DCT
1:04-cv-02534
Paratek Microwave Inc v. Agile Materials Tech Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Paratek Microwave, Inc. (Delaware)
- Defendant: Agile Materials and Technologies, Inc. (California)
- Plaintiff’s Counsel: Rothwell, Figg, Ernst & Manbeck
- Case Identification: Paratek Microwave, Inc. v. Agile Materials and Technologies, Inc., 1:04-cv-02534, D. Md., 08/02/2004
- Venue Allegations: Plaintiff alleges that Defendant conducts business in the District of Maryland, including using, offering for sale, and selling the accused products within the district.
- Core Dispute: Plaintiff alleges that Defendant’s tunable capacitors, tunable filters, and phase shifters infringe four patents related to voltage-tunable radio-frequency (RF) components and the devices that incorporate them.
- Technical Context: The technology involves using ferroelectric materials, whose dielectric properties change with an applied voltage, to create adjustable electronic components for high-frequency applications, which is significant for developing compact and versatile telecommunications systems.
- Key Procedural History: The complaint does not mention any prior litigation, inter partes review (IPR) proceedings, or licensing history related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 1998-10-16 | ’814 Patent Priority Date |
| 1999-11-18 | ’102 Patent Priority Date |
| 2000-09-12 | ’440 Patent Priority Date |
| 2000-12-12 | ’817 Patent Priority Date |
| 2002-04-23 | ’440 Patent Issue Date |
| 2003-04-29 | ’102 Patent Issue Date |
| 2004-02-03 | ’817 Patent Issue Date |
| 2004-02-03 | ’814 Patent Issue Date |
| 2004-08-02 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,556,102 - "RF/MICROWAVE TUNABLE DELAY LINE," issued April 29, 2003
The Invention Explained
- Problem Addressed: The patent identifies a need for tunable delay lines that are simple in structure, reliable, and can be rapidly controlled at microwave frequencies, noting that prior art solutions were often complex, slow, or unsuitable for such high frequencies (ʼ102 Patent, col. 1:15-43).
- The Patented Solution: The invention is an electronic delay line comprising a primary conductor and a ground conductor separated by a layer of voltage-tunable dielectric material. By applying a DC voltage across the material, its dielectric constant changes, which in turn alters the group velocity of an RF signal passing along the conductor, thereby creating a controllable time delay (ʼ102 Patent, col. 3:6-14; Fig. 1).
- Technical Importance: This approach enables precise, real-time adjustment of signal timing in high-frequency circuits, a critical function for linearizing amplifiers and other advanced telecommunications applications (ʼ102 Patent, col. 1:25-34).
Key Claims at a Glance
- The complaint asserts infringement of the patent generally, with Independent Claim 1 being representative of the core invention (Compl. ¶16-17).
- The essential elements of Independent Claim 1 include:
- An input and an output.
- A first conductor coupled to the input and output.
- A ground conductor.
- A voltage tunable dielectric layer positioned between the first and ground conductors.
- The layer must have a loss tangent in the range of 0.001 to 0.01 at frequencies from 800 MHz to 40 GHz.
- The complaint does not explicitly reserve the right to assert dependent claims, but the general nature of the allegations suggests this possibility.
U.S. Patent No. 6,686,817 - "ELECTRONIC TUNABLE FILTERS WITH DIELECTRIC VARACTORS," issued February 3, 2004
The Invention Explained
- Problem Addressed: The patent notes that microwave filters are a major contributor to the size of communication circuits, particularly in multi-band devices that require multiple fixed filters. This creates a need for compact, high-performance, electronically tunable filters (ʼ817 Patent, col. 1:10-21).
- The Patented Solution: The invention is a radio frequency filter built with multiple resonant circuits (resonators). The filter's frequency response is made electronically tunable by incorporating voltage tunable dielectric capacitors, known as varactors, as key components within these resonators. Adjusting the voltage applied to the varactors changes their capacitance, which in turn shifts the resonant frequency of the filter (ʼ817 Patent, col. 2:28-36; Fig. 1).
- Technical Importance: This technology facilitates the creation of smaller, lighter, and more adaptable communication systems by allowing a single tunable filter to replace numerous fixed filters and their associated switching circuitry (ʼ817 Patent, col. 1:17-21).
Key Claims at a Glance
- The complaint asserts infringement broadly, with Independent Claim 1 representing the fundamental filter architecture (Compl. ¶19-20).
