Serby v. First Alert, Inc. et al

Filing 101

ORDER: The Court finds no liability on the part of Defendants for any of Plaintiff's causes of action as Plaintiff has failed to meet his burden of proof by a preponderance of the evidence. The Court also dismisses all of Defendants' counterclaims as Defendants have failed to meet their burden of proof by clear and convincing evidence. The Clerk of the Court is respectfully directed to close the case. Ordered by Judge William F. Kuntz, II on 9/28/2015. (Brucella, Michelle)

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UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK

--------------------------------------------------------------)(
VICTOR M. SERBY,

Plaintiff,

ORDER:
09-CV-4229 (WFK) (VMS)

-againstFIRST ALERT, INC. AND BRK BRANDS, INC.
Defendants.

--------------------------------------------------------------)(
WILLIAM F. KUNTZ, II, United States District Judge

Victor M. Serby ("Plaintiff'), brought this action in the Supreme Court of the State of
New York, Kings County, against First Alert, Inc. ("First Alert") and its subsidiary BRK Brands,
Inc. ("BRK") (collectively "Defendants"), which then removed the case to this Court. Plaintiff
alleges Defendants manufacture, distribute, and sell various smoke detectors without payment of
royalties to Plaintiff, in breach of a pre-existing settlement agreement from a prior, related,
patent infringement litigation. Plaintiff seeks recovery on two causes of action: ( 1) breach of
contract and (2) for an accounting to determine the precise amount of damages. Defendants
counterclaimed on the following grounds: (1) for a declaration of patent unenforceability and (2)
for a declaration of patent invalidity.
This Court conducted a bench trial in accordance with 28 U.S.C. § 1330(a) beginning on
July 27, 2015 and ending on July 30, 2015. Having reviewed the testimony and exhibits, as well
as the parties' post-trial submissions, this Court, pursuant to Rule 52 of the Federal Rules of
Civil Procedure, issues the following Findings of Fact and Conclusions of Law. "To the extent
that any of the findings of fact may be deemed conclusions of law, they also shall be considered

conclusions. Likewise, to the extent that any of the conclusions oflaw may be deemed findings
of fact, they shall be considered findings." Giordano v. Thomson, No. 03-CV-5672, 2007 WL
15 80081, at * 1 (E.D .N. Y. May 29, 2007) (Seybert, J.) (citation omitted). For the reasons set
forth below, this Court finds Defendants not liable on each of Plaintiffs causes of action. This
Court further finds Plaintiffs patent is enforceable and valid.
ANALYSIS
I.

Findings of Fact - Plaintiff's Claims

In 1995, Plaintiff commenced a lawsuit against Defendants claiming Defendants' sale of
its SAlOYR model smoke alarm infringed Plaintiffs United States Patent Number 5,444,434
("the '434 Patent"), entitled "Extended Life Smoke Detector." Trial Transcript ("Tr.") 157:9-10,
244:24-245:9; Ex. 11 ('"434 Patent").
The SAlOYR smoke detector model had batteries intended to last for ten years. Tr. at
245:22-24. It was constructed with a cover snapped to a base that was unopenable without the
use of tools and sealed to prevent the consumer from accessing or replacing parts inside the
smoke alarm, including batteries. Id. at 246:11-247:4, 289:8-12.
In April 1997, Plaintiff and Defendants entered into a Settlement, License, and Mutual
Release Agreement (the "Settlement Agreement"), whereby the parties agreed to settle the
lawsuit. Ex. 2 ("Settlement Agreement"). Under the Settlement Agreement, the parties agreed:
[Defendants] agree to pay [Plaintiff] a 5% royalty, semi-annually, based on the
net sales of smoke detectors which incorporate a lithium battery, meet all other
limitations of Claims 5 or 10 of [the '434 Patent] and which have a battery
compartment that is unopenable as defined in Claims 5 or 10 of [the '434 Patent]
and which are made, used or sold by [Defendants] in the United States for the
time period during which Claims 5 or 10 of [the '434 Patent] remain valid and
enforceable ... [Defendants] can make, have made, use, offer for sale, sell,
import and export royalty free (i) lithium batteries for use in smoke detectors, and
1

Exhibits referenced herein refer to the parties' Trial Exhibits unless otherwise noted.
2

(ii) smoke detectors which have battery compartments that are openable and can
be used with lithium batteries.
Id. at~ 4.

