# In re Method of Processing Ethanol Byproducts & Related Subsystems ('858) Patent Litig.

> District Court, S.D. Indiana · October 23, 2014 · 303 F. Supp. 3d 791

URL: https://www.frixlaw.com/law-library/cases/7247498

## Case

- **Full name:** IN RE: METHOD OF PROCESSING ETHANOL BYPRODUCTS AND RELATED SUBSYSTEMS ('858) PATENT LITIGATION Related Cases: 1:10-cv-00180-LJM-DML, 1:10-cv-08001-LJM-DML, 1:10-cv-08002-LJM-DML, 1:10-cv-08003-LJM-DML, 1:10-cv-08004-LJM-DML, 1:10-cv-08005-LJM-DML, 1:10-cv-08006-LJM-DML, 1:10-cv-08007-LJM-DML, 1:10-cv-08008-LJM-DML, 1:10-cv-08009-LJM-DML, 1:10-cv-08010-LJM-DML, 1:10-cv-08011-LJM-DML
- **Court:** District Court, S.D. Indiana
- **Decided:** October 23, 2014
- **Citations:** 303 F. Supp. 3d 791
- **Precedential status:** Published
- **Opinion:** Opinion of the court by McKinney
- **Judges:** McKinney
- **Cited by:** 1 later opinions in the Frix Law Library

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## Opinion text

Larry J. McKinney, District Judge.
This Order addresses all pending motions for summary judgment filed by the original parties in this cause because the briefing incorporates by reference either facts or arguments made in other pleadings and the issues are interrelated, particularly with respect to the proper construction of claim terms. More specifically, patent holder GS CleanTech Corporation ("CleanTech") has moved for summary judgment of infringement of what has been termed the " '858 patent family:" U.S. Patent Nos. 7,601,858 (the " '858 patent") ; 8,008,516 (the " '516 patent"), 8,008,517 (the " '516 patent") ; and 8,283,484 (the " '484 patent"), collectively; against the Plant Defendants in this Multi-District Litigation ("MDL"). Specifically, CleanTech contends that no genuine issue of material fact exists with respect to infringement of the following claims of each patent in the '858 patent family as to each of these Defendants:
*799 Defendant `858 Patent `516 Patent `517 Patent `484 Patent Claims Claims Claims Claims Cardinal Ethanol, 1, 3, 5-8, 10-16 1-6 1 1, 3, 5, 6, 16, 19, LLC ("Cardinal") 21, 23, 24, 26, 28-30 Lincolnway 8, 9 1-4, 7-11 1, 2 1-3, 5, 6, 8, 10, 12-14, Energy, LLC 16, 17, 27, 28, ("Lincolnway) 30 Blue Flint Ethanol, 1-3, 5-16 1-11 1, 2 1, 3, 5, 6, 8, 10, LLC ("Blue Flint") 12-14, 16, 17, 19-21, 23, 24, 26-30 United Wisconsin 1-3, 5, 7-16 1-3, 5-11 1, 2 1-3, 5, 8, 10, 12, Grain Producers 14, 16, 17, 19-23, ("UWGP") 26-30 Bushmills Ethanol, 8, 9 1-4, 7-11 1, 2 1, 2, 5, 6, 8, 12-14, Inc. ("Bushmills") 16, 17, 27, 28, 30 Al-Corn Clean 8, 9 1-3, 7-11 1 1, 2 1-3, 5, 8, 10, 12, Fuel ("Al-Corn") 14, 16, 17, 27, 28, 30 2 Chippewa Valley 1-3, 5-16 1-11 1, 2 1, 3, 5, 6, 8, 10, Ethanol Co. 12-14, 16, 17, 19-21, ("CVEC") 23, 24, 26-30 Heartland Corn 8, 9 1-4, 7-11 1, 2 1, 2, 5, 6, 8, 12-14, Products 16, 17, 27, 28, 30 ("Heartland") Iroquois Bio-Energy 8, 9 1-4, 7-11 1, 2 1, 2, 5, 6, 8, 12-14, Co. 16, 17, 27, 28, 30 ("Iroquois") Ace Ethanol LLC 1-3, 5-16 1-11 1, 2 1, 3, 5, 6, 8, 10, ("Ace") 12-14, 16, 17, 19-21, 23, 24, 26-30 Lincolnland Agri-Energy, 1, 3, 5-8, 10-16 1-6 1 1, 3, 5, 6, 16, 19, LLC 21, 23, 24, 26, 28-30 ("Lincolnland") Big River 8 1-4 1 1, 5, 16, 26, 28, 30 Resources Galva LLC ("BR-Galva") Big River 8 1-4 1 1, 5, 16, 26, 28, 30 Resources West Burlington, LLC ("BRWB") Adkins Energy, 8, 9 1-4, 7-11 1, 2 1, 2, 5, 6, 8, 12-14, LLC ("Adkins") 16, 17, 27, 28, 30
[ Editor's Note: The preceding image contains the references for footnotes 1 , 2 ].
The Court will refer to these Defendants, collectively, as the "Plant Defendants" throughout this Order. The Plant Defendants have moved for summary judgment of non-infringement as to the '858 patent family. MDN 932. As an alternative defense, the Plant Defendants assert that CleanTech lacks standing to bring any claims with respect to the patents-in-suit because it failed to establish title to them in its opening brief. MDN 932, at 49; 3 MDN 1096, at 29-32.
*800 With respect to non-infringement specifically, Defendants Ace, Adkins, Al-Corn, Blue Flint, Bushmills, Cardinal, CVEC, Heartland, Iroquois, Lincolnland, Lincolnway and UWGP claim they are entitled to summary judgment on all of CleanTech's claims of infringement as to the '858 patent family either for the entire relevant period or for some relevant period because they add chemicals as an intervening, non-disclosed and disavowed step in their oil recovery processes. Independently, all the Plant Defendants claim they are entitled to summary judgment of non-infringement as to Claim 15 of the '858 patent ; Claim 10 of the '516 patent ; and Claims 1-3, 5, 6, 8, 10, 12-14, 16, 17, 19-24 and 26-29 of the '484 patent ; because none of them dries thin stillage concentrate or concentrated byproduct as required by those claims. Defendants Ace, Adkins, Al-Corn, Blue Flint, Bushmills, CVEC, Heartland, Iroquois, Lincolnway, and UWGP assert that they are entitled to summary judgment of non-infringement as to Claims 7-10 of the '516 patent and Claims 8, 10, 12-14, and 27 of the '484 patent.
Further, Iroquois argues that it is entitled to summary judgment of noninfringement as to Claims 2 and 9 of the '516 patent, and Claim 14 of the '484 patent for independent reasons. MDN 923. Lincolnway joins Iroquois' argument with respect to Claim 9 of the '516 patent. MDN 930.
In addition, Cardinal asserts that it is entitled to summary judgment on all of CleanTech's infringement claims against it because CleanTech and the Court have impermissibly broadened the scope of the term "oil" during claim construction and urges the Court to clarify the scope of that term. MDN 924. If the Court does so as Cardinal urges, Cardinal argues that its process cannot infringe the claims of the '858 patent family. Id.
Ace and GEA Mechanical Equipment US, Inc. ("GEA"), have moved for summary judgment on the issue of liability for inducing or contributing to infringement of the '858 patent family. MDN 934.
Adkins has also moved for summary judgment on its affirmative defense of unclean hands in which it incorporates by reference its Motion for Sanctions. MDN 809 & 925.
In a separate, but integrated brief, the Plant Defendants, along with the remaining original defendants, Flottweg Separation Technologies, Inc., Flottweg AG (collectively, "Flottweg"), GEA, ICM, Inc., and David J. Vander Griend (all original defendants, collectively, "Defendants"); have moved for summary judgment as to their affirmative defense and/or counterclaim of invalidity of the '858 patent family, as to CleanTech's request for provisional remedies and as to CleanTech's request for enhanced damages for willful infringement of the '858 patent family. MDN 940. CleanTech has cross-moved for summary judgment of no invalidity under 35 U.S.C. § 112 against these Defendants. MDN 1005, 1008-1024.
Furthermore, CleanTech has asserted that a sub-set of the Original Defendants infringe a companion patent, U.S. Patent No. 8,168,037 (the " '037 patent"). Specifically, CleanTech alleges that each of the following Defendants infringes the listed claims of the '037 patent :
Defendant '037 Patent Claims Cardinal 1, 6, 8, 9, 13, 15 Lincolnway 1, 2, 6-11, 13, 15 Blue Flint 1, 2, 6-11, 13, 15 Lincolnland 1, 6, 8, 9, 13, 15 BR-G 1, 6, 8, 9, 13, 15 BRWB 1, 6, 8, 9, 13, 15
*801 MDN 986 at 6. CleanTech has moved for summary judgment as to all of these asserted claims of the '037 patent against each of these Defendants, which the Court shall refer to, collectively, as the " '037 Plant Defendants." MDN 980-85. The '037 Plant Defendants and an additional subset of the Original Defendants, ICM, Vander Griend and Flottweg (all of these Defendants, collectively, the " '037 Defendants"), have moved for summary judgment of invalidity and noninfringement of the '037 patent. MDN 1071. CleanTech has cross-moved for summary judgment of no invalidity under 35 U.S.C. § 102 (e). MDN 1142-1159.
I. SUMMARY JUDGMENT STANDARD
On cross-motions for summary judgment, the Court must apply the ordinary standards pursuant to Rule 56 of the Federal Rules of Civil Procedure (" Rule 56") as to each individual motion. See McKinney v. Cadleway Props., Inc. , 548 F.3d 496 , 504 n.4 (7th Cir. 2008) ; Chevron U.S.A. v. Mobil Prod. Tx. & N.M. , 281 F.3d 1249 , 1252-53 (Fed. Cir. 2002). In other words, each motion must be considered separately and the non-moving party given the benefit of favorable inferences. Chevron , 281 F.3d at 1253 .
As stated by the Supreme Court, summary judgment is not a disfavored procedural shortcut, but rather is an integral part of the federal rules as a whole, which are designed to secure the just, speedy, and inexpensive determination of every action. See Celotex Corp. v. Catrett , 477 U.S. 317 , 327, 106 S.Ct. 2548 , 91 L.Ed.2d 265 (1986) ; see also United Ass'n of Black Landscapers v. City of Milwaukee , 916 F.2d 1261 , 1267-68 (7th Cir. 1990). Rule 56(a) provides in relevant part: "The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law."
Once a party has made a properly-supported motion for summary judgment, the opposing party may not simply rest upon the pleadings but must instead submit evidentiary materials showing that a fact either is or cannot be genuinely disputed. Fed. R. Civ. P. 56(c)(1). A genuine issue of material fact exists whenever "there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242 , 249, 106 S.Ct. 2505 , 91 L.Ed.2d 202 (1986). The nonmoving party bears the burden of demonstrating that such a genuine issue of material fact exists. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574 , 586-87, 106 S.Ct. 1348 , 89 L.Ed.2d 538 (1986) ; Goodman v. Nat'l Sec. Agency, Inc. , 621 F.3d 651 , 654 (7th Cir. 2010). It is not the duty of the Court to scour the record in search of evidence to defeat a motion for summary judgment; rather, the nonmoving party bears the responsibility of identifying applicable evidence. See Goodman , 621 F.3d at 654 ; Bombard v. Fort Wayne Newspapers, Inc. , 92 F.3d 560 , 562 (7th Cir. 1996).
In evaluating a motion for summary judgment, the Court draws all reasonable inferences from undisputed facts in favor of the nonmoving party and views the disputed evidence in the light most favorable to the nonmoving party. See Berry v. Peterman , 604 F.3d 435 , 438 (7th Cir. 2010) ; Estate of Cole v. Fromm , 94 F.3d 254 , 257 (7th Cir. 1996). The mere existence of a factual dispute, by itself, is not sufficient to bar summary judgment. Only factual disputes that might affect the outcome of the suit in light of the substantive law will preclude summary judgment. See Anderson , 477 U.S. at 248 , 106 S.Ct. 2505 ; JPM Inc. v. John Deere Indus. Equip. Co. , 94 F.3d 270 , 273 (7th Cir. 1996). Irrelevant or unnecessary facts do not deter summary judgment, even when in dispute. See *802 Clifton v. Schafer , 969 F.2d 278 , 281 (7th Cir. 1992). If the moving party does not have the ultimate burden of proof on a claim, it is sufficient for the moving party to direct the Court to the lack of evidence as to an element of that claim. See Green v. Whiteco Indus., Inc. , 17 F.3d 199 , 201 & n.3 (7th Cir. 1994). "If the nonmoving party fails to establish the existence of an element essential to [its] case, one on which [it] would bear the burden of proof at trial, summary judgment must be granted to the moving party." Ortiz v. John O. Butler Co. , 94 F.3d 1121 , 1124 (7th Cir. 1996).
II. STANDING
Although the Plant Defendants claim that their lack of title defense is one in the alternative, standing is a subject matter issue; therefore, it must be addressed first. See Henderson ex rel. Henderson v. Shinseki , 562 U.S. 428 , 131 S.Ct. 1197 , 1202, 179 L.Ed.2d 159 (2011) (stating that "federal courts have an independent obligation to ensure that they do not exceed the scope of their jurisdiction"). The Plant Defendants claim that CleanTech has not established title to the patents-in-suit, 4 which is an element of an infringement claim, and, having failed to set forth the required facts in its brief, the issue is waived and the Court must deny CleanTech summary judgment of infringement. MDN 932 at 49 (citing Narducci v. Moore , 572 F.3d 313 , 324 (7th Cir. 2009) ; Mars Inc. v. Kabushiki-Kaisha Nippon Conlux , 24 F.3d 1368 , 1372 (Fed. Cir. 1994) ; FilmTec Corp. v. Allied-Signal, Inc. , 939 F.2d 1568 , 1571 (Fed. Cir. 1991) ). But, because it is a subject matter jurisdiction requirement, standing may not be waived; therefore the Court will address the argument on its merits. See Rodas v. Seidlin , 656 F.3d 610 , 622 (7th Cir. 2011) (citing Union Pac. R.R. Co. v. Bhd. of Locomotive Eng'rs & Trainmen Gen. Comm. of Adjustment, Cent.Region , 558 U.S. 67 , 81, 130 S.Ct. 584 , 175 L.Ed.2d 428 (2009) ).
