Exergen Corporation v. KAZ USA, Inc.

Filing 251

Judge Richard G. Stearns: ORDER entered granting 141 Motion for Summary Judgment; denying 143 Motion for Summary Judgment. "For the foregoing reasons, Kaz's motion for summary judgment of invalidity because of obviousness is DENIED. Kaz's motion for summary judgment of no willful infringement is ALLOWED." (RGS, int2)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
CIVIL ACTION NO. 13-10628
EXERGEN CORPORATION
v.
KAZ USA, INC.
MEMORANDUM AND ORDER ON KAZ’S MOTIONS
FOR SUMMARY JUDGMENT OF OBVIOUSNESS
AND NO WILLFUL INFRINGEMENT
August 20, 2015
STEARNS, D.J.
Plaintiff Exergen Corporation accuses defendant Kaz USA, Inc., of
infringing 17 claims of U.S. Patent Nos. 6,292,685 (the ’685 patent) and
7,787,938 (the ’938 patent). As previously described, the ’685 and ’938
patents are both entitled “Temporal Artery Temperature Detector.” The
patents disclose methods and apparatuses for measuring human body
temperature by detecting the temperature at the forehead over the
temporal artery and computing internal body temperature using an
arterial heat balance approach. 1 Kaz contends that the asserted claims are

1

Of the asserted claims, claim 14 of the ’685 patent is representative:

14.
A method of detecting human body temperature
comprising:

invalid because they are obvious over prior art. Kaz also moves for a
summary determination that it is not liable for willful infringement of the
asserted claims. 2
Obviousness
Nonobviousness is a requirement of patentability. 35 U.S.C. § 103.
A party seeking to invalidate a patent on the basis of obviousness
must demonstrate by clear and convincing evidence that a skilled
artisan would have been motivated to combine the teachings of
the prior art references to achieve the claimed invention, and that
the skilled artisan would have had a reasonable expectation of
success in doing so.
Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed.
Cir. 2012) (internal quotation marks and citation omitted). Whether the
claims of a patent are obvious is ultimately a question of law, the

detecting temperature at a forehead through a lateral
scan across the temporal artery; and
computing an internal body temperature of the body as a
function of ambient temperature and sensed surface
temperature.
The court has previously issued memoranda and orders on the
parties’ cross-motions for summary judgment on Kaz’s license defense, and
on Exergen’s motion for summary judgment of no inequitable conduct. Kaz’s
motion for summary judgment of non-infringement and a related motion to
strike are pending awaiting final briefing.
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determination of which is based on underlying findings of fact. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007).
An analysis of obviousness involves multiple inquiries: (1) the scope
and content of the prior art; (2) the differences between the prior art and the
claims at issue; (3) the level of ordinary skill in the art at the time the
invention was made; and (4) applicable relevant secondary considerations of
nonobviousness, such as commercial success, long felt but unsolved need,
and failures of others to address that need. See Graham v. John Deere Co.
of Kansas City, 383 U.S. 1, 17-18 (1966). “What the prior art teaches, whether
it teaches away from the claimed invention, and whether it motivates a
combination of teachings from different references are questions of fact.” In
re Fulton, 391 F.3d 1195, 1199-1200 (Fed. Cir. 2004).
While the Supreme Court made clear that a mechanical
application of the teaching-suggestion-motivation test, requiring
an explicit teaching in the prior art, is inappropriate, [w]e must
still be careful not to allow hindsight reconstruction of references
to reach the claimed invention without any explanation as to how
or why the references would be combined to produce the claimed
invention.
Kinetic Concepts, 688 F.3d at 1368 (internal quotation marks and citation
omitted).

