The opinion of the court was delivered by: Amy J. St. Eve, District Court Judge:
MEMORANDUM OPINION AND ORDER
Plaintiff Sloan Valve Company ("Sloan") brings this patent infringement action against Defendants Zurn Industries, Inc. and Zurn Industries, LLC (collectively, "Zurn"). Zurn now moves for partial summary judgment on Count II. (R. 363.) The Court previously denied the motion in part. (R. 399.) For the reasons discussed below, the motion is granted in remaining part.
This case concerns U.S. Patent No. 7,607,635, entitled "Flush Valve Handle Assembly Providing Dual Mode Operation" (the "'635 Patent" or the "Wilson Patent"), and the corresponding U.S. Patent Application Publication No. 2006/0151729 (the "Published Wilson Patent Application"). On January 13, 2010, Sloan commenced this action against Zurn seeking
(a) damages and injunctive relief for Zurn's alleged infringement of the '635 Patent; and (b) provisional damages for Zurn's alleged making, sale and use of inventions that the Published Wilson Patent Application covers. (See R. 1, Compl. ¶¶ 34-38.)
The '635 Patent "relates to flush valves for use with plumbing fixtures such as toilets, and more specifically to improvements in the bushing of the actuating handle assembly that will provide for user-selectable, dual mode operation of the flush valve." (R. 314-1, '635 Patent, col. 1, ll. 6-10.) The improvement is a mechanism that allows a user to select one of two flush volumes based on the direction of actuation of the handle: a full flush volume to evacuate solid waste from the bowl or a reduced flush volume to remove liquid waste. (Id., col. 1, ll. 11-19, col. 2, ll. 27-33.)
The '635 patent was filed on August 25, 2005 and issued on October 27, 2009. (Undisputed Facts*fn1 ¶ 2.) On July 13, 2006, the patent published with 31 claims as the Published Wilson Patent Application. (Id. ¶ 3.) Zurn filed a request for reexamination of the '635 patent on September 17, 2010. (Id. ¶ 4.) In 2010, the U.S. Patent and Trademark Office ("PTO") granted Zurn's request for an ex parte reexamination of the '635 Patent. (R. 149, 159.) On September 27, 2011, the PTO issued an Ex Parte Reexamination Certificate for the '635 Patent, in which certain of Sloan's claims were amended and others were added. (Undisputed Facts ¶¶ 5-6.) Claims 10-11 and 15 of the Published Wilson Patent Application correspond to Claims 7-8 and 12, respectively, of the '635 patent. (Id. ¶ 7.)
Claims 7 and 8 of the Wilson Patent are method claims that are identical to the corresponding Published Wilson Patent Application claims 10 and 11. (Add'l Undisputed Facts ¶ 30.) Claim 7 of the '635 patent reads:
In a flush valve of the type having a body with an inlet and an outlet, a valve seat between said inlet and outlet, a valve member movable to a closing position on said valve seat to control water flow between said inlet and outlet, a pressure chamber defined in said body above said valve member, a relief valve mounted on the valve member for movement between seated and unseated positions which close and open the pressure chamber, respectively, a handle assembly mounted on the body and including an actuatable handle, a bushing having a sleeve with a passage defined therethrough and a plunger mounted for sliding and tilting in said busing passage, the plunger having an outer end in engagement with the handle and an inner end engageable with the relief valve, the plunger being movable to unseat the relief valve, a method of operating a flush valve in a dual mode comprising the step of adjusting the flush volume by tilting the inner end of the plunger to alter the location at which it contacts the relief valve. (Undisputed Facts ¶ 9.)
Claim 8 of the '635 patent reads: "The method of claim 7 wherein the tilting step is characterized by tilting the inner end of the plunger downwardly to reduce the flush volume." (Id. ¶ 10.)
Claim 12 of the '635 Patent is directed to a system for operating a water flush valve in a plurality of flush modes. (R. 382-1, Ex Parte Reexamination Cert. for the '635 Patent, at 4, col. 1:55 -- col. 2:14; see also R. 391, Claim Construction Order, at 4-5.) Claim 15 of the Published Wilson Patent Application, which ...