EcoServices, LLC v. Certified Aviation Services, LLC

OPPOSITION to NOTICE OF MOTION AND MOTION for Judgment of Indefiniteness of the '860 Patent 273

C.D. Cal.August 15, 2018

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Ronald J. Pabis (pro hac vice) rpabis@goodwinlaw.com Stephen K. Shahida (pro hac vice) sshahida@goodwinlaw.com Patrick J McCarthy (pro hac vice) pmccarthy@goodwinlaw.com Myomi Tse Coad (pro hac vice) mcoad@goodwinlaw.com GOODWIN PROCTER LLP 901 New York Avenue NW Washington, DC 20001 Tel.: +1 202 346 4000 Fax.: +1 202 346 4444 Natasha E. Daughtrey (SBN 319975) ndaughtrey@goodwinlaw.com GOODWIN PROCTER LLP 601 S Figueroa Street 41st Floor Los Angeles, California 90017 Tel.: +1 213 426 2500 Fax.: +1 213 623 1673 Attorneys for Plaintiff ECOSERVICES, LLC UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA EASTERN DIVISION ECOSERVICES, LLC, Plaintiff, v. CERTIFIED AVIATION SERVICES, LLC, Defendant. Case No. 5:16-cv-01824-RSWL-SPx PLAINTIFF ECOSERVICES, LLC’S OPPOSITION TO DEFENDANT CERTIFIED AVIATION SERVICES, LLC’S MOTION FOR JUDGMENT OF INDEFINITENESS OF THE ’860 PATENT Judge: Hon. Ronald Sing Wai Lew Complaint Filed: April 22, 2016 Trial Date: June 26, 2018 Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 1 of 16 Page ID #:16711 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 i TABLE OF CONTENTS I. INTRODUCTION ........................................................................................... 1 II. CAS WAIVED THIS INDEFINITENESS ARGUMENT ............................. 4 A. CAS Should have Raised this Indefiniteness Argument During the Markman Process. ........................................................................... 4 B. CAS Missed Other Opportunities to Raise the Issue at Hand .............. 5 III. CAS HAS FAILED TO SHOW BY CLEAR AND CONVINCING EVIDENCE THAT “PARTICLE SIZE” IS INDEFINITE WITHIN THE MEANING OF 35 U.S.C. § 112, ¶ 2 ..................................................... 7 A. The Cases Cited by CAS are Inapposite. .............................................. 9 IV. CAS INFRINGES THE ’860 PATENT ........................................................ 11 V. CONCLUSION ............................................................................................. 12 Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 2 of 16 Page ID #:16712 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ii TABLE OF AUTHORITIES Page(s) Federal Cases Advanced Steel Recovery, LLC v. X-Body Equip., Inc., No. 2:12-cv-1004-GEB-DAD, 2014 WL 3939356, at *4 (E.D. Cal. Aug. 11, 2014), aff’d, 808 F.3d 1313 (Fed. Cir. 2015) .......................................... 4 Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615 (Fed. Cir. 1995) ........................................................................ 3, 5, 12 Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) ...................................................................... 10, 11 Broadcom Corp. v. Emulex Corp., 732 F.3d 1325 (Fed. Cir. 2013) .................................................................... 3, 5, 12 Cent. Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Sols., P.C., 482 F.3d 1347 (Fed. Cir. 2007) .............................................................................. 4 Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327 (Fed. Cir. 2003) ............................................................................ 12 Halliburton Energy Serv., Inc., 514 F.3d 1244 (Fed. Cir. 2008) ........................................................................ 9, 10 Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357 (Fed. Cir. 2003) .............................................................................. 7 Nautilus, Inc. v. Biosig Instr., Inc., 134 S. Ct. 2120 (2014)........................................................................................ 7, 8 O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351 (Fed. Cir. 2008) .............................................................................. 5 Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015).............................................................................................. 7 Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 3 of 16 Page ID #:16713 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 1 Plaintiff EcoServices, LLC (“EcoServices”) respectfully opposes Defendant Certified Aviation Services, LLC’s (“CAS”) Motion for Judgment of Indefiniteness of the ’860 Patent (ECF No. 273). CAS’s motion should be denied because (1) CAS missed (intentionally or by design) several opportunities to raise this argument throughout the course of this long litigation and thus, CAS has waived this argument; and (2) CAS fails to show by clear and convincing evidence that the term “liquid particle size in the range of 250-120 µm” is indefinite within the meaning of 35 U.S.C. § 112, ¶ 2. I. INTRODUCTION The time for raising indefiniteness arguments in this case has long-since passed as it should have been raised during the claim construction process more than a year