First Quality Tissue, LLC v. Irving Consumer Prods.

• Decision Date: 30 March 2022
• Docket Number: Civil Action 19-428-RGA
• Parties: FIRST QUALITY TISSUE, LLC, Plaintiff, v. IRVING CONSUMER PRODUCTS LIMITED and IRVING CONSUMER PRODUCTS, INC., Defendants.
• Court: U.S. District Court — District of Delaware

FIRST QUALITY TISSUE, LLC, Plaintiff, v. IRVING CONSUMER PRODUCTS LIMITED and IRVING CONSUMER PRODUCTS, INC., Defendants.

Civil Action No. 19-428-RGA

United States District Court, D. Delaware

March 30, 2022

Joseph B. Warden, Warren Keith Mabey, Jr., Nitika Gupta Fiorella FISH & RICHARDSON P.C., Wilmington, DE, Attorneys for Plaintiff.

John G. Day, Andrew C. Mayo, ASHBY & GEDDES, Wilmington, DE Maximilian A. Grant, Matthew J. Moore, Inge A. Osman, Rebecca L. Rabenstein, Jeremiah A. Egger, LATHAM & WATKINS LLP Washington, D.C.; Charles A. Sanders, David W. Rowe, Paul Weinand, LATHAM & WATKINS LLP, Boston, MA. Attorneys for Defendants.

MEMORANDUM OPINION

ANDREWS, UNITED STATES DISTRICT JUDGE:

Before me are Plaintiffs motion to exclude expert testimony (D.I. 194) and Defendants' motion for summary judgment and to exclude expert testimony (D.I. 196). The motions have been fully briefed (D.I. 195, 197, 206, 210, 220, 222) and I heard oral argument on select issues on January 19, 2022 (D.I. 281). Following oral argument, I issued a Supplemental Order on Claim Construction (D.I. 275), and the parties submitted letters of additional legal authority (D.I. 276, 277) and additional briefing on the issues (D.I. 282, 286, 288). I have considered the parties' arguments and briefing.

I. BACKGROUND

Plaintiff First Quality ("FQ") brings this action alleging that Irving's accused bath tissue product infringes ten claims of three of FQ's patents: claims 1 and 3 of U.S. Patent No. 9, 506, 203 ("the '203 patent"), claims 1, 3, 4, and 8 of U.S. Patent No. 9, 580, 872 ("the '872 patent"), and claims 4, 10, 12 and 13 of U.S. Patent No. 9, 725, 853 ("the '853 patent") (collectively, "the Asserted Patents" and "the Asserted Claims"). (D.I. 1 ¶ 22; D.I. 197 at 1). The Asserted Patents share essentially the same specification^[1] and are directed toward novel "through air dried" tissues. (See D.L 1-1, 1-2, 1-3).

Claim 1 of the '203 patent discloses, "A through air dried tissue comprising an outer surface having an Average Peak to Valley Waviness of 140 microns or less and a Waviness Uniformity of 27 microns or less, the tissue having a bulk softness of less than 10TS7." (D.I. 1-1 at 12).

Claim 3 of the '203 patent is a dependent claim of claim 1, disclosing, "A multi-ply sheet comprising two or more plies, at least one of the two or more plies comprising the tissue of claim 1."(Id.).

Claim 1 of the '872 patent discloses, "A through air dried tissue comprising an outer surface having an Average Peak to Valley Waviness of 140 microns or less, a Waviness Uniformity of 27 microns or less, an Average Primary Amplitude of 50 microns or less and an Amplitude Uniformity of 8 microns or less." (D.I. 1-2 at 11-12).

Claim 3 of the '872 patent is a dependent claim of unasserted dependent claim 2, disclosing, "The tissue of claim 2, further comprising an interior layer." (Id. at 12). Claim 2 of the '872 patent is a dependent claim of claim 1, disclosing, "The tissue of claim 1, wherein the tissue includes first and second exterior layers." (Id.).

Claim 4 of the '872 patent is a dependent claim of claim 1, disclosing, "The tissue of claim 1, wherein the tissue has a bulk softness of less than 10TS7." (Id.).

Claim 8 of the '872 patent is a dependent claim of claim 1, disclosing, "A multi-ply sheet comprising two or more plies, at least one of the two or more plies comprising the tissue of claim 1." (Id.).

Claim 4 of the '853 patent discloses, "A through air dried tissue having a bulk softness of less than 10TS7 and comprising an outer surface having an Average Peak to Valley Waviness of 140 microns or less." (D.I. 1-3 at 12).

