Morningware, Inc. v. Hearthware Home Prods., Inc.

898 F.Supp.2d 1018

MORNINGWARE, INC., Plaintiff,

v.HEARTHWARE HOME PRODUCTS, INC., Defendant.

IBC–Hearthware, Inc. d/b/a Hearthware Home Products, Inc., Plaintiff,

v.Morningware, Inc., Defendant.

No. 09 C 4348.

United States District Court,

N.D. Illinois,

Eastern Division.

Sept. 26, 2012.

Edward L. Bishop, Nicholas S. Lee, Monique Ann Morneault, Bishop & Diehl, Ltd., Schaumburg, IL, for Plaintiff.

Lewis T. Steadman, Jr., Hearthware Home Products, Inc., Gurnee, IL, Adam P. Lerner, IP Law Leaders PLLC, Cameron H. Tousi, Albrecht Tousi & Farnum PLLC, Washington, DC, Joseph William Vucko, IB–Hearthware, Inc., Libertyville, IL, for Defendant.

MEMORANDUM OPINION AND ORDER

AMY J. ST. EVE, District Judge.

On July 20, 2009, Plaintiff Morningware, Inc. (“Morningware”), filed its Complaint against Hearthware Home Products, Inc. (“Hearthware”), alleging that Hearthware had commercially disparaged Morningware's goods, had committed the common-law tort of unfair competition, and had violated the Deceptive Trade Practices Act of Illinois, as well as the unfair-competition and product-disparagement provisions of the Lanham Act. (R. 1.) Separately, Hearthware brought an action against Morningware alleging that it had infringed U.S. Patent No. 6,201,217 (“the '217 Patent”). ( IBC–Hearthware, Inc. v. Morningware, Inc., No. 09–CV–4903 (N.D.Ill.) (R. 1).) The Court consolidated both cases on August 26, 2009. ( Id. (R. 19).)

Since that time, both parties have amended their pleadings to assert additional claims and counterclaims against each other. At issue in this Memorandum Opinion and Order are the following: 1) Morningware's counterclaim against Hearthware for a declaration of noninfringement of the '217 Patent” (Count VI of Morningware's counterclaims); 2) Morningware's counterclaim for a declaration of invalidity of claim 3 of the '217 Patent (Count VII of Morningware's counterclaims); and 3) Morningware's counterclaim for a declaration of unenforceability of the '217 Patent due to inequitable conduct (Count VIII of Morningware's counterclaims). Morningware has moved for summary judgment on all three claims. For the following reasons, the Court denies Morningware's motions.¹

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 and internal quotation marks 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 and that entitles the moving party to a judgment as a matter of law.” Cracco v. Vitran Exp., Inc., 559 F.3d 625, 632 (7th Cir.2009). “The opposing party is required to file ‘a response to each 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) (noting that the party's 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”); Cichon v. Exelon Generation 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.”); 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”).

II. The Parties Failed to Comply with Local Rule 56.1

As was the case with Morningware's previous motions for summary judgment in this case, both parties' Local Rule 56.1 statements contain significant problems. Several of Morningware's “statements of material facts” are either unsupported by any citation to the evidence or they are not statements of fact at all, but rather legal argument or legal conclusions. In addition, many of Hearthware's Local Rule 56.1(b)(3)(C) additional statements of material fact fail to comply with the local rules because they contain improper argument and legal conclusions, and many do not contain citations to evidence in support of the asserted statements. As explained above, the purpose of Local Rule 56.1 statements is to 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.”). As such, the Court will not deem these “facts” as true.

As with the parties' previous statements of fact submitted to the Court in this matter, it appears that the parties simply cut and pasted portions of their briefs into their Local Rule 56.1 statements of fact and responses thereto. This is not only impermissible, it also does not assist the Court in deciding the motions. See Dal Pozzo v. Basic Machinery Co., Inc., 463 F.3d 609, 613 (7th Cir.2006) (“An advocate's job is to make it easy for the court to rule in his client's favor ....”). As a result of the parties' failure to comply with Rule 56.1, deciphering the material facts at issue in this complicated patent case has been an onerous task.

RELEVANT FACTS

I. The Parties and the Court's Jurisdiction

Hearthware is a corporation organized under Illinois law with its principal place of business in Libertyville, Illinois. (R. 343, Hearthware's Noninfringement Add'l SOF ¶ 2.) Morningware is a corporation organized under Illinois law with its principal place of business in Mount Prospect, Illinois. ( Id. ¶ 3.) This Court has subject matter jurisdiction over Hearthware's patent claims under 28 U.S.C. § 1338(a). ( Id. ¶ 4.) Venue is proper in this District pursuant to 28 U.S.C. § 1391(b) and (c). ( Id. ¶ 6.)

II. Facts Relevant to Morningware's Noninfringement Motion for Summary JudgmentA. Hearthware's '217 Patent

At issue in this case is the '217 Patent, entitled “Counter–Top Electric Cooker.” (R. 321–2, '217 Patent.) The '217 Patent issued on March 13, 2001, and it lists Jung S. Moon, Ron Liu, and Alan R. Kelley as the inventors. ( Id.) Mr. Moon is Hearthware's Chief Executive Officer. ( See R. 232, Oct. 11, 2011 Order.) One of the stated objectives of the '217 Patent is “to provide a countertop electric oven that minimizes the risk of heating housing components to a point where the components can be damages or where a user cannot comfortably handle the housings during operation or soon after operation has been terminated.” (Hearthware's Invalidity SOF ¶ 14; R. 337–2, '217 Patent, col. 1, l. 66 through col. 2, l. 4.)

Claim 3 of the '217 Patent discloses:

An electric oven for cooking food, the oven comprising:

a cooking enclosure including an upper surface with an opening therein; and

a power head detachably connected to the cooking enclosure and including

a heating unit extending into the cooking enclosure through said opening,

a fan chamber positioned above the cooking enclosure and the heating unit,

a fan mounted in the fan chamber to create a cooling air flow through the fan chamber,

a plurality of air inlets to the fan chamber to allow said cooling air flow into the fan chamber, and

a cooling manifold surrounding said opening and facing said upper surface outside of said cooking enclosure,the cooling manifold in fluid communication with the fan chamber and including a plurality of air outlets arranged to direct the cooling air flow from the fan chamber toward the upper surface of the cooking enclosure to cool the upper surface,

wherein said heating unit is spaced from said opening to define a hot gas vent surrounding said heating unit and located between said heating unit and said air outlets to vent hot gas from the inside of the cooking enclosure for mixture with said cooling air flow from said air outlets.

( Id., col. 8, l. 51 through col. 9, l. 10.) The Court has construed certain terms in claim 3 as follows: ²

B. Morningware's...