ago. In fact, CAS, apparently recognizing its obligation to raise these issues earlier in the case, raised indefiniteness of the claims of the ’860 Patent during claim construction. The Court rejected that argument in its May 18, 2017Markman Order (ECF No. 80), stating: “when the entire claim itself is read, ‘small quantities’ is further defined” including through the disclosure of “a liquid particle size in the range of 250-120µm.” (ECF No. 80, at 9.) The Court concluded at that time that CAS “has failed to prove by clear and convincing evidence, that the definition as used by Plaintiff rises to the level of indefiniteness.” ECF No. 80, at 10. Despite the Court having already ruled on the issue, CAS raised indefiniteness of the ’860 Claims a second time during summary judgement and the Court, for a second time, rejected the argument.1 Now, after trial (and undeterred by the Court’s prior rulings) CAS belatedly moves this Court to turn back the pages and revisit the Markman chapter to reconsider what is essentially the same argument, 1 CAS finally dropped its argument as to “small quantities” being indefinite less than two weeks before trial during motion in limine briefing. See ECF No. 221 at 6 n.3 (“On May 29, 2018 the Court denied CAS’s motion for summary judgment that the ‘860 patent was invalid as indefinite based on the “small quantities” limitation. Given the Court’s decision, this is not an issue that will be presented to the jury.”). Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 4 of 16 Page ID #:16714 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2 even if repackaged: i.e., that the ’860 Patent is allegedly invalid as indefinite because the claim does not provide an objective boundary of the number of the particles that must fall within the claimed 250-120µm range. The argument is both untimely and substantively incorrect. First, to skirt its failure to timely raise the issue, CAS sheepishly suggests that EcoServices’ infringement argument at trial showing less than 100% of the particle sizes in the accused Cyclean system fall within the claimed range was new to CAS. See, e.g., ECF No. 273 at 7-9. Any such suggestion misstates the record. The evidence and arguments that EcoServices provided to show that CAS infringes the “particle size” limitation was available to CAS long before the trial, during discovery. Specifically, EcoServices’ complete infringement contentions were disclosed as part of Mr. Kushnick’s August 31, 2017 expert report. (ECF No. 184- 3.) In fact, the very trial evidence that CAS cites as part of its “surprise” argument, JX315, formed an integral part of Mr. Kushnick’s expert report. And CAS had the full opportunity to question Mr. Kushnick about that position during his deposition. CAS could have raised the issue on a summary judgment motion. It did not. Instead, CAS sat on this purported dispute until after trial.2 CAS thus waived the argument at issue here, and CAS must live with the consequences of its litigation strategy. Second, CAS’s argument is nothing more than an attempt to re-write the claim language to include a limitation that is not there. Specifically, CAS attempts to re-write the claim to require that a certain percentage of particles be sprayed into the engine in the claimed range. That is not what the plain language of the claim requires and if CAS wanted such a construction, it should have asked for it during claim construction. It did not and under the plain meaning of the claim, if some of the particles are shown to be in the claimed range, there is infringement. It is well- 2 CAS did not even raise the indefiniteness issue as part of its Rule 50(a) motion. Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 5 of 16 Page ID #:16715 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3 settled law that an accused device that sometimes embodies a claimed invention nonetheless infringes. See Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1333 (Fed. Cir. 2013) (quoting Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 622-23 (Fed. Cir. 1995) (stating that an accused device that “sometimes, but not always, embodies a claimed method nonetheless infringes.”)). CAS fails to acknowledge or even mention this well-established patent law tenet. CAS is undoubtedly well aware of this basic legal principle as evidenced by the fact that it did not (as it could not) advocate for a contrary jury instruction. In the end, EcoServices presented the jury with evidence that at least 15% of the liquid particles produced by nozzles tested by Mr. Kushnick fall within the claimed range. CAS failed to rebut that evidence. The Court instructed the jury on the law. And the jury concluded that Cyclean infringes the ’860 Patent. Any reference to the fact that a certain numerical percentage of the liquid particles produced by Cyclean fall outside the claimed range remains irrelevant. Finally, even putting aside CAS’s failure to timely raise this claim construction argument, CAS fails to show by clear and convincing evidence that the claim is indefinite