DCT
1:09-cv-01096
Cummins Inc v. TAS Distributing Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cummins Inc. (Indiana)
- Defendant: TAS Distributing Company, Inc. (Illinois)
- Plaintiff’s Counsel: Foley & Lardner LLP; Davis & Campbell LLC
- Case Identification: 1:09-cv-01096, C.D. Ill., 03/18/2009
- Venue Allegations: Venue is alleged to be proper in the Central District of Illinois as Defendant is an Illinois corporation with its principal place of business and corporate headquarters in Peoria, Illinois.
- Core Dispute: Plaintiff Cummins seeks a declaratory judgment that patents licensed from Defendant TAS relating to vehicle engine start/stop systems are invalid and unenforceable, and that the underlying license agreement constitutes patent misuse.
- Technical Context: The technology concerns automatic engine management systems for vehicles, particularly long-haul trucks, designed to reduce unnecessary idling by starting and stopping the engine based on parameters like cabin temperature, thereby saving fuel and reducing emissions.
- Key Procedural History: This case is the third between the parties. The complaint states that a prior case (TAS v. Cummins I) was resolved in Cummins' favor, while a second case (TAS v. Cummins II) concerning royalty payments under a 1997 License Agreement is pending. This declaratory judgment action appears to be a direct response to TAS's royalty demands in the pending litigation. The core of Cummins's claims is that the licensed patents are invalid due to an on-sale bar, as the technology was allegedly sold as early as 1986, and are unenforceable due to inequitable conduct for failing to disclose these sales to the U.S. Patent and Trademark Office. The complaint also alleges the license agreement constitutes patent misuse by requiring royalty payments beyond the life of the patents.
Case Timeline
| Date | Event |
|---|---|
| 1986 | Alleged first sale of the Temp-A-Start/Temp-A-Stop system |
| 1990-10-16 | '703 Patent Application Filing Date |
| 1991-12-17 | U.S. Patent 5,072,703 Issued |
| 1992-06-09 | '469 Patent Application Filing Date |
| 1993-06-29 | U.S. Patent 5,222,469 Issued |
| 1997-02-22 | Master Agreement and License Agreement executed |
| 2009-03-18 | Complaint for Declaratory Judgment Filed |
| 2011-12-17 | '703 Patent Expiration Date |
| 2013-06-29 | '469 Patent Expiration Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,072,703 - "Apparatus For The Automatic Starting, Running, And Stopping Of An Internal Combustion Engine"
- Patent Identification: U.S. Patent No. 5,072,703, "Apparatus For The Automatic Starting, Running, And Stopping Of An Internal Combustion Engine," issued December 17, 1991. (Compl. ¶15).
The Invention Explained
- Problem Addressed: The patent's background describes the problem of long-haul trucks continuously idling their engines to maintain a comfortable temperature in the sleeper unit, which is inefficient and wasteful. (Compl. ¶41; ’703 Patent, col. 2:37-44). It also identifies the need for reliability in automatic start systems, particularly avoiding a "fail-to-start" condition caused by low battery charge, low ambient temperatures threatening fuel gelling, or other system problems. (’703 Patent, col. 2:5-18).
- The Patented Solution: The patent discloses an apparatus that automatically controls the engine to maintain a desired sleeper cab temperature. The system uses a thermostat in the sleeper unit to trigger engine start and stop cycles. (’703 Patent, Abstract). Critically, it includes safety interlocks—such as sensors for the parking brake, transmission (neutral), and hood—to ensure the vehicle is "safely parked" before the automatic start function is enabled. (’703 Patent, col. 4:62-68). The system also monitors other vehicle conditions, like battery voltage, to override a shutdown request if a restart is unlikely. (’703 Patent, col. 3:17-24).
- Technical Importance: This technology sought to provide a safe and reliable way to reduce fuel consumption and engine wear associated with prolonged idling in the trucking industry. (’703 Patent, col. 2:45-56).
Key Claims at a Glance
- The complaint’s invalidity argument centers on independent Claim 1. (Compl. ¶42).
- The essential elements of independent Claim 1 are:
- An apparatus for maintaining a comfortable truck sleeper unit temperature and reducing idling time, comprising:
- "temperature sensing means" within the sleeper unit;
- "means for starting, running and stopping" the engine based on the temperature sensing;
- "means for detecting when said truck is safely parked and idling";
- "means for automatically enabling said starting means" after the truck has been safely parked and idling for a predetermined time; and
- "means for automatically disabling" the starting, running, and stopping means.
U.S. Patent No. 5,222,469 - "Apparatus For Monitoring An Internal Combustion Engine Of A Vehicle"
- Patent Identification: U.S. Patent No. 5,222,469, "Apparatus For Monitoring An Internal Combustion Engine Of A Vehicle," issued June 29, 1993. (Compl. ¶16).
