of law.” FED. R. Civ. P. 56(c). Rule 56(c) mandates the granting of summary judgment
against the non-moving party who fails to make a “sufficient showing on an essential
element of her case with respect to which she has the burden of proof.” Id. at 322. Thus,
there is a “substantial burden” on the non-moving party to make known those material
facts that are in dispute. Advanced Cardiovascular Sys. Inc. v. Scimed Life Sys., Inc., 988
F.2d 1157, 1164 (Fed. Cir. 1993). Furthermore, a district court need not scour the record
in search of material facts in dispute when the non-movant fails to make such a showing.
Herman y. City of Chicago, 870 F.2d 400, 404 (7th Cir. 1989).

Plaintiffs bear the burden of proving infringement of a patent by a preponderance
of the evidence. Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226, 1238 (Fed. Cir.
1989). In order for something to infringe on a patent, the patent must be valid. Canon
Computer Sys., Inc, v. Nu-Kote Int’l, Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1998). A
patent is presumed to be valid. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051 (Fed. Cir. 1988). The presumption of validity exists at every stage of the litigation.
Canon, 134 F.3d at 1088. As such, it is the burden of the one claiming invalidity to rebut
the presumption by submitting clear and convincing evidence. Uniroyal, 837 F.2d at
1051. Thus, if one fails to meet this burden, then the very existence of the patent alone is
enough to satisfy the owner’s burden on the issue of validity. Canon, 134 F.3d at 1088.

Grease Stopper did not reply to plaintiffs’ motion for summary judgment and
therefore, failed to submit any clear and convincing evidence to rebut the presumption of
validity of the ’040 and ’607 patents. As such, the Court, for the purposes of this motion,

deems the ’040 and’607 patents as valid.


a barrier layer disposed below said lower
layer and impermeable to passage of water or
grease therethrough; and

The filter composite sold by Grease Stopper
contains the claimed barrier layer. Mr.
McCrary testified that the filter composition
includes “a barrier layer that allows the
grease to be trapped and not permeate
through the bottom layer.” Ex. 4, p. 59 Ins. 7-
11. See also Bain Decl. { 50.

a bottom layer below said barrier layer for
spacing said upper and lower layers from
standing water and promoting air circulation
thereunder

The filter composite sold by Grease Stopper
has a bottom layer to space the upper and
lower layers from standing water and to
promote air circulation. Grease Stopper’s
website, and the testimony of Mr. McCrary
establish that the accused filter composite
contains the claimed bottom layer.
Specifically, the accused filters contain a
“polymer mat” that allows “allows air flow
while assisting with water discharge.” Ex.8;
Ex. 4, p. 89 Ins. 5-9. Mr. McCrary explained
that “the lower layer allows the water that
might get in a particular section of the unit . .
. to get where it needs to be to get out of the
filtering system itself.” Jd. p. 89 Ins. 10-20.
See also Bain Decl. ¥ 51.

(P1.’s Mem. Supp. Mot. Sum. J., at 16-17.)

Grease Stopper failed to make any response rebutting the analysis that plaintiffs

provided to the Court. The Court is neither expected nor required to scour the record for

material facts in dispute. Herman, 870 F.2d at 404. However, the Court did review those

portions of the record cited by plaintiffs. After doing so, the Court finds that the factual

statements are supported by the record. Those facts support plaintiffs’ allegations of

infringement of the’040 and °607 patents because every limitation of the patent claim is

found in the accused device and is supported by the record. Thus, the Court concludes

that plaintiffs have met their burden of showing that the Grease Stopper embodiments

infringe upon the ’040 the ’607 patents by a preponderance of the evidence. Thus,



invention and how the Grease Stopper device is encompassed by the ’040 patent’s claim.

