Prolitec Inc. v. Scentair Techs.

• Docket Number: Civil Action 20-984-WCB
• Decision Date: 13 December 2023
• Parties: PROLITEC INC., Plaintiff, v. SCENTAIR TECHNOLOGIES, LLC, Defendant.
• Court: U.S. District Court — District of Delaware

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PROLITEC INC., Plaintiff, v. SCENTAIR TECHNOLOGIES, LLC, Defendant.

Civil Action No. 20-984-WCB

United States District Court, D. Delaware

December 13, 2023

FILED UNDER SEAL

MEMORANDUM OPINION AND ORDER

WILLIAM C. BRYSON, UNITED STATES CIRCUIT JUDGE

In this patent infringement case, the parties have each filed motions for summary judgment. Defendant ScentAir Technologies, LLC seeks summary judgment of no direct or indirect infringement. Dkt. No. 217 at 1. Plaintiff Prolitec Inc. seeks partial summary judgment that its asserted claims are not indefinite not obvious, and not anticipated by various ScentAir products. Dkt. No. 218 at 1.

Each party has also moved to exclude certain expert testimony from the opposing party pursuant to Daubert v. Merrill Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). ScentAir seeks to exclude testimony from two of Prolitec's expert witnesses, Marcus Hultmark and Robert Vigil. Dkt. No. 217 at 1-2. Prolitec seeks to exclude testimony from Prolitec's expert, Timothy Morse, relating to (1) whether the preambles of the asserted claims are limiting, (2) whether the accused products exhibit “channel flow,” and (3) whether the claims are anticipated by the AirQ products. Dkt. No. 218 at 1. I heard oral argument on these motions on December 5 2023.

I. BACKGROUND

Prolitec alleges that ScentAir infringes six claims across two of Prolitec's patents: dependent claims 17 and 23 of U.S. Patent No. 9,162,004 (“the '004 patent”) and dependent claims 15-17 and 22 of U.S. Patent No. 9,745,976 (“the '976 patent”). Prolitec originally alleged that ScentAir infringed various additional claims across four patents but dropped those additional claims following an inter partes review (“IPR”) proceeding in which the Patent Trial and Appeal Board (“PTAB”) found those additional claims unpatentable. See Dkt. Nos. 108-3 and 108-5.

In its counterclaim, ScentAir asserts that Prolitec infringes ScentAir's U.S. Patent No. 10,838,388. The court has stayed the proceedings on ScentAir's counterclaim, however, pending an ex parte reexamination of ScentAir's patent by the U.S. Patent and Trademark Office. Dkt. No. 212.

A. The Patents in Suit

The '976 patent is a continuation of the '004 patent. Both patents are titled “Removable Cartridge for Liquid Diffusion Device and Cartridge Insert Thereof.” The specifications of the two patents are nearly identical, and the patents share the same 10 figures.

Claims 17 and 23 of the '004 patent both depend from claim 9 of that patent. Those claims cover the following subject matter:

9. A cartridge for use with a liquid diffusing device, the cartridge comprising:

a cartridge housing defining an internal housing cavity partially filled with a liquid to be diffused;

a diffusion head positioned within the internal housing cavity, the diffusion head including a venturi device for generating a diffused liquid from the liquid contained in the internal housing cavity; and

an insert positioned downstream of the diffusion head, the insert including an inlet to receive the diffused liquid generated by the venturi device, an outlet zone through which to discharge the diffused liquid toward an external environment, and a tortuous passage extending between the inlet and the outlet zone.

17. The cartridge of claim 9 wherein the tortuous passage follows a non-linear path that assists in preventing liquid from leaking from the cartridge when the cartridge is upended.

23. The cartridge of claim 9 wherein the tortuous passage of the insert is configured to provide a convoluted flow path that retards a flow of the liquid to be diffused through the insert when the cartridge is temporarily held upside-down.

Claims 15-17 and 22 of the '976 patent all depend from independent claim 9 of that patent. Those claims cover the following subject matter:

9. A cartridge for use with a liquid diffusing device, the cartridge comprising:

a cartridge housing defining an internal housing cavity partially filled with a liquid to be diffused;

a venturi device for generating a diffused liquid from the liquid contained in the internal housing cavity; and

an insert positioned downstream of the venturi device, the insert including an inlet to receive the diffused liquid generated by the venturi device, an outlet zone through which to discharge the diffused liquid toward an external environment, and a tortuous passage extending between the inlet and the outlet zone, the tortuous passage being partially capped by the cartridge housing to enclose a portion of the tortuous passage and to define an aerosol outlet at a remaining uncovered portion.