With respect to the merits, the Plant Defendants argue that CleanTech's citation to the U.S. Patent and Trademark Office's ("PTO's") assignment records is insufficient because of several gaps in the chain of title. MDN 1096 at 29-30. The Plant Defendants list the following as the chain of title set forth in those records:
On June 1, 2005, [David] Winsness and [David] Cantrell assigned [their] rights "in and to any and all patents ... issued for [the alleged] inventions" described in the provisional application to which the patents-in-suit claim priority to Ethanol Oil Recovery Systems LLC ("EORS"). On January 25, 2007, EORS assigned those rights to Cantrell Winsness Techs., LLC, which had previously changed its name to Mean Green Biofuels of Georgia, LLC ("Mean Green") on December 21, 2006, and its successors. On April 4, 207, Mean Green then assigned the rights to GS Ethanol Techs., Inc. ("GSET"). On January 11, 2008, GSET and 16 other entities collectively executed a Security Agreement, conditionally assigning their individual property to YA Global Investments, L.P. ("YA Global"). On May 15, 2009, GSET purported to assign the patent application that led to the '858 [p]atent, and "any and all Patents that may be issued therefrom ...., including all revivals, refilings, continuations, continuations-in-part, divisions and reissues thereof" to GS CleanTech Corp. Finally, on June 30, 2009, GreenShift Corp. (f/k/a GS CleanTech Corp.), GS CleanTech Corp. (f/k/a GSET), and 16 other entities executed *803 an amendment to the January 11, 2008 Security Agreement, ratifying, confirming, and reaffirming the terms therein.
MDN 1096 at 30 (citing MDN 1036-1 at 6-8, 10-14, 16-17, 19-20, 25-43, 45-46, 52-61 (internal citations omitted) ). According to the Plant Defendants, the first of the two holes in the chain of title occurred when GSET made the conditional assignment to YA Global and transferred "continuing interest" and the "power of sale" to YA Global, which the Plant Defendant claim vested title to the patents-in-suit with YA Global upon recording of the Security Agreement with the PTO. Id. at 30-31 (citing, inter alia , MDN 1036-1 at 27, 30; Waterman v. Mackenzie , 138 U.S. 252 , 256, 11 S.Ct. 334 , 34 L.Ed. 923 (1891) ; In re Cybernetic Servs. , 252 F.3d 1039 , 1052 (9th Cir. 2001) ). Therefore, the Plant Defendants claim that GSET's subsequent assignment to CleanTech is void. Id. at 32.
The second hole in the chain of title the Plant Defendants assert is that when CleanTech and its parent, GreenShift, failed to file Delaware state taxes by March 1, 2012, CleanTech's right to maintain a legal action became inoperative unless cured. Id. (citing MDN 1097-1 & 1097-2); 8 Del. Code §§ 312 & 510. CleanTech asserts that the agreement between GSET and YA Global merely granted YA Global a security interest in the patents. MDN 1137, at 10-13. As such, like all security interests under Article 9 of the Uniform Commercial Code ("UCC"), the Security Agreement did not convey title to YA Global. Id. at 11. In addition, CleanTech argues that the Plant Defendants misstate the language of the Security Agreement: where they say that the document conveyed "a continuing interest in the patents," id. (citing MDN 1096 at 30-31), the agreement actually grants YA Global "a continuing security interest" in the patents. Id. (quoting MDN 1036-1 at 27, Section 2, adding emphasis). Therefore, recording the Security Agreement did not transfer title; it only perfected YA Global's security interest in the patents. Id. at 11-12. In addition, CleanTech contends that it has paid its taxes and is in good standing; but even if it was not, the inadvertent failure to pay franchise taxes under Delaware law would not divest CleanTech of standing since it would "always continue[ ] as a 'body corporate' for purposes of this litigation." Id. at 9-10 & n.9 (citing 8 Del. C. § 278; Krapf & Son, Inc. v. Gorson , 243 A.2d 713 (Del. 1968) ).
The Court concludes that there were no breaks in the chain of custody and CleanTech holds title to the patents-in-suit. As CleanTech suggests, the Plant Defendants rely upon incomplete language from the Security Agreement. By its terms, the grantors were not conveying title to the intellectual property; they were conveying a security interest in it. MDN 1036-1 at 27. Moreover, the Plant Defendants point to nothing in the language of the Security Agreement that evidences any intent for the title of the patents to pass to the Secured Party when the security interest was recorded. Absent such language of intent, there was no transfer of title. Further, CleanTech has paid its taxes and is in good standing as of January 30, 2014. MDN 1137-1 & 1137-2. In addition, CleanTech has evidenced that under Delaware law, even if the company had been dissolved for not paying its taxes, it would still operate with respect to any litigation for at least three years. 8 Del. C. § 278. For these reasons, the Plant Defendants' Motion for Summary Judgment as to the issue of standing is DENIED .
III. BACKGROUND FACTS 5
A. THE PROCESSES IN GENERAL
*804 Each of the Plant Defendants processes corn to produce ethanol and employs a corn oil extraction system to separate corn oil from evaporated thin stillage. MDN 878 at 7-9; MDN 986 at 6-7. Ace, Adkins, Al-Corn, BRWB, Cardinal, CVEC, Lincolnland and Lincolnway first began to extract corn oil from syrup or thin stillage in or around 2008; Heartland started to use its own corn oil extraction system in one plant in 2007, and in both by 2008; Blue Flint, Bushmills, BR-G, Iroquois and UWGP began to extract corn oil from syrup or thin stillage in or around 2009. MDN 878 at 9; MDN 986 at 7.
Although there are some differences in individual processes that the Court will outline as necessary, at each of the Plant Defendants' facilities, whole stillage, a byproduct of the corn to ethanol production process, is separated into a substance that is essentially solids and is known in the industry as wet distillers grains or wet cake; and a substance that is primarily fluid and is known in the industry as thin stillage, which includes water, oil and solids. 6 MDN 878 at 10; MDN 986 at 8. At the Ace, Blue Flint, Bushmills, CVEC, Lincolnland and UWGP facilities, that separation is facilitated by the use of a decanter centrifuge. MDN 878 at 10; MDN 1037-2 (Bushmills). Bushmills and Heartland add a chemical to the portion known as thin stillage before anything else is done with the material. MDN 932 at 15 (Bushmills) & 16-17 (Heartland). Then, as to all Defendants, the portion known as thin stillage (or thin stillage plus chemical) is pumped through an evaporation system (a system that varies by Defendant), which produces a material known in the industry as syrup, which again contains water, oil and solids. MDN 878 at 11; MDN 986 at 8. Ace introduces a chemical to the syrup before it is pumped to a holding tank. MDN 932 at 6-7. Several other Plant Defendants including Adkins, Al-Corn, Blue Flint, Bushmills, Cardinal, CVEC, Iroquois, Lincolnland, Lincolnway, and UWGP, mix in a chemical with the syrup after the evaporation step. MDN 932 at 15, 37-38; MDN 949-39 (Iroquois). The Plant Defendants that use a chemical additive at some point before the pre-centrifugation (or pre-mechanical) processing step started using chemicals at different points in time to improve their oil recovery. MDN 932 at 37-38.
Next, the syrup is passed through one or more centrifuges to separate the syrup into two output streams: one is a light phase consisting of oil, water and solids, which the Court and the parties will sometimes refer to as the "oil stream"; the other one is reduced oil syrup. MDN 878 at 11-12; MDN 932 at 5; MDN 986 at 8-9; MDN 1179 at 15. The light phase stream is put into tanks where, for nearly all of the Plant Defendants, the solids and water are allowed to settle or are otherwise further separated. MDN 878 at 12-13; MDN 932 at 5, 18, 21, 23-24; MDN 881-22 (Heartland); MDN 1037-3 (UWGP); MDN 986 at 9: MDN 1179 at 15.
*805 The parties dispute whether the evidence supports CleanTech's assertion that the Plant Defendants' processes run in a "continuous fashion" as required by some of the asserted claims of the '858 patent family. MDN 878 at 13; MDN 932 at 8, 16, 18, 20, 22, 23-24, 31; MDN 923; MDN 930. Iroquois and Lincolnway specifically argue that their systems are not continuous. MDN 932 at 22 (stating that Iroquois' process processes a single batch of syrup at a time); id. at 23-24 (stating that Lincolnway's centrifuges are not processing syrup continuously during times that solids ejections and cleanings-in-place ("CIP") are occurring). See also MDN 923 (Iroquois' Cross-Motion for Summary Judgment of Non-Infringement as to Certain Patent Claims); 930 (Lincolnway's Joinder in Iroquois' Motion for Summary Judgment of Non-Infringement as to Claim 9 of the '516 Patent ).
CleanTech's expert, John McKenna ("McKenna"), testified that he would not consider a mixture of thin stillage concentrate, wet distillers grains and previously dried DDGS, to be "thin stillage concentrate." MDN 1096 at 17-21. And, McKenna testified that he had not seen any of the Plant Defendants dry the concentrated thin stillage leaving a centrifuge in a dryer. Id. at 19.
B. PLANT SPECIFIC EVIDENCE
1. Ace
Ace installed its corn oil extraction system in 2008. MDN 878 at 33. At Ace's facility, syrup exits the evaporation stage and is pumped to a syrup balance tank; the syrup is then pumped into a heat exchanger and heated to approximately [redacted] °F. Id. at 13. The temperature of the syrup as it exits the balance tank and enters the heat exchanger is approximately [redacted] °F. Id. After the syrup exits the heat exchanger, since January 2012, Ace introduces a chemical into the syrup to increase the oil recovery from the syrup; from August 2008 through January 2012, no chemical was added on a regular basis. MDN 932 at 6-7. From there, the syrup is pumped to a raw syrup tank and then it is pumped into a heated syrup tank. MDN 878 at 13. From the heated syrup tank, the syrup is pumped to a disk-stack centrifuge for oil removal. Id. at 13-14. The temperature of the syrup is maintained at approximately [redacted] °F in both the raw and the heated syrup tanks and enters the centrifuge at a temperature approximately between [redacted] °F and [redacted] °F. Id. at 14. The moisture content of the syrup fed into the centrifuge is approximately [redacted]% to [redacted]% and the pH of the syrup is approximately 3.6. MDN 878 at 14.
The reduced oil syrup leaving the centrifuge is discharged into a dryer feed tank. From the dryer feed tank, the reduced oil syrup is mixed with distillers wet grains and then dried in a dryer to make dried distillers wet grains with solubles ("DDGS"). Id. The reduced oil syrup contains between [redacted]% and [redacted]% of the oil originally present in the input syrup. MDN 932 at 7.
On December 13, 2011, CleanTech performed a Rule 34 inspection of Ace's corn oil extraction process. MDN 878 at 29. During the inspection, samples were taken at fourteen locations (1-14). At each location, four individual samples were taken (A-D) with CleanTech retaining two of the samples (A-B) and Ace retaining the remaining two samples (C-D). Id. CleanTech submitted one of each of its samples (AE-1A through AE-14A) and Ace submitted one of each of its samples (AE-1C through AE-14C) for analysis to MidWest Laboratories, Inc. ("MidWest"), where each sample was tested and separate test data sheets were generated that provided the test data for each sample. Id. at 29-30.
*806 Samples AE-11A and AE-11C were from the syrup stream before it enters the disk-stack centrifuge. Id. at 30. Samples AE-12A and AE-12C were from the reduced oil syrup stream leaving the disk-stacked centrifuge. Id. Samples AE-13A and AE-13C were taken from the light phase stream exiting the disk-stacked centrifuge. Id. ; MDN 932 at 7.
The results of the MidWest tests on samples AE-11A and AE-11C of the syrup entering the centrifuge show oil concentrations of [redacted]% and [redacted]%, respectively. MDN 878 at 30. The results of the MidWest tests on samples AE-12A and AE-12C of the reduced oil syrup stream leaving the centrifuge show oil concentrations of [redacted]% and [redacted]%, respectively. Id. at 30-31. The sample results show an oil recovery range between [redacted]% and [redacted]% of the oil removed through centrifugation. Id. at 30; MDN 932 at 7.
The results of the MidWest tests on samples AE-13A and AE-13C of the light phase exiting the centrifuge show an oil concentration of [redacted]% and [redacted]%, respectively. MDN 878 at 31.
The results of the MidWest tests are reflective of Ace's process, which, at the time, included the addition of a chemical. Id. ; MDN 932 at 7.
During its inspection at the Ace facility, CleanTech took photographs of its samples of the syrup fed into the centrifuge; and of its samples of the reduced oil syrup and the light phase leaving the centrifuge. MDN 878 at 31. Although the concentration of the sample does not change, settling will occur in the samples, which allows oil to be more observable. 7 MDN 932 at 7; MDN 1025 at 11.
2. Adkins
At the Adkins facility, the syrup is pumped to a strainer after it exits the final stage of the evaporation system. MDN 878 at 14-15. Chemicals are added to the syrup as it leaves the evaporator. MDN 932 at 12. From there it goes through a strainer that removes coarse solids from the syrup; and then the syrup is pumped to a disk-stack centrifuge. Id. ; MDN 878 at 14-15. The moisture content of the syrup fed into the centrifuge is approximately 67% by weight. MDN 878 at 15. The pH concentration of the syrup fed into the centrifuge was measured on October 6, 2011, to be approximately 3.67. Id. ; MDN 932 at 8-9. The reduced oil syrup that comes out of the centrifuge is discharged into a tank; from there it is sent to a syrup tank and then it is mixed with wet cake. MDN 878 at 15. A portion of this mixture is sent to a dryer. Id.
On October 11, 2011, CleanTech performed a Rule 34 inspection at the Adkins facility and took samples at various parts of Adkins' process; Adkins did not take any samples. Id. at 33. Adkins objected to CleanTech's Statement of Material Facts Not in Dispute ("CleanTech SOMF") 8 numbered 123 through 130, 132 through 135, and 137 on the basis that the cited evidence did not support the statement. MDN 932 at 9-10. The Court agrees that the cited evidence does not support the statements because the Rule 30(b)(6) witness did not testify as to where any *807 sample was taken from. MDN 882-38 & 882-39. Similarly, the MidWest results do not indicate where any sample was taken from; they just reference the sample number and the results. 9 In response to Adkins' objection, CleanTech merely states that the MidWest results speak for themselves and that the Rule 30(b)(6) testimony establishes that the results are largely consistent with typical results Adkins observes at other times. MDN 1025 at 12, 68-69. At no point does CleanTech address Adkins' objection that there is no foundation for a conclusion that the cited samples came from various parts of Adkins' process. For these reasons, the Court SUSTAINS Adkins' objections to the MidWest data as against it; the data will not be considered.
