ECOLAB, INC., Plaintiff, v. AMERIKEM LABORATORIES, INC., and Envirochem, Inc., Defendants.

No. Civ.A. 96-437(JAG).

No. Civ.A. 90-4712(JAG).

United States District Court, D. New Jersey.

May 23, 2000.

John N. Bain, Carella, Byrne, Bain, Gilfillan, Cecchi, Steward & Olstein, Roseland, NJ, Thomas L. Hamlin, Richard B. Allyn, Katie Crosby Lehmann, Robins, Kaplan, Miller & Ciresi L.L.P., Minneapolis, MN, for Ecolab, Inc.

Frederick Joseph Dennehy, Wilentz, Goldman & Spitzer, P.C., Woodbridge, NJ, Richard L. DeLucia, Charles A. Weiss, Kenyon & Kenyon, New York City, for Envirochem, Inc.

OPINION

GREENAWAY, District Judge.

This matter comes before the Court on the motion of plaintiff Ecolab, Inc. ("Ecolab") seeking summary judgment on its claim of literal infringement. Ecolab contends that a line of products of defendant Envirochem, Inc. ("Envirochem") infringes upon one of Ecolab's patents. For the reasons discussed below, Ecolab's motion is granted.

BACKGROUND

This dispute concerns uniform solid dishwashing detergent casts for use in commercial dishwashing machines. Ecolab patented the detergent and a method for making it under U.S.Patent No. RE 32,818 (the "'818 patent"). Ecolab contends that a line of dishwashing products manufactured by Envirochem infringes Claim 1 of the '818 patent.

Claim 1 covers:

1. A detergent-containing article of commerce comprising:

(a) a three-dimensional, solid, cast, hydrated, substantially uniform alkaline detergent for ware and hard surface washing comprising:

(1) at least about 30% by weight of an alkaline hydratable chemical consisting essentially of alkali metal hydroxide;

(2) an effective amount of a hardness-sequestering agent;

(3) water of hydration, at least a portion of said water of hydration being associated with said alkali metal hydroxide, wherein the alkali metal hydroxide and the hardness sequestering agent are present in an amount sufficient to render the cast detergent a solid at room temperature by virtue of the water of hydration; and

(b) a receptacle-shaped disposable container surrounding and in contact with said solid, cast, hydrated alkaline detergent composition on all but one surface thereof.

'818 Patent, col. 27, lines 40-60.

In an Opinion dated January 8, 1999 (the "1999 Opinion"), this Court construed the term "substantially uniform" in claim 1 of the '818 patent and denied Envirochem's motion for summary judgment on noninfringement grounds.¹ This Court construed the term to mean "a level of continuity of the elements from top-to-bottom throughout the cast such that a homogenous cleaning solution is formed over the life of the cast." 1999 Opinion at 16.² In light of that claim construction, Ecolab now seeks a finding that eight of Envirochem's current solid, cast detergent products literally infringe that properly construed claim.³

Envirochem contends that its products are nonuniform detergents with chemical cleaning components stratified or segregated throughout the cast. Envirochem received U.S.Patent No. 5,482,641 (the "'641 patent") on a method for producing stratified solid cast detergents. Envirochem argues that the evidence before this Court indicates that its products are nonuniform, noninfringing detergents. This evidence, in Envirochem's view, should preclude the grant of summary judgment.

DISCUSSION

I. Standard for Summary Judgment

Summary judgment is appropriate under Fed.R.Civ.P. 56(c) when the moving party demonstrates that there is no genuine issue of material fact and the evidence establishes the moving party's entitlement to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Orson, Inc. v. Miramax Film Corp., 79 F.3d 1358, 1366 (3d Cir.1996). In making this determination, the Court must draw all reasonable inferences in favor of the non-movant. See Hullett v. Towers, Perrin, Forster & Crosby, Inc., 38 F.3d 107, 111 (3d Cir.1994); National State Bank v. Federal Reserve Bank of New York, 979 F.2d 1579, 1581 (3d Cir.1992).