15. The cartridge of claim 9 wherein the tortuous passage is at least partially defined by a vertical sidewall of the insert.

16. The cartridge of claim 9 wherein the tortuous passage follows a non-linear path that assists in preventing liquid from leaking from the cartridge when the cartridge is upended.

17. The cartridge of claim 9 wherein the insert is provided between the cartridge housing and the venturi device.

22. The cartridge of claim 9 wherein the tortuous passage of the insert is configured to provide a convoluted flow path that retards a flow of the liquid to be diffused through the insert when the cartridge is temporarily held upside-down.

All six asserted claims share a common preamble, derived from the two independent claims. The preamble recites “[a] cartridge for use with a liquid diffusing device.”

After the conclusion of the IPR proceeding, the court construed three terms or phrases used in the claims: (1) the term “tortuous passage” was construed to mean a “physical channel having repeated twists, bends or turns”; (2) the phrase “assists in preventing the liquid from leaking” was given its plain and ordinary meaning, although the court added that ScentAir would be precluded from arguing that the liquid cannot leak; and (3) the phrase “retards a flow of the liquid” was given its plain and ordinary meaning. Dkt. No. 124.

B. The Accused Products

ScentAir's “Breeze” product is a liquid scent diffuser, which operates by atomizing liquid fragrance oil and dispersing droplets of the fragrance oil within a target space using a pump and a fan. Dkt. No. 220-10, Ex. 10 at ¶ 30. The product has two principal parts: the dispersing or diffusion device itself (the “Breeze diffusion device”) and a removable fragrance cartridge (the “Breeze cartridge”). Id. at ¶ 31. The Breeze cartridge is a disposable bottle that arrives in a separate box from the Breeze diffusion device. Id. The Breeze diffusion device includes, among other components, a lid that is connected by a plastic air supply hose to the body of the diffusion device. Id. Images of the Breeze cartridge (left and center) and the Breeze device (right) are shown below.

(Image Omitted)

Dkt. No. 220-10, Ex. 10 at ¶¶ 30, 31.

(Image Omitted)

Id. at ¶ 32.

To use the Breeze cartridge with the Breeze diffusion device, the user screws the cartridge into the lid of the device. See id. at ¶ 31. Replacing the Breeze cartridge is done in the same way, as demonstrated in the excerpt from the Breeze user manual, set forth below:

(Image Omitted)

Dkt. No. 220-3, Ex. 3 at SCENTAIR_00028286. The insertion of the Breeze cartridge into the body of the of the Breeze diffusion device is depicted below:

(Image Omitted)

Dkt. No. 220-9, Ex. 9 at 25.

Prolitec's expert, Dr. Hultmark, testified at his deposition that it is possible to disconnect the air hose from the lid of the diffusion device. Dkt. No 223-6, Ex. F at 220:6-221:13. However, the Breeze user manual instructs that the hose “should not be removed, as it connects the device lid to the pump” located within the body of the diffusion device, Dkt. No. 220-3, Ex. 3 at SCENTAIR00028271. ScentAir's expert, Dr. Morse, acknowledged at his deposition that the hose could be disconnected from the lid, but he added that doing so would “probably plastically deform the hose, so you'd probably damage it in some way.” Dkt. No. 223-4, Ex. D at 256:15257:3.

C. The Prior Art

There are three prior art products relevant to the parties' motions: the Air Berger ScentBox, the ScentAir ScentDirect, and the ScentAir ScentStream.

Air Berger is a French company that ScentAir acquired in July 2023. See Dkt. No. 219-1, Ex. D. Air Berger's ScentBox product was publicly available before the priority date of both asserted patents. See Dkt. No. 219 at 15; Dkt. No. 224 at 18. After purchasing Air Berger, ScentAir began selling its own ScentBox product, which Dr. Morse analyzed in forming his opinions. Dkt. No. 224 at 18. According to ScentAir, there have been no material changes to the ScentBox design since ScentAir's 2013 acquisition of Air Berger.

The ScentDirect product is the commercial embodiment of U.S. Patent No. 8,881,999 (“Baylock”), which ScentAir owns. See Dkt. No. 219 at 18-22; Dkt. No. 224 at 24-26 (not identifying any material differences between Baylock and the ScentDirect product). The ScentStream product is also manufactured by ScentAir and is similar but not identical to the device disclosed in Baylock. See Dkt. No. 219 at 24 (describing Baylock and the ScentStream product as “substantially similar”).

II. LEGAL STANDARDS

The court “shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). A material fact is “genuine” if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). With regard to an issue on which the nonmoving party bears the burden of proof at trial, the party seeking summary judgment “bears the initial responsibility of informing the district...