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Morningware, Inc. v. Hearthware Home Products, Inc.

United States District Court, N.D. Illinois, Eastern Division

September 26, 2012

MORNINGWARE, INC., Plaintiff,
v.
HEARTHWARE HOME PRODUCTS, INC., Defendant. IBC-Hearthware, Inc. d/b/a Hearthware Home Products, Inc., Plaintiff,
v.
Morningware, Inc., Defendant.

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[Copyrighted Material Omitted]

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6,201,217. Cited.

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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

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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

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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 Judgment

A. 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,

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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]

Text of Claim 3 Court's Construction

A heating unit A unit that provides heat

A fan one or more fans

A cooling manifold surrounding said opening and facing said upper surface outside of said cooking enclosure A flange and air outlets extending from the lower portion of the power head, and surrounding said opening and facing said upper surface outside of said cooking enclosure

To direct the cooling air flow from the fan chamber toward the upper surface of the cooking enclosure to cool the upper surface to guide the cooling air flow from the fan chamber in the direction of the upper surface of the cooking enclosure to cool the upper surface

B. Morningware's Oven— The Accused Infringing Product

Morningware markets, advertises, and sells counter-top electronic ovens in the United States, primarily via the internet, through its website, and through retail. See Morningware, 2012 WL 3721350, at *3. One of those ovens is the HO-1200 Oven (" Morningware's Oven" ), which is at issue in this case.

C. The Air Outlets and Air Flow in Morningware's Oven

At issue in Morningware's motion for summary judgment is whether Morningware's Oven infringes claim 3 of the '217 Patent. The parties dispute whether Morningware's Oven discloses (1) a flange and air outlets extending from the lower portion of the power head, and surrounding said opening and facing said upper surface outside of said cooking enclosure; and (2) a plurality of air outlets arranged to guide the cooling air flow from the fan chamber in the direction of the upper surface of the cooking enclosure to cool the upper surface. In particular, the parties disagree on whether Morningware's Oven has air outlets that face the upper surface of the cooking enclosure, and whether the air outlets in Morningware's oven are " arranged to guide the cooling air flow" in " the direction of the upper surface of the cooking enclosure to cool the upper surface" of the cooking enclosure. The parties' experts address these issues.

1. The Experts

Morningware's expert, Mr. Aaron J. Jones, P.E., is a professional engineer, and is Vice President of Transportation and Materials Engineering at ITC Experts in Sugar Grove, Illinois. (R. 299-1, Jones

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Resume.) Mr. Jones earned a bachelor of science degree in metallurgical engineering from the Illinois Institute of Technology (" IIT" ) in 1995, and he earned his master's degree in metallurgical and materials engineering from IIT in 1998. ( Id. ) He is currently a Ph.D. candidate in materials engineering at IIT. ( Id. ) Mr. Jones worked as Senior Director of Materials and Transportation Engineering at Packer Engineering, Inc. for approximately 14 years before joining ITC Experts in 2011. ( Id. ) At Packer Engineering, Inc., Mr. Jones provided engineering consulting services related to materials and mechanical issues in products and personal injury cases. ( Id. ) At ITC Experts, Mr. Jones specializes in analyzing mechanical and material causes of failures in engineered systems, with a focus in vehicle transportation equipment, piping systems, pressure vessels, consumer products, process equipment, and joined components. ( Id. )

Morningware's other expert, Mr. Chad Erickson, was a co-founder and co-owner of American Harvest, a housewares manufacturing company that developed and patented the Jet Stream Oven, which is discussed in more detail below. (R. 299-4, Erickson Report at 1.) Mr. Erickson was the primary inventor on most of the 20 patents issued to American Harvest. ( Id. ) He has a bachelor's degree in psychology. ( Id. )

Hearthware's expert, Mr. Randy Clarksean, P.E., Ph.D., is a professional engineer. (R. 299-5, Clarksean Report at 20.) He earned his bachelor of science degree in mechanical engineering, with highest honors, from the South Dakota School of Mines and Technology. ( Id. ) He also obtained his doctorate of philosophy in mechanical engineering from the University of Utah. ( Id. ) Mr. Clarksean is President of Kevin Kennedy Associates Inc., a position he has held since 2008. Prior to that, he was Vice President of Engineering and Lead Consultant for Kevin Kennedy Associates Inc. and an Adjunct Professor at the University of Nevada— Las Vegas, where he performed engineering research and conducted seminars on heat transfer, fluid mechanics, thermal systems, and thermodynamics. ( Id. ) He has experience in the areas of heat transfer, fluid flow, mass transfer, and basic structural analysis. ( Id. )

