Undersea Breathing Sys., Inc. v. Nitrox Tech., Inc.
| Decision Date | 20 November 1997 |
| Docket Number | No. 97 C 2014.,97 C 2014. |
| Citation | 985 F.Supp. 752 |
| Parties | UNDERSEA BREATHING SYSTEMS, INC., Plaintiff, Counter-Defendant, v. NITROX TECHNOLOGIES, INC., Defendant, Counter-Plaintiff. |
| Court | U.S. District Court — Northern District of Illinois |
This patent case arises out of the issuance of a patent for an oxygen enriched air generation system designed principally for use by dive shops for filling scuba tanks. The Court conducted a bench trial from October 6-10, 1997, involving six in-court witnesses, two who testified by deposition, and numerous exhibits. The case involves two primary issues: 1) Was Plaintiff's patent infringed by Defendant? The answer is no. 2) Is Plaintiff's patent valid? The answer is yes. The following constitute the Court's findings of facts and conclusions of law pursuant to Rule 52(a) of the Federal Rules of Civil Procedure. To the extent certain findings may be deemed conclusions of law, they shall also be considered conclusions. Similarly, to the extent matters contained in the conclusions of law may be deemed findings of fact, they shall also be considered findings. See Miller v. Fenton, 474 U.S. 104, 113-14, 106 S.Ct. 445, 451-52, 88 L.Ed.2d 405 (1985).
1. Plaintiff, Undersea Breathing Systems, Inc. ("Plaintiff") manufactures and markets oxygen-enriched air ("nitrox") generation systems for the production of divers' breathing gas. Its corporate officers are William H. Delp, II ("Delp"), Richard Rutkowski ("Rutkowski") and Dr. J. Morgan Wells ("Wells").
2. Defendant, Nitrox Technologies, Inc. ("Defendant" or "NTI") also manufactures and markets nitrox generation systems for producing divers' breathing gas. Its corporate officers are Cynthia Olson and Robert Olson ("Olson").
3. This Court has jurisdiction over the parties and over the subject matter of this action pursuant to 28 U.S.C. §§ 1331 and 1338(a).
4. Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(c) and 1400(b).
5. United States Patent Number 5,611,845 ("the '845 patent") was issued on March 18, 1997, to Delp, as the inventor. (Px 1). Delp subsequently assigned the patent to Plaintiff. Delp filed the patent application for the system which led to the '845 patent on August 22, 1995. (Px 2).
6. The patent describes a particular type of nitrox generation system using a permeable membrane gas separation system for separating compressed air into a nitrogen gas component and a nitrox component. (Px 1).
7. The patent contains 33 claims. Claims 1 and 23 are independent claims with the remainder being dependent.
8. Plaintiff alleges that Defendant infringed independent claim 23 and dependent claims 24 and 29 of the '845 patent. Defendant denies the allegation and asserts that the '845 patent is invalid.
9. Claim 23 claims:
A system for generating [nitrox] comprising:
an air supply for supplying compressed air;
a permeable membrane gas separation system for separating a nitrogen gas component and [a nitrox] component from said compressed air;
means for detecting an oxygen concentration in said [nitrox] component;
means for selectively heating and cooling said compressed air as it passes between said air supply and said permeable membrane gas separation system; and (emphasis added)
means for selectively distributing said [nitrox] component for further use.
('845 patent, col. 9-10).
10. The principal issue with respect to Plaintiff's complaint for infringement is whether Defendant's system contains a means for selectively heating and cooling compressed air. The Court finds that Defendant's system does not contain a means for selectively heating and cooling the compressed air. In particular, the Court finds that Defendant's system lacks an equivalent structure for selectively cooling the compressed air. The Court's analysis of this issue is contained in the Conclusions of Law at Section VII.
11. Dependent claim 24 describes:
a compressor feed line supplying said [nitrox] component to a compressor inlet and
an outlet line interconnecting a compressor outlet to said compressed [nitrox] storage assembly.
('845 patent, col. 10, lines 6-11).
12. Dependent claim 29 states:
A system as defined in claim 24, wherein said means for detecting the oxygen concentration is interconnected with an outlet of said permeable membrane gas separation system to permit monitoring of the oxygen concentration of said oxygen enriched air component passing through said outlet.