under 35 U.S.C. § 112, ¶ 2. To the extent CAS suggests this indefiniteness argument is new and not a repackaged version of what it had previously raised, there is no trial testimony (or even a report or expert declaration) from CAS’s expert, Dr. Micklow, in support of this argument. CAS cannot carry its clear and convincing burden with mere attorney argument when the legal test views the patent from the perspective of one of skill in the art, and the inquiry focuses on what the patent disclosure conveys to one of skill in the art. Obviously, from the jury’s perspective, the inventor’s testimony as well as that of Mr. Kushnick, showed that the patent specification and the prosecution history inform one of skill in the art about the scope of the invention with reasonable certainty. Simply arguing to the contrary with no evidentiary support post-trial is an undue waste of resources. In Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 6 of 16 Page ID #:16716 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 4 short, CAS fails to carry its heavy burden of proving indefiniteness by clear and convincing evidence. II. CAS WAIVED THIS INDEFINITENESS ARGUMENT A. CAS Should have Raised this Indefiniteness Argument During the Markman Process. CAS’s argument is a veiled attempt at rewriting the claim in a manner not raised during claim construction. CAS should have raised any attack on the definiteness of the claimed “liquid particle size in the range of 250-120 µm” during the claim construction phase of the case. CAS failed to do so. Indeed, in the parties’ Joint Statement (ECF No. 73 at 2) CAS agreed with EcoServices that the term “liquid particle size in the range of 250-120 µm” did not require construction. See also ECF No. 80 at 7 (“In the parties’ Joint Statement, the parties agree the following terms do not require construction: “a liquid particle size in the range of 250-120 µm (’860 Patent);”). Having once conceded that the term informs one of skill in the art about the scope of the invention with reasonable certainty, CAS cannot reverse course after the trial because it lost. Absent some error by the Court (and there are none raised here), there are no do-overs in litigation. The parties and the Court endured a lengthy and thorough claim construction exercise and the Court issued its Markman Order. Accordingly, CAS has waived this indefiniteness argument because it failed to raise this argument during claim construction. The Federal Circuit has held that a party waives an argument with respect to a term if it fails to raise the argument during the claim construction phase. Cent. Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Sols., P.C., 482 F.3d 1347, 1356 (Fed. Cir. 2007); see also Advanced Steel Recovery, LLC v. X-Body Equip., Inc., No. 2:12-cv-1004-GEB-DAD, 2014 WL 3939356, at *4 (E.D. Cal. Aug. 11, 2014), aff’d, 808 F.3d 1313 (Fed. Cir. 2015). Now more than one year after the Court’s Markman Order, and after the trial, CAS is asking this Court to revisit a Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 7 of 16 Page ID #:16717 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 5 claim construction issue and essentially reopen a chapter that this Court has already authored. The Court’s claim construction Order dictated the course of this litigation and trial as the law of the case. Thus, consistent with Federal Circuit precedent, CAS has waived this indefiniteness argument because CAS failed to raise it during Markman proceedings. B. CAS Missed Other Opportunities to Raise the Issue at Hand CAS fails to provide any reason why it could not have timely raised this claim construction issue at some other point before trial, such as through a motion for reconsideration of the Court’s Markman order or even at the summary judgment stage.3 Instead, CAS suggests that EcoServices infringement contentions presented at trial were new. See ECF No. 273 at 7:7-9 (“But, at trial, EcoServices’s infringement case was premised on the contention that the claim limitation is satisfied even if only a small percentage of the particles in the spray are within that range.”) (emphasis added). CAS knows or should know that any suggestion that this theory is new is baseless. The record is clear on this point. CAS was fully on notice about EcoServices infringement position as to the “particle size” limitation. Specifically, Mr. Kushnick’s August 31, 2017 infringement expert report detailed the contention. EcoServices has consistently maintained this infringement position, which is consistent with legal precedent, during the litigation and through trial: 100% of the particles in the Cyclean spray need not be within the range of 120 µm to 250 µm to infringe the ’860 Patent. See Broadcom Corp., 732 F.3d at 1333 (quoting Bell 3 CAS could have even potentially raised the issue just prior to trial if it believed a genuine and legitimate claim construction dispute remained despite the Court’s Markman Order. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351 (Fed. Cir. 2008). Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 8 of 16 Page ID #:16718 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6 Commc’ns Research, Inc., 55 F.3d at 622-23 (stating that an accused device that “sometimes, but not always, embodies a claimed method nonetheless infringes.”)). All that the claims require is for enough of the liquid particles to fall within the claimed range “to a degree at which the particles of liquid will follow the same routes through the turbine compressor as those previously taken by the air-borne contaminants.” (JX4, Claim 1.) Mr. Kushnick’s expert report detailed this argument, and he testified about it at his deposition. His trial testimony was consistent. CAS cannot claim any surprise. Indeed, CAS tacitly admits that it had knowledge of EcoServices’ infringement position by referencing Mr. Kushnick’s test results presented during trial at JX315. See, e.g., ECF No. 273 at 4-5. What CAS fails to highlight is that JX315 and how it supports the infringement contentions were not only disclosed well before trial and summary judgment motions, but they also formed an integral part of Mr. Kushnick’s expert report. Indeed, JX315 was separately marked as an exhibit (Ex. 199 to Mr. Kushnick’s March 6, 2018 deposition) during Mr. Kushnick’s deposition. In the end, CAS’s only attack on the data contained in JX315 was that perhaps the wrong nozzles were tested. But the test results remain unrebutted as CAS’s expert Dr. Micklow never performed any tests of his own. In sum, the trial evidence showed that there was an adequate percentage of particles that were inside the claimed range to satisfy all the claim requirements. EcoServices’ infringement contentions were well known to CAS who had the supporting data nearly a year before trial. Yet CAS failed to raise the instant issue until after the trial. CAS should bear the consequences of its litigation strategy. Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 9 of 16 Page ID #:16719 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 7 III. CAS HAS FAILED TO SHOW BY CLEAR AND CONVINCING EVIDENCE THAT “PARTICLE SIZE” IS INDEFINITE WITHIN THE MEANING OF 35 U.S.C. § 112, ¶ 2 Even if this issue has not been waived, in the final analysis, CAS fails to carry its heavy burden to prove by clear and convincing evidence that the asserted claims are indefinite. A patent must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter” of the claimed invention. 35 U.S.C. § 112, ¶ 2. A patent’s claims are only invalid as indefinite under this provision if the “claims, viewed in light of the specification and prosecution history” fail to “inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instr., Inc., 134 S. Ct. 2120, 2129-30 (2014). According to the Supreme Court, “a patent must be precise enough to afford clear notice of what is claimed, thereby ‘appris[ing] the public of what is still open to them.’” Id. This inquiry is based primarily on intrinsic evidence. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 840-41 (2015). A party asserting that a claim is indefinite must prove indefiniteness by clear and convincing evidence. Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003). The ‘860 Patent has been scrutinized by the Patent Office, and now by this Court in an adversarial context. As the Court correctly did during the claim construction process, the validity evaluation must take into account the entirety of the claim language. Here claim 1 of the ’860 Patent discloses: 1. A method of washing turbine compressors, which operate with large quantities of air and therefore become internally soiled by and coated with contaminants carried by the air, therewith giving rise to greater fuel consumption, higher temperatures and higher emissions with substantially impaired efficiency as a result thereof, wherein small quantities of finely-divided liquid are sprayed onto and through the turbine compressors, characterized by running the turbine compressors and spraying the finely-divided liquid quantities through Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 10 of 16 Page ID #:16720 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8 at least one nozzle towards and through the turbine compressor at an overpressure within the range of 50-80 bars and at a liquid particle size in the range of 250-120 um, and with a total volumetric flow through the nozzle or nozzles within the range of 0.5-60 l/min., and with a liquid particle velocity of 100-126 m/sec., whereby the liquid is finely-divided to a degree at which the particles of liquid will follow the same routes through the turbine compressor as those previously taken by the air-borne contaminants, when spraying said liquid onto and through said turbine compressor. (JX4, claim 1) (emphasis added). CAS offers no evidence, let alone clear and convincing evidence, that the claim is indefinite. CAS entire argument is that the ’860 Patent “supplies no objective boundary” as to how many liquid particles must fall within the claimed 150-120 µm range. (ECF No. 273, at 1-2.) But the legal test of validity