Sometimes you see a group of patents, and you just know there's a story there. The first patent will be something benign like an "apparatus for getting to stuff stuck in the back of the drawer." Then, a few years later, there's a new patent from the same inventors for "an apparatus for catching the very large spiders that are sometimes also in the back of the drawer." Some time later, their heirs will file a patent for "a system for automatically extinguishing the towering inferno resulting from the SRS (Spider Retention System)."
This brings us to last week's opinion in Evonik Ops. GmbH v. Air Prods. and Chem., Inc., C.A. No. 22-1543-JPM, D.I. 58 (D. Del. July 24, 2024). The first patent there was an elaborate system for separating gases in a mixture. One of those stages required a specific gas stream to account for less than 60% of the total stream by volume. Then, years later, they were granted a near-identical patent on a system for separating gases where that same stream had to account for more than 60% of the total volume.
The defendants moved to dismiss the direct infringement claims as to one of the patents, arguing that the system, by definition, could only infringe one or the other (i.e., the gas could either be more or less than 60%, not both).
The Court denied this portion of the motion finding that the plaintiff had sufficiently pled that the systems sold by the defendant were configurable to infringe either patent depending on how they were set up.
The Accused System could therefore recycle over 60% of the gas by volume under one set of conditions and under 60% in another. Which conditions will fulfill which mathematical result is irrelevant when, as here, the Asserted Patents collectively claim systems recycling anywhere between 0 and 100% of the crude gas stream. To hold otherwise would enable Defendants to shield themselves from liability for infringing one patent by saying they are instead infringing another.
Id. at 7-8.
The argument on contributory infringement was a bit more novel. Here the defendants argued that "Accused Products have a 'substantial noninfringing use' as to each Asserted Patent. If the Accused Products are suitable for use in an Accused System with a recycle rate of over 60% as in the ’380 Patent, they have a substantial noninfringing use in relation to the ’038 Patent." Id. at 18.
The Court, however, denied the motion to dismiss the contributory infringement claims:
Admittedly, the court in H. Lundbeck A/S v. Lupin Ltd. rejected the argument that there are no substantial noninfringing uses when such uses would infringe other patents held by the plaintiff. There, the court held that “substantial noninfringing use” in the context of U.S.C. § 271(c) refers to uses that do not infringe the patent in question, not other patents.
The reasoning for this holding reveals its limits. The court cited Sony v. Universal City Studios, where the Supreme Court noted that it “has always recognized the critical importance of not allowing the patentee to extend his monopoly beyond the limits of his specific grant.” The court in H. Lundbeck therefore concluded that to consider patents other than “those asserted against a defendant” would impermissibly expand the exclusive grant Congress provides patent holders. This is not a concern when, as here, the patents asserted against Defendants collectively claim the full range of gas recycle rates, from 0% to 100%.
Id. at 20 (internal citations omitted).
As near as I can tell, this is a case of first impression, but we'll keep you in the loop if it comes up again.
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