DCT
4:17-cv-00273
GW Lisk Co Inc v. Power Packer North America Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: G.W. Lisk Company, Inc. (New York)
- Defendant: GITS Manufacturing Company (Iowa)
- Plaintiff’s Counsel: Harter Secrest & Emery LLP
- Case Identification: 6:16-cv-06493, W.D.N.Y., 07/15/2016
- Venue Allegations: Venue is alleged to be proper based on Defendant GITS Manufacturing Company conducting business and selling products through distributors within the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s exhaust gas recirculation (EGR) valves infringe a patent related to a two-stage proportional control valve assembly.
- Technical Context: The technology concerns valve assemblies for automotive EGR systems, which are critical for controlling engine emissions by recirculating a portion of the exhaust gas back into the engine cylinders.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the patent-in-suit via correspondence in June 2009 and again in January 2016. Subsequent to the filing of this complaint, the asserted patent was the subject of two Inter Partes Review (IPR) proceedings (IPR2017-02034, IPR2017-02035). The U.S. Patent and Trademark Office issued a certificate cancelling the two independent claims asserted in this complaint (Claims 1 and 12), while confirming the patentability of several dependent claims. This development fundamentally alters the scope of claims available for assertion in this litigation.
Case Timeline
| Date | Event |
|---|---|
| 2000-11-17 | ’821 Patent Priority Date |
| 2002-04-04 | Alleged start of Plaintiff's product marking with '821 Patent |
| 2003-08-05 | ’821 Patent Issue Date |
| 2009-06-02 | Plaintiff allegedly sent letter to Defendant regarding hydraulic actuation patent |
| 2016-01-22 | Plaintiff's counsel allegedly sent letter to Defendant alleging potential infringement |
| 2016-07-15 | Complaint Filing Date |
| 2017-08-31 | Inter Partes Review proceedings initiated against the '821 Patent |
| 2021-11-15 | IPR Certificate issued, cancelling claims 1 and 12 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,601,821 - Proportional Control Valve Assembly for Exhaust Gas Recirculation System
The Invention Explained
- Problem Addressed: The patent describes the need for precise control over exhaust gas recirculation (EGR) valves in internal combustion engines to reduce harmful emissions. It notes that directly using electrical signals to actuate these valves requires significant power. (’821 Patent, col. 1:12-24, 36-40).
- The Patented Solution: The invention is a "two-stage" valve assembly that uses a low-power electrical signal to control a high-power fluid system. An electrical actuator (e.g., a solenoid) moves a small directional "spool valve." This spool valve, in turn, directs the flow of a high-pressure working fluid, such as engine oil, to operate a larger, fluid-powered actuator. This fluid-powered actuator provides the force needed to open or close the main EGR valve. A key feature is a mechanical feedback spring between the fluid-powered actuator and the spool valve, which allows the position of the main valve to be controlled proportionally to the initial electrical signal. (’821 Patent, Abstract; col. 2:4-16; Fig. 2).
- Technical Importance: This design decouples the high-force actuation from the low-power control signal, enabling precise, proportional valve control while conserving the vehicle's electrical power for other functions. (’821 Patent, col. 1:36-40).
Key Claims at a Glance
- The complaint asserts independent claims 1 (apparatus) and 12 (method), along with an unspecified number of dependent claims (Compl. ¶20). It must be noted that an IPR proceeding subsequent to the complaint's filing resulted in the cancellation of claims 1 and 12.
- Independent Claim 1, now cancelled, generally recited:
- A flow-regulating valve for a first fluid.
- A double-acting actuator powered by a second fluid.
- A directional valve to control the flow of the second fluid to the actuator.
- An electrical actuator to convert a control signal into force on the directional valve.
- Independent Claim 12, now cancelled, generally recited a method of:
- Converting an electrical signal to a force on a directional valve.
- Moving the directional valve to control fluid flow to a double-acting actuator.
- Providing feedback between the actuator and the directional valve to restore the valve to a neutral position.
- Linking the actuator's movement to a flow-regulating valve.
III. The Accused Instrumentality
Product Identification
Defendant’s exhaust gas recirculation (EGR) valves (Compl. ¶13).