Their analysis is included below:

Claim Language — ’040 Patent

Accused Device

1. A grease-trapping and filter assembly for
roof ventilators, comprising:

The Grease Stopper device is a grease-
trapping and filter assembly for use on roof
ventilators.

a) a frame structure having an aperture
through which a grease discharge vent can
project surrounded by said frame structure
and trap assembly; and

The Grease Stopper device includes a frame
structure that has an aperture to allow a
grease discharge vent to project through the
frame and filter assembly. Ex. 4, Mr.
McCrary testified that when the device is
fully assembled it “encloses” the vent. Id. p.
71 Ins. 2-19. He further testified that when it
is fully assembled it allows the vent to pass
through the middle of the assembly. Jd. p. 72
Ins. 10-13. See also Bain Decl. 432
(explaining that the accused device has a
frame structure with an opening that
surrounds the vent and creates an opening for
the vent to pass through).

b) a replaceable, grease-trapping material
removably securable in said frame structure
and exposed within said aperture

The Grease Stopper device has a replaceable
grease-trapping material that is removably
securable in the frame structure. Mr.
McCrary stated that the frame and filter
media “work together,” and the frame is bent
down “to push the filter media, the red
spongy filter media up underneath” the frame.
Ex. 4, p. 29 Ins. 7-11. In addition, the
grease-trapping material of the accused
device is exposed within the aperture of the
frame assembly so that when the grease is
expelled from the vent, it will land on the
filtering media. See, Ex. 5. See also Bain
Decl. [7 33-34.



After a showing of validity, the party claiming infringement must show that the
patent is either literally infringed upon or, when that cannot be shown, that the patent is
infringed under the doctrine of equivalents. Uniroyal, 837 F.2d at 1054, 1057. Literal
infringement requires that “every limitation of the patent claim must be found in the
accused device.” Id. at 1054. To make this finding, the scope of the claim must be
determined and after that, one must determine if the accused structure is encompassed in
the scope of the claim as construed. Id.

The question as to whether the claim as construed encompasses the accused
device is a factual determination. Jd, The construction of the claim is a question of law
to be determined by the court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-
78 (Fed. Cir. 1995). Claim construction is “a way of elaborating the normally terse claim
language[] in order to understand and explain, but not to change, the scope of the
claims.” Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580
(Fed. Cir. 1991). Terms within the claims are presumed by the court to mean what they
say and are given their ordinary and accustomed meaning within the trade. Johnson
Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999).

Again, because Grease Stopper failed to respond to the motion for summary
judgment, the parties do not disagree as to the meaning of the claims. Therefore, because
there is no disagreement as to what the claims mean, they are constmmed based on the
plain language of the claims.

Plaintiffs claim that a Grease Stopper embodiment infringes on the ’040 patent.

In making this allegation, they provided a phrase-by-phrase analysis of the patented



Claim Language — ’607 Patent

Accused Device

1. A layered composite of grease filtering
and trapping materials, comprising:

Both the Grease Stopper device and the
“retrofit” filters sold by the defendant are
layered composites of grease trapping
materials.

an upper, porous layer for trapping particulate
debris and being permeable for passage of
liquid grease therethrough;

The grease-trapping material in the Grease
Stopper device and the “retrofit” filters
include an upper, porous layer for trapping
particulate debris and are permeable for
passage of liquid grease. Mr. McCrary
agreed that the top layer “disperses prease . . .
traps some there . . . sends it down to thfe]
second center layer.” Ex. 4, p. 35 Ins. 4-8.

Mr. McCrary testified that the top layer traps
particulate debris and also allows the grease
to pass through the top layer into the center
absorbent layer. Jd., p. 60 In. 22 - p. 61 In. 4;
p. 81 Ins. 17-23. See also Bain Decl. 4] 36,
48.

a lower layer for absorbing grease passing
through said upper layer,

The grease-trapping material in the Grease
Stopper device and the “retrofit” filters
include a lower layer for absorbing grease
that passes through the upper layer. Mr.
McCrary testified that the Grease Stopper
device includes an “absorbent layer” which is
“designed to trap and hold grease for a period
of time.” Ex. 4, p. 33 Ins, 4-14. See also
Bain Decl. {¥ 37, 49.

said composite having a through aperture for
enabling passage of a grease discharge vent
therethrough in order to trap the discharged
grease within said composite;

The grease-trapping material in the Grease
Stopper device and the “retrofit” filters
allows passage of a grease discharge vent.
Mr. McCrary testified that when the accused
device is fully assembled, there is an opening
in the unit to allow the vent to pass through.
Ex. 4, p. 71 Ins. 2-9; p. 72 Ins. 10-13. He
further testified that the accused device is
placed on all four sides of the vent “[tlo
enclose the entire area that possibly could be
effected.” Id. at p. 71 Ins. 15-19.