The Invention Explained
- Problem Addressed: The patent identifies the problem that simply shutting off an idling engine is insufficient if electrical accessories continue to run, as this can drain the battery and prevent a restart. (’469 Patent, col. 2:37-44).
- The Patented Solution: The invention is a microprocessor-based apparatus that monitors an engine and limits unnecessary idling. It uses a "controllable switching device" (a master relay) positioned between the vehicle's power supply and the ignition switch. (’469 Patent, col. 2:48-52). A timer accumulates time while the ignition is on and the vehicle is stationary. After a predetermined period, the microprocessor directs the switching device to open, disconnecting power to the ignition switch, which in turn shuts off the engine and any accessories powered through the ignition. (’469 Patent, Abstract). The system can also consider other factors like engine temperature or battery state before initiating a shutdown. (’469 Patent, col. 2:63-65).
- Technical Importance: This microprocessor-controlled approach provided a more robust method for managing idle time, preventing battery drain, and adding logic to track and display fuel savings. (’469 Patent, col. 2:3-17).
Key Claims at a Glance
- The complaint alleges the entire patent is invalid and unenforceable. (Compl. ¶¶ 75, 105). Independent Claim 1 is representative.
- The essential elements of independent Claim 1 are:
- An apparatus for monitoring a vehicle engine, comprising:
- "first means for controllably connecting and disconnecting" the power supply to the ignition switch;
- "second means for detecting" when the ignition switch is on;
- "third means for detecting" when the vehicle is stationary;
- "fourth means" for timing the co-existence of the "ignition on" and "vehicle stationary" states; and
- "fifth means" that causes the first means to disconnect power after a predetermined time.
III. The Accused Instrumentality
Product Identification
The complaint does not identify specific Cummins products by name. Instead, it refers to the technology licensed from TAS, specifically the "Temp-A-Start and Temp-A-Stop systems" and products incorporating that functionality. (Compl. ¶¶ 17, 20). The License Agreement defines these systems broadly as engine-control systems capable of performing a list of functions. (Compl. ¶¶ 18, 19).
Functionality and Market Context
The functionality at issue is the automatic start-stop control for vehicle engines licensed by Cummins from TAS. The License Agreement defines the "Temp-A-Start system" as having ten distinct capabilities, including automatically starting/stopping the engine based on temperature or battery condition, overriding the ignition key, monitoring engine conditions to prevent failure, providing safety interlocks, and controlling cab temperature. (Compl. ¶19). As a major engine manufacturer, Cummins would integrate such licensed technology into its engine and vehicle electronic control modules. (Compl. ¶¶ 2, 6(c)).
IV. Analysis of Infringement Allegations
This is a declaratory judgment action for invalidity, not a direct complaint for infringement. The analysis below summarizes Cummins's allegations that the patented claims were fully practiced by a system on sale more than one year before the patents' filing dates, which if proven would invalidate the claims under 35 U.S.C. § 102(b). The complaint provides a claim chart comparing '703 Patent Claim 1 to deposition testimony about a 1986 system. The complaint includes a chart comparing elements of '703 patent Claim 1 to deposition testimony about the 1986 system. (Compl. ¶42). This chart, which contains a redacted column of testimony from the inventor, is summarized below.
'703 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Prior Art Functionality (from 1986 System) | Complaint Citation | Patent Citation |
|---|---|---|---|
| An apparatus for maintaining a comfortable truck sleeper unit temperature...comprising: temperature sensing means within said truck sleeper unit, | The 1986 system allegedly had thermostats in the sleeper compartment and a method to start or stop the engine based on the temperature within the truck or unit. | ¶42 (Ex. 5 at 16:19-24, 17:15-19) | col. 6:66-68 |
| means for starting, running and stopping the truck engine in accordance with said temperature sensing means... | The 1986 system allegedly had a method of starting, running, or stopping the engine based on the temperature in the sleeper cabinet for the trucker. | ¶42 (Ex. 5 at 17:20-24) | col. 4:46-54 |
| means for detecting when said truck is safely parked and idling, | The 1986 system allegedly had sensors to determine if the truck was safely parked and sensors for determining if the engine had been idling for a certain period of time. | ¶42 (Ex. 5 at 18:1-19:3) | col. 4:62-68 |
| means for automatically enabling said starting means after said means for detecting when said truck is safely parked and idling indicates said truck has been safely parked and idling for a predetermined amount of time, | The 1986 system allegedly could restart the engine if the vehicle was parked and not in a moving state, which was asserted to be its purpose. | ¶42 (Ex. 5 at 17:4-8) | col. 4:1-24 |
| and means for automatically disabling said starting, running, and stopping means. | The 1986 unit allegedly had a method for disabling or shutting off vehicle accessories in addition to starting and stopping the engine. | ¶42 (Ex. 5 at 19:4-8) | col. 4:65-68 |
- Identified Points of Contention:
- On-Sale Bar: The central dispute is factual: whether the "Temp-A-Start/Temp-A-Stop" system offered for sale in 1986 included every element of the asserted patent claims. (Compl. ¶¶ 40, 69, 74). The court's decision will depend on evidence establishing the precise functionality of that 1986 system.
