Plaintiff JCS (successor in interest to the original Holmes Group plaintiff) asserts infringement of Patent Nos. 6,425,932, 6,685,760, 7,041,147, and 7,276,100, directed to various configurations of replaceable air filters, against defendant RPS Products. The latter three patents are all continuations of the ‘932 patent and were added to this case at various stages. In particular the ‘147 claims appear to have been drafted with accused products in hand.
In a comprehensive decision on a number of issues, Judge Saylor effectively sides for the plaintiff across the board.
Infringement
The parties cross-moved for summary judgment on infringement, which required the court to construe new claim terms in the ‘147 patent. The court favored plaintiff’s construction (relying partially on the doctrine of claim differentiation, validating at least one of plaintiff’s strategies in prosecuting the continuation). Having sided with the plaintiff on claim construction, and with no dispute as to the operation of the accused products (the filters are what they are), the court entered summary judgment of literal infringement (and declined to address infringement under DOE).
Inequitable Conduct
Defendant alleged inequitable conduct by the plaintiff when it failed to disclose this litigation and certain happenings (including certain court orders) during prosecution of the ‘147 patent. Cross motions for summary judgment were denied due to questions of fact both on materiality (whether the litigation happenings were material is not clear cut) and intent (a classic trial issue, the level of which to prove inequitable conduct depends on materiality)
Judge Saylor denied a motion to strike defendant’s proposed inequitable conduct expert’s testimony on materiality, but granted it regarding her testimony on intent or as to the ultimate legal question of whether plaintiff engaged in inequitable conduct. A motion to preclude the testimony of the prosecuting attorneys due to late disclosure / conflicting invocation of the attorney-client privilege was denied.
Assorted Defenses
Plaintiff moved for summary judgment on a number of defenses. The court granted summary judgment on the prosecution laches defense (five to seven years between initial filing and continuation filing was not excessive), written description defense (the original and common specification sufficiently disclosed a one-leg embodiment to satisfy § 112 for the corresponding claims in the continuation), obviousness (defendant failed to articulate a level of ordinary skill in the art and failed to make a case that the invention would have been obvious to one possessing such skill), indefiniteness (the court had no problem with the term “perimeter”), and statutory-double patenting (the asserted patents differ in scope).
The court denied summary judgment on obviousness-type double patenting since it wasn’t clear whether a terminal disclaimer was properly filed.
Damages
The court declined to strike plaintiff’s claim to damages due to discovery abuses (including failure to provide a computation of damages in plaintiff’s initial disclosures and failure to supplement the same) but it did suggest that the defendant propose an alternate sanction, such as a limited award of fees and costs.
Download Judge Saylor decision
The Holmes Group v. RPS Prods., Inc., 03-40146-FDS (D. Mass. June 25, 2010)
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