Envtl. Mfg. SOLUTIONS LLC. v. PEACH State LABS INC.
| Decision Date | 31 March 2011 |
| Docket Number | Case No. 6:09-cv-395-Orl-28DAB |
| Parties | ENVIRONMENTAL MANUFACTURING SOLUTIONS, LLC, Plaintiff, v. PEACH STATE LABS, INC., Defendant. |
| Court | U.S. District Court — Middle District of Florida |
OPINION TEXT STARTS HERE
The instant patent infringement controversy involves the removal of unwanted calcium carbonate. Calcium carbonate is often produced and used in industrial processes, but is only slightly soluble in water, causing it to deposit on surfaces and build up in industrial liquids. The disputed patent relates to a method of using urea hydrochloride to remove unwanted calcium carbonate by converting it to a water soluble salt. Plaintiff Environmental Manufacturing Solutions, LLC ("EMS") and Defendant Peach State Labs, Inc. ("PSL") have both moved for summary judgment on the issues of validity and infringement of the asserted patent claims.
After reviewing the submitted documents, the Court concludes that EMS failed to create a genuine issue of material fact as to the invalidity of the patent at issue under 35 U.S.C. §§ 102(a), 102(b), 103, and 112, as well as to the affirmative defense of patent misuse. On the other hand, there remain genuine issues of material fact relating to inventorship and infringement of the relevant patent by the EMS's accused products precluding a grant of summary judgment on these issues in their entirety.
EMS filed the present action against PSL seeking a declaratory judgment that United States Patent No. 5,672,279 ("the '279 patent") is invalid and not infringed by EMS. (Doc. 1 at 9). Along with its Answer, PSL filed a Counterclaim alleging that the use of EMS Ready Mix, Blow Out, Barracuda, Basic CR, SynTech I, SynTech pH, and Eximo products in accordance with the instructions and applications identified in EMS's product literature infringe the '279 patent. (Doc. 29 at 11-12). PSL additionally alleged that EMS contributed to and/or induced infringement of the '279 patent by others, and that EMS's infringement is and has been willful. (Id. at 12-13).
The parties disputed the proper construction of several terms of the '279 patent and a pretrial claim construction hearing was conducted in accordance with Markman v. Westview Instruments, 517 U.S. 370 (1996). (Docs. 41-42). Following the hearing, a Markman Order was entered construing the contested claims. (Doc. 96).
The parties now move for summary judgment on the issues of validity and infringement. PSL contends that EMS failed to demonstrate by clear and convincing evidence that any claim of the '279 patent is invalid under 35 U.S.C. §§ 102, 103, or 112, or that PSL engaged in patent misuse. (Doc. 125 at 6). EMS argues that the evidence of record establishes that the '279 patent is invalid under 35 U.S.C. §§ 102, 103 and 112, and that PSL failed to set forth any evidence of direct or indirect infringement of the '279 patent. (Doc. 126 at 5, 17).
The '279 patent, titled "Method for Using Urea Hydrochloride," issued on September 30, 1997 and is assigned to PSL. (Doc. 42-3 at 1). The invention claimed in the '279 patent relates to a method of solubilizing calcium carbonate, which is often produced and used in industrial processes, but is only slightly soluble in water. Due to its limited solubility, calcium carbonate tends to deposit on surfaces and build up in industrial liquids, and its accumulation adversely affects industrial processes and equipment. For instance, calcium carbonate is a major cause of boiler scale in heating systems and raises the pH and solids content of industrial liquids, preventing their disposal in publicly owned treatment facilities. The '279 patent involves the use of urea hydrochloride to remove unwanted calcium carbonate from aqueous suspensions or dispersion of calcium carbonate by converting the calcium carbonate to a water soluble salt. Claim 1 of the '279 patent, the only independent claim, recites:
1. A method to solubilize calcium carbonate in aqueous suspensions or dispersions of calcium carbonate that includes adding to the suspension or dispersion a sufficient amount of urea hydrochloride to convert the calcium carbonate to a water soluble salt, wherein a molar ratio of urea to hydrochloric acid approximately between 1:4 and 4:1 is used to form said urea hydrochloride.
