Sloan Valve Co. v. Zurn Indus., Inc., Case No. 10-cv-00204

• Decision Date: 20 November 2013
• Docket Number: Case No. 10-cv-00204
• Parties: SLOAN VALVE COMPANY, Plaintiff, v. ZURN INDUSTRIES, INC., and ZURN INDUSTRIES, LLC, Defendants.
• Court: U.S. District Court — Northern District of Illinois

SLOAN VALVE COMPANY, Plaintiff,
v.
ZURN INDUSTRIES, INC., and ZURN INDUSTRIES, LLC, Defendants.

Case No. 10-cv-00204

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION

DATED: November 20, 2013

MEMORANDUM OPINION AND ORDER

AMY J. ST. EVE, District Court Judge:

Plaintiff Sloan Valve Company ("Sloan") filed the present civil action against Defendant Zurn Industries, Inc. and Zurn Industries, LLC (collectively "Zurn") alleging various patent infringement claims of its U.S. Patent No. 7,607,635 entitled "Flush Valve Handle Assembly Providing Dual Mode Operation" ("the Wilson Patent") and of the corresponding U.S. Patent Application Publication No. 2006/0151729 ("the Wilson Patent Application"). In its Amended and Supplemental Complaint, Sloan asserts claims of direct infringement of the Wilson patent, infringement of the Wilson Patent Application, inducement to infringe the Wilson patent, and contributory infringement. Sloan specifically alleges that Zurn infringed claims 1, 4-6, 10-12, 14, 19, 29-31, and 33-34 of the Wilson Patent.

Before the Court is Sloan's motion for summary judgment on direct infringement of the Wilson patent, Zurn's invalidity defenses of anticipation and obviousness with respect to all asserted claims of the Wilson patent other than claim 12, Zurn's best mode defense, Zurn's

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enablement defense, and Zurn's written description defense. Also before the court is Zurn's motion for summary judgment on Sloan's infringement claims and Zurn's non-infringement claims, Zurn's best mode invalidity defenses, and Sloan's willful infringement claims.¹ For the reasons discussed below, Sloan's motion is granted in part and denied in part, and Zurn's motion is denied.

BACKGROUND

I. Northern District of Illinois Local Rule 56.1

"For litigants appearing in the Northern District of Illinois, the Rule 56.1 statement is a critical, and required, component of a litigant's response to a motion for summary judgment. The purpose of the local rule is to make the summary judgment process less burdensome on district courts, by requiring the parties to nail down the relevant facts and the way they propose to support them." Sojka v. Bovis Lend Lease, Inc., 686 F.3d 394, 398 (7th Cir. 2012). Local Rule 56.1 assists the Court by "organizing the evidence, identifying undisputed facts, and demonstrating precisely how each side propose[s] to prove a disputed fact with admissible evidence." Bordelon v. Chi. Sch. Reform Bd. of Trs., 233 F.3d 524, 527 (7th Cir. 2000). "The Rule is designed, in part, to aid the district court, 'which does not have the advantage of the parties' familiarity with the record and often cannot afford to spend the time combing the record to locate the relevant information,' in determining whether a trial is necessary." Delapaz v. Richardson, 634 F.3d 895, 899 (7th Cir. 2011) (citation omitted).

Local Rule 56.1(a)(3) requires the moving party to provide "a statement of material facts as to which the moving party contends there is no genuine issue." Cracco v. Vitran Exp., Inc., 559 F.3d 625, 632 (7th Cir. 2009). "The opposing party is required to file "a response to each

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numbered paragraph in the moving party's statement, including, in the case of any disagreement, specific references to the affidavits, parts of the record, and other supporting materials relied upon.'" Id. (citing N.D. Ill. R. 56.1(b)(3)(B)). Pursuant to the Local Rules, the Court will not consider any additional facts proposed in the nonmoving party's Local Rule 56.1(b)(3)(B) response, but must rely on the nonmovant's Local Rule 56.1(b)(3)(C) statement of additional facts. See Ciomber v. Coop. Plus, Inc., 527 F.3d 635, 643 (7th Cir. 2008). The Court disregards Rule 56.1 statements and responses that do not cite to specific portions of the record, as well as those that contain factual or legal argument. See Cracco, 559 F.3d at 632 ("When a responding party's statement fails to dispute the facts set forth in the moving party's statement in the manner dictated by the rule, those facts are deemed admitted for purposes of the motion." ); Cady v. Sheahan, 467 F.3d 1057, 1060 (7th Cir. 2006) ("statement of material facts did [ ] not comply with Rule 56.1 as it failed to adequately cite the record and was filled with irrelevant information, legal arguments, and conjecture"); Bordelon, 233 F.3d at 528 ("the requirements for responses under Local Rule 56.1 are "not satisfied by evasive denials that do not fairly meet the substance of the material facts asserted"); Cichon v. Exelon Gen. Co., L.L.C., 401 F.3d 803, 809-10 (7th Cir. 2005) ("A district court does not abuse its discretion when, in imposing a penalty for a litigant's non-compliance with Local Rule 56.1, the court chooses to ignore and not consider the additional facts that a litigant has proposed.").

