# Opposition Brief — Kaliardos v. General Motors Corp. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386012_1470%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Opposition Brief - **Published:** January 1, 1995 - **Citation:** 514 U.S. 1110 ## Text No. 94-1574 i TRE CLERK IN THE SUPREME COURT OF THE UNITED STATES OCTOBER TERM, 1994 NICHOLAS KALIARDOS, Petitioner, GENERAL MOTORS CORPORATION, BASF CORPORATION, H.B. FULLER COMPANY, H.B. FULLER AUTOMOTIVE PRODUCTS, INC., and DAUBERT INDUSTRIES, INC., Respondents. ON PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT RESPONDENTS’ GENERAL MOTORS, BASF AND FULLER BRIEF IN OPPOSITION HERBERT FURMAN BERNARD J. CANTOR 29709 Deer Run (Counsel of Record) Farmington Hills, MICHAEL P. BRENNAN Michigan 48331 RoBER> S. NOLAN (810) 661-2293 HARNESS, DICKEY & Attorney for PIERCE, P.L.C. Respondent-Defendant 5455 Corporate Drive General Motors Corporation. Troy, Michigan 48098 (810) 641-1600 April 20, 1995 Attorneys for creed Washington, 0.C. « THIEL PRESS © (202) 328-3286 ILABLE COPY —— Respondents-Defendants. : (1) RULE 14.1(a) QUESTIONS PRESENTED BY PETITIONER . Did the magistrate-judge in the trial court err in hold- ing that the evidence produced by Plaintiff in response to Defendant’s motion for summary judgment did not create a genuine issue of material fact concerning whether accused products infringed asserted claims, either literally or under the doctrine of equivalents, such as to require a full trial? . Did the trial judge in the trial court err in adopting the “Report and Recommendation” of the magistrate- judge and dismissing Plaintiff’: action on the merits and by abusing his discretion in denying Plaintiff’s motion for leave to supplement his responses with a test report of his expert and/or in not granting Kaliar- dos’ request for an oral hearing? . Did the appeal court err in affirming the district court’s dismissal of Plaintiff-Appellant’s case concern- ing the evidence Kaliardos offered and the plain lang- uage and historical intent of the application of Federal Rule 56? .Is the federal judiciary using Rule 56 to rid their dockets of difficult cases and/or litigants and, if so, will such use of Rule 56 be allowed to continue? (1) PARTIES TO THE PROCEEDINGS RULE 14.1(b) All the parties in the court below are identified in the caption of the Petition. RULE 29.1 LIST OF PARENTS AND SUBSIDIARIES General Motors Corporation’s Rule 29.1 list is attached at Appendix D. BASF Corporation’s Rule 29.1 list is attached at Appendix E. H.B. Fuller Company’s Rule 29.1 list is attached at Appendix F. H.B. Fuller Automotive Products, Inc. is a wholly- owned subsidiary of H.B. Fuller Company. Daubert Industries, Inc.’s Rule 29.1 list of parents and subsidiaries appears in its separate Brief in Opposition to the Petition for Writ of Certiorari. (112) Page TABLE OF CONTENTS RULE 14.1(a) QUESTIONS PRESENTED Re PARTIES TO THE PROCEEDINGS RULE 14.1(b).......... ii RULE 29.1 LIST OF PARENTS AND SUBSIDIARIES ....... ii a iii TABLE OF AUTHORITIES, STATUTES AND oS v SUMMARY OF OPPOSITION TO CERTIORARI........... 2 COUNTERSTATEMENT OF CASE.................... % PACTUAL BACKGROUND .............0c ccc ccccene ' PROCEEDINGS IN THE DISTRICT COURT............. 9 KALIARDOS PATENT NO. 3,959,530................. 13 KALIARDOS PATENT NO. 4,356,036. ................ 15 KALIARDOS LACKS FACTUAL EVIDENCE OF SIMILARITY OF FUNCTION/WAY/RESULTS......... 16 KALIARDOS’ EXPERT TESTIFIED THAT BASF’S COATINGS DO NOT CONTAIN MOST OF THE INGREDIENTS SPECIFIED IN KALIARDOS’ ER 18 KALIARDOS’ EXPERT BYRD TESTIFIED THAT THE FULLER COATINGS DO NOT CONTAIN ALL OF KALIARDOS’ CLAIMED INGREDIENTS............. 19 KALIARDOS’ EXPERT GEECK TESTIFIED THAT DAUBERT’S COATING DOES NOT CONTAIN ALL OF THE CLAIMED INGREDIENTS ............. 20 EXCLUSION OF EVIDENCE ..... 0. ccc ccc ccc eens 21 (iv) Page THE QUESTIONS PRESENTED FOR REVIEW BY APPELLANT KALIARDOS UNDER CUES MAA og 555 ke ee 25 ‘1. Did the magistrate-judge in the trial court err in holding that the evidence produced by Plaintiff in response to Defendant’s motion for summary judg- ment did not create a genuine issue of material fact concerning whether accused products infringed asserted claims, either literally or under the doc- trine of equivalents, such as to require a full trial?” ....... 25 “*2. Did the trial judge in the trial court err in adopt- ing the ‘“‘Report and Recommendation”’ of the magis- trate-judge and dismissing Plaintiff’s action on the merits and by abusing his discretion in denying Plain- tiff’s motion for leave to supplement his responses witha test report of his expert and/or in not granting Kaliardos’ request for an oral hearing?”............+.. 26 ‘*3. Did the appeal court err in affirming the district court’s dismissal of Plaintiff-Appellant’s case concern- ing the evidence Kaliardos offered and the plain lang- uage and historical intent of the application of Federal MPP eT TCT E TEC CE RET TURE E TELL 27 **4. Is the federal judiciary using Rule 56 to rid their dockets of difficult cases and/or litigants and, if so, will such use of Rule 56 be allowed to continue?”’........ 28 Ge. cdc Rakha ee wba eer nee ewes 30 APPENDICES: Appendix A — Magistrate’s ‘Report and Recommen- «ve 6 a 63 Cee a ee 6 en a ee la Appendix B — District Court’s Opinion Granting Summary Judgment of Non-Infringement to Co-Defendants National Starch and Beazer East..........+0e0eee0:> 27a Appendix C — Order Granting Partial Summary Judg- sment of Mom-Infringement 2... ccc ccc ccwnsosasene 39a Appendix D — General Motors Corporation Rule 29.1 PEPPUPTTCTT TTT TC CUTE ETT Te 42a (v) Page Appendix E — BASF Corporation Rule 29.1 Statement ..... 49a Appendix F — H.B. Fuller Rule 29.1 Statement .......... 50a TABLE OF AUTHORITIES Cases: Adickes v. S.H. Kress & Co., 398 U.S. 144, 158 n.17 0 4d We 6 Be ae ok kok vbw wcl 26 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249-50, 91 L.Ed.2d 202, 212, 106 S.Ct. Sy SE EE 4 6 ws Co ek bee cea’. oot: 2, 3, 24 Arizona v. California, 460 U.S. 605, 618, 75 L.Ed.2d 318, 333, 1031 S.Ct. 1382, 1397 EE re 14 Buiiders Concrete, Inc. v. Bremerton Concrete Products Co., 757 F.2d 255, 257 (Fed. Cir. | 2,3, 22 Celotex Corp. v. Catrett, 477 U.S. 317, 322,91 L.Ed.2d 265, 273, 106 S.Ct. 2548, 2552 GI hb tg eno ek ee ee od he ole Rie 2, 23, 28 Fowle v. C&C Cola, 868 F.2d 59, 67 (3rd Cir. Pere 26 Graver Tank & Mfg. Co. v. Linde Air Products Co.. 339 U.S. 605, 609-10, 94 L.Ed. 1097, 1102, 70 S.Ct. 854, 856-57 has da hd we Ces es 3, Ba, ao Griffin v. M.D.O.C., 5 F.3d 186, 190 (6th Cir., eee 14 Intellicall, Inc. v. Phonometrics Inc., 952 F.2d 1384, Sa ir G dak obo deb 00 6s ye i vas hoe mk nk 25 Kaliardos v. General Motors et al., 777 F.Supp. 543 SESE EER Roce Ci re ee 20 Lear Siegler, Inc. v. Sealy Mattress Co. of Michigan, 837 F.2d 1422, 1425-26 (Fed. Cir. CE irae ee a 22-23 Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, Sr 4 Malta v. Schulmerich Carollons, Inc., 925 F.2d 1320, 1327, 1329 (Fed. Cir. 1991), reh. den., 959 F.2d 923 (1992), cert. denied, 119 L.Ed.2d 566 (vt) Cases, continued: _Page_ Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 1282 (Fed. Cir. 1986) .......... §, 22 Markman v. Westview Instruments Inc., 1995 U.S.App. LEXIS 7595, p. 21 (Fed. Cir., Apr. 5, 1995). ........... 14 Matsushita Electric Industrial Co., Ltd. v. Zenith Radio Corporation, 475 U.S. 574, 586-7, 89 L.Ed.2d 538, 552, 106 S.Ct. 1848 (1986) ............. 28 Smithkline Diagnostics Co. v. Helena Laboratories Corp., 859 F.2d $78, S89 (Fed. Cir. 1968)... 2c cc cece es 3, 22 United States v. Raddatz, 447 U.S. 667, 673-74, 65 L.Ed.2d 424, 432, 100 S.Ct. 2406 (1980) ............ 27 Statutes: Se es ITER: oc es be ea do esectueetenenas 26, 27 SG eer errr re ey ey eo os ee 4 Other Authorities: H.R. Rep. No. 94-1609 (1976)... ........0c cece ceoucs 27 RS MPC TECT CCIE ee 3, 27, 29 Se ee PINs oo 6 cee ca weesen tesco senvewss 25 RK Rt Seer rer rrr errr rrr eran ok 2, 24 ate BOGS FORA. cc ccc cer ees erdbaeerenseus as 26 gy a Re) Sore rr errr rT eT Tere. ee 26 No. 94-1574 IN THE SUPREME COURT OF THE UNITED STATES OCTOBER TERM, 1994 NICHOLAS KALIARDOS, Petitioner, GENERAL MOTORS CORPORATION, BASF CORPORATION, H.B. FULLER COMPANY, H.B. FULLER AUTOMOTIVE PRODUCTS, INC., and DAUBERT INDUSTRIES, INC., Respondents. ON PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT RESPONDENTS’ GENERAL MOTORS, BASF AND FULLER BRIEF IN OPPOSITION TO THE HONORABLE SUPREME COURT: The Respondents General Motors Corporation, BASF Corporation, H.B. Fuller Company and H.B. Fuller Auto- motive Products, Inc. respectfully request that this Court deny the Petition for Writ of Certiorari submitted by Petitioner Nicholas Kaliardos. ] 2 SUMMARY OF OPPOSITION TO CERTIORARI The Petition for Writ of Certiorari should be denied. Summary judgment of noninfringement was properly granted and affirmed because of the admitted lack of evidence that is required by the substantive patent law to prove infringement of the claims of the patents-in-suit. There is no genuine issue of any material fact; rather, there is an admitted absence of material facts that are essential to Petitioner’s prima facie case. Hence, “the plain language of Rule 56(c) [F.R.C.P.] mandates the entry of summary judgment.” Celotex Corp. v. Catrett, 477 U.S. 317, 322, 91 L.Ed.2d 265, 273, 106 S.Ct. 2548, 2552 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249-50, 91 L.Ed.2d 202, 212, 106 S.Ct. 2505, 2511 (1986) (‘‘There is no issue tor trial unless there is suffici- ent evidence favoring the nonmoving party for a jury to return a verdict for that party.’’) Specifically, there are only two ways to prove infringe- ment under the substantive patent law: (1) literal infringe- ment; and (2) “doctrine of equivalents” infringement. First, to prove literal infringement, the patentee has the burden of showing that every single one of the elements specified in at least one of his patent claims is actually found in the accused product. E.g., Butlders Concrete, Inc. v. Bremerton Concrete Products Co., 757 F.2d 255, 257 (Fed.Cir. 1985). Petitioner Kaliardos’ experts, how- ever, admitted that at least some of the ingredients specified in his patent claims are not found in the accused coating products. Thus, there was insufficient evidence to support a jury verdict of literal infringement so that summary judgment was mandated. Second, to prove infringement under the “doctrine of equivalents,’’ the patentee has the burden of showing that the accused product contains the same or the equivalent 3 of each ingredient specified in at least one patent claim AND that the accused product performs substantially the same function, in substantially the same way, to produce substantially the same result as the entire com- bination of ingredients specified in such patent claim. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609-10, 94 L.Ed. 1097, 1102, 70 S.Ct. 854, 856-57 (1950); Butlders Concrete, supra 757 F.2d at 258. In addition, the patentee must explain, by sub- stantial, comparative, factual evidence, how and why each of these three similarities exist. Malta v. Schulmerich Canillons, Inc., 925 F.2d 1320, 1327, 1329 (Fed.Cir. 1991), reh. den., 959 F.2d 923 (1992), cert. denied, 119 L.Ed.2d 566 (1992). Here, Petitioner Kaliardos’ expert testified that he has no factual evidence showing that the function/way/results of the accused coatings are similar to the combinations specified in the claims of the patents-in-suit. Thus, there was insufficient evidence to support a jury verdict of infringement under the “doctrine of equivalents’”’ so that summary judgment was mandated by Rule 56 F.R.C.P. There is no such thing as Kaliardos’ asserted ‘‘pre- sumption of infringement.’’ Under the substantive patent law, the patentee has the burden of proving infringement by a preponderance of evidence. Smithkline Diagnostics Co. v. Helena Laboratories Corp., 859 F.2d 878, 889 (Fed.Cir. 1988); Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 1282 (Fed.Cir. 1986). Petitioner Kaliardos’ litany of discovery disputes and discovery motions are not material to the summary judgment decision which focuses on Kaliardos’ failure to show all of the essential elements required by the sub- stantive patent law to prove infringement. Anderson, 477 U.S. at 247-48, 91 L.Ed.2d at 211 (1986) (‘Only 4 disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment. Factual disputes that are irrelevant or unnecessary will not be counted.”)! Petitioner Kaliardos’ case is based upon his notion, without any factual evidence whatsoever, that General Motors automobile assembly plant personnel must have secretly added the ingredients which Kaliardos lists in his patented recipes into the drums of coating which G.M. purchases, before spraying the coating into auto- mobile doors. Kaliardos simply does not believe the BASF records of the formulations it has used since 1953 to the present—nor does he believe the testimony and the numerous laboratory tests of his own experts—nor the Fuller and Daubert formulation and production records— nor the deposition testimony of numerous BASF, Fuller and General Motors past and present employees—nor the laboratory tests made by each of the Defendants. Yet, each clearly establishes that the accused coatings do not contain the ingredients set forth in his patent claims. The magistrate-judge summed up Kaliardos’ case as follows: My review of this record establishes that the form- ulas used by the defendants in manufacturing their coatings have repeatedly been shown not to contain the essential elements of the Kaliardos patents, through both the disclosure of the formulas and ltronically, if BASF’s accused coating actually did infringe, Kaliardos’ patents would be invalid under 35 U.S.C. §102(b) because BASF’s accused coating was “‘on sale’ by BASF and in use by General Motors for many years before Kaliardos made his inven- tions and before the filing dates of his patent applications. Lew- mar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed. Cir. 1987) (‘‘That which would literally infringe if later in time, antici- pates if earlier than the date of the invention.”’) 