Packless Metal Hose, Inc. v. Extek Energy Equipment (Zhejiang) Co Ltd et al, No. 2:09-cv-00265 (E.D. Tex. Feb. 22, 2013)

Before the Court is Defendant Extek Energy Equipment (ZHEJIANG) Co. Ltd.’s (“Extek”) Motion for Summary Judgment, filed November 9, 2012 (Dkt. No. 81). Extek moves for summary judgment of non-infringement of United States Patents Nos. 5,409,057 (“the ’057 Patent”) and 5,551,504 (“the ’504 Patent”). The Court having considered the same finds that summary judgment of non-infringement should be GRANTED for the reasons set forth below.

I. Background and the Patents-in-Suit

Plaintiff Packless Metal Hose, Inc. (“Packless”) is the owner of the’057 Patent and the ’504 Patent. The ’504 Patent is a divisional of the ’057 Patent. For ease of reference, the Court will cite to the specification of the ’057 Patent. The patents-in-suit concern heat exchangers constructed with helically convoluted heat exchange elements.

In the Background of the Invention, the patentee observes that finned heat exchange elements are well known in the art for use in radiators, heat exchangers, refrigerators, and condensers. ’057 Patent, 1:14-15. For example, in an automobile radiator, the heat from the engine coolant passes from the coolant to the interior surface of the radiator and then onto the2 metal fins that extend from the body of the radiator. A fan blows air into the fins and away from the radiator.

Helically convoluted heat exchangers operate somewhat differently from a finned heat exchanger. By creating spiral-shaped channels in the walls of a metal tube, the surface area of the interior wall is increased, and the fluid passing through the tube is turbulated so that more of the fluid passing through the tube comes into contact with the wall. A tube made from metal like copper easily conducts heat through the metal from the interior wall of the tube to the exterior. By creating spiral channels in the tube, the heat spreads away more evenly and efficiently from the fluid to the wall of the tube than it would through a tube that is not helically convoluted. Methods for making helically convoluted exchangers are described in U.S. Patent Nos. 4,377,083 and 4,514,997. ’057 Patent 1:15-22.

The patents-in-suit claim improvements over the prior art. As described in the Summary of the Invention:

An embodiment of the invention relates to a multi-passage heat exchange element which includes a central first fluid passage for passage of a first fluid of a heat exchanger, a plurality of substantially helically convoluted second fluid passages for a second fluid of a heat exchanger, the second fluid passages substantially helically surrounding at least a portion of the first fluid passage, and a plurality of substantially helically convoluted first fluid passages substantially surrounding at least a portion of the second fluid passages.

The specification explains the manufacturing process for an embodiment of the improved heat exchanger element. According to the specification, the process begins by tapering the ends of a metal tube with a tapering die. The tube, with its tapered ends, is depicted in Figure 3:

3TThe tapered ttube is then ppassed into a tube corruugating die aas shown in FFigures 4-5. The die teeth are arrangeed so that whhen the tapered tube is ppassed into tthe die and the die is rootated about thee tube, the rresulting tubbe is a heliccally convoluuted heat exxchange elemment depictted in Figure 6,, a cross-secttion of whichh is shown in Figure 7:

4TThe specificaation explains that this process faacilitates thee productionn of channels 88 which latter become ppassages 5. ’057 Patentt, 21-40. AAlthough the corrugated ttube 82 showwn in Figure 7 may be used as a heat eexchange eleement, the sppecification explains thaat, preferablyy, the corrugateed tube 82 iss passed throough a reduccing die as shhown in Figuures 8 and 99. Essentially, the reducing die comprresses the tuube to reduuce its diammeter. By ddoing so, thhe channelss and corrugatiions depicteed in Figuree 7 are formmed into ppassages. ““The resultaant multi-passage element iis shown in FFIGS. 10-11.” ’057 Pateent, at 3:50-551.

