EcoServices, LLC v. Certified Aviation Servs., LLC, CV 16–01824–RSWL–SPx

• Decision Date: 29 May 2018
• Docket Number: CV 16–01824–RSWL–SPx
• Citation: 312 F.Supp.3d 830
• Parties: ECOSERVICES, LLC, Plaintiff, v. CERTIFIED AVIATION SERVICES, LLC, Defendant.
• Court: U.S. District Court — Central District of California

312 F.Supp.3d 830

ECOSERVICES, LLC, Plaintiff,

v.CERTIFIED AVIATION SERVICES, LLC, Defendant.

CV 16–01824–RSWL–SPx

United States District Court, C.D. California.

Signed May 29, 2018

David A. Coulson, Pro Hac Vice, Greenberg Traurig, LLP, Miami, FL, Khashayar Stephen Shahida, Pro Hac Vice, Myomi T. Coad, Pro Hac Vice, Patrick J. McCarthy, Pro Hac Vice, Ronald J. Pabis, Pro Hac Vice, Greenberg Traurig LLP, Washington, DC, Leanna Costantini, Greenberg Traurig, LLP, Irvine, CA, for Plaintiff.

Dale J. Giali, Mayer Brown LLP, Los Angeles, CA, Alan M. Grimaldi, Pro Hac Vice, Ann Marie Duffy, Pro Hac Vice, Dara M. Kurlancheek, Pro Hac Vice, Peter O. Schmidt, Pro Hac Vice, Stephen E. Baskin, Pro Hac Vice, Canek Acosta, Mayer Brown LLP, Washington, DC, Gregory J. Apgar, Pro Hac Vice, Mayer Brown LLP, New York, NY, for Defendant.

ORDER re: Defendant's Motion to Exclude Expert Opinion of Steven Kushnick[125]; Defendant's Motion for Partial Summary Judgment as to '262 Patent[126]; Defendant's Motion for Partial Summary Judgment as to '860 Patent[128]

HONORABLE RONALD S.W.LEW, Senior U.S. District Judge

Currently before the Court are DefendantCertified Aviation Services, LLC's ("Defendant")Motion for Partial Summary Judgment as to Non–Infringement and Invalidity of the '860 Patent (" '860 Motion")[128]; Motion for Partial Summary Judgment as to Non–Infringement of the '262 Patent (" '262 Motion")[126]; and Motion to Exclude Expert Opinion of Steven Kushnick on Infringement of the '860 Patent ("Kushnick Motion")[125].Having reviewed all papers submitted pertaining to this Motion, the CourtNOW FINDS AND RULES AS FOLLOWS:the CourtGRANTS in part and DENIES in part the Kushnick Motion, GRANTS in part and DENIES in part the '860 Motion and DENIES the '262 Motion.

I.BACKGROUND

A.Factual Background¹

PlaintiffEcoServices, LLC("Plaintiff") is a Delaware limited liability company that provides engine wash services worldwide.Def.'s Statement of Uncontroverted Facts in Supp. of Mot. for Partial Summ. J. as to '860 Patent (" '860 SUF")¶ 2, ECF No. 128–1.Plaintiff provides on-wing aircraft engine washing using its EcoPower Engine Wash System ("EcoPower").Id.Plaintiff asserts two patents in connection with EcoPower.²The first is U.S. PatentNo. 5,868,860(the "'860 Patent"), entitled "Method of Washing Objects, Such as Turbine Compressors," which the United States Patent and Trademark Office("PTO") issued on February 9, 1999.Id.¶¶ 11–12.The '860 Patent lists Peter Asplund as its inventor.Id.¶ 13.

The '860 Patent includes two claims, both of which Plaintiff claims Defendant infringed.Claim 1 is directed to a method of washing turbine compressors

wherein small quantities of finely-divided liquid are sprayed onto and through the turbine compressors, characterized by running the turbine compressors and spraying the finely-divided liquid quantities through at least one nozzle towards and through the turbine compressor at an overpressure within the range of 50–80 bars and at a liquid particle size in the range of 250–120 microns, and with a total volumetric flow through the nozzle or nozzles within the range of 0.5–60 1/min., and with a liquid particle velocity of 100–126 m/sec.

Id.¶ 16.Claim 2 is a dependent claim, which recites the "method according to claim 1, characterized by using a total volumetric liquid flow within the range of 2–60 1/min."Id.¶ 17.The '860 Patent expired on May 31, 2016.Def.'s Reply in Supp. of Mot. for Partial Summ. J. as to '860 Patent (" '860 Reply") 23:5, ECF No. 165.

The second patent at issue is U.S. PatentNo. 9,162,262(the "'262 Patent"), entitled "Automated Detection and Control System and Method for High Pressure Water Wash Application and Collection Applied to Aero Compressor Washing," which the PTO issued on October 20, 2015.'262 SUF ¶¶ 11–12.The '262 Patent lists Per G. Alvestig and Sebastian Nordlund as its inventors.Id.¶ 13.Plaintiff asserts that Defendant infringed Claims 1, 9, and 14 of the '262 Patent.Claim 1 states,

A system for washing turbine engines comprising: a washing unit for providing a washing liquid to the turbine engines; an information detector configured to gather information related to engine type; and a control unit configured to accept the information related to engine type from the information detector and to determine a washing program to be used as a function of the information relating to engine type from a set of preprogrammed washing programs, and further configured to regulate the washing unit according to washing parameters associated with the washing program used.