5 scientific testing of those formulas. There is simply no evidence in this record which would create a genuine issue of material fact as to whether any of the accused products infringe upon Kaliardos’ patents either literally or under the doctrine of equivalence. Simply put, plaintiff’s case is one that began with, and continues to rest upon, pure specu- lation and conclusion. This is insufficient to with- stand summary judgment. Accordingly, for the reasons stated, I respectfully recommend that the defendants’ motions for summary judgment be granted and that this matter be dismissed. [emphasis added]? COUNTERSTATEMENT OF CASE Petitioner Kaliardos’ Statement of the Case and State- ment of Facts omit most of the relevant facts. Therefore, Respondents state such relevant facts below. Petitioner Kaliardos is appealing from the Federal Circuit’s affirmance of the district court’s grant, based upon the magistrate-judge’s ‘‘Report and Recommenda- tion,” of three separate motions for summary judgment of non-infringement of Kaliardos’ patents. These motions were brought by: (1) General Motors Corporation (“G.M.”) and its supplier BASF Corporation, jointly; (2) Daubert; and (3) H.B. Fuller Company and its sub- sidiary H.B. Fuller Automotive Products, Inc., jointly (“Fuller”). This present Brief in Opposition to the Peti- tion for Certiorari is submitted on behalf of General Motors, BASF and Fuller. 2See attached Magistrate’s Report and Recommendation, p. 26a, Res. App. A. Note that page numbers cited as “‘A-__ ,”” in this brief refer to the Appendix which was submitted to the Federal Circuit. 6 Kaliardos complains that anti-rust, wax-type coatings which have been used by General Motors in some of its model automobiles, and which have been supplied by the other parties, infringe Kaliardos’ Patent Nos. 3,959,530 and 4,356,036. These two patents claim specific formu- lations or “recipes’’ for wax-type coatings. Each of the suppliers use different formulations or recipes which was the reason for their separate motions. FACTUAL BACKGROUND Starting in 1953, BASF (and its predecessors) supplied General Motors with a coating comprising a mixture of: (1) a synthetic wax; (2) a microcrystalline wax; (3) a hydrocarbon resin; and, (4) an aluminum particle pig- ment. These ingredients were dissolved in naphtha and mineral spirit solvents. The liquid coating was sprayed into the interiors of car doors and body parts of some, but not all, model cars. The solvents evaporated leaving a thin coating of wax-resin-pigment upon the metal sur- faces to protect against moisture and rusting. BASF supplied that coating, substantially unchanged (i.e., except for slight changes in percentages of ingredients) to G.M. for about 34 years, from 1953 until 1987), when it discontinued the product. Kaliardos complains that that coating infringed his patents, even though that coat- ing predates his patents by many years. The BASF coating meets the requirements of G.M.’s performance specification, No. 998-1128, which describes the tests the coating must pass. (A-656-660) In 1983, while still using BASF’s aluminum colored coating, G.M. began using a “‘clear”’ coating (i.e., actually a tan colored coating wihout aluminum pigment) which was supplied by Daubert and others. Fuller began supply- 7 ing its formulation of the “clear” coating after August 1988. This coating must meet the requirements of G.M.’s performance specification No. 998-2150. Kaliardos asserts that the Daubert formulations infringe both of his patents and that the Fuller formulation infringes only the earlier 530 patent. In 1972, about 19 years after G.M. began using the accused BASF coating, Nicholas Kaliardos, who was in the drycleaning business and who is a self-taught chemist, invented his first coating recipe, and filed the patent application which became the °530 patent-in-suit that issued May 25, 1976. Between 1973 and 1980, Kaliardos submitted a number of samples of different anti-rust coating formulations to the G.M. Fisher Body Division for performance testing. Mr. Kaliardos stated that “*[M] any of the coatings which the plaintiff supplied [to G.M.] do not relate to the patents-in-suit.” (Plaintiff's Response to Request No. 5, August 26, 1989). There is no evidence that any of the coatings that Kaliardos sup- plied contained the specific recipes set forth in his patent claims. The samples which he submitted did not meet G.M. specifications (G.M. engineer Reichel Dep., A-791). In 1980, G.M. advised Mr. Kaliardos that it would no longer test proposed samples because he “has yet to sub- mit any material that would meet our specifications” (A-674). In 1981, Kaliardos filed his second patent application which issued October 26, 1982 as Patent No. 4,356,036 (036). The specification of this patent includes a copy of portions of G.M.’s earlier published specification No. 998-1128 which relates to the aluminum colored coating that had been supplied by BASF since 1953. Regardless as to whether Kaliardos’ samples did or did not meet G.M.’s specifications, Mr. Kaliardos’ patented 8 \ formulations could not be used in an automobile manu- facturing plant because his formulations include a large amount of a chlorinated solvent called perchloroethylene or tetrachloroethylene. This ingredient is required in both of his patents. Perchloroethylene is a dry-cleaner’s spot remover and is “very important” to his formulation. Kaliardos’ ’036 patent (col. 8, line 31, A-50) states: ‘The use of perchloroethylene is very important because it cleans and dissolves any oil present on the surface and allows the coating to make good contact with the surface.” G.M. does not use any chlorinated solvents in coatings because the material is hazardous (G.M. engineer Reichel, A-799-800). Kaliardos’ chemical expert Geeck testified that perchloroethylene is not permitted in an automotive plant because it is dangerous in large quantities (Geeck Dep., A-3326). Kaliardos’ other chemical expert Strand- bergh testified that perchloroethylene is toxic and is considered to be carcinogenic (Strandbergh Dep., A-864). Fuller’s chemist testified “It’s very irritating to the lungs and throat area.” (Pellny Dep., A-744.) Moreover, perchloroethylene costs about three to four times more than the naphtha solvent used by ail of the Defendants (Edwards Dep., A-923; Fuller chemist Pellny Dep., A-774). In addition, perchloroethylene attacks and damages the paint that is used on cars. Therefore, it is not usable in a car (BASF analytical chemist Fujimoto Dep. A1029-30). Perchloroethylene, in the quantities required by Kaliardos’ formulations, is detectable by its distinctive smell, according to Kaliardos’ chemical expert (Epstein Dep., A-909). There is no evidence that anyone has ever manu- factured, purchased or used the coating formulations that are specified in any of the Kaliardos patent claims. 9 In 1980, when General Motors refused to test any more samples, Mr. Kaliardos concluded, without any factual support, that G.M. must be using his patented formulations. Hence, he wrote to G.M. in the early 1980’s complaining of infringement. In response, G.M. and BASF advised him that they were not using his formulation and, in 1984, they gave him a liquid sample of the BASF coating to test so as to satisfy himself that the BASF formulation was not the same as his patented formulations. Kaliardos had that material tested by a chemical laboratory in 1985. The laboratory reported that it did not find the ingredients of his patented formulations. Nevertheless, Kaliardos filed a complaint in the U.S. District Court in Detroit on September 14, 1988 against G.M. and BASF for patent infringement and alleged conspiracy and misap- propriation of his proprietary information. The conspir- acy and misappropriation count was dismissed by sum- mary judgment for lack of factual support and as barred by the Statute of Limitations.? PROCEEDINGS IN THE DISTRICT COURT Discovery depositions were taken of six BASF chem- ists including: the chemist who originated the formula- tion of BASF’s accused coating in 1953; the two chemists who successively were responsible for the formulation of the BASF coating; BASF’s manager of technical services and quality control; BASF’s research manager; and two BASF analytical chemists who performed analytical tests on BASF’s accused coating. Kaliardos also took the depositions of a former BASF workman who had mixed 3See magistrate-judge’s “Report and Recommendation” of December 27, 1990, A-2337 and the district court’s Order of June 5, 1991, A-2363). No appeal was taken from that Order. 10 BASF coatings and of six G.M. engineers and technicians. In addition, Kaliardos was supplied with all of the BASF formulation data from 1953 to 1987, including ingredi- ents, percentages of ingredients, sources of ingredients, batch mixture records, and reports of chemical labora- tory tests. The Defendants took the discovery depositions of Mr. Kaliardos and of his chemical expert witness, David Byrd, who testified that he had re-tested the same 1984 sample that G.M. and BASF had given to Mr. Kaliardos and that he failed to find in that sample most of the ingredients listed in Kaliardos’ patent claims. He hedged on his find- ings concerning perchloroethylene by stating in his written reports that he detected less than 5% perchloro- ethylene. However, when cross-examined at his deposi- tion, he admitted that less than 5% was “‘another way of saying” that he found none (Byrd Dep., A-3002). As a result of this discovery, on January 30, 1992 G.M. and BASF filed a joint motion for summary judg- ment of non-infringement. But, before decision, Kali- ardos amended his complaint and brought in more supplier companies. He added Defendants Daubert, H.B. Fuller Company, National Starch & Chemical Corpora- tion and Koch Fuels, Inc. Later, he added Beazer East, Inc. and H.B. Fuller Automotive Products, Inc. That resulted in further discovery which delayed the pending G.M./BASF motion for summary judgment. On September 7, 1990, Koch Fuels was dismissed by summary judgment because it “had no involvement in the subject matter of this suit.”” Next, on November 12, 1991, National Starch’s and Beazer’s “Motion for Sum- mary Judgment of Non-Infringement” was granted. They were dismissed because their coatings were found by the court not to infringe Kaliardos’ patents, either 11 literally or under the doctrine of equivalents. That decision is reported at 777 F.Supp. 543 (E.D. Mich., 1991) (see attached copy at Appendix B). No appeal was taken by Kaliardos.* In December 1991, Daubert and Fuller filed their separate motions for summary judgment of non-infringe- ment, and G.M. and BASF, jointly, re-filed their motion for summary judgment of non-infringement. However, rulings were deferred until further discovery depositions were taken of Kaliardos’ expert Byrd and of several other chemists who, by then, had been retained by Mr. Kali- ardos to conduct more tests on the various coatings involved in this lawsuit. Samples of Fuller's coating, which has a different formulation than the coatings made by BASF or Daubert, were supplied to Kaliardos for these tests. Also, Kaliardos was given complete infor- mation about Fuller’s formulations, production, etc. Similarly, Daubert supplied complete information con- cerning its formulations, its records of the contents of each of the batches of coatings it made, etc. All of this resulted in Kaliardos’ stipulation to an “Order Granting Partial Summary Judgment of Non- Infringement,” dated October 16, 1992 (Appendix C). This Order held that certain of Kaliardos’ patent claims were not infringed literally or under the doctrine of equivalents, and these claims were dismissed from the lawsuit. That left Kaliardos’ complaint that: BASF, Daubert and Fuller coatings infringe claims 1 and 2 of ‘in its Opinion, the district court held that certain of the ingredients that are listed in Kaliardos’ patent claims were required for either literal infringement or for doctrine of equiv- alents infringement because these ingredients were added to the claims by Kaliardos in order to secure approval of his patent (777 F.Supp. at pp. 545, 549, 29a-30a, 38a). 12 the °530 patent under the doctrine of equivalents; that BASF and Daubert coatings literally infringe claims 1, 5 and 6 of the ’036 patent; and, that BASF and Daubert coatings infringe claims 1-6 of the 036 patent under the doctrine of equivalents. The discovery depositions of Kaliardos’ expert chem- ists Byrd and Geeck were no easy matter. They refused to answer numerous questions; they refused to produce test samples; and Byrd walked out of one deposition (which resulted in a motion to compel and an Order assessing sanctions for unilaterally terminating the depo- sition). A number of court hearings on motions to com- pel and court Orders were required to obtain meaningful information from them. Obtaining the facts from Kali- ardos and his experts Byrd and Geeck dragged over a long period of time. On Defendants’ request, the court ordered Byrd and Geeck to appear for the continuations of their depositions in the courthouse where a magistrate was available to immediately rule on their objections to deposition questions or refusals to answer them. Finally, an oral hearing on the motions for summary judgment was conducted by the magistrate-judge on October 22, 1992. At that time Kaliardos’ counsel and Defendants’ counsel presented their oral arguments. No testimony was taken at the hearing. On October 7, 1993, U.S. Magistrate-Judge Marc L. Goldman handed down his “Report and Recommenda- tion” (Appendix A) which recommended that the district judge grant the three motions for summary judgment. Kaliardos filed objections. While his objections were pending, Kaliardos filed a motion for leave to file a belated supplement, comprising an unsworn test report prepared by his expert Byrd, to his responses to the motions for summary judgment of non-infringement. That report 13 related to tests conducted by Byrd on BASF coatings. In these tests, he mixed a number of additional ingredients into samples of BASF coatings and compared the modi- fied BASF coating samples with each other. He did not compare them with the patented compositions. The dis- trict judge denied the motion, holding that the report was untimely and was unverified. Although not decided, it was apparent on its face that the report was unrelated to the issue of whether BASF’s actual, unadulterated formu- lation was the same as the patented formulations. The report did not relate to either Daubert’s or Fuller’s coatings. On March 30, 1994, the district court issued its “Order Accepting Magistrate-Judge’s October 7, 1993 Report and Recommendation”’ granting the three motions for summary judgments (A-1) and issued a Judgment dismiss- ing the lawsuit (A-3). Kaliardos appealed only from the district court’s Order of March 30, 1994.° The Court of Appeals for the Federal Circuit affirmed the district court on November 22, 1994.® Turning now to the patent claims-in-suit and the lack of evidence of infringement: KALLIARDOS PATENT NO. 3,959,530’ Kaliardos asserts that claims 1 and 2 of the 530 patent are infringed by the BASF, Daubert and Fuller coatings. The claims read as follows: “1. A cleaning and protective coating composition consisting essentially of a mixture of: wax residue Copy attached to Petition at p. 48. Copy attached to Petition at p. 54. See copy at Kaliardos’ Petition for Writ of Certiorari, p. 62. 