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Ecolab USA Inc. v. Diversey, Inc.

United States District Court, Eighth Circuit

January 23, 2014

Ecolab USA Inc. and Kleancheck Systems, LLC, Plaintiffs,
v.
Diversey, Inc., Defendant.

Anthony R. Zeuli, Rachel K. Zimmerman, and Eric R. Chad, Merchant & Gould P.C., for Plaintiffs.

Andrew D. Sorensen, Ecolab Inc., for Plaintiffs.

Allen A. Arntsen, Naikang Tsao, and Stephan J. Nickels, Foley & Lardner LLP, for Defendant.

R. Jan Pirozzolo-Mellowes, Foley & Lardner LLP, for Defendant.

Andrew M. Gross, Foley & Lardner LLP, for Defendant.

MEMORANDUM OPINION AND ORDER

SUSAN RICHARD NELSON, District Judge.

I. INTRODUCTION

This matter is before the Court on Defendant's Motion for Claim Construction [Doc. No. 46] and Plaintiffs' Motion for Claim Construction [Doc. No. 49].

II. BACKGROUND

This litigation involves allegations by Plaintiffs Ecolab USA Inc. and Kleancheck Systems, LLC, that Defendant Diversey, Inc., is infringing, contributing to the infringement of, and/or inducing the infringement of, U.S. Patent No. 7, 718, 395 B2 (the "'395 Patent") and U.S. Patent No. 7, 780, 453 B2 (the "'453 Patent"). (Compl. ΒΆΒΆ 10, 26 [Doc. No. 1].) The '395 Patent, entitled "Monitoring Cleaning of Surfaces, " issued on May 18, 2010. ( Id., Ex. A [Doc. No. 1-1].) The '453 Patent, also entitled "Monitoring Cleaning of Surfaces, " issued on August 24, 2010. ( Id., Ex. B [Doc. No. 1-2].) These patents stem from the same parent application. (See id., Exs. A & B.) The Abstract of both Patents reads:

A method for monitoring cleaning of a surface includes applying an amount of transparent indicator material to an area of a surface and measuring the amount of transparent indicator material remaining on the surface. The transparent indicator material may be fixed on the surface by drying and, when a fluorescent material, may be measured through exposure to ultraviolet radiation.

(Id.) The terms that are presently in dispute occur in claims 1, 23, and 26, among others, of the '395 Patent[1]:

1. A method for determining if a surface has been cleaned, the method comprising:
applying an amount of transparent indicator material to one or more discrete target sites on one or more environmental surfaces, the amount of transparent indicator material being applied to the one or more discrete target sites on the one or more environmental surfaces with a non-contact applicator; and determining if any of the transparent indicator material remains on the one or more discrete target sites on the one or more environmental surfaces after one or more opportunities to clean the environmental surface by environmental services staff, thereby providing a cleanliness result.
....
23. A method according to claim 1, wherein the transparent indicator material resists dry abrasion.
....
26. A method according to claim 1, wherein the transparent indicator material is colorless.

( Id., Ex. A at col. 9, ll. 21-34 & col. 10, ll. 35-36, 44-45 [Doc. No. 1-1].) The parties also dispute terms that occur in claims 1 and 23, among others, of the '453 Patent[2]:

1. A method for evaluating cleaning improvement interventions, the method comprising:
applying a contiguous amount of transparent indicator material to one or more target sites of one or more environmental surfaces, the amount of transparent indicator material being applied to the one or more target sites of the one or more environmental surfaces with a noncontact applicator; and
determining if any of the transparent indicator material remains on the one or more target sites of the one or more environmental surfaces after one or more opportunities to clean the one or more environmental surfaces by environmental services staff, thereby providing a cleanliness result.
....
23. The method of claim 8, wherein determining if any transparent indicator material remains on the one or more target sites includes exposing the one or more target sites to UV radiation.

( Id., Ex. B at col. 9, ll. 33-45 & col. 10, ll. 47-50 [Doc. No. 1-2].)

The prosecution history in this case primarily consists of two United States Patent and Trademark Office ("USPTO") office actions regarding the '395 Patent application, and the applicant's responses thereto. On February 27, 2009, the USPTO examiner issued a Final Office Action rejecting various claims, including claim 1, as obvious in light of the following prior art: U.S. Patent No. 2, 600, 221 ("Domingo"), U.S. Patent No. 3, 309, 274 ("Brilliant"), and U.S. Patent No. 3, 716, 488 ("Kolsky"). (Tsao Decl., Ex. 3 at 5 [Doc. No. 51-3].) In his April 27, 2009, Response, the applicant amended claim 1, in relevant part, as follows:

A method for monitoring cleaning of a surface, the method comprising:

applying an a contiguous amount of transparent indicator material to one or more target sites on at least a portion of an one or more environmental surface surfaces, the amount of transparent indicator material being applied to the one or more target site on the one or more environmental surfaces with a non-contact applicator....

