Ecolab U.S. Inc. v. Diversey, Inc.

Ecolab USA Inc. and Kleancheck Systems, LLC, Plaintiffs, v. Diversey, Inc., Defendant.

Case No. 12-CV-1984 (SRN/FLN)

UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA

April 28, 2015

MEMORANDUM OPINION AND ORDER

[FILED UNDER SEAL]

Anthony R. Zeuli, Rachel K. Zimmerman, Eric R. Chad, Annaliese S. Mayer, and Paige S. Stradley, Merchant & Gould P.C., 3200 IDS Center, 80 South Eighth Street, Minneapolis, Minnesota 55402, for Plaintiffs.

Allen A. Arntsen, Naikang Tsao, and Stephan J. Nickels, Foley & Lardner LLP, 150 East Gilman Street, Suite 5000, Madison, Wisconsin 53703, for Defendant.

R. Jan Pirozzolo-Mellowes, Foley & Lardner LLP, 777 East Wisconsin Avenue, Milwaukee, Wisconsin 53202, for Defendant.

Andrew M. Gross, Foley & Lardner LLP, 321 North Clark Street, Suite 2800, Chicago, Illinois 60654, for Defendant.

George W. Soule, Soule & Stull LLC, Eight West 43rd Street, Suite 200, Minneapolis, Minnesota 55409, for Defendant.

SUSAN RICHARD NELSON, United States District Judge

I. INTRODUCTION

This matter is before the Court on Plaintiffs' Motion to Preclude Testimony of Defendant's Expert, Richard M. Lueptow [Doc. No. 144]; Plaintiffs' Motion to Preclude Testimony of Defendant's Expert, William A. Rutala, Ph.D [Doc. No. 150]; andPlaintiffs' Motion to Preclude Testimony of Defendant's Damages Expert, John C. Jarosz [Doc. No. 156]. For the reasons that follow, the Court grants Plaintiffs' Motions as they relate to Dr. Lueptow and Dr. Rutala, and the Court denies Plaintiffs' Motion regarding Mr. Jarosz.¹

II. BACKGROUND

A. The Patents-in-Suit and the Allegedly Infringing Product

This litigation involves allegations by Plaintiffs Ecolab USA Inc. and Kleancheck Systems, LLC, that Defendant Diversey, Inc., is infringing, contributing to the infringement of, and/or inducing the infringement of, U.S. Patent No. 7,718,395 B2 (the "'395 Patent") and U.S. Patent No. 7,780,453 B2 (the "'453 Patent"). (Compl. ¶¶ 10, 26 [Doc. No. 1].) The '395 Patent, entitled "Monitoring Cleaning of Surfaces," issued on May 18, 2010. (Id., Ex. A ('395 Patent).) The '453 Patent, also entitled "Monitoring Cleaning of Surfaces," issued on August 24, 2010. (Id., Ex. B ('453 Patent).) The Abstract of both Patents reads:

A method for monitoring cleaning of a surface includes applying an amount of transparent indicator material to an area of a surface and measuring the amount of transparent indicator material remaining on the surface. The transparent indicator material may be fixed on the surface by drying and, when a fluorescent material, may be measured through exposure to ultraviolet radiation.

(Id., Exs. A ('395 Patent) & B ('453 Patent).) Claim 1 of the '395 Patent states:

1. A method for determining if a surface has been cleaned, the method comprising:

applying an amount of transparent indicator material to one or more discrete target sites on one or more environmental surfaces, the amount of transparent indicator material being applied to the one or more discrete target sites on the one or more environmental surfaces with a non-contact applicator; and

determining if any of the transparent indicator material remains on the one or more discrete target sites on the one or more environmental surfaces after one or more opportunities to clean the environmental surface by environmental services staff, thereby providing a cleanliness result.

(Id., Ex. A ('395 Patent) at col. 9, ll. 21-34.) Similarly, Claim 1 of the '453 Patent reads:

1. A method for evaluating cleaning improvement interventions, the method comprising:

applying a contiguous amount of transparent indicator material to one or more target sites of one or more environmental surfaces, the amount of transparent indicator material being applied to the one or more target sites of the one or more environmental surfaces with a non-contact applicator; and

determining if any of the transparent indicator material remains on the one or more target sites of the one or more environmental surfaces after one or more opportunities to clean the one or more environmental surfaces by environmental services staff, thereby providing a cleanliness result.

(Id., Ex. B ('453 Patent) at col. 9, ll. 33-45.)