Functionality and Market Context
- The complaint alleges the accused GITS EGR products contain a "flow-regulating valve," a "double-acting actuator powered by a second fluid," a "directional valve to control a flow of the second fluid," and an "electrical actuator which converts control signals into forces" on the directional valve (Compl. ¶13). This description mirrors the primary components of the system claimed in the ’821 Patent.
- The complaint positions the defendant as a "leading provider of air flow management solutions to the automotive industry" (Compl. ¶12).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The infringement allegations in the complaint focus on independent claims 1 and 12, which have since been cancelled via IPR. The analysis below is based on the allegations as originally filed.
’821 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a flow-regulating valve that regulates a flow of a first fluid | GITS's EGR product includes a flow-regulating valve that controls the flow of a first fluid. | ¶13, ¶20 | col. 4:5-9 |
| a double-acting actuator powered by a second fluid for moving the flow-regulating valve | GITS's EGR product includes a double-acting actuator powered by a second fluid to impart movement of the flow-regulating valve. | ¶13, ¶20 | col. 4:20-27 |
| a directional valve that controls a flow of the second fluid to the double-acting actuator | GITS's EGR product employs a directional valve to control a flow of the second fluid to the double-acting actuator. | ¶13, ¶20 | col. 4:31-35 |
| an electrical actuator that converts a control signal into a force acting on the directional valve | GITS's EGR product employs an electrical actuator which converts control signals into forces acting on the directional valve. | ¶13, ¶20 | col. 4:65-68 |
- Identified Points of Contention:
- Claim Viability: The primary point of contention is procedural: the asserted independent claims 1 and 12 have been invalidated. The litigation can only proceed if the Plaintiff can assert one or more of the surviving dependent claims (e.g., claims 6-11) and demonstrate that the accused products meet their additional limitations.
- Technical Questions: Assuming the case proceeds on surviving claims, a key technical question will concern the specific feedback mechanism. For example, surviving claim 6 requires a "feedback spring." The analysis would question whether the accused products contain a mechanical spring that performs the feedback function as described in the patent, or if they use a different mechanism (e.g., an electronic position sensor) that may not fall within the scope of the claim.
V. Key Claim Terms for Construction
The construction of terms from the surviving dependent claims will be critical if the case proceeds.
- The Term: "feedback spring" (from surviving dependent claim 6)
- Context and Importance: This term is central to the patent's described method of achieving proportional control. Practitioners may focus on this term because its construction will determine whether the claims are limited to a purely mechanical feedback system or could read on systems with electronic feedback.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide sufficient detail for analysis of arguments for a broader interpretation.
- Evidence for a Narrower Interpretation: The specification consistently describes this element as a physical "feedback compression spring 26" that "exerts a reactionary force" to create a mechanical force balance that controls the valve's position (’821 Patent, col. 4:56-64; col. 5:40-46). The patent contrasts its approach with other control systems, suggesting the specific mechanical spring solution is integral to the invention.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that GITS induced infringement by selling EGR products that "cause the purchasers of such products to infringe" (Compl. ¶21). The factual support for this allegation is not detailed beyond the act of selling the products themselves.
- Willful Infringement: The willfulness allegation is based on alleged pre-suit knowledge of the ’821 Patent. The complaint specifically pleads that GITS was notified of the patent in a 2009 letter following a meeting between the parties, and again in a 2016 letter that included a copy of the patent (Compl. ¶¶16-17).
VII. Analyst’s Conclusion: Key Questions for the Case
- Procedural Viability: A threshold question is whether the plaintiff can amend its complaint to state a viable cause of action based on the surviving dependent claims, given that the IPR proceedings cancelled the independent claims originally asserted.
- Scope of Surviving Claims: If the case proceeds, a core issue will be one of definitional scope: can terms in the surviving claims, such as "feedback spring", be construed to cover the specific design of the accused GITS valves, or is the technology used in the accused products fundamentally different from the mechanically-actuated feedback system detailed in the patent?
- Basis for Willfulness: A key evidentiary question for damages will be timing and conduct: assuming infringement of a surviving claim is found, did the defendant's alleged design choices and continued sales after receiving specific notice in 2009 and 2016 constitute willful infringement warranting enhanced damages?