Serby v. First Alert, Inc. et al

Filing 72

DECISION AND ORDER: Defendants' motion for summary judgment based oninvalidity is DENIED. Defendants' motion for summary judgment based on literal noninfringement is DENIED with respect to Claims 1 and 5 of the '434 Patent. Defendants& #039; motion for summary judgment based on literal non-infringement is GRANTED with respect to Claims 6 and 10 of the '434 Patent. Defendants' motion for summary judgment based on the doctrine of equivalents is DENIED with respect to Claims 6 and 10 of the '434 Patent. Ordered by Judge William F. Kuntz, II on 3/3/2015. (Brucella, Michelle)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK

----------------------------------------------------------------)(
VICTORM. SERBY,

DECISION AND ORDER
Plaintiff,
09-CV-4229 (WFK) (VMS)
-against-

FIRST ALERT, INC. and BRK BRANDS, INC.,
Defendants.

----------------------------------------------------------------)(
WILLIAM F. KUNTZ, II, United States District Judge
Victor M. Serby ("Plaintiff'), an attorney proceeding prose, brought this action in the
Supreme Court of the State ofNew 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. Currently before the Court is
Defendants' motion for summary judgment of patent invalidity and non-infringement pursuant
to Rule 56 of the Federal Rules of Civil Procedure. For the reasons that follow, Defendants'
motion for summary judgment based on invalidity is DENIED. Defendants' motion for
summary judgment based on non-infringement is GRANTED IN PART and DENIED IN
PART.

BACKGROUND
The following facts are either undisputed or described in the light most favorable to
Plaintiff, the non-moving party. See Capobianco v. City of New York, 422 F.3d 47, 50 n.l (2d
Cir. 2005). Plaintiff is the owner of U.S. Patent No. 5,444,434 ("the '434 Patent"), entitled
"Extended Life Smoke Detector." Dkt. 68 (Counterstatement of Material Facts [Local Rule
56.l(b)] ("CMF"))

at~

2; Dkt. 61 (Deel. of Barry E. Negrin in Support of Defendants' Motion

for Summary Judgment ("Negrin Deel.")), Ex. A. BRK is a manufacturer and distributor of

home safety and security products, including smoke detectors. Defendant First Alert is the
parent company of Defendant BRK. Serby v. First Alert, Inc., et al., 09-cv-4229, 2011 WL
4464494, at *1 (E.D.N.Y. Sept. 26, 2011) (Mauskopf, J.). BRK sells its products under the
"First Alert" brand name. Id.

1995 Action and Settlement
In 1995, Plaintiff brought an action in the Eastern District of New York (the "1995
Action") alleging, inter alia, that Defendants' SAlOYR model smoke detector infringed the
'434 Patent. CMF at i-1 3. Defendants filed an answer to the 1995 Action and interposed
various affirmative defenses, including: (1) they had not infringed the '434 Patent; (2) the '434
Patent was invalid and unenforceable because it failed to satisfy the conditions of patentability
and failed to comply with the requirements of Title 35 of the United States Code; (3) the '434
Patent was unenforceable due to Plaintiffs inequitable conduct; (4) Plaintiff was not entitled to
enhanced damages because any infringement was neither willful, deliberate, nor intentional;
and (5) Plaintiffs conduct entitled Defendants to an award of attorneys' fees. Dkt. 1 ("Notice
of Removal") at 27-32 ("Defs' Answer in the 1995 Action"). Defendants also asserted a
counterclaim for a declaration of patent non-infringement and invalidity. Id.
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
1995 Action. CMF at iJ 4; Negrin Deel., Ex. B. Under the Settlement Agreement, Defendants
were required to pay Plaintiff a 5% royalty on Defendants' "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." Negrin Deel., Ex.Bat iJ4. As a
result, Defendants began paying royalties due to Plaintiff under the Settlement Agreement,

2

which included the payment of royalties in connection with the sales of the SAlOYR model
smoke detector. CMF

at~

6.

Current Dispute over the '434 Patent
Defendants made royalty payments under the Settlement Agreement until 2008.
Compl., at~ 13. At that point, Defendants claim to have ceased the production and sale of the
SAlOYR model smoke detector in response to changed industry standards and claim to have
replaced the SAIOYR model with the SA340 smoke detector model. CMF at~~ 7-8, 10.
Plaintiff claims that Defendants were nonetheless required to pay him royalties on the SA340
smoke detector model under the terms of the Settlement Agreement. CMF at ii 11.
In August 2009, Plaintiff filed this action for breach of the Settlement Agreement in the
Supreme Court of the State ofNew York, Kings County, alleging that Defendants failed to
make the appropriate payments under Paragraph 4 of the Settlement Agreement and seeking $5
million in damages. Compl., at ~ii 13, 18. Defendants removed the action to this Court
pursuant to 28 U.S.C. § 1446(b) on the basis of diversity jurisdiction under 28 U.S.C. § 1332.
Notice of Removal, at ii 5. After removing, Defendants filed an answer which alleged various
affirmative defenses, including, inter alia: (1) the complaint fails to state a cause of action; (2)
Plaintiff breached the Settlement Agreement by disclosing its terms and existence without first
obtaining the prior written approval of Defendants; (3) Plaintiffs claims are barred by the
doctrines of waiver, estoppel, and/or clean hands; (4) all claims of the '434 Patent are invalid
under 35 U.S.C. § 101 because Plaintiff did not invent or discover any new and useful process
or machine, or any new and useful improvements thereof; (5) all claims of the '434 Patent are
invalid under 35 U.S.C. § 102 because, inter alia, Plaintiff is not the first inventor of the
subject matter of the '434 Patent and the invention was known or used by others before
Plaintiffs alleged invention; (5) the '434 Patent is invalid under 35 U.S.C. § 103 because the

3

;.

differences between its subject matter and prior art are obvious to a person having ordinary
skill; (6) Plaintiff failed to disclose material information that would have prevented issuance of
the '434 Patent, rendering the patent unenforceable; and (7) estoppel. Negrin Deel., Ex. V.
Defendants also counterclaimed for a declaration of unenforceability and invalidity of the '434
Patent. Id.
Presently before the Court is Defendants' motion for summary judgment to dismiss this
action based on patent invalidity and non-infringement of the '434 Patent. Specifically,
Defendants argue that there can be no breach of the Settlement Agreement because (1) Claims
1, 5, 6, and 10 of the '434 Patent are invalid as obvious in light of prior art and for failure to
meet the written description requirement, and (2) there can be no infringement because
Defendants' SA340 smoke detector model does not contain the limitations of Claims 1, 5, 6,
and 10 of the '434 Patent. As a result, Defendants argue that the SA340 smoke detector model
is not covered by the Settlement Agreement.
The Claims at issue in this instant motion (Claims 1, 5, 6, and 10) read as follow:

Claim 1 of the '434 Patent provides: 1
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. CMF at ~ 13; see also
Negrin Deel., Ex. A.

a) a lithium anode primary battery powering
said smoke detector; and

1

Because Claim 5 references Claim 1, all of the limitations of Claim 1 are incorporated into
Claim 5. CMF at~ 13.
4

b) 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. CMF at ~ 15; see also Negrin
Deel., Ex. A.

