G.W. Lisk Co. v. Power Packer N. Am., Inc.
| Decision Date | 25 April 2022 |
| Docket Number | Case No. 4:17-cv-00273-SMR-SBJ |
| Parties | G.W. LISK COMPANY, INC., Plaintiff, v. POWER PACKER NORTH AMERICA, INC., d/b/a GITS Manufacturing Company, Defendant. |
| Court | U.S. District Court — Southern District of Iowa |
Matthew David Callanan, Espnola F. Cartmill, Belin McCormick, P.C., Des Moines, IA, Brittany A. Washington, Pro Hac Vice, Candace M. Polster, Pro Hac Vice, Jason C. White, Pro Hac Vice, Nicholas A. Restauri, Pro Hac Vice, Morgan Lewis & Bockius LLP, Chicago, IL, Erika N.D. Stanat, Pro Hac Vice, Jessica Nicole Clemente, Pro Hac Vice, Harter Secrest & Emery LLP, Rochester, NY, Michael J. Berchou, Pro Hac Vice, Harter, Secrest & Emery LLP, Buffalo, NY, for Plaintiff.
Jeffrey D. Harty, Allison Elizabeth Kerndt, Matthew A. McGuire, Nyemaster Goode PC, Des Moines, IA, Adam A. Allgood, Pro Hac Vice, Alan M. Fisch, Pro Hac Vice, Elizabeth Bernard, Pro Hac Vice, Jeffrey M. Saltman, Pro Hac Vice, Joseph Edell, Pro Hac Vice, Lisa N. Phillips, Pro Hac Vice, R. William Sigler, Pro Hac Vice, Fisch Sigler LLP, Washington, DC, Jonathan H. Margolies, Pro Hac Vice, Katherine W. Schill, Pro Hac Vice, Melanie J. Reichenberger, Pro Hac Vice, Michael Best & Friedrich LLP, Milwaukee, WI, for Defendant.
ORDER ON CLAIM CONSTRUCTION
After many years of litigation on alleged patent infringement, the Court must now define three terms in the patent and determine whether a preamble limits it. The Court defines the terms as follows: First, "closed" is given its plain meaning, which the patent demonstrates is regulate or restrict. Second, "blocked" means "impeded." Third, "neutral position" has a clear meaning in the patent. Finally, it is unnecessary to address whether the preamble is limiting because the record does not suggest the dispute is material.
An exhaust gas recirculation ("EGR") valve is used in an internal combustion engine to "recirculate a portion of the exhaust gases emitted ... back through the combustion process." [ECF No. 1-2 at 6]. This valve works by diverting specific amounts of the "engine gas" and mixing them with "fresh air / fuel." Id. at 6. The process lowers the "combustion temperature" and reduces "the formation of harmful compounds such as nitrous oxide." Id. There are numerous possible designs for an EGR valve, one of which is described by Patent No. U.S. 6,601,821 ('821 patent). Id. The '821 patent describes a two-stage EGR valve. Id. A cross-sectional view of the design is shown below. See [ECF No. 1-2 at 4 (Figure No. 2)].
Both parties submitted versions of the figure that clarified the components of the valve.
The EGR valve in the patent functions as follows: An engine control module ("ECM") applies an electrical current to a solenoid, colored in purple in the modified diagram. The solenoid regulates the movement of a directional valve – shown in orange – by shifting it through various positions. The directional valve guides the movement of a fluid, typically pressurized engine oil, along the green path to one of two surfaces on a double-acting actuator. This process moves the actuator, colored red, through several different positions that adjust the placement of a dual poppet head mechanical device, highlighted in light blue. When the dual poppet head changes its position, it regulates how much exhaust gas moves into the engine. The ECM applies more electrical current to the solenoid to maintain the dual poppet head and exhaust valve in their desired positions, which allows exhaust gas into the engine. After some time, the dual poppet head closes.
On July 15, 2016, Plaintiff G.W. Lisk Company, Inc. ("Lisk") filed suit against Defendant Power Packer North America ("Power Packer"), doing business as GITS Manufacturing Company, in the United States District Court for the Western District of New York, alleging that Power Packer infringed upon the '821 patent. [ECF No. 1]. After Power Packer filed a motion to dismiss for improper venue, [ECF No. 11], the parties stipulated to transfer this case to the United States District Court for the Southern District of Iowa.1 [ECF No. 14].
On October 19, 2017, Power Packer filed a motion to stay the action pending inter partes review of the patent by the Patent Trial and Appeal Board ("PTAB"). [ECF No. 32]. The Court denied this motion to stay because the PTAB had not yet granted Power Packer's request for inter partes review. [ECF No. 40]. On March 27, 2018, Power Packer renewed its motion to stay after the PTAB granted inter partes review of the patent. [ECF No. 48]. The Court granted the renewed motion shortly thereafter. [ECF No. 49].