Adkins also objected to CleanTech SOMF 131 and 135 on the basis that the evidence cited, the Expert Report of John V. McKenna Re: Infringement by Adkins Energy, LLC, is unsworn and inadmissible. MDN 932 at 10-11; MDN 882-39. CleanTech wholly fails to address this objection. MDN 1025 at 12, 69. Expert reports are merely discovery materials, see Blue Cross & Blue Shield United of Wis. v. Marshfield , 152 F.3d 588 , 595 (7th Cir. 1998) ; therefore, unless the expert authenticates the report, it is inadmissible. See Wittmer v. Peters , 87 F.3d 916 , 917 (7th Cir. 1996) (citing Fed. R. Civ. P. 56(e) ; Fowle v. C & C Cola , 868 F.2d 59 , 67 (3d Cir. 1989) ); Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd. , 482 F.Supp.2d 1045 , 1057 (N.D. Ind. 2007) (citing Adickes v. S.H. Kress & Co. , 398 U.S. 144 , 158 n.17, 90 S.Ct. 1598 , 26 L.Ed.2d 142 (1970) ; Provident Life & Acc. Ins. Co. v. Goel , 274 F.3d 984 , 1000 (5th Cir. 2001) ; Fowle , 868 F.2d at 67 ). The Fowle court suggested that some courts believe such a conclusion is hypercritical, 868 F.2d at 67 ( see also Howmedica , 482 F.Supp.2d at 1057 (stating that it would decide the issue on the merits rather than on a hypercritical application of the rules) ); but, here, despite having the opportunity to do so, CleanTech did nothing to address Adkins' objection once it was raised and had opportunity to do so; therefore, Adkins' objection to CleanTech SOMF 131 is SUSTAINED and John McKenna's opinions as to Adkins are inadmissible.
For these reasons, CleanTech presented no admissible evidence on the content of the various samples or any test results for the Adkins inspection.
3. Al-Corn
At the Al-Corn facility, syrup is transferred from the seventh evaporator to a syrup buffer tank. MDN 878 at 15. The temperature of the syrup as it exits the evaporator system is approximately [redacted] °F, its moisture content is approximately [redacted]% by weight, and its pH is between approximately 4.7 and 5.0. Id. ; MDN 932, at 12-13. The syrup that exits the evaporation system is comprised of water, corn oil and solids. MDN 878 at 38. The syrup passes through a filter screen and then is sent to a primary high speed separator ("PCOSS") disk-stack centrifuge. Id. at 15. The Al-Corn centrifuge separates a portion of the oil in the syrup, along with portions of water and unsaponifiable matter into one stream (the "light *808 stream") and the remaining reduced oil syrup into another stream. Id. The reduced oil syrup that exits the centrifuge contains between [redacted]% and [redacted]% of the oil originally present in the syrup. MDN 932 at 12. The reduced oil syrup is transferred to a syrup return tank, then to a syrup storage tank. MDN 878 at 16. Ultimately, the reduced oil syrup is mixed with wet cake and sent to dryers. Id.
Although Al-Corn initially transferred the light stream from the centrifuge to a temporary storage tank and through a secondary corn oil separator, it has not done so since March 2009. Id. The light stream is discharged into a corn oil settling tank, which overflows by gravity into another settling tank and then to a bulk storage tank. Id.
On November 30, 2011, CleanTech performed a Rule 34 inspection of Al-Corn's facility. Id. at 36. During the plant inspection, four samples (A-D) were taken at thirteen sample locations (1-13). Id. The four samples at each location were identified AL-1A through D, through AL-13A through D. Id. CleanTech submitted samples AL-1A through AL-13A and Al-Corn submitted samples AL-9C, AL-10C, AL-11C and AL-13C to MidWest for analysis, where each sample was tested and separate test data sheets were generated providing the test data for each sample. Id. at 37.
MidWest's test results on samples AL-11A and C, which were taken from the oil stream leaving the centrifuge, were produced by Al-Corn bearing Bates No. AL-CORN001558 and by CleanTech bearing Bates No. GCS(AlCorn) 0000011. Id. MidWest's test results on samples AL-10A and C, which were taken from the reduced oil syrup leaving the centrifuge, were produced by Al-Corn bearing Bates No. AL-CORN001557 and by CleanTech bearing Bates No. GCS(AlCorn) 000010. Id. at 37-38. MidWest's test results on samples AL-9A and C, which were taken at the feed stream to the centrifuge after Evaporator 7, were produced by Al-Corn bearing Bates No. AL-CORN001556 and by CleanTech bearing Bates No. GCS(AlCorn) 000009. Id. at 38.
The MidWest test data produced by Al-Corn for samples of the syrup entering the centrifuge show an oil concentration of about [redacted]%; MidWest's data produced by CleanTech for samples of the same stream show an oil concentration of about [redacted]%. Id. The MidWest test data produced by Al-Corn for samples of the reduced oil syrup coming out of the centrifuge show an oil concentration of about [redacted]%; MidWest's data produced by CleanTech for samples of the same stream show an oil concentration of about [redacted]%. Id. at 38-39. This means there is approximately between [redacted]% and [redacted]% of the oil left in the reduced oil syrup. MDN 932 at 12. Or, approximately [redacted]% to [redacted]% of the oil in the syrup entering the centrifuge is removed during that part of the process. MDN 878 at 39.
The MidWest data produced by Al-Corn for the samples of the light stream leaving the centrifuge show an oil concentration of about 96.5%; MidWest's data produced by CleanTech for the same samples show an oil concentration of approximately [redacted]%. Id.
CleanTech took a photograph of AL-9A (of the syrup after the evaporator and before the centrifuge), AL-10A (of the reduced oil syrup leaving the centrifuge), AL-11A (of the light stream leaving the centrifuge), AL-12A (oil in the settling tank) and AL-13A (oil in the bulk storage tank), during the November 30, 2011, inspection of Al-Corn's facility. Id. at 40. Although the material has settled, the compositions have not changed, but it has *809 made the oil more observable. 10 Id. at 40; MDN 932 at 5-6; MDN 1025 at 11.
4. Blue Flint
In the Blue Flint system, prior to November 26, 2011, the syrup was steam blasted before it entered the centrifuge, which heated the syrup to 180°F to 190°F. MDN 932 at 14. Further, after June 14, 2011, Blue Flint began injecting a chemical additive to the syrup just prior to the stream entering the centrifuge. Id. In Blue Flint's system, syrup, which is a mixture of water, oil and solids, is transferred from the seventh evaporator of an eight-evaporator system to a Westfalia disk-stack centrifuge where it is separated into a light stream comprised of free oil and an oil/water/solids emulsion and a heavy, reduced oil solids stream consisting of solids, moisture and a small amount of oil. MDN 878 at 16-17, 43; MDN 986 at 9. Prior to November 24, 2011, the temperature of this syrup was approximately between 200°F and 205°F, MDN 878 at 17; MDN 986 at 9; after that date, the temperature was and is between approximately 180°F and 190°F, MDN 932 at 14; MDN 1179 at 15. The moisture content of the syrup is approximately 70% by weight; and its pH level is between 3 and 6 as well as between 3.5 and 4.5. MDN 878 at 17; MDN 986 at 9. The reduced oil syrup stream that leaves the centrifuges at Blue Flint is fed back into another evaporator, then it is transferred to syrup transfer and holding tanks; then it is pumped onto wet cake or distillers grains and dried. MDN 878 at 17; MDN 986 at 10.
On October 25, 2011, CleanTech performed a Rule 34 inspection of Blue Flint's facility. MDN 878 at 41; MDN 986 at 14. During the inspection, four samples were taken (A-D) at each of fifteen sample locations (1-15) and were labelled accordingly. Id. CleanTech submitted samples BF-1A through BF-15A and Blue Flint submitted samples BF-1C through BF-15C for analysis to MidWest, where each sample was tested and separate test data sheets were generated providing test data for each sample. MDN 878 at 42; MDN 986 at 14-16. On January 27, 2012, Blue Flint conducted additional sampling at Evaporator 7, which is right before the syrup goes into the centrifuge; and also at the "stillage return," which is where the reduced oil syrup stream exits the centrifuge. MDN 878 at 42; MDN 986 at 15-16. These samples, duly marked, were also sent to MidWest for testing. MDN 878 at 42-43; MDN 986 at 15-16.
The MidWest test data on Blue Flint's samples for the syrup stream entering the centrifuge with and without chemical additive show an oil concentration of approximately 5.32%-5.35%; the MidWest data for CleanTech's samples of the same stream show an oil concentration of approximately 5.45%. MDN 878 at 42-44. The MidWest test data for Blue Flint's samples for the reduced oil syrup stream leaving the centrifuge, with and without chemical additive, show an oil concentration of approximately 1.76%-2.67%; the MidWest data for CleanTech's samples of the same stream show an oil concentration of approximately 2.22%. Id. at 44. Based on these results, approximately 45.5%-56.5% of the corn oil is recovered. MDN 932 at 14.
The MidWest test data on Blue Flint's samples for the light stream coming out of the centrifuge show an oil concentration of approximately 97.04%; the MidWest data for CleanTech's samples of the same stream show an oil concentration of approximately 96.8%. MDN 878 at 45; MDN 986 at 16-17.
*810 During the October 25, 2011, inspection of the Blue Flint facility, CleanTech took a photograph of BF-8A (of the syrup after Evaporator 7 and before the centrifuge), BF-10A (of the syrup before the heater and entering the centrifuge), BF-11A (of the light stream leaving the centrifuge), BF-12A (oil in the settling tank) and BF-13A (reduced oil syrup stream). MDN 878 at 45; MDN 986 at 17. Partially obscured in the photograph are BF-14A and BF-15A taken from the storage tanks. MDN 878 at 45-46; MDN 986 at 17. Although the material has settled, the compositions have not changed, but it has made the oil more observable. 11 MDN 878 at 46; MDN 932 at 5-6; MDN 1025 at 11; MDN 986 at 18; MDN 1179 at 15.
The data obtained from the October 25, 2011, samples, is typical for when Blue Flint's system was using the steam injection part of the process; but it is not reflective of recovery with a chemical additive. MDN 878 at 46; MDN 932 at 6; MDN 881-23, ¶ 22; MDN 986 at 18.
5. Big River-West Burlington ("BRWB")
BRWB's corn oil extraction system has two centrifuges, the North Tricanter centrifuge and the South Tricanter centrifuge; and two 8-stage evaporation systems. MDN 878 at 17; MDN 986 at 10. The syrup in BRWB's system exits the two evaporation systems after the fourth evaporator and is pumped to one of two head feed tanks. MDN 878 at 18; MDN 968 at 10. From the feed tank, the syrup is pumped to either the North or the South Tricanter centrifuge. Id. The oil stream separated by the two centrifuges is recovered and discharged into a first corn oil receiver tank, and then the corn oil flows to a second corn oil receiver tank, and then into a storage tank; it is sold from the storage tank. Id. The reduced oil syrup that comes out of the North or the South Tricanter centrifuge is discharged into one of two tricanter receiver syrup tanks. Id. From one or the other tricanter receiver syrup tanks, the reduced oil syrup is pumped back to the fifth evaporator in of the two 8-stage evaporator systems where moisture is removed as it flows through the remaining portion of the evaporator system. Id. This evaporated reduced oil thin stillage is then combined with wet distillers grains and wet cake and is further dried to produce dried distillers grains with solubles ("DDGS"). MDN 986 at 11.
The moisture content of the syrup fed to both the North and the South Tricanter centrifuges is between 72% and 75%. 12 MDN 878 at 18; MDN 968 at 10. The pH of the syrup fed to either of the two centrifuges is 3.2 or higher. MDN 878 at 19.
On November 16, 2011, CleanTech performed a Rule 34 inspection of BRWB's facility. MDN 878 at 47; MDN 986 at 18-19. During the inspection, four (A-D) samples were taken at twenty-four (1-24) sample locations. Id. CleanTech retained two samples from each location (A and B); BRWB retained the remaining two (C and D). Id. CleanTech submitted samples WB-1A through WB-24A and BRWB submitted samples WB-1C and WB-24C for analysis to MidWest, where each sample was tested 13 and separate data sheets were generated providing the test data for each *811 sample. MDN 878 at 47-48; MDN 932, at 15; MDN 986 at 18-19; MDN 1179 at 15. Samples marked 20 were taken from the reduced oil syrup leaving the North Tricanter centrifuge; samples marked 21 were taken from the oil stream coming out of the same centrifuge; samples marked 22 were taken from the reduced oil stream coming of the South Tricanter centrifuge; and samples marked 23 were taken from the oil stream coming of that centrifuge. MDN 878 at 48; MDN 986 at 19-20.
The MidWest data for the three oil stream samples exiting the North Tricanter centrifuge, WB-21A, WB-21C and WB-21D, show oil concentrations of 94.14%, 93.18% and 92.79%, respectively. Id. at 48-49; MDN 932 at 15; MDN 986 at 20; MDN 1179 at 15. The three oil stream samples from the South Tricanter centrifuge, WB-23A, WB23C and WB-23D, show oil concentrations of 94%, 96.08% and 95.3%, respectively. MDN 878 at 49; MDN 986 at 20.
During the November 16, 2011, inspection of the BRWB facility, CleanTech took a photograph of samples taken from the North Tricanter centrifuge system, including: WB-51 (of the syrup after Evaporator 4 and before the centrifuge), WB-9A (of the syrup at the centrifuge feed pump), WB-20A (reduced oil syrup leaving the centrifuge), WB-21A (light stream leaving the centrifuge) and WB-24A (oil storage tank). MDN 878 at 49050; MDN 986 at 20-21. At the same plant inspection, CleanTech took a photograph of samples taken from the South Tricanter centrifuge, including: WB-14A (syrup after Evaporator 12 and before the centrifuge); WB-18A (syrup entering the centrifuge feed pump); WB-22A (reduced oil syrup leaving the centrifuge); WB-23A (light stream leaving the centrifuge); and WB-24A (oil storage tank). MDN 878 at 50-51; MDN 986 at 21-22. Although the material has settled, the compositions have not changed, but it has made the oil more observable. 14 Id. at 46; MDN 932 at 5-6; MDN 1025 at 11.