Claim 6 of the '434 Patent provides: 2

Claim 10 of the '434 Patent provides:

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. CMF at~ 19; see also Negrin Deel.,
Ex. A.

(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/SO Ch 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. CMF at~ 21; see also Negrin
Deel., Ex. A.

STANDARD OF REVIEW
Summary judgment is appropriate when the pleadings, depositions, interrogatories,
admissions, and affidavits demonstrate that there are no genuine issues of material fact in
dispute and that one party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56;

Celotex Corp. v. Catrett, 4 77 U.S. 317, 322-23 (1986). A genuine issue of material fact exists

2

Because Claim 10 references Claim 6, all of the limitations of Claim 6 are incorporated into
Claim 10. CMF at~ 19.

5

"if the evidence is such that a reasonable jury could return a verdict for the nonmoving party."

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
On a motion for summary judgment,"[t]he role of the court is not to resolve disputed
issues of fact but to assess whether there are any factual issues to be tried. In determining
whether summary judgment is appropriate, this Court will construe the facts in the light most
favorable to the non-moving party and must resolve all ambiguities and draw all reasonable
inferences against the movant." Brodv. Omya, Inc., 653 F.3d 156, 164 (2d Cir. 2011) (internal
quotation marks and citations omitted). Once the movant has demonstrated that no genuine
issue of material fact exists, then "the nonmoving party must come forward with 'specific facts
showing that there is a genuine issue for trial."' Matsushita Electric Indus. Co., Ltd. v. Zenith

Radio Corp., 475 U.S. 574, 587 (1986) (quoting Fed. R. Civ. P. 56(e)) (emphasis in original).
The non-moving party must present "concrete evidence from which a reasonable juror could
return a verdict in his favor." Anderson, 477 U.S. at 256.
Ordinarily, the complaint of a prose plaintiff must be liberally construed and held to a
less rigorous standard ofreview than pleadings drafted by an attorney. Serby, 2011 WL
4464494, at *3 (citing Hughes v. Rowe, 449 U.S. 5, 9 (1980)). However, this Court has already
determined that because "[P]laintiff is an experienced attorney licensed to practice in this
Court, as well as the Southern District of New York, the District of New Jersey, the District of
Connecticut, the Court of Appeals for the Federal Circuit, and the Second Circuit Court of
Appeals[,]" he is not entitled to such special consideration. Id. (internal citations omitted).
ANALYSIS
I.

Res Judicata and Collateral Estoppel
We turn first to the question of whether res judicata and/or collateral estoppel bars

Defendants from attacking the validity and enforceability of the '434 Patent because if either

6

does, there is no need to determine the issues of validity and non-infringement. Plaintiff argues
that Defendants are barred from re litigating many of the defenses and counterclaims regarding
patent invalidity and unenforceability because "the same patent and affirmative defenses and
counterclaims presented in the instant litigation were at issue in the [1995 Action], and there
were identical parties." Dkt. 67 ("Opp. Br.") at 1 (emphasis in the original). Plaintiffs
position is incorrect as this issue has previously been resolved by the Court.
In June 2012, Plaintiff filed a motion for summary judgment to strike Defendants'
counterclaims and affirmative defenses claiming that such counterclaims and defenses were
barred by res judicata, collateral estoppel, and contractual estoppel because they were litigated
in the 1995 Action when that action concluded with a Rule 41 dismissal. Dkt. 43-45. On
March 28, 2013, this Court denied Plaintiffs motion in its entirety and held that "Defendants'
affirmative defenses and counterclaims are not barred by res judicata, collateral estoppel, or
contractual estoppel." Dkt. 46.
To briefly summarize, with respect to res judicata, this Court found the doctrine
inappropriate at the summary judgment phase because there was a genuine issue of material
fact as to whether the same claim was litigated in the 1995 Action as this current action.
Specifically, this Court stated that "there is a genuine issue of material fact whether
Defendants' SA340 model smoke alarm is essentially the same as the SAlOYR model smoke
alarm that was the subject of the 1995 lawsuit." Serby v. First Alert, Inc., 934 F. Supp. 2d 506,
513 (E.D.N. Y. 2013) (Kuntz, J. ). This Court also found that collateral estoppel did not apply
because "[i]n this case, the 1995 Action ended in a settlement agreement and a Rule 41
dismissal with prejudice. The issues raised in Defendants' affirmative defenses and
counterclaims, including the validity of Plaintiffs '434 Patent, were therefore never actually

7

litigated, nor was there any final judgment on them. Consequently, collateral estoppel does not
bar Defendants from relitigating these issues." Id. at 514. Lastly, this Court held that
contractual estoppel also did not apply because the language of waiver regarding invalidity and
non-infringement in the Settlement Agreement was not clear and obvious. Id. at 515. As a
result, Defendants' instant motion is not barred by either res judicata, collateral estoppel, or
contractual estoppel.
II.

Validity ofthe '434 Patent

We next turn to the issue of validity because ifthe '434 Patent is invalid, this Court
need not reach the issue of non-infringement. Defendants attack the validity of the '434 Patent
on two grounds. First, Defendants argue that Claims 1, 5, 6, and 10 of the '434 Patent are
invalid as obvious in light of prior art. Second, Defendants argue that Claims 1, 5, 6, and 10 of
the '434 Patent are invalid for failure to meet the written description requirement set forth in 35
USC§ 112. For the reasons set forth below, the Court finds that summary judgment based on
invalidity is inappropriate at this stage.
a. Invalidity Based on Prior Art.
When considering a motion for summary judgment, the Court must take into
consideration the evidentiary standard of proof that pertains to the trial on the merits.
"Because patents are presumed valid, a moving party seeking to invalidate a patent at summary
judgment must submit such clear and convincing evidence of facts underlying invalidity that
no reasonable jury could find otherwise." TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1340
(Fed. Cir. 2010) (internal quotation and citation 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 quotations, citations, and brackets omitted).
8

A patent is invalid "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 of law based on
underlying facts. See TriMed, Inc., 608 F .3d at 1341. 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.
Deutschland KG v. CH 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. v. Guidant Corp.,
412 F. Supp. 2d 301, 313 (S.D.N.Y. 2005) (Scheindlin, J.) (internal citations, quotations, and
brackets omitted).
"Summary judgment of obviousness is appropriate if 'the content of the prior art, the
scope of the patent claim, and the level of ordinary skill in the art are not in material dispute,
and the obviousness of the claim is apparent in light of these factors."' TriMed, Inc., 608 F .3d
at 1341 (quoting KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007)); see also Plew v. Ltd.
Brands, Inc., 729 F. Supp. 2d 629, 633-34 (S.D.N.Y. 2010) (Swain, J.) ("In determining a

motion for summary judgment of invalidity premised on obviousness, the Court examines
whether there is a material dispute as to one of these primary factors that will make a
difference in the final determination of obviousness.") (internal citation omitted).

