DCT
2:18-cv-03274
Silcotek Corp v. Entech Instruments Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SilcoTek Corporation (Pennsylvania)
- Defendant: Entech Instruments, Inc. (California)
- Plaintiff’s Counsel: The Webb Law Firm, P.C.
- Case Identification: 2:18-cv-03274, W.D. Pa., 11/20/2015
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Pennsylvania because Defendant transacts business, ships products, and maintains a commercial website accessible within the district.
- Core Dispute: Plaintiff alleges that Defendant’s corrosion-resistant gas storage vessels and related coating methods infringe a patent related to passivating interior surfaces with a multi-layered silicon coating.
- Technical Context: The technology concerns the creation of inert interior surfaces for gas storage and transfer systems, a critical process for ensuring sample purity and accuracy in fields like analytical chemistry and air quality monitoring.
- Key Procedural History: The patent-in-suit was assigned from the original assignee, Restek Corporation, to Plaintiff SilcoTek in 2009. The complaint alleges that Defendant engaged one of the patent's named inventors, a former employee of the original assignee, as a consultant to help develop the accused products. The patent was also the subject of a subsequent ex parte re-examination, which confirmed the patentability of the claims asserted in this litigation.
Case Timeline
| Date | Event |
|---|---|
| 1998-02-27 | '760 Patent Priority Date |
| 1999-02-26 | '760 Patent Application Filing Date |
| 2003-01-28 | '760 Patent Issue Date |
| 2009-04-30 | '760 Patent assigned to SilcoTek |
| 2015-11-20 | Complaint Filing Date |
| 2016-09-20 | '760 Patent Re-examination Certificate Issue Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,511,760 - "Method of Passivating a Gas Vessel or Component of a Gas Transfer System Using a Silicon Overlay Coating"
- Patent Identification: U.S. Patent No. 6,511,760, "Method of Passivating a Gas Vessel or Component of a Gas Transfer System Using a Silicon Overlay Coating," issued January 28, 2003.
The Invention Explained
- Problem Addressed: The patent’s background section describes how metal surfaces in gas storage and transfer systems can adsorb or react with certain chemical species, such as organo-sulfurs and hydrogen sulfide, which compromises the integrity of gas samples intended for analysis ('760 Patent, col. 1:28-33).
- The Patented Solution: The invention is a method for applying a protective (passivating) silicon layer to the interior of a gas vessel. The process involves multiple cycles of introducing a silicon hydride gas into a heated, evacuated vessel to decompose the gas and deposit a thin silicon sublayer. A key aspect is carefully controlling the duration of each deposition step to prevent the formation of "silicon dust," an undesirable byproduct that can compromise the coating's integrity ('760 Patent, col. 3:20-33). This cyclic process is repeated to build a cohesive, multi-layered coating that passivates the entire interior surface ('760 Patent, col. 3:40-49).
- Technical Importance: The described method allows for the creation of a highly inert surface on otherwise reactive metal components, which is critical for applications requiring high-purity storage and transfer of sensitive or corrosive gases ('760 Patent, col. 1:28-33).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a method claim) and 14 (a product claim) (Compl. ¶23).
- Independent Claim 1 (Method): The essential elements include:
- Dehydrating and evacuating the vessel's interior.
- Introducing, heating, and pressurizing a silicon hydride gas to deposit a silicon layer.
- Controlling the deposition duration to prevent the formation of silicon dust.
- Purging the vessel.
- "Cycling" these steps until the entire interior surface is covered.
- Independent Claim 14 (Product): The essential elements of the resulting vessel are:
- A metallic interior surface with an average roughness (RA) greater than about 20 microinches.
- A silicon layer formed over the entire surface.
- The silicon layer is formed from a "plurality of sublayers of silicon" and is "substantially free of silicon dust."
- The silicon layer has a thickness between 501 and 50,000 angstroms.
- The complaint's use of "at least claims 1 and 14" suggests a reservation of the right to assert other claims, including dependent claims (Compl. ¶23).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "Silonite® High Pressure Cylinders," other canisters with "Silonite®" coating, and the method used by Defendant to apply the coating (Compl. ¶¶18, 19, 21).
Functionality and Market Context
- The complaint alleges that Defendant Entech manufactures and sells canister-based air sampling and analysis equipment (Compl. ¶17). The accused Silonite® coating is applied to "stainless steel tubing, canisters, and other sampling equipment" to create corrosion-resistant gas storage vessels with passive interior surfaces (Compl. ¶¶17, 22).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges infringement of both method and product claims. The allegations for the product claim are detailed, while the allegations for the method claim are more conclusory.