- The essential elements of Independent Claim 1 include:
- An input and an output.
- First and second resonators coupled to the input and output.
- The first resonator includes a first voltage tunable dielectric varactor.
- The second resonator includes a second voltage tunable dielectric varactor.
- Each varactor comprises a tunable dielectric layer with a loss tangent less than 0.005 at around 2 GHz and is capable of low insertion loss at room temperature.
- The complaint's general allegations may implicitly reserve the right to assert other claims.
Multi-Patent Capsule: U.S. Patent No. 6,686,814
- Patent Identification: U.S. Patent No. 6,686,814, "Voltage Tunable Varactors and Tunable Devices Including Such Varactors," issued February 3, 2004.
- Technology Synopsis: The patent addresses the poor performance (low quality factor, or "Q factor") of conventional varactors at high frequencies (ʼ814 Patent, col. 2:1-10). The invention is a planar varactor structure comprising a tunable ferroelectric layer on a low-dielectric substrate, with two electrodes positioned on top of the ferroelectric layer and separated by a gap. This design is intended to achieve a high Q factor at frequencies above 1 GHz (ʼ814 Patent, col. 3:20-30; Abstract).
- Asserted Claims: The complaint does not specify claims; Independent Claim 5 is representative of the varactor structure.
- Accused Features: The complaint accuses Defendant’s "tunable capacitors, tunable filters, and phase shifters" (Compl. ¶22).
Multi-Patent Capsule: U.S. Patent No. 6,377,440
- Patent Identification: U.S. Patent No. 6,377,440, "Dielectric Varactors with Offset Two-Layer Electrodes," issued April 23, 2002.
- Technology Synopsis: The patent seeks to solve the difficulty of achieving low capacitance in vertical-structure varactors without requiring excessively high bias voltages (ʼ440 Patent, col. 2:36-52). The patented solution is a varactor architecture where a portion of one electrode extends over the top surface of a tunable dielectric material that is situated in the gap between it and a second electrode. This "offset two-layer" structure creates a vertical capacitance component that enables finer control (ʼ440 Patent, col. 3:56–col. 4:29; Abstract).
- Asserted Claims: The complaint does not specify claims; Independent Claim 1 is representative of the device structure.
- Accused Features: The complaint accuses Defendant’s "tunable capacitors, tunable filters, and phase shifters" (Compl. ¶25).
III. The Accused Instrumentality
- Product Identification: The complaint identifies the accused instrumentalities as "tunable capacitors, tunable filters, and phase shifters" manufactured, used, and sold by Defendant Agile Materials and Technologies, Inc. (Compl. ¶1).
- Functionality and Market Context: The complaint does not provide specific model numbers, technical documentation, or descriptions of how the accused products operate. It alleges in a conclusory manner that these product categories embody the inventions of the patents-in-suit (Compl. ¶16, ¶19, ¶22, ¶25). No specific allegations are made regarding the products' commercial importance or market positioning beyond the general assertion that Defendant is in the business of selling them (Compl. ¶3).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain specific factual allegations or a claim chart mapping patent limitations to features of the accused products. The infringement theory is stated in broad, conclusory terms.
’102 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A tunable delay line comprising: an input; an output; | The complaint alleges that Defendant’s accused devices, including tunable filters and phase shifters, embody the claimed invention, but provides no specific details. | ¶16 | col. 7:42-45 |
| a first conductor electrically coupled to the input and the output; a ground conductor; | The complaint alleges that Defendant’s accused devices embody the claimed invention, but provides no specific details. | ¶16 | col. 7:46-50 |
| a voltage tunable dielectric layer positioned between the first conductor and the ground conductor; | The complaint alleges that Defendant’s accused devices embody the claimed invention, but provides no specific details. | ¶16 | col. 7:51-53 |
| wherein the voltage tunable dielectric material has a loss tangent in the range of 0.001 to 0.01 at frequencies in a range of 800 MHz to 40 GHz. | The complaint alleges that Defendant’s accused devices embody the claimed invention, but provides no specific details. | ¶16 | col. 7:54-58 |
’817 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A radio frequency electronic filter comprising: an input; an output; | The complaint alleges that Defendant’s accused devices, including tunable filters, embody the claimed invention, but provides no specific details. | ¶19 | col. 9:50-54 |
| first and second resonators coupled to the input and the output; | The complaint alleges that Defendant’s accused devices embody the claimed invention, but provides no specific details. | ¶19 | col. 9:55-57 |
| the first resonator including a first voltage tunable dielectric varactor; and the second resonator including a second voltage tunable dielectric varactor, | The complaint alleges that Defendant’s accused devices embody the claimed invention, but provides no specific details. | ¶19 | col. 9:58–col. 10:2 |
| each of the first and second voltage tunable dielectric varactors comprising a tunable dielectric layer having a loss tangent less than 0.005 at around 2 GHZ... | The complaint alleges that Defendant’s accused devices embody the claimed invention, but provides no specific details. | ¶19 | col. 10:3-9 |
- Identified Points of Contention:
- Evidentiary Questions: The primary point of contention is evidentiary. The complaint makes conclusory allegations without providing any factual support. A central question for the court will be whether discovery reveals evidence that Agile's products actually contain the structures taught in the patents (e.g., a "voltage tunable dielectric layer" for the ʼ102 Patent, or "resonators" including "tunable dielectric varactors" for the ʼ817 Patent).