2. Relevant Opinions

Morningware's Oven contains air outlets that surround the exterior rim of the power head. (R. 300, Morningware's Noninfringement SOF ¶ 1.) Mr. Jones performed a study of the air flow of Morningware's Oven. (Hearthware's Noninfringement Add'l SOF ¶ 21.) Because molecules of air are invisible, he conducted the test using " water-based theatrical fog" so that he could observe the air flow. ( Id.; R. 299-1, Jones Report at 2.) Based on his study, Mr. Jones opines that the air exiting from Morningware's Oven flowed " radially outward" from the exhaust vents, and " tended to expand vertically as it flowed radially away from the exhaust vents." (Morningware's Noninfringement SOF ¶ 5.) He further explains that during his testing of Morningware's Oven, he did not observe any evidence " that the airflow was being directed downward towards the cooking chamber." ( Id. ) Instead, the air " dispersed" outward from the air outlets. (Hearthware's Noninfringement Add'l SOF ¶ 23.) In addition, Morningware's other expert, Mr. Erickson, opines that

Unlike the axial type fan used in the Moon 217 PATENT, the Morningware oven uses a metal paddle wheel blower to draw cooling air down into inlet vents, and then expel the used cooling air directly out of the motor chamber in a 360 degree horizontal fashion. The blower is positioned below the motor and in line with the exhaust vents surrounding said

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blower. There are no scrolls, shrouds or vanes to redirect the air flow, or cause the exiting air to change direction from the horizontal path initiated by this horizontally mounted blower. The design of this air flow ‘ system’ does not indicate any intent on the part of the designers to direct this air flow in a downward fashion, or to provide cooling to the top surface of the cooking enclosure.

(Morningware's Noninfringement SOF ¶ 7.) According to him, the " air flow exiting the Morningware oven vents is not directed in a downward fashion, ‘ to direct the cooling air flow from the fan chamber toward the upper surface of the cooking enclosure to cool the upper surface’ as claimed in the ... '217 Patent." ( Id. )

Hearthware's expert, Dr. Clarksean, opines that the air outlets in Morningware's Oven

act as a jet when the air flow leaves the power head air outlets. Each of the jet interacts [sic] with the adjacent jet (adjacent openings) .... Because the flow acts like a jet[,] [t]he flow will spread out as the center velocity of the jet decreases while the jet becomes wider; [and] [f]low recirculation exists because as the flow comes out the bottom of the holes, it shears against the fluid below it causing the fluid below to start to move. As that fluid starts to move, it will rotate around as shown by the blue circular arrow shown in Figure 3 [of Dr. Clarksean's Report].

( Id. ¶ 9; Hearthware's Noninfringement Add'l SOF ¶¶ 24, 33.) He further opines that from his review of photographs of the air flow from Morningware's Oven, the air (represented by smoke in the photographs) " slowly comes out of the opening, spreads wider, and is even shown going down past the upper surface of the cooking enclosure." (Morningware's Noninfringement SOF ¶ 5.) According to Dr. Clarksean,

[i]n order for the smoke to move lower than the outer edge of the cooking enclosure, it must be moving outward and downward. By moving in an outward and downward direction ... the flow from the Morningware oven meets the requirement that ‘ ... a plurality of air outlets arranged to guide the cooling air flow from the fan chamber in the direction of the upper surface of the cooking enclosure ...’

( Id. ¶ 10.) Dr. Clarksean further opines that " [t]he flow does move in the direction of the upper surface of thecooking enclosure." ( Id. ) He did not perform any independent testing regarding the direction of air flow in Morningware's Oven.[3]( Id. ¶ 8.)

Dr. Clarksean, however, designed an experiment to compare the temperature of the upper surface of Morningware Oven's cooking enclosure when the air is flowing from the outlets and the temperature when the air is not flowing. (Hearthware's Noninfringement Add'l SOF ¶ 35.) Based on his experiment, Dr. Clarksean concluded that the " temperature of the air leaving the air outlets is less than the temperature of the [upper surface of the cooking enclosure] after the initial heat-up" and that " [c]ooler air flowing over a hot surface will result in heat transfer from that surface." ( Id. ¶ 36.) Accordingly, he opines that " the air flow from the outlets [in Morningware's Oven] cools the [upper surface of the cooking enclosure]." ( Id. )

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In response to Dr. Clarksean, Mr. Jones opines that " the fact that the airflow spreads out or disperses in all directions as it decelerates after exiting the air outlets is not a result of it being directed or guided. Rather, it is the physical result of the airflow decelerating due to the molecules in the air colliding with the air molecules outside the power head as it moves away from the exhaust outlet." (Morningware's Noninfringement SOF ¶ 11.) He further states that the " flow recirculation" that Dr. Clarksean describes is " the normal result of fluid flow in a medium as molecules collide and is not related to the airflow being mechanically directed towards the cooking enclosure." ( Id. ) Additionally, he opines that

airflow does not need to be directed at a surface in order to change the temperature of the surface .... Airflow exits the power head air outlet and disperses, shears, and mixes with the warmer air molecules above the top surface of the cooking enclosure, absorbing heat energy as it moves away from the power head. This mechanism may result in a change in the surface temperature of the ...

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