6. Bushmills
As previously referenced, Bushmills adds a surfactant to the thin stillage before it enters the first stage of an eight-stage evaporator system, which increases the recovery of corn oil by 20-30%. MDN 932 at 15. In addition, at the last evaporator, Bushmills introduces another chemical before the thin stillage enters a disk stack centrifuge. Id. ; MDN 932 at 19. The syrup is further fed through a strainer before it enters the centrifuge. MDN 878 at 19; MDN 1025 at 12; MDN 1037-2. The thin stillage fed into the centrifuge generally has a pH in the range of 4 to 4.8 pH. 15 MDN 878 at 19. The oil separated by the centrifuge, which contains water, solids and oil, is recovered and discharged into a corn oil transfer tank and then flows to one of two oil storage tanks; from those tanks, the oil is loaded onto trucks. Id. The reduced oil syrup that comes out of the centrifuge is either put onto wet cake and *812 sold as modified wet cake, MDN 932 at 17; MDN 881-45 at 7; or sometimes it is mixed with the west cake and then sent to a dryer. MDN 932 at 17; MDN 881-45 at 9-10.
On December 7, 2011, CleanTech performed a Rule 34 inspection of Bushmills' facility. MDN 878 at 52. During the inspection, samples were taken at several locations throughout Bushmills' corn oil extraction system. Id. During the inspection, Bushmills ran its corn oil extraction system with and without chemical additives and four samples (A-D) were taken at each sample location (1-14). Id. at 52-53. CleanTech retained two of the samples, BM-1A through BM-14B; and Bushmills retained two of the samples, BM-1C through BM-14D. Id. CleanTech submitted samples BM-1A through BM-14A for analysis to MidWest, where each sample was tested and separate test data sheets were generated providing the test data for each sample. Id. at 53. Bushmills submitted samples BM-1C through BM-14C for analysis to Minnesota Valley Testing Laboratories, Inc. ("MVTL"), where each sample was tested and separate test data sheets were generated providing the test data for each sample. Id.
Samples BM-11A and BM-11C were taken from the reduced oil syrup stream coming out of the centrifuge while the corn oil extraction system was run without the addition of chemicals. 16 Id. at 53. Samples BM-10A and BM-10C were taken from the oil stream coming out of the centrifuge while the corn oil extraction system was run without the addition of chemicals. Id. at 53-54. Samples BM-4A and BM-4C were taken from the reduced oil syrup stream leaving the centrifuge while the corn oil extraction system was run with chemicals added. Id. at 54. Samples BM-3A and BM-3C were taken from the oil stream coming out of the centrifuge while the corn oil extraction system was run with chemicals added. Id.
Test data on the reduced oil syrup samples when the extraction process is run without chemicals, BM-11A and BM-11C, show oil concentrations of 2.65% and 3%, respectively; test data on the reduced oil syrup samples when chemicals were added to the process, BM-4A and BM-4C, show oil concentrations of 1.76% and 2.29%, respectively. Id. at 55. Test data on the oil stream samples when the extraction process is run without chemicals, BM-10A and BM-10C, show oil concentrations of 97.3% and 95.49%, respectively; test data on the oil stream samples when the process is run with chemicals, BM-3A and BM-3C, show oil concentrations of 97.1% and 96.27%, respectively. Id. at 55-56.
During the December 7, 2011, inspection of the Bushmills facility, CleanTech took a photograph of samples BM-9A, 17 BM-3D
*813 (oil stream leaving the centrifuge when chemicals are added), BM-4A (reduced oil syrup leaving the centrifuge when chemicals are added), BM-10A (oil stream leaving the centrifuge without chemicals added), BM-11A (reduced oil syrup leaving the centrifuge without chemicals added), and BM-12A (oil in the corn oil transfer tank). Id. at 56. Although the material has settled, the compositions have not changed, but it has made the oil more observable. 18 Id. at 56; MDN 932 at 5-6; MDN 1025 at 11.
The results of the samples taken during the inspection are typical for Bushmills' corn oil extraction process. 19 MDN 878 at 58.
7. Cardinal
Cardinal operates two Tricanter centrifuges; each is fed syrup from the seventh evaporator of an eight-stage evaporator system. MDN 878 at 20; MDN 986 at 11. The temperature of the syrup exiting Evaporator 7 is approximately 185°F, its moisture content is approximately 68-70% and its pH is approximately 4 to 4.1. MDN 878 at 20; MDN 986 at 11. Cardinal has an in-line "pick heater" that is capable of heating the syrup stream as it leaves Evaporator 7 and before it enters the Tricanter, but it is not always used. MDN 878 at 20. Further, Cardinal adds a demulsifier to the syrup before it enters the centrifuge. Id. ; MDN 932 at 17 & 38. The light stream that exits the centrifuge, which contains some solids, is discharged into an oil receiving tank, where the solids are allowed to settle; the overflow oil is sent to a second oil receiving tank; from there the oil is pumped to a storage tank from which it is sold. MDN 878 at 20. Any settled solids are returned to the syrup stream and fed back through the evaporator system. Id. The reduced oil syrup leaving the Tricanters returns to evaporator 8. 20 Id. at 21.
On October 20, 2011, CleanTech performed a Rule 34 inspection of Cardinal's corn oil extraction process. Id. at 58; MDN 986 at 23. During the plant inspection four samples (A-D) were taken at sixteen samples locations (1-16); the four samples at each sampling location were identified as CE-1A through D, through CE-16A through D. Id. CleanTech submitted samples CE-1A through CE-16A and Cardinal submitted samples CE-1C through CE-16C, for analysis to MidWest, where each sample was tested and separate data sheets were generated that provided the test data for each sample. MDN 878 at 58-59; MDN 986 at 23-24.
The MidWest test data for the samples taken of the oil stream, which is a combination of oil, water and solids, leaving Cardinal's centrifuges show an oil concentration *814 in the range of approximately, 87.53% to 90.26%. Id. at 59-60; MDN 932 at 17; MDN 986 at 24-25; MDN 1179 at 15.
During the October 20, 2011, inspection of the Cardinal facility, CleanTech took a photograph of samples CE-10A (syrup fed to the centrifuge), CE-12A (the reduced oil syrup exiting the centrifuges), CE-13A (oil stream leaving the centrifuge), CE-14A (oil stream leaving the centrifuge), CE-15A (oil in recovery tank) and CE-16A (oil in the corn oil transfer tank). MDN 878 at 60; MDN 986 at 25. Although the material has settled, the compositions have not changed, but it has made the oil more observable. 21 MDN 878 at 60; MDN 932 at 5-6; MDN 1025 at 11; MDN 986 at 26.
The results of the samples taken during the inspection are typical for Cardinal's corn oil extraction process when chemicals are used in the process as set forth above. MDN 878 at 61; MDN 932 at 17; MDN 986 at 26; MDN 1179 at 15.
8. CVEC
In CVEC's corn oil extraction system, once thin stillage is separated from whole stillage and grains, the thin stillage is pumped to a thin stillage tank through a heat exchanger. MDN 878 at 21; MDN 932 at 18. After going through a third effect evaporator and a second effect evaporator, the syrup is then passed through another heat exchanger before it is fed to a retention tank. Id. The temperature of the thin stillage after the second effect evaporator is approximately 120°F to 140°F; after the heat exchanger, the temperature of the thin stillage is approximately 190°F. MDN 878 at 21. As the syrup enters the retention tank, a surfactant is pumped into the tank to reduce interfacial tension between the oil and the water phases of the syrup. Id. ; MDN 932 at 18. After the retention tank (this syrup is at approximately 186°F), the syrup is fed to a settling tank where it resides for 10 to 11 hours to allow the surfactant to work. Id. Surfactant is added again when the syrup if fed to the separator. Id. The syrup then passes through a strainer and then is fed to a disk stack centrifuge; at this point the syrup is still approximately 186°F, has a pH of approximately 3.5, and has a moisture content of approximately 58 to 65%. 22 MDN 878 at 21-22; MDN 932 at 18.
The reduced oil syrup or remaining syrup that comes out of the centrifuge is discharged into a tank and then it is fed into a pre-mixer or paddle mixer with wet cake and syrup that may have by-passed the corn oil extraction centrifuge. Id. This mixture is sent to dyers and dried to make dried distillers grains with solubles ("DDGS"). MDN 878 at 21-22.
On December 7, 2011, CleanTech performed a Rule 34 inspection of CVEC's facility. Id. at 61. During the plant inspection, four samples (A-D) were taken at ten sample locations (1-10); the four samples at each location were identified as CH-1A to D, through CH-10A to D. Id. CleanTech retained two sample sets, CH-1A and B, *815 through CH-10A and B; CVEC retained the remaining two sample sets, CH-1C and D, through CH-10C and Ds. Id.
CleanTech submitted samples CH-1A through CH-10A for analysis to MidWest; CVEC submitted samples CH-1C through CH-10C for analysis to MVTL. Id. at 62. Each lab tested each sample and separate test data sheets were generated for each sample. Id. Samples CH-7A and CH-7C were taken from the syrup stream that enters the centrifuge; samples CH-9A and CH-9C were taken from the reduced oil syrup that leaves the centrifuge; samples CH-8A and CH-8C were taken from the light or oil stream leaving the centrifuge. Id. The test data on the samples taken of the syrup entering the centrifuge, CH-7A and CH-7C, show oil concentrations of 6.92% and 6.17%, respectively. Id. at 63. The test data on the samples taken of the reduced oil syrup leaving the centrifuge, CH-9A and CH-9C, show oil concentrations of 2.67% and 3.15%, respectively. Id. Therefore, approximately 49-61% of the oil in the syrup is removed by the centrifuge. Id. Further, the test data on the samples taken of the oil stream leaving the centrifuge, CH-8A and CH-8C, show oil concentrations of 97.1% and 96.3%, respectively. Id.
During the December 7, 2011, inspection, CleanTech took a photograph of samples CH-7A (syrup fed into centrifuge); CH-8A (oil stream leaving the centrifuge); CH-9A (reduced oil syrup leaving the centrifuge); and CH-10A (the oil leaving the storage tank). Id. Although the material has settled, the compositions have not changed, but it has made the oil more observable. 23 Id. at 60; MDN 932 at 5-6; MDN 1025 at 11.
9. Big River Resources-Galva ("BR-G")
In BR-G's corn oil extraction process, generally, the syrup is pumped to a feed tank from the fourth evaporator in an eight-stage evaporator system and from the feed tank into a two-centrifuge system, a master and a slave. MDN 878 at 60; MDN 932 at 19; MDN 986 at 12. The moisture content of the syrup is generally between 82% and 85% and the pH is 3.2 or higher. MDN 878 at 23; MDN 986 at 12. If the syrup is processed from the fourth evaporator, the reduced oil syrup that leaves the centrifuges is discharged into a syrup tank and from there the syrup is pumped back into evaporator 5 where additional moisture is removed as it flows through the remainder of the evaporator system. MDN 878 at 23; MDN 932 at 19; MDN 986 at 12; MDN 1179 at 15. The resulting material is then added to solids and dried. MDN 878 at 23; MDN 986 at 12.
On November 17, 2011, CleanTech performed a Rule 34 inspection of the BR-G facility. MDN 878 at 65; MDN 986 at 26. During the inspection, four samples (A-D) were taken at fifteen sample locations (1-15); each sample was duly labelled. Id. CleanTech retained samples labeled G1A and B, through G15A and B; BR-G retained samples labeled G1C and D, through G15C and D. Id. CleanTech submitted samples G1A through G15A and BR-G submitted samples G1C through G15c for analysis to MidWest, where each sample was tested and separate test data sheets were generated providing the test data for each sample. MDN 878 at 66; MDN 986 at 26-27.
Samples G11A, G11C and G11C DUP were taken from the reduced oil syrup that comes out of the two-centrifuge system;
*816 samples G12A, G12C and G12C DUP were taken from the oil stream coming out of the slave centrifuge; and samples G13A, G13C and G13C DUP were taken from the oil stream immediately out of the master centrifuge. MDN 878 at 66; MDN 986 at 27. The MidWest data for the samples of the oil coming out of the slave centrifuge (G12A, G12C and G12C DUP), show oil concentrations of 97.4%, 97.44% and 97.07%, respectively. MDN 878 at 67; MDN 986 at 27. The MidWest data for the samples of the oil coming out of the master centrifuge (G13A, G13C and G13C DUP), show oil concentrations of 97.7%, 97.48% and 98.5%, respectively. MDN 878 at 67; MDN 986 at 27-28.
During the November 17, 2011, inspection, CleanTech took a photograph of samples G9A (syrup fed into centrifuge); G11A (reduced oil syrup leaving slave centrifuge); G12A (oil stream leaving the slave centrifuge); G31A (oil stream leaving the master centrifuge); G14A (oil in storage tank, which is a mixture of the oil streams leaving the master and slave centrifuges); and G15A (oil leaving the storage tank). MDN 878 at 67; MDN 986 at 28-29. Although the material has settled, the compositions have not changed, but it has made the oil more observable. 24 Id. at 67-68; MDN 932 at 5-6; MDN 1025 at 11; MDN 986 at 29; MDN 1179 at 15.
10. Heartland
Heartland has two extraction systems, the West Plant and the East Plant. MDN 878 at 23-24. In Heartland's West Plant, sulphuric acid is added to the thin stillage prior to its entrance into the evaporator system. MDN 932 at 20. From the final evaporator in the evaporator system, Evaporator 4, the syrup is fed into a level control tank; and from there it flows through a strainer and then into a disk stack centrifuge. MDN 878 at 23-24. The moisture content of the syrup fed into the centrifuge is approximately between 68% and 76%; and the pH is between approximately 3.65 and 3.68. 25 Id. at 24. The reduced oil syrup that exits the West Plant centrifuge is discharged into a heavy phase tank and then a larger storage tank. Id. at 23. From the storage tank it is mixed with wet cake; the mixture is then sent to a dryer to make dried distillers grains with solubles ("DDGS"). Id. at 23-24.
