United States District Court, N.D. Illinois, Eastern Division
As Amended August 6, 2014.
[Copyrighted Material Omitted]
For Pactiv Corporation, Plaintiff, Counter Defendant: Carrie A. Longstaff, David Edward De lorenzi, PRO HAC VICE, Gibbons P.c., Newark, NJ; Frank Anthony Bruno, PRO HAC VICE, Wendy R Stein, Gibbons P.C., New York, NY; Mitchell S. Chaban, Levin Ginsburg, Chicago, IL.
For Multisorb Technologies, Inc., Defendant, Counter Claimant: David Howard Bluestone, Gary Melchior Ropski, Brinks, Hofer, Gilson & Lione, Chicago, IL; Jennifer L Friedman, Laura A Colca, Michael Mcgee, PRO HAC VICE, Mcgee & Gelman, Buffalo, NY.
AMENDED MEMORANDUM OPINION AND ORDER
Hon. Harry D. Leinenweber, United States District Judge.
I. INTRODUCTION AND BACKGROUND
This patent infringement action concerns modified-atmosphere packaging technology for use in preserving raw red meat and other food products. Plaintiff Pactiv, LLC (" Pactiv" ) and Defendant Multisorb Technologies, Inc. (" Multisorb" ) are competitors in the field of oxygen absorbers - packets of chemicals that react with moisture to absorb oxygen when placed inside food containers. By removing oxygen from the atmosphere inside the container, these packets ensure that food remains fresh for an extended period of time.
In January 2010, Pactiv sued Multisorb for infringement of seven of its patents related to this oxygen absorber technology. Multisorb countersued, alleging infringement of two of its own patents. In addition, Multisorb advanced counterclaims for tortious interference with business relations, false marking under 35 U.S.C. § 292, and unfair competition and false advertising in violation of the Lanham Act, 15 U.S.C. § 1051 et seq. Pactiv's patent claims are currently stayed pending re-examination proceedings before the United States Patent and Trademark Office (the " PTO" ).
Following claim construction on the Multisorb patents, the parties filed various Motions for Summary Judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure. Among the Motions pending are: (1) Pactiv's Motion seeking summary judgment of non-infringement; (2) Pactiv's Motion seeking summary judgment of invalidity; (3) Pactiv's Motion seeking summary judgment on Multisorb's tortious interference, false marking, and Lanham Act counterclaims; (4) Multisorb's Cross-Motion seeking summary judgment on Pactiv's invalidity counterclaims; (5) Multisorb's Cross-Motion seeking summary judgment on its false marking counterclaim; and (6) Multisorb's Motion seeking summary judgment on Pactiv's affirmative defenses to certain of Multisorb's counterclaims. The parties also have moved to strike various portions of the above Motions
and to exclude from consideration the opinions of each other's expert witnesses.
The two Multisorb patents at issue are U.S. Patent No. 5,332,590, entitled " Method of Absorbing Oxygen by Employing a Particulate Annealed Electrolytically Reduced Iron" (the " '590 Patent" ), and U.S. Patent No. 6,436,872, entitled " Oxygen Absorber" (the " '872 Patent" ). Both the '590 and '872 Patents descend from another Multisorb patent, U.S. Patent No. 5,262,375 (the " '375 Patent" ), which is not asserted in this litigation. The '375 Patent describes an " oxygen-absorbing composition" containing particulate annealed electrolytically reduced iron (" PAERI" ), a salt, and an optional water-attracting and supplying component. When the salt combines with moisture in the package, it forms an electrolyte that activates the iron and facilitates a chemical reaction that absorbs oxygen. Although oxygen absorbers containing electrolytically reduced iron had been in use for many years, Multisorb asserted that its " improved" composition could absorb oxygen at a more efficient rate due to its use of PAERI - electrolytically reduced iron that had been subsequently annealed - over other types of iron.
The '590 Patent describes a method for employing the PAERI-salt oxygen-absorbing composition claimed in the '375 Patent. The '872 Patent describes an oxygen-absorbing packet comprised of the PAERI-salt composition and a semi-permeable envelope that encloses the composition and retains water while permitting oxygen to pass through uninhibited.
A. Infringement of the '590 and '872 Patents
Multisorb accuses Pactiv of infringement of the '590 and '872 Patents through its sale of a line of oxygen absorber and packaging products that it markets under the trade name ActiveTech (the " ActiveTech Product" ). The ActiveTech Product is manufactured for Pactiv by a company named Desiccare and contains three main ingredients: malic acid, hydrogen reduced sponge iron sold under the trade name " NutraFine RS," and powdered cellulose. When the ActiveTech hydrogen reduced iron combines with moisture, an oxidation reaction begins and oxygen is absorbed. The malic acid serves as a catalyst in that reaction.
Originally, Multisorb contended that the ActiveTech Product infringed the '590 and '872 Patents both literally and under the doctrine of equivalents. During claim construction on the Multisorb patents, however, the Court construed the term " PAERI" to mean " electrolytically reduced particulate iron that has been subsequently annealed, with 'annealed' including hydrogen annealing," and the term " salt" to mean " the compound formed as the result of the reaction of acids and alkalis." Pactiv, LLC v. Multisorb Technologies, Inc., No. 10 C 461, 2013 WL 120234, at *8-9 (N.D. Ill. Jan. 9, 2013). There being no dispute that the hydrogen reduced iron of the ActiveTech Product is not electrolytically reduced and that malic acid is an organic acid and not a compound formed by the reaction of acids and alkalis, Multisorb consequently abandoned its literal infringement theory and now proceeds under the doctrine of equivalents only. ( See, Def.'s Mem. in Opp. to Pl.'s Mot. for Summ. J. of Non-Infr. (" Def.'s Non-Infr. Opp. Mem." ) at 1, 6, ECF No. 423).
With respect to the iron element, Multisorb alleges that the ActiveTech Product's particulate annealed hydrogen reduced iron is insubstantially different from the claimed PAERI because it " perform[s] substantially the same function (rapid absorption of oxygen), in substantially the same ...