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Osram Sylvania, Inc v. American Induction Technologies

October 28, 2011

OSRAM SYLVANIA, INC.,
PLAINTIFF,
v.
AMERICAN INDUCTION TECHNOLOGIES, INC., DEFENDANT.



The opinion of the court was delivered by: Manuel L. Real United States District Judge

FINDINGS OF FACT AND CONCLUSIONS OF LAW

FINDINGS OF FACT AND CONCLUSIONS OF LAW

On September 20-22, 2011, the Court held a bench trial on the single issue of whether the patent-in-suit, U.S. Patent No. 5,834,905 ("the '905 patent"), is unenforceable due to alleged inequitable conduct before the United States Patent and Trademark Office ("PTO"). Upon the close of evidence from the defendant and counterclaim-plaintiff, American Induction Technologies, Inc. ("AITI"), plaintiff and counterclaim-defendant, Osram Sylvania, Inc. ("OSI"), moved for Judgment on Partial Findings pursuant to Federal Rule of Civil Procedure 52(c). This Court, having considered the testimony, both live and by deposition, the documentary evidence, the applicable law, and the arguments of counsel, and having GRANTED OSI's Rule 52(c) motion, hereby makes the following Findings of Fact and Conclusions of Law pursuant to Federal Rule of Civil Procedure 52(a).

As set forth herein, the Court finds for plaintiff and counterclaim-defendant Osram Sylvania, Inc. ("OSI"), and against defendant and counterclaim-plaintiff AITI on AITI's Third Claim for Relief, and concludes that no inequitable conduct occurred during prosecution of the '905 patent and that the '905 patent is not unenforceable due to inequitable conduct.

I. FINDINGS OF FACT

A. Parties and Lawsuit

1. On March 27, 1996, OSI filed U.S. Patent Application No. 624,043 ("the '043 application" or "the '905 patent application") naming Valery Godyak, Benjamin Alexandrovich, Robert Piejak, and Eugene Statnic as inventors (collectively "the Inventors").

2. The '043 application issued on November 10, 1998 as U.S. Patent No. 5,834,905 ("the '905 patent"), entitled "High Intensity Electrodeless Low Pressure Light Source Driven by a Transformer Core Arrangement." OSI is the owner by assignment of the '905 patent.

3. On November 30, 2009, OSI brought Civil Action No. 2:09-cv-08748-RVBK against AITI, asserting infringement of the '905 patent arising out of AITI's importation, manufacture, use and/or sale of certain electrodeless induction lamps.

4. On October 5, 2010, AITI asserted the defense and counterclaim that the Inventors of the '905 patent committed inequitable conduct during prosecution of the '905 patent based on various alleged acts and omissions.

5. On February 14, 2011, the Court entered an order granting AITI's motion for summary judgment that Claim 32 of the '905 patent is invalid. On March 21, 2011, the Court found that the remaining independent claims of the '905 patent also were invalid. OSI subsequently granted AITI a covenant not to sue with regard to the dependent claims.

6. At trial, AITI attempted to prove that the Inventors committed inequitable conduct by withholding three articles from the PTO during prosecution of the application that lead to the '905 patent,*fn1 namely:

i) a 1992 article authored by three of the Inventors entitled "A Simple Analysis of an Inductive RF Discharge" (hereinafter "the Simple Analysis Article"),

ii) a 1993 article authored by three of the Inventors entitled "Electrical and Light Characteristics of RF-Inductive Fluorescent Lamps" (hereinafter "the Electrical and Light Characteristics article"), and

iii) a 1993 article by D.O. Wharmby entitled "Electrodeless Lamps for Lighting: a Review" (hereinafter "the Wharmby article" or "Wharmby").

7. AITI also argued, in its opening statement and in its opposition to OSI's Rule 52(c) motion, that the Inventors committed inequitable conduct by allegedly withholding certain information relating to a product known as the Philips QL lamp ("the Philips QL" or "QL"), by giving the '905 patent a purportedly deceptive title, by making allegedly misleading statements to the PTO during prosecution, by submitting a so-called "straw man" prior art reference for the purpose of misleading the PTO, and by concealing an alleged best mode of the invention disclosed and claimed in the '905 patent.

B. The Technology at Issue

8. The '905 patent is directed to a high intensity, electrodeless low pressure light source driven by a radio frequency ("RF") power source and a transformer core arrangement, and which yields a highly efficient and very long-lasting light source.

9. The lamps claimed in the '905 patent are of closed-loop tubular, external transformer core topology.

10. The transformer cores of the '905 patent preferably have a toroidal configuration and are preferably comprised of a ferrite material.