14 such as paraffin and microcrystalline wax, perchlo- roethylene, petroleum distillate having a boiling point ranging between 350° and 380°F and, a non- ionic surfactant such as nonylphenoxypoly(ethyl- eneoxy)ethanol and, a small arnount of [N,N,N’,N’- tetrakis(2-hydroxypropyl)ethylenediamine]. 2. The composition set forth in claim 1 wherein said paraffin wax comprises at least 3%, said microcrys- talline wax comprises at least 2%, said nonionic sur- factant comprises at least 1% and said ethylenedia- mine comprises at least 1%.” The district court found, in the non-appealed decision granting National Starch’s and Beazer’s motion for sum- mary judgment, that the italicized terms were changes that were made by Kaliardos in response to the Patent Office examiner’s rejection and that “these changes were necessary to secure the patent” (see 777 F.Supp. at p. 545; Kaliardos file history, pp. 33-34, A-1619-1620).° 8The absence of those necessary ingredients from the accused coatings is another reason why summary judgment of non-infringement is appropriate. The district court’s unappealed decision that the italicized ingredients are necessary for infringe- ment of the patent claims, due to the Patent Office prosecution history, is the law of the case. Griffin v. M.D.O.C., 5 F.3d 186, 190 (6th Cir., 1993); Arizona v. California, 460 U.S. 605, 618, 75 L.Ed.2d 318, 333, 1031 S.Ct. 1382, 1397 (1993) (“As most commonly defined, the doctrine [of law of the case] posits that when a court decides upon a rule of law, the decision should continue to govern the same issues in subsequent stages in the same case.) See Markman v. Westview Instruments Inc., 1995 U.S.App. LEXIS 7593, p. 21 (Fed.Cir., Apr. 5, 1995) (“con- struing and determining the scope of the claims in a patent is strictly a legal question for the court.” 15 KALIARDOS PATENT NO. 4,356,0369 Kaliardos complains that BASF’s coating and Daubert’s coatings literally infringe claims 1, 5 and 6 and, also, in- fringe claims 1-6 of the 036 patent under the doctrine of equivalents. These claims read as follows: “1. An anti-corrosion coating composition compris- ing a mixture of aluminum paste or zinc paste con- taining aluminum or zinc flakes and a solvent, microcrystalline wax, aromatic hydrocarbon resin having a softening point, R and B, of 70°C.-140°C., chlorinated rubber having a combined chlorine con- tent of at least 66%, neutral barium sulfonate, chlo- rinated solvent, aromatic hydrocarbon solvent and mineral spirits. 2. The anti-corrosion coating composition set forth in claim 1 wherein said composition comprises by weight: aluminum paste or zinc 15-43% microcrystalline wax 5-4% aromatic hydrocarbon resin 10-18% chlorinated rubber 2-6% neutral barium sulfonate .5-1% chlorinate solvent 7-23% aromatic hydrocarbon solvent 22-32% mineral spirits 1.3-4% 3. The anti-corrosion coating composition set forth in claim 1 wherein said composition comprises by weight: aluminum paste 21-28% microcrystalline wax 1.3-3.5% aromatic hydrocarbon resin 7-23% neutral barium sulfonate .5-1% 2 Copy at Petition, p. 77. 16 : chlorinated solvent 7-23% aromatic hydrocarbon solvent 23-42% mineral spirits 1.3-3.5% 4. The anti-corrosion coating composition set forth in claim 1 wherein said composition comprises by weight: zinc paste 15-43% microcrystalline wax .5-4% aromatic hydrocarbon resin 10-18% neutral barium sulfonate .5-1% chlorinated solvent 7-23% aromatic hydrocarbon solvent 23-42% mineral spirits 1.9-4% 5. The anti-corrosion coating composition set forth in claim 1 wherein said chlorinated solvent com- prises perchloroethylene. 6. The anti-corrosion coating composition set forth in claim 1 wherein said aromatic hydrocarbon sol- vent comprises toluene and xylene. The district court held that “{T]he italicized terms were changes made by the plaintiff in response to refer- ences cited by the P.T.O. These changes were necessary to secure the patent.” (See 777 F.Supp. at p. 545.)!° KALIARDOS HAS NO EVIDENCE OF SIMILARITY OF FUNCTION/WAY/RESULTS For infringement under the doctrine of equivalents, the patentee must prove by comparative factual evidence that the accused product, as a whole, has substantially 10-There is no evidence that the italicized terms are found in the accused coatings, which is another reason why summary judgment of non-infringement is appropriate. 17 the same function/way/results as the entire product that is specified in the patent claims AND, in addition, must separately explain how and why the function/way/results are the same. Malta v. Schulmerich Carillons, Inc., supra, 925 F.2d at 1327. Kaliardos has presented no such factual evidence. There is no evidence in the record where anyone said or demonstrated or established in any way, whether by fact or even by opinion, that the BASF, Daubert, or Fuller accused coatings have substan- ’ tially the same function/way/results as the coating com- positions that are specified in the patent claims of either the °530 or ’036 patents. To the contrary, Kaliardos’ expert Byrd testified that he has no such evidence, as follows: Q. Do you have any evidence to establish that any of the coatings of any of the defendants which are accused of infringements in this case perform sub- stantially the same function in substantially the same way to produce substantially the same re- sults as the compositions that are specified in the claims of Mr. Kaliardos’ Patent No. 5,950,530? THE WITNESS: I don’t know. You don’t know the answer to that question? That’s right. (A-3052-53) 0: POD Do you have any evidence to establish that any of the accused products of any of the defendants in this lawsuit perform substantially the same func- tion in substantially the same way to produce sub- stantially the same result as those of the compo- sition of chemical ingredients specified in the claims of Mr. Kaliardos’ Patent No. 4,356,036? A. THE WITNESS: No. (A-3052) With respect to the alleged infringement by Fuller of the ’530 patent claims 1 and 2 under the doctrine of 18 equivalents, Kaliardos’ expert Byrd affirmatively stated that the function/way/results are not the same: Q. Is it fair to say that the H.B. Fuller material that you tested does not give the same results as the Kaliardos’ patented formulations? A. Yer Q. Is it fair to say that the H.B. Fuller material that you tested does not perform the same function as the Kaliardos’ patented formulations? A. Yes. Q. And is it fair to say that the H.B. Fuller formula- tions that you tested do not work the same way as the Kaliardos’ patented formulations? A. Yes. (A-3026) Further, Kaliardos, expert Byrd testified that he did not even conduct any comparative tests to determine whether any of the Defendants’ coatings work in the same way (A-3049-50) or perform the same functions (A-3051) or produce the same results as the compositions specified in the claims of the °530 (A-3042) or the 036 patents (A-3042). KALIARDOS’ EXPERT TESTIFIED THAT BASF’S COATINGS DO NOT CONTAIN MOST OF THE INGREDIENTS SPECIFIED IN THE PATENT CLAIMS Referring to the ingredients that are listed in claim 1 of the 530 patent, Byrd testified that BASF’s coating “Do not have a nonionic surfactant” (A-3015); that he did not find any nonylphenoxypoly(ethyleneoxy)ethanol in BASF’s coating (A-3032); that he did not find any [N,N,N’,N’-tetrakis(2-hydrocypropyl)ethylenediamine] in any BASF coating (A-3018, 3028, 3032); and that he did not find any petroleum distillate having a boiling 19 point ranging between 350° and 380° F in BASF’s coat- ing (A-3017). Further, initially he testified that he did not detect any perchloroethylene in BASF’s coating (A-3004). Referring to claim 2 of the ‘530 patent, Byrd testified that he never determined the amounts of the ingredients in any of the accused coatings of any of the Defendants (A-3064). He admitted that he does not have any evi- dence that BASF’s accused coating contains the percent- ages of ingredients that are spelled out in claim 2 of the 530 patent (A-3062, 3063). As to claims 1, 5 and 6 of the ’036 patent, Kaliardos’ expert Byrd testified that BASF’s coatings do not have each of the claimed ingredients. More specifically, Byrd testified that he did not find in BASF’s coating any aro- matic hydrocarbon resin having a softening point, R and B, of 70°C.-140°C (A-3004). He testified that he did not find any chlorinated rubber having a combined chlorine content of at least 66% (A-3004); and he did not find any chlorinated solvent (A-3005). He testified that he did not find neutral barium sulfonate (A-3005); nor any barium sulfonate at all (A-3031, 3017). As to claims 2, 3 and 4 of the ’036 patent, he did not even attempt to determine whether BASF’s coating contained the percentages of the ingredients that are set forth in those claims (A-3064). KALIARDOS’ EXPERT BYRD TESTIFIED THAT THE FULLER COATINGS DO NOT CONTAIN ALL OF KALIARDOS’ CLAIMED INGREDIENTS Byrd testified that Fuller’s coatings do not contain four of the five ingredients listed in Kaliardos’ claims 1 and 2 of the 530 patent. The only common ingredient is wax. He said that “Fuller doesn’t have perchloroethy- lene” (A-3260); Fuller’s coating “Does not include a 20 small amount of [N,N,N’,N’-tetrakis(2-hydroxypropy])- ethylenediamine]” (A-3032); and, he testified that Ful- ler’s coating does not include a “nonionic surfactant such as nonylphenoxypoly(ethyleneoxy)ethanol” (A-3262). Byrd also testified that he did not find in Fuller’s coat- ings “petroleum distillate having a boiling point ranging between 350 and 380 F” (A-3261), which the district court held was “necessary to secure the patent.” (See Kaliardos v. General Motors, 777 F.Supp. at p. 545.) With respect to claim 2 of the ’530 patent, no evidence whatsoever was presented concerning any similarity of percentages of ingredients between Fuller’s coatings and the amounts of ingredients specified in claim 2. KALIARDOS’ EXPERT GEECK TESTIFIED THAT DAUBERT’S COATING DOES NOT CONTAIN ALL OF THE CLAIMED INGREDIENTS During discovery, Daubert made available its formula- tions, laboratory test reports and its batch manufactur- ing records, which identified each of the materials and the amounts of the materials mixed together to make Daubert’s coatings. Kaliardos’ expert chemist, Mr. Geeck, examined these materials and testified that “[E] xcept for the wax, Daubert coating formulations are not the same as the formulations specified in the claims of either Kaliardos’ ’530 patent and ’036 patent’ (Geeck Dep., A-3322, 3324). Additionally, Mr. Geeck testified that he did not find any ethylenediamine in Daubert’s coat- ings (A-3302, 3303); nor did he find any petroleum dis- tillate having a boiling point ranging between 350 and 380 F (A-3304); he did not find any [N,N,N’,N’- tetrakis(2-hydroxypropyl)ethylenediamine] (A-3305, 3306, 3311); nor did he find any neutral barium sulfon- ate (A-3320, 3322); nor did he find any chlorinated sol- vents (A-3321). No evidence was presented to show that 21 Daubert’s coatings contain the same percentages of ingredients that are specified in the Kaliardos patent claims. EXCLUSION OF EVIDENCE Kaliardos’ Petition, at page 39, and elsewhere, refers to evidence concerning a Pontiac Grand Prix door and a laboratory analysis of the coating taken from the door. That evidence was excluded by the magistrate because of failure to identify what the material was or where it came from. It should not have been referenced by Petitioner in his brief. To explain, Kaliardos’ expert Byrd, apparent- ly unwittingly, tested a sample piece of the hard, blue- colored, epoxy adhesive which is used within Pontiac Grand Prix doors to “glue” the bent edges of the metal door panels together. Kaliardos had that sample piece additionally tested by another laboratory in California. Upon investigations by G.M., unrefuted affidavits were submitted to the magistrate with a motion to exclude the blue-colored sample and the tests concerning it. The unrefuted affidavits identified that sample as an epoxy adhesive, not a wax coating, and established that G.M. did not use wax coatings in that particular model car (Burton Affidavit, A-1492; Cantalin Affidavit, A-1495; Mayhem Affidavit, A-1480). During his deposition, Kaliardos’ expert Byrd admitted that he had known all along, and he had told Kaliardos, that the “blue” material was not the same as the tan colored coatings-in-suit and he admitted that the material was an adhesive (Byrd, A-3254, 3256). Since the magis- trate excluded that material, it should not have been included in Kaliardos’ petition. 22 ARGUMENT AGAINST CERTIORARI The patentee has the burden of proving infringement, either literally or under the doctrine of equivalents, by a preponderance of evidence. Smithkline Diagnostics Co. v. Helena Laboratories Corp., 859 F.2d 878, 889 (Fed. Cir. 1988); Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 1282 (Fed.Cir. 1986). To prove literal infringement, Kaliardos must present factual evidence showing that every single ingredient that is specified in the asserted patent claims is actually found in the accused coatings. Builders Concrete, Inc. v. Brem- erton Concrete Products Co., 757 F.2d 255, 257 (Fed. Cir. 1985). To prove infringement under the doctrine of equivalents, Kaliardos must provide substantial factual evidence showing: (1) that BASF’s, Fuller’s and Dau- bert’s coatings contain either the same or an equivalent of each and every ingredient that is specified in the pat- ent claims-at-issue; AND, (2) that the accused coatings perform substantially the same function, in substantially the same way, to produce substantially the same results as the coating formulations specified in such patent claims. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609-10, 70 S.Ct. 854, 856-57, 94 L.Ed. 1097, 1102 (1950); Builders Concrete, Inc. v. Bremerton Concrete Products Co., 757 F.2d at 258; AND, (3) to explain by factual, comparative, evidence how and why the accused coatings have the same func- tion/way/results as the combination of ingredients that are specified in the patent claims. That is the controlling patent law which Kaliardos must meet in order to defeat a motion for summary judgment. Malta v. Schulmerich Carillons, Inc., 925 F.2d 1320, 1327, 1329 (Fed.Cir. 1961), cert. denied, 119 L.Ed.2d 566 (1992). The law is well settled. Lear Siegler, Inc. v. Sealy Mattress Co. of 23 Michigan, 837 F.2d 1422, 1425-26 (Fed.Cir. 1989). Malta, supra, 925 F.2d at p. 1329 explains: 6eé . . substantial evidence of comparison as to the function, way and result is required as part of the patentee’s prima facie case of infringement under the doctrine [of equivalents]. Therefore, if the com- parison evidence is not substantial, the issue may not be submitted to the jury. We have also held that the comparison as to each Graver Tank element must be made ‘explicitly’ and ‘separately.” Lear Siegler, 837 at 1425-26. Conse- quently, a jury verdict of infringement under the doctrine can only survive a motion for JNOV if sub- stantial evidence was presented that explicitly and separately compares the function/way/result of the accused device with the function/way/result of the claimed invention to show that they are substan- tially the same.” If any one of the essential elements of proof of in- fringement is missing, summary judgment is mandated under Rule 56(c). It is not discretionary. