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Quest Integrity USA, LLC v. Clean Harbors Industrial Services Inc.

United States District Court, D. Delaware

March 28, 2017


          Thomas C. Grimm, Esquire, Jeremy A. Tigan, Esquire, and Stephen J. Kraftschik, Esquire of Morris, Nichols, Arsht & Tunnell LLP Counsel for Plaintiff. Of Counsel: Douglas A. Grady of Foster Pepper PLLC.

          Kelly E. Farnan, Esquire and Selena E. Molina, Esquire of Richards, Layton & Finger, P.A. Counsel for Defendant Clean Harbors Industrial Services, Inc. Of Counsel: Michael J. Turgeon, Esquire and Robert S. Rigg, Esquire of Vedder Price P.C.

          David E. Moore, Esquire, Stephanie E. O'Byrne, Esquire, and Bindu A. Palapura, Esquire of Potter, Anderson & Corroon, LLP Counsel for Defendant Cokebusters USA Inc. Of Counsel: Nick Brown, Esquire, Thomas M. Fulkerson, Esquire, and Wesley G. Lotz, Esquire of Fulkerson Lotz LLP; Michael Hudgins, Esquire and Steven Hudgins, Esquire of The Hudgins Law Firm.


          Robinson, Senior District Judge


         Quest Integrity USA, LLC ("plaintiff') initiated the above lawsuits on December 15, 2014, by filing complaints against Clean Harbors Industrial Services, Inc. ("Clean Harbors") and Cokebusters USA Inc. ("Cokebusters") (collectively, "defendants") asserting infringement of U.S. Patent No. 7, 542, 874 ("the '874 patent"), entitled "2D and 3D Display System and Method for Furnace Tube Inspection." (Civ. No. 14-1482, D.I. 1, ex. A) Plaintiff filed for a preliminary injunction, which the court denied on June 12, 2015. (Civ. No. 14-1482, D.I. 99) On June 28, 2016, the court issued its claim construction. (Civ. No. 14-1482, D.I. 137) Now that discovery has concluded, plaintiff has reduced the number of asserted claims to nine. Plaintiff asserts claims 1, 13, 25, 33, and 37 against defendant Clean Harbors and claims 12, 24, 30, 33, and 40 against defendant Cokebusters.[1] (Civ. No. 14-1482, D.I. 180 at 1; Civ. No. 14-1483, D.I. 286 at 1) Therefore, claims 1, 12, 13, 24, 25, 30, 33, and 40 of the '874 patent are pending.[2]

         In December 2016, the parties filed various motions for summary judgment. Plaintiff moves for summary judgment of infringement and validity. (Civ. No. 14-1482, D.I. 179, D.I. 183; Civ. No. 14-1483, D.I. 285, D.I. 289) Defendants move for summary judgment of invalidity. (Civ. No. 14-1482, D.I. 184; Civ. No. 14-1483, D.I. 293) Clean Harbors moves for summary judgment of noninfringement. (Civ. No. 14-1482, D.I. 189) Cokebusters moves for summary judgment of noninfringement and no willfulness. (Civ. No. 14-1483, D.I. 290)


         “The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 415 U.S. 475, 586 n. 10 (1986). A party asserting that a fact cannot be-or, alternatively, is-genuinely disputed must be supported either by citing to “particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for the purposes of the motions only), admissions, interrogatory answers, or other materials, ” or by “showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact.” Fed.R.Civ.P. 56(c)(1)(A) & (B). If the moving party has carried its burden, the nonmovant must then “come forward with specific facts showing that there is a genuine issue for trial.” Matsushita, 415 U.S. at 587 (internal quotation marks omitted). The court will “draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).

         To defeat a motion for summary judgment, the non-moving party must “do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita, 475 U.S. at 586-87; see also Podohnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir. 2005) (stating party opposing summary judgment “must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue”) (internal quotation marks omitted). Although the “mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment, ” a factual dispute is genuine where “the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). “If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted.” Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) (stating entry of summary judgment is mandated “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”).


