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Peroxychem LLC v. Innovative Environmental Technologies, Inc.

United States District Court, E.D. Pennsylvania

July 7, 2015

PEROXYCHEM LLC
v.
INNOVATIVE ENVIRONMENTAL TECHNOLOGIES, INC., et al.

MEMORANDUM

John R. Padova, J.

Defendant Innovative Environmental Technologies, Inc. (“IET”) has moved for partial summary judgment under Federal Rule of Civil Procedure 56(a) on Count I of the Amended Complaint, which asserts a patent infringement claim pursuant to 35 U.S.C. § 271. The Motion presents the narrow question of whether a one-page abstract disclosed more than one year before a provisional patent application was filed constitutes a “printed publication” within the meaning of § 102(b) of the Patent Act. See 35 U.S.C. § 102(b). For the reasons that follow, we deny IET’s Motion.

I. BACKGROUND

A. The Patent

On October 20, 2005, Dr. Philip A. Block and Dr. Richard A. Brown filed provisional application No. 60/728, 626 with the United States Patent and Trademark Office (the “PTO”), which identified PeroxyChem’s predecessor as the application’s assignee.[1] (Def.’s Ex. 1 at ITE 001617.) On August 31, 2010, the PTO granted United States Patent No. 7, 785, 038 (“the ‘038 Patent”) entitled “OXIDATION OF ORGANIC COMPOUNDS.” (Id.) The ‘038 Patent contains thirteen claims in separate numbered paragraphs: one independent claim (Claim 1) and twelve dependent claims (Claims 2 through 13). (Id. at IET 001621.) The “Summary of the Invention” section of the ‘038 Patent refers to:

a method for remediation of soil, sediment, clay, rock, and the like . . . and groundwater (i.e., water found underground in cracks in spaces in soil, sand and rocks), process water (i.e., water resulting from various industrial processes) or wastewater (i.e., water containing domestic or industrial waste) contaminated with volatile organic compounds, semi-volatile organic compounds, pesticides or herbicides. In addition, it may be used to treat sludges, sands or tars.

(Id. at IET 001618.) The “Abstract” section of the ‘038 Patent refers to “[a]n improved method and composition for treating organic compounds present in soil, groundwater and other environments” that “involves the use of a composition comprising a solid state, water soluble peroxygen compound and zero valent iron.” (Id. at IET 001617.) Similarly, Claim 1 describes “[a] method of oxidizing a contaminant present in an environmental medium, said method comprising contacting the contaminant with a composition comprising a water soluble persulfate compound and zero valent iron wherein the persulfate compound is a dipersulfate.” (Id. at IET 001621.) Claims 2 through 13 provide additional limitations further defining separate method inventions. (Id.)

B. The ORTs-3 Conference and Scientific Committee

At some point in 2004, but before July 12, 2004, Dr. Brown authored an abstract of a technical paper (the “ZVI Abstract”) describing a combination of persulfate compounds and zero valent iron that “could be effectively used to treat mixed contaminant plumes.” (Def.’s Ex. 2; Def.’s Ex. 5 at IET 00419.) Dr. Brown intended to present these findings at the “Third Annual Conference on Oxidation and Reduction Technologies for In-Situ Treatment of Soil and Groundwater” (the “ORTs-3 Conference”), which was held in San Diego, California, from October 24 to October 28, 2004 and “brought together representatives from academia, research institutions, and industry to exchange information, developments, and perspectives . . . about new and emerging remediation technologies.” (Haselow Decl. ¶¶ 2-3; see also generally Def.’s Ex. 4.) While one individual involved with the Conference stated that the “central purpose” of the Conference “was to provide a forum for academics, members of research institutions, and industry representatives to share their ideas about new and emerging technologies in the environmental remediation field, ” (Haselow Decl. ¶ 9), Dr. Brown testified that the Conference was a commercial venture and “another potential revenue stream” for Dr. Hussain Al-Ekabi, the principal organizer of the Conference. (Brown Dep. at 14-15).

At the Conference sessions, presenters made either a “platform presentation, ” which was given before a live audience, or a “poster presentation, ” which was delivered more informally at display booths to interested attendees. (Clayton Decl. ¶¶ 8-10; Marley Decl. ¶¶ 8-10.) Each Conference participant who was interested in giving a presentation was required to submit to the ORTs-3 Conference’s Scientific Committee an abstract of his or her proposed presentation. (Clayton Decl. ¶ 11; Haselow Decl. ¶ 4; Marley Decl. ¶ 11.) According to Dr. Brown, who served both as a member of the ORTs-3 Scientific Committee and as the ORTs-3 Conference Chair, abstracts were “very short, ” generally limited to one page, and were an “executive summary of the paper being presented.” (Brown Dep. at 35, 49; Def.’s Ex. 4 at 00113.) As Chair, Dr. Brown was responsible for collecting all abstracts of technical papers submitted by ORTs-3 Conference presenters, and then forwarding the collected abstracts to Committee members for their review. (See generally Def.’s Ex. 5.)