Defendants paid Plaintiff royalties under the Settlement Agreement for all sales of the
SAlOYR smoke alarm model in the amount of about one million and five hundred thousand
dollars ($1,500,000). Tr.160:15-21, 161:1-14, 249:18-24, 253:7-9. Plaintiff admits all royalties
were paid as required under the Settlement Agreement for the SAl OYR smoke alarm model. Id.
at 223:4-7. The '434 Patent was valid for seventeen years, and expired on August 22, 2012, after
which no royalties would have been due under the Settlement Agreement on any sales or any
smoke alarms by Defendants. Id. at 174: 1-8, 176:2-7.
Defendants ceased the production and sale of the SA 1OYR smoke detector in response to
changed industry standards and replaced the SAlOYR model with the SA340 smoke detector
model. Id. at 250:8-251 :23, 298:3-6. Defendants did not pay Plaintiff royalties under the
Settlement Agreement for sales of the SA340 model. Id. at 253: 10-17. According to
Defendants, Plaintiff was not entitled to any royalty payments under the Settlement Agreement
for sales of the SA340 model because it had an openable battery compartment. Id.

II.

Conclusions of Law - Plaintiff's Claims for Breach of Contract and Accounting
Plaintiff argues Defendants' breached the Settlement Agreement because the SA340

smoke detector model falls within the terms of the settlement agreement thereby triggering the
payment ofroyalties. Dkt. 97 ("P's Post-Trial Br.") at Conclusions of Law at~ 27. Specifically,
Plaintiff claims royalty payments are due under the Settlement Agreement because the SA340
smoke detector model, like the SAIOYR smoke detector model, is "unopenable within the
meaning to the expectation of consumers and end users." Id.

at~

24. New York law governs the

analysis for Plaintiffs causes of action. See Settlement Agreement at ~ 12.
3

Under New York law, "to recover from a defendant for breach of contract, a plaintiff
must prove, by a preponderance of the evidence[:] (1) the existence of a contract between itself
and that defendant; (2) performance of the plaintiffs obligations under the contract; (3) breach of
the contract by that defendant; and (4) damages to the plaintiff caused by that defendant's
breach." Diesel Props S.R.L. v. Greystone Bus. Credit II LLC, 631 F.3d 42, 52 (2d Cir. 2011)
(citations omitted).
Here, Plaintiff has not met his burden of proof to establish a breach of contract by a
preponderance of the evidence. Prior to the commencement of the bench trial in this action, this
Court construed the term "unopenable" to mean:
For purposes of the [']434 Patent and Settlement Agreement, therefore, the Court
finds that a smoke detector is 'unopenable' when the housing of the smoke
detector cannot be opened by a consumer without damaging the structure of the
case, as necessary to deter physical access to the battery, i.e., a smoke detector
with a housing that, once assembled, will not come apart, so as to deter physical
access to the battery.
Serby v. First Alert, Inc., 09-CV-4229, 2011WL4464494, at *6 (E.D.N.Y. Sept. 26, 2011)

(Mauskopf, J.) (footnote omitted). In rejecting Defendants' motion for summary judgment,
however, the Court stated:
[T]he User's Manual is concrete evidence from which a reasonable jury could
find that the housing of the SA340 model does not come apart to the extent
necessary to allow access to the battery, thus rendering it 'unopenable.'
Moreover, if [P]laintiffs evidence is accurate, the SA340 model would prevent
removal or theft of the powercell, serving the purpose for which [P]laintiff
designed the [']434 Patent. Therefore, v,iewing the evidence in the light most
favorable to [P]laintiff, there is an issue of fact as to whether the SA340 model is
'unopenable' for purposes of the Settlement Agreement, and summary judgment
is denied with respect to whether [D]efendants' manufacture and sale of the
SA340 model without payment of royalties is a breach.
Id. at *7 (E.D.N.Y. Sept. 26, 2011) (internal citations omitted). The Court emphasized,

however, "a smoke detector that could be opened and reassembled to allow repeated access to

