Utex Indus., Inc. v. Wiegand
| Decision Date | 21 February 2020 |
| Docket Number | CIVIL ACTION NO. H-18-1254 |
| Parties | UTEX INDUSTRIES, INC., Plaintiff, v. TROY WIEGAND and GARDNER DENVER, INC., Defendants. |
| Court | U.S. District Court — Southern District of Texas |
This is a patent infringement action filed by Utex Industries, Inc. ("Utex") against Dr. Troy Wiegand ("Wiegand") and Gardner Denver, Inc. ("Gardner") (collectively, "Defendants"), involving United States Patent No. 9,534,691 ("the '691 Patent"). Utex also alleges claims for theft of trade secrets, breach of contract, unfair competition, and tortious interference with a contract. Pending before the court are Defendants Gardner Denver Inc.'s and Dr. Troy Wiegand's Motion for Summary Judgment on Multiple Grounds (Docket Entry No. 139) ("Defendants' MSJ") and Utex's Motion for Summary Judgment that the MSJ will be granted in part and denied in part, and Utex's MSJ will be granted.
Utex is a Texas corporation that manufactures oil-and-gas pump-related equipment such as gaskets and pump packing assemblies.1 One component that Utex manufactures is a semi-flexible but durable header ring placed at the high-pressure end of reciprocating plunger-type pump packing assemblies.2 Utex sells packing assemblies that include its XLH® X-tended Life Header Ring ("XLH header ring"), which it alleges is protected by its '691 Patent.3 The patent describes a header ring that includes an outer layer of fabric reinforced elastomeric material to increase the ring's durability.4 Utex developed a profitable customer base for its high-performance XLH Packing Assembly using its header ring.5
Gardner is a competitor that has recently developed pump packing assemblies similar to and rivaling Utex's.6 Utex allegesthat its former employee, Wiegand, stole its confidential information before departing to work for Gardner, enabling Gardner to create a product that "appears identical" to Utex's.7 Utex alleges that Wiegand's personal device contained a large amount of Utex's data when he left to join Gardner, some of which he may have deliberately acquired just prior to his departure.8 Additionally, Gardner's packing assembly includes its Redline header ring constructed entirely of fabric-reinforced elastomeric material, similar but not identical to Utex's XLH header ring.9
On April 20, 2018, Utex filed this action against Gardner and Wiegand.10 Utex alleges that Gardner's Redline header ring infringes upon the '691 Patent.11 Utex also alleges that Gardner and Wiegand were only able to develop the Redline packing ring through theft of trade secrets, breach of and tortious interference with Wiegand's non-disclosure agreement with Utex, and unfair business practices.12 On November 20, 2019, Utex filed its motionfor summary judgment that the '691 Patent is not anticipated as a matter of law.13 Defendants responded on December 11, 2019,14 and Utex replied on December 23, 2019.15 On December 10, 2019, Defendants filed their motion for summary judgment on multiple grounds.16 Utex responded on December 31, 2019,17 and Defendants replied on January 10, 2020.18
Also pending before the court are multiple Daubert motions to exclude expert opinions.19 The court has considered the objections to the expert opinions and concludes that they do not affect thecourt's analysis of the pending motions for summary judgment; and, as stated below, the court will consider the objections at trial.
Summary judgment is authorized if the movant establishes that there is no genuine dispute about any material fact and the law entitles it to judgment. Fed. R. Civ. P. 56(a). Disputes about material facts are "genuine" if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Anderson v. Liberty Lobby, Inc., 106 S. Ct. 2505, 2510 (1986). The Supreme Court has interpreted the plain language of Rule 56(a) to mandate the entry of summary judgment "after adequate time for discovery and upon motion, 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 that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 106 S. Ct. 2548, 2552 (1986). A party moving for summary judgment "must 'demonstrate the absence of a genuine issue of material fact,' but need not negate the elements of the nonmovant's case." Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994) (en banc) (quoting Celotex, 106 S. Ct. at 2553). If the moving party meets this burden, Rule 56(c) requires the nonmovant to go beyond the pleadings and show by affidavits, depositions, answers to interrogatories, admissions on file, or other admissible evidence that facts exist over which there is a genuine issue for trial.Id.; see Bellard v. Gautreaux, 675 F.3d 454, 460 (5th Cir. 2012) (). "[T]he nonmoving party's burden is not affected by the type of case; summary judgment is appropriate in any case 'where critical evidence is so weak or tenuous on an essential fact that it could not support a judgment in favor of the nonmovant.'" Little, 37 F.3d at 1075-76 (quoting Armstrong v. City of Dallas, 997 F.2d 62, 67 (5th Cir. 1993)).
