“Because the construction adopted by the district court may cause further controversy regarding the meaning of the word “porosity,” a term that does not appear in the ‘038 patent, we have decided to reverse SSI’s interpretation of the term “filter.” Adopt – CAFC
The US Court of Appeals for the Federal Circuit (CAFC) on Monday issued a precedent opinion overturning and partially reversing an earlier lower court decision in a patent litigation involving fuel tank sensors.
In 2020, SSI Technologies filed a lawsuit against Dongguan Zhengyang Electronic Machinery Co., Ltd. (DZEM), alleging infringement of two patents covering fuel tank sensor technology. SSI accused DZEM of manufacturing a system to reduce diesel truck engine emissions that infringes U.S. Patent Nos. 8,733,153 and 9,535,038.
In September 2021, the Wisconsin District Court dismissed SSI’s assertion of patent infringement and DZEM’s counterclaim of invalidity.
With respect to the ‘038 patent, the Federal Circuit reversed the district court’s summary judgment and dismissed the invalidity counterclaim. The Federal Circuit reached that decision by overturning the district court’s interpretation of the term “filter” in relation to patents.
However, the Circuit Court affirmed the lower court’s decision dismissing the patent infringement claim and DZEM’s invalidity counterclaim regarding the ‘153 patent. In addition, the CAFC upheld the lower court’s decision in which he granted SSI summary judgment on DZEM’s tortious interference claim.
CAFC: District Court Misinterpreted ‘Filter’
According to the CAFC, the district court’s ruling on the ‘038 patent hinged on its interpretation of the term “filter.” The district court sided with his DZEM and adopted his DZEM interpretation of “filter,” which also included the term “porous.”
But the CAFC disagreed with the district court, instead adopting SSI’s definition of “filter.” The Court of Appeals found that the district court’s analysis “understood that the term ‘porosity’ required that the openings of the filter be less than an unspecified maximum size.” As explained, the specification of the ‘038 patent did not include such a requirement.
“Because the construction adopted by the district court may cause further controversy as to the meaning of the word ‘porosity’, a term that does not appear in the ‘038 patent, we consider SSI’s decision to use the term ‘filter’. I accept the interpretation,” he said. CAFC.
‘153 patent
However, with respect to the ‘153 patent, the Federal Circuit agreed with the district court’s claim construction and found no genuine dispute of material fact for infringement of claim 1. Patent.
DZEM Counterclaim
DZEM also argued that the district court was erroneous in dismissing its counterclaim of invalidity without prejudice and accused SSI of wrongful interference. The Wisconsin District Court did not rule in favor of DZEM on either counterclaim.
The district court ruled that it was not necessary to rule on invalidity of the patents because DZEM could not be prosecuted for any of the patents at issue in the future.
The CAFC agreed with the lower court on this point, but because the judgment on the ‘038 patent was reversed, the court also reversed the dismissal of the invalidity counterclaim on that patent.
DZEM’s counterclaim against tortious interference stems from letters sent by SSI to several domestic and foreign companies notifying them of their lawsuits against DZEM. DZEM claimed that some companies were her DZEM customers.
The district court Noah Pennington Doctrine, DZEM found that SSI’s communications with these companies were protected because SSI received patent protection in those countries.
However, neither the district court nor the CAFC found evidence that SSI’s claims were “objectively baseless.”
“DZEM was required to establish with clear and convincing evidence that SSI’s infringement action was objectively baseless, but it cannot provide evidence of objective baselessness. It was,” wrote the circuit court judge.
Ultimately, the court reversed the district court’s construction of the “filter” and vacated the grant of summary judgment on the ‘038 patent. Confirmed the grant of summary judgment on the ‘153 patent and the tortious interference counterclaim. Withdrew the dismissal of the invalidity counterclaim regarding the ‘038 patent and confirmed the dismissal of the invalidity counterclaim regarding the ‘153 patent.
