Packless Metal Hose, Inc. v. Extek Energy Equipment (ZHEJIANG) Co Ltd et al, No. 2:2009cv00265 - Document 135 (E.D. Tex. 2013)
Court Description: MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 2/22/2013. (ch, )
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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION PACKLESS METAL HOSE, INC., Plaintiff, v. EXTEK ENERGY EQUIPMENT (ZHEJIANG) CO., LTD., Defendant. § § § § § § § § § § CIVIL ACTION NO. 2:09-CV-265-JRG MEMORANDUM OPINION AND ORDER Before the Court is Defendant Extek Energy Equipment (ZHEJIANG) Co. Ltd. s ( Extek ) Motion for Summary Judgment, filed November 9, 2012 (Dkt. No. 81). Extek moves for summary judgment of non-infringement of United States Patents Nos. 5,409,057 ( the 057 Patent ) and 5,551,504 ( the 504 Patent ). The Court having considered the same finds that summary judgment of non-infringement should be GRANTED for the reasons set forth below. I. Background and the Patents-in-Suit Plaintiff Packless Metal Hose, Inc. ( Packless ) is the owner of the 057 Patent and the 504 Patent. The 504 Patent is a divisional of the 057 Patent. For ease of reference, the Court will cite to the specification of the 057 Patent. The patents-in-suit concern heat exchangers constructed with helically convoluted heat exchange elements. In the Background of the Invention, the patentee observes that finned heat exchange elements are well known in the art for use in radiators, heat exchangers, refrigerators, and condensers. 057 Patent, 1:14-15. For example, in an automobile radiator, the heat from the engine coolant passes from the coolant to the interior surface of the radiator and then onto the 1 metal fins that extend from the body of the radiator. A fan blows air into the fins and away from the radiator. Helically convoluted heat exchangers operate somewhat differently from a finned heat exchanger. By creating spiral-shaped channels in the walls of a metal tube, the surface area of the interior wall is increased, and the fluid passing through the tube is turbulated so that more of the fluid passing through the tube comes into contact with the wall. A tube made from metal like copper easily conducts heat through the metal from the interior wall of the tube to the exterior. By creating spiral channels in the tube, the heat spreads away more evenly and efficiently from the fluid to the wall of the tube than it would through a tube that is not helically convoluted. Methods for making helically convoluted exchangers are described in U.S. Patent Nos. 4,377,083 and 4,514,997. 057 Patent 1:15-22. The patents-in-suit claim improvements over the prior art. As described in the Summary of the Invention: An embodiment of the invention relates to a multi-passage heat exchange element which includes a central first fluid passage for passage of a first fluid of a heat exchanger, a plurality of substantially helically convoluted second fluid passages for a second fluid of a heat exchanger, the second fluid passages substantially helically surrounding at least a portion of the first fluid passage, and a plurality of substantially helically convoluted first fluid passages substantially surrounding at least a portion of the second fluid passages. The specification explains the manufacturing process for an embodiment of the improved heat exchanger element. According to the specification, the process begins by tapering the ends of a metal tube with a tapering die. The tube, with its tapered ends, is depicted in Figure 3: 2 The tapered tube is then passed into a tube corru T t p ugating die a shown in F as Figures 4-5. The die teeth are arrange so that wh the tapered tube is p ed hen passed into t die and the die is ro the otated e r be cally convolu uted heat ex xchange elem ment depict in ted about the tube, the resulting tub is a helic Figure 6, a cross-sect , tion of which is shown in Figure 7: h 3 The specifica T ation explains that this process fa acilitates the production of channels 88 e n which lat become passages 5. 057 Patent 21-40. A ter p t, Although the corrugated t tube 82 show in wn Figure 7 may be used as a heat exchange ele e ement, the sp pecification explains tha preferably the at, y, ed s ough a reduc cing die as sh hown in Figu 8 and 9 Essentially, the ures 9. corrugate tube 82 is passed thro reducing die compr resses the tu to redu its diam ube uce meter. By d doing so, th channels and he s corrugati ions depicte in Figure 7 are form into p ed e med passages. The resulta multi-passage ant element is shown in FIGS. 10-11. 