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 91 L.Ed.2d 265, 273, 106 S.Ct. 2548, 2552 (1986): “In our view, the plain language of Rule 56(c) man- dates the entry of summary judgment, after ade- quate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party’s case, and on which that party will bear the burden of proof at trial. In such a situation, there can be ‘no genuine issue as to any material fact,’ since a complete failure concerning an essen- tial element of the non-moving party’s case necess- arily renders all of facts immaterial. The moving 24 party is ‘entitled to a judgment as a matter of law’ because the non-moving party has failed to make a sufficient showing on an essential element of her case with respect to which she has the burden of proof.” In Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247- 48, 91 L.Ed.2d 202, 211, 106 S.Ct 2505 (1986), the Court stated the standard for summary judgment: ‘Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment ‘shall be rendered forthwith if the pleadings, depositions, answers to interrogatories and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law. By its very terms, this standard provides that the mere existence of some alleged factual dispute be- tween the parties will not defeat an otherwise prop- erly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact. [emphasis in original] As to materiality, the substantive law will identify which facts are material. Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment. Factual disputes that are irrele- vant or unnecessary will not be counted. [empha- sis added] [T| here is no issue for trial unless there is suffi- cient evidence favoring the non-moving party for a 25 jury to return a verdict for that party. 477 US. at 249. [T]he standard for summary judgment mirrors the standard for a directed verdict under Fed. R. Civ. P. 50(a). 477 U.S. at 250.” THE QUESTIONS PRESENTED FOR REVIEW BY APPELLANT KALIARDOS UNDER RULE 14.1(a)!! “1. Did the magistrate-judge in the trial court err in holding that the evidence produced by Plaintiff in re- sponse to Defendant’s motion for summary judgment did not create a genuine issue of material fact concern- ing whether accused products infringed asserted claims, either literally or under the doctrine of equivalents, such as to require a full trial?” It is clear that there was no genuine issue of material fact concerning the motions for summary judgment. There cannot be a genuine issue of material fact where the non-moving party, Kaliardos, failed to present some of the essential evidence to show literal infringement (i.e., the presence of every single claimed ingredient in the accused products) or infringement under the doctrine of equivalents (i.e., evidence of the presence of equivalent ingredients AND showing substantially similar function/ way/results with explanations as to how and why). Hence, there was no error by the district court or the court of appeals which warrants the grant of certiorari. Intellicall, Inc. v. Phonometrics Inc., 952 F.2d 1384, 1389 (1992) (summary judgment of non-infringement 1 Note, the argument headings are reproductions of Kaliar- dos’ four ‘Questions Presented for Review’”’ in his Petition for Writ of Certiorari. 26 properly granted where patentee failed to produce evi- dence of equivalency). “*2. Did the trial judge in the trial court err in adopt- ing the “Report and Recommendation” of the magis- trate-judge and dismissing Plaintiff’s action on the merits and by abusing his discretion in denying Plaintiff's motion for leave to supplement his responses with a test report of his expert and/or in not granting Kaliardos’ request for an oral hearing?” The district judge stated that, “pursuant to 28 USC 636(b)(1)(B), Fed. R. Civ. Pr. 72(b), he conducted a de novo review of the magistrate’s “‘Report and Recom- mendation,” which found that Kaliardos lacks essential evidence. There is no showing as to exactly where or how he committed error in so doing. Moreover, there was no abuse of discretion in deny- ing Plaintiff’s motion to supplement his responses with a test report which was untimely and not verified and, therefore, not in accordance with Rule 56(e). The court properly relied upon Adickes v. S. H. Kress & Co., 398 U.S. 144, 158 n. 17 (1970) and Fowle v. C&C Cola, 868 F.2d 59, 67 (3rd Cir. 1989), which states: 6é . . .There was no compliance [by the expert’s report] with Rule 56 (e) ... the substance of the report was not sworn to by the alleged expert, there- fore, the purported expert’s report is not competent to be considered on a motion for summary judg- ment. See Adickes v. S. H. Kress & Co., 398 US. 144, 158, 158 n.17, 90 S.Ct. 1598, 1608 n. 17, 26 L.Ed. 142 (1970) (‘unsworn statement does not meet the requirements of Fed. Rule Civ. P. 56(e)’).” Further, there was no abuse of discretion in not grant- ing Kaliardos’ request for another oral hearing before 27 deciding the motions for summary judgment. Kaliardos had an oral hearing before the magistrate; he was not entitled to another oral hearing before the district judge. That question was definitively addressed in United States v. Raddatz, 447 U.S. 667, 673-74, 65 L.Ed.2d 424, 432-3, 100 S.Ct. 2406 (1980). Referring to 28 U.S.C. 636(b)(1)(B), Raddatz states that the district judge is required to “make a de novo determination of those portions of the [magistrate’s] report or specified pro- posed findings or recommendations to which objection is made.” And, “It should be clear that on these disposi- tive motions, the statute calls for a de novo determina- tion, not a de novo hearing.” Then Raddatz quotes from the House Report, H.R. Rep. No. 94-1609 (1976): The use of the words ‘de novo determination’ is not intended to require the judge to actually conduct a new hearing on contested issues. Raddatz summarizes: . In providing for a ‘de novo determination’ rather than a de novo hearing, Congress intended to permit whatever reliance a district judge, in the exercise of sound judicial discretion, chose to place on a magistrate’s proposed findings and recom- mendations.” “3. Did the appeal court err in affirming the district court’s dismissal of Plaintiff-Appellant’s case concerning the evidence Kaliardos offered and the plain language and historical intent of the application of Federal Rule 56?” The appeals court affirmed the district court’s sum- mary judgment dismissal because of the absence of essen- tial evidence of infringement. As this Court stated in 28 Matsushita Electric Industrial Co., Ltd. v. Zenith Radio Corporation, 475 U.S. 574, 586-7, 89 L.Ed.2d 538, 552, 106 S.Ct. 1348 (1986): ‘When the moving party has carried its burden under Rule 56 (c), its opponent must do more than simply show that there is some metaphysical doubt as to the material facts. In the language of the Rule, the nonmoving party must come forward with specific facts showing that there is a genuine issue for trial.” Kaliardos made no such showing. Hence, there was no error in affirming the dismissal. “4. Is the federal judiciary using Rule 56 to rid their | dockets of difficult cases and/or litigants and, if so, will such use of Rule 56 be allowed to continue?” Kaliardos misinterprets the purpose of Rule 56. The purpose is to rid the dockets of factually unsupported claims. Pertinent here is this Court’s statements in Celo- tex supra: “One of the principal purposes of summary judg- ment rule is to isolate and dispose of factually unsupported claims or defenses, and we think that it should be interpreted in a way that allows it to accomplish this purpose (477 U.S. at 373) The Federal Rules of Civil Procedure have for almost 50 years authorized motions for summary judgment upon proper showings of the lack of a genuine, triable issue of material fact. Summary judgment procedure is properly regarded not as a 29 disfavored procedural shortcut, but rather as an inte- gral part of the Federal Rules as a whole, which are designed ‘to secure the just, speedy and inexpen- sive determination of every action.’ Rule 56 must be construed with due regard not only for the rights of persons asserting claims and de- fenses that are adequately based in fact to have those claims and defenses tried to a jury, but also for the rights of persons opposing such claims and defenses to demonstrate in the manner provided by the Rule, prior to trial, that the claims and defenses have no factual basis.” (477 U.S. at 327) This present lawsuit is utterly without factual founda- tion. This is the very kind of case for which summary judgment has been designed. 30 CONCLUSION Respondents General Motors, BASF and Fuller respect- fully ask this Court to deny Kaliardos’ Petition for Writ of Certiorari. Respectfully submitted, HERBERT FURMAN BERNARD J. CANTOR 29709 Deer Run (Counsel of Record) Farmington Hills, MICHAEL P. BRENNAN Michigan 48331 RoBert S. NOLAN Attorney for HARNESS, DICKEY & PIERCE, P.L.C. Respondent-Defendant General Motors Corporation 5445 Corporate Drive Troy, Michigan 48098 (810) 641-1600 (810) 641-0270 (FAX) Attorneys for Respondents-Defendants General Motors Corporation, BASF Corporation, H.B. Fuller Company, H.B. Fuller Automotive Products, Inc. April 20, 1995 la APPENDIX A Magistrate’s ‘‘Report and Recommendation” [Filed Oct 7 93] UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION — FLINT Civil No. 88-CV-73729-DT NICOLAS KALIARDOS, Plaintiff, vs. GENERAL MOTORS CORPORATION, BASF CORPORATION, DAUBERT INDUSTRIES, INC., H.B. FULLER COMPANY and H.B. FULLER AUTOMOTIVE PRODUCTS, INC., Defendants. HON. PAUL V. GADOLA HON. MARC L. GOLDMAN REPORT AND RECOMMENDATION This is an action claiming infringement of certain claims of United States Patents 4,959,530 [’530] and 4,356,036 [’036]. The defendants in this action are General Motors [GM] and three companies which sup- plied General Motors with anti-corrosive coatings for use on its automobiles, BASF Corporation, Daubert Indus- tries, Inc., and H.B. Fuller Company. The pertinent facts are as follows. 2a BACKGROUND In the late 1960’s and early 1970’s, the plaintiff, Nicholas Kaliardos, was engaged in the dry cleaning business. Sometime around 1971, Kaliardos began experimenting with the chemicals used in his dry cleaning business in an effort to develop an anti-corrosion wax coating for use on automobiles. He began this experimen- tation after being told that the Fisher Body Division of General Motors was looking for a coating for bare steel that would withstand salt spray. In the period between 1972 and 1981, Kaliardos submitted several samples of his products to the Fisher Body Corrosion Laboratory for testing. After each test, Fisher Body reported that the product did not meet GM Material Specification 998- 1128. However, Kaliardos was never shown the test results. Curious about the performance of his product and suspicious of the conclusory test reports from Fisher Body, Kaliardos submitted his creations to inde- pendent laboratories for testing. Kaliardos claims that the results of these independent tests revealed that his coatings met GM’s anti-corrosion requirements. In 1974, Kaliardos submitted an anti-corrosion coating invention to the Patent and Trademark Office [PTO]. The Patent Office Examiner initially objected to the broad language in the proposed claims, and Kaliardos modified those claims to specifically define several of the terms. On May 25, 1976, Kaliardos was granted U.S. Patent 3,959,530 [The °530 patent]. (Gaim 1 to the 530 patent reads: A cleaning and protective coating composition consisting essentially of a mixture of: wax residue such as paraffin and microcrystalline wax, perchloroethylens, petroleum distillate having a boiling point ranging between 350 degrees and 3a 380 degrees F. and a nonionic surfactant, such as nonylphenoxypoly (ethyleneoxy) ethanol, and a small amount of [N,N,N’, N’-tetrakis (2-hydroxy- propyl) ethylenediamine] .! In both the patent application and an affidavit filed in connection with this case, Kaliardos explained the func- tion of the various ingredients of his coating. The wax residue is waterproof and remains pliable in both cold and hot weather. Petroleum distillate, recommended as Solvent 140 in the patent language, acts as a carrier for the other ingredients, dissolving the wax once the wax is heated. The coating spreadability is improved by the surfactant, and the coating adheres better to the metal car body once the chelating agent is added. Finally, and most importantly according to Kaliardos, the perchetoro- ethylene dissolves any oil remaining on the metal. This chlorinated solvent cleans the car body, helping the other coating materials to stick to the bare surface. “Sagging” had been a prevalent problem with other coatings, and Kaliardos claims that he eliminated sagging and flaking problems when he began using perchloroethylene in his experiments. Perchloroethylene was commonly used as a spot remover in the dry cleaning industry. After receiving the °530 patent, Kaliardos began experimenting with weldable zinc and anti-corrosive coatings. He continued submitting his coatings for testing at the Fisher Corrosion Lab. In 1978, General Motors amended Material Specification 998-1128, and began requiring aluminum pigment, hydrocarbon resins, and a petroleum solvent in its anti-corrosion coatings. Kaliardos 'The underlined portions of the language indicate the changes that were made at the direction of the patent office in order to secure the patent. 