On July 12, 2004, Dr. Brown sent the twenty-one members of the ORTs-3 Conference’s Scientific Committee, including himself, and two other individuals an email stating that “[b]y now you have all received several sets of abstracts for review.”[2] (Id. at IET 00419; see also Def.’s Ex. 4 at IET 00113 (listing names of Committee members).) These Committee members represented a variety of firms and universities, including Siemens Corporation, Raytheon, United Technologies, Aquifer Solutions, ERM, Montgomery Watson, ReTec, the Colorado School of Mines, Washington State University, and the University of Waterloo. (Def.’s Ex. 4 at IET 00113; Def.’s Ex. 5.) Recipients of the ZVI Abstract also included one representative each from Redox Technologies, LLC (“an environmental remediation firm that specializes in in situ remediation of soil and groundwater contamination”); EnviroMetal Technologies; Xpert Design and Diagnostic, LLC; and representatives from the United States Army Corps of Engineers. (Def.’s Ex. 4 at IET 00113; Def.’s Ex. 5; Haselow Decl. ¶ 1.) There is no specific reference in this email to the ZVI Abstract having been distributed by email to any Committee members, and the ZVI Abstract is not attached to any of the emails Dr. Brown sent in July of 2014. (See generally Def.’s Ex. 5.) However, John Haselow, President of Redox Technologies, LLC and a member of the ORTs-3 Scientific Committee, averred that he received the emails and abstracts that Dr. Brown sent in July of 2004, and Dr. Brown testified that his recollection is that all members of the Scientific Committee “probably” received all of the abstracts. (Brown Dep. at 112; Haselow Decl. ¶ 16.)

Dr. Brown attached to his July 12, 2004 email a spreadsheet containing a list of the abstracts that the members had supposedly previously received from him. (Def.’s Ex. 5 at IET 00419-20.) One of the abstracts that is listed in this spreadsheet is the ZVI Abstract, which is entitled “Simultaneous Reduction and Oxidation: Combining Persulfate with Zero Valent Iron.” (Def.’s Ex. 6 at 1; see also Def.’s Ex. 5 at IET 00419-20.) Based on the subject matter of each abstract, each presenter was assigned specific slots in one or more of the Conference’s ten topically-organized sessions, one of which was a session entitled “Peroxygens - Peroxide and Persulfate.” (Def.’s Ex. 6 at 1.) Dr. Brown’s presentation of the ZVI Abstract was assigned to this session. (Id.)

Dr. Brown’s email also provided Committee members with “Instructions for Abstract Review.” (Def.’s Ex. 7; see also Def.’s Ex. 5 at IET 00419.) These Instructions began with a request that Committee members “[r]eview the [A]bstracts assigned to other sessions to determine if there are any that are of interest.” (Def.’s Ex. 7 at IET 00064.) Furthermore, in his email, Dr. Brown asked the members to “review the [A]bstracts that are assigned to another primary session, ” and stated that if any of these Abstracts were of interest, the member should contact the appropriate session Chair to request that the presentation be transferred to the reviewer’s session. (Def.’s Ex. 5 at IET 00420.) In the “Instructions, ” Dr. Brown also stated that the Committee members should “[c]reate ordered (descending order of preference) of abstracts for the session, ” and that he would “make final assignment based on the slots available using the ordered list.” (Def.’s Ex. 7 at IET 00064.)

C. Information Available on Publically-Accessible Websites

On September 10, 2004, Dr. Al-Ekabi stated in an email that “[t]he final program of ORTs-3 is now on the web” at www.redoxtech.com. (Def.’s Ex. 8 at 1.) The final program identified each presenter’s assigned session and slot, along with the full title of each abstract, including the ZVI Abstract. (Id. at 6-7.) Although no other specific information about the ZVI Abstract appeared in the final program, the program lists Dr. Brown and Dr. Block’s names and employers directly below the title. (Id.) Dr. Brown testified that the program was, in fact, published on Dr. Al-Ekabi’s website, and that it was on the website “probably at least a month or more” before the start of the ORTs-3 Conference. (Brown Dep. at 125.)

By October 9, 2004, Dr. Brown’s employer, ERM, Inc., announced on the homepage of its website that ERM representatives would be “[p]resenting 14 papers at the International ORTs-3 Conference.” (Def.’s Ex. 9 at 1.) Additionally, the website’s “media room” webpage provided a link to an October 8, 2014 press release publicizing ERM’s involvement in the ORTs-3 Conference. (Id. at 2.) The linked text on that page summarized the release with the following text: ...


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