057 Pate at 3:50-5 i F ent, 51. Figures 10 an 11 show a side view and cross-sec nd a ction of an e example of th improved heat he d e exchange element: 4 The preferred embodimen of the hea exchange element sho T d nt at own in Figs. 10 and 11 has a central passage 3 th p hrough whic a first flu may flo surround by heli ch uid ow, ded ically convo oluted second fl luid passage 5, through which a sec es h cond fluid m flow. Th fluid from the central first may he m fluid pas ssage may be directed in the helic nto cally convol luted first flu passages 7 that surr uid s round the secon fluid pas nd ssages. The arrangemen of the hel nt lically convo oluted passa improve the age es efficiency of the he exchanger, and, as the results of the exp y eat periment cited in the p patent demonstr rate, this con nfiguration also allows the elements to be const a t s tructed with a smaller sq quare footage of physical heat transfer area. 057 Patent at 5:4 o h P 44-6:27. II. Legal Standa L ards Summary jud dgment shou be grant if the m uld ted movant sho ows that there is no gen nuine dispute as to any material fact and the mo a m ovant is ent titled to jud dgment as a matter of law. Fed. R. Civ. P. 56(a) By its ve terms, th standard p C ). ery his provides tha the mere e at existence of some alleged factual dispu between the parties will not d f ute n s defeat an ot therwise pro operly supp ported motion for summary judgment; the require f y ement is tha there be n genuine issue of ma at no aterial fact. Anderson v. Liberty Lob A bby, Inc., 47 U.S. 242 247-48 (1 77 2, 1986). The substantive law e e identifies the materia facts, and disputes ov facts tha are irrelev s al d ver at vant or unne ecessary wil not ll 5 defeat a motion for summary judgment. Id. at 248. A dispute about a material fact is genuine when the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Id. In considering motions for summary judgment, the Court must draw all reasonable inferences in favor of the non-moving party. Id. at 255; Delta & Pine Land Co. v. Nationwide Agribusiness Ins. Co., 530 F.3d 395, 398 (5th Cir. 2008). III. Analysis As an initial matter, the Court considers whether Extek s motion would resolve all patent issues. Extek contends that all of the asserted independent claims of the patents-in-suit require the following three elements: a central first fluid passage for passage of a first fluid of a heat exchanger; a plurality of substantially helically convoluted second fluid passages for passage of a second fluid of a heat exchanger, the second fluid passages substantially surrounding at least a portion of the central passage; a plurality of substantially helically convoluted first fluid passages for passage of the first fluid of a heat exchanger, the first fluid passages substantially surrounding at least a portion of the second fluid passages. Thus, Extek contends, a grant of summary judgment of non-infringement, based on a finding that the accused devices do not meet either the substantially helically convoluted second fluid passages or substantially helically convoluted first fluid passages elements, would dispose of the case. Packless argues that Extek s motion will not resolve all patent issues because asserted method claim 32, which is dependent on claim 22, does not require any of the above three elements. Claims 22 and 32 of the 057 Patent read as follows: 22. A heat exchange element made according to the process of: passing a tube through a die which is adapted to produce substantially helical corrugations in the tube, a cross section of a corrugation comprising a head portion and a neck portion, the neck portion being thinner than the head portion; and 6 passing the corrugated tube through a reduction die which is adapted to bend the corrugations to form a plurality of helically convoluted passages substantially surrounding at least a portion of a central passage in the tube. 32. The element of claim 22, further comprising an outer second fluid passage, the outer second fluid passage substantially surrounding at least a portion of the first fluid passage 057 Patent (emphases added). Extek replies that claims 22 and 32, like the three elements cited above, ultimately require a central passage, first fluid passages, and second fluid passages. The Court agrees. As underlined above, claims 22 and 32, as well as the three elements Extek identifies, require a central passage, first fluid passages, and second fluid passages. Packless does not dispute such requirement in its sur-reply. Accordingly, a grant of summary judgment of non-infringement finding that the accused products do not meet either the substantially helically convoluted second fluid passages or substantially helically convoluted first fluid passages elements, as properly construed, would dispose of all infringement claims. The Court next turns to whether there are any genuine issues of material facts that would warrant a trial on Packless infringement claims, either literally or under the doctrine of equivalents, regarding the 057 