9

Here, Defendants argue that Claims 1, 5, 6, and 10 of the '434 Patent are invalid as
obvious in light of the Sullivan patent, Prior Smoke Detectors, and the Linden Battery
Handbook (1984). Additionally, Defendants argue that even if prior art did not teach the
subject matter claimed in Claims 1, 5, 6, and 10, its characteristics would have been obvious to
try. Based on the record presented to this Court, there are genuine issues of material fact
regarding the scope and content of the prior art and the determination of obviousness that
preclude summary judgment.
i. The Scope and Content of the Prior Art

There are genuine issues of material fact regarding the scope of prior art and its
relationship to the '4 34 Patent because Plaintiff and Defendants offer reasonable alternative
and conflicting arguments as to the correct interpretation of the prior art. See Alloc, Inc. v.
Norman D. Lifton Co., 653 F. Supp. 2d 469, 478 (S.D.N.Y. 2009) (Crotty, J.) ("A court should

not grant summary judgment on invalidity where the parties present reasonable alternative
arguments as to the correct interpretation of the prior art.") (citing Cooper v. Ford Motor Co.,
748 F.2d 677, 679-80 (Fed.Cir.1984)).
Sullivan Patent

Claim 1 of the '434 Patent states a limitation for "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." Claim 6 of the '434 Patent states a limitation for "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."
Defendants argue that these limitations are taught by the Sullivan patent because the
Sullivan patent also "expressly teaches the claims 'means for providing a periodic pulse current

10

to said battery."' Dkt. 66 ("Defs' Motion for Summary Judgment") at 29. Specifically,
Defendants claim that "Claims 4 and 5 of [the] Sullivan [patent] both recite a higher current
level that is approximately 10 times the predetermined background current level. The
background current in Sullivan is 0.01 mA [],thus making the periodic pulse current 0.1 mA
(which is between zero and 11 mA)." Id. at 38. As a result, according to Defendants, the
Sullivan patent teaches a pulse current falling within the range of zero to about 11 mA exactly what Claims 1 and 6 of the '434 Patent teach.
On the contrary, Plaintiff argues that the Sullivan patent teaches away from Claims 1
and 6 of the '434 Patent. Plaintiff asserts that, "Sullivan teaches away from using a reduced
test pulse current as claimed in the '434 Patent and in fact contemplates a test pulse current of
150 mA which will cause the lithium anode primary cell to suffer greatly reduced life in a
smoke detector application." CMF

at~

36 (emphasis in the original). As a result, Plaintiff

argues, Sullivan could not teach Claims 1 and 6 because it teaches a test pulse current of 150
mA -a test pulse current outside the range of zero to about 11 mA.
Because there are genuine issues of fact regarding the scope of what the Sullivan patent
teaches (i.e. does it teach away, does it fall within a test pulse current range of zero to about 11
mA, or does it fall outside that range), summary judgment for invalidity based on prior art in
light of the Sullivan patent is inappropriate. See e.g., Andersen Corp. v. Pella Corp., 300 F.
App'x 893, 898-99 (Fed. Cir. 2008) (summary judgment inappropriate where parties raised a
genuine issue of material fact as to whether the prior art taught away).

Prior Smoke Detectors
Defendants also argue that a test pulse "falling within the range of zero to about 11
mA" was taught by prior smoke detectors examined by Plaintiff and not considered by the

11

Patent office. Defs' Motion for Summary Judgment at 30. Specifically, Defendants state that
"the Family Guard 777, First Alert SA67D, the First Alert 83R, and the First Alert SA301 all
pre-date Plaintiffs patent and all had test pulse currents under 11 mA." Id. (emphasis in the
original).
In contrast, Plaintiff presents evidence that "[p ]rior art smoke detectors indiscriminately
used test pulse currents ranging from about 8 mA all the way up to about 150 mA. The
magnitude of the test pulse current did not appreciably affect battery life when used with
carbon zinc and alkaline chemistry batteries. In contrast, all lithium anode primary cells,
useful in smoke detector applications form a passivation layer on the lithium anode (some
more than others). Without this passivation layer, the self-discharge rate of the cells becomes
too great and the battery will not last long enough to be an extended life smoke detector ...
Neither Sullivan nor anybody else ... realized that the test pulse current must be limited in
magnitude to ensure longevity in lithium anode primary cell applications." CMF

at~

38. As a

result, according to Plaintiff, while prior smoke detectors may have had test pulse currents
ranging from 8 mA to 150 mA, a range that considers 11 mA, the prior smoke detectors
provide no teachings with respect to how the magnitude of the test pulse current would affect
the battery life of lithium anode primary cells as opposed to carbon zinc and alkaline chemistry
batteries.
Given these conflicting interpretations, there is a genuine dispute as to the scope and
content of what prior smoke detectors teach (i.e. do they consider the magnitude of test pulse
currents on the battery life of lithium anode primary cells). As a result, summary judgment for
invalidity based on prior smoke detectors is inappropriate.

12

Linden Battery Handbook (1984)

The '434 Patent makes reference to protecting the passivation layer of the lithium
thionyl chloride batteries by reducing the pulse current of the smoke detector to match the
battery characteristics. CMF at,-[ 24. Defendants argue that this technique was already taught
eight years prior to Plaintiff filing his patent application by David Linden's Handbook of
Batteries and Fuel Cells. Specifically, Defendants claim that "[a]ccording to the 1984
Handbook of Batteries by David Linden[], at the time the '434 Patent was filed, it was already
well known how to eliminate a lithium thinly chloride cell's passivation layer by applying a
high pulse current." Defs' Motion for Summary Judgment at 31 (emphasis in the original).
Defendants go on to therefore state that "if one wanted not to eliminate the passivation layer,
one would not apply a high pulse current." Id. (emphasis in the original). Essentially,
Defendants' argument is that because Linden taught that a higher pulse current meant
eliminating the passivation layer, it would automatically teach the converse that a lower pulse
current meant protecting the passivation layer without explicitly stating so.
Based on this characterization of Linden, Defendants have not met their burden on
summary judgment to establish by clear and convincing evidence that the '434 Patent is
invalid. See e.g., TriMed, Inc., 608 F. 3d at 1340 ("[A] moving party seeking to invalidate a
patent at summary judgment must submit such clear and convincing evidence of facts
underlying invalidity that no reasonable jury could find otherwise."). It is not sufficient for
Defendants to establish clear and convincing evidence by stating that because Linden teaches
that a high pulse current equates with the likelihood of eliminating the passivation layer, a low
pulse current automatically equates with protecting the passivation layer without stating
anything more besides the fact that this is "basic high school physics." Defs' Motion for

13

.

