DCT
1:19-cv-00529
Mixing & Mass Transfer Tech LLC v. SPX Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mixing & Mass Transfer Technologies, LLC (Pennsylvania)
- Defendant: SPX Corporation (Delaware), SPX Flow, Inc. (Delaware), SPX Flow US, LLC (Delaware)
- Plaintiff’s Counsel: Stevens & Lee, P.C.; Kent Franchise Law Group LLP
- Case Identification: 1:19-cv-00529, D. Del., 03/18/2019
- Venue Allegations: Venue is alleged to be proper as Defendants are Delaware corporations with headquarters in states other than Delaware, and the action involves federal patent law.
- Core Dispute: Plaintiff alleges that Defendants’ surface aeration impellers infringe a patent related to efficiency improvements in impeller design, and further seeks a declaration that a patent held by Defendants is unenforceable due to alleged trade secret misappropriation and inequitable conduct.
- Technical Context: The technology concerns large-scale mechanical impellers used for surface aeration in industrial processes, particularly for oxygenating water in wastewater treatment facilities.
- Key Procedural History: The complaint details a significant pre-suit history, alleging that Plaintiff (M2T) tested its proprietary impeller designs at Defendant's (SPX) facility in 2002 under a Non-Disclosure Agreement. Plaintiff alleges SPX used this confidential information to file its own patent. The parties previously engaged in litigation that was resolved by a 2007 Settlement Agreement, the scope of which is now a central point of dispute.
Case Timeline
| Date | Event |
|---|---|
| 2002-05-22 | M2T and SPX enter Facilities Lease and Non-Disclosure Agreements. |
| 2002-12-31 | M2T begins marketing its HI-FLO™ surface aerator impellers (approx.). |
| 2003-03-03 | SPX files patent application for "Aeration Apparatus and Method." |
| 2003-06-03 | '959 Patent Priority Date (Application filed). |
| 2005-04-12 | U.S. Patent No. 6,877,959 issues. |
| 2005-04-12 | SPX allegedly begins marketing the accused Model A245 (post-issue). |
| 2005-07-31 | M2T commences "Prior Lawsuit" against SPX (approx.). |
| 2006-10-03 | SPX is awarded U.S. Patent No. 7,114,844. |
| 2007-09-13 | M2T and SPX resolve Prior Lawsuit with a Settlement Agreement. |
| 2015-01-01 | Defendants allegedly market and sell infringing Model A245 aerators. |
| 2019-03-18 | Complaint filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,877,959 - "Surface aeration impellers," issued April 12, 2005
The Invention Explained
- Problem Addressed: The patent describes how prior art surface aeration impellers suffer from hydraulic inefficiencies. A key problem identified is that a "significant quantity of liquid overflows the upper or leading edge of the blades and falls back into the impeller itself" without being effectively aerated, which wastes energy and reduces oxygen transfer ('959 Patent, col. 3:57-65).
- The Patented Solution: The invention is an improved impeller blade design that adds a "substantially horizontal top plate" to the upper edge of each blade ('959 Patent, Abstract). This plate acts as a barrier, preventing liquid from inefficiently flowing over the top of the blade. Instead, the liquid is directed radially outward in a controlled spray, which, combined with an "up-pumping" rotation, is designed to enhance turbulence and improve the overall oxygen transfer efficiency in both the spray and surface reaeration zones ('959 Patent, col. 4:38-51, col. 6:49-65).
- Technical Importance: The design aims to increase the Standard Aeration Efficiency (SAE), a key performance metric in wastewater treatment, thereby reducing the significant electrical power costs associated with operating these large-scale systems ('959 Patent, col. 2:57-65).
Key Claims at a Glance
- The complaint alleges infringement of "one or more valid claims" but does not specify which ones (Compl. ¶68). The complaint does not explicitly reserve the right to assert dependent claims.
- Independent Claim 1:
- A surface aeration impeller designed to rotate about an axis perpendicular to a static liquid surface, comprising a plurality of blades attached to a hub;
- wherein said blades comprise an upper generally vertical portion, a lower inclined non-vertical portion which is pitched with respect to said axis,
- and a substantially horizontal top plate on the upper edge of said vertical portion and extending outward in the direction of rotation from the upper edge of said vertical portion.
III. The Accused Instrumentality
Product Identification
- Defendants’ Lightnin™ Model A245 Surface Aerator ('959 Patent, ¶50).
Functionality and Market Context
- The Model A245 is a surface aerator impeller sold for use in applications like wastewater treatment (Compl. ¶¶19, 50). The complaint alleges that Defendants market the A245 as an improvement over a prior model (A240) specifically because it includes a "splash guard" (Compl. ¶53). Plaintiff contends this "splash guard" is the infringing feature, corresponding to the patented "horizontal top plate" (Compl. ¶53). The complaint further alleges that Defendants have marketed the A245 as incorporating "patented technology," which Plaintiff argues is a misrepresentation because the technology belongs to M2T (Compl. ¶52). The complaint includes promotional materials for the Model A245, which are alleged to show it being marketed as "patented technology" (Compl. ¶52, Ex. F).