( Id., Ex. 4 at 3 [Doc. No. 51-4].) In arguing that the amended claim 1 was allowable over the prior art, the applicant stated:

Amended claim 1 defines, in relevant part a method for monitoring cleaning of a surface including applying a contiguous amount of transparent indicator material to one or more target sites on one or more environmental surfaces, and determining if any of the transparent indicator material remains on the target sites after one or more opportunities to clean the environmental surface by environmental services staff. By determining whether any of the transparent indicator material remains, the method provides a cleanliness result. The transparent indicator material is applied using a non-contact applicator.
Domingo does not teach such a method. Rather, Domingo teaches a method of detecting organic and inorganic material adhering to the surface of an article (i.e., a utensil). In particular, Domingo sprays or immerses a utensil... with/within a solution that chemically combines or absorbs into food particles....
Nowhere does Domingo teach or suggest applying a contiguous amount of transparent indicator material to target sites on an environmental surface using a non-contact applicator, as required by amended claim 1. Rather, as mentioned above, Domingo uses one of two methods to apply the solution - spraying or submerging.... As one may expect, because spraying creates individual droplets of solution, spraying the utensil will not provide a contiguous amount of material. At best, the solution will be applied as a series of individual drops of solution. Additionally spraying the utensil in this manner will make it nearly impossible to apply the solution to specific target sites on the utensil. Instead, the coverage of the spray will likely encompass all or nearly all of the utensil. In fact, in order to accurately detect uncleaned utensils, Domingo must cover the entire surface area of the utensil (not merely target sites) so that food particles are not missed.
Furthermore, Domingo's second application method (e.g., submerging or soaking the entire object to be inspected in the solution) is also unable to apply the solution to target sites - the entire utensil will be covered with the solution. Additionally, immersing is not suitable for environmental surfaces.... Therefore, Domingo's second application method does not apply the solution to target sites and is clearly not suitable for the method claimed within amended claim 1.
....
Moreover, Brilliant applies the dye using either a mouthwash, which soaks the entire oral cavity, or a toothbrush or swab. As discussed above, methods that require the entire area to be soaked are not applicable to the method claimed within amended claim 1 (e.g., it is not practical to soak [an] entire hospital room with dye). Additionally, the toothbrush or swab used by Brilliant would act as contact applicators (e.g., they must contact the teeth/gums in order to apply the dye), which is in direct contrast to the present claims which require the use of a non-contact applicator.
....
Kolsky also fails to teach or suggest the deficiencies of Domingo and Brilliant.... The shampoo composition may be applied to the carpet via an aerosol container or a sponge if the composition is in liquid form.... Like Domingo and Brilliant, nowhere does Kolsky teach or suggest applying a contiguous amount of transparent indicator material to target sites on an environmental surface using a non-contact applicator. Rather, Kolsky either uses an aerosol spray or a contact applicator such as a sponge or a brush. As described above sprays do not apply a contiguous amount (i.e., the aerosol generates a plurality of droplets) and the sponge/brush are not non-contact (e.g., the sponge or brush must make contact with the carpet).
Additionally, even Kolsky's aerosol version requires some contact with the environmental surface. In particular, because Kolsky's composition is a shampoo composition, the user must scrub the solution into the carpet in order to clean the carpet.... As discussed above, this is in direct contrast to the present claims which require a non-contact applicator.

(Id. at 11-13 (emphases in original).) After describing amended claim 1 again, the applicant went on to discuss U.S. Patent No. 6, 476, 385 ("Albert"), a fourth reference to prior art:

Nowhere does Albert teach or suggest applying a contiguous amount of composition using a non-contact applicator. As discussed above and in a manner similar to the Domingo, Brilliant and Kolsky references, Albert either applies the solution using a contact applicator (e.g., a pen, wax crayon, roller, etc.), or using a spray applicator, which does not apply a contiguous amount of composition (it applies the composition as a series of individual drops of solution)....
(Id. at 15.)

On July 24, 2009, the USPTO examiner again rejected various claims as obvious in light of Domingo, Brilliant, Kolsky, and Albert. ( Id., Ex. 5 at 7-8 [Doc. No. 51-5].) In his October 26, 2009, Response, the applicant again amended claim 1, in relevant part, as follows:

A method for monitoring cleaning of a determining if a surface has been cleaned, the method comprising:
applying a contiguous an amount of transparent indicator material to one or more discrete target sites on one or more environmental surfaces, the amount of transparent indicator material being applied to the one or more discrete target sites on the one or more environmental surfaces with a non-contact applicator....

( Id., Ex. 6 at 3 [Doc. No. 51-6].) In arguing that the amended claim 1 was allowable over the prior art, the applicant stated:

Amended claim 1 defines, in relevant part, a method for determining if a surface is being cleaned including applying an amount of transparent indicator material to one or more discrete target sites on one or more environmental surfaces, and determining if any of the transparent indicator material remains on the target sites after one or more opportunities to clean the environmental surface by environmental services staff. By determining whether any of the transparent indicator material remains, the method provides a cleanliness result. The transparent indicator material is applied using a non-contact applicator.
Domingo does not teach such a method. Rather, Domingo teaches a method of detecting organic and inorganic material adhering to the surface of an article (i.e., a utensil). In particular, Domingo sprays or immerses a utensil... with/within a solution that chemically combines or absorbs into food particles....
Nowhere does Domingo teach or suggest applying an amount of transparent indicator material to discrete target sites on an environmental surface using a non-contact applicator, as required by amended claim 1. Rather, as mentioned above, Domingo uses one of two methods to apply the solution - spraying or submerging.... As one may expect, because spraying creates individual droplets of solution, spraying the utensil will not allow the material to be applied to discrete target sites. Instead, the coverage of the spray will not be accurate enough to apply to discrete target sites because the droplets, once leaving the nozzle, cannot be adequately controlled. Additionally, the spray coverage will likely encompass all or nearly all of the utensil - not just a discrete target site. In fact, in order to

accurately detect uncleaned utensils, Domingo must cover the entire surface area of the utensil (not merely discrete target sites) ...


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