II. The Parties Failed to Comply With Local Rule 56.1

Both parties' Local Rule 56.1 statements contain significant problems. Both parties' "statements of material facts" contain legal arguments or legal conclusions. In addition, several of Zurn's responsive statements dispute "statements of material facts" that Zurn has already admitted in previous filings. As explained above, the purpose of Local Rule 56.1 statements is to

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identify the relevant admissible evidence supporting the material facts, not to make factual or legal arguments. See Sojka, 686 F.3d at 398; Cady, 467 F.3d at 1060; see also Judson Atkinson Candies, Inc. v. Latini-Hohberger Dhimantec, 529 F.3d 371, 382 n.2 (7th Cir. 2008) ("It is inappropriate to make legal arguments in a Rule 56.1 statement of facts"). The parties' failure to comply with Local Rule 56.1 has made the Court's job of deciphering the material facts at issue in this patent case more difficult.

III. The Parties and the Court's Jurisdiction

Plaintiff Sloan is a corporation organized under the laws of the State of Delaware with its principle place of business at 10500 Seymour Avenue, Franklin Park, Illinois 60131. (R. 555 & 608, Sloan's Stmnt. of Undisputed Facts², ¶ 1.) Sloan identifies itself as a leading manufacturer of plumbing products. (R. 204, Am. and Supp. Compl., ¶ 7.) Zurn Industries LLC is a limited liability company organized and existing under the laws of the State of Delaware, with its principle place of business at 1801 Pittsburgh Avenue, Erie, Pennsylvania 16514. (Sloan's Stmnt. of Undisputed Facts, ¶ 2.) Zurn Industries, Inc. was a corporation merged into Zurn Delaware Corporation with the surviving entity bearing the name "Zurn Industries, Inc." Zurn Industries, Inc. was converted to a Delaware limited liability company changing its name to Zurn Industries, LLC on or about March 29, 2007. (Sloan's Stmnt. of Undisputed Facts, ¶ 3.) This Court has subject matter jurisdiction over Sloan's patent claims under 28 U.S.C. §§ 1331 and 1338(a). (Id., ¶ 4.) Venue is proper in this District pursuant to 28 U.S.C. 1391 and 1400(b).³ (Id., ¶ 7.)

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IV. The Patent-In-Suit

The Wilson Patent is directed to a dual mode flush valve and handle assembly. (R. 562 & R. 617, Zurn's Statement of Undisputed Facts⁴, ¶ 17.) The Wilson Patent "relates to flush valves for use with plumbing fixtures such as toilets, and more specifically to improvements in the bushing of the actuating handle assembly that will provide for user-selectable, dual mode operation of the flush valve." (R. 546-6, Wilson Patent, col. 1, 6-10.) The improvement is a mechanism that allows a user to select one of two flush volumes based on the direction of actuation of the handle: a full flush volume to evacuate solid waste from the bowl or a reduced flush volume to remove liquid waste. (Id., col. 1, 11-19, col. 2, 27-33.)

The Wilson Patent abstract discloses:

A dual mode flush valve includes a handle assembly having a handle, a bushing and a plunger. The bushing has a sleeve with a passage therethrough for mounting the plunger for sliding and tilting. The passage is defined by first and second partially overlapping bores that coincide at the inner end of the sleeve and are spaced one above the other at the outer end of the sleeve. The bores define a horizontal plunger travel axis and an angled plunger travel axis. Depending on which direction the user actuates the handle the plunger will travel along one of these axes. Travel along the angled axis will lower the plunger tip, allowing earlier clearance of a relief valve and a reduced flow through the flush valve compared to actuation with the plunger travel along the horizontal axis.

(Id.) Cross sectional representations of the preferred embodiment of the invention are reproduced below for reference. These figures show the handle (38), bushing (68), and plunger shank (80) for both a full flush (Figure 5) and for a reduced flush (Figure 6). (See id., col. 3, 11. 15-20.)

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Image materials not available for display.

As depicted in Figure 5, in the full flush mode, the user pushes the handle (38) down, which causes the plunger shank (80) to slide along the horizontal main axis (A) and hit the relief valve stem at a location (108) that results in a full flush volume. (See id., col. 5, 9-19.) As shown in Figure 6, in the reduced-volume flush mode, the user pulls the handle up,...