- Technical Questions: Assuming evidence of infringement emerges, a key technical question for the ʼ102 and ʼ817 Patents will be whether the materials used in Agile's products meet the specific performance metrics required by the claims, such as the "loss tangent" values. The complaint provides no information on this point.
V. Key Claim Terms for Construction
The lack of a detailed infringement theory in the complaint makes it difficult to pinpoint specific terms for construction. However, based on the technology, the following terms may become central to the dispute.
For the ’102 Patent:
- The Term: "voltage tunable dielectric layer"
- Context and Importance: This term is the technological heart of the invention. The entire principle of operation depends on this layer's properties. Practitioners may focus on this term because its construction will determine whether the materials used in the accused products fall within the claim scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses a wide variety of materials that can form the layer, including Barium-Strontium Titanate (BSTO), various BSTO-composites, PZT, and numerous other ferroelectrics, suggesting the term is not limited to a single composition (ʼ102 Patent, col. 3:46–col. 4:14).
- Evidence for a Narrower Interpretation: Claim 1 itself limits the term by requiring a specific "loss tangent" (0.001 to 0.01) within a specific frequency range (800 MHz to 40 GHz). A defendant could argue this imposes a significant functional and material limitation not met by its products.
For the ’817 Patent:
- The Term: "resonator"
- Context and Importance: The claims require the tunable varactors to be included in "resonators". The definition of a "resonator" and the nature of the varactor's inclusion will be critical. A defendant might argue its tunable components are used for coupling or impedance matching, not as part of the core resonating structure as depicted in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The abstract states that the resonators can be "a lumped element resonator, a ceramic resonator, or a microstrip resonator," suggesting the term covers multiple distinct physical implementations (ʼ817 Patent, Abstract).
- Evidence for a Narrower Interpretation: The patent’s figures consistently depict the "resonator" as a classic LC tank circuit where the tunable varactor (C1, C2, C3) is a fundamental component of the resonating structure itself, which may support a narrower construction tied to this specific circuit topology (ʼ817 Patent, Fig. 1).
VI. Other Allegations
- Indirect Infringement: The complaint does not plead specific facts required to support a claim for indirect infringement. It does not allege that Agile had knowledge of the patents-in-suit or that it took specific actions to encourage its customers to infringe.
- Willful Infringement: The complaint does not contain allegations of pre-suit or post-suit knowledge of the patents. It pleads no specific facts that would support a claim for willful infringement beyond the general and conclusory allegations of infringement (Compl. ¶16, ¶19, ¶22, ¶25).
VII. Analyst’s Conclusion: Key Questions for the Case
Given the preliminary stage and the nature of the pleading, the case appears to turn on two fundamental sets of questions.
- A primary issue will be one of evidentiary sufficiency: can the plaintiff, through discovery, produce evidence to support its bare-bones allegations? The case will depend on whether the accused "tunable capacitors, filters, and phase shifters" are found to actually practice the specific device architectures and meet the performance criteria claimed in the patents-in-suit.
- Assuming such evidence is presented, the case will likely focus on definitional scope: how will core technical terms be construed? The dispute may center on whether the components and materials in Agile’s products meet the definitions of a "voltage tunable dielectric layer" with specific loss tangents (’102 Patent) and whether its tunable elements function as part of a "resonator" as claimed in the ’817 Patent.