4

the battery, without physical damage to the structure, would not be 'unopenable' under the
meaning of the [']434 Patent." Id. at *8.
At trial, Plaintiffs only evidence to support his argument that the SA340 smoke detector
model is unopenable was his continued reliance on the language in the User's Manual, which
does not provide any directions on how to open the cover or access any battery enclosure of the
SA340 smoke detector model, and his reliance on the packaging, which states the SA340 smoke
detector model "has a sealed power cell, that the case is not openable." Tr. 169:20-21; see also
id. at 285:19-287:8; Ex. 10 (User's Manual). However, at no point during trial or in post-trial

submissions did Plaintiff attempt to prove that the SA340 smoke detector model could not be
opened and reassembled to allow repeated access to the battery without physical damage to the
structure. As such, the evidence set forth by Plaintiff is not sufficient to establish breach of
contract by a preponderance of the evidence.
Further, Defendants presented evidence to establish the SA340 smoke detector model can
be opened without physical damage. Specifically, that it "could be opened and reassembled to
allow repeated access to the battery, without physical damage to the structure," thus rendering it
unopenable as construed by the Court. Serby, 2011 WL 4464494 at *8. For example,
Defendants' witness, Mark Devine, BRK's Senior Vice President of Marketing, demonstrated in
court that the SA340 smoke detector model had both an openable housing unit and an openable
battery compartment. Tr. 240:1-2; 268:16-270:23.
To make his demonstration, Mr. Devine used a SA340 smoke detector model from 2009
containing a User's Manual. Id. at 266:20-267:15; see also Ex. 4 ("2009 SA340 Smoke Detector
Model"). He first pushed the test button and verified that the smoke alarm was operational. Id.
at 268:16-269:6. Second, Mr. Devine was able to open the alarm by squeezing the tabs to

5

remove the cover from the base. Id. at 269:7-16. Third, Mr. Devine was able to remove the
battery compartment from the base of the smoke alarm. Id. at 269:19-270: 3. Fourth, Mr.
Devine demonstrated that the battery compartment itself was separately openable by removing
the cover of the battery compartment. Id. at 270:5-14, Tr. 285:11-18. Opening the battery
compartment exposed the batteries which are permanently attached to a circuit board. Id. at
270:16-23. Mr. Devine opened the housing of the SA340 smoke detector model and the battery
compartment by only using his fingers. He did not need to use any tools and he was able to open
the housing and the battery compartment without damaging the structure of the case. Id. at
270:24-271: 13, 290:17-23, 291 :13-17. Finally, Mr. Devine was able to reassume the SA340
smoke alarm model and tested it again to confirm that it was working. Id. at 271: 14-272: 11. Mr.
Devine also explained that the language in the User's Manual and the packaging were intended
to discourage a consumer from replacing the batteries even though the battery compartment
could still be opened. Tr. 272:25-273:2, 273:19-274:24, 275:6-14, 320:21-24, 323:14-24,
324:10-14. Plaintiff presented no evidence to the contrary.
In addition, Defendants submitted the expert report of Dr. Christine Wood, who also
testified at trial. Dkt. 96-3 ("Wood Report"). Dr. Wood's assignment was to determine whether
both the housing and battery compartment of the SA340 smoke detector model were openable by
consumers. Tr. 486:22-487:2, 18-19. All of the participants in Dr. Wood's study were able to
open both the housing and battery compartment of the SA340 smoke detector model within the
first five minutes, with their fingers, without the use of tools, and without damaging any
component parts. Id. at 491 :20-492:8. Dr. Wood therefore concluded the housing and battery
compartment of the SA340 smoke detector model are each openable by consumers without the
use of tools and without damaging components. Id. at 495:21-496:7; see also Wood Report at 7.

6

Again, Plaintiff did not present any evidence to refute Dr. Wood's conclusion. In post-trial
submissions, Plaintiff simply argues that "Dr. Wood's testing was of no probative value." Dkt.
100 ("P's Opp.") at Findings of Fact ii 17. The Court, however, need not reach this issue as the
burden of proof to establish breach of contract is on Plaintiff and, as explained directly above,
Plaintiff has not met his burden of proof.
As the Plaintiff has not met his burden of proof, no cause of action for breach of contract
and an accounting thereof exists. 2 Accordingly, the Court finds that Defendants are not liable for
(1) breach of contract and (2) for an accounting to determine the precise amount of damages as

set forth in Plaintiffs Complaint.