On December 8, 2011, CleanTech performed a Rule 34 inspection of Heartland's West Plant. Id. at 69. During the inspection, Heartland ran its corn oil extraction system with and without any chemical additives and four samples (A-D) were taken at various sample locations in the West Plant and labeled HL-20A to D, through HL-31A to D. Id. at 69-70. With respect to the West Plant samples, CleanTech retained two sets, A and B; Heartland retained the remaining two samples sets, C and D. Id. CleanTech submitted samples HL-20A through HL-31A for analysis to MidWest; and Heartland submitted samples HL-20C through HL-31C for analysis to MVTL; where each sample was tested and separate data sheets were generated *817 providing the test data for each sample. Id. at 70.
Samples HL-30A and HL-30C were taken from the reduced oil that exited the West Plant centrifuge when the system was run without chemical additives, id. at 70; samples HL-29A and HL-29C were taken from the oil stream that exited the West Plant centrifuge when the system was run without chemical additives, id. at 71; samples HL-21A and HL-21C were taken from the exit of the West Plant centrifuge when the system was run with chemical additives, id. ; and samples HL-20A and HL-20C were taken from the oil stream immediately out of the West Plant centrifuge when the system was run with chemical additives. 26 Id. With respect to results of the tests on samples taken when Heartland's West Plant was run without chemical additive, the data for the reduced oil syrup exiting the centrifuge, HL-30A and HL-30C, show oil concentrations of 2.89% and 3.57%, respectively; the data for the oil stream exiting the centrifuge, HL-29A and HL-29C, show oil concentrations of 93.4% and 88.32%, respectively. Id. at 72. With respect to the results of the tests on samples taken when Heartland's West Plan was run with chemicals, the test results for the samples of reduced oil syrup that exited the centrifuge, HL-21A and HL-21C, show oil concentrations of 3.65% and 4%, respectively; the test results for the samples of oil that exited the centrifuge, HL-20A and HL-20C, show oil concentrations of 96.5% and 96.1%, respectively. Id. at 72-73.
Heartland objected to CleanTech SOMF 274 and Exhibit 109 (Declaration of Photographer During the Heartland Inspection), referenced therein, because the declaration refers to a single authentic photograph, but there are two photographs. MDN 932 at 20; MDN 878 at 73; MDN 883-28. The Court agrees that the declaration does not support admissibility of the photograph because it is written in the singular and there are two photographs. Therefore, the Court SUSTAINS Heartland's objection to CleanTech SOMF 274 and will not consider the information contained in CleanTech SOMF 274. See Fed. R. Civ. P. 26(e) ; S.D. Ind. L.R. 56-1. Heartland also objected to CleanTech SOMF 274 because the cited evidence does not support CleanTech's assertion that the sample labeled HL28A was taken from the syrup fed into the centrifuge or that the sample labeled HL-22A was "representative" of any oil in the run down tank. MDN 932 at 20-21; MDN 878 at 73. The Court agrees that these additional objections should be SUSTAINED .
In the East Plant, Heartland also adds sulphuric acid to the thin stillage prior to its entrance into an evaporator system. MDN 932 at 19. From the final evaporator in this system, Evaporator 6, the syrup is fed through a strainer and into a disk stack centrifuge. MDN 878 at 24. The *818 moisture content of the syrup at this stage is greater than 30% and less than 90% by weight; and the pH of the syrup is between approximately 3.65 and 3.68. Id. at 25. The reduced oil syrup that leaves the East Plant centrifuge is discharged into a heavy phase tank; and then into a syrup storage tank. Id. at 24. From the syrup storage tank, the heavy phase is mixed with wet cake; the mixture is sent to a dryer to make dried distillers grains with solubles ("DDGS"). Id.
On December 8, 2011, CleanTech also performed a Rule 34 inspection on Heartland's East Plant. MDN 878 at 75. During the plant inspection, Heartland ran the East Plant corn oil extraction system with and without chemical additives and four samples (A-D) were taken at various locations in the system; the samples were labeled HL-1A to D, through HL-12A to D. Id. CleanTech retained two sets of samples, HL-1A and B, through HL-12A and B; Heartland retained the remaining two sets of samples, HL-1C and D, through HL-12C and D. Id. CleanTech submitted one of its samples sets, HL-1A through HL-12A, to MidWest for analysis; Heartland submitted one of its samples sets, HL-1C through HL-12C, to MVTL for analysis; each sample was tested and separate test data sheets were generated providing the test data for each sample. Id.
With respect to those samples from the East Plant, samples HL-11A and HL-11C were taken from the reduced oil syrup stream at the exit of centrifuge when chemical additives were not used; samples HL-10A and HL-10C were taken from the oil stream at the exit of the centrifuge also when chemical additives were not uses; samples HL-2A and HL-2C were taken from the reduced oil syrup stream at the exit of the centrifuge when chemicals were added; samples HL-1A and HL-1C were taken from the oil stream at the exit of the centrifuge when chemicals were added. Id. at 76-77. When the East Plant is run without chemical additives, the test data for the reduced oil syrup samples, HL-11A and HL-11C, show oil concentrations of 3.78% and 3.85% respectively; the test data for the oil stream samples, HL-10A and HL-10C, show oil concentrations of 96.8% and 96.65%, respectively. Id. at 77. When the East Plant is run with chemical additives, the test data for the reduced oil samples, HL-2A and HL-2C, show oil concentrations of 2.1% and 2.44%, respectively; the test data for the oil stream samples, HL-1A and HL-1C, show oil concentrations of 96.5% and 96.69%, respectively. Id. at 77-78.
Heartland objected to CleanTech SOMF 288 and Exhibit 109 (Declaration of Photographer During the Heartland Inspection), referenced therein, because the declaration refers to a single authentic photograph, but there are two photographs. MDN 932 at 20; MDN 878 at 78; MDN 883-28. The Court agrees that the declaration does not support admissibility of the photograph because it is written in the singular and there are two photographs. Therefore, the Court SUSTAINS Heartland's objection to CleanTech SOMF 288 and will not consider the information contained in CleanTech SOMF 274. See Fed. R. Civ. P. 26(e) ; S.D. Ind. L.R. 56-1.
Except for the test results for Heartland sample HL-22C, which seemed "out of whack," the test results on samples HL-1C through HL-21C, are typical results for Heartland's processes. 27 MDN 878 at *819 79 (citing MDN 882-5, Ex. 3, Heartland Rule 30(b)(6) Dep. at 162-63); MDN 932 at 21.
11. Iroquois
From the final stage of the evaporator process, syrup is pumped into a syrup tank. MDN 878 at 25. The syrup then flows from the tank through a strainer and then to a disk stack centrifuge. Id. at 25-26; MDN 932 at 22. The moisture content of the syrup fed into the centrifuge is between about 55% and 72%; and the pH is between approximately 3.8 and 4.5. MDN 878 at 25-26; MDN 1025 at 16. The centrifuge processes a batch of syrup and then the flow from the tank is stopped so that the centrifuge can discharge accumulated solids and/or be flushed with water. MDN 932 at 22; MDN 923 at 3. The reduced oil syrup that exits the centrifuge is discharged into a syrup drop tank. MDN 878 at 25. From the syrup drop tank, the reduced oil syrup is pumped into a dryer tank; from that tank, it is fed into a dryer mixer where it is mixed with solids from the whole stillage centrifuges and dehydrated distillers dried grains with solubles. Id. The mixture is then dried. Id.
On December 20, 2011, CleanTech performed a Rule 34 inspection of Iroquois' facility. Id. at 80. During the plant inspection, Iroquois ran its corn oil extraction process with and without chemical additives. Id. Four samples (A-D) were taken at twelve sample locations (1-12) and each sample was marked according to its location, IR-1A to D, through IR-12A to D. Id. CleanTech retained the two sets of samples, IR-1A and B, through IR-12A and B; Iroquois retained the two remaining sample sets, IR-1C and D, through IR-12C and D. Id. Samples taken when Iroquois was not adding chemicals include: IR-A1, IR-1C and IR-1D (syrup entering the centrifuge); IR-3A, IR-3C and IR-3D (reduced oil syrup exiting the centrifuge); IR-2A, IR-2C and IR-2D (oil stream exiting the centrifuge). Id. at 80-82. Samples taken when Iroquois was adding chemicals include: IR-6A, IR-6C and IR-6D (syrup entering the centrifuge); IR-8A and IR-8C 28 (reduced oil syrup exiting the centrifuge); and IR-7A, IR-7C and IR-7D (oil stream exiting the centrifuge). Id. at 81-82
CleanTech submitted sample set A, IR-1A through IR-12A, and Iroquois submitted both of its sample sets, IR-1C through IR-12C and IR-1D and IR-12D, for analysis to MidWest, where each sample was tested and separate data sheets were generated providing the test data for each sample. Id. at 80. When Iroquois' process was run without chemicals, the MidWest test data for the syrup entering the centrifuge, samples IR-1A, IR-1C and IR-1D, show oil concentrations of 5.46%, 5.06% and 5.1%, respectively; the MidWest data for the reduced oil syrup exiting the centrifuge, samples IR-3A, IR-3C and IR-3D, show oil concentrations of 1.32%, 1.35% and 1.09%, respectively; the MidWest data for the oil stream exiting the centrifuge, samples IR-2A, IR-2C and IR-2D, show oil concentrations of 97.2%, 97.52% and 97.47%, respectively. Id. at 82-83. Based on this data, approximately 74% to 80% of the corn oil in the syrup is removed by the centrifuge. Id. at 83.
When Iroquois' process was run with chemicals, the Midwest test data for the syrup entering the centrifuge, samples IR-6A, IR-6C and IR-6D, show oil concentrations of 5.28%, 4.7% and 5.22%, respectively; the MidWest test data for the reduced oil syrup exiting the centrifuge, samples IR-8A and IR-8C, show oil concentrations of 0.69% and 1.03%, respectively; the MidWest test data for the oil stream exiting *820 the centrifuge, samples IR-7A, IR-7C and IR-7D, show oil concentrations of 97%, 97.24% and 97.12%, respectively. Id. at 82-83. Based on this data, approximately 78% to 87% of the corn oil in the syrup is removed by the centrifuge. Id. at 83. The sample IR-2A is from the oil coming immediately out of the centrifuge, prior to flowing into a day tank, and without the use of chemical additives; this data for this sample indicates that it would fit within Iroquois' product specifications and is oil that Iroquois would sell without any further settling or processing. Id. at 85.
During the December 20, 2011, inspection, CleanTech took a photograph of samples IR-1A (syrup fed into centrifuge, without additive); IR-2A (oil stream exiting the centrifuge, without additive); IR-3A (reduced oil stream leaving the centrifuge, without additive); IR-6A (syrup fed into centrifuge, with additive); IR-7A (oil exiting the centrifuge, with additive); IR-8A (reduced oil syrup exiting the centrifuge, with additive); and IR-4A (oil storage tank). Id. at 83-84. Although the material has settled, the compositions have not changed, but it has made the oil more observable. 29 Id. ; MDN 932 at 5-6; MDN 1025 at 11.
12. Lincolnland
At Lincolnland's facility, from Evaporator 6 of a seven-stage evaporation system, syrup is pumped through a tricanter feed heater, which is used only intermittently, before it enters a head feed tank and then is pumped into the centrifuge. MDN 878 at 26; MDN 932 at 23; MDN 986 at 12; MDN 1179 at 15. The temperature of the syrup fed to the centrifuge is between approximately 195°F and 200°F; the pH of the syrup is approximately 3.8 or higher. MDN 878 at 26-27; MDN 986 at 13. The oil stream, which is a mixture of oil, water and solids, separated by the centrifuge is recovered and discharged into a first oil receiver tank; then from the first oil receiver tank, the oil stream flows into a second oil receiver tank; and from that tank, it flows into corn oil storage tanks. MDN 878 at 26; MDN 986 at 13. The reduced oil syrup that exits the centrifuge is discharged into a tricanter syrup tank; from the so-called syrup drop tank, the reduced oil syrup is pumped to Evaporator 7, in the evaporation system where moisture is removed. MDN 878 at 27; MDN 986 at 13. The reduced oil syrup that exits Evaporator 7 is mixed with dried whole stillage to produce modified wet cake. Id. The modified wet cake can be sent to a second dryer to produce distillers dried grains with solubles ("DDGS"). Id.
On October 19, 2011, CleanTech performed a Rule 34 inspection of Lincolnland's facility and took four samples (A-D) at eleven sample locations (1-11); each sample was marked accordingly, 1A to D, through 11A to D. MDN 878 at 86; MDN 986 at 30. Of the four samples sets taken, CleanTech retained two, 1A and B, through 11A and B; and Lincolnland retained two, 1C and D, through 11C and D. Id. CleanTech submitted sample set A and Lincolnland submitted sample set C for analysis to MidWest, where each sample was tested a separate data sheet was generated with the test results. Id. Each Lincolnland sample was tested twice. Id. ; MDN 932 at 23; MDN 1179 at 15.
Samples 9A, 9C and 9C (dup), were taken from reduce oil syrup stream exiting the centrifuge; samples 10A, 10C and 10C (dup), were taken from the oil stream exiting immediately out of the centrifuge. MDN 878 at 86-87; MDN 986 at 30-31. The MidWest test data on the oil stream samples, 10A, 10C and 10C (dup), show oil *821 concentrations of 98.3%, 98.1% and 97.75%, respectively. MDN 878 at 87; MDN 986 at 31.
During the October 19, 2011, inspection, CleanTech took a photograph of samples 8A (syrup fed into centrifuge); 9A (reduced oil stream exiting the centrifuge); and 10A (oil stream exiting the centrifuge). MDN 878 at 87; MDN 986 at 31-32. Although the material has settled, the compositions have not changed, but it has made the oil more observable. 30 MDN 878 at 87; MDN 932 at 5-6; MDN 1025 at 11; MDN 986 at 32; MDN 1179 at 15.
The results of the tests performed on the samples taken during the inspection are typical for Lincolnland's corn oil extraction process, which includes the use of chemicals. MDN 878 at 89; MDN 932 at 23; MDN 986 at 32; MDN 1179 at 15.