         A. Claim Construction

         At claim construction, neither party sought construction of claims 12 and 25.[3](Civ. No. 14-1482, D.I. 119) Plaintiff moves for summary judgment of validity of these two claims and now proposes constructions for their limitations. (Civ. No. 14-1482, D.I. 195 at 19-21) Defendants argue that no construction is necessary but offer an alternate construction.[4] (Civ. No. 14-1482, D.I. 220 at 26-27)

         1. Standard

         Claim construction is a matter of law. Phillips v. AWH Corp., 415 F.3d 1303, 1330 (Fed. Cir. 2005) (en banc). Claim construction focuses on intrinsic evidence - the claims, specification, and prosecution history - because intrinsic evidence is “the most significant source of the legally operative meaning of disputed claim language.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). Claims must be interpreted from the perspective of one of ordinary skill in the relevant art at the time of the invention. Phillips, 415 F.3d at 1313. In some cases, “the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period.” Teva Pharm. USA, Inc. v. Sandoz, Inc., ___ U.S.___, 135 S.Ct. 831, 841 (2015) (citation omitted).

         Claim construction starts with the claims and remains centered on the words of the claims throughout. Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). In the absence of an express intent to impart different meaning to claim limitations, “the words of a claim are generally given their ordinary and customary meaning, ” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1312-13 (quoting Vitronics, 90 F.3d at 1582). “The ordinary meaning may be determined by reviewing various sources, such as the claims themselves, the specification, the prosecution history, dictionaries, and any other relevant evidence. Ultimately, ‘[t]he only meaning that matters in claim construction is the meaning in the context of the patent.'” Ruckus Wireless, Inc. v. Innovative Wireless Sols., LLC, Civ. No. 2015-1425, ___ F.3d.___, 2016 WL 3065024, at *3 (Fed. Cir. May 31, 2016). The specification is often “the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315.

         2. Analysis

         Claim 12 recites “[t]he computerized method of claim 11, wherein said display is comprised of a two-dimensional or three-dimensional representation of one or more of said stacked tube segments of said furnace.” (‘874 patent, 17:35-38) Claim 25 recites an article of manufacture claim for performing the method of claim 12.[5] (Id. at 18:46-49)

         The term “wherein said display is comprised of a two-dimensional or three-dimensional representation of one or more stacked tube segments of said furnace”[6] means “inspection data from one or more of the stacked tube segments is displayed in two or three dimensions.”[7] The “said display” of claim 12 refers to the term in claim 11 “generating a display of at least a portion of said partitioned inspection data arranged to represent said physical geometry of a plurality of said tube segments, ” which the court construed to mean “creating a visual representation of at least a portion of the inspection data to depict or portray the arrangement of the tube segments.”[8] (Civ. No. 14-1482, D.I. 137 at ¶ 5) The display is of the inspection data and not the tube segments: “the computer is also programmed to generate a display of the partitioned inspection data.” (‘874 patent, abstract) “The present invention relates generally to furnace tube inspection systems, and more particularly to a system and method for displaying inspection data in a two-dimensional and/or three-dimensional format to enable visual detection of problem areas within the furnace.” (Id. at 1:20-24)

         The specification identifies figures 3, 4, 5, and 6 as “two-dimensional color-coded” charts and figure 9 as a “three dimensional color-coded chart.” (Id. at 3:55-4:20) In example 1, “computer 102 is programmed to generate a two-dimensional display of the wall thickness readings and/or inside radius readings collected from a furnace.” (Id. at 9:54-56) The two-dimensional display embodiments of example 1 are disclosed with reference to figures 3 and 4. (Id. at 9:66-11:47) Examples 2 and 3 describe that “computer 102 is programmed to generate a two-dimensional display of the wall thickness readings” in which the “tube segments are positioned in their proper orientation.” (Id. at 11:52-53; 12:21-22; 11:61-62; 12:31-32; see also Id . at 12:6-7; 12:42-43 (“viewing all of the tube segments in their proper orientation”)) Example 2 references figure 5, and example 3 references figures 5 and 6. (Id. at 11:56-12:17; 12:25-55)

