This is part of a series of articles discussing recent orders of interest issued in IP cases by the United States District Courts in the Southeast.

In Nazir Khan v. Artivion, Inc., No. 1:21-cv-2291-SCJ (N.D. Ga. August 4, 2023), Judge Jones granted Defendant Artivion's motion to dismiss in a patent infringement case on the basis of collateral estoppel.

Applying the law of the Eleventh Circuit, the court considered whether Defendant Artivion may assert defensive collateral estoppel to prevent Plaintiffs from relitigating any issue lost in a previous case in Utah. In that prior Utah case, Plaintiffs advanced similar infringement allegations relating to the same patent and same accused product, but against the subsequent owner of the accused product. The Utah court granted summary judgment of no infringement and entered judgment against Plaintiffs.

In the Georgia case, Defendant Artivion moved to dismiss Plaintiffs' patent infringement complaint on the basis that Plaintiffs were collaterally estopped from raising the same claims that were previously rejected in the Utah case. The court found that all four elements for collateral estoppel had been satisfied: (1) the issues decided in the Utah action are identical to those in the Georgia case; (2) those issues were actually litigated; (3) determination of those issues was essential to the court's judgment in the Utah case; and (4) the record in the Utah case shows that Plaintiffs had a full and fair opportunity to present their evidence on the issues. The court further rejected Plaintiffs' argument that the Utah court's decision was substantively incorrect because, for purposes of collateral estoppel, whether a prior decision was incorrect is not a proper basis to deny collateral estoppel.

In Rothschild Connected Devices Innovations, LLC v. The Coca-Cola Company, No. 1:16-CV-1241-TWT (N.D. Ga. August 11, 2023), Judge Thrash, Jr., granted Defendant Coca-Cola's motion for summary judgment in a patent infringement case as to noninfringement and denied summary judgment as to invalidity.

Plaintiff accused Defendant Coca-Cola's "Freestyle" beverage dispenser of infringing Plaintiff's patent titled "System and Method for Creating a Personalized Consumer Product." Coca-Cola's Freestyle beverage dispenser allows consumers to pick and dispense a beverage among more than 100 Coca-Cola brands, and its related mobile application.

Noninfringement

The court's decision on noninfringement hinged on two claim limitations: an "identifier of the beverage" and "communication module."

First, for "identifier of the beverage," the court found an equivalent in the accused Freestyle machine. It was undisputed that, within the Freestyle beverage dispenser, the Coca-Cola products were assigned a unique numerical beverage ID and that the Freestyle beverage dispenser transmitted the beverage ID to a server. The question, however, was whether there was also an identifier for a mixed beverage based on a user's customized recipe (e.g., "a combination of 33 percent Coca-Cola, 33 percent Sprite, and 34 percent Fanta"). The court found that while the Freestyle beverage dispenser did not assign a single ID to customized beverages, it identified the mixed beverage by multiple beverage IDs and ratios. As a result, the court found that multiple IDs, when used in combination with ratios to designate a single mixed beverage, was the equivalent of an "identifier of the beverage."

Second, for "communication module," the court found the accused Freestyle beverage dispenser did not infringe because it did not perform the sequential steps of the claimed "communication module." The main dispute was whether apparatus claims could "consist of steps in a particular order." The court found that sequential order can be required by a system/apparatus claim, that the claim at issue recited "a clear sequential process from the user interface module to the communication module to the controller," and that "[t]o effectuate this process, the steps of the communication module limitation must also be performed in the order written." As a result, the court found the accused Freestyle beverage dispenser did not infringe because it did not transmit the information in the same sequential steps as the claim.

Invalidity

Coca-Cola moved for summary judgment of invalidity on two grounds: lack of written description under 35 U.S.C. § 112(a) and anticipation by prior art under 35 U.S.C. § 102(a)(1).

First, Coca-Cola moved for summary judgment that the term "identifier of the beverage" added by an examiner's amendment lacked written description support in the specification. The specification disclosed repeatedly an identifier of the product, but not an identifier of the beverage. Because the parties disputed whether there is a distinction between "product" and "beverage," the court found that there remained a genuine issue of material fact.