Patent and the 504 Patent. a. Literal Infringement Determining whether a product or method literally infringes a patent is a two-step process. ActiveVideo Networks, Inc. v. Verizon Commc ns, Inc., 694 F.3d 1312, 1319 (Fed. Cir. 2012). First, the Court must determine the proper construction of the asserted claims, which is a matter of law. Id. Second, the finder of fact must determine whether the asserted claim, as properly construed, reads on the product or method. Id. In other words, a patentee must supply sufficient evidence to prove that the accused product or process contains . . . every limitation of the properly construed claim. Seal-Flex, Inc. v. Athletic Track and Court Const., 172 F.3d 836, 842 (Fed. Cir. 1999). 7 The Court ha issued its construction of the disp T as n puted claim terms. (Se Dkt. No. 101.) m ee The parti proposed constructio of the te ies ons erms substa antially helic cally convolu uted second fluid passages and substantially hel lically convo oluted first f fluid passag ges were gr reatly disput at ted the claim construction hearing. The primary dispute was the de m efinition of a passage and whether the first an second fluid passag must be distinct f nd f ges e from the c central first fluid passages. (Id. at 9.) The Court concluded th the pas hat ssages are di istinct from one another and construed the term substantially helically convoluted se d y econd fluid passages to mean mu o ultiple elongated passages, distinct from the central first fluid p d m l passage and the first flu passages that d uid s, are subst tantially hel lically convo oluted. (Id at 11.) S d. Similarly, th Court co he onstrued the term substant tially helically convolut first flui passages to mean m ted id multiple elo ongated pass sages, distinct from the ce f entral first fluid passage the secon fluid pas f nd ssages, that are substan ntially helically convoluted. (Id.) . Extek contends that the asserted inde E a ependent clai as prope construe do not rea on ims erly ed ad the accus products The claim require th sed s. ms hree distinct passages: a central first fluid passa t age, a first fluid passage, an a second fluid passag Extek ar d nd ge. rgues that th accused products have two he e passages, not three. In support, Extek presen a cross-se E nts ection view of the accused heat exch hange element: 8 In other words, Exte argues that the accus products do not hav either firs or second fluid ek sed s ve st passages that are dist tinct from a central first fluid passag Extek fu ge. urther argues that the acc s cused e substantially surrounding a portion o other pas y g of ssages. products do not have passages s In response, Packless co n ontends that some of th accused products ar not circul in he re lar cross sec ction as dep picted in Extek s cross-s section draw wing. (Dkt. No. 87 at 9 Instead, some 9.) products are a some ewhat crushe and compacted oval s hape : ed ng less, the cru ushed and c ompacted o oval shape is a result o the of (Id. at 6.) Accordin to Packl turing proce ess. When the outer pip along wit the inner helically co t pe th onvoluted pi is ipe manufact bent into the spiraled shape of th heat exch o d he hanger, the i inner helical convolut pipe bec lly ted comes crushed and compact a ted. (Id. at 8-9.) It is thi process th creates a significantly narrowed neck 8 is hat d ay portion for the first fluid passag which be f ge, ecomes a wa to contai fluid with the first fluid in hin passage, and result in the firs fluid passa ts st ages having necks and h heads in a b boot, shoe, a and/or teardrop shape. (Id at 9-10.) In support, Packless pro d. P ovides a pict ture of each end of one o the of accused products: p 9 (Id. at 9.) Packless argues that the shape an physical characteristi of the fir fluid pass ) a t nd ics rst sage (i.e. the narrowed neck portions that result in the first flu passages having neck and heads in a n n uid s ks boot, sho and/or te oe, eardrop shap make th first fluid passages pe) he d distinct from the shape and m e physical characteristi of the ce ics entral fluid passage. (Id at 10.) Sp p d. pecifically, t shape f the forces the fluid within thes [first flui passages to be disti d se id] s inct in how they travel within the heat w l e exchange as the flu er uids will ha differen pressure l osses, differ ave nt rent frictiona rates, diff al ferent flow patt terns, and dif fferent heat exchange ch haracteristics (Id. at 10 s. 0-11.) The Court fi notes th Packless presents no opposition to Extek s contention that T irst hat o n s n circular shaped tubes do not read on the asse s s d erted claims. Since Pack kless has fail to presen any led nt evidence on whethe the circul shaped accused pro er lar oducts meet the substantially heli t ically 10 convoluted second fluid passages or