Exergen Corporation v. KAZ USA, Inc.

Filing 253

Judge Richard G. Stearns: ORDER entered denying 140 Motion for Summary Judgment; denying 239 Motion to Strike. "For the foregoing reasons, Kaz's motion for summary judgment of noninfringement is DENIED. Exergen's motion to stri ke the Ho and Frick declarations is DENIED. The parties will have at the election of wither until October 2, 2015, to depose Ho and Frick for the limited purpose of authenticating and establishing the admissibility of the Microlife exhibits. The Clerk will schedule this matter for a jury trial commencing at 9 a.m., January 11, 2016, in Courtroom 21 of the Moakley Federal Courthouse." (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 MOTION
FOR SUMMARY JUDGMENT OF NONINFRINGEMENT
September 3, 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 described in previous iterations of summary
judgment, 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. Kaz contends that the accused
products – the Vicks Forehead Thermometer V977 and the Braun Forehead
Thermometer FHT-10001 – do not meet all of the limitations of the asserted

The parties agree that the two accused thermometers are
technological twins for purposes of the infringement analysis.
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claims. Kaz also maintains that it is not liable for indirect infringement
because it relied in good faith on its counsel’s opinions of noninfringement. 2
Direct Infringement
“To support a summary judgment of noninfringement it must be
shown that, on the correct claim construction, no reasonable jury could have
found infringement on the undisputed facts or when all reasonable factual
inferences are drawn in favor of the patentee.” Netword, LLC v. Centraal
Corp., 242 F.3d 1347, 1353 (Fed. Cir. 2001). To establish infringement, all of
the elements of the claim must be present in the accused product or method,
either literally or by equivalents. See id. at 1353-1354. Under the doctrine of
equivalents,
“a product or process that does not literally infringe . . . the
express terms of a patent claim may nonetheless be found to
infringe if there is ‘equivalence’ between the elements of the
accused product or process and the claimed elements of the
patented invention.” Warner-Jenkinson Co. v. Hilton Davis
Chem. Co., 520 U.S. 17, 21[] (1997). A patent is infringed under
the doctrine of equivalents if any difference between a given
limitation in the asserted claim and the corresponding element
in the accused device is insubstantial. Voda v. Cordis Corp., 536
F.3d 1311, 1326 (Fed. Cir. 2008). Alternatively, “an element in
the accused device is equivalent to a claim limitation if it
This is the last of the parties’ six summary judgment motions. The
court previously issued orders and memoranda on the parties’ cross
summary judgment motions on Kaz’s license defense, on Exergen’s motion
for summary judgment of no inequitable conduct, and on Kaz’s motions for
summary judgment of invalidity because of obviousness, and summary
judgment of no willful infringement.
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performs substantially the same function in substantially the
same way to obtain substantially the same result.” Id. (citation
omitted). Regardless how the equivalence test is articulated, “the
doctrine of equivalents must be applied to individual limitations
of the claim, not to the invention as a whole.” Warner-Jenkinson,
520 U.S. at 29[].
Mirror Worlds, LLC v. Apple Inc., 692 F.3d 1351, 1357 (Fed. Cir. 2012).
“detecting human body temperature”
Claims 7, 14, and 17 of the ’685 patent, and claims 17, 24, 27, 29, 33, 37,
54, 56, 60, and 66 of the ’938 patent recite a method of “detecting human
body temperature.”

Claim 49 of the ’938 patent discloses a “body

temperature detector.” Kaz contends that because the parties agreed to
construe “human body temperature” as the “core temperature of the human
being,” and the accused products determine an oral equivalent temperature,
they do not meet this claim limitation and therefore do not infringe.
Exergen counters, and the court agrees, that “detecting human body
temperature,” which appears only in the claims’ preamble, is not limiting for
purposes of an infringement analysis.3 “Whether to treat a preamble term as
a claim limitation is ‘determined on the facts of each case in light of the claim

