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California Expanded Metal Products Co. v. Klein

United States District Court, W.D. Washington, Seattle

August 14, 2019

JAMES A. KLEIN, et al., Defendants.


          Honorable James L. Robart, U.S. District Court Judge


         Before the court are: (1) Plaintiffs California Expanded Metal Products Company (“CEMCO”) and Clarkwestern Dietrich Building Systems LLC's (d/b/a ClarkDietrich Building Systems) (“ClarkDietrich”) (collectively, “Plaintiffs”) motion for summary judgment (Pls. MSJ (Dkt. # 102)), and (2) Defendants James A. Klein, Safti-Seal, Inc. (“Safti-Seal”), and BlazeFrame Industries Ltd.'s (“BlazeFrame”) (collectively, “Defendants”) cross-motion for summary judgment (Defs. MSJ/Resp. (Dkt. # 104)).

         Defendants' cross-motion also serves as their response to Plaintiffs' summary judgment motion (see Defs. MSJ/Resp.; see also 6/7/18 Order (Dkt. # 106)), and Plaintiffs' response to Defendants' cross-motion serves as their reply to Defendants' opposition to their summary judgment motion (see Pls. Resp./Reply (Dkt. # 107)). Defendants filed a reply to Plaintiffs' opposition, and Plaintiffs filed a surreply. (See Defs. Reply (Dkt. # 110); Surreply (Dkt. # 112).) The court has reviewed the motions, the parties' submissions concerning the motions, the relevant portions of the record, and the applicable law. Being fully advised, [1] the court GRANTS in part and DENIES in part Plaintiffs' motion for summary judgment and GRANTS in part and DENIES in part Defendants' motion for summary judgment.


         A. Factual Background

         This patent infringement dispute come on the heels of two prior suits among the parties. Mr. Klein, a former CEMCO employee, is the named inventor of four related Patents: U.S. Patent No. 7, 681, 365 (“the '365 patent”), U.S. Patent No. 7, 814, 718 (“the '718 patent”), U.S. Patent No. 8, 136, 314 (“the '314 patent”), and U.S. Patent No. 8, 151, 526 (“the '526 patent”) (collectively, “the Patents”).[2] (See 5/10/19 Trojan Decl. (Dkt. # 103) ¶ 2, Ex. 1 (“'365 Patent”); id. ¶ 3, Ex. Ex. 2 (“'718 Patent”); id. ¶ 4, Ex. 3 (“'314 Patent”); id. ¶ 5, Ex. 4 (“'526 Patent”).) As explained below, see infra § II.B., the Patents cover head-of-wall assemblies that are used in commercial construction to prevent the spread of smoke and fire. (See, e.g., '365 Patent at Abstract.) In May 2012, Mr. Klein assigned the Patents to BlazeFrame, a Washington corporation that he co-founded. (Compl. ¶¶ 4, 12; Answer (Dkt. # 68) ¶¶ 2, 5; see also 8/6/18 Klein Decl. (Dkt. # 82-1) ¶ 3.)

         Later that year, CEMCO sued Mr. Klein and ClarkDietrich in the United States District Court for the Central District of California.[3] See Cal. Expanded Metal Prods. Co. v. Clarkwestern Dietrich Bldg. Sys., LLC, No. CV12-10791-DDP-MRW (C.D. Cal.) (“the first California case”). CEMCO alleged that Mr. Klein breached a contractual obligation to offer CEMCO an exclusive license to any construction products he invented after leaving CEMCO. Id., Dkt. # 1. In October 2015, the parties reached a settlement agreement under which Mr. Klein and BlazeFrame sold the Patents to CEMCO in exchange for, inter alia, a license to sell head-of-wall assemblies covered by the Patents in a geographically restricted area (“the first settlement agreement”). (See 5/10/19 Trojan Decl. ¶ 7, Ex. 6.)

         In August 2016, CEMCO-this time joined by ClarkDietrich-filed a second suit against Mr. Klein and BlazeFrame. See Cal. Expanded Metal Prods. Co. v. Klein, No. CV16-5968-DDP-MRW (C.D. Cal.) (“the second California case”). Plaintiffs alleged that BlazeFrame breached the first settlement agreement by selling licensed products outside the agreed-upon area. (See generally 5/10/19 Trojan Decl. ¶ 8, Ex. 7.) Plaintiffs further alleged that Mr. Klein and BlazeFrame had infringed the Patents that CEMCO acquired in the first settlement agreement. (See id.) In June 2017, the parties settled the second California case through a confidential agreement (“the second settlement agreement”), and the suit was dismissed. See No. CV16-5968-DDP-MRW, Dkt. # 119. CEMCO remains the owner of the Patents, and ClarkDietrich is the Patents' exclusive licensee. (See Compl. ¶ 84.)

         On January 10, 2018, Plaintiffs filed this suit against Mr. Klein, BlazeFrame, and Safti-Seal, a Washington corporation that Mr. Klein founded in September 2017. (See Compl.; 8/6/18 Klein Decl. ¶ 4.) Plaintiffs allege that Mr. Klein and Safti-Seal sell multiple products that infringe at least one claim of each Patent. (Compl. ¶¶ 82-85.) Additionally, Plaintiffs bring a breach of contract claim against Mr. Klein and BlazeFrame for alleged violations of the second settlement agreement. (Id. ¶¶ 73-81, 86-94.)