         Examples 1 and 4 discuss three-dimensional displays of inspection data “in a manner that matches the actual physical geometry of the furnace.” (‘874 patent, 14:65-66 (emphasis added); see also 11:44-46) For instance, example 1 contemplates a 3D display of the “wall thickness readings and/or inside radius readings.” (Id. at 11:42-43) Meanwhile, example 4 recites:

Computer 102 is also programmed to generate a display of the partitioned inspection data that may be viewed by a data analyst in order to visually detect problem areas within the furnace. This display may comprise a two-dimensional or three-dimensional representation of one or more of the tube segments of the furnace, which may be customized in accordance with customer requirements. For example, one customer may require a display that shows the wall thickness at five equally spaced positions along the length of a specific tube segment, while another customer may require a display that shows the minimum wall thickness for each tube segment of the furnace. Of course this information may also be provided to the customer in the form of a written report that accompanies the display.

(Id. at 14:45-59) Example 4 refers to figure 9. (Id. at 14:60-15:17)

         The specification discloses several embodiments of 2D and 3D representations of inspection data, which range from 2D strip charts with no limitations on the orientation of the inspection data to 3D displays of inspection data portrayed “in a manner matching the physical geometry of the furnace.” Mere reference to these embodiments does not support a construction limited to one of those embodiments. As discussed extensively in the court's claim construction order, the intrinsic record shows that applicant did not disclaim strip charts during prosecution. (Civ. No. 14-1482, D.I. 137 at ¶¶ 9-11) Nothing in the specification or the claims suggests that claims 12 and 25 should be read to exclude example 1 and figures 3 and 4. Therefore, claims 12 and 25 do not add limitations that require: (1) 2D or 3D representations of the tube segments themselves; (2) inspection data to be displayed in a manner representing the “actual physical geometry” of the furnace; or (3) an arrangement of the inspection data in a manner that places tube segments in their “proper orientation.”[9]

         The court has provided a construction in quotes for the claim limitations at issue. The parties are expected to present the claim construction consistently with any explanation or clarification herein provided by the court, even if such language is not included within the quotes.

         B. ‘874 Patent - Validity

         Defendants assert that claims 1, 11, 12, 13, 24, 25, 27, 28, 30, 33, 37 and 40 of the ‘874 patent are invalid as anticipated under pre-AIA 35 U.S.C. § 102(b) by plaintiff's[10] sale to Orion Norco Refining located in Norco, Louisiana (“the Norco sale”), as documented in the first of two reports (the “Norco Reports”) dated February 17-23, 2003. (Civ. No. 14-1482, D.I. 185 at 11; D.I. 187, ex. 8) Defendants contend that these claims are also obvious under § 103 and invalid for claiming patent ineligible subject matter under § 101. (Id. at 26-27) Plaintiff, in its answering brief, argues that the Norco sale does not anticipate the claims and that the Norco sale was part of a pattern of experimental sales and product improvement, which means that the FTIS product and services were not “on sale” within the meaning of § 102(b). (Civ. No. 14-1482, D.I. 195 at 8-11) Plaintiff contends that the claims are not obvious or invalid for failing to claim eligible subject matter. (Id. at 26, 39) Given the late timing of this argument, defendants contend that the eleventh-hour declaration by plaintiff's experts Robert Caligiuri, PhD, PE, FASM (“Caligiuri”) and Shukri J. Souri, PhD (“Souri”) “should be disregarded under (1) the sham affidavit doctrine; (2) Fed.R.Civ.P. 30(e); and/or (3) Fed.R.Civ.P. 37.”[11] (Civ. No. 14-1482, D.I. 220 at 4)

         Plaintiff moves for summary judgment of validity with respect to dependent claims 12 and 25. (Civ. No. 14-1482, D.I. 183; Civ. No. 14-1483, D.I. 289) Plaintiff contends that these claims are directed to figures 5, 6, and 9 of the ‘874 patent and that the court's claim construction did not address these narrow claim limitations. (Civ. No. 14-1482, D.I. 195 at 4-5) Plaintiff argues that, under the principle of claim differentiation, prior art (the Norco sale) presented at the preliminary injunction could not invalidate both the independent claims as well as the dependent claims 12 and 25. (Id.) Defendants respond that plaintiff's proposed construction for claim 12 is “tortured and narrow” and that there is no “one-for-one correlation between examples in the specifications and any specific claim.” (Civ. No. 14-1482, D.I. 220 at 28-30) Defendants argue that the Norco sale anticipates claims 12 and 25. (Id. at 30-32)