4a added aluminum to his coating to meet GM Material Specification 998-1128. On October 26, 1982, Kaliardos was granted a patent for a new formula containing zinc or aluminum. Claim 1 to U.S. Patent No. 4,356,036 [the ’036 patent] reads: An anti-corrosion coating composition comprising: a mixture of aluminum paste or zinc paste contain- ing aluminum or zinc flakes and a solvent, micro- crystalline wax, aromatic hydrocarbon resin having a softening point, R and B, of 70C. - 140C., chlori- nated rubber having a combined chlorine content of at least 66%, neutral barium sulfonate, chlori- nated solvent, aromatic hydrocarbon solvent, and mineral spirits. In the patent language, Kaliardos recommends using perchloroethylene as the chlorinated solvent and using toluene and xylene as the aromatic hydrocarbon solvents. Ingredients that were not part of the ’530 patent, but were included in the ’036 patent, include chlorinated rubber and aluminum or zinc paste. According to Kali- ardos, he added the chlorinated rubber because it has a high resistance to acids and alkalies. He stated that with- out the ingredient, the coating would not pass the GM detergent test listed in the material specifications. The aluminum paste provided a silver pigment for the coatings and also forms a protective finishing layer over the other ingredients. Aluminum is apparently more effective than zinc because less of the material is required. For many years prior to 1979 and continuing to the present, General Motors has used wax-type coatings to prevent corrosion on the inside surfaces of its auto- 5a mobiles.” Defendants BASF, Daubert, and Fuller, are among the several companies that supply GM with wax- type anti-corrosion coatings. BASF claims that it has manufactured an anti-corrosion coating since the 1960s, based on Canadian Patent 743,631 issued to Rebecca Sandretto, a former employee of a predecessor company, in 1966. Daubert has supplied GM with coatings since 1979. Fuller was not organized until August 1988, when it bought certain assets of the Widger Chemical Co., and the company has supplied coatings to GM since its inception. In early 1980, before Kaliardos obtained the ’036 patent, the Fisher Corrosion Lab notified Kaliaros that after seven years of testing his anti-corrosion products, they were discontinuing any further testing because none of Kaliardos’ products had met GM’s specifications. However, Fisher Body apparently relented and tested another coating. In an October 23, 1980 letter, Fisher Body informed Kaliardos that his aluminized sample did not meet the requirements of Specification 998-1128. Kaliardos was directed to make no further submissions. In late 1982 or early 1983, after obtaining the ’036 patent, Kaliardos contacted General Motors and began claiming that the anti-corrosion coatings provided by their suppliers and used on their vehicles infringed both his 036 and ’530 patents. Kaliardos claimed that GM had directed its suppliers to manufacture coatings based on the samples and formulas that Kaliardos had provided for testing. 2 Other automakers were using an “oily wax” as early as 1975, but the thickness of the early coatings caused problems on the assembly line. 6a On September 14, 1988, after years of correspondence and testing, Kaliardos filed a complaint in the United States District Court for the Eastern District of Michigan, charging General Motors and BASF with patent infringe- ment. In February 1990, Kaliardos added four other suppliers as defendants, including Daubert and H.B. Fuller.? In 1991, after a lengthy period of discovery, the defendants filed motions for summary judgment. They asserted that plaintiff had failed to establish that the defendants had infringed his two patents either literally or under the doctrine of equivalents. In response to this motion, plaintiff submitted the affidavit of his expert, David Byrd, which purportedly established that the products used by GM and manufactured by the defen- dant did infringe plaintiff’s patents. Because the affidavit contained information which contradicted testimony Byrd had given previously in depositions, a new round of discovery began. Following completion of this new round of discovery, new motions for summary judgment were filed by the defendants. In response to these motions, plaintiff agreed to modify his claims. Plaintiff conceded that the coatings manufactured by BASF, Fuller, and Daubert do not literally infringe any of the claims of the ’530 patent. He further conceded that the coatings of the above-named defendants do not infringe claims 3, 4, 5, and 6 of the *530 patent under the doctrine of equivalents. Thus, plaintiff continues to assert that GM has infringed all 3Two of these new defendants, Beazer East Inc., and National Starch & Chemical Corporation, were granted summary judgment in a memorandum opinion and order entered by the Honorable Paul V. Gadola. Kaliardos v. General Motors Corp., 777 F.Supp. 543 (E.D. Mich. 1991). 7a claims of the ’530 patent, both literally and under the doctrine of equivalents, and that the rest of the defen- dants have infringed only claims 1 and 2 of the °530 patent under the doctrine of equivalents. With respect to the ’036 patent, plaintiff conceded that the Fuller coating does not infringe that patent under either theory. He also conceded that the BASF and Daubert coating do not literally infringe claims 2, 3, 4, and 7 of the ’036 patent and, further, that they do not infringe claim 7 of the ’036 patent under the doctrine of equivalents. Finally, plaintiff conceded that Daubert coating Nox-Rust X-170 does not infringe the ’036 patent at all. An order granting summary judgment on these claims was entered by United States District Judge Paul V. Gadola on October 19, 1992. As a result of this order, the following claims remain against each defendant: 1. BASF-—Infringement under the doctrine of equivalents of claims 1 and 2 of the ’530 patent. Literal infringement of claims 1, 2 and 7 of the 036 patent. Infringement under the doctrine of equivalents of claims 1-6 of the ’036 patent. 2. DAUBERT-—Infringement of claims 1 and 2 of the ’530 patent under the doctrine of equivalents. Literal infringement of claims 1, 5 and 6 of the ‘036 patent. Infringement under the doctrine of equivalents of claims 1-6 of the ’036 patent. 3. FULLER—Infringement of claims 1 and 2 of the ’530 patent under the doctrine of equivalents. 4. GENERAL MOTORS-—The claims against GM are derivative of those against the suppliers because GM is named as a user of the accused products. There is also an allegation that GM may have infringed the patents by adding chemicals to the 8a coatings after they had been delivered by the suppliers. The defendants are requesting summary judgment with respect to each of these claims. LEGAL PRINCIPLES Rule 56(c) of the Federal Rules of Civil Procedure pro- vides that summary judgment shall be granted if there is no genuine issue of material fact. The burden is first on the moving party to show that there is an absence of evi- dence to support the non-moving party’s case. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Hines v. Joy Manuf., 850 F.2d 1146, 1149-50 (6th Cir. 1988); Gregg v. Allen-Bradley Co., 801 F.2d 859,861 (6th Cir. 1986). Once the moving party presents sufficient evidence to support the motion, the burden shifts to the adverse party to set forth facts showing a genuine triable issue. Fed.R.Cwv.P. 56(e); Gregg, 801 F.2d at 861. Summary judgment should be granted against a party who fails to make a showing sufficient to establish the existence of an element essential to that ~urty’s case. Celotex Corp. v. Catrett, 477 U.S. at 325. In deciding the question, the court must bear in mind the quantum and quality of proof necessary to support liability at trial. The standard mirrors that governing a directed ver- dict under Federal Rule of Civil Procedure 50(a). The inquiry under each is the same: Whether the evidence presents a sufficient disagreement to require submission to a jury, or whether it is so one-sided that one party must prevail as a matter of law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52 (1986). The non- movant “must do more than simply show that there is some metaphysical doubt as to the material facts.” ———_>rs sve ee EEE 9a Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). If the evidence put forward by the non-moving party is merely colorable, or is not signifi- cantly probative, summary judgment may be granted. Id. Similarly, speculation or hypothesis is not sufficient to create a genuine issue of material fact. Boddy v. Dean, 821 F.2d 346, 349 (6th Cir. 1987). With this standard in mind, I now turn to the legal principles which control in this case. In his decision granting National Starch and Beazer’s motions for summary judgment, Judge Gadola outlined the law of patents which is applicable to the case. Kali- ardos v. General Motors Corp., 777 F.Supp. 543 (E.D. Mich. 1991). Because this is the ‘‘law of the case” which must be followed in this report and recommendation, | will repeat it here. A patent is a federal statutory grant under 35 U.S.C. §101. The patent, to be protected, must comport with certain statutory requirements. Section 112 of Title 35 states in relevant party that: [A patent] specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 35 U.S.C. §112. The Federal Circuit has stated that “(t]he claims alone delimit the right to exclude; only they may be infringed.” Environmental Instru- ments Inc. v. Sutron Corp., 887 F.2d 1561, 1564 (Fed.Cir. 1989). In patent law, every element of the claim must be found in the accused product—either actually or by a substantially equivalent element—in order to find an infringement. 10a [W]here the respondent in constructing his [product] omits one of the ingredients of the complainant’s combination, he does not infringe the complainant’s patent. Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 950 (Fed.Cir. 1987) [Nies, J., concurring], cert. denied, 485 U.S. 961, 1009, 108 S.Ct. 1226, 1474, 99 L.Ed.2d 426 (1988); see also Lemelson v. United States, 752 F.2d 1538, 1551 (Fed. Cir. 1985) [“the plaintiff must show the presence of every element or its substantial equivalent in the accused (product)”’]. Thus, the accused infringer . . . is entitled to summary judgement, on the ground of non- infringement, by pointing out that the patentee failed to put forth evidence to support a finding that [an element] of the asserted claim was met by the . . . accused [product]. Johnston, 885 F.2d at 1578. Infringement may be shown in only two ways. First, if every single element of limitation in the claim is found in the accused product, there is literal infringe- ment. See Builders Concrete, Inc. v. Bremerton Concrete Produs. Co., 757 F.2d 255, 257 (Fed.Cir. 1985). Second, infringement can occur where the accused product has corresponding elements which perform substantially the same function in sub- stantially the same way to obtain the same result. See Graver Tank Co. v. Linde Air Prods. Co., 339 U.S. 605, 609-10, 70 S.Ct. 854, 856-57, 94 L.Ed. 2d 1097 (1950); Builders Concrete, 757 F.2d at 258. This second path to infringement is called the doctrine of equivalents. The doctrine of equivalents will not extend to allow the patentee to recapture through equivalence cer- tain coverage given up during prosecution of his | es lla patent application. See Pennwalt, 833 F.2d at 934, n.1. Therefore, the language changed by the plaintiff in securing his patents is critical if the doctrine of equivalents infringement is pursued. This limitation is called prosecution history estoppel. Prosecution history estoppel, which precludes a patentee from obtaining a claim construction that would resurrect subject matter surrendered during prosecution of his patent application . . . limits a patentee’s reliance on the doctrine of equivalents. Builders Concrete, 757 F.2d at 258; see also Jonsson v. Stanley Works, 711 F.Supp. 1395, 1403 (N.D. Ohio 1989) [‘‘Arguments and remarks made by plaintiff’s counsel during prosecution of the patent application can also be used to determine the scope of the claims”], aff’d., 903 F.2d 812 (Fed.Cir. 1990). Finally, a claimant may not “broaden his claim by dropping [an] element which he was compelled to include in order to secure his patent.” 1.T.S. Rubber Co. v. Essex Rubber Co., 272 US. 429, 443, 47 S.Ct. 136, 141, 71 L.Ed. 335 (1926). In view of the issues remaining in this case, it is neces- sary to note in greater detail what is required of a plain- tiff who is aiieging infringement under the doctrine of equivalents. In Lear Siegler, Inc. v. Sealy Mattress Co. of Michigan, 873 F.2d 1422 (Fed. Cir. 1987), the court recognized that under Graver Tank, infringement under the doctrine of equivalents does not require complete identity for every purpose and in every respect, but does require substantial identity of the function performed, means by which the function is performed, and the result achieved. 873 F.2d at 1425. This substantial identity must be proven with respect to all three of these ele- ments. As stated in Lear Siegler, 873 F.2d at 1425-26 12a [relying on Nestier Corp. v. Menasha Corp.-Lewtsystems Div., 729 F.2d 1576, 1579-80 (Fed.Cir. 1984)]: The party asserting infringement must present “evidence and argument concerning the doctrine and each of it elements” (emphasis added). The evidence and argument on the doctrine of equival- ents cannot merely be subsumed in plaintiff’s case of literal infringement. * * * Absent the proper Graver Tank context, 1.e., a show- ing of how plaintiff compares the function means and result of its claimed invention with those of the accused device, a jury is more or less put to sea without guiding charts when called upon to deter- mine infringement under the doctrine .. . [N/estier requires that the three Graver Tank elements must be presented in the form of particularized testimony and linking arguments. In Lear Siegler, the court found that there was no testi- mony broken down into the three Graver Tank elements as required by Neistier. Additionally, the court found that there was no argument linking the evidence elicited to the three elements of equivalence doctrine. The court therefore concluded that it has been error to submit the matter to the jury and that a judgment notwithstanding the verdict should have been granted. Lear Stegler, 873 F.2d at 1427. The same analysis was utilized by the Federal Circuit in Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320 (Fed. Cir. 1991). In Malta, the cowrt found that in the absence of “particularized testimony and linking argu- ment as to each of the function/means/result prongs of the tripartite Graver Tank equivalency test,” infringe- ment under the doctrine of equivalents may not be found. Jd. at 1327. 