Decl. of Gregory Apgar in Supp. of Def.'s Mot. for Partial Summ. J. as to '262 Patent ("Apgar '262 Decl."), Ex. 1(" '262 Patent")at 8:36–47, ECF No. 126–3.Claim 9 states, "The system of claim 1 wherein the information provided by the information detector is used by the control unit to regulate a washing time."Id.at 9:11–13.Claim 14 states,

A system for washing turbine engines comprising: a washing unit for providing a washing liquid to the turbine engines; an information detector for providing information identifying at least one of washing unit and engine type; and a control unit configured to regulate the washing unit according to washing parameters associated to a particular engine based upon preprogrammed control data relating to information provided by the information detector, wherein the preprogrammed control data comprises a washing program from a set of available washing programs.

Id.at 10:14–26.

Defendant is a Delaware limited liability company that provides engine wash services in the United States.'860 SUF f 3.Prior to 2010, representatives for Defendant met with Pratt and Whitney, one of Plaintiff's parent companies, regarding the possible purchase of EcoPower equipment.Pl.'s Statement of Facts in Supp. of Opp'n to Mot. for Partial Summ. J. as to '860 Patent¶ 5, ECF No. 134–1.The parties did not reach an agreement regarding purchase of the EcoPower system.Id.¶ 6.Defendant then entered into discussions with non-partyLufthansa Technik AG("Lufthansa") for use of the Cyclean Engine Wash ("Cyclean").Id.Lufthansa designed and manufactured Cyclean.'860 SUF ¶ 4.Defendant provides on-wing aircraft engine washing using Cyclean.

Id.¶ 3.Defendant is the exclusive North American service provider for Lufthansa's engine washing services using Cyclean.Id.¶ 5.[Redacted]³Id.¶ 6.

[Redacted]Id.¶ 41.[Redacted]Id.¶ 42.[Redacted] '262 SUF ¶ 37.[Redacted]Id.¶ 38.[Redacted] Pl.'s Response to Def.'s '262 SUF ¶ 38, ECF No. 133.[Redacted] '262 SUF ¶ 34.During a Cyclean wash, the spray nozzles rotate with the outer fans of the turbine engine.'860 SUF ¶ 51.

On September 18, 2013 and December 5, 2013, Plaintiff sent letters to [Redacted]⁴ who stopped being involved with Defendant after 2011. Id.¶¶ 29, 34.The letters discussed potential licensing of a number of Plaintiff's patents, including the '860 Patent.⁵ Decl. of Gregory Apgar in Supp. of Def.'s Mot. for Partial Summ. J. as to '860 Patent ("Apgar '860 Decl."), Ex. 7, ECF No. 128–10.The parties dispute whether any of Defendant's employees received or saw these letters prior to the filing of this Action.

B.Procedural Background

Plaintiff filed its Complaint [1] against Defendant on April 22, 2016 in the Southern District of Florida alleging infringement of the '262 and '860 Patents (the "Asserted Patents").Defendant filed its Answer and Counterclaim on June 20, 2016 seeking a declaration of non-infringement of the Asserted Patents as well as a declaration of invalidity of the Asserted Patents.

Defendant filed a Motion to Transfer Venue[25] to this Court on July 22, 2016, which was granted on August 22, 2016[29].

This Court held a Markman hearing on May 9, 2017 and issued its Order re Claim Construction of Disputed Terms [80] on May 18, 2017.

Defendant filed the Kushnick Motion on March 30, 2018 and its other two Motions on March 31, 2018.Plaintiff timely opposed, and Defendant timely replied.

II.DISCUSSION

A.Legal Standard

Federal Rule of Civil Procedure 56(a) states that a "court shall grant summary judgment" when "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."A fact is "material" for purposes of summary judgment if it might affect the outcome of the suit, and a "genuine" issue exists if the evidence is such that a reasonable fact-finder could return a verdict for the nonmovant.Anderson, 477 U.S. at 248, 106 S.Ct. 2505.The evidence, and any inferences based on underlying facts, must be viewed in the light most favorable to the nonmovant.Twentieth Century–Fox Film Corp. v. MCA, Inc., 715 F.2d 1327, 1328–29(9th Cir.1983).In ruling on a motion for summary judgment, the court's function is not to weigh the evidence, but only to determine if a genuine issue of material fact exists.Anderson, 477 U.S. at 255, 106 S.Ct. 2505.

Where the nonmovant bears the burden of proof at trial, the movant need only prove that there is no evidence to support the nonmovant's case.In re Oracle Corp. Secs. Litig., 627 F.3d 376, 387(9th Cir.2010).If the movant satisfies this burden, the burden then shifts to the nonmovant to produce admissible evidence showing a triable issue of fact.Id.;Nissan Fire & Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1102–03(9th Cir.2000);see alsoCleveland v. Policy Mgmt. Sys. Corp., 526 U.S. 795, 805–06, 119 S.Ct. 1597, 143 L.Ed.2d 966(1999)(quotingCelotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265(1986) ).

B.Discussion

1.Non–Infrinaement of the '262 Patent

Courts employ a two-step analysis to determine whether an accused product literally infringes a patent's claims.Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1330(Fed. Cir.2001).First, the patent's claims must be "construed to determine their scope."Id."The second step requires a comparison of the...