DCT

4:22-cv-00430

Florida State University Research Foundation Inc v. SentiMetal Journey LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 4:22-cv-00430, N.D. Fla., 12/05/2022
  • Venue Allegations: Venue is alleged to be proper in the Northern District of Florida because the defendant has transacted business in the district and because a substantial part of the events giving rise to the claims, specifically the underlying research and development work, occurred there.
  • Core Dispute: Plaintiff alleges that Defendant improperly filed for and obtained patents on linear actuator technology that was invented by Plaintiff’s researchers under sponsored research agreements, and seeks correction of inventorship and ownership of the patents-in-suit.
  • Technical Context: The dispute centers on highly efficient linear motors that use electromagnetic coils for both stationary (forcer) and moving (thruster) components, a design intended to improve performance at high temperatures, particularly for internal combustion engine valve control.
  • Key Procedural History: The complaint alleges a history of collaboration under two Educational Research Agreements (ERA1 and ERA2), through which Plaintiff's researchers developed and disclosed linear actuator designs to Defendant. Plaintiff alleges that Defendant then filed for the patents-in-suit based on this research without naming Plaintiff's researchers as inventors. During the prosecution of Plaintiff's own patent application, the USPTO initially rejected its claims over Defendant's filings. Plaintiff submitted a declaration arguing its researchers had invented the subject matter first and that Defendant had derived it from them. The examiner found this declaration persuasive but was procedurally required to issue a double patenting rejection after Defendant's patent issued, allegedly forcing Plaintiff to accept a narrower claim scope for its own resulting patent.

Case Timeline

Date Event
2015-11-01 Educational Research Agreement 1 (ERA1) executed.
2016-07-25 Plaintiff submits ERA1 Report with novel designs to Defendant.
2016-12-06 Educational Research Agreement 2 (ERA2) executed.
2017-07-XX Plaintiff submits ERA2 Report to Defendant.
2018-02-23 Earliest Priority Date for '696 and '293 Patents (Provisional '592 filed).
2018-06-08 ERA2 terminated by mutual agreement.
2018-07-16 Plaintiff files its own provisional application ('473).
2020-03-24 U.S. Patent No. 10,601,293 issues.
2020-09-15 U.S. Patent No. 10,774,696 issues.
2022-12-05 Complaint filed.

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

U.S. Patent No. 10,774,696, "Highly Efficient Linear Motor," Issued September 15, 2020

The Invention Explained

  • Problem Addressed: The patent addresses deficiencies in prior art linear motors, particularly the degradation of magnetic strength in permanent magnets at the elevated temperatures found in applications like internal combustion engines (ICEs) (’293 Patent, col. 1:55-65).
  • The Patented Solution: The invention is a linear motor that avoids using permanent magnets. Instead, it uses energized electromagnetic coils for both the stationary "forcer" and the moving "thruster" elements. This configuration is described as providing necessary power while minimizing weight and avoiding the performance loss that permanent magnets suffer at high temperatures (’696 Patent, Abstract; ’293 Patent, col. 2:11-23). The complaint alleges this solution was conceived by its researchers to create novel designs for ICE valve control (Compl. ¶¶22-23).
  • Technical Importance: This all-coil approach enables precise, high-speed, and temperature-resilient electronic control of engine valves, which can improve overall engine performance, efficiency, and emissions control (’293 Patent, col. 2:3-10).

Key Claims at a Glance

  • The complaint seeks correction of inventorship for all claims 1-37 (Compl. ¶71). Independent claim 1 is asserted as representative of the core dispute.
  • Independent Claim 1 of the ’696 Patent recites:
    • A housing with a longitudinal axis and first and second housing ends.
    • A shaft disposed coaxially and movably along the axis.
    • A first forcer coil affixed within the housing near the first end.
    • A first thruster coil affixed to the shaft.
    • The claim specifies that the shaft reciprocates in response to "mutually opposing nonpermanent magnetic fields" generated by the coils.