13. Lincolnway
In the Lincolnway plant, syrup is transferred either from the sixth, seventh or eighth evaporator (in an eight-evaporator system), and a chemical additive is pumped into that stream before the mixture is pumped into one of two Westfalia disk stack centrifuges. MDN 878 at 27; MDN 932 at 23-24; MDN 986 at 13; MDN 1179 at 15. The Westfalia centrifuges have solids ejections and cleaning-in-place ("CIP") features, during which time no syrup is processed. MDN 932 at 23-24; MDN 930 at 1-2; MDN 1025 at 16. The temperature of the syrup coming out of the evaporators is approximately 180°F; the moisture content has been measured to be approximately 71%, although this may vary; the pH of the syrup going into the centrifuge has been measured to be approximately 4.12, although this may vary. 31 MDN 878 at 28; MDN 932 at 24-25; MDN 986 at 14; MDN 1179 at 15. The reduced oil syrup exiting the centrifuge is fed back into the evaporation stream and undergoes completion of the evaporation step of the process. MDN 878 at 28; MDN 932 at 25; MDN 986 at 14; MDN 1179 at 15. Upon completion of the evaporation process, the syrup emerging from the evaporator step flows to the syrup tank, which then is fed to the dryer units, where the syrup is sprayed onto the centrate undergoing continuous drying, with the end product being DDGS. Id.
On December 1, 2011, CleanTech performed a Rule 34 inspection of Lincolnway's facility during which two samples (A and B) were taken at fifteen sample locations (1-15); the samples were identified as LW-1A and B, through LW-15A and B. 32 MDN 878 at 89; MDN 986 at 33-34. CleanTech submitted sample set A for analysis to MidWest, where each sample was tested and separate test data sheets were generated that provided the test data for each *822 sample. Id. Samples LW-11A and LW-12A were taken from the oil stream exiting the two Westfalia disk stack centrifuges and MidWest's test data on those samples show oil concentrations of 97.4% to 97.6%. MDN 878 at 89 & 91; MDN 986 at 33 & 34. Samples LW-13A and LW-14A were taken from the reduced oil syrup streams exiting the two Westfalia centrifuges and MidWest's data on those samples show oil concentrations of approximately 1.97% to 3.17%. MDN 878 at 90-91; MDN 986 at 33 & 34. Sample LW-10A was taken from the syrup feed line into the Westfalia centrifuges and MidWest's test data on this sample show an oil concentration of approximately 5.09%. MDN 878 at 90. Based on this data, approximately 38% to 61% of the oil in the syrup was removed by the centrifuges. Id. at 91.
Although Lincolnway did not retain any samples during the Rule 34 inspection, it conducts spin tests on the reduced oil syrup, the results of which are reflected in a log. MDN 878 AT 90; MDN 932 at 26-27; MDN 986 at 34; MDN 1179 at 15. Lincolnway provided such data for over four-and-one-half years; but CleanTech limited its analysis to May 28, 2009, through May 30, 2009. MDN 932 at 26-30; MDN 878 at 90; MDN 986 at 34. Some of the test results CleanTech analyzed show "0" oil in the reduced oil syrup leaving the centrifuges. MDN 932 at 26; MDN 878 at 90; MDN 986 at 34. This is inconsistent with CleanTech's data for the samples it took on December 1, 2011. Id. CleanTech also analyzed Lincolnway's spin test data for May 28, 2009, through May 30, 2009, with respect to oil concentration in the oil stream exiting the centrifuges. MDN 878 at 91; MDN 932 at 28-29; MDN 986 at 34; MDN 1179 at 15. Lincolnway's test results for those days indicated oil concentrations in the oil stream leaving the centrifuge that ranged from approximately 89% to 95%. Id. Lincolnway's Laboratory Supervisor, Daniel Matlick ("Matlick"), testified that the overall process analysis indicates that the oil stream coming from the centrifuges "typically" has an oil content in the upper end of the range of 80% to 90%, with impurities (solids) representative of the remainder of the separated oil stream in the lower end of the range 10% to 20%. MDN 932 at 28-30. Lincolnway also further purifies the oil stream by using decanting tanks and oil load out procedures that reduce the level of impurities to an acceptable range of 2.0% to 3.0%. Id.
During the December 1, 2011, inspection, CleanTech took a photograph of samples LW-10A (syrup fed into centrifuge); LW-11A and LW-12A (oil stream exiting the two centrifuges); LW-11A and LW-12A (oil stream exiting the two centrifuges); and LW-13A and LW-14A (reduced oil streams exiting the two centrifuges). MDN 878 at 91; MDN 986 at 34-35. Although the material has settled, the compositions have not changed, but it has made the oil more observable. 33 Id. ; MDN 932 at 5-6, 30; MDN 1025 at 11; MDN 986 at 35; MDN 1179 at 15. Lincolnway performs other decanting and purifying activities after centrifugation to reduce impurities to no more than 2.0% to 3.0%. MDN 932 at 30.
14. United Wisconsin Grain Producers ("UWGP")
In the UWGP process, syrup from Evaporator 7, which is the eighth evaporator in an eight stage system, is pumped to a separator and a surfactant is added to assist in separating oil in the centrifuge. 34 MDN 932 at 31-32.
*823 On December 11, 2011, CleanTech performed a Rule 34 inspection of UWGP's ethanol production facility and took four samples (A-D) at each of fifteen sample locations (1-15). MDN 878 at 93. CleanTech's samples labeled UW-1A through UW-15A, and UWGP's samples labeled UW-1C through UW-15C were sent for analysis to MidWest. Id. MidWest tested each sample and generated separate data sheets providing the test data for each sample, including the percentages of oil, moisture and other components present in the sample. Id. The following samples were obtained when UWGP was adding surfactant to the syrup as it entered the centrifuge: UW-1A and UW-1C, of the syrup entering the centrifuge; and UW-2A and UW-2C, of the reduced oil syrup exiting the centrifuge. 35 Id. at 94-95. The MidWest *824 test data on the samples taken when UWGP was adding surfactant show oil concentrations of: approximately 5.78% in the syrup entering the centrifuge, sample UW-1A; and approximately 1.28% and 1.81% in the reduced oil syrup leaving the centrifuge, samples UW-2A and UW-2C, respectively. Id. at 94-96.
The following samples were obtained when UWGP was not adding surfactant to the syrup as it entered the centrifuge: UW-13A and UW-13C, of the syrup entering the centrifuge; and UW-14A and UW-14C, of the syrup stream exiting the centrifuge. Id. at 94. The MidWest test data on the samples taken when UWGP was not adding surfactant show oil concentrations of: approximately 5.8% and 6.69% in the syrup entering the centrifuge, samples UW-13A and UW-13C, respectively; and approximately 3.65% and 3.65% in the reduced oil syrup leaving the centrifuge, samples UW-14A and UW-14C, respectively. Id. at 96.
Based on these sample results, approximately 69%-78% (with chemical additive) and 37% to 60% (without chemical additive) of the corn oil in the syrup stream entering the centrifuge was removed from the samples during disk stack centrifuging. Id.
UWGP objected to CleanTech SOMF 360 and Exhibit 129 (Declaration of Photographer During the Heartland Inspection and Exhibit A attached thereto), referenced therein, because the declaration refers to a single authentic photograph, but there are two photographs. MDN 932 at 33; MDN 878 at 97; MDN 883-48. The Court agrees that the declaration does not support admissibility of the photograph because it is written in the singular and there are two photographs. Therefore, the Court SUSTAINS UWGP's objection to CleanTech SOMF 360 and will not consider the information contained in CleanTech SOMF 360 or that in CleanTech SOMF 362, which relies, in part, on CleanTech SOMF 360. See Fed. R. Civ. P. 26(e) ; S.D. Ind. L.R. 56-1. UWGP also objected to CleanTech SOMF 361 as a statement of a legal conclusion and not supported by the evidence, MDN 932 at 33-34, MDN 878 at 97; the Court SUSTAINS that objection on the grounds that the statement is a legal conclusion.
C. INDUCED/CONTRIBUTORY INFRINGEMENT FACTS
GEA has been selling centrifuges for separating components of mixtures in industrial settings for over 100 years. MDN 935 at 6. In 1998, GEA was approached by a customer that was experiencing fouling in the evaporator of its plant. MDN 935 at 7. Converting an "off the shelf" centrifuge, GEA demonstrated that it would be possible to remove corn oil from a clarified (some solids removed) thin stillage before it was concentrated in the evaporator. MDN 935 at 7; MDN 1025 at 17.
After the inventors filed the '050 provisional application in 2004 that led to the '858 patent family, they began to market the corn oil extraction method. MDN 1025 at 18.
Although GEA marketed centrifuges to the ethanol industry as early as 1998, MDN 1025 at 18, in March 2005, a customer approached GEA regarding separating corn oil from concentrated thin stillage using a centrifuge. MDN 935 at 7. Although GEA conducted a spin test to demonstrate that it could be done, id. , GEA never successfully installed an operable oil recovery system at the customer's plant following the bench test. MDN 1025 at 17. GEA also performed another test to recover oil for which it converted its equipment *825 to separate liquid/liquid/solids. MDN 1025 at 21. GEA's Rule 30(b)(6) witness testified that, afterward, before GEA was aware of the patents and before they published as applications, GEA began marketing its centrifuges for the purpose of recovering oil. 36 MDN 935 at 7. Further, GEA used centrifuges that it had previously marketed in the vegetable oil industry for this application because they were the right size. MDN 935 at 7; MDN 938-1 at 23-24. Literature produced in this litigation suggests that GEA did not begin this marketing until it had performed in-plant tests. MDN 1025 at 17 & 19; MDN 1037-19 at 2; MDN 1085 at 9.
Before the asserted patents issued, GEA told its customers it was extremely unlikely that any such patent would ever issue. MDN 935 at 9; MDN 1025 at 21. After Notice of Allowance issued from the USPTO, executives at GEA were still skeptical of the patent's validity. Id.
The first of the asserted patents was published on February 23, 2006, and issued on October 13, 2009. Id. at 7.
In July 2009, GreenShift (predecessor to CleanTech) sent letters to specific ethanol manufacturers that GreenShift believed were practicing its corn oil extraction method. MDN 1025 at 19. In September 2009, GEA filed a lawsuit in the United States District Court for the Southern District of New York alleging unfair competition and other claims against CleanTech based on the letters. MDN 1025 at 19.
On the date the '858 patent issued, CleanTech filed a patent infringement suit against GEA and GEA amended its pending lawsuit against CleanTech to seek a declaratory judgment that the patent was invalid and not infringed. MDN 1025 at 19-20; MDN 935 at 9. In addition, GEA considered indemnifying new customers and made a few offers, but changed its mind and did not indemnify any plants. Id. GEA also stopped placing ad buys to market its centrifuges to the industry. Id. at 10. However, it continued to sell centrifuges to dry mill corn ethanol plants if they either (a) represented that it had a license to practice the asserted patents; or (b) agreed to indemnify GEA from any patent infringement action based on the asserted patents. Id. For example, CleanTech asserts that GEA sold centrifuges for corn oil recovery to non-parties POET and Archer Daniels Midland. MDN 1025 at 18; MDN 935 at 10. CleanTech presents no evidence that POET or Archer Daniels Midland ("ADM") (or any other non-party) infringes the patents-in-suit. MDN 1025 at 18 & 21; MDN 935 at 10; MDN 1085 at 8.
GEA has ongoing service contracts with some of its customers in the ethanol industry (Adkins, for example), MDN 1025 at 20; but, other customers perform their own service or contract with third parties. 37 MDN 1025 at 20; MDN 1085 at 10 & 11. In addition, at least as to one customer, after the patents issued, GEA provided guidance on troubleshooting when the customer was concerned about efficiency of oil recovery. MDN 1025 at 20; MDN 1085 at 10-11. In *826 July 2009, GEA was present for the start-up of one of its centrifuges at UWGP, although it had not installed the equipment. MDN 1025 at 20; MDN 1085 at 10. GEA also participated in a "two-year significant rebuild" at Iroquois, although there is no explanation for what that entails; Iroquois performs the vast majority of its own maintenance. MDN 1025 at 20; MDN 1085 at 11-12. Further, GEA sells different types of equipment to ethanol plants including, among others, pumps, control panels, and tanks. MDN 1085 at 10. It also sells different types of centrifuges to those plants for different, non-infringing purposes. 38 MDN 1085 at 10.
CleanTech filed its amended infringement contentions on February 11, 2013, in which it claims that GEA infringes because it "markets, offers for sale and sells corn oil extraction systems to ethanol plants; manufactures and installs the corn oil extraction systems for ethanol plants and actively induces ethanol plants to use the systems ... to extract corn oil ...." MDN 935 at 7-8. The remaining contention duplicates CleanTech's infringement contention against Ace, a GEA customer; there is no further detail as to how GEA induces infringement. Id. at 8.
In addition, when asked to identify "each and every alleged direct infringer" of the asserted patents whose infringement was allegedly induced by GEA, CleanTech listed Ace, Adkins, Bushmills, CVEC, Heartland, Iroquois, and UWGP. Id. CleanTech objected to identification of additional GEA customers that are not defendants in this litigation contending that the request was "overly broad, unduly burdensome, and neither relevant to the claims or defenses of any party nor reasonably calculated to lead to the discovery of admissible evidence." Id. However, CleanTech's expert, John McKenna ("McKenna"), prepared an expert report in which he opined that an additional Plant Defendant, Blue Flint, infringed the asserted patents by GEA. Id. But no expert proffered by CleanTech has opined that GEA induced or contributed to a Plant Defendants' alleged infringement of any of the asserted patents. Id. All eight of the GEA Plant Defendants identified by CleanTech purchased their centrifuges before October 13, 2009. Id.
CleanTech has not conducted any third-party discovery relating to allegations of infringement by any GEA customer who is not a Defendant in this MDL. MDN 935 at 10.
GEA has neither relied upon nor produced any opinions of counsel. MDN 1025 at 21.
D. THE PATENTS-IN-SUIT
1. The '858 Patent Family
The '858 patent family is directed to the recovery of oil from thin stillage. Although dependent claims are at issue as well, the Court sets forth the asserted independent claims of the patents to give context to the infringement discussion. Additional claim elements in disputed dependent claims will be set forth as necessary.