IV. Analysis of Infringement Allegations
The complaint does not contain a formal claim chart. The following table summarizes the infringement theory for Claim 1 based on the narrative allegations.
’959 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A surface aeration impeller designed to rotate about an axis perpendicular to a static liquid surface, said impeller comprising a plurality of blades attached to a hub... | The accused Lightnin™ Model A245 is a surface aeration impeller with multiple blades attached to a central hub, designed for use in commercial aeration applications. | ¶¶50, 53, 54 | col. 5:9-15 |
| wherein said blades comprise an upper generally vertical portion, a lower inclined non-vertical portion which is pitched with respect to said axis... | The complaint alleges the overall design of the Model A245 aerators was "unlawfully copied from M2T," implying a similar blade structure with vertical and pitched portions. | ¶54 | col. 5:19-29 |
| and a substantially horizontal top plate on the upper edge of said vertical portion and extending outward in the direction of rotation... | Defendants advertise the Model A245 as having a "splash guard." The complaint alleges this "splash guard" is the "horizontal top plate copied from the M2T Patent" and that this feature constitutes infringement. The complaint alleges Defendants unlawfully copied M2T's design which included this feature. | ¶¶53, 54 | col. 5:30-44 |
- Identified Points of Contention:
- Technical Questions: A primary question will be whether the accused Model A245's "splash guard" meets all the structural and functional limitations of the "substantially horizontal top plate" as claimed. This includes its position "on the upper edge," its "substantially horizontal" orientation, and its configuration "extending outward in the direction of rotation." The complaint provides no technical diagrams of the A245, so the analysis will depend on evidence produced during discovery.
- Scope Questions: The dispute may turn on the interpretation of "substantially horizontal." The parties may contest the degree of deviation from perfectly horizontal that "substantially" permits.
V. Key Claim Terms for Construction
- The Term: "substantially horizontal top plate"
- Context and Importance: This term recites the core inventive concept. The infringement analysis will likely hinge on whether the accused "splash guard" is properly characterized as a "substantially horizontal top plate." Practitioners may focus on this term because its construction will define the structural boundary between the patented invention and the prior art.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The use of the word "substantially" itself suggests the patentee did not intend to limit the claim to a perfectly horizontal plate, allowing for some degree of variation in angle or shape.
- Evidence for a Narrower Interpretation: The specification describes the plate as a "generally rectangular plate positioned essentially perpendicular to the vertically upward extending portion" ('959 Patent, col. 5:32-35). Figure 2 also depicts a plate that appears geometrically horizontal and perpendicular to the vertical blade segment. A defendant may argue this embodiment limits the scope of "substantially horizontal" to a narrow range of angles around 90 degrees relative to the vertical blade portion.
VI. Other Allegations
- Indirect Infringement: The complaint makes a conclusory allegation of contributory and induced infringement (Compl. ¶68). The implied factual basis is that Defendants sell the Model A245 to end-users (e.g., wastewater treatment plants) who then operate the impellers in an infringing manner, and that Defendants' sales and marketing materials encourage this infringing use.
- Willful Infringement: The complaint alleges that Defendants "are, and have been, aware of the M2T Patent since its issuance" (Compl. ¶71). The factual basis for this allegation is extensive, citing the 2002 testing at Defendants' own facility, the parties' prior litigation and 2007 settlement, and M2T's 2018 demand letter notifying Defendants of the alleged infringement (Compl. ¶¶31, 46, 57).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central legal issue will be one of contractual scope: does the 2007 Settlement Agreement, which resolved a prior dispute between the parties, bar the current infringement claims? The court will need to interpret the agreement's release and licensing clauses, particularly the "No Cross Licensing" provision cited by Plaintiff, to determine if it covers future sales of the Model A245, a product allegedly first marketed after the settlement date.
- A key infringement question will be one of structural identity: does the Defendants' "splash guard" feature on the accused Model A245 embody the specific structural limitations of the "substantially horizontal top plate" as defined in Claim 1 of the '959 patent? The outcome will depend on the court's construction of the claim term and the factual evidence regarding the accused product's design.
- A significant parallel issue is the enforceability of a rival patent: Plaintiff has asked the court to declare Defendants' '844 patent unenforceable due to inequitable conduct stemming from the alleged misappropriation of M2T's trade secrets. The resolution of this claim could significantly impact the litigation landscape and potential remedies, regardless of the infringement finding on the '959 patent.