U.S. Patent No. 10,601,293, "Highly Efficient Linear Motor," Issued March 24, 2020

The Invention Explained

  • Problem Addressed: The '293 Patent, a continuation-in-part of the application that led to the ’696 Patent, addresses the same technical problem of creating efficient, high-temperature linear motors by avoiding permanent magnets (’293 Patent, col. 1:55-65).
  • The Patented Solution: The solution is functionally identical to that described in the ’696 Patent, focusing on the use of interacting electromagnetic fields from forcer and thruster coils to drive linear motion (’293 Patent, Abstract).
  • Technical Importance: As with the ’696 Patent, the technology is presented as a significant improvement for applications like camless engine valve actuation (’293 Patent, col. 2:3-10).

Key Claims at a Glance

  • The complaint seeks correction of inventorship for all claims 1-38 (Compl. ¶84). Independent claim 1 is central to the dispute.
  • Independent Claim 1 of the ’293 Patent recites:
    • A shaft member with a longitudinal axis.
    • At least one thruster coil disposed coaxially about and affixed to the shaft.
    • At least one forcer coil disposed coaxially about the shaft and "outside an outer periphery of said thruster coil."
    • A gap between the thruster coil and the forcer coil.

III. The Accused Instrumentality

  • Instrumentality Identification: The dispute is not centered on an infringing commercial product. The instrumentalities at issue are the patents themselves: U.S. Patent No. 10,774,696 and U.S. Patent No. 10,601,293.
  • Functionality and Market Context: The complaint alleges that the filing of the patent applications and obtaining of the patents-in-suit constitute the wrongful acts (Compl. ¶¶4-5). It is alleged that these actions were based on research and novel designs conceived, reduced to practice, and disclosed by Plaintiff’s researchers to Defendant under contract (Compl. ¶¶50, 53). The complaint alleges these acts deprived Plaintiff of its "assignable and licensable ownership interest," "commercial opportunities," and the "reputational goodwill" associated with the inventions (Compl. ¶¶77, 91). A side-by-side visual comparison juxtaposes figures from the patents-in-suit with renderings of linear actuator designs from the Plaintiff’s ERA1 Report, alleging a direct correspondence between them (Compl. ¶53, p. 16).

IV. Analysis of Misappropriation Allegations

The complaint does not allege patent infringement but rather that the subject matter of the patents-in-suit was derived from Plaintiff's research. The following table summarizes the direct correspondence alleged in the complaint between Defendant's patent application that led to the '696 Patent and Plaintiff's research reports.

Alleged Correspondence Between Defendant's '131 Application and Plaintiff's Research

Element from Defendant's '131 Application Alleged Corresponding Disclosure in Plaintiff's Reports Complaint Citation
FIG. 1 and 1A. Disclosed in ERA1 Report (pp. 1, 3, 9-12, FIGS. 7-8) and ERA2 Report (pp. 8-13, FIGS. 4, 5a-b). ¶60
Thruster coil 102, coils 102B and 102C, ferrous cup 102D and 102E, and air gap 102F. Disclosed in ERA1 Report (pp. 3, 9-12, FIGS. 7-8, 17) and ERA2 Report (pp. 8-13, FIGS. 4, 5a-b). ¶60
Central shaft 101, fixed upper forcer coil 103, and fixed lower forcer coil 109. Disclosed in ERA1 Report (pp. 3, 9-12, FIGS. 7-8, 17) and ERA2 Report (pp. 8-13, FIGS. 4, 5a-b). ¶60
Housing 104. Disclosed in ERA2 Report (pp. 7-8, FIGS. 3, 4a) and ERA1 Report (pp. 3, 9-12, 17-19, FIGS. 7-8, 17). ¶60
Controller OCU and ACU in FIGS. 6 and 7. Disclosed in ERA1 Report (pp. 13-20, FIG. 9) and ERA2 Report (pp. 13-16, FIGS. 10-11). ¶60
  • Identified Points of Contention:
    • Derivation vs. Independent Conception: The central factual dispute will be whether the named inventors (Hutchins and Rust) derived the claimed subject matter from the research reports provided by Plaintiff, as alleged (Compl. ¶¶53, 59), or if they independently conceived of the inventions.
    • Sufficiency of Disclosure for Inventorship: A key question for the court will be whether Plaintiff's ERA1 and ERA2 reports contained a disclosure sufficient to constitute a complete conception of the claimed inventions, thereby making its researchers legal inventors of that subject matter (Compl. ¶50).
    • Scope of Contribution: The case raises the question of what, if any, inventive contribution was made by the named inventors versus the Plaintiff's researchers. The complaint seeks not only the addition of its researchers but also the potential removal of the existing inventors (Compl. ¶¶81, 95).

