Stern v. Sequal Techs., Inc.
| Decision Date | 06 January 2012 |
| Docket Number | Case No. C10–1257JLR. |
| Citation | 840 F.Supp.2d 1260,2012 Markman 32968 |
| Parties | Michael STERN, et al., Plaintiffs, v. SEQUAL TECHNOLOGIES, INC., Defendant. |
| Court | U.S. District Court — Western District of Washington |
OPINION TEXT STARTS HERE
John E. Whitaker, Whitaker Law Group, Philip P. Mann, Mann Law Group, Seattle, WA, for Plaintiffs.
Andrew D. Skale, Ben L. Wagner, Mintz Levin Cohn Ferris Glovsky & Popeo P.C., San Diego, CA, Tiffany Hallen Scott, Brian G. Bodine, Lane Powell PC, Seattle, WA, for Defendant.
ORDER GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT OF NON–INFRINGEMENT
This patent infringement case comes before the court on Defendant SeQual Technologies, Inc.'s (“SeQual”) motion for summary judgment of non-infringement. (Mot. (Dkt. # 27).) Plaintiffs Michael Stern and DigiFLO, Inc. (“DigiFLO”) (collectively, “Plaintiffs”) oppose the motion. (Resp. (Dkt. # 32).) Having considered the briefing of the parties, the oral arguments of counsel on January 3, 2012, the relevant law, and the balance of the record, the court GRANTS the motion (Dkt. # 27).
Mr. Stern is the inventor and owner of U.S. Patent No. 5,627,323 (“the '323 patent”), which was issued on May 6, 1997 and is entitled “Ultrasonic Binary Gas Measuring Device.” The abstract of the 1 323 patent contains three independent claims and 22 dependent claims. ( See generally id.)
DigiFLO is the exclusive licensee of the '323 patent. (Compl. ¶ 2.) DigiFLO manufactures the ultrasonic oxygen and flow rate sensors that are protected by the '323 patent. (Stern Decl. ¶ 4.) SeQual was a customer of DigiFLO from June 2003 until April 2009. ( Id.) During that period, SeQual purchased DigiFLO's sensors for use in SeQual's medical oxygen concentrators. ( Id.) Some time prior to 2009, SeQual began to purchase increasingly fewer DigiFLO sensors because it had found a less expensive alternative sensor. ( Id. ¶ 5.)
The instant lawsuit involves the parties' dispute over whether SeQual's alternative sensor, which is used in its “Eclipse” and “Integra” series of medical oxygen concentrators, infringes one or more claims of the 323 patent. ( Id.) SeQual has filed a counterclaim seekinga declaration of non-infringement and invalidity, and alleging patent misuse. ( See generally Counterclaim (Dkt. # 6).)
In June 2010, pursuant to the court's scheduling order, the parties filed their opening claim construction briefs (Dkt. 24, 26). SeQual also filed the instant motion for summary judgment of non-infringement (Mot.) and motions to stay the Markman hearing (Dkt. # 35) and all other case deadlines (Dkt. # 42) pending the court's resolution of its summary judgment motion. The court granted the motions to stay (Dkt. 41, 45).
The three independent claims in the '323 patent—Claims 1, 10, and 12—are central to the parties' arguments regarding summary judgment. Accordingly, they are set forth in full here:
1. A method of measuring the ratio of gases in a binary gas mixture comprising the steps of;
then measuring the travel time from the initial transmission to the time of reception of said echo wave to provide a measure of the relative proportions of the gases in said mixture, and
providing a display indicative of the relative proportions of said gases.
* * * * * *
10. In a sensor for determining the composition of a binary gas mixture, said sensor including a sealed gas chamber for containing said gas mixture, first and second acoustic transducers mounted a predetermined distance apart in said chamber and means for selectively energizing said transducers to transmit acoustic waves through said gas mixture, a gas ratio measurement system comprising in combination;
whereby the time from initial transmission of said first sound wave to the time of reception of said echo sound wave may be utilized to calculate the gas ratio measurement.