- Inventorship: A key issue for the ’469 Patent is its validity based on correct inventorship. The complaint alleges that the named inventor, Mr. Sutton, testified that his brother actually invented the microprocessor-based system claimed in the patent. (Compl. ¶¶ 52-53).
- Technical Questions: What specific evidence, beyond the cited deposition testimony, exists to prove the structure and operation of the 1986 system? For the ’703 patent, did the 1986 system include the specific combination of a neutral switch, hood switch, and parking brake switch disclosed in the specification as the "means for detecting" a safely parked state?
V. Key Claim Terms for Construction
- Term: "means for detecting when said truck is safely parked and idling" (’703 Patent, Claim 1)
- Context and Importance: This is a means-plus-function limitation. Its scope is limited to the corresponding structure described in the specification and its equivalents. The invalidity determination may turn on whether the 1986 system contained an equivalent structure to the one disclosed in the patent.
- Intrinsic Evidence for a Broader Interpretation: The patent describes the general goal as compensating for liabilities by using "hood and transmission sensors in order to disable the automatic starting of an engine when the hood is up or the transmission is in gear." (’703 Patent, col. 3:62-65). A party could argue this supports a functional definition covering various combinations of safety sensors.
- Intrinsic Evidence for a Narrower Interpretation: The specification explicitly discloses a specific structure corresponding to this function: "A chain of switches, comprising neutral switch SW2, hood switch SW3, and parking brake switch SW4, closes when the vehicle transmission is in neutral, the hood down, and the parking brake is applied." (’703 Patent, col. 4:62-67). A party could argue the claim is limited to this exact combination of three switches or their direct equivalents.
- Term: "fifth means responsive to said fourth means for causing said first means to disconnect the vehicle power supply from the ignition switch" (’469 Patent, Claim 1)
- Context and Importance: This means-plus-function element covers the core control logic of the ’469 patent. The dispute will likely focus on whether the 1986 system, if it was not microprocessor-based, could contain an equivalent structure.
- Intrinsic Evidence for a Broader Interpretation: The Abstract describes the function broadly as actuating a "controllable switching device... to disconnect the vehicle power supply from the ignition switch." (’469 Patent, Abstract).
- Intrinsic Evidence for a Narrower Interpretation: The corresponding structure disclosed is a "microprocessor 22" running a specific program (shown in FIG. 2) that controls a "master relay 52" via a "control circuit 60." (’469 Patent, col. 4:32-37, 57-62). A party could argue that this requires a programmable microprocessor and is not equivalent to a simpler, hard-wired timer circuit.
VI. Other Allegations
- Patent Misuse: The complaint alleges patent misuse on two grounds. First, it asserts that Section 5 of the License Agreement requires Cummins to pay royalties "ad infiniteum," beyond the expiration dates of the ’703 and ’469 patents, which may constitute per se misuse. (Compl. ¶¶ 81, 83). Second, it alleges misuse arising from TAS's enforcement of patents it allegedly knew or should have known were invalid and unenforceable. (Compl. Count IV).
- Inequitable Conduct: The complaint alleges that TAS and the inventor intentionally deceived the U.S. Patent Office by failing to disclose the 1986 sales and marketing brochures for the Temp-A-Start system during the prosecution of both the ’703 and ’469 patents. (Compl. Counts V and VI). The complaint alleges these undisclosed sales were material and that the failure to disclose was done with intent to deceive. (Compl. ¶¶ 99-100, 110-111).
- Fraudulent Inducement and Breach of Contract: The complaint includes counts alleging that TAS fraudulently induced Cummins to enter the license agreements by representing the patents were valid when it knew they were not. (Compl. Count VII). It also alleges that TAS breached warranties in the Master Agreement that it was the "sole and exclusive owner" and had the right to grant the license. (Compl. Count VIII).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central factual question will be one of prior art scope: Does the evidence, including deposition testimony that is partially redacted in the public filing, prove that the "Temp-A-Start" system sold in 1986 contained all the limitations of the asserted patent claims, which would create an invalidating on-sale bar?
- A key legal question will be one of patent misuse: Does the language of the License Agreement require royalty payments to continue after the expiration of the licensed patents? If so, this could render TAS's royalty claims unenforceable, regardless of the patents' validity.
- A dispositive validity challenge for the '469 patent will be a question of inventorship: Can Cummins prove its allegation that the named inventor was not the true and sole inventor of the claimed microprocessor-based system, which would invalidate the patent?