III.

Findings of Fact - Defendants' Counterclaims
On June 15, 1992, Plaintiff filed a patent application, Application Serial No. 07 /899 ,622

("Patent Application"), for an extended life smoke detector with the United States Patent and
Trademark Office ("USPTO"). Stipulated Ex. 5A ("Patent Application").
On June 17, 1993, the US PTO issued the first of several reviews of Plaintiff's Patent
Application. Stipulated Ex. 5B (June 1993 Review). In it, the patent examiner rejected Claims 1
and 11 of the Patent Application as unpatentable in light of prior art by Kodak. Id. at ii 2. The
patent examiner also rejected Claims 2, 3, 5, 10, 12, and 13 in light of prior art by Kodak and
Moody. Id. at iiii 3-4.
In response, Plaintiff submitted an amendment to his Patent Application ("First
Amendment"). Stipulated Ex. SC (First Amendment). In the First Amendment, Plaintiff set
forth his reasons as to why Kodak and Moody do not teach the claimed invention in Plaintiffs
2

Because the Court concludes that Plaintiff has not met his burden of proof to establish the
SA340 smoke detector model is unopenable for purposes of breaching the Settlement
Agreement, the Court need not determine whether the SA340 smoke detector model infringes the
'434 Patent.
7

Patent Application. Id. at 2-6. For example, Plaintiff argued Moody does not teach one how to
use lithium thionyl chloride batteries to power life-long applications in smoke detectors, and
therefore Moody does not render the Patent Application unpatentable. Id. at 3-4.
On November 4, 1993, Plaintiff conducted an in-person interview with the patent
examiner. Stipulated Ex. 5E ("First Interview"). As part of the interview, Plaintiff and the
patent examiner discussed Moody and Kodak as prior art references. Id.
On January 4, 1994, Plaintiff submitted a second amendment to his Patent Application
whereby Plaintiff added additional language to Claim 1 of the Patent Application to overcome
prior art issues. Stipulated Ex. G ("Second Amendment") at 3.
On September 12, 1994, the USPTO issued another review with respect to Plaintiffs
Patent Application. Stipulated Ex. H ("September 1994 Review"). In it, the patent examiner
rejected Claims 1 and 11 as being anticipated by the Sullivan patent. Id. at il 3. The remaining
claims were also rejected as obvious in light of a combination of Sullivan, Moody, and Plaintiffs
admitted prior art. Id. at ilil 4-5.
On November 8, 1994, Plaintiff conducted a second in-person interview with the patent
examiner. Stipulated Ex. 5I ("Second Interview"). As part of the interview, Plaintiff and the
patent examiner discussed Moody and Sullivan as prior art references. Id. The patent examiner
and Plaintiff agreed that if Plaintiff were to insert the limitation of a pulse current with a
particular magnitude in Claims 1, 5, and 11, it would distinguish Plaintiffs Patent Application
from Moody, Sullivan, and Kodak. Id.
In response, Plaintiff submitted a third amendment ("Third Amendment"). Stipulated Ex.
5J ("Third Amendment"). Plaintiff cancelled all previous Claims 1-14 of his patent application
and substituted Claims 15-24. Id. at 1-2. These claims were eventually renumbered by the

8

patent examiner to be Claims 1-10 of the '434 Patent as indicated by the handwriting on
Plaintiffs Third Amendment. Tr. 195:15-196:3. In this Third Amendment, Claim 15 of the
Patent Application, which is now Claim 1 of the '434 Patent, includes the following limitation:
"means for providing a periodic pulse current to said battery, the magnitude of said pulse current
falling within the range of zero to about 11 mA." Third Amendment at 1. On August 22, 1995,
the USPTO issued the '434 Patent. See' 434 Patent.
After Plaintiff initiated this action against Defendants, Defendants counterclaimed
claiming there could be no breach of the Settlement Agreement because (1) Claims 1, 5, 6, and
10 of the '434 Patent were invalid in light of prior art, (2) Claims 1 and 5 of the '434 Patent were
invalid for failure to meet the written description requirement of 35 USC§ 112, and (3) the '434
Patent was enforceable because of Plaintiffs inequitable conduct. Dkt. 96 ("Ds' Post-Trial Br.")
at Conclusions of Law iii! 9-15.
The Claims at issue (Claims 1, 5, 6, and 10) read as follow:

