United States District Court, W.D. Washington, Seattle
CALIFORNIA EXPANDED METAL PRODUCTS COMPANY, et al., Plaintiffs,
JAMES A. KLEIN, et al., Defendants.
ORDER ON CROSS-MOTIONS FOR SUMMARY JUDGMENT
Honorable James L. Robart, U.S. District Court Judge
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)).
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,  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.
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”). (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)
that year, CEMCO sued Mr. Klein and ClarkDietrich in the
United States District Court for the Central District of
California. 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.)
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.
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.)
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.)
at Fig. 2.)
of the '526 patent is illustrative of the claims of the
Patents-in-Suit alleged to be infringed. The claim recites:
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.)
The Accused Products
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.)
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]
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:
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.)
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.)
a Markman hearing, the court construed the disputed
terms as follows:
1. “intumescent strip”: “a strip that
comprises a substance that expands when exposed to
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.)