Figures 10 annd 11 show aa side view aand cross-secction of an eexample of thhe improvedd heat exchangee element:

5TThe preferredd embodimennt of the heaat exchange element shoown in Figs. 10 and 11 has a central ppassage 3 thhrough whicch a first fluuid may floow, surroundded by heliically convooluted second flluid passagees 5, throughh which a seccond fluid mmay flow. Thhe fluid fromm the central first fluid passsage may be directed innto the heliccally convolluted first fluuid passagess 7 that surrround the seconnd fluid passsages. The arrangemennt of the hellically convooluted passaage improvees the efficiencyy of the heeat exchanger, and, as the results of the expperiment cited in the ppatent demonstrrate, this connfiguration aalso allows tthe elementss to be consttructed with a smaller sqquare footage oof physical hheat transfer area. ’057 PPatent at 5:444-6:27.

II. LLegal Standaards

Summary juddgment shouuld be grantted “if the mmovant shoows that there is no gennuine dispute aas to any mmaterial fact and the moovant is enttitled to juddgment as aa matter of law.” Fed. R. CCiv. P. 56(a)). “By its veery terms, thhis standard pprovides thaat the mere eexistence of some alleged ffactual dispuute betweenn the partiess will not ddefeat an ottherwise prooperly suppported motion ffor summaryy judgment; the requireement is thaat there be nno genuine issue of maaterial fact.” AAnderson v. Liberty Lobbby, Inc., 4777 U.S. 2422, 247-48 (11986). Thee substantivee law identifiess the materiaal facts, andd disputes ovver facts thaat are irrelevvant or unneecessary willl not6 defeat a motion for summary judgment. Id. at 248. A dispute about a material fact is “genuine” when the evidence is “such that a reasonable jury could return a verdict for the nonmoving party.” Id. In considering motions for summary judgment, the Court must draw all reasonable inferences in favor of the non-moving party. Id. at 255; Delta & Pine Land Co. v. Nationwide Agribusiness Ins. Co., 530 F.3d 395, 398 (5th Cir. 2008).

III. Analysis

As an initial matter, the Court considers whether Extek’s motion would resolve all patent issues. Extek contends that all of the asserted independent claims of the patents-in-suit require the following three elements:

a central first fluid passage for passage of a first fluid of a heat exchanger; a plurality of substantially helically convoluted second fluid passages for passage of a second fluid of a heat exchanger, the second fluid passages substantially surrounding at least a portion of the central passage; a plurality of substantially helically convoluted first fluid passages for passage of the first fluid of a heat exchanger, the first fluid passages substantially surrounding at least a portion of the second fluid passages.

Thus, Extek contends, a grant of summary judgment of non-infringement, based on a finding that the accused devices do not meet either the “substantially helically convoluted second fluid passages” or “substantially helically convoluted first fluid passages” elements, would dispose of the case.

Packless argues that Extek’s motion will not resolve all patent issues because asserted method claim 32, which is dependent on claim 22, does not require any of the above three elements. Claims 22 and 32 of the ’057 Patent read as follows:

22. A heat exchange element made according to the process of: passing a tube through a die which is adapted to produce substantially helical corrugations in the tube, a cross section of a corrugation comprising a head portion and a neck portion, the neck portion being thinner than the head portion; and

7passing the corrugated tube through a reduction die which is adapted to bend the corrugations to form a plurality of helically convoluted passages substantially surrounding at least a portion of a central passage in the tube. 32. The element of claim 22, further comprising an outer second fluid passage, the outer second fluid passage substantially surrounding at least a portion of the first fluid passage

’057 Patent (emphases added). Extek replies that claims 22 and 32, like the three elements cited above, ultimately require a central passage, first fluid passages, and second fluid passages. The Court agrees. As underlined above, claims 22 and 32, as well as the three elements Extek identifies, require a central passage, first fluid passages, and second fluid passages. Packless does not dispute such requirement in its sur-reply. Accordingly, a grant of summary judgment of non-infringement finding that the accused products do not meet either the “substantially helically convoluted second fluid passages” or “substantially helically convoluted first fluid passages” elements, as properly construed, would dispose of all infringement claims.