13a This type of analysis is equally applicable in motions for summary judgment. First, it must be noted that the same summary judgment standard is applied to patent claims as applied to other types of claims. Avia Group Int'l. v. L.A. Gear California, Inc., 853 F.2d 1557, 1561 (Fed. Cir. 1988). In London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1536 (Fed. Cir. 1991), the court recognized that there can be no genuine issue of material fact where a party has failed to adduce proof to meet an essential part of the applicable legal standard. The court applied this principle in determining whether the plaintiff had created an issue of fact as to whether the defendant infringed plaintiff’s patent under the doctrine of equiva- lents. The court found that in order to survive summary judgment, the plaintiff would be required to present some evidence showing that the defendant’s product per- formed substantially the same function in substantially the same way to achieve substantially the same result. The absence of evidence on any one of these three ele- ments would warrant a grant of summary judgment with respect to the claim of infringement. 946 F.2d at 1539- 40. This standard is equally applicable to the case at bar. In finding that there existed no genuine issue of material fact as to whether National Starch and Beazer infringed either of these two patents, the court stated that Kaliardos had failed to present any evidence showing that the ingredients used in these two defendants’ pro- ducts contained any one of the elements of plaintiff's claims. The court went on to note that, in prosecuting his patents, plaintiff had made changes in his applications in order to secure the patent. In the ’530 claim, plaintiff had modified the coating so as to require a) perchloro- ethylene and b) petroleum distillate having a boiling point ranging between 350 degrees and 380 degrees l4a Fahrenheit. In the ’036 patent, claim 1 was modified to require a) aromatic hydrocarbon resin having a softening point, R and B of 70C.-140C, and b) chlorinated rubber having a combined chlorine content of at least 66%. The court went on to find that, in order to have literal infringment of claim 1 of the ’530 patent, the challenged product would have to contain perchloroethylene, a nonionic surfactant and [N.N.N.’,N’-tetrakis (2-hydroxy- propyl) ethylenediamine]. In order for there to be infringement by equivalents of claim 1 of the °530 patent, the challenged substance would have to contain perchloroethylene. For there to be literal infringement of claim one of the "036 patent, the accused substance would have to contain mixtures of aluminum paste or zinc paste or equivalent mixtures, aromatic hydrocarbon resins having softening points, R and B, of 70 degrees C.-140C., chlorinated rubber having chlorine content of at least 66% and aro- matic hydrocarbon solvents or chlorinated solvents. In order for there to be infringement by equivalents of the °036 patent, the aromatic hydrocarbon resins and chlori- nated rubber with chlorine content of at least 66% was considered essential. These findings by Judge Gadola are applicable to this report under the law of the case doc- trine and will be applied here. See Gnffin v. MDOC, No. 91-1523, 1993 U.S. App LEXIS 24392 (6th Cir. Sep- tember 23, 1993).4 * While the law of the case doctrine is generally applied to deci- sions of a lower court that have been decided on appeal, the doc- trine would seem to be applicable in this case, where a district judge has made findings on issues later presented to a magistrate judge. OR BN Ot Rabe am ate 15a ANALYSIS Plaintiff’s responses to the motions for summary judg- ment are difficult to analyze because his claims have evolved over time. Indeed, his factual and legal arguments have evolved greatly since the court’s decision on the Beazer and National Starch motions. Analysis is further complicated by the fact that the evidence put forward by the plaintiff is inconsistent in the sense that tests per- formed on the same substances over a period of years have produced differing results. This has resulted in con- flicting affidavits being filed by plaintiff's primary expert, David Byrd. In analyzing the evidence in this case for the purpose of resolving the motions for summary judgment, the court must be mindful of the nature of the evidence presented by the opposing parties. The defendants have submitted affidavits, deposition testimony, and docu- ments showing that the products that they were produc- ing and selling to GM did not infringe upon plaintiff’s products either literally or under the doctrine of equiva- lents. In response, the plaintiff and his expert have analyzed what they believed were sealants from six GM car doors selected at random from junkyard to determine whether the sealants in those cars infringed on plaintiff's patents. Unfortunately, plaintiff’s inability to identify the mate- rials tested, their confusion over the cars from which the doors were taken, and their inability to identify the producers of the particular sealants found on the doors have increased the difficulty in evaluating the evidence. The best that can be said for plaintiff’s evidence in opposition to the motions for summary judgment is that it is muddled and difficult to comprehend. In light of this 16a state of the record, I believe that the clearest way to analyze whether there exists a genuine issues of fact for trial is to examine the remaining allegations against each defendant individually to determine what, if any- thing, remains as a legitimate factual issue requiring jury determination. BASF As noted above, plaintiff claims that BASF’s $51Z001 wax coating has infringed claims 1 and 2 of the ’530 patent under the doctrine of equivalents and has infringed the ’036 patent both literally and under the doctrine of equivalents. BASF claims that it has used a single anti- corrosion coating formula, which it has occasionally altered, since the early 1960’s. As of September 3, 1976, the formulation for BASF’s $51Z001 wax coating was listed as follows: VM&P Naptha—54.66% Mineral Spirits—7.79% High melting point wax—.60% Petroleum hydrocarbon resin—23.39% Aluminum flake powder—2.12% Microcrystalline wax—11.44% Sometime prior to January 31, 1984, hydrocarbon resin was substituted for petroleum resin, and leafting aluminum flake paste was substituted for leafing alumi- num powder. BASF substituted No. 2429 Naphtha for VM&P Naphtha in May 1982, but switched back to the VM&P Naphtha in August 1982. The aluminum paste used by BASF includes trace amounts of stearic acid, which can act as both a surfactant and a chelating agent. According to BASF, the formula is based on a patent for an anti-corrosion coating issued in Canada to Rinshed- ats —_—T — 17a Mason Company” employee, Rebecca Sandretto. The Sandretto patent lists as ingredients: Microcrystalline wax, a hydrocarbon solvent [VM&P Naphtha is recom- mended], pigment [Aluminum, iron and other metals are suggested], and a petroleum resin [petroleum resin ts a hydrocarbon resin] .° In November 1984, GM provided Kaliardos with a can of a liquid sample of BASF’s coating for testing. Chemi- cal Industrial Services, Inc. [CIS] tested the sample, and in a report dated January 29, 1985, CIS stated that the sample did not contain perchloroethylene, which is neces sary for infringement of the '530 patent. The test also failed to disclose the presence of chlorinated solvent or chlorinated rubber, which would be necessary for infringe- ment of the ’036 patent. The test also found Naphtha, which is primarily an aliphatic solvent, rather than an aromatic hydrocarbon solvent. VM&P Naphtha will not dissolve Parlon, the chlorinated rubber suggested by Kaliardos in the 036 patent. Byrd Dep. pp. 134-135. On May 8, 1988, David Byrd submitted results from a test conducted on the same sample of BASF coating. The test results showed a quantity of less than 5% perchloro ethylene or other chlorinated solvents. However, Byrd later testified that this finding was the equivalent of no detection at all. The test also did not detect chlorinated rubber. In October 1989, David Byrd again tested a sample of BASF coating on different machinery and issued the following findings concerning the substances contained in the coating: sit appears that Rinshed-Mason was purchased by Inmont Corporation, which itself was later purchased by BASF. SExhibt 15, Defendants’ Motion for Summary Judgement. 18a Microcrystalline wax—present Hydrocarbon resin—present Chlorinated rubber—present Aluminum—present Zinc—not detected Barium—present trace Surfactant—present Perchloroethylene—present On January 2, 1990, Kaliardos gave Clayton Environ- mental Consultants a sample of the same BASF coating and a sample of sealant allegedly taken from the doors of a 1983 Oldsmobile Ciera. Gas chromatrography/mass spectrometry tests performed at Clayton’s Novi labora- tory detected aromatic compounds in both samples, but did not detect tetrachloroethane.’ Clayton then sent a sample to their Windsor laboratory for static headspace analysis by gas chromatography using an electron capture detector [GC/ECD]. The presence of a very small amount of tetrachloroethane was detected by the test.® Finally, on October 19, 1992, mere days before the motion for summary judgment was argued, Mr. Byrd submitted another affidavit stating that further tests on the BASF ’Tetrachloroethane is another name for perchloroethylene. SThere is some question as to what was actually tested at the Windsor laboratory. According to Daryl Strandbergh, the director of the Novi lab, he sent over a liquid material in a sealed test tube to Windsor. This would indicate that the material sent was from the sample submitted by GM. Paul Epstein, the director of the Windsor lab testified that the substance that was tested was solid and gummy in texture which would seem to indicate that it was the sample taken from the Ciera. The chemist conducting the test, Paul Johnson later filed an affidavit stating that the substance that he tested was a liquid, rather than a solid substance. The defendant’s motion to strike all of these affidavits, because of the inability to identify the substance tested, was denied. 19a liquid material disclosed the presence of 1,1 dichloro- ethene and certain aromatic solvents. BASF has submitted the affidavit and deposition of Tommie Bemis, who formulated the BASF product for 23 years. He stated that BASF has never used perchloro- ethylene, any other chlorinated solvent, chlorinated rubber, zinc, or neutral barium sulfate in its product. BASF has also submitted the affidavit of Rebecca San- dretto, the holder of the Canadian patent on the BASF product who states that her invention did not contain perchloroethylene. Finally, BASF relies on the CIS tests which revealed no perchloroethylene in the substance. To the extent that plaintiff asserts that the BASF product literally infringes the 036 patent, I must con- clude that the defendant is entitled to summary judg- ment. In order for there to be a literal infringement of claim 1 of the ’036 patent, every single element of limitation must be found in the accused product. The 036 patent requires that there be, among other ingredi- ents, neutral barium sulfonate. Here, even assuming that perchloroethylene was contained in the BASF product as found in some of plaintiff’s tests, there is simply no evidence of any neutral barium sulfonate. Indeed, Mr. Byrd testified that while he did detect some barium in one of his tests, he never tested for neutral barium sulfonate. In the absence of any evidence of the presence of this required element of claim 1 of the '036 patent, it cannot be said that the plaintiff has met his burden of showing a genuine issue of fact with respect to literal infringement. Accordingly, summary judgment on this claim should be granted to BASF.? 9 Even if it could be said that there was sufficient evidence to create a genuine issue of fact on the claim of literal infringement of [footnote continued] er ey 20a The question of whether there exists a genuine issue of fact on the claim of infringement by equivalents of both patents revolves around the Graver Tank function/ way/result analysis. As noted earlier, the Federal Circuit requires that there be explicit testimony and linking argument substantiating all three aspects of equivalency. Lear Siegler, 873 F.2d at 1425-26. Here, there is no such testimony. Indeed, when specifically asked whether any of the defendants products perform substantially the same function in substantially the same way to produce substantially the same results as plaintiff’s two patents, Mr. Byrd testified that he had no evidence to support that conclusion. Indeed, he stated that he did not con- duct any tests on any of the defendants’ products to determine how their ingredients work in combination or whether they work the same way as plaintiff’s pro- ducts. In the absence of any evidence that the Graver Tank elements have been met in this case, BASF is also entitled to summary judgment on the claims of infringe- ment of both the ’036 and ’530 patents under the doc- trine of equivalents.!° DAUBERT Daubert began developing a wax-type anti-corrosion coating in 1975, and they first started selling a product formulated to meet CM Specification 998-1128 in the ’036 patent, there is no evidence that the components of the accused product meet the percentage requirements of the second claim of that patent. 10RASF and General Motors have also asserted that plaintiff’s patents are invalid under 35 U.S.C. §102(b) since the “infringing” product was sold by BASF and used by General Motors more than one year before the dates of Kaliardos’ patent applications. In view of my recommendation, this issue does not need to be resolved. MA ens ont! AAO SARL MOLLY 2ia February 1979. Since 1979, Daubert has produced three different wax-type anti-corrosion formulas. NOX RUST X-151, which was used by the company from 1979 until 1986, combines: Microcrystalline wax—16-21% Polyethylene wax—.6-.8% Hydrocarbon resin—!4.5-16.5% Lead sulfonate—.4-.6% Colloidal silica—.7-1.2% Aluminum paste—1.0-2.0% VM&P Naphtha—6.2-59.0% In 1986, the company discontinued manufacture of NOX RUST X-151 and started manufacturing a product without aluminum to meet GM Material Specification 998-2250, which was issued in 1983 and calls for a clear coating. This product, NOX RUST X-170,"! combines: Hydrocarbon resin—29.8-34.5% Barium sulfonate—1.8-2.1% Petroleum oil—6-7% VM& P Naphtha—41.5-42.5% Caster oil derivative—.5-1.6% Colloidal silica—.4-1.5% Petrolatum wax—8.5-10.5% Microcrystalline wax—7.0-10.7% Plaintiff contends that the NOX-RUST X-151 infringes the ’530 patent under the doctrine of equivalents and the 036 patent both literally and under the doctrine of equivalents. He further contends that NOX-RUST X-170 infringes the 530 patent under the doctrine of equiva- lents. In support of this claim, plaintiff relies solely on 11 naubert discontinued production of the NOX RUST X-170 in 1990 and began using NOX RUST X-175. The X-175 formula is not alleged to be infringing either of the patents. 