Hitkansut LLC v. United States

• Decision Date: 27 January 2017
• Docket Number: No. 12-303C,12-303C
• Parties: HITKANSUT LLC, et al., Plaintiffs, v. UNITED STATES, Defendant.
• Court: U.S. Claims Court

HITKANSUT LLC, et al., Plaintiffs, v. UNITED STATES, Defendant.

No. 12-303C

United States Court of Federal Claims

Reissued: February 6, 2017

January 27, 2017

Post-trial decision in a patent case; 28 U.S.C. § 1498; infringement; patent-eligible subject matter; nonobviousness; enablement; reasonable and entire compensation

John S. Artz, Dickinson Wright, PLLC, Troy, Michigan, for plaintiffs. With him on the briefs and at trial were John A. Artz and Franklin M. Smith, Dickinson Wright, PLLC, Troy, Michigan.

Gary L. Hausken, Assistant Director, Commercial Litigation Branch, Civil Division, United States Department of Justice, Washington, D.C., for defendant. With him at trial and on the briefs was Joss Nichols, Attorney, Commercial Litigation Branch, Civil Division, United States Department of Justice, Washington, D.C. With him at trial were Benjamin Richards, Attorney, Commercial Litigation Branch, Civil Division, United States Department of Justice, Washington, D.C, and Emily Schneider and Nathaniel Sloan, Attorneys, United States Department of Energy, Washington, D.C. With him on the briefs were Benjamin C. Mizer, Principal Deputy Assistant Attorney General, Civil Division and John Fargo, Director, Commercial Litigation Branch, Civil Division, United States Department of Justice, Washington, D.C.

OPINION AND ORDER¹

LETTOW, Judge.

This post-trial decision addresses plaintiffs' claim for damages attributable to alleged infringement of a patent for a method of processing materials, specifically including metal parts, to improve their properties. Plaintiffs, Hitkansut LLC and Acceledyne Technologies, Ltd. LLC (collectively, "Hitkansut"), allege that the United States, acting through Oak Ridge National Laboratory ("Oak Ridge" or "the government"), infringed their patent, United States Patent No. 7,175,722 ("the '722 patent"), entitled "Methods and Apparatus for Stress Relief Using Multiple Energy Sources."

Donna Walker is the inventor of the '722 patent, which describes a method for processing physical structures through the concurrent application of multiple energies. In November 2003, after filing a patent application, Ms. Walker met with researchers at Oak Ridge, a government-funded laboratory pursuing scientific research that encompasses metal processing among other fields. Ms. Walker signed a nondisclosure agreement with Oak Ridge, disclosed her invented method as described in her patent application, and demonstrated the invented method by applying induction heating and vibration concurrently to metals. Subsequently, Oak Ridge researchers received multiple patents for a materials processing method that used concurrent application of induction heating and a magnetic field, termed thermomagnetic processing ("TMP"), to treat metal parts. Hitkansut and Acceledyne, the owner and licensee of the '722 patent, respectively, allege that Oak Ridge's TMP method infringes Claims 1, 6, and 11 of the '722 patent, and request damages for the alleged infringement. The government responds that no infringement has occurred and also contends that the '722 patent is invalid due to patent-ineligible subject matter, obviousness, and lack of enablement. Further, the government argues that even if Oak Ridge did infringe the '722 patent, Hitkansut would only be entitled to a reasonable royalty of $200,000 and delay damages of $16,000.

A fourteen-day trial was held in Washington, D.C., commencing on May 23, 2016 and ending on June 22, 2016. Following post-trial briefing, closing arguments were heard on October 20, 2016. The case is now ready for disposition.

FACTS²

A. The '722 Patent

Donna Walker, the inventor of the '722 patent, see PX 58 (the '722 patent), is the majority owner of Hitkansut and Acceledyne, Tr. 32:18 to 33:12 (Test. of Donna Walker).³ Hitkansut owns the patent and exclusively licenses it to Acceledyne. Tr. 33:15-21 (D. Walker). Ms. Walker first filed a provisional patent application on August 16, 2002. PX 476 (ProvisionalApplication); Tr. 47:7-10, 48:15-22 (D. Walker). Within the twelve-month period following the provisional application, on July 31, 2003, Ms. Walker filed her formal patent application, claiming priority to her provisional application and incorporating that application by reference. '722 patent, col. 1, lines 7-12; Tr. 47:11-15 (D. Walker).⁴ The patent was issued on February 13, 2007.