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Kaz’s pitch for obviousness relies primarily on Exergen’s U.S. Patent
No. 5,012,813 (the ’813 patent). 3 The ’813 patent is entitled “Radiation
Detector Having Improved Accuracy” and lists Dr. Francesco Pompei, the
inventor of the patents-in-suit, as a co-inventor. The ’813 patent describes
“a tympanic temperature measurement device which would provide accuracy
to within one-tenth degree over a wide range of ambient temperatures.” ’813
patent, col. 1, ll. 36-39.
When used to measure a biological temperature, the radiation
detector is further improved by providing an indication of an
internal temperature within biological tissue. The electronic
Kaz contends that the asserted claims are obvious over the ’813 patent
in combination with any of U.S. Patent No. 3,531,642 (the ’642 patent), U.S.
Patent No. 3,526,135 (the ’135 patent), or Exergen’s Dermatemp device. The
’642 patent is entitled “Thermographic Scanner and Recorder” and describes
“an improved thermographic scanner and recorder . . . [that] permits
scanning across a portion of a patient’s body, for example a forehead, and is
provided with an improved means for recording in graph form the scan,
calibrating for particular ranges so that the full width of the recording paper
can measure the particular range of temperature or scanning without
recording, or moving paper without recording.” ’642 patent, col. 1, ll. 13-22.
The ’135 patent is entitled “Temperature Detecting System,” discloses “[a]
radiation thermometer for detecting changes in temperature of localized
body regions as an indication of vasomotor activity in response to stimuli,”
’135 patent, col. 1, ll. 11-16, and notes that the region over the temporal artery
is particular suitable for measurement “for its accessibility to measurement
and the response [(constriction or dilation)] which it displays. Id. col. 2, lls.
62-67. As previously described the court’s memorandum and order on
Exergen’s motion for summary judgment of no inequitable conduct,
Dermatemp is series of commercial infrared thermographic skin
temperature scanners manufactured by Exergen. The operating manual
suggests scanning the skin temperature at the forehead in clinical
applications, such as shock detection.
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3

circuit determines the internal temperature by adjusting a
measured temperature of surface tissue for ambient
temperature. In particular, the biological surface tissue may be
tympanic membrane or the ear canal adjacent to the membrane,
and the display may provide an indication of core temperature.
Id. col. 2, ll. 46-54. The ’813 patent discloses the equations for computing a
person’s internal or core temperature as correlative functions of the
measured ear temperature and the ambient temperature. See id., col. 10, l.
63-col. 11, l. 15.
Although the ’813 patent focuses on measuring temperature at the ear,
Kaz maintains that it teaches the key elements of the asserted claims.
According to Kaz, Exergen is bound by principles of judicial estoppel to the
positions it took in prosecuting Exergen Corp. v. Wal-Mart Stores, Inc., 575
F.3d 1312 (Fed. Cir. 2009. “As a general matter, the doctrine of judicial
estoppel prevents a litigant from pressing a claim that is inconsistent with a
position taken by that litigant either in a prior legal proceeding or in an
earlier phase of the same legal proceeding.” Alternative Sys. Concepts, Inc.
v. Synopsys, Inc., 374 F.3d 23, 32-33 (1st Cir. 2004). In the Wal-mart case,
Exergen asserted Claim 7 of the ’813 patent against temporal artery
thermometers similar to the accused products. Claim 7 is directed to a
thermometer for measuring temperature at any “biological surface tissue:”
7. A radiation detector comprising:
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a thermopile mounted to view a target of biological surface
tissue;
a temperature sensor for sensing ambient temperature;
an electronic circuit coupled to the thermopile and
temperature sensor and responsive to the voltage
across the thermopile and the temperature sensed by
the sensor to provide an indication of an internal
temperature within the biological tissue adjusted for
the ambient temperature to which the surface tissue is
exposed; and
a display for providing an indication of the internal
temperature.
In the Wal-mart litigation, Exergen succeeded in convincing the court and
jury that the term “biological surface tissue” encompasses any “living layer
of external human tissue having a temperature that can be measured,”
including the forehead. Wal-mart, 575 F.3d at 1317. The jury also agreed
with Exergen that claim 7 of the ’813 patent was enabled. 4 Kaz contends that,
having persuaded the jury that claim 7 enabled a person of ordinary art in
the skill to make a temporal artery thermometer without “undue
experimentation,” Exergen cannot now take the position that the ’813 patent
does not disclose essential elements of the asserted claims. See In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988) (“[I]t is well established that enablement

The Federal Circuit overturned the jury’s verdict of infringement on
other grounds. See Wal-mart, 575 F.3d at 1320-1321.
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4