Once the moving party has satisfied its initial burden, the party opposing the motion must establish that a genuine issue as to a material fact exists. See Jersey Cent. Power & Light Co. v. Lacey Township, 772 F.2d 1103, 1109 (3d Cir.1985). The party opposing the motion for summary judgment cannot rest on mere allegations and instead must present actual evidence that creates a genuine issue as to a material fact for trial. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Siegel Transfer, Inc. v. Carrier Express, Inc., 54 F.3d 1125, 1130-31 (3d Cir.1995). "[U]nsupported allegations in [a] memorandum and pleadings are insufficient to repel summary judgment." Schoch v. First Fidelity Bancorporation, 912 F.2d 654, 657 (3d Cir. 1990); see also Fed.R.Civ.P. 56(e) (requiring non-moving party to "set forth specific facts showing that there is a genuine issue for trial"). "There can be `no genuine issue as to any material fact' where the nonmoving party's proof is deficient in meeting an essential part of the applicable legal standard, since such failure renders all other facts immaterial." London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1537-38 (Fed.Cir.1991) (quoting Celotex, 477 U.S. at 323, 106 S.Ct. 2548). In determining whether there are any issues of material fact, the court must resolve all doubts as to the existence of a material fact against the moving party and draw all reasonable inferences — including on issues of credibility — in favor of the non-moving party. See Watts v. University of Delaware, 622 F.2d 47, 50 (3d Cir.1980).

II. Literal Infringement

"To establish literal infringement, every limitation set forth in a claim must be found in an accused product, exactly." Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed.Cir.1995). An infringement analysis involves two stages. The first step — claim construction — is a question of law. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). In the 1999 Opinion, this Court construed the only disputed language in the claim at issue.⁴ The second step in an infringement analysis, comparing the properly construed claims to the accused infringing product, is a question of fact. Markman v. Westview Instruments, Inc., 517 U.S. 370, 384, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).⁵ Although the question of infringement is generally one for a jury, summary judgment of infringement may be granted when a rational jury could only conclude that infringement occurred. See Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 974-75 (Fed.Cir. 1999) (reversing summary judgment of noninfringement and granting judgment of infringement as matter of law because no reasonable jury could determine that any claim limitation was absent from the accused device).

Ecolab argues that such a situation exists here. It maintains that it has put forth overwhelming evidence demonstrating that no genuine issues exist as to any material facts regarding Envirochem's infringement of every aspect of claim 1 of the '818 patent. Ecolab also contends that Envirochem's opposition does not undermine Ecolab's showing, and therefore, that summary judgment is proper.

A. Substantial Uniformity

In support of its motion, Ecolab has submitted the analysis of the pertinent Envirochem products by two scientists, Dr. Steven Lentsch and Dr. Martin P. Rigney.⁶ Dr. Lentsch analyzed the composition and performance of the dishwashing solution formed as the cast detergent dissolves. Dr. Rigney's findings relate to the compositional structure of the detergent within the capsule. Both scientists conclude that the Envirochem products are substantially uniform,⁷ and thus infringe that element of claim 1 of the '818 patent.⁸

1. Expert Reports

a. Personal Knowledge

Envirochem argues that profound flaws in the reports of Drs. Lentsch and Rigney bar their consideration. Absent those opinions and data, Envirochem further contends, myriad genuine issues as to material facts would exist and would preclude summary judgment.

Envirochem first asserts that the Lentsch and Rigney reports should be excluded because they were not executed under oath or penalty of perjury. Fed. R.Civ.P. 56(e) demands evidence by affidavits that "shall be made on personal knowledge, shall set forth such facts as would be admissible in evidence, and shall show affirmatively that the affiant is competent to testify to the matters stated therein." Unsworn statements do not satisfy the rule. See Adickes v. S.H. Kress & Co., 398 U.S. 144, 158 n. 17, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970).

Although the experts did not attest to their findings under oath initially, their reports did not remain unsworn. Both experts adopted their reports under oath in affidavits submitted in connection with the present motion. See Rigney Aff., June 3, 1999 ("Rigney Aff. II") ¶ 2; Lentsch Aff. ¶ 2. These subsequent measures satisfy the requirements of Rule 56(e). Compare Fowle v. C & C Cola, 868 F.2d 59, 67 (3d Cir.1989) (rejecting unsworn affidavits where party submitting them did nothing to correct the impropriety), overruled on other grounds by St. Mary's Honor Ctr. v. Hicks, 509 U.S. 502, 113 S.Ct. 2742, 125 L.Ed.2d 407 (1993).

Envirochem, while conceding that the subsequent affidavits meet the requirements of Rule 56(e), contends that the oaths extend only to the experts' ultimate opinions, and that the underlying data are not properly before the Court. The experts attested that the reports contained their "true and correct opinions." See Lentsch Aff. ¶ 2; Rigney Aff. II ¶ 2. Envirochem suggests that the experts lacked personal knowledge about the underlying data and are therefore unable to establish the foundation and veracity of the opinions. Thus, Envirochem argues that while the summary opinions may properly be heard, the data themselves may not be considered in deciding this motion....