The Court next turns to whether there are any genuine issues of material facts that would warrant a trial on Packless’ infringement claims, either literally or under the doctrine of equivalents, regarding the ’057 Patent and the ’504 Patent.

a. Literal Infringement

Determining whether a product or method literally infringes a patent is a two-step process. ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1319 (Fed. Cir. 2012). First, the Court must determine the proper construction of the asserted claims, which is a matter of law. Id. Second, the finder of fact must determine whether the asserted claim, as properly construed, “reads” on the product or method. Id. In other words, “a patentee must supply sufficient evidence to prove that the accused product or process contains . . . every limitation of the properly construed claim.” Seal-Flex, Inc. v. Athletic Track and Court Const., 172 F.3d 836, 842 (Fed. Cir. 1999).

8TThe Court haas issued its constructionn of the dispputed claimm terms. (Seee Dkt. No. 101.) The partiies’ proposed constructioons of the teerms “substaantially heliccally convoluuted second fluid passages” and “substantially hellically convooluted first ffluid passagges” were grreatly disputted at the claimm construction hearing. The primary dispute was the deefinition of a “passage”” and whether the first annd second ffluid passagges must bee “distinct ffrom” the ccentral first fluid passages. (Id. at 9.) The Court concluded thhat “the passsages are diistinct from one another” and construedd the term “substantiallyy helically convoluted seecond fluid passages” too mean “muultiple elongatedd passages, distinct fromm the centrall first fluid ppassage andd the first fluuid passagess, that are substtantially hellically convooluted.” (Idd. at 11.) SSimilarly, thhe Court coonstrued the term “substanttially helically convolutted first fluiid passages”” to mean “mmultiple eloongated passsages, distinct ffrom the ceentral first ffluid passage the seconnd fluid passsages, that are substanntially helically convoluted..” (Id.)

EExtek contends that the aasserted indeependent claiims as propeerly construeed do not reaad on the accussed productss. The claimms require thhree distinct passages: aa central firstt fluid passaage, a first fluidd passage, annd a second fluid passagge. Extek arrgues that thhe accused products havee two passages, not three. In support, EExtek presennts a cross-seection view of the accused heat exchhange element:

9In other words, Exteek argues that the accussed productss do not havve either firsst or second fluid passages that are disttinct from a central first fluid passagge. Extek fuurther arguess that the acccused products do not havee passages “ssubstantiallyy surroundingg a portion oof” other passsages.

Inn response, Packless coontends that “some of thhe accused products arre not circullar in cross secction” as deppicted in Extek’s cross-ssection drawwing. (Dkt. No. 87 at 99.) Instead, some products are a “someewhat crusheed and compacted oval shape”:

(Id. at 6.) Accordinng to Packlless, the cruushed and compacted ooval shape is a result oof the manufactturing proceess. When tthe outer pippe along witth the inner helically coonvoluted piipe is bent intoo the spiraledd shape of thhe heat exchhanger, the iinner helicallly convolutted pipe beccomes crushed aand compactted. (Id. at 88-9.) It is thiis process thhat creates a “significantly narrowedd neck portion ffor the first fluid passagge, which beecomes a waay to contaiin fluid withhin the first fluid passage,”” and “resultts in the firsst fluid passaages having necks and hheads in a bboot, shoe, aand/or teardrop shape.” (Idd. at 9-10.) In support, PPackless proovides a pictture of each end of one oof the accused pproducts:

10(Id. at 9.)) Packless aargues that tthe “shape annd physical characteristiics of the firrst fluid passsage” (i.e. the nnarrowed neck portions that result inn the first fluuid passagess having neckks and heads in a boot, shooe, and/or teeardrop shappe) make thhe first fluidd passages ““distinct fromm the shapee and physical characteristiics of the ceentral fluid ppassage.” (Idd. at 10.) Sppecifically, tthe shape “fforces the fluidd within thesse [first fluiid] passagess to be distiinct in howw they travell within thee heat exchangeer” as the fluuids will haave “differennt pressure losses, differrent frictionaal rates, diffferent flow pattterns, and diffferent heat exchange chharacteristicss.” (Id. at 100-11.)