Claim 10 of the '853 patent is a dependent claim of unasserted independent claim 8, disclosing, "The two-ply, through air dried tissue of claim 8, wherein the outer surface has an Average Peak to Valley Waviness of 135 microns or less." (Id.). Claim 8 of the '853 patent discloses:

A two-ply, through air dried tissue comprising an outer surface having an Average Peak to Valley Waviness of 140 microns or less, a Waviness Uniformity of 27 microns or less, an Average Primary Amplitude of 50 microns or less and an Amplitude Uniformity of 8 microns or less.

(Id.).

Claim 12 of the '853 patent is a dependent claim of unasserted independent claim 8, disclosing, "The two-ply, through air dried tissue of claim 8, wherein the tissue has a softness of at least 90." (Id.).

Claim 13 of the '853 patent is a dependent claim of unasserted independent claim 8, disclosing, "the two-ply, through air dried tissue of claim 8, wherein the tissue has a caliper of less than 650 microns." (Id.).

Irving seeks summary judgment "that all asserted claims are invalid for indefiniteness, lack of written description, or both." (D.I 197 at 1). Irving also moves to exclude testimony from FQ's technical expert, Dr. Runge, and damages expert, Dr. Maness. (Id. at 2).

FQ moves to exclude testimony from Irving's technical experts, Dr. Keller and Mr. Kavalew, and damages expert, Mr. Malackowski. (D.I. 195 at 1).

I issued claim constructions (D.I. 85, 275) for the following terms that are relevant to the issues before me now:

Term

Construction

"Average Peak to Valley Waviness"

Average peak height plus average valley depth (both taken as positive values) relative to the meanline, as computed and measured according to the procedure of the '203 Patent at 9:31-57 [and corresponding disclosure of the other Asserted Patents].

"Average Primary Amplitude"

Average distance between each roughness profile point and the meanline, as compared and measured according to the procedure of the '203 Patent at 9:31-57 [and corresponding disclosure of the other Asserted Patents].

"an outer surface"

the surface of the outer side of the through air dried tissue

II. LEGAL STANDARDS

A. Summary Judgment

"The court shall grant summary judgment if 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." Fed.R.Civ.P. 56(a). Material facts are those "that could affect the outcome" of the proceeding. Lamont v. New Jersey, 631 F.3d 177, 181 (3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). "[A] dispute about a material fact is 'genuine' if the evidence is sufficient to permit a reasonable jury to return a verdict for the nonmoving party." Id. The burden on the moving party may be discharged by pointing out to the district court that there is an absence of evidence supporting the non-moving party's case. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).

The burden then shifts to the non-movant to demonstrate the existence of a genuine issue for trial. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986); Williams v. Borough of West Chester, Pa., 891 F.2d 458, 460-61 (3d Cir. 1989). A non-moving party asserting that a fact is genuinely disputed must support such an assertion by: "(A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations..., admissions, interrogatory answers, or other materials; or (B) showing that the materials cited [by the opposing party] do not establish the absence ... of a genuine dispute ...." Fed.R.Civ.P. 56(c)(1). The non-moving party's evidence "must amount to more than a scintilla, but may amount to less (in the evaluation of the court) than a preponderance." Williams, 891 F.2d at 461.

When determining whether a genuine issue of material fact exists, the court must view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in that party's favor. Wishkin v. Potter, 476 F.3d 180, 184 (3d Cir. 2007). If the non-moving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp., 477 U.S. at 322.

B. Expert Testimony

Federal Rule of Evidence 702 sets out the requirements for expert witness testimony and states:

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if: (a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case.

Fed. R. Evid. 702.

The Third Circuit has explained:

Rule 702 embodies a trilogy of restrictions on expert testimony: qualification, reliability and fit. Qualification refers to the requirement that the witness possess specialized expertise. We have interpreted this requirement liberally, holding that "a broad range of knowledge skills, and training qualify an expert." Secondly, the testimony must be reliable; it "must be based on the 'methods and procedures of science' rather than on 'subjective belief or unsupported speculation'; the expert must have 'good grounds' for his o[r] her belief. In sum, Daubert holds that an inquiry into the reliability of scientific evidence under Rule 702 requires a determination as to its scientific validity." Finally, Rule 702 requires that the expert testimony must fit the issues in the case. In other words, the expert's testimony must be relevant for the purposes of the case and must assist the trier of fact. The Supreme Court explained in Daubert that "Rule 702's 'helpfulness' standard requires a valid scientific connection to the pertinent

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