Relying on expert opinion, Exergen also maintains that while the
accused thermometers determine an oral equivalent temperature, they
nonetheless detect human body temperature because the core temperature
is the source of all temperature measurements on the body, and the oral
temperature is dependent on the core temperature.
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as a whole and the invention described in the patent.’” Am. Med. Sys., Inc. v.
Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010), quoting Storage Tech.
Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003).
“Generally . . . the preamble does not limit the claims.” Allen
Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir.
2002). Nonetheless, the preamble may be construed as limiting
“if it recites essential structure or steps, or if it is ‘necessary to
give life, meaning, and vitality’ to the claim.” Catalina Mktg.
Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir.
2002), quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1305 (Fed. Cir. 1999). A preamble is not regarded as
limiting, however, “when the claim body describes a structurally
complete invention such that deletion of the preamble phrase
does not affect the structure or steps of the claimed invention.”
Catalina, 289 F.3d at 809. If the preamble “is reasonably
susceptible to being construed to be merely duplicative of the
limitations in the body of the claim (and was not clearly added to
overcome a [prior art] rejection), we do not construe it to be a
separate limitation.” Symantec Corp. v. Computer Assocs. Int’l,
Inc., 522 F.3d 1279, 1288-89 (Fed. Cir. 2008). We have held that
the preamble has no separate limiting effect if, for example, “the
preamble merely gives a descriptive name to the set of limitations
in the body of the claim that completely set forth the invention.”
Am. Med., 618 F.3d at 1358-1359.
The facts of this case lend themselves to the conclusion that “detecting
human body temperature” states the intended purpose of the claims and is
not itself a substantive claim limitation. Although Kaz seizes on the fact that
Exergen agreed to a construction of the phrase during the Markman
proceeding, construing a term is not determinative of a claim limitation. The
patents-in-suit do not teach direct measurement of temperature at a person’s
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core.

Rather, they disclose methods of measuring temperature at the

forehead, and then computing or otherwise providing “a body temperature
approximation.” See, e.g., ’938 patent claim 54. The steps of the claims
constitute integral methods that do not depend on the preamble. Each
asserted claim that recites language from the preamble also incorporates an
explicit step for computing or determining an internal body temperature or
a body temperature approximation.

Thus, the preamble language “is

reasonably susceptible to being construed to be merely duplicative of the
limitations in the body of the claim.”4 Am. Med., 618 F.3d at 1359. Finally,
the preamble language was not “clearly added to overcome a [prior art]
rejection.” Id. The preamble phrase appeared in the original claims of the
patent applications and Exergen did not rely on the preamble language to
distinguish prior art during patent prosecution.
“laterally scanning”
Claims 7, 14, and 17 of the ’685 patent recite “laterally scanning” or a
“lateral scan” across a forehead or the temporal artery. The court construed

Kaz’s argument that the claims require an exact detection of core
temperature also conflicts with the claim step to “provides a body
temperature approximation” and would render the claims incapable of being
meaningfully practiced. See Ortho-McNeil Pharm., Inc. v. Mylan Labs.,
Inc., 520 F.3d 1358, 1363 (Fed. Cir. 2008) (where alternative plausible
readings are possible, the court should interpret claim language in light of
the intrinsic evidence and according to the patentee’s intentions).
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the terms collectively to mean “moving a scanning device in a generally
horizontal direction relative to the human body.” Kaz argues that the devices
do not instruct scanning in “a generally horizontal direction” because users
are directed to scan “diagonally down[ward]” along the temple area (Braun
manual), and in a curved pattern from above the eyebrow down to the tail of
the eyebrow (Vicks and Braun manual diagrams) and back (Braun manual
diagram).

Recognizing that the diagrams attempt t0 represent in two

dimensions what is a three-dimensional curvature of the forehead, Kaz’s
evidence raises a question of fact to be resolved at trial. Although the
diagrams’ scan lines appear diagonal/curved, they are also depicted as
parallel to the subject’s eyebrow. A reasonable jury could conclude that a
scan pattern on a parallel to the eyebrow is “generally horizontal.” 5