TThe Court fiirst notes thhat Packless presents noo oppositionn to Extek’ss contentionn that circular sshaped tubess do not readd on the asseerted claims. Since Packkless has failled to presennt any evidence on whetheer the circullar shaped accused prooducts meett the “substantially heliically11 convoluted second fluid passages” or “substantially helically convoluted first fluid passages” elements, the Court finds that Extek’s motion for summary judgment of non-infringement should be GRANTED with respect to any circular shaped accused products.

Packless argues only that the compacted oval shaped tubes read on the asserted claims because different pressures losses, different frictional rates, different flow patterns, and different heat exchange characteristics or certain passages constitute “distinct” passages. Such an argument flatly contradicts this Court’s claim construction ruling and is similar to arguments considered and rejected by this Court during the claim construction process. As this Court explained in its claim construction ruling:

In every discussion or illustration of “passages” in the patent, the passage is shown as a distinct, or enclosed, path through which fluid may flow. The cross-sectional depictions of the heat exchange element through the manufacturing process shows that a channel opens into a central portion of the tubing. The passages, however, are surrounded by walls on their perimeters.

(Dkt. No. 101 at 10.) A “channel” opens into a central portion of the tubing. A “passage,” on the other hand, is a distinct, or enclosed, path; it is surrounded by walls on all their perimeters. It is thus not the different pressures losses, different frictional rates, different flow patterns, and different heat exchange characteristics that create distinct passages, but the presence of an enclosure or wall surrounding all of the passages’ perimeters. Packless makes no argument and it fails to present any evidence that such an enclosure or wall exists within the accused products.

In point of fact, Packless repeatedly reasserts its claim construction argument—that this Court has rejected—that the patent does not require such a wall or enclosure. (See Dkt. No. 87 at 8-11.) In support, Packless asserts that the patents-in-suit “specifically contemplate that the first fluid in the central first fluid passage can leak to the first fluid passages during use, and vice versa.” (Id. at 11.) While this Court’s claim construction ruling acknowledged that “some fluid leakage between the passages may occur as a result of pressure differentials and the hydraulic12 efficiencyy of the passsages,” suchh potential leeakage cannoot occur as thhe result of tthe absence of an enclosuree or wall. (DDkt. No. 101 at 10-11 (cconcluding tthat, despitee some fluid leakage bettween the passaages, “the sppecification nnevertheless supports Deefendant’s aargument thaat the passagges be distinct ffrom one annother” as ddescribed aboove).) Packkless simplyy cannot deffeat an otherrwise proper suummary judggment by atttempting to recast its prrior claim coonstruction arguments wwhich this Courrt has alreadyy rejected.

Packless’ arggument that necks and heads in a boot, shoe, and/or tearrdrop shape form distinct ppassages alsoo contradictss the specificcation of thee ’057 Patennt. In distingguishing chaannels from passsages, the sspecificationn states that the “largerr head portioons 84 and the thinner neck portions 86 in the ccorrugationss 80 facilitatte productioon of channnels 88, whiich later become passages 5 in the finiished elemennt.” ’057 Paatent at 3:28--32.

In other words, largeer head portiions and thinner neck pportions facillitate channeels, not passsages. For this rreason, the CCourt found tthat Figure 77 (containingg channels, wwhich are noot “distinct” from the centrral first fluidd passage) is not an emmbodiment oof the inventtion, whereaas Figure 111 is a preferredd embodimennt. (See Dkkt. No. 101 aat 10.) By tthe same reaasoning, Pacckless’ argumments13 notwithstanding, having necks and heads in a boot, shoe, and/or teardrop shape—i.e. larger head portions and thinner neck portions—will form channels, but will not form passages. This is the undisputed reality that confronts this Court by way of Extek’s motion for summary judgment.