'

Summary Judgment at 32. Moreover, Linden is silent and provides no guidance as to a range
of test pulse currents necessary to protect (as opposed to eliminate) the passivation layer. For
example, Linden does not teach us anything about an appropriate test pulse current range to
protect the passivation layer such that it could be prior art for purposes of the '434 Patent (i.e.
Linden is silent on whether the appropriate test pulse current range would be zero to 100 mA or
zero to 50 mA or even zero to 15 mA to protect the passivation layer). As such, because
Defendants have not shown by clear and convincing evidence how Linden teaches that one
could preserve the passivation layer by applying a lower pulse current, summary judgment at
this stage is inappropriate.
ii. Obvious to Try

Defendants attempt to circumvent these genuine issues of material fact by suggesting
that the claimed subject matter (i.e. a test pulse current range of 11 mA) would have been
obvious to try. Specifically, Defendants argue that "Plaintiff did not invent a new method of
detecting battery voltage levels. He merely took a known method (applying a test pulse
current) and applied it at a known level (10 mA or fewer) on a known battery (lithium thionyl
chloride cells) to avoid a known problem (removing the lithium thionyl chloride cells'
passivation layer." Id. at 33 (emphasis in the original). According to Defendants, a person of
ordinary skill in the art would not have needed to explore new technologies or vary the
parameters because a limited number of solutions would have led to the anticipated success.
Id. As such, Defendants assert that "[t]his is basic engineering, not invention." Id.

As explained in Perfect Web Technologies, Inc. v. lnfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009), an obviousness analysis "may include recourse to logic, judgment, and
common sense available to the person of ordinary skill that do not necessarily require

14

explication in any reference or expert opinion." However, on summary judgment, "there must
be some articulated reasoning with some rational underpinning to support the legal conclusion
of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Here, Defendants do no
more than merely state that the invention is logical. But "[m]erely saying that an invention is a
logical, commonsense solution to a known problem does not make it so." TriMed, Inc., 608
F.3dat 1343.
Moreover, as established above, genuine issues of material fact remain as to whether a
known method (applying a test pulse current) at a known level (10 mA or fewer) was taught.
Therefore, it is not clear why one of ordinary skill in the art at the time of the invention would
have "[taken] a known method (applying a test pulse current) and applied it at a known level
(10 mA or fewer) on a known battery (lithium thionyl chloride cells) to avoid a known problem
(removing the lithium thionyl chloride cells' passivation layer." Defs' Motion for Summary
Judgment at 33 (emphasis in the original). As a result, summary judgment on this issue is
inappropriate.
b. Invalidity Based on Failure to Meet Written Description Requirement.

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)). "Each case
involving the written description requirement of Section 112 must be decided on its own facts."
Id. (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 1991)). As such, the

written description requirement is a question of fact that is "amenable to summary judgment in
cases where no reasonable fact finder could return a verdict for the non-moving party."
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008).
15

'·

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."
35 U.S.C. § 112(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, 541 F.2d
257, 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 Well come, 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 Lockwood v. Am. Airlines, Inc.,

16

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, 35 F. Supp.
3d at 512.
Here, Defendants argue that the '434 Patent is invalid for failure to meet the written
description requirement of 35 U.S.C. § 112 because it fails to make a complete disclosure of
the invention "of said pulse current falling within the range of zero to about 11 mA" as recited
in Claim 1. Defs' Motion for Summary Judgment at 41. Defendants claim that because this
upper limit on test pulse current of 11 mA was nowhere mentioned in the originally filed
specification, nor in the first two amendments filed by Plaintiff with the United States Patent
and Trademark Office, Claim 1 clearly fails the written description requirement. See id. at 4142. According to Defendants, it was not until Plaintiffs final amendment of January 1995 did
Plaintiff mention an 11 mA test pulse current upper limit. CMF

at~

18.

After reviewing the evidence in the record, the Court concludes that Defendants have
not met their burden to establish by clear and convincing evidence invalidity based on
insufficient written description such that summary judgment would be appropriate. See Johns
Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1359 (Fed. Cir. 1998) (stating that the party
challenging validity must prove invalidity by clear and convincing evidence). While it is true
that the originally filed specification makes no mention of the 11 mA test pulse current upper
limit, "[d]etermining 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 Technologies Corp. v. leas Vision Sys. Corp., NV, 253 F. Supp. 2d 624, 633
(S.D.N.Y. 2003) (Chin, J.), adhered to on reconsideration, No. 00 CIV. 4992, 2003 WL
1961565 (S.D.N.Y. Apr. 28, 2003).

17

Here, Defendants have not set forth any evidence to establish "what an ordinarily
skilled artisan would have known at the time the patent was filed." Id. 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 citations and quotations omitted). For example, there is
nothing in the record to suggest that an ordinarily skilled artisan would be unable to conclude
that the specification would cover an upper limit of 11 mA for the test pulse current.
In any event, summary judgment is also inappropriate because a reasonable trier of fact
could conclude that the specification contains sufficient language to satisfy the written
description requirement. The specification states "[t]he improvement [of the invention] in its
basic form comprises a lithium anode primary cell or a series connection of lithium anode
primary cells to power the smoke detector. The low battery alarm voltage threshold set-point
and the magnitude of the battery test current pulse is adjusted to optimize battery capacity
utilization. The improvement is also a new use of lithium anode primary cells to power smoke
detectors." Negrin Deel., Ex.Fat DOOOl 17. The specification goes on to state "[i]n a typical
AA cell having about 14 square centimeters of anode area, the low battery test pulse current
should be under about 5mA and preferably under about lmA to prevent excessive self
discharge. In cells having the same chemistry, the magnitude of the low battery test pulse
current should be proportional to the anode area of the cell to maintain the same anode current
density. Large capacity cells having larger anode areas such as a C size will require
proportionally more test pulse current with respect to anode area to have the same voltage drop
characteristics." Id. at DOOO 121. Based on this description, a reasonable trier of fact could
conclude that because the specification conveys that the current must be scaled to the anode

18

area of the battery and recognizes that large capacity cells, such as a C size, will require more
test pulse than a typical AA, lithium anode primary batteries powering the invention could fall
within a range of less than lmA to greater than 5mA. See e.g., Glaxo Wellcome, Inc., 2003
WL 22004874, at *2 ( "[E]very species in a genus need not be described in order that a genus
meet the written description requirement. ... In claims involving chemical materials, generic
formulae usually indicate with specificity what the generic claims encompass .... Mention of
representative compounds encompassed by generic claim language clearly is not required by §
112 or any other provision of the statute .... In fact, the Federal Circuit has held that claimed
subject matter need not be described in haec verba in the specification for that specification to
satisfy the description requirement.") (internal quotations and citations omitted).
For the reasons stated above, summary judgment based on invalidity for failure to meet
the written description requirement is inappropriate.
III.

