Thermapure, Inc. v. Rxheat™, LLC
| Decision Date | 31 March 2014 |
| Docket Number | No. 10 C 8157,10 C 8157 |
| Citation | 35 F.Supp.3d 968 |
| Court | U.S. District Court — Northern District of Illinois |
| Parties | Thermapure, Inc., Plaintiff, v. RXHEAT™, LLC and Cambridge Engineering, Inc., Defendants. |
Paul K. Vickrey, Daniel R. Ferri, Frederick Christopher Laney, Patrick Francis Solon, Niro, Scavone, Haller & Niro, Ltd., Chicago, IL, for Plaintiff.
Douglas Alan Robinson, Harness Dickey & Pierce PLC, St. Louis, MO, Kara Eve Foster Cenar, Mariangela M. Seale, Bryan Cave, Chicago, IL, for Defendants.
The Centers for Disease Control and Prevention reports that the United States is experiencing “an alarming resurgence in the population of bed bugs.” Heat treatment is one of several methods for controlling these and other undesirable visitors. SeeU.S. Centers for Disease Control and Prevention & U.S. Environmental Protection Agency, Joint Statement on Bed Bug Control in the United States at 1 (2010), available at http://www.cdc.gov/nceh/ehs/Docs/Joint_Statement_on_Bed_Bug_Control_in_the_US.pdf. The parties in this patent infringement suit are engaged in the heat treatment services industry. Plaintiff Thermapure, Inc. (“Thermapure”) charges Defendants RxHeat, LLC (“RxHeat”) and Cambridge Engineering, Inc. (“Cambridge”) with infringing Thermapure's U.S. Patent No. 6,327,812 (“'812 patent”), which describes a process for killing potentially harmful organisms and toxins, such as mold or bed bugs, located inside a home or building.
Part of this process is familiar: A heating mechanism heats air to a temperature that will kill the mold or bed bugs, and the heated air is directed into the home or building and circulated, killing the unwanted organisms. The patented process is intended to address the “dust-like remains” that, Plaintiff contends, are left behind after the heat treatment process; specifically, the patented process calls for a vent or filter through which the heated air exits the home or building and is released into the atmosphere. As the patent explains, filtration serves two purposes: it removes the organism remains from the treated space, and it prevents them from entering the atmosphere. In its final claim contentions, Thermapure alleges that Defendants RxHeat and Cambridge infringe claims 4, 6, and 8 of the '812 patent under 35 U.S.C. § 271(a) –(c) through use of filters with their heat treatment products.
Defendants RxHeat and Cambridge responded with a motion for summary judgment of non-infringement, and a motion to strike the expert testimony of Michael Geyer, on which Plaintiff relies to demonstrate infringement. Defendants argue that the accused products do not employ filtration, if at all, in the manner described by the products infringe because they either use or should be used with a filter. For reasons discussed below, Defendants' motion to strike [123] is granted in part and denied in part. Their motion for summary judgment [117] is granted.
Defendants RxHeat and Cambridge, each organized and located in Missouri, are companies under “common ownership.” Cambridge “developed and makes gas-fired heating products,” including the Rx12 and Rx15 product line, with its own patented heating technology. (Defs.' Statement of Facts [119], hereinafter ¶ 14.) RxHeat markets these products to service providers in water restoration and pest remediation markets, “often individually-owned or small businesses operated in limited geographic areas,” and the Rx12/Rx15 products also are distributed by Jon–Don, Inc. RxHeat itself does not provide water restoration or pest remediation services. (Id. ¶¶ 16–18.) Plaintiff alleges that Defendants' Rx Z9000 Electric Heater and the Rx12/Rx15 gas-powered heaters1 infringe on claims 4, 6, and 8 of the '812 patent. (Id. ¶ 7.)
The '812 patent covers a method of “sanitizing buildings and other enclosed spaces by killing and removing organisms such as insects, bacteria, virus, dust mites, spiders, silver fish, fungi and toxic molds.” (Patent No. U.S. 6,327,812, Ex. P to Defs.' 56.1, hereinafter “'812 Patent,” at 1:6–9.) The patented method describes the steps of preparing an enclosure for heat treatment, placing temperature-indicating probes within the enclosure, “installing ingress ducts through which an environmentally acceptable gas ... can be directed into the enclosure,” and “opening windows, doors, etc.” or “installing an egress duct or ducts” through which the heated gas may leave the enclosure. The gas is then heated, directed through ingress ducts into the enclosure, and filtered through open doors, windows and/or egress ducts in order to “collect organism remains and prevent them from entering the environment.” (Id. at 1:64–2:8.) The patent identifies several “object[s]” of the invention, including “to filter gases leaving from the enclosure to prevent the allergenic organism remains from entering the environment,” and “to remove substantially all of the remains of the killed organisms from open areas in the enclosure.” (Id. at 2:28–33.) Plaintiff alleges that Defendants have infringed on the claims set forth below (with emphasis added):
Claim 4
Claim 6
Claim 8
It is undisputed that the practice of using heat to kill unwanted organisms was recognized in prior art. In fact, in the application for the '812 patent, the filtration limitations described in claims 4, 6, and 8 were separate, dependent claims on independent claims describing the other limitations. Thus, in Plaintiff's original application, claim 4 appeared as two separate claims—independent claim 11, which described all limitations but filtration, and dependent claim 13, which described a “filter means in said egress duct for removing remains of said organisms from gas from said enclosure passing through said egress duct.” (Id. ¶¶ 67–68.) So too, claim 6 contains what was once dependent claim 19, describing filtration, and independent claim 18, describing all other limitations; and, finally, claim 8 combined dependent claim 25, the filtration limitation, with independent claim 24, describing all other limitations. (Id. ¶¶ 71–73.) During prosecution, the Examiner found the original independent claims 11, 18, and 24 obvious in light of prior art. Charles Forbes' U.S. Patent No. 4,817,329 (“'329 Patent”), the Examiner reasoned, “shows all of the limitations recited with the exception of the plurality of temperature probes and removing or protecting heat sensitive items,” which the Examiner concluded were obvious alterations. The Examiner concluded that the dependent claims (Claims 13, 19, and 25) would be allowed only if rewritten “to include all of the limitations of the base claim and any intervening claims,” (id. at THERMA000059, THERMA000090), and Plaintiff did amend each of the claims accordingly. .)
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