On May 9, 2019, the PTAB invalidated much of the '821 patent. [ECF Nos. 50-1; 50-2]. Specifically, it held that most of the patent's twenty-two claims, except for claims 6-11, 14, 15, and 19, did not comply with statutory patentability requirements. [ECF Nos. 50-1 at 4; 50-2 at 4]. The parties filed cross-appeals with the United States Court of Appeals for the Federal Circuit, which affirmed the PTAB in whole on April 13, 2021. [ECF Nos. 71-3; 71-4].
On April 21, 2021, the parties filed a joint motion to dissolve the stay and reinstitute discovery and scheduling deadlines. [ECF No. 71]. The Court granted the motion. [ECF No. 72]. On August 27, 2021, Lisk and Power Packer filed their opening claim construction briefs, which asked the Court to define three disputed terms and decide whether a preamble was limiting. [ECF Nos. 94–94-4; 95–95-8]. On September 9, 2021, the parties submitted their responsive claim construction briefs. [ECF Nos. 97; 98]. The Court conducted a hearing where the parties provided background on the technological components of the patent. [ECF No. 112]. On December 3, 2021, the parties presented substantive oral arguments on claim construction. [ECF No. 114].
On January 26, 2022, Power Packer requested that the PTO conduct an ex parte reexamination of "the nine remaining claims asserted by Plaintiff G.W. Lisk Company." [ECF Nos. 123; 139-1 at 2]. On February 24, 2022, the PTO granted Power Packer's request for reexamination. [ECF No. 154 at 2]. On March 1, 2022, Power Packer filed an expedited motion to stay pending resolution of the Ex Parte Reexamination. [ECF No. 142]. The Court denied this motion to stay on March 14, 2022. [ECF No. 154]. After considerable delay, this issue is ready for review. [ECF Nos. 94; 95; 97; 98; 156; 157].
The United States Constitution provides Congress with the power "to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." Figueroa v. United States , 466 F.3d 1023, 1030 (Fed. Cir. 2006) (quoting U.S. Const. art. I, § 8, cl. 8 ). Congress used this authority to create a system where "whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement ... may obtain a patent." 35 U.S.C. § 101. There are "two distinct elements of a patent document." Markman v. Westview Instruments, Inc. , 517 U.S. 370, 373, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). "First, it contains a specification describing the invention ‘in such full, clear, concise, and exact terms as to enable any person skilled in the art ... to make and use the same.’ " Id. (quoting 35 U.S.C. § 112 ). "Second, a patent includes one or more ‘claims,’ which ‘particularly point out and distinctly claim the subject matter which the applicant regards as his invention.’ " Id. (cleaned up). The claims "define the scope of the patent grant," which sets the parameters of what others cannot use or sell without permission. Id. at 373, 116 S.Ct. 1384.
"Patent lawsuits charge what is known as infringement." Markman , 517 U.S. at 374, 116 S.Ct. 1384. There is a two-step process to determine whether a party has infringed on a patent. Markman v. Westview Instruments, Inc. , 52 F.3d 967, 976 (Fed. Cir. 1995). "First, the meaning and scope of the relevant claims must be ascertained." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc. , 381 F.3d 1111, 1115 (Fed Cir. 2004). "Second, the properly construed claims must be compared to the accused device." Id. The first step – known as claim construction – is a question of law to be determined exclusively by the court. Teva Pharms. USA, Inc. v. Sandoz, Inc. , 574 U.S. 318, 331, 135 S.Ct. 831, 190 L.Ed.2d 719 (2015). The second step is a question of fact to be determined by a factfinder. Id.
"We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’ " Phillips v. AWH Corp. , 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996) ); CCS Fitness, Inc. v. Brunswick Corp. , 288 F.3d 1359, 1366 (Fed. Cir. 2002) (). An ordinary and customary meaning is "the meaning it would have to a person of ordinary skill in the art at the time of the invention." Innova , 381 F.3d at 1116 (citation omitted). "The ordinary meaning of a claim term may be determined by reviewing a variety of sources, including the claims themselves and other intrinsic evidence including the written description and the prosecution history and dictionaries and treatises." Teleflex, Inc. v. Ficosa N. Am. Corp. , 299 F.3d 1313, 1325 (Fed. Cir. 2002) (internal citations omitted).
"The claims themselves provide substantial guidance as to the meaning of particular terms." Phillips , 415 F.3d at 1314. "[T]he context in which a term is used in the asserted claim can be highly instructive." Schindler Elevator Corp. v. Otis Elevator Corp. , 593 F.3d 1275, 1282 (Fed. Cir. 2010) (citing Phillips , 415 F.3d at 1314 ). Other claims are helpful because "claim terms are...
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