         1. Standards

         a. Anticipation

         Under 35 U.S.C. § 102(b), “[a] person shall be entitled to a patent unless the invention was patented or described in a printed publication in this or a foreign country . . . more than one year prior to the date of the application for patent in the United States.”[12] The Federal Circuit has stated that “[t]here must be no difference between the claimed invention and the referenced disclosure, as viewed by a person of ordinary skill in the field of the invention.” Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991). In determining whether a patented invention is explicitly anticipated, the claims are read in the context of the patent specification in which they arise and in which the invention is described. Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554 (Fed. Cir. 1995). The prosecution history and the prior art may be consulted if needed to impart clarity or to avoid ambiguity in ascertaining whether the invention is novel or was previously known in the art. Id. The prior art need not be ipsissimis verbis (i.e., use identical words as those recited in the claims) to be anticipating. Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 716 (Fed. Cir. 1984).

         An anticipation inquiry involves two steps. First, the court must construe the claims of the patent in suit as a matter of law. Key Pharms. v. Hercon Labs Corp., 161 F.3d 709, 714 (Fed. Cir. 1998). Second, the finder of fact must compare the construed claims against the prior art. Id. A finding of anticipation will invalidate the patent. Applied Med. Res. Corp. v. U.S. Surgical Corp., 147 F.3d 1374, 1378 (Fed. Cir. 1998).

         b. Experimental use

         “[T]he on-sale bar applies when two conditions are satisfied before the critical date. First, the product must be the subject of a commercial offer for sale. . . . Second, the invention must be ready for patenting.” Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998). The party asserting invalidity “must [] prove the facts underlying both prongs of the Pfaff test by clear and convincing evidence.”[13] Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1352 (Fed. Cir. 2002). “Whether a product was placed on sale under § 102(b) is a question of law based upon underlying factual determinations.” KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1451 (Fed. Cir. 1993) (citations omitted).

         “Nevertheless, an inventor who seeks to perfect his discovery may conduct extensive testing without losing his right to obtain a patent for his invention-even if such testing occurs in the public eye. The law has long recognized the distinction between inventions put to experimental use and products sold commercially.” Pfaff, 525 U.S. at 64. In order to determine whether public use or sale is experimental, the Federal Circuit has catalogued a nonexhaustive list of objective factors that include:

(1) the necessity for public testing; (2) the amount of control over the experiment retained by the inventor; (3) the nature of the invention; (4) the length of the test period; (5) whether payment was made; (6) whether there was a secrecy obligation; (7) whether records of the experiment were kept; (8) who conducted the experiment; (9) the degree of commercial exploitation during testing; (10) whether the invention reasonably requires evaluation under actual conditions of use; (11) whether testing was systematically performed; (12) whether the inventor continually monitored the invention during testing; and (13) the nature of the contacts made with potential customers.

Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1213 (Fed. Cir. 2005) (citations omitted). These factors “represent various kinds of evidence relevant to the question of whether pre-critical date activities involving the patented invention-either public use or sale were primarily experimental and not commercial.” Id. “In determining the purpose of the alleged experimental use, objective evidence indicating a purpose for such testing and experiment is generally preferred. An inventor's subjective intent is generally of minimal value.” In re Smith, 714 F.2d 1127, 1135 (Fed. Cir. 1983).