Claim 1 of the '434 Patent provides: 3
A smoke detector of the type powered by a
battery, said smoke detector having means for
triggering an alarm in response to a
concentration of smoke above a threshold
value, said smoke detector having means for
triggering an alarm when the battery voltage
falls below a threshold voltage, said battery
having a service life within said smoke
detector of at least one year, wherein the
improvement comprises:

Claim 5 of the '434 Patent provides:
The smoke detector of claim 1 further
comprising a case, said case having an inside
and an outside, said case having openings
therein communicating between said inside
and said outside to allow the entry
of smoke from said outside to said inside, said
electronic circuit and said battery contained
within said case, said battery having a service
life within said smoke detector of at least ten
years, said case unopenable to deter physical
access to said battery. See '434 Patent.

a) a lithium anode primary battery powering
said smoke detector; and
b) means for providing a periodic pulse
current to said battery, the magnitude of said
3

Because Claim 5 is a dependent claim that depends from Claim 1, all of the limitations of
Claim 1 are incorporated into Claim 5. Cf Tr. 127:10-12.
9

pulse current falling within the range of zero
to about 11 mA. See '434 Patent.

Claim 6 of the '434 Patent provides: 4

Claim 10 of the '434 Patent nrovides:

A smoke detector comprising:

The smoke detector of claim 6 further
comprising a case and smoke detection
means, said case having an inside and outside,
said case having openings therein
communicating between said inside and said
outside to allow the entry of smoke from said
outside to said inside, said electronic circuit
and said battery and said smoke detection
means contained within said case, said battery
having a service life within said smoke
detector of at least ten years, said case
unopenable to deter physical access to said
battery. See '434 Patent.

(a) an electronic circuit, said electronic circuit
having means for triggering an alarm in
response to a concentration of smoke above a
threshold value, said electronic circuit having
means for triggering an alarm in response to
its supply voltage falling below a threshold
voltage, said threshold voltage having a range
of about 7.0 volts to about 5.6 volts; and
(b) a battery, said battery providing said
supply voltage to said electronic
circuit, said battery comprising a series
connection of two Li/SOC12 primary cells,
said battery having a capacity of about 2 amp
hours; and
( c) means for providing a periodic pulse
current to said battery, the magnitude of said
pulse current falling within the range of zero
to about 5 mA. See '434 Patent.

IV.

Conclusions of Law: Defendants' Counterclaims
Defendants' counterclaims seek to invalidate the '434 Patent. To do so, Defendants must

meet a heavy burden of proof by clear and convincing evidence. "By express Congressional
declaration, patents are presumed valid. Each patent claim is independently presumed valid."

Mitsubishi Chem. Corp. v. Barr Labs., Inc., 718 F. Supp. 2d 382, 391 (S.D.N.Y. 2010) (Koelt, J.)
(citing 35 U.S.C. § 282). "The burden of proving invalidity rests on the patent challenger, who

4

Because Claim 10 is a dependent claim that depends from Claim 6, all of the limitations of
Claim 6 are incorporated into Claim 10. Tr. 127:10-12.
10

must do so by clear and convincing evidence." Id. (citations omitted). "Clear and convincing
evidence is that which gives the finder of fact an abiding conviction that the truth of the
proponent's factual contentions is highly probable." CA, Inc. v. Simple.com, Inc., 780 F. Supp.
2d 196, 209 (E.D.N.Y. 2009) (Hurley, J.) (internal quotation marks, citations, and brackets
omitted).