under 35 U.S.C. § 112 ¶ 2, as articulated by the Supreme Court remains whether the patent disclosures “inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, 134 S. Ct. at 2129-30. On this, CAS offers no evidence. Because Dr. Micklow did not perform any tests and did not even address this argument in his expert reports, he failed to provide any trial testimony on the subject.4 The statutory presumption of validity of the ’860 Patent stands unrebutted. Mr. Kushnick’s testimony, including about his test results that the Cyclean produces enough liquid particles “to a degree at which the particles of liquid will follow the same routes through the turbine compressor as those previously taken by the air- borne contaminants” stands unrebutted. All that CAS is left with is attorney argument, raised for the first time post-trial. That simply falls well short of the 4 In his invalidity report, Dr. Micklow only opined that the “particle size” term is indefinite because the ’860 Patent does not describe the way to measure the diameter of the particles. (Micklow Invalidity Report at 175.) CAS abandoned that line of attack before the trial. Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 11 of 16 Page ID #:16721 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9 requisite clear and convincing evidence needed to overcome the presumption of validity. A. The Cases Cited by CAS are Inapposite. CAS relies on Halliburton as alleged support for its indefiniteness argument. But the facts of Halliburton are inapposite here. For example, the disputed term in Halliburton was briefed during the summary judgment stage, Halliburton Energy Serv., Inc., 514 F.3d 1244, 1247 (Fed. Cir. 2008) whereas here, CAS chose to raise this issue post-trial. Additionally, the disputed term, “fragile gel”, appeared only in the preamble and the plaintiff conceded that the claims are limited to those that are “fragile gels.” Halliburton, 514 F.3d at 1246. Here, the term “liquid particle size in the range of 250-120 µm” does not appear in the preamble and no comparable concession was made by EcoServices. Also, in Halliburton, the dispute centered on the degree of fragility of the gel remaining ambiguous. See id. at 1253 (“The fluids of the #832 invention may provide less resistance to shear (i.e., break more quickly) than the prior art fluids, but the degree of improved speed remains ambiguous.”). Here, there is no term of degree at issue-the “particle size” limitation has a specific numeric range of 250-120 µm, which is not a term of degree. Accordingly, the facts of Halliburton are not analogous to this case. If anything, Halliburton undermines CAS’s indefiniteness argument. Specifically, CAS argues that “the ’860 Patent in no meaningful way contrasts itself from the prior art” because “the prior art range overlaps with the claimed range from 150 to 250 µm” (ECF No. 273 at 8). CAS then quotes Halliburton, 514 F.3d at 1252, to argue that such differentiation “is an important consideration in the definiteness inquiry because in attempting to define a claim term, a person of ordinary skill is likely to conclude that the definition does not encompass that which is expressly distinguished as prior art.” Id. Halliburton goes on, however, and states that in such a situation “that is not to suggest that a claim can never be definite and yet read on the prior art”: Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 12 of 16 Page ID #:16722 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 10 For example, a claim that recites a specific numeric range for a physical property may be definite even through prior art products fell within that range. In such a case, a person of ordinary skill in the art would know the boundaries of the claim, and the focus would properly be on other validity challenges (e.g., anticipation). Id at 1252. This is the situation that is presented in the ’860 Patent-claim 1 recites a specific numeric range, 250-120 µm, and even though prior art particle size ranges fall within that range, a person of ordinary skill in the art would know the boundaries of the claim, and the focus would properly be on other validity challenges, such as obviousness. CAS does not even mention or attempt to reconcile Halliburton. This is not surprising because CAS’s indefiniteness argument as to “particle size” is eroded by the precedent that it relies upon-it is not a hard and fast rule that a claim is indefinite when prior art products fall within the range.5 Accordingly, CAS has not carried its heavy burden of proving indefiniteness of “particle size” by clear and convincing evidence and consistent with Halliburton that undermines CAS’s indefiniteness argument, “particle size” is not indefinite within the meaning of 35 U.S.C. § 112, ¶ 2. Finally, CAS also relies on Berkheimer as alleged support for its indefiniteness argument. But like Halliburton, the facts of Berkheimer are distinguishable from this case for several reasons. First, Berkheimer is procedurally distinguishable because in Berkheimer, the defendant raised the term that was found to be indefinite during Markman proceedings. Berkheimer v. HP Inc., 881 F.3d 1360, 1363 (Fed. Cir. 2018). Here, CAS failed to raise its indefinite argument as to “particle size” until post-trial. Second, Berkheimer is factually distinguishable because the defendant submitted and relied on a declaration from its expert, Dr. Schonfeld, to find that an ordinary skilled artisan would not have known what the term “minimal 5 Notably, CAS abandoned its only other invalidity defense under 35 U.S.C. § 103 three days before trial. See ECF No. 272-3. Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 13 of 16 Page ID #:16723 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 11 redundancy” means in the claim. 881 F.3d at 1363. The district court in Berkheimer relied on Dr. Schonfeld’s declaration for its indefiniteness finding and the Federal Circuit held that the district court’s subsidiary factual finding based on Dr. Schonfeld’s declaration was not clearly erroneous. Id. Here, CAS offers no comparable evidence, as none was adduced during trial. Third, as part of the Federal Circuit’s affirmance of the indefiniteness of “minimal redundancy,” the Federal Circuit analyzed the specification, which “use[d] inconsistent terminology to describe the level of redundancy that the system archives.” (i.e., “minimizing, eliminating, reducing”). Id. at 1363-64. Here, no such inconsistent terminology is used in the ’860 Patent when describing the particle size. For at least these reasons, Berkheimer is also distinguishable from this case. IV. CAS INFRINGES THE ’860 PATENT It remains undisputed that all the nozzles tested under the direction of Mr. Kushnick produced enough liquid particles in the 120-250 µm range to follow the gas path through the turbine compressor. CAS itself produced evidence of Cyclean achieving the claimed result. See, e.g., JX401 (“Contrary to conventional washing methods, a fine and evenly distributed water mist follows the gas path.”). CAS in fact concedes that in all 84 nozzle tests, at least 35% of the liquid particles were inside the claimed range. ECF No. 273 at 4. In its motion, CAS asserts (and EcoServices does not disagree) that “a person of ordinary skill in the art would understand that the claim does not require 100% of the particles in a stream to be within the claimed range.” ECF No. 273 at 6. However, also in its motion, CAS appears to argue that CAS does not directly infringe claim 1 of the ’860 Patent because 100% of the liquid particles tested under the direction of Mr. Kushnick did not fall within the claimed 120-250 µm range. CAS does not cite to any supporting precedent. This is not surprising because CAS’s argument is wrong. Under well-settled Federal Circuit precedent, an accused device that “sometimes, but not always, embodies a claimed method nonetheless infringes.” Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 14 of 16 Page ID #:16724 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 12 Broadcom Corp., 732 F.3d at 1333 (quoting Bell Commc’ns Research, Inc., 55 F.3d at 622-23). Moreover, Cyclean, in addition to using liquid particles that fall within the claimed range, is capable of accomplishing the entire method of claim 1. See Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1346 (Fed. Cir. 2003) (stating that while it is true that an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes, the accused infringing product must be capable of accomplishing the entire method of the claim). Here, the jury unanimously found that CAS directly infringes the ’860 Patent because Cyclean also practices each of the other limitations in claim 1 (and claim 2), such as overpressure, flow, and particle velocity. Absent evidence challenging the nozzle testing results that showed at least 15%-35% of the liquid particles tested fall within the claimed range and without legal precedent contrary to Broadcom, CAS directly infringes the ’860 Patent. Whether the infringing liquid particles comprise 15%, 50%, or 100% of the particles coming out of the Cyclean system remains irrelevant to the infringement or indefiniteness inquiry. V. CONCLUSION For the foregoing reasons, EcoServices respectfully requests that the Court deny CAS’s Motion for Judgment of Indefiniteness of the ’860 Patent. Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 15 of 16 Page ID #:16725 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 13 Dated: August 15, 2018 Respectfully submitted, By: /s/ Natasha E. Daughtrey Ronald J. Pabis rpabis@goodwinlaw.com Stephen K. Shahida sshahida@goodwinlaw.com Patrick J McCarthy pmccarthy@goodwinlaw.com Myomi Tse Coad mcoad@goodwinlaw.com GOODWIN PROCTER LLP 901 New York Avenue NW Washington, DC 20001 Tel.: +1 202 346 4000 Fax.: +1 202 346 4444 Natasha E. Daughtrey ndaughtrey@goodwinlaw.com GOODWIN PROCTER LLP 601 S Figueroa Street 41st Floor Los Angeles, California 90017 Tel.: +1 213 426 2500 Fax.: +1 213 623 1673 Attorneys for Plaintiff: ECOSERVICES, LLC Case 5:16-cv-01824-RSWL-SP Document 279 Filed 08/15/18 Page 16 of 16 Page ID #:16726