As an alternative to literal infringement, Exergen also asserts
infringement by equivalents, contending that a diagonal scan is the
equivalent to a lateral scan. Kaz argues that because Exergen added the
lateral scan limitations during prosecution to distinguish prior art, it cannot
now assert infringement by equivalents. Under the doctrine of prosecution
history estoppel, where a narrowing amendment is made for a “substantial
reason relating to patentability,” “all territory between the original claim
limitation and the amended claim limitation” is presumed
surrendered. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344
F.3d 1359, 1367 (Fed. Cir. 2003). A patentee may overcome this
presumption if the patentee can demonstrate that the amendment only had
“a tangential relation to,” or “was peripheral, or not directly relevant, to the
alleged equivalent.” Id. at 1369. To fulfill the public notice function of
patents, this determination is to be made based on “the prosecution history
record without the introduction of additional evidence, except, when
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5

“across a forehead”
Claim 7 of the ’685 patent, which depends on claim 1, includes the
limitation of scanning a temperature detector “across a forehead.” The
parties agreed to construe the term to mean “from one side of the forehead
to the other.” It is undisputed that the accused devices instruct a user to scan

necessary, testimony from those skilled in the art as to the interpretation of
that record.” Id. at 1370.
Exergen does not dispute that the lateral scan limitation was
introduced to overcome the examiner’s rejection over prior art. However,
Exergen maintains, and the court agrees, that the amendment is peripheral
to the alleged equivalent. The instant dispute concerns how horizontal a scan
would have to be to be considered “lateral.” The examiner’s rejection, by
contrast, concerned whether the claims would encompass scanning in
situ. The prior art disclosed sensing a person’s temperature using a
measuring device (but not scanning while moving the scanning device). The
examiner noted that “scan” is broadly defined as “to examine systematically
with a sensing device” and “doesn’t necessary [sic] involve the scanning of a
device.” Nov. 14, 2000 Office Action, Underwood Decl. Ex. MMM at 5. In
response, Exergen agreed that “scan” “does not necessarily require
movement of the device,” and added “with a lateral scan across the temporal
artery” to issued claims 14 and 17. Apr. 10, 2011 Amendment, Underwood
Decl. Ex. NNN at 5, i. However, Exergen argued that issued claim 7, which
required “scanning across a forehead,” already indicated lateral movement
because of the “across a forehead” limitation. Id. at 5. The examiner added
(with Exergen’s agreement) the modifier “lateral” to clarify the “scanning”
requirement of claim 7 and allowed the claims. Because the narrowing
amendment concerned movement of the scanning device and not the
direction of the movement, the amendment was “peripheral, or not directly
relevant, to the alleged equivalent.”
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across only one side of the forehead.