         B. The Patents

         The Patents cover head-of-wall assemblies, or headers, that impede the spread of smoke and fire. (See, e.g., '365 Patent at Abstract.) Illustratively, Figure 2 of the '365 Patent shows that the claimed header (16) is a “U”-shaped metal track comprising a horizontal web (26) that is connected to a pair of downward-facing sidewalls (28). (Id. at Fig. 2; id. at 6:43-56.) Like all the Patents, the '365 Patent claims “an elongated intumescent strip” (34) that is “affixed lengthwise on at least one of the outer sidewall surfaces of the pair of sidewalls . . . .” (Id. at Fig. 2; id. at 6:57-60; see also '718 Patent at 10:23-25; '314 Patent at 10:53-54; '526 Patent at 7:41-44.) When exposed to heat, the intumescent material expands to fill the gap between the wall and the ceiling, preventing smoke and fire from penetrating adjacent areas of the building. (See, e.g., '365 Patent at Abstract.)

         (Image Omitted)

         (Id. at Fig. 2.)

         Claim 1 of the '526 patent is illustrative of the claims of the Patents-in-Suit alleged to be infringed. The claim recites:

         1. A fire-retardant head-of-wall assembly, comprising:

an elongated sheet-metal footer track;
an elongated sheet-metal header track confronting and vertically spaced apart from the footer track, the header track including a web integrally connected to a pair of spaced apart and downwardly extending sidewalls, each sidewall having an upper sidewall portion adjacent to the web and a lower sidewall portion;
an elongated intumescent strip affixed lengthwise on at least one of the outer sidewall surfaces of the pair of sidewalls, the intumescent strip being positioned on the upper sidewall portion; . . . .

('526 Patent at 7:33-44; see also '365 Patent at 6:43-62; '718 Patent at 10:10-29; '314 Patent at 10:21-33.)

         C. The Accused Products

         Plaintiffs identify eight accused products, which fall into two groups: (1) a tape product that includes intumescent material, called Safti-Strip ("the Safti-Strip tape"), and (2) sheet-metal tracks suitable for installation in commercial construction projects ("the accused metal track products") (collectively, "the accused products"). (See Pis. MSJ at 2 n.2; see also 5/10/19 Trojan Decl. ¶ 6, Ex. 5 ("Infringement Conts") at 3; 6/3/19 Klein Decl. (Dkt. # 104-3) ¶¶ 16-17.)

         The Safti-Strip tape "is a multi-layer gasket product" that is sold by the foot in rolls. (6/3/19 Klein Decl. ¶ 17.) It consists of a strip of intumescent material, purchased from a non-party retailer, which, in turn, is bonded with adhesive to a "thermal barrier made of closed-cell foam." (Id.) On the bottom of the thermal barrier is "a layer of peel-and-stick adhesive," which "can be used to apply the Safti-Strip to any surface a customer desires." (Id. ¶¶ 17, 20.) Mr. Klein attests that "[t]he following image depicts the [Safti-Strip tape] product accurately":

         (Image Omitted)

         (Id. ¶ 17.)

         The accused metal track products "include . . . various configurations of metal tracks with Safti-Strip attached to them." (Id. ¶ 19.) For example, the Safti-Seal DSL Slotted Track features a metal header with the Safti-Strip tape installed on one or both sidewall surfaces:

         (Image Omitted)

         (Id. ¶ 19.)

         Mr. Klein represents that he designed the accused metal track products to comply with updated safety standards set by a testing agency called Underwriter Laboratories ("UL"). (Id. ¶¶ 7-9.) He states that, after "test[ing] dozens of variations and configurations of header tracks in combination with different materials, at home, in [his] garage," he decided to "separate [the intumescent material] from the header track with a foamed thermoplastic thermal barrier." (Id. ¶ 9.) According to Mr. Klein, the thermal barrier increases the time needed for heat to penetrate a wall and ensures that the accused metal track products pass the UL safety standards currently in effect. (Id. ¶ 10.) Defendants contend that Plaintiffs' products, which are covered by the Patents, satisfy current UL standards only when modified to include "an add-on thermal barrier product... to the head-of-wall gap." (Defs. MSJ/Resp. at 16 (citing 6/3/19 Klein Decl. ¶ 14); see also Pessiki Decl. (Dkt. # 104-1) ¶ 14.)

         D. Claim Construction

         During claim construction, the parties disputed the meaning of four claim terms: (1) “intumescent strip”; (2) “affixed lengthwise on at least one of the outer sidewall surfaces”; (3) “inorganic filler”; and (4) “dispersed in a emulsion of polyvinyl acetate or silicone.” (See generally Jt. Cl. Stmt. (Dkt. # 92).) The first two claim terms appear in all four Patents. (See '365 Patent at 6:57-60; '718 Patent at 10:23-25; '314 Patent at 10:53-54; '526 Patent at 7:41-44.) The latter two claim terms appear only in the '314 Patent, which, uniquely among the Patents, claims an intumescent strip with a specific composition. (See '314 Patent at 10:29-33.)

         Following a Markman[4] hearing, the court construed the disputed terms as follows:

1. “intumescent strip”: “a strip that comprises a substance that expands when exposed to heat”
2. “affixed lengthwise on at least one of the outer sidewall surfaces”: “attached lengthwise, directly or by means of an intervening adhesive, to at least one of the outer sidewall surfaces”
3. “inorganic filler”: “inorganic filler, including but not limited to perlite, vermiculite, expandable glasses, micas, clay, talc, borosilicates, cokes, charcoals, hard coals, brown coals, calcium carbonate, cereal grains, cork, bark granules, expandable clay, foamed concrete, metal sponge, pumice, tuff, and/or lava”

(4/17/19 Order at 34.) Additionally, the court declined to construe the claim term “dispersed in a emulsion of polyvinyl acetate or silicone, ” finding that this claim term carries its plain and ordinary meaning in the context of the asserted claims. (See Id. at 32-34.) The parties' cross-motions followed the court's claim construction order. (See Pls. MSJ; Defs. MSJ/Resp.)

         III. ...

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