The disputed independent claims of the '858 patent family read:
1. A method of recovering oil from thin stillage, the method comprising, in sequence: evaporating the thin stillage to remove water and form a concentrated byproduct; and recovering oil from the concentrated byproduct by heating and mechanically processing the concentrated byproduct to separate the oil from *827 the concentrated byproduct, wherein the concentrated byproduct has a moisture content of greater than 30% and less than 90% by weight.
* * *
8. A method of recovering oil from thin stillage, comprising, in sequence: evaporating the thin stillage to create a concentrate having a moisture content of greater than 30% by weight and less than about 90% by weight; and centrifuging the concentrate to recover oil.
* * *
10. A method of processing whole stillage, comprising: recovering thin stillage from the whole stillage, the thin stillage including oil and solids; concentrating the thin stillage including the solids to produce a thin stillage concentrate, wherein the thin stillage concentrate has a moisture content of greater than 30% and less than 90% by weight; and recovering oil from the concentrate by a process consisting essentially of heating and mechanically processing the concentrate to separate the oil from the concentrate.
* * *
16. In a method for processing corn to produce ethanol and concentrated thin stillage, the improvement comprising the step of recovering a product consisting essentially of oil from the concentrated thin stillage by heating and mechanically processing the concentrated thin stillage to separate the oil from the concentrated thin stillage.
'858 Patent, col5 I.66 to col6 l.64.
The disputed independent claims of the '516 patent read:
1. A method of recovering oil from thin stillage; the method consisting essentially of, in sequence:
evaporating water from the thin stillage to form a thin stillage concentrate, wherein the thin stillage concentrate has a moisture content of greater than 30% and less than 90% by weight before the recovering step;
mechanically processing the thin stillage concentrate to separate oil from the thin stillage concentrate; and
recovering the separated oil.
* * *
7. A method of processing whole stillage, comprising, in sequence:
separating distiller wet grains and thin stillage from the whole stillage, the thin stillage including oil and solids;
concentrating the thin stillage including the solids to form a concentrate having a moisture content of greater than 30% and less than 90% by weight; and
disc [sic] stack centrifuging oil from the thin stillage concentrate to form a substantially oil free concentrate.
'516 Patent, col6, l.11 to col 6, l52.
The asserted independent claim of the '517 patent reads:
1. A method of recovering oil from thin stillage, comprising: evaporating the thin stillage to create a concentrate having a moisture content of greater than 15% by weight and less than about 90% by weight; and centrifuging the concentrate to recover oil.
'517 Patent, col 6, ll32-37.
The asserted independent claims of the '484 patent read:
1. A method of recovering oil from thin stillage; the method consisting essentially of, in sequence:
evaporating water from the thin stillage to form a thin stillage concentrate, wherein the thin stillage concentrate has a moisture content of greater than 30% and less than 90% by weight before recovering step;
mechanically processing the thin stillage concentrate to separate oil from the thin stillage concentrate;
recovering separated oil; and *828 drying the thin stillage concentrate to reduce the moisture content in the thin stillage concentrate.
* * *
8. A method of processing whole stillage, comprising, in sequence:
separating distiller wet grains and thin stillage from the whole stillage, the thin stillage including oil and solids;
concentrating the thin stillage including the solids to form a thin stillage concentrate having a moisture content of greater than 30% and less than 90% by weight;
disc [sic] stack centrifuging oil from the thin stillage concentrate to form a substantially oil free concentrate; and
drying the thin stillage concentrate to reduce the moisture content in the thin stillage concentrate.
* * *
16. A method of recovering oil from thin stillage, comprising, in sequence:
evaporating the thin stillage to create a thin stillage concentrate having a moisture content of greater than 30% by weight and less than about 90% by weight;
centrifuging the thin stillage concentrate to recover oil; and
drying the thin stillage concentrate to reduce a moisture content in the thin stillage concentrate.
* * *
19. A method of recovering oil from thin stillage, the method comprising, in sequence:
evaporating the thin stillage to remove water and form a concentrated by product, wherein the concentrated byproduct has a moisture content of greater than 30% and less than 90% by weight;
recovering oil from the concentrated byproduct by heating and mechanically processing the byproduct to separate the oil from the concentrated byproduct; and
drying the concentrated byproduct to reduce the moisture content in the concentrated byproduct.
* * *
30. A method of recovering oil from thin stillage; the method comprising
evaporating water from the thin stillage to form a thin stillage concentrate, wherein the thin stillage concentrate has a moisture content of greater than 30% and less than 90% by weight;
mechanically processing the thin stillage concentrate to separate oil from the thin stillage concentrate; and
recovering the separated oil.
'484 Patent, col6, l. 9 to col8, l.37.
In its claim construction orders, the Court construed the claims as follows:
*829 Claim Term Construction "concentrate" / "concentrated byproduct" / "syrup containing water, oil and solids resulting "concentrated thin stillage" from the concentrating or evaporating process" "mechanically processing" "to subject to a mechanical device (or devices) to effect a particular result" "heating and mechanically processing the "the Concentrate Term (as set forth above) concentrate/concentrated subjected to heat and a mechanical device (or byproduct/concentrated thin stillage to devices) to extract a product that is separate the oil from the substantially (meaning largely or mostly) oil concentrate/concentrated from the Concentrate Term (as construed byproduct/concentrated thin stillage" above)" "centrifuging the concentrate to recover oil" "processing the concentrate (as set forth above) with a centrifuge to separate the oil from the concentrate so that the oil stream coming out of the centrifuge is substantially (meaning largely or mostly) oil" "substantially oil free concentrate" "the syrup exiting the centrifuge is largely or mostly oil free compared to the incoming thin stillage"
2. The '037 Patent
The '037 patent states that it is directed to "[m]ethods and related systems [to] efficiently and effectively recover a significant amount of valuable, useable oil from byproducts formed during a dry milling process used for producing ethanol." '037 Patent, Abstract. The '037 patent is a continuation of and claims priority to International Patent Application No. PCT/US2006/009238, filed on March 15, 2005. The application that matured into the '037 patent, Application Serial No. 11/856,150, was filed on September 17, 2007. Id. at 1. The claims of the '037 patent appear to be directed to the invention more particularly described in Figure 5, the Summary of the Invention and the Detailed Description of the Invention at column 2, line 62 to column 3, line 12; column 7, line 11 to column 8, line 4. As stated in Claim 1, the '037 patent ed invention is, in general, "[a] method of processing thin stillage concentrate created during a dry milling process used for producing ethanol from corn," which includes at least three steps: (1) recovering oil from thin stillage concentrate; (2) subsequently evaporating the post-oil recovery thin stillage concentrate to reduce its moisture content; and (3) mixing the evaporated post-oil recovery thin stillage concentrate with distillers wet grains. Id. col10, ll47-67. The specification of the '037 patent incorporates by reference the disclosure of the '858 patent. '037 Patent, col5, ll19-23. Winsness is the sole inventor of the '037 patent ed technology. Id. , Inventor.
Although more claims are at issue, the independent claims of the '037 patent read:
1. A method of processing thin stillage concentrate created during a dry milling process used for producing ethanol from corn, comprising:
recovering oil from the thin stillage concentrate
and subsequently evaporating the thin stillage concentrate in an evaporator to further reduce a moisture content and form an evaporated thin stillage concentrate, wherein the evaporated thin stillage concentrate has a lower moisture content than the thin stillage concentrate; and
mixing the evaporated thin stillage concentrate with distillers wet grains.
* * *
10. A method of processing thin stillage created by a dry milling process used for producing ethanol from corn in order to recover oil, comprising:
*830 evaporating the thin stillage to reduce a moisture content and form a thin stillage concentrate;
introducing the thin stillage concentrate to a disk stack centrifuge and separating at least a portion of the oil from the thin stillage concentrate and subsequently
evaporating the thin stillage concentrate to further reduce the moisture content of the thin stillage concentrate and form an evaporated thin stillage concentrate; and
mixing the evaporated thin stillage concentrate with distillers wet grains.
* * *
13. A method of processing thin stillage created by a dry milling process used for producing ethanol from corn in order to recover oil, comprising:
evaporating the thin stillage to reduce a moisture content and form a thin stillage concentrate, wherein the evaporating [sic] the thin stillage comprises using a multi-stage evaporator to form the concentrate from thin stillage;
introducing the thin stillage concentrate to a centrifuge and separating oil from the thin stillage concentrate, wherein the step of introducing the concentrate to the centrifuge is completed before a final stage of the multi-stage evaporator;
evaporating the thin stillage concentrate to further reduce the moisture content of the thin stillage concentrate and form an evaporated thin stillage concentrate; and
mixing the evaporated thin stillage concentrate with the further reduced moisture content with distillers wet grains.
* * *
15. A method of processing concentrated thin stillage created during a dry milling process used for producing ethanol from corn, comprising:
recovering oil from the concentrated thin stillage, wherein recovering the oil from the thin stillage concentrate comprises introducing the thin stillage concentrate to a centrifuge prior to a final stage of a multi-stage evaporator; and
evaporating the concentrated thin stillage to reduce a moisture content and form an evaporated thin stillage concentrate prior to mixing with distillers wet grains, wherein the evaporated concentrated thin stillage has a lower moisture content than the concentrated thin stillage.
'037 Patent, col10, l.57 to col12, l.48.
After a Markman hearing, on May 8, 2013, the Court issued a claim construction order and construed the disputed terms as follows:
*831 Term(s) Court's Construction "thin stillage concentrate"/"concentrated thin "syrup containing water, oil and solids resulting stillage"/"the concentrate from the concentrating or evaporating process" "recovering oil/separating oil" "obtaining (recovering)/extracting (separating) a product that is substantially oil," where substantially means "largely or mostly" "subsequently evaporating the thin stillage "to subject the post-oil recovery thin stillage concentrate in an evaporator to further reduce concentrate to further or additional a moisture content and form an evaporated evaporation" thin stillage concentrate"/"subsequently evaporating the thin stillage concentrate to further reduce the moisture content of the thin stillage concentrate and form an evaporated thin stillage concentrate"/"evaporating the thin stillage concentrate to further reduce the moisture content of the thin stillage concentrate and form an evaporated thin stillage concentrate"/"evaporating the concentrated thin stillage to reduce a moisture content and form an evaporated thin stillage concentrate prior to mixing with distillers wet grains" "mechanical processing" "to subject to a mechanical device (or devices) to effect a particular result"
IV. CLAIM SCOPE ISSUES
There are several claim scope issues raised by the parties' briefs. The Court addresses each one in turn.
A. THE "OIL" & "SUBSTANTIALLY FREE OF OIL" TERMS
As previously mentioned, Cardinal challenges the Court's construction of the so-called "oil" term where the Court has construed the term " oil" to mean "substantially (meaning largely or mostly) oil." MDN 924. The Plant Defendants also urge the Court to further refine the scope of "substantially oil free," where the Court has construed "substantially" to mean "largely or mostly," or reject CleanTech's evidence as to this term because CleanTech's expert's conclusion that 51% of the oil removed meets the definition is without a scientific foundation. MDN 932 at 44-49.
1. "Oil"
With respect to the term "oil," Cardinal argues that the Court has improperly rewritten the scope of the claims by concluding that "oil" means "substantially oil," which means "largely or mostly oil," because adding "substantially" allows for greater leeway than the term "oil" alone. MDN 924 at 2-3. Cardinal contends that "[t]he patentee's choice of language did not equivocate as to the nature of the oil recovered, or include as part of the recovery anything other than oil. The use of the term 'substantially' is a known claiming method to prevent exactness as to the claimed outcome. The patentee did not include such language in its claims." Id. at 3-4. Further, Cardinal asserts that the specification confirms that the patentees meant what they said, "oil," without qualification. Id. at 4-6. Further, without guidance in the '858 patent for the scope of the Court's "substantially oil" definition, Cardinal argues that "CleanTech has taken the liberty of reading the 'substantially oil' limitation on a wide range of oil quan[tities] represented by CleanTech's testing of all Defendants' product streams exiting the centrifuge." Id. at 6-7.
CleanTech asserts that there is no basis for reconsideration of the Court's claim construction because Cardinal's arguments are not new. MDN 1025 at 43-45 (citing, inter alia , MDN 120, 688, 692 and 694). Further, CleanTech argues that Cardinal is merely asking the Court to limit the *832 term oil to the amounts and or teachings of Figure 2, which has been rejected as the proper way to interpret the "oil" term. Id. at 45. CleanTech also contends that the experts understood the Court's construction to mean that the oil stream contained at least 51% oil; therefore, the term is not indefinite. Id. at 45. In addition, CleanTech incorporated by reference its previous arguments regarding proper construction of the "oil" term. Id. at 46 (citing MDN 118, 121, 464).
The '037 Defendants repeat Cardinal's argument with respect to the term "oil" in the '037 patent. In support of their argument, the '037 Defendants specifically reference the use of the term "oil" in the '858 patent family specification as well as similar, un-modified usages of the term in the '037 patent specification and claims. MDN 1072 at 35-41. They agree that the Court impermissibly broadened the scope of the claim language that was intended to be narrow. Id. at 40-41. In response to these arguments, CleanTech asserts that the Court has declined to re-address this term before and should do so again and states in a footnote that if the Court should decide to reconsider the issue, CleanTech would like the opportunity to brief it. MDN 1160 at 12-13 & n.1.
The Court declines Cardinal's and the '037 Defendants' invitation to reconsider construction of the term "oil." It is true that the term "oil" in the claims of the '858 patent family is not preceded by a qualifier; however, that could mean anything from "any amount of oil" to "pure oil" and anything in between. In its past claim construction orders, the Court endeavored to follow the pertinent claim construction rules to identify any quantity or quality limitations on the term "oil" in the intrinsic evidence. The Court has consistently concluded that the specification identifies the invention broadly enough in too many places to limit the scope of the term "oil" to the quantity/quality delineated by the descriptions of the preferred embodiments. See MDN 169 at 20-23; MDN 784 at 20-23; MDN 118 at 14-15; MDN 121 at 17-21; MDN 464 at 17. In other words, the Court has found no principled way within the intrinsic evidence to limit the "oil" term other than to adopt CleanTech's proffered language of "substantially," meaning "largely (but not wholly) or mostly." The inventors simply did not include in the claims any efficiency or quantity/quality requirements with respect to the "oil" term.