Non-Infringement ofthe '434 Patent
We turn next to whether the SA340 smoke detector model infringes upon Claims 1, 5,

6, and 10 of the '434 Patent because if it does not, then Defendants are not obligated to pay
Plaintiff royalties under the Settlement Agreement.
Infringement can be found in two ways. There can be literal infringement or there can
be infringement under the doctrine of equivalents. "A device literally infringes a patent, when
it embodies every limitation of the asserted claims .... Literal infringement of a claim exists
when each of the claim limitations reads on, or in other words is found in, the accused device."

British Telecomms. PLC v. Prodigy Commc 'ns Corp., 217 F. Supp. 2d 399, 402 (S.D.N.Y.
2002) (McMahon, J.) (internal citations and quotations omitted). Under the doctrine of
equivalents, infringement can be found "when there are insubstantial differences between the

19

claimed invention and the accused product. If an allegedly infringing device performs
substantially the same function as the patented invention, in substantially the same way, to
yield substantially the same result, it may infringe under the doctrine of equivalents." Id. at
402-03 (citations omitted). Regardless of"[ w]hether infringement is established literally or
under the doctrine of equivalents, every element, or its substantial equivalent, set forth in claim
must be found in the product in question." Id. at 403 (citing Pennwalt Corp. v. DurandWayland, Inc., 833 F.2d 931, 935 (Fed. Cir. 1987)).

A two-step process is required to determine whether a device infringes another's patent.
"First, the Court construes the claims to determine their scope and meaning." Id. at 402. This
first step is commonly known as claim construction. Second, the Court must "compare the
allegedly infringing device against the claims as construed to determine whether the device
embodies every limitation of the claims." Id. (citing Cybor Corp. v. FAS Techs., Inc., 138 F.3d
1448, 1454 (Fed. Cir. 1998) (en bane)).
To engage in a claim construction analysis, "[the Court] considers three sources: the
claims, the written description, and the prosecution history." Pitney Bowes, Inc. v. HewlettPackard Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999) (internal citation omitted). "Such intrinsic

evidence is the most significant source of the legally operative meaning of disputed claim
language, because the court's task is to construe the meaning of a disputed term as [it} is used
in the claim." VDP Patent, LLC v. Welch Allyn Holdings, Inc., 623 F. Supp. 2d 364, 369

(S.D.N.Y. 2007) (Lynch, J.) (internal citation and quotations omitted; emphasis in original).
Courts may also consider extrinsic evidence such as expert and inventor testimony, but "[s]uch
extrinsic evidence is less significant than the intrinsic record in determining the legally
operative meaning of claim language .... Indeed, where an analysis of the intrinsic evidence

20

alone will resolve any ambiguity in a disputed claim term, it is not merely inadvisable but also
improper to rely on extrinsic evidence. Id. (internal citations and quotations omitted). As
such, "[a] claim term should be afforded its ordinary and customary meaning, which is the
meaning that the term would have to a person of ordinary skill in the art in question at the time
of the invention reading the patent .... The question is not the inventor's private or subjective
intention, but the meaning that would be given his words by a person skilled in the art in the
context of the patent." Id. at 369-70 (internal citations and quotations omitted).
'"Summary judgment on the issue of infringement is proper when no reasonable jury
could find that every limitation recited in a properly construed claim either is or is not found in
the accused device either literally or under the doctrine of equivalents."' US. Philips Corp. v.
Iwasaki Electric Co. Ltd., 505 F.3d 1371, 1374-75 (Fed. Cir. 2007) (quoting PC Connector
Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1364 (Fed. Cir. 2005)).

Here, Defendants argue that the SA340 smoke detector model does not infringe Claims
1, 5, 6, and 10 of the '434 Patent because certain limitations within those claims are absent
from the SA340 thereby precluding a finding of infringement. Specifically, Defendants argue
that the SA340 smoke detector model does not infringe Claim 1 of the '434 Patent because the
limitation of a "lithium anode primary battery powering said smoke detector" is missing from
the SA340 smoke detector model. Defs' Motion for Summary Judgment at 48. Because all of
the limitations of Claim 1 are incorporated into Claim 5, Defendants argue that ifthe SA340
smoke detector model does not infringe upon independent Claim 1, it cannot infringe upon
dependent Claim 5. CMF at iJ 13. Defendants also argue that the SA340 smoke detector
model does not infringe Claim 6 of the '434 Patent because the following limitations are
missing from the SA340 smoke detector model: 1) a "battery comprising a series connection of

21

two [lithium thionyl chloride] primary cells," and 2) a "pulse current falling within the range of
zero to about 5 mA." Defs' Motion for Summary Judgment at 49. Because all of the
limitations of Claim 6 are incorporated into Claim 10, Defendants argue that if the SA340
smoke detector model does not infringe upon independent Claim 6, it cannot infringe upon
dependent Claim 10. CMF at ,-i 19.
a. Step 1: Claim Construction

Our first step is to determine the scope and meaning of Claims 1, 5, 6, and 10 of the
'434 Patent.
i. Claim Construction Analysis for Claims 1 and 5

Claim 1 contains the following limitation: "a lithium anode primary battery powering
said smoke detector." Defs' Motion for Summary Judgment at 48. Defendants argue that a
"lithium anode primary battery powering said smoke detector," necessarily means "a lithium
thionyl chloride primary battery." Id. at 47 (emphasis in original). Because the SA340 smoke
detector model uses lithium manganese dioxide batteries instead of lithium thionyl chloride
batteries, the SA340 smoke detector model cannot infringe Claims 1 and 5 of the '434 Patent.
Id. Plaintiff argues that the '434 Patent's interpretation of"a lithium anode primary battery" is

not limited to "lithium thionyl chloride batteries." CMF ,-i 23. To determine the scope and
meaning of "a lithium anode primary battery powering said smoke detector," we must start
with the claim language itself. See Pitney Bowes, Inc., 182 F.3d at 1305 (citing Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).

Here, the claim language is unambiguously clear that it is not limited to "a lithium
anode primary battery" that is comprised of a "lithium thionyl chloride battery" as Defendants
suggest. The claim language makes absolutely no reference to a specific lithium anode

22

chemistry or to a specific lithium anode battery. Even Defendants concede that Claim 1 "could
cover a lithium battery of any chemistry." Defs' Motion for Summary Judgment at 47.
Accordingly, the language in Claim 1 strongly militates towards construing the claim term "a
lithium anode primary battery powering said smoke detector" to refer to "a lithium anode
primary battery" that could cover a lithium battery of any chemistry. Because the claim
language itself is sufficiently clear and unambiguous to ascertain the scope and meaning of
Claim 1, we need not look any further. See, e.g., Chimie v. PPG Indus. Inc., 402 F.3d 1371,
1377 (Fed. Cir. 2005) ('"When the claim language itselflacks sufficient clarity to ascertain the
scope of the claims,' we look to the written description for guidance.") (quoting Deering
Precision Instruments, L.L.C. v. Vector Distribution Sys., Inc., 347 F.3d 1314, 1322 (Fed. Cir.