         2. Undisputed facts

         Plaintiff (and its predecessors) sells nondestructive furnace tube inspection services[14] (“FTIS”) to clients in the petrochemical industry. (See, e.g., Civ. No. 14-1482, D.I. 198, ex. J at 1 (February 14, 2003 quotation for Norco services)) In connection with FTIS, plaintiff obtained the ‘874 patent, which includes “color-coded strip chart[s]” shown in figures 3 and 4. (‘874 patent, 3:55; 3:59; figure 3 (wall thickness readings); figure 4 (inside radius readings)) For example, the ‘874 patent describes the strip chart in figure 3: “computer 102 is programmed to generate a strip chart 300 in which all of the wall thickness readings for a plurality of time intervals are plotted across a plurality of horizontal strips. The wall thickness readings are plotted successively in time from left-to-right and bottom-to-top.” (‘874 patent, 9:66-10:4) The ‘874 patent also includes figure 8, which is “a colorized chart . . ., which shows the composite data markers in relation to an adaptive threshold that may be used to identify the locations of the furnace bends.” (‘874 patent, 4:11-14)

         On August 30, 2002, one of the inventors of the ‘874 patent, Phil Bondurant (“Bondurant”), sent himself an e-mail containing an attached Microsoft Word document, entitled “FTISPatent.doc, ” that contained a disclosure about FTIS. (Civ. No. 14-1482, D.I. 186, ex. 1) This document contains text describing an invention[15] related to FTIS and includes three figures that are similar[16] to figures 3, 4, and 8 of the ‘874 patent. (Id.; see also ‘874 patent, figures 3, 4, and 8)

         In a February 14, 2003 quotation for services to be delivered at a refinery in Norco, Louisiana (“first Norco quotation”), plaintiff's predecessor described its FTIS services as “fairly new to the commercial marketplace, ” having been developed “approximately five (5) years” before and now employing a “second generation” FTIS sensor known as the “FTIS Intelligent Pig.” (Civ. No. 14-1482, D.I. 198, ex. J at 1) The first Norco quotation describes the reporting to be delivered as follows:

A “Field” Inspection Report can be supplied on site within 8 hours after the data is collected and analyzed. The inspection report will provide 2-Dimensional (2D) color graphics of all individual piping coil segments, return bends, and cross-over piping. Piping segments containing wall thinning, corrosion, broad area pitting, erosion, and bulging which exceed the client's specified threshold level will also be provided. . . .
A “Final” Inspection Report will . . . be professionally bound. . . . . [and] the client will also receive an electronic copy of the report, drawings, images, and raw data on Compact Disk (CD). This data will also be archived at QUEST for use in future comparison inspections.

(Id. at 6-7) The first Norco quotation resulted in the first part[17] of the Norco sale, which was delivered in two parts and documented in the two separate Norco Reports dated February 17-23, 2003 and March 3-7, 2003. (Civ. No. 14-1482, D.I. 187, ex. 8 and 9; D.I. 185, ex. A at 2-3)

         The first Norco Report provides an explanation of the process employed by plaintiff's then current FTIS. (Civ. No. 14-1482, D.I. 187, ex. 8) After the inspection of the furnace by the “FTISJ Intelligent Pig” is completed and “[o]nce the ultrasonic data is processed, it is then stored for downloading to the data station at the end of the inspection.” (Id. at 3)

The data analysis computer is a rugged, Pentium7-based portable computer that utilizes the Windows NT7/XP7 system. This computer is provided with the custom FTIS application software. The FTIS software enables the operator to configure the FTIS tool, download data from Flash RAM, and process and display collected data.
. . .
The FTIS software package allows operator control and configuration of the FTIS tool from within a fully menu driven graphical user interface. The FTIS software also provides analysis, display, and reporting capability. Displays consist of tabular, cross-sectional, and color surface plots of the data.

(Id. at 3-4) With respect to “2D Modeling, ”

QUEST has designed custom software, which allows 2-Dimensional (2D) viewing of the “entire” piping coil (refer to Figure 3). The color bar to the right represents a range of wall thickness in inches. The piping coil data begins in the bottom left corner and moves to the right. It then moves up one row and repeats the left to right motion throughout the length of the inspection. Over a mile of piping can be presented on a single plot.

(Id. at 4) In summarizing the project, plaintiff explained that “[e]ach pass was broken down into 23 sections for easy identification and tracing, ”e.g., sections numbered 1-9 “refer to the piping located in the Radiant portion of the pass.” (Id. at 7) According to plaintiff, “[e]ach pipe section number was located between two return bends. Each section number has its own unique identifier for ease in locating flaws detected during the inspection . . . .” (Id. at 8) Figure 3 is a 2-dimensional viewing of the inspection data, organized by “Section Number” and identifying “Return Bends.”