A. Invalidity Based on Prior Art
Defendants first attack Claims 1, 5, 6, and 10 of the '434 Patent as being invalid in light
of prior art. Ds' Post-Trial Br. at Conclusions of Law~ 9. According to Defendants, Claims 1
and 6 are invalid because they are anticipated by or unpatentable over Sullivan. Id. Since
Claims 5 and 10 stand and fall with Claims 1 and 6, Defendants argue Claims 5 and 10 are also
invalid based on prior art. Id. Defendants, however, have failed to meet their burden of proof.
A patent is invalid based on prior art "if the differences between the claimed invention
and the prior art are such that the claimed invention as a whole would have been obvious before
the effective filing date of the claimed invention to a person having ordinary skill in the art to
which the claimed invention pertains." 35 U.S.C. § 103. Obviousness is a question oflaw based
on underlying facts. See TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1341 (Fed. Cir. 2010).
The relevant factual inquiries, often referred to as the Graham factors after Graham v. John

Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966), include: "(1) the scope and content of the
prior art; (2) the differences between the claimed invention and the prior art; (3) the level of
ordinary skill in the art; and (4) any relevant secondary considerations[.]" Id. (citing DyStar

Textilfarben GmbH & Co. Deutsch/and KG v. C.H Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir.
2006)). "Additionally, a showing of obviousness requires a motivation or suggestion to combine
or modify prior art references, coupled with a reasonable expectation of success." Medino! Ltd.

11

v. Guidant Corp., 412 F. Supp. 2d 301, 313 (S.D.N.Y. 2005) (Scheindlin, J.) (internal citations,
quotation marks, and brackets omitted).
Defendants' sole argument for invalidity based on prior art is that "Plaintiff took a known
type of battery known for its long life properties and used it in a known type of smoke alarm in a
known manner at known test pulse current levels to solve a known problem that he did not
discover. The combination was merely a predictable use of prior art elements according to their
established functions." Ds' Post-Trial Br. at Conclusions of Law~ 9. At trial, Defendants called
one expert witnesses to testify to this: Dr. Thomas Reddy. Tr. 366:22, 367:17-18. However, Dr.
Reddy's testimony did not establish how the "combination" of the prior art - "a known type of
battery" with "a known type of smoke alarm ... at known test pulse current level[]" - would
have been obvious to a person having ordinary skill in the art. Ds' Post-Trial Br. at Conclusions
of Law~ 9; see also 35 U.S.C. § 103.
For example, while Dr. Reddy concluded the '434 Patent was invalid in light of Sullivan
and Moody, he failed to explain how the combination would have been obvious, let alone
predictable, to a person having ordinary skill in the art. Dr. Reddy summarized his findings on
invalidity as follows:
I think it's invalid. The prior art, the Sullivan patent, teaches the use of a lithium
primary battery in a smoke detector in means of detecting the end of the life of
that battery.
The Moody patent teaches the use of the lithium thionyl chloride battery in an
electronic safety device.
The Serby patent also cites a publicity release from Kodak and Dicon disclosing
their intention to market a lithium manganese dioxide 9 cell battery in a smoke
detector and in addition to -- well, there's that prior art.

12

Tr. 384:18-385:2; see also id. at 413:14-23. Defendants also attempt to use the testimony of
Gene Brooks to establish the same, but his testimony suffers from the same flaws as Dr. Reddy's
testimony. See Dkt. 97-10 ("Dec. of Gene Brooks") at ~~ 9-12.
Simply stating the "[t]he combination was merely a predictable use of prior art elements
according to their established functions[,]" without establishing how is not only insufficient, but
it falls far from the standard of establishing invalidity based on clear and convincing evidence.
Ds' Post-Trial Br. at Conclusions of Law~ 9. "Merely saying that an invention is a logical,
commonsense solution to a known problem does not make it so." TriMed, Inc., 608 F.3d at
1343. Accordingly, Defendants have not met their burden of proof to invalidate Claims 1, 5, 6,
and 10 of the '434 Patent based on prior art. Therefore, the Court finds Claims 1, 5, 6, and 10 of
the '434 Patent are not invalid in light of the prior art.

