Frazier v. Layne Christensen Co., 04-C-315-C.

370 F.Supp.2d 823

William C. FRAZIER, Frazier Industries, Inc. and Airburst Technologies, LLC, Plaintiffs, v. LAYNE CHRISTENSEN COMPANY and Prowell Technologies, Ltd., Defendants.

No. 04-C-315-C.

United States District Court, W.D. Wisconsin.

May 16, 2005.

COPYRIGHT MATERIAL OMITTED

Jane C. Schlicht, for Plaintiffs.

Bruce A. Schultz, Coyne Niess Schultz Becker & Bauer, Madison, WI, for Defendants.

OPINION and ORDER

CRABB, District Judge.

The parties in this civil action for declaratory, injunctive and monetary relief are in the business of rehabilitating water wells, which experience a decrease in productivity over time because of the accumulation of bacteria and other biological and mineral deposits within them. Various techniques exist for restoring well performance and improving water quality through removal of these impediments. Plaintiff William Frazier, a former employee of defendant Layne Christensen Company, is the owner of U.S. Patent No. 5,579,845, which discloses a method for rehabilitating water wells that employs a device or combination of devices that generate pressure waveforms and mass displacement within well water. The waves generated in the water remove scale and other impediments that have collected within the well. Plaintiff Frazier and the licensees of the '845 patent, plaintiffs Frazier Industries, Inc. and Airburst Technologies, LLC, market their process under the trade name "Airburst." They contend that defendant Layne Christensen's methods for rehabilitating water wells, marketed under the trade names "BoreBlast" and "BoreBlast II", infringe the '845 patent. Specifically, plaintiffs contend that the "BoreBlast" process infringes claims 1, 2, 19 and 20 of the '845 patent and that the "BoreBlast II" process infringes claims 1-7 and 19 of the '845 patent. Plaintiffs contend also that defendant ProWell Technologies, Ltd., the maker of an "air impulse generator" used in the BoreBlast II method, is liable for contributory infringement of the '845 patent and for inducing defendant Layne Christensen to infringe the '845 patent. In addition to the infringement claims under 35 U.S.C. § 271, plaintiffs assert claims of unfair competition under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and Wisconsin common law and tortious interference with business relations. Subject matter jurisdiction is present. 28 U.S.C. §§ 1331, 1338 and 1367.

This case is before the court on (1) defendant Layne Christensen's motion for summary judgment as to plaintiff's patent infringement claim; (2) defendant ProWell Technologies' motion for summary judgment as to plaintiffs' claims of contributory infringement and active inducement of infringement; (3) plaintiffs' motion to strike sixteen affidavits submitted in support of defendant Layne Christensen's motion for summary judgment; and (4) plaintiffs' motion to strike five exhibits attached to the affidavit of Gennadi Carmi that was filed in support of defendant Layne Christensen's motion for summary judgment. In addition to the motions to strike, plaintiffs have moved for leave to file a sur-reply brief in opposition to the motions for summary judgment.

Plaintiffs' motion to file a sur-reply brief will be denied. I will grant plaintiffs' motion to strike the affidavits of sixteen individuals who have performed the BoreBlast and BoreBlast II processes for defendant Layne Christensen because defendant failed to properly disclose the identities of these individuals to plaintiffs during discovery. Plaintiffs' motion to strike the exhibits attached to Gennadi Carmi's affidavit will be denied as unnecessary. However, because I agree with plaintiffs that Carmi's affidavit does not contain facts showing that he is competent to authenticate the exhibits, I will disregard them in considering whether defendant Layne Christensen's proposed findings of fact citing the exhibits are supported by sufficient evidence.

With respect to the patent infringement claims, I conclude that the "activating," "monitoring" and "adjusting" steps set out in independent claim 1 and the "initiating," "monitoring" and "adjusting" steps set out in independent claim 19 of the '845 patent must be performed in the order in which they are written in the claims. However, I do not construe claims 1 and 19 to require that the "monitoring" step in each claim be performed while the means for generating percussive waveforms or energy remains in the well and "activated" (claim 1) or "initiated" (claim 19).