(Image Omitted)

(Id. at 4) The second Norco Report, dated March 3-7, 2003, contained descriptions of the tubing, identified by section numbers. (Civ. No. 14-1482, D.I. 187, ex. 9 at 8) The strip charts in the second Norco Report were similar to the first report but used hash marks to identify bends in the tubes.

(Image Omitted)

(Id. at 4)

         For these two projects, plaintiff was paid $31, 160 and $40, 900 respectively, for a total of $72, 060. (Civ. No. 14-1482, D.I. 185, ex. A at 4) The Norco Reports include color-coded strip charts showing wall thickness data and identifying furnace tube sections. (Civ. No. 14-1482, D.I. 187, Ex 8 at 16, 20, 24, 29, 33, 37, 45, 49, 53, 57, and 61; ex. 9 at 15, 20, 25, 30, 35, 40, 46, and 51) The strip charts state that the “Wall Thickness Data [are] generated with QUEST proprietary technology, ” but the word “confidential” does not appear anywhere in the Norco Reports. (Id.) The Norco sale involved using a computer, ultrasonic sensors, and a computer readable medium. (Civ. No. 14-1482, D.I. 185, ex. A at 7-96)

         On December 19, 2003, Bondurant and Robert De Lorenzo (“De Lorenzo”) prepared an invention disclosure for “FTIS Post Processing and Display.” (Civ. No. 14-1482, D.I. 186, ex. 2) This invention disclosure includes color images matching figures 1-3 in Bondurant's August 2002 disclosure. (Id.) The text of the invention disclosure contains minor edits from Bondurant's August 2002 document. (Civ. No. 14-1482, D.I. 186, ex. 5) Plaintiff filed the provisional patent application that led to the ‘874 patent on June 1, 2004. (‘874 patent, cover) Therefore, for § 102(b) purposes, the critical date is June 1, 2003. (Civ. No. 14-1482, D.I. 185 at 3; D.I. 195 at 9)

         3. Analysis - the Norco sale as § 102(b) prior art

         a. Commercial sale

         Plaintiff contends that the Norco sale was not a commercial sale, because “[c]ontemporaneous documents, inventor testimony, and other testimony firmly establish that [plaintiff's] Norco sale was experimental.” (Civ. No. 14-1482, D.I. 195 at 8) In support of this eleventh-hour contention, plaintiff presented declarations dated December 28, 2016 from DeLorenzo and Bondurant (collectively “the inventors”) (Civ. No. 14-1482, D.I. 202) and from its experts. For example, Caligiuri and Souri opined that the Norco sale was experimental, because “[w]hen companies are developing new technologies, they will often test experimental prototypes for clients and underwrite a portion of the cost while charging the client part of the cost of the experiment.” (Civ. No. 14-1482, D.I. 197, ex. A at ¶ 24) Despite the significance of the § 102(b) statutory bar to the validity of the ‘874 patent, Caligiuri and Souri, in their November 4, 2016 rebuttal expert report on validity, expressed no opinion about the question of whether the Norco sale was “on sale” within the scope of the statute.[18] (Civ. No. 14-1482 D.I. 187, ex. 15, ¶ 74 (“We note that there may be some question as to whether these alleged sales were actually ‘sales' in the U.S. for purposes of 102(b), but our report does not address that question.”)) The conclusory, three-paragraph declaration of Caligiuri and Souri simply points to the declaration by the inventors and provides little insight into the Electromotive factors. (Civ. No. 14-1482, D.I. 197, ex. A at ¶¶ 23-26)

         The bulk of plaintiff's Electromotive analysis is, therefore, based upon the inventors' declaration. Defendants do not dispute the inventors' subjective intent as evidenced by their declaration, but the declaration provides little objective evidence of experimentation. See In re Smith, 714 F.2d 1127, 1135 (Fed. Cir. 1983) (“An inventor's subjective intent is generally of minimal value.”).