V. Key Claim Terms for Construction

While inventorship, not claim construction, is the primary issue, the definition of the core technology allegedly misappropriated is embodied in the claims.

  • The Term: "at least one forcer coil disposed coaxially about another portion of said shaft member and outside an outer periphery of said thruster coil" (’293 Patent, Claim 1).
  • Context and Importance: This limitation defines the fundamental spatial relationship between the key components. The dispute will likely focus on who first conceived of this specific structural arrangement. Practitioners may focus on this term because the complaint uses visual aids to argue that this exact claimed structure was first conceived and disclosed in its research reports (Compl. ¶53, p. 16).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification's discussion of the general principles of using coils for forcer and thruster elements could be argued to support a broader concept not tied to one exact geometry (’293 Patent, col. 2:11-28).
    • Evidence for a Narrower Interpretation: The patent figures, particularly Figure 1, illustrate a very specific embodiment of this arrangement (’293 Patent, FIG. 1). Plaintiff's case appears to rely on the direct similarity between its disclosed designs and these specific figures, which may suggest the key inventive concept lies in this narrower, specific implementation (Compl. ¶53, p. 16).

VI. Other Allegations

  • Breach of Contract: The complaint alleges Defendant breached multiple provisions of the Educational Research Agreements (ERAs). It is alleged Defendant breached Section 9.1, which stipulated that inventions made during the research would belong to Plaintiff, by filing for patents and claiming ownership (Compl. ¶¶104-105). It further alleges a breach of Section 8.2, which required Defendant to submit any publications (defined to include patent applications) to Plaintiff for review prior to filing (Compl. ¶¶100-101). Finally, it alleges a breach of Section 10, which granted Defendant a limited license for "internal use" only, by engaging in the "non-internal" acts of filing for and assigning patent rights (Compl. ¶¶107-108).
  • Willfulness / State of Mind: While not a standard willful infringement claim, the complaint alleges a knowing and intentional misappropriation of intellectual property. Specifically, the conversion claim alleges Defendant acted "knowingly, willfully, unlawfully, and with intent to steal" (Compl. ¶143). This allegation is based on Defendant's alleged receipt of Plaintiff's research reports and its awareness of the contractual obligations of ownership and disclosure before filing the patent applications (Compl. ¶¶73, 86).

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

  1. A central issue will be one of derivation and conception: Will the evidence establish that the complete conception of the subject matter claimed in the '696 and '293 patents originated with Plaintiff's researchers and was communicated to Defendant's named inventors, or will the evidence show the named inventors contributed their own independent, substantive inventive concept?
  2. A key contractual question will be one of obligations and breach: Did Defendant's actions of filing patent applications on the research results without notice to, or the consent of, Plaintiff constitute a breach of the Educational Research Agreements, particularly the clauses governing invention ownership and pre-publication review?
  3. A final determinative question will be the proper remedy: If Plaintiff proves its researchers are inventors, will the court order a correction to add them as co-inventors (potentially creating joint ownership), or will it find the derivation so complete as to order the removal of the currently named inventors and a full assignment of the patents to Plaintiff?