I.E.E. Int'l Elecs. & Eng'g, S.A. v. TK Holdings Inc.

• Decision Date: 23 October 2014
• Docket Number: Case No. 10–13487.
• Citation: 54 F.Supp.3d 776
• Parties: I.E.E. INTERNATIONAL ELECTRONICS & ENGINEERING, S.A. and IEE Sensing, Inc., Plaintiffs/Counter–Defendants, v. TK HOLDINGS INC. and Takata A.G., Defendants/Counter–Plaintiffs.
• Court: U.S. District Court — Eastern District of Michigan

54 F.Supp.3d 776

I.E.E. INTERNATIONAL ELECTRONICS & ENGINEERING, S.A. and IEE Sensing, Inc., Plaintiffs/Counter–Defendants

v.TK HOLDINGS INC. and Takata A.G., Defendants/Counter–Plaintiffs.

Case No. 10–13487.

United States District Court, E.D. Michigan, Southern Division.

Signed Oct. 23, 2014.

Brian C. Doughty, Jeffrey M. Szuma, Robert C.J. Tuttle, Frank A. Angileri, Brooks Kushman, Southfield, MI, for Plaintiffs/Counter–Defendants.

Lisa S. Mankofsky, Foley & Lardner LLP, Washington, DC, Matthew B. Lowrie, Foley & Lardner LLP, Boston, MA, for Defendants/Counter–Plaintiffs.

OPINION AND ORDER REGARDING CROSS–MOTIONS FOR SUMMARY JUDGMENT

GERALD E. ROSEN, Chief Judge.

I. INTRODUCTION

Plaintiffs I.E.E. International Electronics & Engineering, S.A. and IEE Sensing, Inc. (collectively “IEE” or “Plaintiffs”) commenced this action in this Court in September of 2010, alleging that Defendants TK Holdings Inc. (“TKH”) and Takata A.G. (“TKAG”) have infringed one or more claims of a patent owned by Plaintiffs, U.S. Patent No. 7,656,169 (the “'169 Patent”), and also seeking declarations that Plaintiffs have not infringed certain patents owned by Defendant TKH—i.e., U.S. Patent No. 6,577, 023 (the “'023 Patent”), U.S. Patent No. 6,825,765 (the “'765 Patent”), U.S. Patent No. 7,180,306 (the “'306 Patent”), and U.S. Patent No. 7,098, 674 (the “'674 Patent”) —or, alternatively, that TKH's patents are invalid on one or more grounds. Defendants, in turn, have filed counterclaims against Plaintiffs, alleging that Plaintiffs have infringed one or more claims of the '023 Patent, the '765 Patent, the '674 Patent, and the '306 Patent, and seeking declarations that Defendants have not infringed the '169 Patent or, alternatively, that this patent is invalid on a number of grounds. This Court's subject matter jurisdiction over this case rests upon the parties' assertion of claims arising under federal patent law. See 28 U.S.C. § 1338(a).

Through the present cross-motions, each of the parties in this case seeks an award of summary judgment in its favor on one or more of the claims it has asserted and/or the claims asserted against it. First, Plaintiffs seek rulings as a matter of law (i) that they have not infringed, either directly or indirectly, any of the four patents owned by Defendant TKH, and (ii) that Defendants have infringed claims 1, 10, 13, and 15 of the '169 Patent. Next, Defendant TKH requests an award of summary judgment in its favor as to (i) the invalidity of claims 1, 10, 15, and 16 of the '169 Patent on a number of grounds, (ii) Plaintiffs' infringement of certain claims of the '306 and '674 Patents, either directly or under a theory of induced or contributory infringement, and (iii) Plaintiffs' purported failure to produce evidence in support of their challenges to the validity of the '306 and '674 Patents. Finally, Defendant TKAG moves for rulings as a matter of law (i) that one or more claims of the '169 Patent are invalid on various grounds, and (ii) that the accused TKAG products do not infringe claims 1, 6, or 10 of the ' 169 Patent.¹

Each of these three summary judgment motions has been fully briefed by the parties. Having carefully and thoroughly reviewed the parties' extensive briefing on their motions, as well as the voluminous record accompanying these motions, the Court finds that the relevant facts, legal issues, and authorities are sufficiently presented in these written submissions, and that oral argument would not aid the decisional process. Accordingly, the Court will decide the parties' motions “on the briefs.” See Local Rule 7.1(f)(2), U.S. District Court, Eastern District of Michigan. This opinion and order sets forth the Court's rulings on these motions.

II. FACTUAL AND PROCEDURAL BACKGROUND

A. The Parties

Plaintiff I.E.E. International Electronics & Engineering, S.A. is a corporation organized under the laws of Luxembourg with its headquarters located in Contern, Luxembourg. Plaintiff IEE Sensing, Inc. is a subsidiary of I.E.E. International that is organized under the laws of Delaware and headquartered in Auburn Hills, Michigan.² Plaintiff I.E.E. International is the owner by assignment of U.S. Patent No. 7,656,169 (the “'169 Patent”).