B. Invalidity Based on Failure to Meet Written Description Requirement
Defendants next attack Claims 1 and 5 of the '434 Patent as being invalid for failing to
meet the written description requirement of 35 U.S.C. § 112. Ds' Post-Trial Br. at Conclusions
of Law ~~ 10-11. Defendants are incorrect.
The presumption of patent validity includes a presumption that the patent complies with
the written description requirement of 35 U.S.C. § 112(a). Glaxo Wellcome, Inc. v. Eon Labs

Mfg., Inc., OO-CV-9089, 2003 WL 22004874, at *2 (S.D.N.Y. Aug. 22, 2003) (McKenna, J.)
(citing N Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 941 (Fed. Cir. 1990)).
The written description requirement of 35 U.S.C. § 112 states in pertinent part:
"[t]he specification shall contain a written description of the invention, and
of the manner and process of making and using it, in such full, clear,
concise, and exact terms as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make and use the
same, and shall set forth the best mode contemplated by the inventor or joint
inventor of carrying out the invention."
13

35 U.S.C. § l 12(a).
"[T]he purpose of the written description requirement is to ensure that the scope of the
right to exclude, as set forth in the claims, does not overreach the scope of the inventor's
contribution to the field of art as described in the patent specification." Ariad Pharm., Inc. v. Eli

Lilly & Co., 598 F.3d 1336, 1353 (Fed. Cir. 2010) (internal citations and quotations omitted).
"The adequate written description requirement, which is distinct from the enablement and best
mode requirements, serves 'to ensure that the inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later claimed by him.'" In re Alton, 76 F.3d
1168, 1172 (Fed. Cir. 1996) (quoting In re Wertheim, 541F.2d257, 262 (C.C.P.A. 1976)).
Under the written description requirement, the patent specification must '"describe an
invention understandable to that skilled artisan and show that the inventor actually invented the
invention claimed."' Petito v. Puritan's Pride, Inc., 35 F. Supp. 3d 494, 512 (S.D.N.Y. 2014)
(Engelmayer, J.) (quotingAriad Pharm., Inc., 598 F.3d at 1351). A patent applicant complies
with the written description requirement of 35 U.S.C. § 112 "'by describing the invention, with
all its claimed limitations, not that which makes it obvious,' and by using 'such descriptive
means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed
invention."' Glaxo Wellcome, Inc., 2003 WL 22004874 at *2 (citing Regents of the Univ. of Cal.

v. Eli Lilly, 119 F.3d 1559, 1566 (Fed. Cir. 1997) (quoting Lockwoodv. Am. Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997)). Broad and generic descriptions of an invention's boundaries
are not sufficient to satisfy the written description requirement. Petito, 3 5 F. Supp. 3d at 512.
"Determining whether the written description requirement has been met involves
examining what an ordinarily skilled artisan would have known at the time the patent was filed."

Scanner Techs. Corp. v. !cos Vision Sys. Corp., NV., 253 F. Supp. 2d 624, 633 (S.D.N.Y. 2003)
14

(Chin, J.), adhered to on reconsideration, OO-CV-4992, 2003 WL 1961565 (S.D.N.Y. Apr. 28,
2003). [A] court must conduct an objective inquiry into the four comers of the specification
from the perspective of a person of ordinary skill in the art." In re OxyContin Antitrust Litig.,
994 F. Supp. 2d 367, 382 (S.D.N.Y. 2014) (Stein, J.) (internal quotation marks and citations
omitted) The party challenging validity must prove invalidity based on insufficient written
description, otherwise known as lack of enablement, by clear and convincing evidence. Johns
Hopkins Univ. v. Cel!Pro, Inc., 152 F.3d 1342, 1359 (Fed. Cir. 1998)

Defendants argue Claims 1 and 5 of the '434 Patent are invalid for failing to meet the
written description requirement because the 11 milliamp test pulse current limitation of Claim 1
did not appear in any of the materials Plaintiff submitted to the USPTO, such as the Patent
Application, until the final amendment submitted by Plaintiff. Ds' Post-Trial Br. at Conclusions
of Law~ 1O; see also Third Amendment at 1. Defendants also argue invalidity on the same
grounds because "the 11 milliamp test pulse current limitation in Claim 1 is meaningless without
any reference to the size of the battery[.]" Id.

at~

11.