For the reasons cited above, the Court finds that there is not, and Packless has failed to present, any evidence from which a reasonable jury could find that the accused products meet the “substantially helically convoluted second fluid passages” or “substantially helically convoluted first fluid passages” elements as properly construed. Accordingly, Extek’s motion for summary judgment of non-infringement should be GRANTED.

b. Doctrine of Equivalents

To find infringement under the doctrine of equivalents, any differences between the claimed invention and the accused product must be insubstantial. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950). One way of proving infringement under the doctrine of equivalents is to show, for each claim limitation, that the accused product “performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product.” Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009). “Application of the doctrine of equivalents is the exception, however, not the rule, for if the public comes to believe (or fear) that the language of patent claims can never be relied on, and that the doctrine of equivalents is simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims, then claims will cease to serve their intended purpose.” Wallace London & Clemco Prods. v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991). To support a finding of infringement under the doctrine of equivalents, a patentee must provide particularized testimony and explanatory argument linking the evidence of equivalence to the14 three legal elements of function, way, and result. Tex. Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1566-67 (Fed. Cir. 1996).

The Court finds that the doctrine of equivalents should not apply here, as Packless proposes, because it would vitiate the claim elements requiring “substantially helically convoluted second fluid passages” or “substantially helically convoluted first fluid passages.” See, e.g., Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349 (Fed. Cir. 2012) (“[C]ourts properly refuse to apply the doctrine of equivalents ‘where the accused device contain[s] the antithesis of the claimed structure’ . . . [because such application] would ‘vitiate’ a claim element.”) (quoting Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n.8 (1997); Planet Bingo, LLC v. Gametech Int’l, Inc., 472 F.3d 1338, 1345 (Fed. Cir. 2006)). Packless’ only particularized testimony and linking argument supporting infringement under the doctrine of equivalents is summarized in its expert’s declaration:

The characteristics of the passages with the significantly bent necks (e.g., the shapes, leaking between the passages, and different flow parameters, pressure losses, flow times, flow rates, frictional rates, flow patterns, and heat exchange rates) make the first fluid passage substantially equivalent to the first fluid passage set forth in the asserted patents. Such difference is insubstantial. The significantly bent necks in the accused products perform substantially the same function in substantially the same way to obtain the same result as the first fluid passage in the asserted patents.

(Dkt. No. 87 Ex. 2 at ¶ 15.) Packless, in essence, repeats its arguments with respect to literal infringement that the unique shapes in the accused products form distinct passages. According to the specification and as discussed above, however, such shapes facilitate channels and not passages. See supra at 12-13 (citing ’057 Patent at 3:28-32). To therefore argue that such shapes are equivalent to the “passages” of the claimed elements would necessarily equate “passages” with “channels.”

15Such equivalence is improper under the doctrine of equivalents because the differences between channels and passages are not insubstantial. The specification and this Court’s claim construction ruling draws a marked difference between passages and channels. See supra at 12-13 (stating that Figure 7 is not an embodiment of the invention because it contains channels and not passages such as in Figure 11). Thus, the proposed application of the doctrine of equivalents—claiming infringement under the doctrine of equivalents for accused devices comprised of “channels,” but where the claim calls for “passages”—would vitiate the claim elements requiring “substantially helically convoluted second fluid passages” or “substantially helically convoluted first fluid passages.” See, e.g., Planet Bingo, 472 F.3d at 1345 (refusing to apply the doctrine where the proposed application would change “before” to “after,” which was a “marked difference”); Asyst Techs., Inc. v. Emtrak, Inc., 402 F.3d 1188 (Fed. Cir. 2005) (refusing to apply the doctrine where the proposed application would change “mounted” to “unmounted”); Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091 (Fed. Cir. 2000) (refusing to apply the doctrine where the proposed application would change “majority” to “minority”).

Accordingly, the Court finds that there is insufficient evidence for a jury to conclude that the asserted equivalence represents an insubstantial difference from the claimed elements. Extek’s motion for summary judgment of non-infringement under the doctrine of equivalents should be GRANTED.

IV. Conclusion

For the reasons stated herein, the Court finds that Extek’s motion for summary judgment of non-infringement of the ’057 and ’504 Patents should be and is hereby GRANTED in all aspects.