Exergen nonetheless asserts

infringement by equivalents. 6
Kaz contends that an equivalence between scanning a portion of the
forehead to “across a forehead” would impermissibly vitiate the claim
limitation. An alleged equivalent “vitiates” a claim element if it “render[s]
the pertinent limitation meaningless,” Freedman Seating Co. v. Am. Seating
Co., 420 F.3d 1350, 1359 (Fed. Cir. 2005), or would “effectively eliminate
that element in its entirety.” Warner-Jenkinson, 520 U.S. at 29.
[C]ourts properly refuse to apply the doctrine of equivalents
“where the accused device contain[s] the antithesis of the
claimed structure.” Planet Bingo, LLC v. GameTech Intern., Inc.,
472 F.3d 1338, 1345 (Fed.Cir.2006). In such a case, application
of the doctrine of equivalents would “vitiate” a claim element.
Warner-Jenkinson, 520 U.S. at 39 n. 8 [].
“Vitiation” is not an exception to the doctrine of equivalents, but
instead a legal determination that “the evidence is such that no
reasonable jury could determine two elements to be equivalent.”
Id. The proper inquiry for the court is to apply the doctrine of
equivalents, asking whether an asserted equivalent represents an
“insubstantial difference” from the claimed element, or “whether
the substitute element matches the function, way, and result of
the claimed element.” Id. at 40 []. If no reasonable jury could
find equivalence, then the court must grant summary judgment
of no infringement under the doctrine of equivalents.
In prior litigation involving the ’685 patent, the Federal Circuit found
that scanning in an oval pattern over the temple region did not literally
infringe the “across a forehead” limitation. Exergen Corp. v. Wal-Mart
Stores, Inc., 575 F.3d 1312, 1323 (Fed. Cir. 2009). In that case, Exergen
waived the doctrine of equivalents argument prior to trial. Id.
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Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356 (Fed. Cir. 2012).
Here, a reasonable jury could find that there is only an “insubstantial
difference” between scanning across one side of the forehead and scanning
across the entire forehead. Permitting this equivalence neither makes the
limitation “meaningless” nor does it “eliminate [the limitation] in its
entirety.” A user is still required to scan the device across the forehead, and
it is for the jury to decide whether scanning across a portion of the forehead
is equivalent to scanning across the entire forehead.
“a peak temperature reading”
Claim 7 of the ’685 patent and claims 60 and 66 of the ’938 patent
require providing “a peaking temperature reading” from the plural readings
taken during a scan. The parties did not request that the court construe the
term, and the court sees no reason not to accord the term its common
meaning of “the highest temperature reading,” as the patents explain that the
highest temperature reading “indicates the temporal artery.” ’685 patent,
col. 4, ll. 9-13.
Kaz contends that the accused thermometers do not meet the “peak
temperature reading” limitation because they do not utilize the highest
reading detected during a scan. Rather, Kaz explains that the accused
devices are programmed to take fifty separate readings in the course of a
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scan, and after computing the running average of the four most recent
readings, uses the highest four-reading average to determine the ultimate
temperature. By virtue of using an average over four readings, Kaz reasons
that the accused thermometers necessarily do not utilize the highest detected
temperature of a scan.
Exergen disputes this argument in two respects. First, Exergen relies
on the reports of its expert witness, Dr. John Collins. Dr. Collins performed
empirical testing of the accused devices and concluded that the accused
thermometers did report and use the peak temperature detected. See Collins
Opening Report ¶ 104 (“A conclusion can be made from the data that both
the Vicks and the Braun thermometers are scanning thermometers that
report the peak temperature to which they are exposed.”); Collins Rebuttal
Report ¶ 36 (“[E]xperimental results show that the Vicks and Braun devices
use peak temperature.”).
Second, Exergen challenges the authenticity and admissibility of the
evidence Kaz relies upon to explain the workings of the accused devices.
While Kaz sells the thermometers in the United States, they are
manufactured by Microlife, a Taiwan-based company. Kaz claims that it
does not possess nor have access to the source code of the software Microlife
embeds in the accused devices. Neither Exergen nor Kaz obtained the source
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code from Microlife in this litigation. Rather, Kaz intends to rely on the
testimony of James Gorsich, Kaz’s Engineering and Technical Manager for
Medical Devices, who avers that he has obtained personal knowledge of the
working of the thermometers after “‘a careful review back and forth with
Microlife to ensure that [he] had a thorough understanding of how the device
worked.’” Reply at 7, quoting Gorsich Dep. Tr. at 104-105.
Exergen challenges Gorsich’s testimony as inadmissible hearsay
because Gorsich (who is not designated as an expert witness) based his
functional knowledge on out-of-court statements made by Microlife
employees. In response to the argument, Kaz submitted the declarations of
two Mircolife employees – Chia-Chen Ho and Gerhard Frick – to
authenticate and establish the admissibility of Microlife documents,
including process flow-charts, which underlie Gorsich’s testimony. Exergen,
for its part, then moved to strike the two Microlife declarations and their
exhibits as hearsay. Exergen also objects because the Microlife employees
were not disclosed as Kaz witnesses. 7
It is unnecessary for the court to determine now the admissibility of
Kaz’s evidence to decide the motion for summary judgment. At this juncture,

7

Exergen moves, in the alternative, for leave to depose Ho and Frick.
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the court must draw all reasonable inferences in Exergen’s favor as the
nonmoving party.8 See Fed. R. Civ. P. 56. In doing so, the court finds that
Dr. Collins’ evidence, if credited by the jury, could warrant a conclusion that
the devices meet the “peak temperature” limitation, either literally or under
the doctrine of equivalents.9 See, e.g., In re Gabapentin Patent Litig., 503
F.3d 1254, 1259-1261 (Fed. Cir. 2007) (conflicting expert opinions sufficient
to defeat summary judgment). That said, the court will deny Exergen’s
motion to strike. The court will give the parties (if either so chooses) the
opportunity to take the depositions of Cho and Frick for the limited purpose
of authenticating the Microlife documents on which Gorsich relies. The
court will decide the admissibility question by way of an appropriate motion
in limine prior to trial.

