CMI, Inc. v. Intoximeters, Inc.

• Decision Date: 28 October 1994
• Docket Number: Civ. A. No. C93-0265-L(H).
• Citation: 866 F. Supp. 342
• Court: U.S. District Court — Western District of Kentucky
• Parties: CMI, INC., Plaintiff, v. INTOXIMETERS, INC., et al., Defendants.

866 F. Supp. 342

CMI, INC., Plaintiff, v. INTOXIMETERS, INC., et al., Defendants.

Civ. A. No. C93-0265-L(H).

United States District Court, W.D. Kentucky, at Louisville.

October 28, 1994.

J. Bruce Miller, Anthony L. Schnell, Louisville, KY, for plaintiff.

Charles J. Cronan, IV, Stites & Harbison, Louisville, KY, for defendants.

Wilbur L. Tomlinson, Armstrong, Teasdale, Schlafly & Davis, St. Louis, MO, for Intoximeters, Inc.

Patrick W. Michael, Kenneth L. Anderson, Woodward Hobson & Fulton, Louisville, KY, for National Patent Analytical Systems, Inc.

MEMORANDUM OPINION

HEYBURN, District Judge.

This is a declaratory judgment action in which CMI seeks a declaration by this Court that it does not infringe Intoximeters's patent (United States Patent No. 4,495,418) and that the patent is invalid.¹ Plaintiff determined to do so due to the unusual circumstances of controversy between these two leading makers of breathalyzers. As is often true in these cases, the Court is confronted with complicated facts, sometimes uncertain science and the usual thicket of patent legal issues.

On CMI's motion for partial summary judgment, the Court holds that CMI's Intoxilyzer 5000 does not infringe; that an actual controversy exists; and that the patent is enforceable. At the conclusion of the trial, the Court concludes that Intoximeters did not engage in inequitable conduct before the Patent and Trademark Office. The Court will reserve a ruling about whether Intoximeters misused its patent and whether this is an "exceptional" case, which would warrant an award of attorney fees, until the conclusion of the second phase of this trial, which will primarily concern CMI's claims of unfair competition.

I. The 418 Patent

Before considering any patent and its validity or infringement, it is essential to describe it properly. In 1983, the Patent and Trademark Office issued to Intoximeters the 418 patent for a method of standardizing or calibrating breath alcohol by passing a dry gas carrier sample containing a known amount of alcohol over an IR (infrared) cell that is non-adsorbent as to alcohol. The inventor claimed difficulty calibrating and standardizing instruments using a dry gas carrier combined with "conventional" IR cells that were "usually anodized aluminum, with a coating of aluminum oxide on them, or occasionally steel on which rust forms." The inventor, Donald Hutson, stated that, "these metal oxides characteristically adsorb water and alcohol and when using a dry gas carrier ... the alcohol itself is adsorbed, leading to erratic results."² Mr. Hutson solved this problem by the "discovery" that nickel-plated aluminum is "non-adsorbent" as to alcohol and would, therefore, not produce erratic results. In short, the novelty of the patented method is the use of dry gas with a non-adsorbent IR cell, e.g., a nickel-plated or stainless steel IR cell.

For purpose of comparison, CMI's Intoxilyzer 5000 uses a dry gas carrier with an extruded aluminum IR cell.³ Extruded aluminum has a naturally-formed coating of aluminum oxides. It is distinguishable from anodized aluminum, expressly mentioned in the 418 patent, in that anodization, an artificial means of applying an oxide coating, may create, depending on the degree of application, a thicker layer of oxides — the more oxides, the more adsorbent is the cell. The patent thus implies, and both parties agree, that extruded aluminum with its coating of oxides adsorbs alcohol; the point at which the parties diverge is the degree of that adsorption and whether that produces erratic results.

CMI takes the position that although extruded aluminum adsorbs alcohol, the adsorbency is so slight that it is of little or no consequence.⁴ As CMI's lot would have it, this is how Intoximeters would define the term "non-adsorbent." Intoximeters asserts that "not adsorbent" does not mean the complete absence of adsorbency, since all metals literally adsorb, but is best defined more generally as lacking the characteristic of adsorbing to a significant degree (i.e., by producing erratic results) and lacking the characteristic of adsorbing more alcohol than nickel-plated aluminum or stainless steel.

This interpretation, however, may be unimportant since the patent implies, and since Intoximeters has repeatedly asserted in this litigation, that extruded aluminum is significantly more adsorbent than nickel-plated aluminum. Mr. Hutson suggested that the relative adsorbent qualities of these metals perhaps might be due to the different degrees to which each metal corrodes.⁵ This quality of adsorbency, Mr. Hutson said, caused erratic results. In sum, Intoximeters' position is that if the Intoxilyzer 5000 works, then it must infringe; but if it does not work, it does not infringe. For the reasons set forth herein, the Court finds this position to be absolutely untenable.

