Washington v. Air Water Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Jerry Dewayne Washington Jr. (North Dakota), pro se
  • Defendant: Air Water Inc. (Japan); Hitec Holding BV (The Netherlands); Hitec Power Protection International BV (The Netherlands); Hitec Power Protection Inc. (Texas)
  • Plaintiff’s Counsel: Pro Se
• Case Identification: 1:24-cv-00715, D. Del., 06/18/2024
• Venue Allegations: Venue is alleged to be proper for the foreign defendants under 28 U.S.C. § 1391(c)(3) as they may be sued in any judicial district. Venue for the domestic defendant, Hitec Power Protection Inc., is based on allegations that it has committed acts of patent infringement in the district.
• Core Dispute: Plaintiff alleges that Defendants’ products, which are not specifically identified in the complaint, infringe a patent related to systems for generating electrical power using a flywheel to assist a motor.
• Technical Context: The technology concerns uninterruptible power supply (UPS) and power generation systems, which use the kinetic energy stored in a flywheel to manage high initial starting torques and subsequent peak electrical loads, allowing for the use of a smaller primary motor.
• Key Procedural History: The complaint alleges that Plaintiff contacted Defendants in 2021 and again on April 30, 2024, to negotiate a license, providing a copy of the patent-in-suit. No response was allegedly received from the 2021 contact. These allegations form the basis for claims of willful infringement.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,108,095 - System and Method for Generating Power

The Invention Explained

• Problem Addressed: In conventional power generation systems, a motor must be directly coupled to a generator. This requires the motor to be powerful enough to supply both the high initial torque needed to start the generator and any subsequent peak load torques that exceed normal operation. Such motors are expensive, and their full capacity is only used for small portions of the total operating time (’095 Patent, col. 1:26-44).
• The Patented Solution: The invention decouples the motor from the generator's high torque requirements by using an "inertia-assisted, torque-enhanced gearbox" containing a flywheel assembly and a clutch. A smaller motor first spins up the flywheel, storing kinetic energy. The clutch then engages, and the flywheel provides the high initial torque to start the generator. The flywheel can also supply supplemental torque to handle peak loads, allowing the motor to be sized for the generator's normal operating torque rather than its peak torque (’095 Patent, Abstract; col. 2:13-24). The general arrangement is depicted in Figure 1, showing a motor assembly (12) connected to a gearbox (13) with a flywheel (14) and clutch (16), which in turn drives the generator assembly (18) (’095 Patent, col. 2:66-col. 3:12).
• Technical Importance: This approach allows for the design of more cost-effective power generation systems by reducing the size and cost of the primary motor, a significant component of the overall system expense (’095 Patent, col. 1:56-62).

Key Claims at a Glance

• The complaint asserts "Exemplary '095 Patent Claims" without specifying claim numbers (Compl. ¶16). Independent claim 1 is the broadest system claim.
• Independent Claim 1 Elements:
  • A motor assembly
  • An inertia-assisted, torque-enhanced gearbox coupled to the motor assembly
  • A generator assembly coupled to the gearbox
  • Wherein the gearbox includes a first flywheel assembly coupled to the motor, and a clutch assembly coupled to the first flywheel and the generator
  • Wherein the gearbox also includes a second flywheel assembly coupled between the clutch and the generator
  • Wherein the clutch is disposed between the first and second flywheel assemblies "for enabling selective disengagement" of the second flywheel from the first flywheel.

III. The Accused Instrumentality

Product Identification

The complaint does not identify any specific accused products by name (Compl. ¶¶14, 16).

Functionality and Market Context

The complaint alleges infringement by "Defendant's products" generally and states that an "Exhibit B" contains charts comparing the patent claims to these products (Compl. ¶16). However, Exhibit B was not filed with the complaint. The complaint alleges that Defendants "sell and distribute product literature and website materials" related to the infringing products, but provides no specific examples (Compl. ¶13). The complaint does not provide sufficient detail for analysis of the functionality or market context of the accused instrumentalities.