Defendant TK Holdings Inc. (“TKH”) is a Delaware corporation with its principal places of business located in Greensboro, North Carolina and Auburn Hills, Michigan. Defendant Takata A.G. (“TKAG”) is a corporation organized under German law with its headquarters located in Aschaffenburg, Germany. Both TKH and TKAG are subsidiaries of Takata Corporation, a Japanese corporation. Defendant TKH is the owner by assignment of U.S. Patent No. 6,577,023 (the “'023 Patent”), U.S. Patent No. 6,825,765 (the “'765 Patent”), U.S. Patent No. 7,180,306 (the “'306 Patent”), and U.S. Patent No. 7,098,674 (the “'674 Patent”).

B. The Technology At Issue and Patents–In–Suit

Each of the four parties to this suit is a supplier to the automotive industry, and Plaintiffs and Defendants are competitors in the sale of occupant sensors to auto manufacturers. In the automotive setting, information from an occupant sensor is most commonly used to deactivate a front passenger air bag in certain situations—for example, when the vehicle seat is occupied by an infant car seat rather than an adult passenger. The patents at issue here concern “capacitive” occupant sensors, which use an electric field to detect the type of occupant sitting on a vehicle seat.

Early occupant sensors determined the type of occupant by measuring weight. Capacitive occupant sensors, in contrast, generate an electric field above the vehicle seat, and detect the type of occupant by measuring an electrical property known as “capacitance”—that is, the ability of an object to store an electrical charge. Capacitive occupant sensors measure the capacitance of a vehicle seat occupant through the use of a “sense electrode” placed in the seat, and this measurement varies depending on the type of occupant. An adult passenger, for example, interacts more with the electric field (and thus produces a higher capacitance in the sense electrode) than an infant car seat, which is smaller and made largely of a substance (plastic) that is a poor conductor of electricity. By measuring the capacitance of the occupant and comparing this measurement with empirical data, a capacitive occupant sensor can distinguish among different types of occupants and pass this information along for use in air bag deployment.

Neither Plaintiffs nor Defendants claim to have invented the general concept of a capacitive occupant sensor, which dates back to at least the early 1970s. Rather, the patents-in-suit reflect various refinements to capacitive occupant sensors that are intended to counteract potential inaccuracies in the measurement of capacitance due to factors such as a wet vehicle seat or variations in temperature. The invention described in Plaintiffs' '169 Patent, for instance, is intended to achieve more reliable and accurate detection of an occupant even when a vehicle seat is wet. (See Plaintiffs' Motion, Ex. A, '169 Patent, Col. 6 at 22–34.) Defendant TKH's '306 Patent incorporates “reference capacitors” that compensate for the effects of environmental conditions such as electromagnetic interference. (See Defendant TKH's Motion, Ex. I, Fultz 4/2/2012 Expert Report at ¶ 49.) And TKH's '674 Patent addresses the concern that a seat heater may interfere with the operation of a capacitive occupant sensor, by placing a “driven shield” between the sensing electrode and the seat heater in order to block the “noise” emitted by the seat heater. (See id. at ¶ 54.)³

Plaintiffs and Defendants each offer a capacitive occupant detection system that is alleged to infringe one or more of the opposing party's patents. Plaintiffs began developing their “BodySense” product in 2005, secured a commitment from General Motors in the summer of 2006 to purchase this product, and began shipping the BodySense product to General Motors in 2008. Defendant TKH began offering its “CS3” product for sale to automobile manufacturers in the spring of 2007, and made its first commercial shipment of this product in July of 2012. Finally, TKH's sister company, Defendant TKAG, makes capacitive occupant detection systems that are being used in BMW vehicles.

C. Procedural Background

This is not the first suit between these parties concerning their competing capacitive occupant detection systems. In July of 2009, Defendant TKH brought suit against Plaintiffs in the United States District Court for the District of Delaware, alleging that Plaintiffs had infringed three of the four patents asserted in Defendants' counterclaims in this case. In November of 2009, the parties executed a tolling agreement, under which TKH agreed to dismiss its suit without prejudice while the parties sought to negotiate a settlement. The tolling agreement granted TKH a one-month opportunity to reinstate its lawsuit in the event that the parties failed to reach a settlement, but TKH did not exercise this option.

Instead, Plaintiffs commenced the present action in this Court in September of 2010, alleging that Defendant TKH's capacitive occupant detection system infringes the '169 Patent, and seeking a declaration that Plaintiffs' BodySense product does not infringe the '023, '765, '306, and '674 Patents held by TKH. TKH filed counterclaims accusing Plaintiffs' BodySense product of infringing the '023, '765, '674, and '306 Patents, and requesting a declaration that it has not infringed Plaintiffs' '169 Patent or, alternatively, that the '169 Patent is invalid on a number of grounds. When Plaintiffs learned during discovery that TKH's sister company, Defendant TKAG, also was producing a capacitive occupant detection system that allegedly infringes the '169 Patent, Plaintiffs filed an amended complaint naming TKAG as an additional party, and TKAG, in turn, filed a counterclaim against Plaintiffs seeking a declaration that its product...