substantially helically convoluted first fluid passages elements, the Court finds that Extek s motion for summary judgment of non-infringement should be GRANTED with respect to any circular shaped accused products. Packless argues only that the compacted oval shaped tubes read on the asserted claims because different pressures losses, different frictional rates, different flow patterns, and different heat exchange characteristics or certain passages constitute distinct passages. Such an argument flatly contradicts this Court s claim construction ruling and is similar to arguments considered and rejected by this Court during the claim construction process. As this Court explained in its claim construction ruling: In every discussion or illustration of passages in the patent, the passage is shown as a distinct, or enclosed, path through which fluid may flow. The crosssectional depictions of the heat exchange element through the manufacturing process shows that a channel opens into a central portion of the tubing. The passages, however, are surrounded by walls on their perimeters. (Dkt. No. 101 at 10.) A channel opens into a central portion of the tubing. A passage, on the other hand, is a distinct, or enclosed, path; it is surrounded by walls on all their perimeters. It is thus not the different pressures losses, different frictional rates, different flow patterns, and different heat exchange characteristics that create distinct passages, but the presence of an enclosure or wall surrounding all of the passages perimeters. Packless makes no argument and it fails to present any evidence that such an enclosure or wall exists within the accused products. In point of fact, Packless repeatedly reasserts its claim construction argument that this Court has rejected that the patent does not require such a wall or enclosure. (See Dkt. No. 87 at 8-11.) In support, Packless asserts that the patents-in-suit specifically contemplate that the first fluid in the central first fluid passage can leak to the first fluid passages during use, and vice versa. (Id. at 11.) While this Court s claim construction ruling acknowledged that some fluid leakage between the passages may occur as a result of pressure differentials and the hydraulic 11 efficiency of the pass y sages, such potential le h eakage canno occur as th result of t absence of an ot he the enclosure or wall. (D No. 101 at 10-11 (c e Dkt. concluding t that, despite some fluid leakage bet e tween the passa ages, the sp pecification nevertheless supports De n efendant s a argument tha the passag be at ges distinct from one an f nother as described abo d ove).) Pack kless simply cannot def y feat an other rwise proper su ummary judg gment by at ttempting to recast its pr claim co rior onstruction arguments w which this Cour has already rejected. rt y Packless arg gument that necks and heads in a boot, shoe, and/or tear rdrop shape form distinct passages also contradicts the specific p o s cation of the 057 Paten In disting e nt. guishing cha annels from pas ssages, the specification states that the larger head portio 84 and the thinner neck s n r ons portions 86 in the corrugations 80 facilitat productio of chann c s te on nels 88, whi later become ich passages 5 in the fini ished elemen 057 Pa nt. atent at 3:28-32. er ions and thinner neck p portions facil litate channe not pass els, sages. In other words, large head porti For this reason, the Court found that Figure 7 (containing channels, w r C t g which are no distinct from ot the centr first fluid passage) is not an em ral d mbodiment o the invent of tion, wherea Figure 11 is a as 1 preferred embodimen (See Dk No. 101 at 10.) By t same rea d nt. kt. a the asoning, Pac ckless argum ments 12 notwithstanding, having necks and heads in a boot, shoe, and/or teardrop shape i.e. larger head portions and thinner neck portions will form channels, but will not form passages. This is the undisputed reality that confronts this Court by way of Extek s motion for summary judgment. For the reasons cited above, the Court finds that there is not, and Packless has failed to present, any evidence from which a reasonable jury could find that the accused products meet the substantially helically convoluted second fluid passages or substantially helically convoluted first fluid passages elements as properly construed. Accordingly, Extek s motion for summary judgment of non-infringement should be GRANTED. b. Doctrine of Equivalents To find infringement under the doctrine of equivalents, any differences between the claimed invention and the accused product must be insubstantial. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950). One way of proving infringement under the doctrine of equivalents is to show, for each claim limitation, that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product. Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009). Application of the doctrine of equivalents is the exception, however, not the rule, for if the public comes to believe (or fear) that the language of patent claims can never be relied on, and that the doctrine of equivalents is simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims, then claims will cease to serve their intended purpose. Wallace London & Clemco Prods. v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991). To support a finding of infringement under the doctrine of equivalents, a patentee must provide particularized testimony and explanatory argument linking the evidence of equivalence to the 13 three legal elements of function, way, and result. Tex. Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1566-67 (Fed. Cir. 1996). The Court finds that the doctrine of equivalents should not apply here, as Packless proposes, because it would vitiate the claim elements requiring substantially helically convoluted second fluid passages or substantially helically convoluted first fluid passages. See, e.g., Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349 (Fed. Cir. 2012) ( [C]ourts properly refuse to apply the doctrine of equivalents where the accused device contain[s] the antithesis of the claimed structure . . . [because such application] would vitiate a claim element. ) (quoting Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n.8 (1997); Planet Bingo, LLC v. Gametech Int l, Inc., 472 F.3d 1338, 1345 (Fed. Cir. 2006)). Packless only particularized testimony and linking argument supporting infringement under the doctrine of equivalents is summarized in its expert s declaration: The characteristics of the passages with the significantly bent necks (e.g., the shapes, leaking between the passages, and different flow parameters, pressure losses, flow times, flow rates, frictional rates, flow patterns, and heat exchange rates) make the first fluid passage substantially equivalent to the first fluid passage set forth in the asserted patents. Such difference is insubstantial. The significantly bent necks in the accused products perform substantially the same function in substantially the same way to obtain the same result as the first fluid passage in the asserted patents. (Dkt. No. 87 Ex. 2 at ¶ 15.) Packless, in essence, repeats its arguments with respect to literal infringement that the unique shapes in the accused products form distinct passages. According to the specification and as discussed above, however, such shapes facilitate channels and not passages. See supra at 12-13 (citing 057 Patent at 3:28-32). To therefore argue that such shapes are equivalent to the passages of the claimed elements would necessarily equate passages with channels. 14 Such equivalence is improper under the doctrine of equivalents because the differences between channels and passages are not insubstantial. The specification and this Court s claim construction ruling draws a marked difference between passages and channels. See supra at 1213 (stating that Figure 7 is not an embodiment of the invention because it contains channels and not passages such as in Figure 11). Thus, the proposed application of the doctrine of equivalents claiming infringement under the doctrine of equivalents for accused devices comprised of channels, but where the claim calls for passages would vitiate the claim elements requiring substantially helically convoluted second fluid passages or substantially helically convoluted first fluid passages. See, e.g., Planet Bingo, 472 F.3d at 1345 (refusing to apply the doctrine where the proposed application would change before to after, which was a marked difference ); Asyst Techs., Inc. v. Emtrak, Inc., 402 F.3d 1188 (Fed. Cir. 2005) (refusing to apply the doctrine where the proposed application would change mounted to unmounted ); Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091 (Fed. Cir. 2000) (refusing to apply the doctrine where the proposed application would change majority to minority ). Accordingly, the Court finds that there is insufficient evidence for a jury to conclude that the asserted equivalence represents an insubstantial difference from the claimed elements. Extek s motion for summary judgment of non-infringement under the doctrine of equivalents should be GRANTED. IV. Conclusion For the reasons stated herein, the Court finds that Extek s motion for summary judgment of non-infringement of the 057 and 504 Patents should be and is hereby GRANTED in all aspects. 15 SIGNED this 19th day of December, 2011. So ORDERED and SIGNED this 22nd day of February, 2013. ____________________________________ RODNEY GILSTRAP UNITED STATES DISTRICT JUDGE 16
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