2003)); see also DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006).
In any event, the written description also supports this reading as it clearly
contemplates that "a lithium anode primary battery" would cover a lithium battery of any
chemistry as opposed to just a "lithium thionyl chloride battery." While the written description
does make reference to "lithium thionyl chloride batteries," it also takes into consideration that
other lithium anode chemistries will work with the invention by stating "[o]ther embodiments
exist where different lithium anode chemistry cells such as Li/(CF)n power the smoke
detector." Negrin Deel., Ex. A at Col. 6, lines 7-9 (U.S. Patent No. 5,444,434).
Defendants attempt to argue that the prosecution history supports their construction that
a "lithium anode primary battery powering said smoke detector" means "a lithium thionyl
chloride primary battery," by stating that "all of Plaintiffs arguments for patentability in the
prosecution history refer either to thionyl chloride expressly or to protecting passivation layer,

23

which is present in thionyl chloride batteries." Defs' Motion for Summary Judgment at 47.
However, Defendants' argument misses the mark. While prosecution history may establish
that the patentee intended to deviate from a term's ordinary meaning, there must be a clear and
unmistakable disavowal during prosecution. See Omega Eng'g, Inc., v. Raytek Corp., 334 F.3d
1314, 1325-26 (Fed. Cir. 2003) ("[F]or prosecution disclaimer to attach, our precedent requires
that the alleged disavowing actions or statements made during prosecution be both clear and
unmistakable."); see also Revlon Consumer Prods. Corp. v. The Estee Lauder Cos., Inc., OOCV-5960, 2003 WL 21751833, at* 11 (S.D.N.Y. July 30, 2003) (Peck, Mag. J.) ("[T]he
prosecution history may demonstrate that the patentee intended to deviate from a term's
ordinary and accustomed meaning, i.e., if it shows the applicant characterized the invention
using words or expressions of manifest exclusion or restriction during the administrative
proceedings before the Patent and Trademark Office.") (internal quotation marks and citations
omitted). Here, there is no evidence that Plaintiff clearly and unmistakably disclaimed that
"lithium anode primary battery powering said smoke detector" encompasses "a lithium thionyl
chloride primary battery." Therefore, the Court construes "a lithium anode primary battery
powering said smoke detector" to encompass a lithium battery of any chemistry.
ii. Claim Construction Analysis for Claims 6 and 10
Claim 6 contains the following limitations: (1) a "battery comprising a series
connection of two [lithium thionyl chloride] primary cells," and (2) a "pulse current falling
within the range of zero to about 5 mA." Defs' Motion for Summary Judgment at 49. With
respect to the first limitation, Defendants argue that a "battery comprising a series connection
of two [lithium thionyl chloride] primary cells," necessarily means "lithium thionyl chloride []
liquid cathode cells." Id. Because the SA340 smoke detector model uses "lithium manganese

24

dioxide batteries" instead of "lithium thionyl chloride cells," the SA340 smoke detector model
cannot infringe Claims 6 and 10 of the '434 Patent. Id. (emphasis omitted). Plaintiff does not
dispute this construction, but simply references this Court to the fact that "lithium manganese
dioxide cells are known to be equivalents of [lithium thionyl chloride] cells. The Model
SA 1OYR upon which about 10 years ofroyalties were paid to [Plaintiff] by the [D]efendants, is
powered by 3 lithium manganese dioxide batteries in series as is the model SA340." CMF ~
23.
Here, the claim language is unambiguously clear that it is limited to lithium thionyl
chloride liquid cathode cells. Unlike Claim 1, which stated in general "a lithium anode
primary battery," Claim 6 unequivocally specifies a specific type of lithium anode battery by
stating a "battery comprising a series connection of two [lithium thionyl chloride] primary
cells."
Moreover, although the written description takes into consideration other lithium anode
chemistries, the resulting Claim 6 only takes into consideration one type: "[lithium thionyl
chloride] primary cells." Therefore, this Court construes a "battery comprising a series
connection of two [lithium thionyl chloride] primary cells," to only cover inventions subject to
"lithium thionyl chloride cells." See, e.g., Chimie, 402 F.3d at 1377.
With respect to the second limitation of a "pulse current falling within the range of zero
to about 5 mA," the claim language is unambiguously clear that this means the claimed range
must be between zero to about 5 mA. See, e.g., id. Moreover, the parties do not dispute this
construction in their respective briefs. The parties only dispute whether the SA340 smoke
detector model falls within the range of zero to about 5 mA for purposes of infringement.

25

CMF ~ 37. As a result, this Court construes "pulse current falling within the range of zero to
about 5 mA," to encompass a claimed range between zero to about 5 mA.
b. Step 2: Infringement Application to the SA340 Smoke Detector Model
Now that the Court has construed the claims at issue, it turns next to whether the SA340
smoke detector model infringes against Claims 1, 5, 6, and 10 of the '434 Patent as construed.
i. Application of Claims 1 and 5 to the SA340 Smoke Detector Model

Defendants contend that the SA340 smoke detector model cannot literally infringe
Claim 1 of the '434 Patent because the SA340 smoke detector model "uses lithium manganese
dioxide batteries" instead oflithium thionyl chloride. Defs' Motion for Summary Judgment at
48 (emphasis omitted). Specifically, Defendants argue that "[a]lthough Claim 1 appears on its
face to recite 'a lithium anode primary battery' that could cover a lithium battery of any
chemistry, the proper interpretation of this claim limitation necessarily means 'a lithium
thionyl chloride primary battery."' Id. at 4 7 (emphasis in the original). Based on this,
Defendants' theory of non-infringement rests solely on this Court adopting Defendants'
proposed construction of Claim 1's limitation of "a lithium anode primary battery" as
encompassing only a "lithium thionyl chloride battery." However, as set forth above, the Court
has determined that Defendants' interpretation of the language in Claim 1 is incorrect.
Without providing the Court with any additional evidence, Defendants, as the moving
party, have not satisfied their burden of proof by demonstrating an absence of all genuine
issues of material fact. Nor have Defendants shown an absence of evidence to support
Plaintiff's case as the nonmoving party with respect to whether or not the SA340 smoke
detector model infringes Claim 1 of the '434 Patent. See, e.g., Conroy v. Reebok Int 'l, Ltd., 14
F.3d 1570, 1575 (Fed. Cir. 1994) ("The moving party bears the burden of demonstrating the