Defendants, however, have not met their burden to establish invalidity based on
insufficient written description by clear and convincing evidence. First, Defendants have not set
forth any evidence to establish "what an ordinarily skilled artisan would have known at the time
the patent was filed." Scanner Techs. Corp., 253 F. Supp. 2d at 633. Specifically, Defendants
have not established whether or not one skilled in the art could "conclude that the inventor
invented the claimed invention as of the filing date sought." In re Alonso, 545 F.3d 1015, 1019
(Fed. Cir. 2008) (internal quotation marks and citations omitted). For example, as to the first
issue -- the fact that the 11 milliamp test pulse current limitation of Claim 1 did not appear until
the final amendment submitted by Plaintiff -- Defendants have failed to provide any evidence or

15

testimony that an ordinarily skilled artisan would have been unable to conclude that the
specification would cover an upper limit of 11 mA for the test pulse current.
Defendants fail to do the same with respect to the second issue -- the fact that the 11
milliamp test pulse current limitation in Claim 1 is meaningless without any reference to the size
of the battery. See Ds' Post-Trial Br. at Conclusions of Law~ 11. To the contrary, the
specification of the '434 Patent details and specifically states a life of twenty-five years can be
achieved with C-size cells powering a smoke detector. See '434 Patent at col. 3 ln. 58-61.
Because Defendants provide no evidence that the written description is insufficient to be
understandable by a person of ordinary skill in the art, the Court finds the '434 Patent is not
invalid for failure to meet the written description requirement.
C. Unenforceability Based on Inequitable Conduct

Lastly, Defendants attack the '434 Patent as unenforceable based on Plaintiffs
inequitable conduct. Ds' Post-Trial Br. at Conclusions of Law~~ 12-15. Defendants claim
Plaintiff engaged in inequitable conduct based on the following: (1) "[t]he '434 Patent issued
solely as a result of Plaintiff amending the claims to limit the magnitude of the test pulse current;
as a result, prior commercially available smoke alarms that had test pulse currents that already
fell within the limited claimed test pulse current ranges were clearly material to patentability[;]"
(2) "[b ]ecause Plaintiff was and is a registered patent attorney and knew of his affirmative duty
of candor to the USPTO, intent to defraud the USPTO may be inferred from the evidence[;]" and
(3) "Plaintiff deliberately withheld information he knew to be material to patentability from the
USPTO and failed to properly disclose [the] same during prosecution of the [P]atent
[A]pplication. Plaintiff violated his duty of candor to the US PTO [and] committed fraud on the
USPTO[.]" Id.

at~~

12-14 Defendants' argument is meritless.

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To find a patent unenforceable based on inequitable conduct, the Court must find the
patent applicant intended to deceive the USPTO. In re OxyContin Antitrust Litig., 530 F. Supp.
2d 554, 560 (S.D.N.Y. 2008) (Stein, J.). As the Federal Circuit has explained:
Because direct evidence of deceptive intent is rare, a district court may infer intent
from indirect and circumstantial evidence. However, to meet the clear and
convincing evidence standard, the specific intent to deceive must be the single
most reasonable inference able to be drawn from the evidence. Indeed, the
evidence must be sufficient to require a finding of deceitful intent in the light of
all the circumstances. Hence, when there are multiple reasonable inferences that
may be drawn, intent to deceive cannot be found.

Therasense, Inc. v. Becton, Dickinson & Co., 648 F.3d 1276, 1290-91 (Fed. Cir. 2011) (internal
quotation marks and citations omitted; emphasis in original). "In a case involving nondisclosure
of information, clear and convincing evidence must show that the applicant made a deliberate

decision to withhold a known material reference." Id. at 1290 (internal quotation marks and
citation omitted; emphasis in original).
Here, however, Defendants have presented no evidence that Plaintiff acted with intent to
deceive. For example, while Defendants claim that intent to defraud the USPTO can be inferred
from the evidence, simply stating intent to defraud can be inferred because Plaintiff was a
registered patent attorney is not sufficient to meet the clear and convincing standard. In any
event, Plaintiff has presented evidence to suggest that he was a patent agent, not a patent
attorney, at the time the patent application was filed. See P's Opp. at Conclusions of Law,, 915. As such, there is a "reasonable inference to be drawn from the evidence as to [Plaintiffs]
intent other than deceptiveness." Metso Minerals, Inc. v. Powerscreen Int 'l Distribution Ltd.,
833 F. Supp. 2d 321, 332 (E.D.N.Y. 2011) (Spatt, J.). Accordingly, Defendants have not
sufficiently met the requisite clear and convincing standard for the intent to deceive element for

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s/WFK