Second, related to anticipation, the court found that Coca-Cola had not met the heavy burden for establishing anticipation on summary judgment for each of the three prior art references:

  1. Prior Art Freestyle machine: The court found that if the jury were to find for Rothschild on the written description issue, then the earlier priority date would stand, and Coca-Cola's earlier-released Freestyle machine would not be prior art.
  2. Prior Art Gutwein Patent: The court found that Coca-Cola's invalidity expert report did not detail how each claim element is disclosed in the prior art. The court held that it cannot and will not fill in the analytical gaps.
  3. Prior Art Boland patent: The court found that Coca-Cola failed to provide sufficient new evidence to overcome the court's prior denial of summary judgment on the same reference.

In The Trustees of Purdue University v. Wolfspeed, Inc., No. 1:21-cv-00840 (M.D.N.C. August 7, 2023), Judge Osteen, Jr., found in a patent infringement case that the disputed terms in U.S. Patent No. 7,498,633 ("'633 patent") needed no construction and ordered supplemental briefing regarding indefiniteness.

The '633 patent is directed to double-implanted metal oxide silicon field effect transistors (MOSFETS). A major design consideration in the claimed MOSFETS is the width of a junction field effect transistor (JFET) region, which controls the current flow from source to drain. During claim construction, the parties raised three disputes:

  1. the meaning of numerical terms "first" and "second" in "a first source electrode formed over the first source region" and "a second source electrode formed over the second source region";
  2. whether the term "defined between" was indefinite in "a JFET region defined between the first source region and the second source region"; and
  3. whether the term "about" was indefinite in "the JFET region having a width less than about three micrometers" and "the JFET region having a width of about one micrometer."

First dispute: "a first source electrode formed over the first source region" / "a second source electrode formed over the second source region"

The issue here was whether "numerical terms like 'first' or 'second' may cover a single element serving dual roles in the claim" or "whether use of language like 'first' and 'second' requires two distinct" elements. Defendant Wolfspeed argued that the terms "first" and "second" required two unique source electrodes, contending that the disputed claims were amended to distinguish over prior art that used a unitary source electrode. The court, however, rejected that argument for two reasons. First, the court found the specification included an embodiment with a unitary source electrode. Second, the court found that the amendment alone was not a clear and unmistakable disavowal because it was made in response to a combination of three different prior art references, not to the single prior art.

Second dispute: "a JFET region defined between the first source region and the second source region"

Defendant Wolfspeed argued the term "defined between" was indefinite because an alleged inconsistency between the plain language of the claim and the specification created "a zone of uncertainty" as to the boundaries of the JFET region. The court rejected this argument, finding that the claim term, while arguably less precise than the specification, was not inconsistent with the specification. Thus, despite the lack of precision, a person skilled in the art was still informed with reasonable certainty of the scope of the claim.

Third dispute: "the JFET region having a width less than about three micrometers" and "the JFET region having a width about one micrometer."

Defendant Wolfspeed argued that the use of the term "about" did not provide objective boundaries for the upper and lower bounds of the JFET region's width. The court rejected this argument for three reasons. First, the court found the term "about" is a term of degree that is sufficiently definite when the '633 patent disclosed the function of the JFET width was to optimize between a lower on-resistance and desired blocking voltage. Second, the court found that the lack of an upper bound did not render the term indefinite because the term explicitly provided an upper boundary and the use of "about" accounted for manufacturing tolerances or variations. Third, the court found that the lack of lower bound also did not render the term indefinite because "a person skilled in the relevant art would know [how] to create an operable MOSFET."

Although the court found none of the terms indefinite, the court was concerned that the '633 patent lacked guidance on where the JFET region's width is measured. Because the variation of measurement of the JFET region could affect "which MOSFET devices fall within the scope of the '633 patent and which do not," the court ordered supplemental briefing on this discrete issue.

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