26

absence of genuine issues of material fact. ... The moving party, however, need not produce
evidence showing the absence of a genuine issue of material fact but rather may discharge its
burden by showing the district court that there is an absence of evidence to support the
nonmoving party's case.") (internal citations omitted). Based on the foregoing and without
anything more, Defendants are not entitled to a finding that the SA340 smoke detector model
does not literally infringe Claim 1 of the '434 Patent. Since Claim 5 is dependent upon Claim
1 and contains all the limitations of Claim 1, the same is true with respect to Claim 5 of the
'434 Patent. See, e.g., Novo Nordisk AIS v. Becton Dickinson & Co., 96 F. Supp. 2d 309, 313
(S.D.N.Y. 2000) (Jones, J.), aff'd, 304 F.3d 1216 (Fed. Cir. 2002). 3
ii. Application of Claims 6 and 10 to the SA340 Smoke Detector Model

Defendants also contend that the SA340 smoke detector model cannot literally infringe
Claim 6 of the '434 Patent because Claim 6 requires a "battery comprising a series connection
of two [lithium thionyl chloride] primary cells." Defs' Motion for Summary Judgment at 49.
Defendants argue that the SA340 smoke detector model does not contain this limitation
because the SA340 smoke detector model "uses lithium manganese dioxide [] solid cathode
cells, not lithium thionyl chloride [] liquid cathode cells." Id. (emphasis omitted). To
substantiate their argument, Defendants rely on the Declaration of Thomas B. Reddy, Ph.D.,
who states that the SA340 smoke detector model uses the typical lithium/manganese dioxide
cell. Deel. of Thomas B. Reddy, Ph.D., at ,-i 5.
Plaintiff attempts to circumvent the issue by arguing that the Declaration of Thomas B.
Reddy, Ph.D., should be excluded from evidence because "[t]here is no disclosure, whatsoever
3

Defendants have not argued for summary judgment for non-infringement of Claims 1 and 5
under the doctrine of equivalents. As a result, the Court makes no finding as to whether or not
summary judgment for non-infringement is or is not appropriate under the doctrine of
equivalents with respect to Claims 1 and 5 of the '434 Patent.

27

of Thomas B. Reddy, Ph.D.[,] as an expert, under FRCP Rule 26 or otherwise and there is no
expert report. As such, his declaration is not admissible evidence, and any part of the summary
judgment motion based upon his declaration must fail." Opp. Brief at 5.
For purposes of summary judgment, the Court will not preclude the Declaration of
Thomas B. Reddy, Ph.D., for various reasons. See Fed. R. Civ. P. 26(a)(2)(D). First, the time
for expert disclosures has yet to be determined by the Court. There has been no Court order
requiring disclosures and trial is not scheduled to begin until July 27, 2015. Id. Second, there
is nothing in the record to suggest that Plaintiff would suffer any prejudice if the Declaration of
Thomas B. Reddy, Ph.D., was not excluded nor has Plaintiff "pointed to any prejudice that
[he] suffered as a result of the [inclusion of Dr. Reddy's declaration]." Lore v. City of

Syracuse, OO-CV-1833, 2005 WL 3095506, at *4 (N.D.N.Y. Nov. 17, 2005) (Munson, J.).
Plaintiff was aware of Dr. Reddy's involvement in this action months before Defendants filed
their motion for summary judgment, and therefore had ample time to rebut Dr. Reddy's
testimony. See Reply Br. at 6. Therefore, the Declaration of Thomas B. Reddy, Ph.D., will
not be excluded at this stage.
Plaintiff has also failed to provide this Court with any evidence of literal infringement.
Plaintiff states nothing about whether the SA340 smoke detector model literally infringes
Claim 6 of the '434 Patent as construed by the Court. Instead, Plaintiff only states that
"lithium manganese dioxide cells are known to be equivalents of other lithium anode
chemistry cells including lithium thionyl chloride." CMF

at~

26 (emphasis added). Without

anything more, this is not sufficient evidence to establish a factual issue of whether literal
infringement occurred because "[t]he mere existence of a scintilla of evidence in support of the
plaintiff's position will be insufficient; there must be evidence on which the jury could

28

reasonably find for the plaintiff." Anderson, 477 U.S. at 252. No reasonable fact finder could
conclude that Defendants' SA340 smoke detector model literally infringes Claim 6 of the '434
Patent as there is no credible evidence that the SA340 smoke detector model contains the
specific limitation of having "said battery comprising a series connection of two [lithium
thionyl chloride] primary cells." Therefore, summary judgment based on the finding that the
SA340 smoke detector model does not literally infringe Claim 6 of the '434 Patent is
appropriate. See, e.g., Hydra.flow v. Enidine Inc., 907 F. Supp. 639, 648-49 (W.D.N.Y. 1995)
(Skretny, J.) ("An accused infringer is entitled to summary judgment, on the ground of noninfringement, by pointing out that the patentee failed to put forth evidence to support a finding
that a limitation of the asserted claim was met by the structure in the accused devices.")
(internal citation and quotation marks omitted). Since Claim 10 is dependent upon Claim 6
and contains all the limitations of Claim 6, the same is true with respect to Claim 10 of the
'434 Patent.
Defendants also contend that Plaintiff is estopped from raising infringement based on
the doctrine of equivalents with respect to Claims 6 and 10 of the '434 Patent because "[e]very
single argument made during the prosecution history by Plaintiff was directed to lithium
thionyl chloride cells; not one mention of lithium manganese dioxide cells is made." Defs'
Motion for Summary Judgment at 46.
This, however, is not the law with respect to estoppel under the doctrine of equivalents.
One is estopped from raising the doctrine of equivalents if "a narrowing amendment [is made]
to satisfy a requirement of the Patent Act. ... Such a narrowing amendment creates a
presumption that the patentee surrendered the territory between the original claims and the
amended claims." Chimie, 402 F.3d at 1382; see also Bai v. L & L Wings, Inc., 160 F.3d 1350,

29

1354 (Fed. Cir. 1998) ("[W]hen deciding whether summary judgment of infringement under
the doctrine of equivalents is proper, we may first determine whether prosecution history
estoppel applies, i.e., whether an aspect of the originally claimed subject matter was
surrendered by the amendment and is thus outside the range of equivalents to which the
patentee is entitled.") (emphasis in original) (internal citation omitted).
Here, no narrowing amendment exists or was added during the prosecution to avoid
prior art with respect to this limitation. See Chimie, 402 F.3d at 1382 (Patentee could not
assert infringement based on doctrine of equivalents where patentee acknowledged adding
limitation during prosecution to distinguish the claimed invention from the prior art). As a
result, Defendants cannot argue that Plaintiff is estopped from raising infringement based on
the doctrine of equivalents with respect to the limitation in Claim 6 of a "battery comprising a
series connection of two [lithium thionyl chloride]."
Because Plaintiff is not estopped from raising the doctrine of equivalents with respect
to whether the SA340 smoke detector model infringes on Claim 6's limitation of a "battery
comprising a series connection of two [lithium thionyl chloride] primary cells," the Court must
next determine whether a reasonable fact finder could find equivalence. If not, then summary
judgment is appropriate. See Enzo Biochem, Inc. v. Amersham PLC, 902 F. Supp. 2d 308, 315
(S.D.N.Y. 2012) (Sullivan, J.).
Defendants argue that no reasonable fact finder could find equivalence between lithium
thionyl chloride cells and lithium manganese dioxide cells for two reasons. First, unlike for
lithium manganese dioxide cells, there is a need to protect the passivation layer of lithium
thionyl chloride cells. Defs' Motion for Summary Judgment at 46. Second, the anode and