11. The lamps of the '905 patent operate at a preferred frequency range of 50 kHz to 3 MHz, and even more preferably at a frequency range of 100 kHz to 400 kHz.

C. Prosecution of the '905 Patent

12. One of the Inventors, Dr. Robert Piejak, testified live at trial.

13. Among the Inventors, Dr. Robert Piejak assumed the lead role during prosecution of the '905 patent. His responsibilities included preparing the initial written disclosure of the invention, identifying what he believed to be the material prior art for submission to the PTO, and interacting with OSI's in-house and outside patent counsel.

14. Dr. Piejak testified that he and at least two of the other Inventors had worked together at OSI for several years before filing for the '905 patent, and that they had applied for and were co-inventors on some earlier patents. Dr. Piejak testified to the process that the Inventors followed in applying for those earlier patents, including that he took a lead role within the group of inventors and had been responsible for preparing the initial draft application, interacting with the attorneys, and considering what prior art was material and should be submitted.

15. Dr. Piejak testified regarding the process that he and the other Inventors followed when preparing the '905 patent application and determining which prior art was material to the '905 patent. Dr. Piejak testified that they employed the same approach as they had in the past when applying for patents. Dr. Piejak testified as to the consideration he gave regarding which prior art would be material to the patentability of the '905 patent. The Court credits Dr. Piejak's testimony in this regard.

16. The Court found Dr. Piejak to be credible, composed, and forthcoming at all times during his testimony.

17. During prosecution of the '905 patent, the Inventors submitted multiple prior art references. 18. Amongst the prior art references submitted were U.S. Patent No. 3,987,334 to John Anderson ("the '334 patent"), U.S. Patent No. 3,500,118 to John Anderson ("the '118 patent"), and a 1969 article by John Anderson entitled "Electrodeless Fluorescent Lamps Excited by Solenoidal Electric Fields ("the 1969 SEF article") (collectively "the Anderson references").

19. Dr. Piejak testified that he believed the '334 patent, the '118 patent, and the 1969 SEF article to be the prior art that he considered most material to the '905 patent application.

20. Dr. Piejak testified that he believed the aforementioned Anderson references to be most material because they disclosed lamps that were very similar in structure and topology to the lamps of the '905 patent. The Court found this testimony to be credible.

21. Also submitted to the PTO were two references relating to the Philips QL lamp, namely an article by J. Schlejen entitled "Inductively Coupled Fluorescent Lamps: The QL Lighting System" (hereinafter "Schlejen"), and a 1991 article by A. Netten and C.M Verheij entitled "The Operating Principles of the Philips QL Lamp System" (hereinafter "Netten").

22. Dr. Piejak credibly testified that he believed that the Philips QL lamp was material to the '905 patent because the QL is an electrodeless induction lamp that generates a very high lumen output. Dr. Piejak believed that embodiments of the lamps disclosed in the '905 patent would achieve similarly high (or higher) lumen output. Therefore, he believed the QL prior art to be material due to the similarity in performance.

23. The Schlejen QL reference that was submitted to the PTO was undated.

24. AITI argued, in its opening statement and/or in its opposition to OSI's Rule 52(c) motion, that the Inventors committed inequitable conduct, in part, by intentionally submitting the undated Schlejen article in order to deceive the examiner.

25. The Court finds, however, that AITI presented no clear and convincing evidence that any of the Inventors knew that the Schlejen reference submitted to the PTO was undated.

26. AITI presented no clear and convincing evidence that any of the Inventors purposely submitted an undated version of the Schlejen reference with the specific intent to deceive the examiner.

27. The Court therefore finds no inequitable conduct with respect to any alleged failure to disclose information regarding the Philips QL lamp.

28. The Court finds that the submission of the aforementioned Anderson references, which were considered the closest prior art, along with the submission of two articles about the QL lamp, permit an inference that the Inventors were acting in good faith in an effort to comply with their duty of candor to the patent office.

29. Dr. Piejak credibly testified that he did not withhold any prior art from the PTO which he believed to be material during prosecution of the '905 patent.

30. Dr. Piejak testified that, at the time that he was contemplating which prior art to submit in connection with the '905 patent, he did not make any decisions with the intent to deceive the PTO. (Trial Tr. 9/21/11, A.M. Session, 8:14-9:4). The Court credits Dr. Piejak's testimony in this regard, and finds that AITI presented no no clear and convincing evidence to the contrary.

31. The Court finds that AITI presented no clear and convincing evidence that any of the Inventors ever made a deliberate decision to withhold a reference that they knew to be material during prosecution of the '905 patent.

32. The Court finds that AITI presented no clear and convincing evidence that any of the Inventors ever acted with the specific intent to deceive the ...


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