22a tests conducted on the door of a 1984 Buick Skylark which he believes contained a Daubert sealant. Tests on that door detected chlorinated rubber and solvents but also detected zinc and no aluminum. A trace of per- chloroethylene was also detected. Defendants have submitted the results of tests con- ducted by the Shrader Laboratory on its door coatings which show that its coatings do not contain any chlori- nated solvents. They also contend that plaintiff has failed to establish that the Skylark door contains any sealant manufactured by Daubert. As noted above, the uncontested evidence shows that NOX-RUST X-170 was not manufactured until 1986. Daubert therefore contends that whatever is on the 1984 Skylark cannot be X-170. Daubert further notes that the test of the Skylark door disclosed zinc, but not aluminum. The uncontested evidence shows that NOX- RUST X-151 did not contain zinc, but did contain aluminum. Because the Skylark was manufactured before 1986, the material on the door cannot be NOX-RUST X-170. Because the sealant contains zinc, but no aluminun, it cannot be NOX-RUST X-151. Thus, there is no evidence in this record to suggest that these Daubert sealants infringed plaintiff’s patents either literally or under the doctrine of equivalents. I therefore recommend that Daubert’s motion for summary judgment be granted.!” 121 should also be noted that any coating alleged to contain chlorinated rubber or aluminum cannot infringe the °530 patent either literally or under the doctrine of equivalents. Kaliardos stated in his application for the ’036 patent that chlorinated rubber performs the important function of making the coating more resistant to detergents. I find that this additional ingredient in the [footnote continued] ORR ABM ct Pil AT tees Baise 23a FULLER Fuller manufactures two formulas that are named in this suit. The formula for WC-2291 lists: Microcrystalline wax—15-30% VM&P Naphtha (an aliphatic solvent containing small amounts of aromatics)—20-40% | Aliphatic oil (Hydro treated)—1-5% Calcium sulfonate—5-10% Paraffinic wax—5-10% Aliphatic hydrocarbon resin—15-30% A second product, WC-2291-P, is similar to WC-2291, but also contains mineral spirits. Kaliazrdos claims that Fuller coatings WP-2291 and WP-2291-P infringe claims 1 and 2 of his ’530 patent under the doctrine of equivalents. In support of this claim, David Byrd submitted an affidavit on October 19, 1992 stating that he detected the chlorinated solvent 1,1, dichloroethene and the aromatic solvents benzene, toluene, ethylbenzene and xylene in both the WC-2291 and WC-2291-P coating samples submi*ted by Fuller. Byrd also stated that he examined wax coatings taken from the doors of a 1987 Chevrolet Celebrity, a 1988 Oldsmobile Delta 88, and a 1991 Pontiac Grand Prix.’° He stated that he found microcrystalline wax and per- chloroethylene in the Celebrity and the Delta 88 and ’036 patent materially affects the basic ingredient composition of the ’530 patent. Dow Chemical v. American Cyanamid Co., 615 F.Supp. 471 (E.D. La. 1985), aff'd 816 F.2d 617 (Fed. Cir. 1987). Similarly, the addition of aluminum in the ’036 patent materially affects the composition of the ’530 patent in that it is said to provide a hard shell as well as pigment. 13 piaintiff initially identified the Pontiac Grand Prix as a 1989 Cadillac Eldorado. After a great deal of discovery and expense, it has been properly identified. << Sisal SI 24a found zinc and surfactants in the Grand Prix.'* In his affidavit, Byrd also compares the ingredients of the "530 patent with the recipe for the Fuller WC-2291-P and concludes that the Fuller coating “thas the ingredients . or their equivalents of claim 1 of U.S. Patent No. 3,959,530.” In response, Fuller has submitted the affidavit of Michael Pellney, a chemist and the Technical Director for Fuller and before that, for Widger Chemical. Pellney States in his affidavit that there is neither perchloro- ethylene nor aromatic hydrocarbon solvents in the Fuller formulas, both of which are necessary to find infringement of the 530 patent under the doctrine of equivalents, pursuant to the law of the case. He further states that Fuller never manufactured or sold coatings containing the ingredients in Kaliardos’ patents. In addition, Fuller contends that the tests conducted on the doors of the 1987 Celebrity and the 1988 Olds Delta cannot be considered in opposition to its motion for summary judgment. This contention is correct. It should be remembered that Fuller did not begin manu- facturing these coatings until 1989 and therefore, no coating by Fuller could possibly be on these vehicles. l4The deposition testimony and affidavits regarding the 1991 Pontiac Grand Prix has been stricken by me in an order dated October 1, 1992. There was meager evidence in the record that this vehicle even contained a wax coating similar to those in issue here. Indeed the evidence seemed to indicate that Mr. Byrd tested an adhesive rather than a coating. Regardless, Byrd filed two affi- davits, one stating that the Pontiac contained a Daubert coating, the other stating that it contained a Fuller coating. Plaintiff’s inability to identify the source of the alleged sealant on the 1991 Pontiac door compelled the conclusion that it not be considered against any of the defendants. 25a Finally, as with the BASF motion, there is no showing, with the requisite specificity, that the accused product performs substantially the same function, in substanti- ally the same way with substantially the same results as the patented substance. Indeed, Byrd’s testimony at his deposition is to the contrary. He specifically stated that there is no evidence to meet and he has conducted no tests to estalbish the Graver Tank requirements. There- fore, I find that there is no genuine issue of fact for trial on the issue of infringement under the doctrine of equivalents and recommend that summary judgment be granted in favor of Fuller. GENERAL MOTORS General Motors was initially alleged to have infringed plaintiff’s patents under 35 U.S.C. §271(a) as an unauth- orized user or seller of the patented inventions. Because I have concluded that plaintiff has failed to meet his burden of creating a genuine issue of fact on the issue of infringement with respect to the three suppliers, sum- mary judgment should also be granted in GM’s favor. Plaintiff's secondary contention that GM may have modified the materials supplied by the other defendants so as to infringe on the patent is the exact type of specu- lative and conclusory argument which may not be deemed to create a genuine issue of fact for trial. See Matsushita Elec. Indus. Co., 475 U.S. at 86; Boddy, 821 F.2d at 349. Accordingly, for the reasons stated with respect to the other defendants, summary judgment should be granted to General Motors. RE REE ER SO PRCA 26a CONCLUSION My review of this record establishes that the formulas used by the defendants in manufacturing their coatings have repeatedly been shown not to contain the essential elements of the Kaliardos patents, through both the dis- closure of the formulas and scientific testing of those | formulas. There is simply no evidence in this record which would create a genuine issue of material fact as | to whether any of the accused products infringe upon Kaliardos’ patents either literally or under the doctrine of equivalence. Simply put, plaintiff’s case is one that began with, and continues to rest upon, pure speculation and conclusion. This is insufficient to withstand summary judgment. Accordingly, for the reasons stated, I respect- fully recommend that the defendants’ motion for sum- mary judgment be granted and that this matter be dis- missed. Pursuant to Rule 72(b) of the Federal Rules of Civil Procedure and 28 U.S.C. §636(b)(1), the parties are hereby notified that within ten days after being served with a copy of this recommendation, they may serve and file specific written objections to the proposed findings and recommendations. Further, either party may respond to another party’s objections within ten days after being | served with a copy thereof. The parties are further informed that failure to timely file objections may con- stitute a waiver of any further right of appeal to the United States Court of Appeals. Untted States v. Walters, 638 F.2d 947 (6th Cir. 1981). Moat RAL: RB: Westone nee Ate mei it BBL eae AES a /s/ Marc L. Goldman MARC L. GOLDMAN UNITED STATES MAGISTRATE JUDGE Date: OCTOBER 7, 1993 27a APPENDIX B District Court’s Opinion Granting Summary Judgment Non-Infringement to Co-Defendants National Starch and Beazer East [Kaliardos v. General Motors et al, 777 F.Supp. 543 (E.D. Mich. 1991)] UNITED STATES DISTRICT COURT, E.D. MICHIGAN, S.D. No. 88-73729 NICOLAS KALIARDOS, Plaintiff, GENERAL MOTORS CORPORATION, BASF CORPORATION, DAUBERT INDUSTRIES, INC., H.B. FULLER COMPANY, NATIONAL STARCH & CHEMICAL CORPORATION, and BEAZER EAST, INC., JOINTLY AND SEVERALLY, Defendants. Nov. 12, 1991 Alex Rhodes, Richard Knoll, Birmingham, Mich., for Nicolas Kaliardos. Herbert Furman, General Motors Corp., Detroit, Mich., Bernard J. Cantor, Harness Dickey, Troy, Mich., for General Motors Corp., BASF Corp. and H.B. Fuller Co. 28a Ira S. Auslander, Auslander & Churilla, John A. 4 William J. Schramm, Brooks & F.ushman, Southfield, Mich., for Daubert Industries, Inc. William G. Abbatt, Ernie L. Brooks, Brooks & Kush- man, Bob Randenburg, Southfield, Mich., for Nat. Starch 1 & Chemical Corp. and Beazer East, Inc. MEMORANDUM OPINION AND ORDER : GRANTING DEFENDANTS’ NATIONAL STARCH : & CHEMICAL CORPORATION AND BEAZER ; EAST, INC. MOTION FOR SUMMARY JUDGMENT ON COUNT 1, PATENT INFRINGEMENT GADOLA, District Judge. Plaintiff Nicholas Kaliardos filed this complaint on September 14, 1988, charging General Motors Corpora- tion and BASF Corporation with infringing U.S. Patent Nos. 3,959,530 and 4,356,036. In February 1990 plain- tiff added claims of infringement against National Starch & Chemical Corporation. In September 1990 plaintiff added claims of infringement against Beazer East, Inc. ca Nain nein Rte NAS Neh be Bain IS PLL NOs eds ee NMS eS NE tee are ea Shao lt The patents each relate to specific mixtures of chemi- cal ingredients for wax-type, solvent-based, anti-rust coatings. Plaintiff accuses National Starch and Beazer of infringement by manufacturing and selling wax-type, solvent-basee coatings to General Motors. Defendants National Starch and Beazer now bring the instant motion for summary judgment on the patent infringement claims against them. For the reasons set forth below, the defen- dants’ motion is granted. 29a FACTS During the 1970’s vehicle corrosion was a serious problem for automobile manufacturers. The plaintiff, a self-taught chemist, experimented with, tested and invented two wax-type, anti-corrosion coatings. Plaintiff submitted his inventions to the Patent and Trademark Office (PTO). After some language difficulties expressed by the Patent Office Examiner, plaintiff was granted U.S. Patent No. 3,959,530 and No. 4,356,036. Claim 1 to U.S. Patent No. 3,959,530 reads as follows: A cleaning and protective coating composition consisting essentially of a mixture of wax residue such as paraffin and microcrystalline wax, perchlogoethylene, petroleum distillate having a boiling point ranging between 350 degrees and 380 degrees F., and a nonionic surfactant such as nonylphenoxypoly (ethyleneoxy) and a small amount of [N.N.N’, N’-tetrakis (2-hydro- xypropyl) ethylenediamine]. The italicized terms were changes made by the plaintiff in response to references cited by the PTO. These changes were necessary to secure the patent. Claim 1 to US. Patent No. 4,356,036 reads as follows: An anti-corrosion coating composition com- prising a mixture of aluminum paste or zinc paste con- taining aluminum or zinc flakes and a solvent, microcrystalline wax, aromatic hydrocarbon resin having a softening point, R and B, of 70 C.-140 C., 30a cholrinated rubber having a combined chlorine content of at least 66%, neutral barium sulfonate, chlorinated solvent, aromatic hydrocarbon solvent and mineral spirits. Again, the italicized terms were changes made by the plaintiff in response to references cited by the PTO. These changes were necessary to secure the patent. Plain- tiff asserts he invented the two wax-type, anti-corrosion coatings to specifically meet the requirements of General Motors Material Specifications 998-1128 and 998-2150. General Motors never accepted any of plaintiff’s coatings for use. From 1980 to the present, General Motors has used wax-type coatings on the inside surfaces of its auto- mobiles. From the mid-1970s, Koppers, Inc. and Parr, Inc., predecessor companies to National Starch and Beazer, supplied General Motors with a wax-type coating, defendants’ product No. 820-1913, that General Motors sprayed into the interior of car doors and other body parts. Two prototype batches of a dripless coating, defen- dants’ product No. 820-1914, were made in 1987-88. Both of these products correspond to General Motors Material Specification 998-2150. According to defen- dants and their affiant Mr. Habjanic, no coating was supplied by National Starch, Beazer or any predecessor company that met General Motors Material Specification 998-1128. National Starch is the successor to a part of Beazer’s business that used to supply coating No. 820- 1913. Plaintiff claims that General Motors received proprie- tary information from plaintiff during the testing process on his patented coating. Plaintiff further claims that te Rb bi eta 3la General Motors gave this information to National Starch and Beazer, among others, in order to duplicate and utilize the coatings without compensating the plaintiff. National Starch, Beazer and General Motors deny these allegations. Further, defendants’ affiants Mr. Habjanic and Mr. Meilus state that the defendants’ products No. 820-1913 and No. 820-1914 do not contain the identical nor the essential ingredients contained in the plaintiff's patented coatings. The plaintiff, in a sworn affidavit, disputes this last contention, further adding that “the ingredients or their equivalents which Mr. Habjanic repre- sents are not present in Koppers 820-1913 and 820-1914 coatings are necessary for meeting the General Motors 998-1128 and 998-2150 Material Specifications.” STANDARD OF REVIEW Under Rule 56(c) of the Federal Rules of Civil Proce- dure, summary judgment may be granted “‘if the plead- ings, depositions, answers to interrogatories, and admis- sions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” ‘‘A fact is ‘material’ and precludes grant of sum- mary judgment if proof of that fact would have [the] effect of establishing or refuting one of the essential elements of the cause of action or defense asserted by the parties, and would necessarily affect [the] application of appropriate principle[s] of law to the rights and obliga- tions of the parties.” (Citation omitted.) Kendall v. Hoover Co., 751 F.2d 171, 174 (6th Cir. 1984) (quoting Black’s Law Dictionary 881 (6th ed. 1979)). The Court must view the evidence in a light most favorable to the ! Kaliardos Affidavit at para. 13. 