* * * * * *
12. In a sensor for determining the composition of a binary gas mixture, said sensor including a sealed gas chamber for containing said gas mixture, said chamber comprising a hollow conduit having end walls and an elongated cylindrical side wall, first and second acoustic transducers mounted a predetermined distance apart in said chamber and means for selectively energizing said transducers to transmit acoustic waves through said gas mixture, a gas ratio measurement system comprising in combination;
said microprocessor apparatus including means to measure the difference between the travel time of said first sound wave and said echo sound wave and to calculate the flow rate of said gas therefrom.
( See Patent.)
Determining whether a particular product infringes an existing patent involves a two-step analysis. The court must first identify, as a matter of law, the proper construction of the asserted patent claim. Markman v. Westview Instruments, Inc., 517 U.S. 370, 384–91, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). After the claim has been properly construed, the fact finder determines whether the accused device infringes the claim. See, e.g., O.I. Corp. v. Tekmar Co., Inc., 115 F.3d 1576, 1580 (Fed.Cir.1997). As noted above, although the parties have submitted claim construction briefs, the court has not yet held a Markman hearing.
SeQual contends that a summary judgment of non-infringement is proper because the three independent claims in the '323 patent require use of a binary gas mixture, and SeQual's products do not use a binary gas mixture (rather, they use ambient air, which is comprised of at least three gases). (Mot. at 1.) “Binary gas mixture” is not a term that the parties identified in their claim construction briefs. ( See Dkt. 24, 26.) SeQual maintains in its briefing in support of summary judgment that the term means “a gas mixture that includes two gases.” (Mot. at 1.)
Plaintiffs respond that summary judgment is improper for several reasons. First, they argue that SeQual's motion is an untimely request for claim construction of the term “binary gas mixture.” (Resp. at 3–4.) Nevertheless, should the court address the merits of SeQual's motion, Plaintiffs dispute that the claims require a “binary gas mixture” because, according to Plaintiffs, the term is merely a non-limiting reference within the claim preambles. ( Id. at 4–7.) Plaintiffs also argue that if the court construes the term, it should construe the term to mean “essentially two gases.” ( Id. at 7–10.) Plaintiffs further maintain that even if the court construes the term to mean a gas mixture that includes two gases, summary judgment is improper because Claims 10 and 12 are apparatus claims and how the apparatuses are used (i.e. whether with a two-gas mixture or a three-gas mixture) is irrelevant to the question of infringement. ( Id. at 10.) Finally, Plaintiffs contend that the court should deny summary judgment pursuant to Federal Rule of Civil Procedure 56(d) because discovery is not yet complete. ( Id. at 11–12.)
For the reasons explained below, the court: (1) addresses the merits of SeQual's motion despite the tardy request for claim construction; (2) determines that the preambles in which the term “binary gas mixture” appears are limiting; (3) construes the term to mean “a gas mixture composed of two gases”; and (4) grants SeQual's motion for summary judgment of non-infringement.
To continue reading
Request your trial
-
Va. Innovation Scis., Inc. v. Samsung Elecs. Co.
...the Court has discretion to address it during consideration of a summary judgment motion. See Stern v. SeQual Technologies, Inc., 840 F.Supp.2d 1260, 1266 (W.D.Wash.2012)aff'd,493 Fed.Appx. 99 (Fed.Cir.2012); SanDisk Corp. v. Memorex Products, Inc., 415 F.3d 1278, 1292 (Fed.Cir.2005). In su......
-
Lehman v. Nelson
...to file the required affidavit, a deficiency that itself justifies denying the instant Motion. See Stern v. SeQual Technologies, Inc., 840 F.Supp. 2d 1260, 1275 (W.D. Wash. 2012). In its substance, Defendants' Motion fails to put forward any specified reasons that Defendants cannot present ......