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint references claim charts in an "Exhibit B" that was not provided with the public filing (Compl. ¶16). The narrative allegations state that Defendants' products "practice the technology claimed by the '095 patent" and "satisfy all elements of the Exemplary '095 Patent Claims" through acts of making, using, selling, and importing (Compl. ¶¶14, 16). Without the specific product identifications and element-by-element mappings from Exhibit B, a detailed infringement analysis is not possible.

• Identified Points of Contention: Based on the patent and the general nature of the allegations, the infringement analysis may present several questions for the court:
  • Structural Questions: The central dispute will likely concern whether Defendants' products contain the specific structural arrangement recited in the claims. A primary question is whether the accused products possess an "inertia-assisted, torque-enhanced gearbox" that includes a first flywheel, a second flywheel, and a clutch positioned between the two flywheels as required by claim 1.
  • Functional Questions: A related question will be one of function. Does any clutch-like mechanism in the accused products perform the claimed function of "selective disengagement of said second flywheel assembly from said first flywheel assembly" to manage the generator's startup sequence?

V. Key Claim Terms for Construction

• The Term: "inertia-assisted, torque-enhanced gearbox"

  • Context and Importance: This term appears to be a neologism created by the patentee and is central to defining the invention's scope. Its construction will determine what types of power systems fall within the claim. Practitioners may focus on whether this term requires a literal gearbox with gears or can be construed more broadly to cover any mechanical linkage that uses a flywheel to supplement torque.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent repeatedly refers to the entire assembly of flywheels, shafts, clutches, and speed modifiers collectively as the "gearbox" (e.g., ’095 Patent, col. 2:14-15; col. 3:38-40). This may support a construction where "gearbox" is a general term for the power-transfer linkage, not necessarily one requiring traditional gears.
    • Evidence for a Narrower Interpretation: The specification describes embodiments where the "gearbox" explicitly includes "a speed increaser" and "a speed decreaser," which are described as "conventional gear trains" (’095 Patent, col. 5:21-23). This could support a narrower construction requiring the presence of gear-based speed-modifying components.

• The Term: "clutch assembly being disposed between said first flywheel assembly and said second flywheel assembly"

  • Context and Importance: The precise location of the clutch between two separate flywheel assemblies is a key structural limitation of independent claim 1. Infringement will depend on whether accused products have a component meeting this specific positional requirement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term "clutch assembly" itself is conventional, and a party might argue for its plain and ordinary meaning, covering any device that selectively connects and disconnects rotating shafts.
    • Evidence for a Narrower Interpretation: The claim language is highly specific about the clutch's location ("disposed between"). The specification and figures consistently show this arrangement, where the clutch (16) isolates the first flywheel (e.g., 26) from the second flywheel (e.g., 17) and generator (30) during the initial spin-up phase (’095 Patent, Fig. 1; col. 3:51-54). This consistency may support a narrow construction that requires the accused clutch to be physically located between two distinct flywheel masses.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendants' "product literature and website materials" instruct end users on how to use the accused products in a manner that infringes the ’095 Patent (Compl. ¶¶13, 16).
• Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It claims Plaintiff contacted Defendants via certified mail in 2021 and again on April 30, 2024, providing a copy of the ’095 Patent and an invitation to negotiate a license (Compl. ¶12; pg. 5 ¶13).

VII. Analyst’s Conclusion: Key Questions for the Case

• A primary issue will be one of evidentiary sufficiency: The complaint makes only general allegations of infringement and relies entirely on an unattached exhibit to identify the accused products and map them to the patent claims. A threshold question for the case will be whether Plaintiff can produce evidence that identifies a specific product made or sold by Defendants that contains the complete, multi-part electromechanical structure required by the asserted claims.
• A core legal issue will be one of definitional scope: The case will likely turn on the construction of the term "inertia-assisted, torque-enhanced gearbox." The key question for the court will be whether this term, as defined by the patent's specification, can be construed to read on the architecture of Defendants' commercial power systems, or if those systems utilize a fundamentally different technical approach to managing torque and load.