* United States District Court, Northern District of Illinois

ro .
Nevoe Magistrate ude Ronald A. Guzman “Tuan Agoed Jude
CASE NUMBER 01C 2971 DATE 7/31/2003
CASE FACILITEC CORP. et al vs. GREASE STOPPER INC.
TITLE
[in the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented.]
DOCKET ENTRY:
dd) Q Filed motion of [ use listing in “Motion” box above.]
(2) oO Brief in support of motion due
(3) a} Answer brief to motion due___. Reply to answer brief due__.
4) Oo Ruling/Hearing on___setfor___at
(5) oO Status hearingfheld/continued to] [set for/re-set for]on___setfor___—at
(6) o Pretrial conference[held/continued to] [set for/re-set for]on__—ssetfor__ ss at__.
(o) Oo Trial[set for/re-set for]on___—_at
(8) a [Bench/Jury trial] [Hearing] held/continuedto at
(9) oO This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]

OOFRCP4(m) ClLocal Rule 41.1 CHFRCP41(a)(1) (CFRCP41(a)(2).

ao [Other docket entry] | ENTER MEMORANDUM OPINION AND ORDER: The Court grants
plaintiffs’ motion for summary judgment[60-1], denies defendant’s counterclaim for a declaratory
judgment as moot, and orders a permanent injunction against Grease Stopper that prohibits it and its
Tepresentatives, assignees or successors, or any subsidiaries, divisions, agents, servants, employees
thereof, and/or those in privity with Grease Stopper from acts which constitute direct, induced or
contributory infringement during the terms of the ‘040 and ‘607 patents, This case is hereby terminated.

gl) @ (For further detail see order attached to the original minute order.]
No notices required, advised in open court.

No notices required.

Notices mailed by judge's staff,

Notified counsel by telephone.

eo | Docketing to mail notices,

of _| Mail AO 450 form. qunoa jatursia ‘sn ocksing deputy ine

Copy to judge/magistrate judge.

wouwom «ss REG WY 9- SN EO

TBK deputy’
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ime received in

central Clerk's Office



the essence of the concept of property. Thus, it is a general rule

that an injunction will be issued when infringement has been

adjudge, absent a sound reason for denying it.
Id, at 1246-47 (internal citation omitted); see also Carborundum Co. v. Molten Metal
Equip. Innovations, Inc., 72 F.3d 872, 878-81 (Fed. Cir. 1995) (holding that patent grants
owner right to exclude others from using, selling or making patented invention, and thus,
injunctions are usually granted after finding of infringement.)

In determining the scope of the injunctive relief, courts are given broad discretion.
Carborundum, 72 F.3d at 881. The applicable statute dictates that “[t]he several court
having jurisdiction of cases under this title may grant injunctions in accordance with the
principles of equity to prevent the violation of any right secured by patent, on such terms
as the court deems reasonable.” 35 U.S.C. § 283. Thus, the purpose behind the granting
of the injunction must be to prevent the violation of the right secured by the owner rather
than to be punitive. Joy Techs., Inc, v. Flakt, Inc., 6 F.3d 770, 772-73 (Fed. Cir. 1993).

The Court has been provided no reason to deny the order of a permanent
injunction. Thus, because infringement has been found, in order to protect plaintiffs’
property rights in the ’040 and ’607 patents, a permanent injunction ought to be ordered.
The Court hereby orders a permanent injunction against Grease Stopper, their
Tepresentatives, assignees or successors, or any subsidiaries, divisions, agents, servants,
employees thereof, and/or those in privity with Grease Stopper from acts which constitute
direct, induced or contributory infringement during the terms of the ’040 patent and the
’607 patent including but not limited to the sale of Grease Stopper Grease System, Grease

Stopper Unit, Pentagon Defense System, Pentagon Roof Top Defense System, Pentagon

11


because there are no material facts in dispute and plaintiffs have met their burden, the
Court grants plaintiffs’ motion for summary judgment.

Next, the Court considers what relief should be given to plaintiffs. When a party
moves for summary judgment, unless otherwise stated as a motion for partial summary
judgment, the party moves for summary judgment on all claims. Spitz v. Tepfer, 171 F.3d
443, 447-48 (7th Cir. 1999). Thus, when a party requests a certain remedy in the
complaint but fails to mention that remedy in its motion for summary judgment, that
remedy is deemed to have been abandoned. Jd.