('845 patent, col. 10, lines 35-41).
13. Delp attended college and took general engineering courses but did not receive a degree. He has had a continuing interest in diving since 1962, when he was certified as a diver. Delp has been involved in commercial diving and producing life support breathing gas mixtures for the diving industry since 1985. He is certified as a hyperbaric technician. Delp recognized that a system for generating nitrox using permeable membrane technology, which eliminates the need for a separate pure oxygen source, offered substantial advantages, such as increased safety and decreased cost and effort in producing nitrox.
14. Robert Olson has a bachelor's degree in oceanography. He has been a recreational diver since 1974. Olson has previously developed and patented systems using the nitrogen stream produced by permeable membranes for applications in the transportation industry, such as inerting containers used to ship grain and produce. (Dx 10 and 11). Olson assigned his patents to his then-employer, Prolong Systems, Inc., which produced and sold nitrogen generation systems for inerting purposes. In 1994, Olson began to work on a device to create nitrox for dive shops. He installed his first nitrox generating unit in July 1996. The NTI system takes filtered, compressed air through a bundle of hollow fibers that separates the oxygen from the nitrogen using selective permeation. (Dx 25).
15. When a diver's body is submerged under water, the liquid exerts pressure against the body in every direction. At sea level, the diver is subjected to normal atmospheric pressure, which can be quantified as 1 Atmosphere. The amount of pressure increases linearly as the diver submerges deeper below the water surface. For example, diving to a depth of 33 feet below sea level increases the pressure by 1 Atmosphere. Any diver, at any depth, must be in pressure balance with the forces at that depth. The body can only function normally when the pressure differences between the inside of the diver's body and forces acting outside is very small. (Px 29).
16. As pressure increases with depth, the diver's circulatory system is also compressed. If a diver surfaces too quickly, the rapid decompression can cause arterial gas embolisms, bubbles in the blood stream, to form. (Px 47, pp. 49-50, ¶¶ 9-14, U00437-38.) The bubbles of air in the blood vessels block some of the small terminal vessels, cutting off the blood supply to nerve endings. Known as decompression sickness or more popularly as the bends (and euphemistically by divers as "bubble trouble"), the consequent blockage throughout the circulatory system, can cause severe pain, temporary paralysis, permanent damage, or death.
17. Divers' breathing gas is composed of eight gases, which are normally found in varying quantities in the atmosphere. These gases are oxygen, nitrogen, helium, hydrogen, neon, carbon dioxide, carbon monoxide and water vapor. Oxygen is the most important. Normal ambient air contains approximately 21 percent oxygen, 78 percent nitrogen, and 1 percent trace gases. It is the oxygen that is actually used by the body. The other 79 percent of air serves to dilute and carry the oxygen. Pure (i.e., 100 percent) oxygen is often used for breathing in hospitals and in aircraft. However, a diver who breathes pure oxygen under pressure may experience oxygen poisoning. (Px 29). Because it imposes a significant decompression obligation, ambient air is not the "ideal" breathing mixture for diving. Decompression obligation refers to the necessity when surfacing from a dive to stop periodically and allow the diver's body to adjust to the new pressure exerted on the body to avoid the bends. Decompression obligation is dependent on the quantity of nitrogen absorbed by the body during the course of a dive. Both the rate of nitrogen absorption and the total amount of nitrogen which can be taken in by the body are determined by the nitrogen partial pressure in the breathing gas. (Px 2, Tab 47, p. 21). Although nitrox is any combination of nitrogen-oxygen, nitrox mixtures with greater than 21 percent oxygen can offer significant advantages to many types of diving. (Px 2, Tab 47, p. 21). For the purposes of this opinion, any reference to nitrox will indicate a nitrogen-oxygen mixture which contains more than 21 percent oxygen.
18. If both the toxic and decompression obligation reducing properties of oxygen are considered, an "ideal" diving gas mixture for any depth / time combination can be produced. Such a mixture would offer the maximum decompression advantage without the risk of oxygen toxicity. The advantages of such a mixture as compared to air are that it will either increase the allowable time on a successive dive or reduce the surface interval, the time a diver must spend at surface level between dives, or both. (Dx 36, pp....
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