Yes, descriptions of the preferred embodiments refer to usable oil, col3, ll53-55; col3, l59 to col4, l7; but many other aspects of the invention are more broadly written. '858 Patent, Abstract; col2, ll21-22, 26-27, 37; col2, ll43-44; col2, ll51, 54; col 2 l61. Further, the specification leaves open the specific parameters under which one of ordinary skill in the art can obtain the results identified in the preferred embodiment. The '858 patent family specification teaches:
Reference is made to FIGS. 3 and 4 , which illustrate a prophetic comparison between one processing method and the inventive method. The set-up is essentially the same as shown in FIGS. 1 and 2 , but a more effective centrifugal decanter is used than the one used in Example 1. As a result, the syrup introduced to the disk stack centrifuge 14 would have a moisture content estimated at 60% by weight. While this does not impact the product value figures, the syrup from the centrifuge 14 has a moisture content of only 66.6% by weight as compared to 82.5% by weight in Example 1. As a result, the cost per hour of drying this syrup when combined with the distillers wet grains to achieve an end product having a moisture content of less than 10% is only $158.92, or approximately 40% less. Assuming a *833 savings in dryer efficiency of 10%, the product value per hour ($678.46) less the estimated dryer operating cost ($143.03 per hour) and less the estimated evaporator operating cost ($74.96 per hour) is $460.46 per hour. This represents an approximate 15% increase over the corresponding value calculated for Example 1.
As should be appreciated, the above-described method and subsystem of the preferred embodiment essentially require the addition of a centrifuge downstream of the evaporator in the conventional system for processing thin stillage (which centrifuge may thus be considered a "means for" recovering thin stillage). Accordingly, instructions on how to implement the above-described method (including the optimum process variables) may be provided along with a centrifuge for use in an ethanol plant for forming the novel subsystem 10 disclosed herein. Such instructions result in the most efficient implementation of the method, as compared to the situation where the scientists or engineers at the plant must experiment with the centrifuge to determine the optimum process conditions required to achieve a favorable result.
'858 Patent, col5, ll7-41. "[T]he novel subsystem 10 " identified in the second paragraph here refers to an evaporator and the mechanical processing system. Id. col 3, ll6-20 & Fig. 2. The Court interprets this to mean that the inventors purposefully avoided specific qualitative and/or quantitative features in the claims because the "optimum process variables" that would "result in the most efficient implementation of the method" were not necessary to the inventive method.
There is nothing in the prosecution history that limits the term "oil" to the quantitative/qualitative amounts in the preferred embodiment either. The primary statement the inventors relied upon to distinguish their invention from prior art had nothing to do with efficiency, or the quantity or quality of the oil recovered. Rather, the patentees emphasized that their invention taught "a post evaporation process for recovering oil from the concentrated byproduct by heating and mechanically processing as in claim 1 and 16 or by centrifuging as in claim 14." MDN 120-5 at 104 (emphasis in original).
Although the consequences for arguing for and obtaining a broad construction may have unintended results, again, the Court will not import limitations from the specification into the claims when such a result is not mandated by the intrinsic evidence. For these reasons, the Court will not narrow the construction for the term "oil."
2. "Substantially Oil Free"
The term "substantially oil free" appears in independent claim 7 of the '516 patent, '516 Patent, col6, l.42; and independent claim 8 of the '484 patent, '484 Patent, col6, l.47. Although the Defendants have argued that it is a necessary limitation in all the claims of the '858 patent family, the Court rejected that argument. MDN 784 at 10-14. In the instant motions, the Plant Defendants argue that CleanTech's expert's, John McKenna's ("McKenna's"), testimony that any process infringes the "substantially oil free" term so long as more than 50% of the oil entering the mechanical oil-recovery device is removed, MDN 932 at 45, should be rejected because it is not based on any scientific standard or analysis. Id. at 44-49. Specifically, McKenna testified that his opinion that the reduced oil syrup leaving the mechanical processing device is "substantially free of oil" when it contains less than 50% of the oil present in the stream entering the centrifuge is based on his "common sense" understanding of the Court's claim construction. Id. at 45-46. In fact, McKenna stated that he was "going basically on *834 the verbiage that's been used which says mostly or largely, right.... I have arbitrarily set up that 50, 51 percent." MDN 949-8 at 3 & 5 (stating that 51% is the phrase or number he would "throw out" to describe syrup that is substantially oil free). However, in his reports, he repeatedly used the phrase "a reasonable degree of scientific certainty" to describe his opinions regarding infringement. MDN 932 at 46; MDN 949-8 at 5. Which in turn means that it is "based on chemical engineering practice, ... the laws of physics, the laws of chemistry, the laws of organic chemistry, that you are using that knowledge to be able to ... assist in setting up the performance of a centrifuge or a process or a system ...." MDN 949-8 at 5.
In addition, the Plant Defendants argue that their own expert, Professor David Rockstraw ("Rockstraw"), "opined that scientific principles require the term 'substantially oil free' to mean that at least 90% of the oil present in the incoming stream is removed." MDN 932 at 47. And, other courts have construed similar claim terms of "substantially: or "mostly" to mean "completely or nearly so," id. (quoting Alwin Mfg. Co. v. Global Plastics , 629 F.Supp.2d 869 , 871 (E.D. Wis. 2009) ), among other similar phrases that mean "largely or mostly all." Id. Further, the Plant Defendants argue that such a definition comports with the specification of the '858 patent family in Figure 2, which describes an oil-recovery percentage of 95%. Id. at 47-48.
CleanTech responds that McKenna's testimony regarding the scope of the "substantially oil free" term is based on common sense; which is not arbitrary. MDN 1025 at 39 (citing MDN 1025 at 13). Further, CleanTech asserts that McKenna also testified that he reviewed the '858 patent family specification before he formed his opinion about the percentage of oil removal, including the following sentence, "Moreover, removal of the majority of the oil before the drying step makes the process more efficient, and results in an estimated energy savings of approximately 10 percent, or $26.27 per hour." MDN 1037-4 at 15. Apparently, McKenna construed "majority" to mean 51% of the oil is removed. CleanTech also argues that Rockstraw conceded that the Court's construction meant that 51% removal of oil would infringe the claims; however, Rockstraw only conceded that it had been interpreted that way, not that it was a correct, scientific determination.
Contrary to the situation with the term "oil," the Court concludes that "substantially" or "largely or mostly" with respect to the "substantially oil free" term cannot possibly mean a preponderance, as suggested by CleanTech's expert, in the context of the '858 patent family. The Court has determined the reduced oil syrup stream must be "substantially free of oil" in comparison to the incoming stream. MDN 784 at 19-20. In systems where the incoming oil concentration is often near 5%, it is nonsensical for substantially oil free to mean that 51% of the oil has been removed. This is particularly true in light of the language in the specification that CleanTech and its expert allegedly relied upon, which teaches that removal of the majority of the oil leads to efficiencies in drying the combined DDG and reduced oil thin stillage. MDN 102-5, '858 Patent, col4, ll63-66. See also MDN 1238 at 2-3 (discussing the meaning of this language in the specification with respect to enablement of the "oil" term). When the oil percentage in the incoming stream is already a very low 5%, there is no basis to conclude that any efficiency would be gained if the reduction in oil content of the thin stillage component was only 51%. Reading that statement in the specification in the context of the actual claim language, or even the Court's construction of "largely *835 or mostly," it is clear that the requirement is more than a preponderance; it is largely or mostly all.
To the extent any clarification of the scope of the " substantially free of oil" term is necessary, the term requires the reduced oil thin stillage stream to be "largely or mostly all" free of oil.
B. THE "MECHANICAL PROCESSING" TERM
The Plant Defendants claim that the invention in the '858 patent family is limited to processes that use certain mechanical means exclusively to recover oil. MDN 932 at 34-35; MDN 1096 at 8-16. Specifically, the Plant Defendants aver that the patentees disavowed chemical processing. They argue that each of the patents in the '858 patent family specifically discloses that oil is recovered from concentrated thin stillage only through "relatively simple mechanical processing, without the prior need for multiple stages of filtration or other expensive and complicated undertakings." '858 Patent, col3, ll53-58; MDN 932 at 32. CleanTech also argued to the Patent & Trademark Office ("PTO") examiner that:
Here, the Examiner cites to class 554, subclass 7 in characterizing the invention of claims 1021, which she contends is a "method of recovering oil." However, this class relates to "organic compounds" and related processes including a phenolic preservative or stabilizer. Accordingly, Applicant's "method of recovering oil" would not appear to be properly classified in this class as a subclass, since the invention in no way relates to the use of any preservative or stabilizer."
MDN 932 at 36. The Plant Defendants contend that, here, the patentees disavowed the use of any organic compounds. MDN 1096 at 11. Initially, the Examiner had referenced U.S. Class 554/7 (designating specific phenolic preservatives or stabilizers), rather than U.S. Class 554/8 (Organic Compounds), MDN 1137 at 6-7; the latter appears in the '858 patent family specification. Id.
CleanTech further argued, over a prior art patent to Yokoyama, that:
... It is only because of the chemical reaction ... that phase separation occurs.... Thus, it can be inferred by one skilled in the art that without the addition of the sodium carbonate catalyst, Yokoyama was unable to separate the oil from the stillage.
* * *
... One of the problems with prior processes [for recovering oil] is that because thin stillage has relatively high water content, previous attempts to recover oil prior to evaporation have generally been unsuccessful or economically impractical. For example, pre-evaporation processes that utilize centrifugation by itself results in formation of an undesirable emulsion, which would require additional processing to separate the oil.... With regard to post evaporation oil recovery processes, prior art processes have been limited to solvent extraction as discussed above and microfiltration.... Applicant's claimed processes provide a novel solution that is efficient and economical for recovering oil from thin stillage.
* * *
There is no heating of thin stillage and thus no evaporation to form a thin stillage concentrate. This is a critical feature because it is believed that the formation of thin stillage concentrate by evaporation frees some of the bound oil within the thin stillage. The "freed" oil breaks the emulsion of the thin stillage to permit mechanical processing.
*836 MDN 932, at 36; MDN 1096 at 11-12 (emphasis in original). The Plant Defendants contend that this is a clear disavowal of the use of chemicals to break the emulsion or otherwise prepare the thin stillage prior to mechanical processing. MDN 1096 at 10-11; id. at 14-15.
In addition, CleanTech distinguished its claims over a prior art application of Prevost stating:
... A solvent extraction process is not the same as mechanically processing the thin stillage concentrate to separate oil from the thin stillage concentrate .... Applicants have carefully studied Prevost and can find no teaching or suggestion of a post evaporation process for recovering oil from the concentrated byproduct by mechanical processing as in claim 31 ....
MDN 932 at 36-37 (emphasis in original). Again, the Plant Defendants assert that this is a clear disavowal of any chemical processing or "other expensive and complicated undertakings." Id. at 36-38. MDN 1096 at 8-11.
Moreover, the Plant Defendants argue that, having disavowed the use of chemical processing or any other undertaking, other than mechanical processing, CleanTech cannot reclaim chemical processes using "consisting essentially of" language in the preamble. MDN 932 at 38-41. The Plant Defendants explain that the use of the partially open claim language "signals that the invention necessarily includes the listed ingredients and is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention." Id. at 39 (quoting Ecolab, Inc. v. FMC Corp. , 569 F.3d 1335 , 1343 (Fed. Cir. 2009) ; citing, inter alia , MPEP § 2111.03 (8th ed. Rev. 9, Aug. 2012) ). See also MDN 1096 at 13.
In addition, Adkins, Al-Corn and Iroquois claim that CleanTech has disavowed processes that screen solids from the thin stillage prior to centrifugation. MDN 1096 at 8-9; MDN 1100. Specifically, in distinguishing U.S. Patent 2,615,029 issued to Maurice M. Rosten in 1952 (the "Rosten patent" or "Rosten"), which is directed to separating oil from "distillers' slops" created during the production of beverage grade ethyl alcohol from corn, CleanTech has stated: "Unlike the method in the patents-in-suit, which extract oil from concentrated thin stillage including the solids, the oil/water emulsion stream from which Rosten extracts oil does not contain solids, and is not concentrated thin stillage." MDN 1096 at 8-9 (citing MDN 1028 at 106 (citing, inter alia , Rosten Patent, col2, ll28-33; col 2, l.50 to col3, l.3) ).
CleanTech asserts that there is no clear disavowal of claim scope; therefore the additional processes, either chemical or mechanical, are irrelevant to the infringement analysis. MDN 1025 at 29-31. Specifically, CleanTech argues that the Court has already concluded that the mechanical processing step is not limited to centrifugation. Id. at 31 (citing MDN 169 at 15, 18). Further, there is no "clear disavowal of claim scope" as required by the law. Id. at 31 (quoting AquaTex Indus., Inc. v. Techniche Solutions , 419 F.3d 1374 , 1381 (Fed. Cir. 2005) ; citing Home Diagnostics, Inc. v. LifeScan, Inc. , 381 F.3d 1352 , 1357 (Fed. Cir. 2004) ). First, although the specification recites that the patented inventions are unique because "[a]dvantageously, usable oil is then easily recovered from this concentrated form of the byproduct through relatively simple mechanical processing, without the prior need for multiple stages of filtration or other expensive and complicated undertakings," '858 Patent, col3, ll53-58, there is nothing in this language that excludes other steps. MDN 1025 at 32. Rather, this language just states those types of steps "are not needed to practice the patented process (nor are they required or excluded by the claims)."
*837 Id. (emphasis in original). In addition, CleanTech avers that the patentees' statements differentiating their process from one that relies exclusively on preservatives or stabilizers does not mean that the use of such in a process that otherwise infringes is disavowed. Id. at 33. Moreover, CleanTech asserts that the remaining quotes from the prosecution history of the '858 patent either discuss a different process altogether, id. at 34 (discussing the "prior processes" statement); emphasize the required element of evaporation, id. at 34-35 (distinguishing Prevost); or distinguish pure solvent extraction processes, id. at 35.
Also, CleanTech asserts that the claims using the "consisting essentially of" language can include chemical or filtration steps because those steps "do not materially affect the basic and novel properties of the invention-that is, to recover oil." Id. at 36. CleanTech further claims that the "basic and novel properties of the patents-in-suit are that they provide the recovery of oil from the back-end of an operating ethanol plant by centrifugation or other

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/7247498. Public record. Not legal advice.