Here, plaintiffs requested more remedies than just a permanent injunction in the
amended complaint. (Pl.’s First Am. Compl. 4] A-G.) However, in the motion for
summary judgement only a permanent injunction was requested. Thus, the other
remedies requested in the first amended complaint are deemed abandoned. As such, only
the permanent junction shall be considered.

When there is a clear showing of a valid patent and infringement on that patent,
the owner is presumed to have been irreparable harmed. Richardson, 868 F.2d at 1247.
The presumption is due in part to the finite term placed on the patent and the fact that the
owner does not receive a temporal extension for the time spent litigating the issue of

infringement. Jd.

Once infringement is established,
it is contrary to the laws of property, of which the patent law

partakes, to deny the patentee’s right to exclude others from the use
of his property. The right to exclude recognized in a patent is but

10



and having a passageway aligned with said
aperture for passage of said vent
therethrough, for trapping grease discharged
from said vent surrounded by said grease-
trapping material

The grease-trapping material in the Grease
Stopper device has a passageway aligned.
with the aperture to allow a vent to pass
through, and the grease-trapping material
surrounds the vent. Mr. McCrary testified
that when the accused device is fully
assembled, there is an opening in the unit to
allow the vent to pass through. Ex. 4, p. 71
Ins. 2-9; p. 72 Ins. 10-13. He further testified
that the accused device is placed on all four
sides of the vent “[t]o enclose the entire area
that possibly could be effected.” Id. at p. 71
Ins, 15-19. See also Bain Decl. ¥ 35.

which comprises an upper, porous layer for
trapping particulate debris and being
permeable for passage of liquid grease
therethrough,

The grease-trapping material in the Grease
Stopper device includes an upper, porous
layer for trapping particulate debris and is
permeable for passage of liquid grease. Mr.
McCrary agreed that the top layer “disperses
grease... traps some there .. . sends it down
to thfe] second center layer.” Ex. 4, p. 35 Ins.
4-8. Mr. McCrary testified that the top layer
traps particulate debris and also allows the
grease to pass through the top layer into the
center absorbent layer. Jd. p. 60 In. 22 - p. 61
In. 4; p. 81 Ins. 17-23. See also Bain Decl. 7
36.

and a first lower layer for absorbing grease
passing through said upper layer.

The grease-trapping material in the Grease
Stopper device includes a lower layer for
absorbing grease that passes through the
upper layer. Mr. McCrary testified that the
Grease Stopper device includes an “absorbent
layer” which is “designed to trap and hold
grease for a period of time.” Ex. 4, p. 33 Ins.
4-14, See also Bain Decl. 37.

(P1.’s Mem. Supp. Mot. Sum. J., at 13-15.)

Plaintiffs claim that a Grease Stopper embodiment infringes on the ’607 patent.

In making this allegation, they provided a phrase-by-phrase analysis of the patented

invention and how the Grease Stopper device is encompassed by the 607 patent’s claim.

Their analysis is included below:



”040 and the ’607 patents contain disclosures that are nearly identical. (/d.) The ’607
patent describes only the filter composite and does not require the frame structure that is
described in the ’040 patent. (Jd. at 22.) The ’607 patent claims two additional layers
of filtering material than does the ’040 patent. (Jd. at 23.) The purpose of the 607
patent is similar to that of the ’040 patent. (’607 patent, at col. 1, lines 14-30.)

Grease Stopper sells two embodiments that plaintiffs allege infringe the °040 and
the ’607 patents. (PI.’s LR 56.1(a)(3) ¥ 24.) The first is an octagonal-shaped unit that
surrounds the vent and is filled with a layered filtering composite. (/d.) The layered
filtering composite traps grease that is discharged from the rooftop ventilator. (Jd.)

The second alleged infringing embodiment is the filtering composites used to
retrofit units of Grease Stopper’s competitors, such as the unit Facilitec sells. (/d. at J
25.) About 45% of Grease Stopper invoices are made up “sales of retrofit filters that are

placed in Facilitec’s product.” (id.)