Kaz’s own expert, Dr. Frederick Brown, disagrees with the conclusion
to be drawn from Dr. Collins’s testing. The difference in opinion, however,
is a matter for the jury to resolve.
8

Kaz once more hoists the shield of prosecution history estoppel as a
putative bar Exergen’s theory of equivalents. However, the prosecution
history reveals that the “peak temperature” limitation was present in the
original claims. Exergen added the “plural readings” limitation to clarify that
the claim limitation excluded the possibility that “peak temperature”
referred to any temperature taken at any instant. See Nov. 14, 2000 Office
Action at 2, 5; Apr. 10, 2011 Amendment at 5-6, i. Exergen also clarified that
“peak” referred to a maximum and not a minimum temperature, see Apr. 10,
2011 Amendment at 6, a distinction not at issue in this case.
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Indirect Infringement
With the exception of claim 49 of the ’938 patent, all of the asserted
claims are method claims covering an end consumer’s use of the accused
devices. With respect to these methods, Exergen charges Kaz with induced
and contributory infringement. See 35 U.S.C. § 271(b) and (c). Both forms
of indirect infringement require the alleged infringer to have knowledge of
the infringement and to possess a specific intent to induce or contribute to
the infringing conduct.
To establish [induced infringement] liability . . . a patent holder
must prove that once the defendants knew of the patent, they
“actively and knowingly aid[ed] and abett[ed] another’s direct
infringement.” Water Technologies Corp. v. Calco, Ltd., 850
F.2d 660, 668 (Fed. Cir. 1988) (emphasis in original). However,
“knowledge of the acts alleged to constitute infringement” is not
enough. Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348,
1363 (Fed. Cir. 2003) (citation omitted). The “mere knowledge
of possible infringement by others does not amount to
inducement; specific intent and action to induce infringement
must be proven.” Id. at 1364 [].
DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1305 (Fed. Cir. 2006).
Contributory infringement occurs if a party sells or offers to sell,
a material or apparatus for use in practicing a patented process,
and that “material or apparatus” is material to practicing the
invention, has no substantial non-infringing uses, and is known
by the party “to be especially made or especially adapted for use
in an infringement of such patent.” 35 U.S.C. § 271(c); see also
Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424
F.3d 1293, 1312 (Fed. Cir. 2005).

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In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d
1323, 1337 (Fed. Cir. 2012) (emphasis added).
Kaz contends that Exergen cannot shoulder its burden of establishing
knowledge and specific intent because Kaz relied in good faith on its
competent attorney’s opinions that the accused devices do not infringe. Kaz
obtained these opinions regarding the patents-in-suit in 2005, 2009, and in
2012. Exergen challenges the competence of these opinions because: (1) Kaz
did not sell a forehead thermometer in 2005; (2) the 2009 opinion relied on
incorrect technical information regarding the accused thermometers; and
(3) the 2012 opinion addressed invalidity, which is no longer a basis to
“negate the scienter required under § 271(b).” Commil USA, LLC v. Cisco
Sys., Inc., 135 S. Ct. 1920, 1928 (2015). Exergen also points out that Kaz’s
counsel’s opinions did not discuss infringement by equivalents, a theory that
Exergen asserts in this litigation. Because good faith is ordinarily a question
of fact, see KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1573 (Fed.
Cir. 1985), and Exergen has sufficiently identified a dispute over the
competence and reliability of Kaz’s counsel’s opinions, the court will submit
the issue to the jury.

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ORDER
For the foregoing reasons, Kaz’s motion for summary judgment of
noninfringement is DENIED. Exergen’s motion to strike the Ho and Frick
declarations is DENIED. The parties will have at the election of wither until
October 2, 2015, to depose Ho and Frick for the limited purpose of
authenticating and establishing the admissibility of the Microlife exhibits.
The Clerk will schedule this matter for a jury trial commencing at 9 a.m.,
January 11, 2016, in Courtroom 21 of the Moakley Federal Courthouse.
SO ORDERED.
/s/ Richard G. Stearns
_____________________
UNITED STATES DISTRICT JUDGE

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