32a nonmovant as well as draw all reasonable inferences in the nonmovant’s favor. See United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 994, 8 L.Ed.2d 176 (1962); Bender v. Southland Corp., 749 F.2d 1205, 1210-11 (6th Cir. 1984). The movant bears the burden of demonstrating the absence of all genuine issues of material fact. See Gregg v. Allen-Bradley Co., 801 F.2d 859, 861 (6th Cir. 1986). The initial burden on the movant is not as formidable as some decisions have indicated. The moving party need not produce evidence showing the absence of a genuine issue of material fact; rather, ‘“‘the burden on the moving party may be discharged by ‘showing’—that is, pointing out to the district court—that there is an absence of evi- dence to support the nonmoving party’s case.’”’ Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 2554, 91 L.Ed.2d 265 (1986). Once the moving party discharges that burden, the burden shifts to the non- moving party to set forth specific facts showing a genuine triable issue. Fed.R.Civ.P. 56(e); Gregg, 801 F.2d at 861. To create a genuine issue of material fact, however, the nonmovant must do more than present some evi- dence on a disputed issue. As the United States Supreme Court stated in Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249-50, 106 S.Ct. 2505, 2511, 91 L.Ed.2d 202 (1986). There is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party. If the [nonmovant’s] evidence is merely colorable, or is not significantly probative, summary judgment may be granted. (Citations omitted); See Catrett, 477 U.S. at 322-23, 106 S.Ct. at 2552-53; Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, ze ee eee ee en are Seen ae Can eb mene anne oo 33a 1355-56, 89 L.Ed.2d 538 (1986). The standard for sum- mary judgment mirrors the standard for a directed verdict under Fed.R.Civ.P. 50(a). Anderson, 477 U.S. at 250, 106 S.Ct. at 2511. Consequently, a nonmovant must do more than raise some doubt as to the existence of a fact; the nomovant must produce evidence that would be sufficient to require submission to the jury of the dispute over the fact. Further, summary judgment is as applicable in patent cases as any other. As the Federal Circuit stated in John- ston v. IVAC Corp., 885 F.2d 1574, 1576 (Fed.Cir. 1989): As in other cases, the grant of summary judgment under Fed.R.Civ.P. 56 is appropriate in a patent case where no genuine issue of material fact exists and the movant is entitled to judgment as a matter of law. e a4 [T]he motion of an accused infringer for judgment on the ground of non-infringement of a patent may be granted where the patentee’s proof is deficient in meeting an essential part of the legal standard for infringement. APPLICABLE LAW A patent is a federal statutory grant under 35 U.S.C. §101. The patent, to be protected, must comport with certain statutory requirements. Section 112 of Title 35 states in relevant part that: [A patent] specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 34a 35 U.S.C. §112. The Federal Circuit has stated that “(t]he claims alone delimit the right to exclude; only they may be infringed.’’ Environmental Instruments Inc. v. Sutron Corp., 877 F.2d 1561, 1564 (Fed.Cir. 1989). In patent law, every element of the claim must be found in the accused product—either actually or by a substantially equivalent element—in order to find an infringement. [W]here the respondent in constructing his [pro- duct] omits one of the ingredients of the com- plainant’s combination, he does not infringe the complainant’s patent. Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 950 (Fed.Cir. 1987) (Nies, J., concurring), cert. denied, 485 U.S. 961, 1009, 108 S.Ct. 1226, 1474, 99 L.Ed.2d 426 (1988); see also Lemelson v. United States, 752 F.2d 1538, 1551 (Fed.Cir. 1985) (“the plaintiff must show the presence of every element or its substantial equivalent in the accused [product]”’). Thus, the accused infringer . . . is entitled to sum- mary judgment, on the ground of non-infringement, by pointing out that the patentee failed to put forth evidence to support a finding that [an element] of the asserted claim was met by the . . . accused [product]. Johnston, 885 F.2d at 1578. Infringement may be shown in only two ways. First, if every single element of limitation in the claim is found in the accused product, there is literal infringement. See Builders Concrete, Inc. v. Bremerton Concrete Prods. Co., 757 F.2d 255, 257 (Fed.Cir. 1985). Second, infringement can occur where the accused product has corresponding elements which perform substantially the same function 35a in substantially the same way to obtain the same result. See Graver Tank Co. v. Linde Air Prods. Co., 339 U.S. 605, 609-10, 70 S.Ct. 854, 856-57, 94 L.Ed. 1097 (1950); Buslders Concrete, 757 F.2d at 258. This second path to infringement is called the doctrine of equivalents. The doctrine of equivalents will not extend to allow the patentee to recapture through equivalence certain converage given up during prosecution of his patent appli- cation. See Pennwalt, 833 F.2d at 934 n.1. Therefore, the language changed by the plaintiff in securing his patents is critical if the doctrine of equivalents infringement is pursued. This limitation is called prosecution history estoppel. Prosection history estoppel, which precludes a patentee from obtaining a claim construction that would resurrect subject matter surrendered during prosecution of his patent application . . . limits a patentee’s reliance on the doctrine of equivalents. ... Builders Concrete, 757 F.2d at 258; see also Jonsson v. Stanley Works, 711 F.Supp. 1395, 1403 (N.D.Ohio 1989) (“Arguments and remarks made by plaintiff’s counsel during prosecution of the patent application can also be used to determine the scope of the claims”), aff'd., 903 F.2d 812 (Fed.Cir. 1990). Finally, a claimant may not “broaden his claim by dropping [an] element which he was compelled to inciude in order to secure his patent.” J.7.S. Rubber Co. v. Essex Rubber Co., 272 US. 429, 443, 47 S.Ct. 136, 141, 71 L.Ed. 335 (1926). ANALYSIS Plaintiff Kaliardos claims that National Starch and Beazer have infringed Claim 1 of each of his patents. However, plaintiff has not produced sufficient initial or rebuttal evidence to meet his burden of production. 36a In response to interrogatories asking plaintiff which of the products manufactured or sold by National Starch and/or Beazer infringes plaintiff’s patents, plaintiff identi- fied the product sold under General Motors Specification 998-1128. However, no sales of this product by National Starch or Beazer have been identified by the plaintiff. In fact, the defendants’ affiant states that no product sold by National Starch, Beazer or their predecessors matched General Motors Material Specification 998-1128.° If the defendants did supply General Motors with the coating it used under 998-1128, then plaintiff should have come forth with some hard evidence. The plaintiff states that he needs more time to effect discovery to retrieve this evidence. However, National Starch has been a named defendant for 20 months. Beazer has been a named defen- dant for over 13 months. Thus, this court is lead to the conclusion that there is either no link betwewn the movants and 998-1128, or plaintiff has been extremely dilatory in his discovery. Either conclusion is fatal to plaintiff’s case. Further, the affidavits of Habjanic and Meilus state that National Starch’s and Beazer’s wax-type coatings do not include (a) perchloroethylene,* (b) nonionic surfac- tants,” (c) [N.N.N’, N’-tetrakis (2-hydroxypropy]l) 2 Plaintiff's Answer No. 17 to Defendant Beazer’s First Set of Interrogatories; Plaintiff’s Answer No. 7 to Defendant National Starch’s First Set of Interrogatories. 3 Habjanic Affidavit at para. 3. * Habjanic Affidavit at para. 7 (referring to movants’ product 820-1913); id. at para. 11 (referring to movants’ product 820- 1914); Meilus Affidavit at paras. 7 and 14 (referring to all movants’ anti-corrosion coatings). > Habjanic Affidavit at para. 9 (referring to movants’ product 820-1913); Meilus Affidavit at para. 8 (referring to all movants’ anti-corrosion coatings). aad Mond arta yd ina 37a ethylenediamine] ,° (d) mixtures of aluminum paste or zinc paste or equivalent mixtures,’ (e) aromatic hydro- carbon resins having softening points, R and B, of 70 degrees C.-140 degrees C.,° (f) chlorinated rubber having a combined chlorine content of at least 66%,” (g) aro- matic hydrocarbon solvents,!® or (h) chlorinated sol- vents.!! Plaintiff has not put forth any proof that these affidavits are false or misleading. The only evidence plaintiff has offered is his own affidavit. The Plaintiff states that the ingredients of movants’ products 820-1913 and 820-1914 listed in the attachments to the Habjanic Affidavit are accurate.!* The plaintiff then points out that the ingredients in the movants’ products are identi- fied by their trademark names and not their chemical formulae.!? The complainant continues: There are no disclosures in Attachments “A” and “B”’ of the ingredients in the trademarked products, their chemical formula [sic] or their percentages by weight. SMeilus Affidavit at para. 9 (referring to all movants’ anti- corrosion coatings). ” Habjanic Affidavit at para. 12 (referring to movants’ products 820-1913 and 820-1914). 8Meilus Affidavit at para. 10 (referring to all movants’ anti- corrosion coatings). 9 Habjanic Affidavit at para. 13 (referring to movants’ products 820-1913 and 820-1914); Meilus Affidavit at para. 11 (referring to all movants’ anti-corrosion coatings). 10Meilus Affidavit at para. 13 (referring to all movants’ anti- corrosion coatings). II Meilus Affidavit at para. 12 (referring to all movants’ anti- corrosion coatings). 12k aliardos Affidavit at para. 8. 13 ryid. at para. 9. 38a Kaliardos Affidavit at para. 10. While this is true, this does not refute the very clear statements made by Mr. Habjanic and Mr. Meiluc. All this does is tell the court that the plaintiff does not know these trademarked pro- ducts’ chemistry. This bare statement does not indicate that the trademarked products used as ingredients in the movants’ products contain any one of the elements in the patentee’s claims. Elements (a) through (c) are essential for literal infringement of Claim 1 to U.S. Patent 3,959,530. Ele- ment (a) is essential for equivalent infringement of Claim 1 to U.S. Patent 3,959,530. Elements (d) through (h) are essential for literal infringement of Claim 1 to USS. Patent 4,356,036. Elements (e) and (f) are essential for equivalent infringement of Claim 1 to U.S. Patent 4,356,036. As not all elements are present in the movants products, patent infringement is not possible. Therefore, summary judgment in favor of the movants is proper. Johnston, 885 F.2d at 1578. 39a APPENDIX C Order Granting Partial Summary Judgment of Non-Infringement UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION Civil Action Case No. 88-CV-73729-DT HON. Paul V. Gadola NICOLAS KALIARDOS, Plaintiff, vs. GENERAL MOTORS CORPORATION, BASF CORPORATION, DAUBERT INDUSTRIES, INC., H.B. FULLER COMPANY, and H.B. FULLER AUTOMOTIVE INDUSTRIES, INC., jointly and severally, Defendants. ORDER GRANTING PARTIAL SUMMARY JUDGMENT OF NON-INFRINGEMENT Upon stipulation of the Plaintiff Nicolas Kaliardos (Kaliardos) and the Defendants General Motors Corpora- tion (General Motors); BASF Corporation (BASF); Daubert Industries, Inc. (Daubert); H.B. Fuller Com- pany (Fuller Company); and H.B. Fuller Automotive Products (Fuller Automotive), by and between their respective counsel, IT IS HEREBY ORDERED: 40a 1. The BASF, Fuller Automotive, and Daubert coat- ings do not literally infringe claims 1, 2, 3, 4, 5 and 6 of U.S. Patent No. 3,959,530. 2. The BASF, Fuller Automotive; and Daubert coat- ings do not infringe claims 3, 4, 5 and 6 of U.S. Patent No. 3,959,350 under the Doctrine of Equivalents. 3. Plaintiff’s complaint with respect to infringement of claims 3, 4, 5 and 6 of U.S. Patent No. 3,959,530 is dis- missed with prejudice. 4. The Fuller Automotive coatings do not infringe any of the claims of U.S. Patent No. 4,356,036 by literal infringement or under the Doctrine of Equivalents. 5. The BASF and Daubert coatings do not literally infringe claims 2, 3, 4 and 7 of U.S. Patent No. 4,356,- 036. 6. The BASF and Daubert coatings do not infringe claim 7 of U.S. Patent No. 4,356,036 under the Doctrine of Equivalents. 7. Plaintiff’s complaint of infringement of claim 7 of U.S. Patent No. 3,356,036 is dismissed with prejudice with respect to BASF and Daubert. 8. Plaintiff’s complaint of infringement of U.S. Patent No.4,356,036 by Fuller Company and Fuller Automotive is dismissed with prejudice. 9. Daubert’s coating Nox-Rust X-170 does not infringe U.S. Patent No. 4,356,036. Dated:10/16/92 /s/ [Ilegible] UNITED STATES DISTRICT JUDGE 4la SO STIPULATED: /s/ Alex Rhodes /s/ Bernard J. Cantor Attorney for Plaintiff Attorney for Defendants General Motors, BASF, H.B. Fuller Company and H.B. Fuller Automotive Products, Inc. /s/ John A. Artz (10/14/92) Attorney for Defendant Daubert Industries, Inc. 42a APPENDIX D General Motors Corporation Rule 29.2 Statement STATEMENT PURSUANT TO SUPREME COURT RULE 29.1 General Motors Corporation does not have a parent company. Its non-wholly owned subsidiaries that have issued shares to the public are identified below. Publicly Traded Subsidiaries and Affiliates: Isuzu Motors Ltd. Suzuki Motor Corp. Other Subsidiaries: AC Bakony Kft. Adela Investment Co. S.A. AeroVironment, Inc. AMBRAKE Corporation Anadolu Otomotiv Sanayi VE Ticaret A.S. | Applied Intelligent Systems, Inc. Aralmex, S.A. de C.V. ARINC Incorporated Asset Leasing GmbH | Aura S.r.1. Autos y Maquinas del Ecuador S.A, (AYMESA) Banque de Credit General Motors Bujias Mexicanas, S.A. de C.V. CAMI Automotive, Inc. CEI Co., Ltd. Calsonic Harrison Co., Ltd. Carus Grundstucks-Vermietungsgesellschaft mbH & Co. Object Kuno 65 KG Carus Grnndstucks-Vermietungsgesellschaft mbH & Co. Object Leo 40 KG 43a Other Subsidiaries, continued: Centro Tecnico Herramental, S.A. de C.V. Cilva Holdings Plc Cimflex Teknowledge Coalition Undertaking Remedial Efforts, Inc. Colonial Mortgage Service Company of California Comau Productivity Systems, Inc. Compagnie des Faisceaux Tunisiens International S.A. Compania Nacional de Direcciones Automotrices, S.A. de C.V. Compo [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386012_1470%3A2. Public record. Not legal advice.