DI ION
“Summary judgment procedure is properly regarded not as a disfavored
procedural shortcut, but rather as an integral part of the Federal Rules as a whole, which
are designed to secure the just, speedy and inexpensive determination of every action.”
Celotex Corp. v. Catrett, 477 U.S. 317, 327 (1986) (internal quotation omitted). Pursuant
to Rule 56(c), the court may grant summary judgment if the pleadings, answers,
interrogatories, affidavits, and other materials demonstrate that there exists “no genuine

issue as to any material fact and that the moving party is entitled to a judgment as a matter



Grease Stopper’s product also infringes plaintiffs ’607 patent. Grease Stopper never
answered the amended complaint. On November 26, 2002, plaintiffs filed a motion for
summary judgment, Grease Stopper never filed a response.

Before discussing the facts of this case, it is necessary to note the particular
importance that Local Rule (“LR 56.1") plays in summary judgment motions filed in the
Northern District of linois. LR 56.1(b) requires the party in opposition to a summary
judgment motion to include a supporting memorandum of law and a statement of material
facts that require the denial of summary judgment. LR 56.1(b)(2)-(3). Furthermore,
“[a]ll material facts set forth in the statement required of the moving party will be deemed
to be admitted unless controverted by the statement of the opposing party.” LR
56.1(b)(3)(B). The Court of Appeals for the Seventh Circuit has held that a district court
may strictly enforce LR 56.1 because of the importance of the rule. Bordelon v. Chicago
Sch. Reform Bd. of Trs., 233 F.3d 524, 527 (7th Cir. 2000). Here, because Grease
Stopper never filed a response to plaintiffs’ motion, plaintiffs’ facts are deemed admitted.

The °040 patent, entitled “Grease Trap and Filter Apparatus,” describes a “grease
filter and collection assembly for roof ventilators,” which includes a frame structure,
where through the vent projects, and a layered composite of grease trapping and filtering
materials. (Pl.’s LR 56.1(a)(3) 49.) The purpose of the invention is to protect roofing
material from the harmful effects of grease that escape from ventilator fans. (040 patent,
at col. 1, lines 10-15.)

The ’607 patent, also entitled “Grease Trap and Filter Apparatus,” is a division of

the application that became the 040 patent. (PI.’s LR 56.1(a)(3) ] 21.) Therefore, the



Pa

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION D OCKETED

ounce M66 2a
Plaintiffs, }
v. } Judge Ronald A. Guzmain
GREASE STOPPER, INC., } 01 C 2971
Defendant. }
ORANDUM OPINION ER

Plaintiffs Facilitec Corp. (“Facilitec”) and Ecolab Inc. (“Ecolab”) have sued
defendant Grease Stopper for infringement of U.S. Patent Numbers 5,196,040 (“040
patent”) and 5,318,607 (“607 patent”), which they own by assignment. Plaintiffs have
moved for summary judgment pursuant to Fed. R. Civ. P. (“Rule”) 56. For the reasons
provided in this Memorandum Opinion and Order, the Court grants plaintiffs’ motion for

summary judgment and denies Grease Stopper’s counterclaim for declaratory judgment.

FACTS
On April 25, 2001, plaintiffs filed the purported complaint alleging infringement
of the ’040 patent. Grease Stopper filed an answer, an affirmative defense of non-
infringement and a purported counterclaim requesting declaratory judgment of invalidity

and non-infringement of the ’040 patent. Plaintiffs amended the complaint to allege that



Roof “Tuff Top” Defense System, Tuff Pak System Filter Mats, Tuff Top Containment
System, Filter Mats Replacements for Compartmentalized System, Retrofit Replacement
TLM, and 8 pak Center Layer Mat.

Finally, the Court briefly addresses Grease Stopper’s counterclaim that merely
requests a declaratory judgement of invalidity and non-infringement of the 040 patent.
(Def.’s Ans., Affirm. Def. & Countercl. at p. 6-7 {J 2-3.) Because the Court has found

the ’040 patent valid and infringed by Grease Stopper, defendant’s counterclaim is moot.

CONCL IN

For the foregoing reasons, the Court grants plaintiffs’ motion for summary
judgment [doc. no. 60-1], denies defendant’s counterclaim for a declaratory judgment as
moot, and orders a permanent injunction against Grease Stopper that prohibits it and its
representatives, assignees or successors, or any subsidiaries, divisions, agents, servants,
employees thereof, and/or those in privity with Grease Stopper from acts which constitute
direct, induced or contributory infringement during the terms of the °040 and ’607

patents. This case is hereby terminated.

SO ORDERED rnrerep: 7/2 3

HON. RONALD A.
United States Judge

12