The '722 patent describes a method of "changing physical properties of a structure using concurrent application of multiple energy types to the structure, and methodologies for determining operational settings for concurrent application of multiple energy sources to a structure." '722 patent, col. 2, lines 29-32. The '722 patent consists of fourteen claims, three of which are relevant to this dispute: Claims 1, 6, and 11.⁵ Claim 1 is an independent claim on which Claim 6 depends, and Claim 11 is an independent claim without any dependent claims.

Claim 1, the first independent claim, specifies:

A method of changing a physical property of a structure, comprising:

[a] providing a first energy to a structure by performing a first energy process according to an operational setting, at least one of the operational setting and a time value being selected according to a first order rate relationship for the first energy process, according to a first order rate relationship for a second energy process, and according to a desired physical property value; and

[b] providing a second energy to the structure by performing the second energy process;

[c] wherein the first and second energy processes are performed concurrently for at least the time value;

[d] wherein the first order rate relationship for the first energy process relates application of the first energy to the structure and a physical property of the structure;[e] wherein the first order rate relationship for the second energy process relates application of the second energy to the structure and the physical property;

[f] wherein the first and second energies are different;

[g] wherein the total energy provided to the structure by the first and second energy processes is above an activation energy for the material of the structure;

[h] wherein the first energy is thermal and wherein the second energy is oscillatory;

[i] wherein the operational setting is a temperature setting, wherein one of the temperature setting and the time value is selected according to the first order rate relationship for the first energy process, according to the first order rate relationship for the second energy process, according to the desired physical property value, and according to the other one of the temperature setting and the time value; and

[j] wherein the first order rate relationship for the first energy process is a first Larson[-]Miller relationship that relates application of thermal energy to the structure and the physical property, and wherein the first order rate relationship for the second energy process is a second Larson[-]Miller relationship that relates application of oscillatory energy to the structure and the physical property.

'722 patent, col. 19, line 43 to col. 20, line 16 (adding bracketed designations for the ten separate elements of Claim 1).⁶

Claim 6, which is dependent upon Claim 1, provides:

The method of claim 1, wherein the physical property is internal stress, and wherein the desired physical property value is one of a remaining internal stress value and an internal stress reduction value.

'722 patent, col. 20, lines 50-53.

Claim 11, the second relevant independent claim, describes:

A method of changing a physical property of a structure, comprising:

[a] providing a first energy to a structure by performing a first energy process according to an operational setting;

[b] providing a second energy to the structure by performing a second energy process;

[c] wherein the first and second energy processes are performed concurrently to provide energy above an activation energy for the material of the structure for at least a time value;

[d] wherein one of the operational setting and the time value are selected according to a desired physical property value and according to a first order rate relationship that relates concurrent application of the first and second energy to the structure and the physical property of the structure; and

[e] further comprising determining the Larson[-]Miller relationship that relates concurrent application of the first and second energy to the structure and the physical property of the structure.

'722 patent, col. 21, lines 47-66 (adding bracketed designations for the five separate elements of Claim 11).

The patent specification states that the concurrent application of multiple energies "significantly reduce[s] the time and/or energy required to change a physical property of interest, such as reducing remaining internal stress in manufactured parts or other structures, compared to previous techniques." '722 patent, col. 2, lines 35-37.⁷ For example, the concurrent application of thermal and oscillatory energies can be used to achieve stress relief in aluminum samples. See '722 patent, col. 17, line 52 to col. 18, line 26; see also '722 patent, col. 16, lines 22-24 (explaining that "separate application of heat at this temperature or of vibration alone for this time would not yield the desired stress-relief goal"). In describing a first order rate relationship that relates concurrent application of at least two different energy processes, the specification provides:

[T]he first L[arson]-M[iller ("L-M")] parameter may be determined according [to] a first L-M relationship (e.g., L-M curve, etc.), wherein a desired remaining internal stress value is selected along the Y axis of the first L-M curve, and the corresponding parameter ("P") value is ascertained along the X axis (P₁). A second L-M parameter is determined for the desired physical property value according to a second L-M relationship (e.g., a second L-M curve) by locating the desired internal stress value

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