EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc
3:14-cv-00132
E.D. Tenn.Nov 24, 2021Background
- EmeraChem sued Volkswagen entities for infringement of two patents: U.S. Patent Nos. 5,599,758 (the ’758 patent) and 7,951,346 (the ’346 patent); some other asserted patents were previously dismissed.
- The dispute before the Court is a Markman claim-construction proceeding; the Court held a tutorial and hearing and issued constructions for multiple disputed claim terms.
- The ’758 patent relates to regenerating a devitalized catalyst/absorber (incorporating the ’558 patent). EmeraChem asserts dependent claims 3 and 16 (from independent claims 1 and 13).
- The ’346 patent claims systems for reducing particulate matter; EmeraChem asserts claim 41 and dependents. The PTAB conducted IPRs on both patents and rendered decisions that factor into collateral-estoppel and disclaimer arguments.
- The parties disputed multiple claim terms: e.g., meaning of “devitalized/exhausted absorber,” scope of “platinum coating thereon,” meaning of “passing . . . over,” what it means “to remove said nitrogen oxides,” the phrase “intimately and entirely coated,” and whether the “particulate matter indicator” is a means-plus-function limitation.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Meaning of “devitalized” / “exhausted” absorber | Terms are synonymous; absorber may be saturated or partially saturated — regeneration can occur before full saturation | Must mean the absorber can no longer absorb any more NOx (i.e., fully exhausted) | Court: "devitalized/exhausted" = saturated or partially saturated with NOx such that removal substantially restores or substantially improves activity; full saturation not required. |
| “an alumina support with a platinum coating thereon” | Means platinum disposed on the alumina surfaces (not necessarily a continuous monolayer); expert evidence confirms low wt% loadings wouldn’t form a monolayer | Requires an alumina support entirely covered by at least a continuous monolayer of platinum (relied on PTAB construction) | Court: construes to mean platinum disposed on the alumina surfaces; continuous monolayer not required; PTAB estoppel not applied to bar new construction here. |
| “passing said stream of regenerating gas … over said devitalized absorber” | Ordinary meaning; contact with absorber suffices; no special technical meaning | Requires an elevational/altitudinal meaning (gas flows above/at a level higher than the absorber) | Court: plain and ordinary meaning; includes but does not require either (a) passing above/at a level higher than the absorber or (b) contacting the absorber. No further narrowing. |
| “to remove said nitrogen oxides from said devitalized absorber” | No construction needed; “remove” does not mean remove all NOx; the patent shows partial removal and conversion to N2 | Requires removal of all previously absorbed NOx and/or that NOx be emitted specifically as nitrogen oxides | Court: ordinary meaning; does not require removal of all NOx; does not limit mode/form of removal (specification shows conversion to elemental nitrogen is possible). |
| “to form a regenerated catalyst/absorber” | No construction necessary; does not require zero NOx remaining | Disagreed (requested construction) | Court: declined to adopt separate construction; tied to above “remove” ruling. |
| “said catalytic component being intimately and entirely coated with an absorber material” | Should mean absorber present in amount sufficient to form a monolayer (but could permit diffusion/direct contact) | PTAB construction (and defendants) requires coating consistent with figures: absorber actually coats catalyst (at least a monolayer), i.e., continuous coating | Court: adopts PTAB’s construction by collateral estoppel/ persuasive intrinsic evidence — construed to mean coated with at least a monolayer of absorber; rejects adding an express prohibition on any direct exposure language. |
| In the ’346 patent: meaning of “particulate matter” | Follows patent definition: "small particles of solid or liquid suspended in a gas," which includes primary and secondary (precursors) forms | Try to limit or distinguish from precursors in certain contexts | Court: construes to include primary particulate matter and secondary particulate matter (precursors) as the specification defines. |
| “particulate matter indicator … wherein the result is the amount that particulate matter … has been reduced” (’346) | Indicator is a plain term or, if construed, should allow numerical, relative, or predicate notifications | Defendant: the indicator must receive/determine and then display a discrete numerical or relative value | Court: finds the limitation is means-plus-function under 35 U.S.C. §112 ¶6; function = outputting a result to a user (the amount reduced); structure limited to the specification’s (generic) indicator disclosure; “amount” is a numerical or relative amount (e.g., gas-gauge style). |
Key Cases Cited
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (Sup. Ct.) (claim construction is a matter for the court)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claims given their ordinary meaning to a person of skill in the art; primacy of intrinsic evidence)
- Vitronics Corp. v. Conceptronic, 90 F.3d 1576 (Fed. Cir.) (specification is the single best guide to claim meaning)
- Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (Sup. Ct.) (definiteness standard — reasonable certainty)
- B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (Sup. Ct.) (issue preclusion may apply to administrative determinations)
- Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir.) (means-plus-function analysis and when §112 ¶6 applies)
- SanDisk Corp. v. Memorex Prods., 415 F.3d 1278 (Fed. Cir.) (claim construction should not exclude a preferred embodiment)