On the basis of this construction, the motions for summary judgment filed by defendants will be granted. Defendant Layne Christensen is entitled to summary judgment as to plaintiffs' claim of direct infringement because plaintiffs have failed to present evidence from which a reasonable jury could conclude that BoreBlast and BoreBlast II infringe the '845 patent literally or under the doctrine of equivalents. Specifically, plaintiffs have failed to present evidence that defendant uses video equipment in a manner that reads on the "monitoring" limitation in claims 1 and 19. This conclusion entitles defendant ProWell Technologies to summary judgment on plaintiffs' claims of active inducement of infringement and contributory infringement because the existence of direct infringement is a prerequisite to liability for active inducement and contributory infringement. (Because it is unnecessary to delve into the business relationship between defendants Layne Christensen and ProWell Technologies to decide defendant ProWell's motion for summary judgment, I have omitted many of the proposed findings of fact detailing that relationship.)

Before taking up the motions for summary judgment, I will address plaintiffs' motions and comment briefly on the parties' proposed findings of fact.

I. PLAINTIFFS' MOTIONS

A. Motion for Leave to File Sur-reply Brief

Plaintiffs requested leave to file a sur-reply brief after the close of briefing on their motions for summary judgment on the ground that defendants had made a late production of documents relevant to their argument that their well rehabilitation methods do not infringe the '845 patent and that plaintiffs wanted an opportunity to respond to the documents. Defendants deny that the documents were produced late or that they were ever the subject of a request for production. This is one reason to deny plaintiffs' motion. Another is that plaintiffs have not distilled the allegedly untimely information into proposed findings that would tend to put into dispute facts proposed by defendants. Procedure to Be Followed on Motions for Summary Judgment (attached to Preliminary Pretrial Conference Order, dkt. # 31), I.B.1 ("Each fact should be proposed in a separate, numbered paragraph"); I.B.4 ("The court will not consider facts contained only in a brief"). Therefore, the court will not consider arguments incorporating that information.

B. Motion to Strike Affidavits

In support of their motions for summary judgment, defendant Layne Christensen submitted the affidavits of sixteen individuals (Andi Atchison, Tom Butler, Mike Chauffe, Jesus Guevara, Martin Israel, Donny Keiser, Larry Kinley, Jody Menard, Louis Miller, Lloyd Morgan, Rick Propp, Darryl Ross, Bill Senne, John Warren, David Wood and Joe Yost) who have performed its BoreBlast and BoreBlast II procedures. (All further references to "defendant" will be to defendant Layne Christensen unless otherwise specified.) Defendant submitted the affidavits in support of its proposed findings of fact ¶¶ 46-48. Plaintiffs argue that these affidavits should be struck under Fed.R.Civ.P. 37(c) because defendant did not disclose the names of these individuals to plaintiffs before filing its motion for summary judgment. Specifically, plaintiffs point to defendant's failure to disclose the names of these individuals in their Rule 26(a) disclosures or in response to an interrogatory submitted by plaintiffs that requested the identity of any person "with knowledge of the factual bases for the contention that Layne has not infringed the '845 patent."

Defendant Layne Christensen argues that it did not believe it would use the testimony of the sixteen individuals at the time it made its Rule 26(a) disclosures and that it did not realize that the affidavits would be needed to support its summary judgment motion until immediately before the motion was filed. Thus, it did not have time to supplement its Rule 26(a) disclosures. Moreover, defendant contends that the names and positions of seven of the sixteen affiants were disclosed in documents produced by defendants or in depositions taken by plaintiffs.

Fed.R.Civ.P. 26(a)(1)(A) requires automatic disclosure of the identity of individuals "likely to have discoverable information that the disclosing party may use to support its claims or defenses." Defendant's argument that it did not believe it would use the testimony of the sixteen individuals to support its claims or defenses at the time it made initial disclosures misses the mark because Rule 26(a) requires disclosure of the names of individuals with information that a party may use to support its claims or defenses. Defendant's obligation to disclose the identity of an individual likely to have discoverable information does not arise only when defendant is one hundred percent sure it will use that information in its case. Given that this case centers on whether the BoreBlast and BoreBlast II methods infringe the '845 patent, it is difficult to comprehend how defendant could not realize until just before it filed its motion for summary judgment that the individuals who performed the BoreBlast and BoreBlast II procedures might have discoverable information. Moreover, defendant's argument that it satisfied its duty to supplement its disclosures by producing documents that contained the names and positions of seven of the sixteen affiants is not convincing because, according to plaintiffs, defendants produced more than nine thousand...