DCT
1:18-cv-01873
Berkenhoff GmbH v. OPEC Engineering Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Berkenhoff GmbH (Germany)
- Defendant: Opec Engineering Co., Ltd. and Opecmade, Inc. (Korea)
- Plaintiff’s Counsel: Jenner & Block LLP
- Case Identification: 1:18-cv-01873, N.D. Ill., 03/14/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendants, who are foreign corporations without a principal place of business in the U.S., conduct business in the district, have purposefully availed themselves of the laws of Illinois, and have previously filed lawsuits in the district.
- Core Dispute: Plaintiff alleges that Defendants’ wire electrodes for electrical discharge machining infringe a patent related to the specific metallurgical composition of the wire’s core and sheath layers.
- Technical Context: The technology concerns specialized wire used in electrical discharge machining (EDM), a high-precision manufacturing process, where the wire's material properties directly impact cutting speed and efficiency.
- Key Procedural History: The patent-in-suit is a reissued patent. The complaint does not mention any other prior litigation, licensing history, or IPR proceedings involving this patent.
Case Timeline
| Date | Event |
|---|---|
| 1988-01-01 | Defendants founded as an electrode wire company (approx.) |
| 1995-03-24 | ’789 Patent Priority Date |
| 2002-09-10 | Original U.S. Patent 6,447,930 Issued |
| 2012-07-13 | Reissue Application for '789 Patent Filed |
| 2014-03-04 | U.S. Reissue Patent RE44,789 Issued |
| 2018-03-14 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissue Patent No. RE44,789 - Wire Electrode And Process For Producing A Wire Electrode, Particular For A Spark Erosion Process
- Patent Identification: U.S. Reissue Patent No. RE44,789, Wire Electrode And Process For Producing A Wire Electrode, Particular For A Spark Erosion Process, issued March 4, 2014.
The Invention Explained
- Problem Addressed: The patent addresses performance limitations in prior art wire electrodes used for spark erosion. Wires with pure zinc coatings were consumed too quickly, while creating wires with a more durable "beta brass" alloy sheath was costly and difficult to control, often resulting in inconsistent metallurgical phases that degraded cutting capacity. (RE44,789 Patent, col. 2:35-59).
- The Patented Solution: The invention is a wire electrode (and a process for making it) with a specific layered structure designed for improved cutting performance. It achieves this by using a manufacturing process involving very short diffusion times, high heat, and rapid cooling to create a sheath layer with a specific, non-equilibrium brass phase structure—primarily "gamma phase" brass—which was found to have better cutting behavior than the prior art's beta phase. (’789 Patent, col. 2:24-41). The process is designed to produce this desirable gamma phase while minimizing the formation of other, less desirable brass phases. (’789 Patent, col. 2:34-37).
- Technical Importance: This approach aimed to produce a wire electrode with superior cutting capacity and consistency, particularly for demanding tasks, by moving beyond conventional equilibrium-based metallurgy to leverage specific, controllable non-equilibrium alloy phases. (’789 Patent, col. 2:15-23).
Key Claims at a Glance
- The complaint asserts claims 1 and 10-14, with a specific focus on claim 12. (Compl. ¶16, ¶20). Claim 12 is an independent product claim.
- Essential elements of Independent Claim 12:
- A wire electrode comprising a core and a sheath formed directly on said core,
- The core consists of copper, a copper/zinc alloy with at least an alpha phase fraction, or has an outer layer of copper or a copper/zinc alloy,
- The sheath has an outermost layer made of a copper/zinc alloy that predominantly contains a gamma phase,
- The outermost layer has a substantial absence of beta phase.
- The complaint does not explicitly reserve the right to assert other dependent claims, but the infringement count is broad enough to include them. (Compl. ¶27).
III. The Accused Instrumentality
Product Identification
- The "Zinco1st" and "Tiger" wire electrodes, and other "similarly configured wire electrodes." (Compl. ¶17).
Functionality and Market Context
- The Accused Products are consumable wire electrodes sold for use in EDM machines. (Compl. ¶15). The complaint provides technical specifications from Defendants’ marketing materials, indicating the Zinco1st product has a "CuZn35" core material and a "Zn Alloy" coating material. (Compl. ¶23, p. 4). A cross-sectional micrograph provided in the complaint shows the Accused Products have a distinct "core" and "sheath" structure. (Compl. ¶22, p. 4). The complaint alleges these products are exported to and sold in the United States through distributors and for private-label sale. (Compl. ¶15, ¶18-19).