'279 patent col.8 l.2-8. The claim term "calcium carbonate in aqueous suspensions or dispersions of calcium carbonate" was construed as "insoluble particles of calcium carbonate distributed in water or calcium carbonate in a system with two or more distinct phases consisting of finely divided particles dispersed throughout a bulk substance." (Doc. 96). The claim term "molar ratio" was construed as "a ratio comparing a number of urea molecules to a number of hydrochloric acid molecules."1 (Id).
PSL alleges that the use of certain EMS products in accordance with the instructions and applications identified in EMS's product literature infringe the '279 patent. (Doc. 29 at 11). The EMS products presently accused of infringing the '279 patent include: (1) EMS Ready-Mix; (2) Barracuda; (3) EMS Basic CR; (4) EMS BlowOut; (5) EMS SynTech pH; (6) EMS SynTech I; and (7) Eximo (collectively, the "Accused Products"). EMS Ready-Mix, Barracuda, and EMS Basic CR are generally used to remove concrete. EMS Blowout is a line surface cleaner and descaler used to dissolve calcium, lime, scale, milk stone, beer stone, and other deposits. EMS SynTech pH is used to lower the pH of reclaimed water, and EMS SynTech I is used in formulations employed in the herbicide and pesticide industry. Eximo is a soil conditioner designed to be sprayed directly onto turf to solubilize calcium and other salts. EMS has stipulated that the Accused Products contain urea hydrochloride in the molar ratio of urea to hydrochloric acid set forth in claim 1 of the '279 patent. (Doc. 87 at 12).
A party is entitled to summary judgment "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled judgment as a matter of law." Fed. R. Civ. P. 56(c); accord Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). An issue is genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson, 477 U.S. at 248. An issue of fact is "material" if, under the applicable substantive law, it might affect the outcome of the case. Id. A court must decide "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Id.
The party moving for summary judgment has the burden of proving that: (1) there is no genuine issue as to any material fact, and (2) it is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). In determining whether the moving party has satisfied its burden, the court considers all inferences drawn from the underlying facts in the light most favorable to the party opposing the motion and resolves all reasonable doubts against the moving party. Anderson, 477 U.S. at 255. The court may not weigh conflicting evidence or weigh the credibility of the parties. Hairston v. Gainesville Sun Pub. Co., 9 F.3d 913, 919 (11th Cir. 1993). If a reasonable fact finder could draw more than one inference from the facts and that inference creates an issue of material fact, a court must not grant summary judgment. Id. On the other hand, summary judgment must be granted "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which the party will bear the burden of proof at trial." Celotex Corp., 477 U.S. at 322. In addition, when a claimant fails to produce "anything more than a repetition of his conclusory allegations," summary judgment for the movant is "not only proper but required." Morris v. Ross, 663 F.2d 1032, 1034 (11th Cir. 1981).
PSL contends that EMS failed to create a genuine issue of material fact as to whether any claim of the '279 patent is invalid as anticipated under 35 U.S.C. § 102. Specifically, PSL argues that the cited prior art fails to disclose the use of urea hydrochloride to solubilize aqueous suspensions or dispersions of calcium carbonate and therefore does not anticipate claim 1 of the '279 patent. EMS moves for summary judgment on the same issue, arguing that the disclosures in the prior art of various uses of urea hydrochloride are sufficient to demonstrate anticipation of the claims of the '279 patent by clear and convincing evidence.
Section 102(a) provides that an issued patent is invalid if "the invention [therein] . . . was described in a printed publication . . . before the invention thereof by the applicant." 35 U.S.C. § 102(a). Section 102(a) therefore embodies the concept of novelty—if a "device or process has been previously invented (and disclosed to the public), then it is not new, and therefore the claimed invention is 'anticipated' by the prior invention." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). "An 'anticipating' reference must describe all of the elements and limitations of the claim in a single reference, and enable one of skill in the field of the invention to make and use the claimed invention." Merck & Co. v. Teva Pharm. USA, Inc., 347 F.3d 1367, 1372 (Fed. Cir. 2003) (internal citations omitted). Thus, in order to demonstrate anticipation, the proponent must show "that the four corners of a single, prior art document describe every element of the claimed invention," as arranged in the claim. Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1322 (Fed. Cir. 2006) (quoting Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (...
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