59 F.4th 1328
Fed. Cir.2023Background
- SSI Technologies sued Dongguan Zhengyang Electronic Mechanical (DZEM) for infringement of U.S. Patent Nos. 8,733,153 (’153) and 9,535,038 (’038), both relating to ultrasonic sensors for diesel exhaust fluid (DEF) level/quality measurement.
- District court granted summary judgment (SJ) of non‑infringement for DZEM on both patents, dismissed DZEM’s invalidity counterclaims without prejudice, and granted SJ to SSI on DZEM’s tortious‑interference counterclaim.
- Key dispute re ’153: claim 1 requires the controller to determine contamination based on temperature, time‑of‑flight, and at least one of (a) measured volume out of range or (b) dilution detected while the measured volume decreases; the court construed the dilution alternative to require that the controller actually consider the measured volume.
- Key dispute re ’038: claim 9 requires a “filter” that permits liquid but substantially prohibits gas bubbles from entering the sensing area; district court construed “filter” narrowly as a porous structure with small apertures and found DZEM’s rubber cover non‑porous.
- Tort claim: SSI sent letters to companies (alleged DZEM customers) warning of SSI’s patent claims; district court held Noerr‑Pennington protected and rejected sham‑litigation; granted SJ for SSI.
- Federal Circuit: affirmed the ’153 non‑infringement and tort SJ; reversed the district court’s narrow construction of “filter,” vacated SJ as to the ’038 patent and vacated the dismissal of the ’038 invalidity counterclaim; remanded for further proceedings.
Issues
| Issue | Plaintiff's Argument (SSI) | Defendant's Argument (DZEM) | Held |
|---|---|---|---|
| Construction of ’153 dilution limitation ("...dilution ... while the measured volume ... decreases") | No requirement that controller actually rely on a measured volume; decrease in volume suffices | Amendment during prosecution incorporated specification’s error‑detection that depends on measured volume | Affirmed district court: claim requires that the contamination determination consider the measured volume |
| Infringement of ’153 | Accused sensors can measure volume and thus infringe | Accused sensors do not base contamination determinations on measured volume | Affirmed SJ of non‑infringement (no evidence DZEM used measured volume in determination) |
| Construction of “filter” in ’038 | “Filter” is a device with openings that blocks/separates matter (e.g., air bubbles); not limited to tiny apertures | “Filter” is a porous structure with openings sized to remove impurities larger than the openings (tiny apertures) | Reversed: adopt broader construction—device with openings that blocks/separates matter (such as air bubbles); vacate SJ on ’038 |
| Doctrine of equivalents / forfeiture | Preserved DOE argument in briefing and expert report; not forfeited | SSI forfeited DOE by inadequate presentation; alternatively no equivalence on the merits | Reversed forfeiture finding: DOE preserved; may be argued on remand |
| Tortious interference / Noerr‑Pennington; sham exception | Communications were protected petitioning activity; not objectively baseless | Communications not protected; sham‑litigation exception applies; foreign letters unprotected | Affirmed SJ for SSI: communications protected; DZEM failed to show objective baselessness |
| Dismissal of invalidity counterclaims | District should adjudicate invalidity despite non‑infringement | Dismissal without prejudice was proper where no risk of future prosecution | Affirmed dismissal as to ’153 (no abuse of discretion); vacated dismissal as to ’038 due to vacated SJ |
Key Cases Cited
- Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364 (Fed. Cir.) (claim construction should give meaning to all terms)
- Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313 (Fed. Cir.) (claims not normally limited to preferred embodiments)
- Globetrotter Software, Inc. v. Elan Comput. Grp., Inc., 362 F.3d 1367 (Fed. Cir.) (objective‑baselessness test for pre‑litigation communications re: patents)
- 800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d 1354 (Fed. Cir.) (expert opinions can show a suit is not objectively baseless)
- Dominant Semiconductors Sdn. Bhd. v. OSRAM GmbH, 524 F.3d 1254 (Fed. Cir.) (plaintiff must prove objective baselessness by clear and convincing evidence)
- Liquid Dynamics Corp. v. Vaughan Co., 355 F.3d 1361 (Fed. Cir.) (district court may dismiss invalidity counterclaims after finding non‑infringement)
- Wilton v. Seven Falls Co., 515 U.S. 277 (U.S.) (Declaratory Judgment Act permits courts to decline jurisdiction)
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (U.S.) (standing and declaratory judgment jurisdiction in patent cases)
- Fort James Corp. v. Solo Cup Co., 412 F.3d 1340 (Fed. Cir.) (non‑infringement does not automatically moot invalidity claims)
- Benitec Australia, Ltd. v. Nucleonics, Inc., 495 F.3d 1340 (Fed. Cir.) (jurisdiction continues once case‑or‑controversy established)