         Nonetheless, in light of the undisputed facts in the record, the inventors' declaration is useful in evaluating the Electromotive factors. For example, the inventors state that “[a] ‘sale' of the Quest product is simply a contract to perform an inspection. . . . At no point during or after an inspection does anyone other than Quest personnel have access to the FTIS product, including the tool and the software that is involved in any analysis.” (Civ. No. 14-1482, D.I. 202 at ¶ 2) Defendants do not dispute this fact, and the court notes that in the Norco sale, plaintiff was in control of the product, the software, and the performance of the method steps, which is the second Electromotive factor “(2) the amount of control over the experiment retained by the inventor.” Electromotive, 417 F.3d at 1213.

         The inventors explain that “there was no way for us to fully test and experiment with the tool (hardware and software) other than to run it at full sized refineries, ” because “[a]t the time we only had a very small section of pipe, something around 50 feet at our facility in Kent [, Washington].” (Civ. No. 14-1482, D.I. 202 at ¶ 6) The first Electromotive factor “(1) the necessity for public testing” appears to weigh in favor of plaintiff, but every independent claim of the ‘874 patent refers to “displaying inspection data.” (‘874 patent, 16:24; 17:16; 18:27-28; 19:19; 19:54; 20:17; 20:42) Despite the fact that the ‘874 patent does not claim the sensor hardware, the inventors rely on the hardware as their motivation for public testing:

[W]e were still experimenting and had not yet produced that size tool. We did not want to produce the full size Quest FTIS tool until we knew what we were doing worked, both in hardware and in software. We knew when designing the tools that it would be too expensive for every size to have unique hardware. For that reason, we waited to produce other tools until we knew we had a fully functional model in smaller sizes. By March 2003 we still hadn't made it up to the 8” tool, as we remained focused on testing and perfecting the smaller tools at the time. We knew that if we could get the smaller tools to provide consistent data, and if that data proved useful and accurate, we could then scale up production. While we were still testing and experimenting, we did not want to spend resources on tools whose designs might be changed as a result of our trial inspections.

(Civ. No. 14-1482, D.I. 202 at ¶ 13) Public testing may have been necessary for plaintiff's hardware (i.e., sensors), but there is evidence in the record that plaintiff tested software for “displaying inspection data” on datasets collected from earlier projects.[19]The necessity of public testing does not weigh in favor of an experimental sale.

         The next factor, “(3) the nature of the invention, ” does not weigh in favor of an experimental sale. The invention involves the display of inspection data, [20] and the August 2002 invention disclosure documents include a display of inspection data that is similar to the display of data found in the Norco Reports. A comparison of these two sets of strip charts does not suggest that plaintiff had made substantial changes of any kind to the display of inspection data between August 2002 and February 2003. (Compare Civ. No. 14-1482, D.I. 186, ex. 1, figure 1, with D.I. 187, ex. 8 at 16) Two related factors are “(4) the length of the test period” and “(10) whether the invention reasonably requires evaluation under actual conditions of use, ” and while these factors may apply to the sensors, they do not appear to apply to the “displaying inspection data” invention in the ‘874 patent.

         There are four experimentation factors, which include “(7) whether records of the experiment were kept; (8) who conducted the experiment; . . . (11) whether testing was systematically performed; [and] (12) whether the inventor continually monitored the invention during testing.” There is no evidence that the inventors kept records or even identified what they were doing as experiments. Moreover, inventor Bondurant (the primary software developer) was not present at the Norco site, nor was it his practice to be on site; even in the intervening years, he has “never been on a job.” (Civ. No. 14-1482, D.I. 185, ex. C at 61:15) Inventor De Lorenzo explained how he and Bondurant worked together:

Q. Okay. How would you integrate with [Bondurant] -- if you were making a change out on the job, how would, if he was working with the source code as well, how would you keep him updated as to what changes you were making in the code?
A. Okay. Again, changes I was making to the code were more aesthetic, font changes, header changes. Phil was responsible -- well, he was the one writing the more core algorithms to do the mapping to the geometry and some of the more complex processing of the data.
Q. Are those what you in the code call “functions”?
A. They would be functions.
Q. Okay. So Phil Bondurant was the one who would write the functions and then you would make I would call “field changes, ” changes in the field to improve the look of it or perhaps meet a ...

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