II. Infringement

Before trial, CMI moved for partial summary judgment on the issue of non-infringement.⁶ Summary judgment is appropriate in a patent case where, construing the evidence and all reasonable inferences in a light most favorable to the non-moving party, no genuine issue of material fact exists and the movant is entitled to judgment as a matter of law. See Becton Dickinson and Co. v. C.R. Bard, Inc., 922 F.2d 792, 795 (Fed.Cir.1990) (citations omitted).

Under any set of facts imagined, the Intoxilyzer 5000 does not infringe the 418 patent. If it is true that extruded aluminum is significantly more adsorbent than nickel-plated aluminum, then the Intoxilyzer 5000 concededly does not infringe the 418 patent under a literal or substantially equivalent analysis of infringement. See id. at 796-798 (discussing literal infringement and what is required for a finding of infringement under the "doctrine of equivalents").⁷

On the other hand, if the alcohol adsorbency of extruded aluminum is substantially the same as nickel-plated aluminum, then prosecution history estoppel dictates that Intoximeters cannot now exclude CMI from using extruded aluminum as part of the method for dry gas calibration or standardization.⁸ Prosecution history estoppel prevents a patentee from obtaining, through the doctrine of equivalents, "coverage of a subject matter that was relinquished during prosecution to procure issuance of the patent." Hoganas AB v. Dresser Industries, Inc., 9 F.3d 948, 951-52 (Fed.Cir.1993) (citing Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 870 (Fed.Cir.1985)). "The legal standard" for determining what subject matter was relinquished is an objective one, measured from the vantage point of what a competitor was reasonably entitled to conclude, from the prosecution history, that the applicant gave up to procure issuance of the patent. Id. at 952. Zenith Labs v. Bristol Myers Squibb, 19 F.3d 1418, 1424 (Fed.Cir. 1994).

Although a patentee can be his own lexicographer, the words of a claim "will be given their ordinary meaning, unless it appears that the inventor used them differently." Hoganas, 9 F.3d at 951 (citation omitted). Here, the ordinary meaning of the term "non-adsorbent" is unworkable, in light of the aim of the patent and the fact that all metals are, at least to some degree, adsorbent. The Court accepts Defendant's definition of the term.

The premise of the patent includes the inventor's assertion that "anodized aluminum, with a coating of aluminum oxide ... adsorbs alcohol." In the Description of the Preferred Embodiment, the patent states "in the preferred embodiment of this invention, the interior surfaces of the IR cell that are to be exposed to breath samples ... are plated with nickel ... the exposed walls can alternatively be made of stainless steel, or can be plated with or formed of other metals, such, for example, as gold or chromium, that are non-adsorptive of alcohol." Although the patent does not expressly mention extruded aluminum, the patent impliedly disclaims its use since extruded aluminum has a "coating of aluminum oxide," although to a lesser degree than does the disfavored anodized aluminum, and is significantly different than the metals listed in the Description. Unlike aluminum,⁹ which readily forms a layer of aluminum oxide on its surface area, the metals mentioned in the preferred embodiment section do not readily corrode, and presumably are, for that reason, less adsorbent as to alcohol in a dry gas carrier. Keeping in mind that it is improper for a court to add extraneous limitations to a claim that are wholly apart from any need to interpret what a patentee meant by particular words or phrases, id. at 950 (citation omitted), the Court believes that a competitor reasonably would have concluded that the inventor would not have used as examples of non-adsorbent metals gold, chromium, and stainless steel, if the term "non-adsorbent" were to encompass extruded aluminum as well.

Moreover, during a bidding contest for the Oregon purchase of breath analyzers, Intoximeters represented by letter to CMI that the use of bare or untreated aluminum does not infringe the 418 patent. The inventor believed that extruded aluminum was too adsorbent to produce accurate results. If the inventor was incorrect about that, and it appears that he was, then he certainly cannot now exclude others from using that method about which he was mistaken. The Court concludes that Intoximeters should not be able to obtain, through litigation, coverage of a subject matter (i.e. extruded aluminum IR cells) that a competitor reasonably could conclude that it gave up to procure issuance of its patent. See Zenith, 19 F.3d at 1424.

III. Actual Controversy

Having concluded that, as a matter of law, the Intoxilyzer 5000 does not infringe the 418 patent, the Court must determine whether there is an actual continued controversy on the issue of the validity or unenforceability of the patent. Cardinal Chemical Co. v. Morton Int'l Inc., ___ U.S. ___, 113 S.Ct. 1967, 124 L.Ed.2d 1 (1993). Intoximeters argued that there was...