The allegedly infringing product is Defendant's VeriClean Fluorescent Marking Spray ("VeriClean Sprayer"). (See, e.g., Compl. ¶¶ 10, 26.) As discussed in the Court's Summary Judgment Order, the VeriClean Sprayer is a pump sprayer that was introduced tothe market in March 2012 as part of a "programmatic evidence-based surface cleaning and disinfection program designed to improve the thoroughness of cleaning and disinfection of high touch surfaces." (Mem. Op. and Order dated Apr. 20, 2015 [Doc. No. 227] ("SJ Order") at 11 (quoting Zimmerman Decl. [Doc. No. 179], Ex. 18 (Diversey VeriClean System Implementation and Support Guide) at 11).)

B. Claim Construction

Plaintiffs filed this lawsuit in August 2012. (See Compl. at 8.) In August 2013, the parties filed motions for claim construction, requesting that the Court construe the following terms from the Patents-in-Suit: "non-contact applicator," "transparent," "target site(s)," "discrete" or "discrete target sites," "contiguous amount" or "contiguous amount of transparent indicator material," "cleanliness result," "resists dry abrasion," and "colorless." (See Joint Claim Construction Statement [Doc. No. 45].) These terms appear in, for example, claims 1, 23, and 26 of the '395 Patent, and in claims 1 and 23, among others, of the '453 Patent. After thoroughly reviewing and discussing the claim language, the specifications, and the prosecution history of the Patents-in-Suit, this Court held in its January 23, 2014 Order (the "Claim Construction Order") that:

• "non-contact applicator" is properly construed as "an applicator that does not need to touch the environmental surface in order to apply the transparent indicator material thereon." (Mem. Op. and Order dated Jan. 23, 2014 [Doc. No. 69] ("Claim Construction Order") at 21.)

• "transparent" is properly construed as "capable of transmitting light so that objects and images beyond can be clearly perceived." (Id. at 23.)

• "target site(s)" has a meaning that is readily understandable and, therefore, construction is not necessary. (Id. at 25.)• "discrete" is properly construed as "distinct; separate." (Id. at 30.)

• "contiguous amount" is properly construed as "a quantity, the entirety of which is touching." (Id. at 36.)

• "cleanliness result" is properly construed as "an analysis of a collection of cleanliness data for a given environment indicating quality and/or extent of cleaning efforts." (Id. at 42.)

• "resists dry abrasion" is properly construed as "not readily removed through casual contact without the use of a liquid." (Id. at 44.)

• "colorless" is properly construed as "not distinguishable in hue from a surface to which it is applied." (Id. at 46.)

C. Summary Judgment

The parties subsequently filed cross-motions for summary judgment. Relevant to the present matter, Defendant sought summary judgment as to non-infringement on the grounds that the VeriClean Sprayer cannot apply a "contiguous amount" of transparent indicator material to a "target site" on an environmental surface, as required by the '453 Patent, or an amount of transparent indicator material to a "discrete target site" on an environmental surface, as required by the '395 Patent. (SJ Order at 16-17.) However, as summarized below, the Court found that there are genuine issues of material fact as to whether the VeriClean Sprayer meets these claim limitations, thereby precluding summary judgment. (Id. at 17.)

1. "Contiguous amount"

First, Defendant argued that the claim limitation "contiguous amount" refers to the entire amount of transparent indicator material applied, and that it is undisputed that theVeriClean Sprayer cannot apply an amount of transparent indicator material, the entirety of which is touching, in one application. (Id.) Defendant asserted that its position is supported by the plain language of the claims, the specification and file history, the Court's claim construction, and Federal Circuit precedent. (Id.) Plaintiffs, on the other hand, argued that Defendant was improperly reading limitations into the claims that were not imposed by the Court's claim construction. (Id.) According to Plaintiffs, each of the claims that includes the "contiguous amount" limitation uses the "comprising" transition before setting forth the limitations, indicating that those claims cover "an accused method that results in application of 'a quantity [of transparent indicator material], the entirety of which is touching,' even if the method also results in application of additional quantities of material that are not touching." (Id.) Plaintiffs argued that it is undisputed that the VeriClean Sprayer applies a pattern of material that includes an amount, the entirety of which is touching, and, accordingly, a reasonable jury could find that the sprayer satisfies the "contiguous amount" limitation. (See id. at 17-18.)

The Court agreed with Plaintiffs, finding that neither the claim language nor the Court's claim construction supports Defendant's interpretation and application of the term "contiguous amount." (Id. at 18.) In particular, the Court noted that its construction of the term "contiguous amount" does not state that all of the material applied in one application must be touching, and that the use of the open-ended word "comprising" indicates that the claim is met if "a quantity [of transparent indicator material], the entirety of which is touching," is applied—even if there are additional quantities of material applied that arenot touching. In addition, the Court found that the term "comprising" was not being improperly used to reach into a particular claim step and alter the meaning of a claim term because "amount" is not limited by the express claim language to mean "the entire amount applied" and "amount" was not construed by this Court to mean "the entire...