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Oil-Dri Corp. of America v. Nestle Purina Petcare Co.

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

August 2, 2017

OIL-DRI CORP. OF AMERICA, Plaintiff/Counter-Defendant,
v.
NESTLÉ PURINA PETCARE CO., Defendant/Counter-Plaintiff.

          MEMORANDUM OPINION AND ORDER

          AMY J. ST. EVE UNITED STATES DISTRICT COURT JUDGE

         Plaintiff Oil-Dri Corp. of America (“Oil-Dri”) has filed a motion to exclude, by Inter Partes Review (“IPR”) estoppel, certain of Defendant Nestlé Purina Petcare Co.'s (“Purina”) invalidity contentions. (R. 114.) For the following reasons, the Court grants in part and denies in part Oil-Dri's motion.

         BACKGROUND

         I. The Current Litigation

         This case concerns U.S. Patent No. 5, 975, 019 ('019 Patent), entitled “Clumping Animal Litter, ” filed on August 19, 1997. (R. 77-1, '019 Patent, 1.) The Abstract of the patent describes “[a] clumping animal litter utilizing the interparticle interaction of a swelling clay, such as sodium bentonite, in combination with a non-swelling clay material.” (Id.) Additionally, the patent's abstract discloses that “[p]referably, sixty percent (60%) by weight, or less, composition of sodium bentonite is used after the judicious selection of particle size distribution such that the mean particle size of the non-swelling clay material is greater than the mean particle size of the sodium bentonite.”

         The '019 Patent has three independent claims. Claim 1 is:

A clumping animal litter comprising:
a. a particulate non-swelling clay having a predetermined mean particle size no greater than about 4 millimeters; and
b. a particulate swelling clay having a predetermined mean particle size no greater than about 2 millimeters, wherein the mean particle size of the non-swelling clay material is greater than the mean particle size of the swelling clay.

(Id. at col. 9:37-46.) Claim 21 is:

A clumping animal litter comprising:
a. a particulate non-swelling clay material in the amount of at most about 60 percent by weight of the animal litter, the material having a predetermined mean particle size;
b. a particulate swelling clay in the amount of at least about 40 percent by weight of the animal litter, the material having a predetermined mean particle size, and wherein the mean particle size of the non-swelling clay material is greater than the mean particle size of the swelling clay;
c. an organic clumping agent in an amount within the range of about 0.25 percent by weight to about 6 percent by weight of the animal litter; and
d. wherein the ratio of the mean particle size of the non-swelling clay material to the mean particle size of the swelling clay is within the range of more than about 1:1 to about 4:1.

(Id. at col. 10:32-49.) Finally, Claim 30 is:

A method for making a clumping animal litter comprising the steps of:
a. combining a particulate non-swelling clay material with a suitable particulate swelling clay to form a composition wherein the mean particle size of the particulate non-swelling clay is greater than the mean particle size of the particulate swelling clay;
b. mixing the composition to effect a substantially uniform distribution of the two materials;
c. packaging a quantity of the mixed composition.

         Oil-Dri filed this lawsuit on February 3, 2015, claiming Purina infringed the '019 Patent with its clumping cat litters. (R. 1.) In February 2017, Oil-Dri amended its complaint. (R. 77.) In the Amended Complaint, Oil-Dri claims Purina infringed claims 1-4, 6-7, 9-11, 13, 16, 21- 26, 30-32, and 35 of the '019 Patent. (Id. at ¶ 8.) After Purina filed a partial motion to dismiss, Oil-Dri withdrew its claims related to Purina's “lightweight” products, and the Court dismissed Purina's allegations of infringement of any claim including the limitation of an “organic clumping agent.” (R. 105 at 5 & n.4, 11.) While the Court gave Oil-Dri the opportunity to file a Second Amended Complaint, it opted not to do so. (See R. 104.)

         II. The IPR Proceedings

         A. Background on IPR

         The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), created the IPR process in which the parties engaged. See Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2136-38 (2016); Drink Tanks Corp. v. GrowlerWerks, Inc., No. 3:16-cv-410-SI, 2016 WL 3844209, at *1 (D. Or. July 15, 2016); Black & Decker Inc. v. Positec USA, Inc., No. 13 C 3075, 2013 WL 5718460, at *1 (N.D. Ill. Oct. 1, 2013). A party may petition for IPR “to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under [35 U.S.C. §§ 102, 103] and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). After receiving a petition, the Patent Trial and Appeal Board (“PTAB”) must decide whether to institute IPR by determining whether “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” § 314(a).

         If the PTAB institutes IPR, it must issue a final determination within a year-or 18 months “for good cause shown”-of the date when the PTAB notices the institution of IPR. 35 U.S.C. § 316(a)(11). When the PTAB issues a final decision, the IPR petitioner is estopped from arguing in a civil action that a “claim is invalid on any ground that the petitioner ...


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