30

cathode of lithium manganese dioxide cells are solid and physically separated by a separator,
but lithium thionyl chloride batteries have a liquid cathode. Id.
In contrast, Plaintiff has produced sufficient evidence to suggest that a reasonable jury
could find that the SA340 smoke detector model "perform[s] substantially the same function in
substantially the same way to achieve substantially the same result[,]" as what is claimed in
Claim 6 of the '434 Patent. Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309,
1321 (Fed. Cir. 1998). For example, Plaintiff has produced evidence to suggest that lithium
manganese dioxide cells could be known equivalents of lithium thionyl chloride cells that
function in a similar way because "a passivation layer is formed in lithium manganese dioxide
chemistry cells, albeit a thinner one than in [t]hionyl chloride cells. If no passivation layer
were formed, the cells would have poor shelflife and no voltage delay. [Lithium manganese
dioxide] cells do have voltage delay albeit less than thionyl chloride cells. Calorimetric studies
have also shown the existence of a passivation layer." CMF

at~

57. Plaintiff also presents

sworn testimony that "[l]ithium manganese dioxide cells are known to be equivalents of other
lithium anode chemistry cells including lithium thionyl chloride. The Model SAlOYR upon
which about 10 years of royalties were paid to [Plaintiff] by the [D]efendants, is powered by 3
lithium manganese dioxide batteries in series, and [D]efendants recognized them as
equivalents." CMF

at~

26.

Based on the evidence presented by both Plaintiff and Defendants, a genuine issue of
material fact exists as to whether the SA340 smoke detector model infringes Claim 6 of the
'434 Patent under the doctrine of equivalents with respect to the limitation of a "battery
comprising a series connection of two [lithium thionyl chloride] primary cells." As a result,
summary judgment for non-infringement on this limitation based on the doctrine of equivalents

31

is inappropriate at this stage. Since Claim 10 is dependent upon Claim 6 and contains all the
limitations of Claim 6, the same is true with respect to Claim 10 of the '434 Patent.
Defendants also contend that the SA340 smoke detector model cannot literally infringe
Claim 6 of the '434 Patent because Claim 6 requires "a periodic pulse current to said battery,
the magnitude of said pulse current falling within the range of zero to about 5 mA." Defs'
Motion for Summary Judgment at 49. Defendants argue that the SA340 smoke detector model
does not contain this limitation because the SA340 smoke detector model "provides a test pulse
current to its battery of approximately 7.5 mA, 50% higher than the upper limit of 5 mA, much
like many smoke detectors that pre-date the filing of the '434 Patent." Defs' Motion for
Summary Judgment at 49 (emphasis in original). Because the Court has already established
that one claimed limitation from Claim 6 is missing from the SA340 smoke detector model
under the literal infringement analysis, this Court need not address this second limitation that
Defendants contend is missing from Claim 6 of the '434 Patent. See e.g., Bai, 160 F.3d at
1353 ("[A] literal infringement issue is properly decided upon summary judgment when no
genuine issue of material fact exists, in particular, when no reasonable jury could find that
every limitation recited in the properly construed claim either is or is not found in the accused

device.") (emphasis added) (internal citation omitted). Since Claim 10 is dependent upon
Claim 6 and contains all the limitations of Claim 6, the same is true with respect to Claim 10 of
the '434 Patent. However, because the same is not true under the doctrine of equivalents, the
Court must still determine whether a reasonable fact finder could find infringement of this
limitation under the doctrine of equivalents.
Defendants argue that Plaintiff is estopped from raising infringement based on the
doctrine of equivalents because "this 0-5 mA range was absent from [the] originally filed

32

Claim 5 which eventually [was] issued [as] Claim 6. Plaintiff added this limitation expressly
for the purposes of avoiding the Sullivan patent in his final amendment." Defs' Motion for
Summary Judgment at 46. Defendants' statement is incorrect. The originally filed Patent
Application clearly states that the 0-5 mA range is a limitation of originally filed Claim 5:
"The smoke detector of [C]laim 5 [which is now Claim 6] wherein said electronic circuit
further comprises 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." Negrin Deel., Ex. F at
D000127, ~ 6. Therefore, this 0-5 mA range was not absent from the originally filed Claim 5,
which eventually became issued Claim 6. As a result, Plaintiff is not estopped from raising
infringement based on the doctrine of equivalents.
Because Defendants have provided no further evidence as to why a reasonable fact
finder could not find infringement of this limitation under the doctrine of equivalents,
Defendants, as the moving party, have not met their burden of proof by demonstrating either an
absence of all genuine issues of material fact or an absence of evidence to support Plaintiffs
case as the nonmoving party. See, e.g., Conroy, 14 F.3d at 1575. Therefore, summary
judgment is inappropriate.
In sum and based on the foregoing, Defendants are entitled to summary judgment that
the SA340 smoke detector model does not literally infringe Claim 6 of the '434 Patent. Since
Claim 10 is dependent upon Claim 6 and contains all the limitations of Claim 6, the same is
true with respect to Claim 10 of the '434 Patent. Defendants, however, are not entitled to
summary judgment that the SA340 smoke detector model does not infringe Claim 6 of the '434
Patent under the doctrine of equivalents. Since Claim 10 is dependent upon Claim 6 and

33

contains all the limitations of Claim 6, the same is true with respect to Claim 10 of the '434
Patent.
IV.

Conclusion
For the reasons stated above, Defendants' motion for summary judgment based on

invalidity is DENIED. Defendants' motion for summary judgment based on literal noninfringement is DENIED with respect to Claims 1 and 5 of the '434 Patent. Defendants'
motion for summary judgment based on literal non-infringement is GRANTED with respect to
Claims 6 and 10 of the '434 Patent. Defendants' motion for summary judgment based on the
doctrine of equivalents is DENIED with respect to Claims 6 and 10 of the '434 Patent.

SO ORDERED
Dated: Brooklyn, New York
March 3 , 2015

s/WFK
HON. WILLIAM F.
United States Dis ict Judge

/

34