requires that the specification teach those in the art to make and use the
invention without undue experimentation.”).
Exergen responds, and the court agrees, that its position in Wal-mart
– that claim 7 of the ’813 patent is both enabled and covers temporal artery
thermometers – is not, as a matter of law, so inconsistent with its contention
in this case – that temporal artery thermometers were invented years after
the ’813 patent – as to exclude the latter. To trigger estoppel, “the estopping
position and the estopped position must be directly inconsistent, that is,
mutually exclusive.” Alternative Sys. Concepts, 374 F.3d at 33. As Exergen
notes, patent law “allows for after-arising technology to be captured within
the literal scope of valid claims that are drafted broadly enough.”
Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1371-1372 (Fed. Cir.
2008). Thus, that Exergen asserted claim 7, a broadly-drafted claim, against
the later-invented temporal artery thermometer does not compel the
conclusion that the ’813 patent disclosed the later invention.
The same is true of enablement. Enablement is not determined against
the accused device or process. See CFMT, Inc. v. Yieldup Int'l Corp., 349
F.3d 1333, 1338 (Fed. Cir. 2003). “Enablement does not require an inventor
to meet lofty standards for success in the commercial marketplace. Title 35
does not require that a patent disclosure enable one of ordinary skill in the
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art to make and use a perfected, commercially viable embodiment absent a
claim limitation to that effect.” Id. Indeed, “[t]he enablement requirement
is met if the description enables any mode of making and using the claimed
invention.” Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1533 (Fed.
Cir. 1991) (emphasis added). The jury instructions on enablement in the
Wal-mart litigation made no reference to temporal artery thermometers and
the jury’s finding that claim 7 of the ’813 patent was enabled does not
conclusively establish that the ’813 patent enabled the making of temporal
artery thermometers.
What is left of Kaz’s obviousness argument are pertinent questions of
fact. The ’813 patent disclosed determining the core temperature by taking
an external temperature at the ear and applying the arterial heat balance
approach to determine the internal temperature, and suggested that the
approach may be applied to any “biological surface tissue.” The ’642 and ’135
patents and the Dermatemp device disclose taking external temperatures at
the forehead. The Bergensen study (described in the court’s memorandum
and order on Exergen’s motion for summary judgment of no inequitable
conduct) disclosed the lack of arteriovenous anastomoses in the temporal
artery, but made no suggestion for applying this finding to the field of
thermometry.
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Exergen’s evidence reflects that prior to the inventions of the patentsin-suit, persons skilled in the art were skeptical that accurate internal
temperatures could be determined from external measurements taken at
exposed locations, such as the forehead. There existed an unmet need in the
field, particularly in pediatric medicine, for accurate temperature
measurements taken by less intrusive instruments than ear thermometers.
Exergen’s own temporal artery thermometer was commercially successful
and received various accolades for its innovation. It is thus for the jury to
decide whether “a skilled artisan would have been motivated to combine the
teachings of the prior art references to achieve the claimed invention, and
that the skilled artisan would have had a reasonable expectation of success
in doing so.” Kinetic Concepts, 688 F.3d at 1360.
Willful Infringement
Willful infringement has both an objective and a subjective
component. “To establish willful infringement, ‘a patentee must [first] show
by clear and convincing evidence that the infringer acted despite an
objectively high likelihood that its actions constituted infringement of a valid
patent.’” Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620
F.3d 1305, 1319 (Fed. Cir. 2010), quoting In re Seagate Tech., LLC, 497 F.3d
1360, 1371 (Fed. Cir. 2007) (en banc). “[T]he threshold objective prong of
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the willfulness standard enunciated in Seagate is a question of law based on
underlying mixed questions of law and fact . . . .” Bard Peripheral Vascular,
Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1005 (Fed. Cir. 2012). “If
Seagate’s objective prong is met, ‘the patentee must also demonstrate that
this objectively-defined risk [of infringing activity] was either known or so
obvious that it should have been known to the accused infringer.’” Spine
Solutions, 620 F.3d at 1319, quoting Seagate, 497 F.3d at 1371.
The “object prong ‘tends not to be met where an accused infringer
relies on a reasonable defense to a charge of infringement.’” Advanced Fiber
Techs. (AFT) Trust v. J & L Fiber Servs., Inc., 674 F.3d 1365, 1377 (Fed. Cir.
2012), quoting Spine Solutions, 620 F.3d at 1319. On the basis of the
foregoing discussion, the court is of the view that, whatever the ultimate
success of Kaz’s invalidity contentions, they do not constitute an objectively
unreasonable defense to Exergen’s charge of infringement. Because the
court finds that, as a matter of law, Exergen cannot satisfy the objective
prong of Seagate, it is unnecessary to decide the subjective prong.

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ORDER
For the foregoing reasons, Kaz’s motion for summary judgment of
invalidity because of obviousness is DENIED. Kaz’s motion for summary
judgment of no willful infringement is ALLOWED.
SO ORDERED.
/s/ Richard G. Stearns
_____________________
UNITED STATES DISTRICT JUDGE

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