- ’760 Patent Infringement Allegations (Claim 14)
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) a metallic interior surface having an average surface roughness RA; | The accused vessels have "a metallic interior surface having an average surface roughness (RA)". | ¶22 | col. 4:19-20 |
| b) a silicon layer formed over the entire interior surface, said silicon layer being formed from a plurality of sublayers of silicon which are substantially free of silicon dust; | The accused vessels have "a silicon layer formed over the entire interior surface, said silicon layer being formed from a plurality of sublayers of silicon which are substantially free of silicon dust". | ¶22 | col. 4:21-23 |
| said interior surface having an average roughness RA greater than about 20 microinches and said silicon layer having a thickness in the range of 501 to 50,000 angstroms. | The accused vessels have an "interior surface having an average roughness (RA) greater than about 20 microinches and said silicon layer having a thickness in the range of 501 to 50,000 angstroms". | ¶22 | col. 4:24-28 |
The complaint does not provide sufficient detail for analysis of the method infringement allegations against Claim 1, stating only that "Entech uses the patented method to perform the coating process" (Compl. ¶21).
Identified Points of Contention:
- Technical Questions: A primary question will be whether discovery and expert analysis can demonstrate that Entech's internal manufacturing process for its Silonite® coating includes the specific "cycling" and "controlling the duration" steps recited in method claim 1. For product claim 14, a technical dispute may arise over whether the accused products meet the specific quantitative limitations for surface roughness (>20 microinches RA) and layer thickness (501 to 50,000 angstroms).
- Scope Questions: The infringement analysis for both claims may turn on the interpretation of "substantially free of silicon dust." The dispute will likely center on what level of "dust" formation is permissible before this limitation is no longer met and what evidence is required to prove its presence or absence.
V. Key Claim Terms for Construction
The Term: "substantially free of silicon dust"
Context and Importance: This term appears in product claim 14 and is functionally tied to method claim 1's step of "controlling the duration of the silicon depositing step to prevent the formation of silicon dust." Practitioners may focus on this term because it appears to be a key feature distinguishing the patented invention from prior art processes that could result in impure or poorly-adhered coatings. Its construction will be critical to determining if the accused Silonite® products infringe.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the term relates to the functional quality of the final product, meaning the coating is not compromised in a commercially significant way, rather than requiring absolute purity. The patent does not provide a quantitative threshold for "dust."
- Evidence for a Narrower Interpretation: The specification explicitly links the absence of dust to the integrity of the coating, stating that silicon dust "will settle to the surface... and compromise the integrity of the silicon layer being formed" and "creates a physical barrier between successive layers" ('760 Patent, col. 3:28-33). This language could support an interpretation where the term requires a process that actively prevents the nucleation of silicon in the gas phase.
The Term: "cycling the vessel through steps b-g"
Context and Importance: This method step from claim 1 is the basis for the "plurality of sublayers" structure in product claim 14. Proving direct infringement of the method claim requires showing that Entech's process involves this specific iterative sequence.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: An argument could be made that any repeated application of the core deposition steps constitutes "cycling," even if minor variations exist between cycles.
- Evidence for a Narrower Interpretation: A party may argue for a strict interpretation requiring a literal, sequential repetition of all enumerated sub-steps (evacuation, gas introduction, heating/pressurizing, controlled deposition, and purging) for each cycle, as described in the specification ('760 Patent, col. 3:40-49).
VI. Other Allegations
- Indirect Infringement: The complaint focuses on allegations of direct infringement under 35 U.S.C. § 271 by "manufacturing, selling, and/or offering for sale" the accused products and using the accused method (Compl. ¶¶21, 24). It does not contain specific factual allegations to support claims of induced or contributory infringement.
- Willful Infringement: The complaint alleges that Defendant's infringement has been "willful and deliberate" (Compl. ¶26). This allegation is supported by the assertion that Defendant "specifically engaged Andy Schuyler, a named inventor of the '760 patent and a former Restek employee, as a consultant to help design and/or manufacture" the accused Silonite® products (Compl. ¶20). This fact, if proven, suggests pre-suit knowledge of the patented technology.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of process discovery: can SilcoTek obtain evidence to prove that Entech's proprietary manufacturing process for its Silonite® coating mirrors the multi-step "cycling" and "controlled duration" method required by claim 1 of the '760 patent? The outcome may depend heavily on evidence uncovered during discovery regarding Entech's internal procedures.
- A second central question will be one of structural definition: does the accused Silonite® coating, as manufactured and sold, possess a structure that is "substantially free of silicon dust" and built from a "plurality of sublayers"? The case will likely involve significant disputes over claim construction for these terms and detailed technical evidence to characterize the physical nature of the accused product.
- Finally, the allegation that Entech hired one of the patent's inventors as a consultant raises a key question of scienter: did Entech have pre-suit knowledge of the '760 patent and its specific teachings, and if so, did its continued activity constitute the kind of egregious conduct required for a finding of willful infringement?