IV. Analysis of Infringement Allegations
RE44,789 Infringement Allegations
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A wire electrode comprising a core and a sheath formed directly on said core, | The Accused Products contain a "core" and a "sheath" layer. A provided micrograph of an accused product is labeled to show these two components. | ¶22 | col. 4:35-42 |
| said core consisting of copper, a copper/zinc alloy having at least an alpha phase fraction or having an outer layer consisting of copper or a copper/zinc alloy | The Accused Products' core is made of "CuZn35," which the complaint alleges is a zinc concentration that "corresponds to alpha phase brass." This is based on Defendants' own technical specifications. | ¶23 | col. 4:35-42 |
| and said sheath having an outermost layer consisting of a copper/zinc alloy predominantly containing a gamma phase, | Based on "information and belief," the "coating material" of the Accused Products, described as a "Zn alloy," allegedly comprises an outermost layer of a copper/zinc alloy that predominantly contains a gamma phase. | ¶24 | col. 4:40-42 |
| wherein the outermost layer consisting of a copper/zinc alloy has a substantial absence of beta phase. | Based on "information and belief," the outermost layer of the Accused Products' sheath allegedly has a substantial absence of the beta phase. | ¶24 | col. 4:40-42 |
- Identified Points of Contention:
- Technical Questions: The complaint's allegations for the final two elements of Claim 12—the presence of a gamma phase and the absence of a beta phase—are made solely "on information and belief." (Compl. ¶24). A central question will be what factual evidence (e.g., metallurgical analysis) Plaintiff can produce to substantiate that the Defendants' "Zn Alloy" coating (Compl. p. 4) meets these specific, technical limitations. The complaint itself does not provide such evidence.
- Scope Questions: The dispute may turn on the definition of metallurgical terms. For example, does the "CuZn35" core material specified in the Defendants' product catalog (Compl. p. 4) definitively meet the claim requirement of "having at least an alpha phase fraction"? Further, the interpretation of what constitutes "predominantly containing" a gamma phase and a "substantial absence" of a beta phase will be critical.
V. Key Claim Terms for Construction
The Term: "substantial absence of beta phase"
Context and Importance: This negative limitation is a defining feature of the claimed invention, distinguishing it from prior art that sought to create beta phase sheaths. The infringement analysis will hinge on whether the Accused Products, which are alleged to have a "Zn Alloy" coating, meet this "absence" requirement. Practitioners may focus on this term because its definition will set the evidentiary bar for both infringement and validity.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (i.e., allowing for some beta phase): The term "substantial absence" itself suggests that trace or de minimis amounts of beta phase may be present without vitiating the claim.
- Evidence for a Narrower Interpretation (i.e., requiring virtually no beta phase): The specification states that in the inventive process, "The beta phases remain, in practice, below the detection limit and are revealed merely as very small margins." (’789 Patent, col. 2:34-36). This language could support a construction requiring the amount of beta phase to be negligible or undetectable by standard means.
The Term: "predominantly containing a gamma phase"
Context and Importance: This term defines the essential character of the patented sheath. The plaintiff's infringement case depends on proving the accused "Zn Alloy" coating is primarily composed of gamma phase brass. The ambiguity of "predominantly" makes its construction a likely point of dispute.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (e.g., primary functional component): The patent contrasts the invention with prior art having mixed alpha, beta, and gamma phases, suggesting "predominantly" could mean that the gamma phase is the main or most significant phase, even if not a majority by weight or volume. (’789 Patent, col. 2:21-23).
- Evidence for a Narrower Interpretation (e.g., >50%): The specification describes a process that makes it "possible to produce pure epsilon or gamma phases." (’789 Patent, col. 2:38-39). The stated goal of producing "pure" phases could be used to argue that "predominantly" requires a very high, if not majority, concentration of the gamma phase.
VI. Other Allegations
- Indirect Infringement: The complaint makes a general allegation of infringement under 35 U.S.C. § 271(a) but does not plead specific facts to support claims of induced or contributory infringement. (Compl. ¶27). The allegations focus on direct infringement by Defendants' making, selling, offering for sale, and importing the Accused Products.
- Willful Infringement: The complaint alleges that "Defendants were aware of the existence of the '789 patent" and knew their actions would constitute infringement. (Compl. ¶28). The pleading asserts this knowledge existed despite "an objectively high likelihood" of infringement, forming the basis for a willfulness claim. (Compl. ¶29).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case appears to depend on two primary questions:
An evidentiary question of composition: Can the Plaintiff prove through discovery and expert metallurgical analysis that the Defendants' "Zn Alloy" coating in the Accused Products actually has the alloy structure required by Claim 12? The complaint's reliance on "information and belief" for the crucial limitations—the predominance of gamma phase and the absence of beta phase—highlights that this factual evidence will be dispositive.
A claim construction question of degree: What are the precise boundaries of the terms "predominantly containing" and "substantial absence"? The court's interpretation of these relative terms will define the scope of the patent and determine the standard of proof the Plaintiff must meet to show that the measured composition of the Accused Products infringes.