Utex alleges that Gardner's Redline header ring infringes claim 10 of the '691 Patent.20 The contested portion of claim 10 is the limitation that the claimed header ring have "a layer of a fabric reinforced elastomeric material covering at least the forward facing portion of the radially inwardly extending first annular portion and the axially extending second annular portion."21 The parties agree that this means a layer of fabric reinforced elastomeric material covers at minimum an "L-shaped portion" of the ring.22 The parties agree that "fabric reinforced elastomericmaterial" means an elastomeric material containing fabric for added strength and that "fabric" means "any cloth or cloth-like structure made by any technique such as knitting, weaving or felting of fibers of [any kind] or any combination thereof."23 On February 7, 2019, the court issued a Markman order construing the terms "layer" and "covering" in claim 10 according to their plain and ordinary meaning.24
Defendants and Utex seek summary judgment that claim 10 of the '691 Patent is and is not, respectively, anticipated by prior art as a matter of law. The parties agree that there are no genuine issues of material fact as to anticipation and argue only what legal conclusion is required by the undisputed facts.25 The issue is whether prior art header rings constructed uniformly of fabric-reinforced elastomeric material in the L-shaped portion anticipate claim 10's limitation of "a layer of fabric of reinforced elastomeric material covering" that portion.
The prior art header ring in Figure 3 of the '691 Patent ("Figure 3") is composed of two sections, one "of homogeneous elastomeric material construction" and the other of "a fabric or fiber reinforced material."26 The ring in Figure 3 has the same dimensions as the ring described in claim 10, including an L-shaped portion that is in the "fabric or fiber reinforced material" section.27 One of Utex's experts stated that he understood "that the 'fiber or fabric' reinforcement referenced by [Figure 3] encompasses short fibers, strands of flocked cotton, or chopped up fabric dispersed randomly in an elastomeric material."28
Figure 1 of the '691 Patent ("Figure 1") depicts a prior art header ring "made of a homogeneous elastomeric material" of the same dimensions as that in claim 10.29 In the background section, the '691 Patent states that header rings are "typically made of an elastomeric material . . . [either] homogeneous elastomeric material or an elastomeric material containing layers of cloth orother reinforcing type materials."30 Defendants argue that combined with this statement, Figure 1 discloses a header ring wholly constructed of fabric-reinforced elastomeric material.31
U.S. Patent No. 4,440,404 issued to Roach, et al. ("Roach") describes a prior art header ring with the same dimensions as the ring described in claim 10.32 Roach is a patent for a header ring "preferably constructed of a homogeneous elastomeric material . . . [that] does not include any nonhomogeneous materials, such as layers of cloth or other reinforcing type materials therein."33 Roach states that "[n]on-homogeneous materials could, however, be used for the header ring."34
U.S. Patent No. 4,474,382 issued to Hjelsand ("Hjelsand") claims a prior art header ring of the same dimensions as the above header rings.35 Hjelsand, like Roach and using almost the same language, states that the header ring may be constructed from both homogeneous and non-homogeneous elastomer.36
U.S. Patent No. 2,819,102 issued to Horvath ("Horvath") depicts a prior art packing ring that "may be rubber, plastic in homogeneous form or may comprise rubber or rubber-like material, plastic or the like reinforced by asbestos fibers, cotton fabric or the like."37 Horvath is a "v"-shaped pressure ring shaped differently than the above header rings and those described in claim 10, although Defendant argues it nonetheless meets the dimensions disclosed in claim 10.38
Defendants argue that the prior art describes header rings constructed of fabric-reinforced elastomer and therefore necessarily covered by a layer of fabric-reinforced elastomeric material.39 Anticipation is a question of fact. Shatterproof Glass Corp. v. Libbey-Ownes Ford Co., 758 F.2d 613, 619 (Fed. Cir. 1985). It must be proven by clear and convincing evidence. In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1349 (Fed....
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