Fluid Cooling Systems LLC v. Richard Bovensiep

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Fluid Cooling Systems, LLC (Michigan)
  • Defendant: Richard Bovensiep (Michigan)
  • Plaintiff’s Counsel: Bodman PLC
• Case Identification: 3:19-cv-10075, E.D. Mich., 01/09/2019
• Venue Allegations: Venue is based on the defendant being a resident of the judicial district.
• Core Dispute: Plaintiff seeks a declaratory judgment to correct the inventorship of a patent for a centrifugal separator, alleging its employee is the sole inventor and that the named co-inventor, a former employee, made no inventive contribution and should be removed from the patent.
• Technical Context: The technology concerns centrifugal separators used in industrial fluid systems to remove solid particles from liquids without using traditional filters that can clog.
• Key Procedural History: The complaint alleges that the sole inventive concept came from Plaintiff's principal, Robert Antaya, who then instructed Defendant, an employee, to model the design in CAD software. The Defendant was tasked with communicating with a patent attorney and allegedly misrepresented himself as a co-inventor, leading to the patent issuing with incorrect inventorship.

Case Timeline

Date	Event
2010	Robert Antaya founds Plaintiff Fluid Cooling Systems (FCS).
2012	FCS hires Defendant Richard Bovensiep as a "Design Engineer."
2013	Robert Antaya allegedly conceives the invention.
2014-05-15	Patent application filed, naming Antaya and Bovensiep as inventors.
2015	Bovensiep leaves employment with FCS.
2018-01-09	U.S. Patent No. 9,861,913 issues.
2018-12-04	FCS sends a letter to Bovensiep requesting assignment of his rights.
2018-12-14	Antaya formally assigns his rights in the patent to FCS.
2019-01-09	Complaint filed.

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

• Patent Identification: U.S. Patent No. 9,861,913, Centrifugal Separator, issued January 9, 2018.

U.S. Patent No. 9,861,913 - Centrifugal Separator

The Invention Explained

• Problem Addressed: The patent addresses the inefficiency of using mesh filters to separate significant quantities of solid particles from liquids, as such filters "will quickly clog and be rendered useless" (U.S. Patent No. 9,861,913, col. 1:11-14).
• The Patented Solution: The invention is a separator that uses vortex separation instead of a filter. A fluid containing particles enters a cylindrical chamber tangentially, causing it to spin (’913 Patent, col. 2:63-68). An internal discharge pipe features spiraling 'directional blades' that maintain the fluid's spin down the length of the chamber, forcing heavier particles to the outer wall. A 'baffle dome' at the bottom slows the fluid, allowing particles to settle into a collection zone, while cleaner fluid reverses course and exits up through the central discharge pipe ('913 Patent, Abstract; col. 2:45-51).
• Technical Importance: This design aims to provide continuous, effective particle separation in industrial fluid systems without the maintenance downtime and replacement costs associated with conventional filters ('913 Patent, col. 1:28-32).

Key Claims at a Glance

The complaint does not assert claims for infringement. The claims define the scope of the "Invention" at the center of the inventorship dispute (Compl. ¶27, ¶79). The independent claims are:

• Independent Claim 1:
  • a cylindrical body
  • an inlet port delivering a fluid tangentially into the body
  • an outlet port at the top of the separator
  • a discharge pipe extending from the outlet port into the body
  • blades disposed spirally along the entire length of the discharge pipe, extending directly from its outer surface, with a gap between the blades' outer periphery and the inside surface of the cylindrical body
• Independent Claim 13:
  • A separator with the elements of claim 1, and further including:
  • a reduction baffle in the inlet port to increase fluid velocity
  • a baffle at a lower portion of the cylindrical body
  • flow straightening vanes inside the discharge pipe

III. The Accused Instrumentality

This action does not allege patent infringement, and therefore no accused instrumentality is identified.

IV. Analysis of Infringement Allegations

This action does not allege patent infringement, and therefore no infringement analysis is applicable.

V. Key Claim Terms for Construction

While this is not an infringement case, the determination of inventorship will require the court to understand the scope of the claimed invention to assess whether the defendant's alleged contributions were inventive.

• The Term: "blades disposed spirally along an entire length of...the discharge pipe"
• Context and Importance: Plaintiff alleges that Antaya conceived the "idea of using spiraling blades" and that Bovensiep's role was limited to inputting technical details into CAD software (Compl. ¶26, ¶30). The dispute may turn on whether Bovensiep's work in translating the concept into a specific, workable CAD design constitutes "conception" of this claimed element. Practitioners may focus on this term to distinguish between the general idea (conception) and its mere reduction to practice or drafting (non-inventive contribution).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes the blades' function as preventing fluid "from taking the path of least resistance down the inside of the body while maintaining the spinning of the fluid" ('913 Patent, col. 3:25-28). This functional description could support a view that any structure achieving this result meets the limitation, potentially broadening what is considered part of the "conception."
  • Evidence for a Narrower Interpretation: The claims require the blades to be disposed "spirally along an entire length" and extend "directly from an outer surface" ('913 Patent, col. 4:51-54). Specific embodiments show the blades as discontinuous (col. 3:38-42, Fig. 5), and the specification provides a typical angular range of 5 to 25 degrees (col. 3:42-44). These details could be used to argue that conception required defining these more specific structural parameters, not just the general idea of "spiraling blades."

VI. Other Allegations

The complaint's central allegations concern inventorship and ownership rather than infringement.

• Correction of Inventorship (Count I): The complaint alleges that Robert Antaya is the sole inventor of the subject matter claimed in the '913 Patent (Compl. ¶79). It is alleged that Antaya conceived the invention in 2013 and reduced it to practice, developing the "optimal technical details and specifications" (Compl. ¶26-27). Defendant Bovensiep's role was allegedly limited to that of a skilled draftsman, implementing Antaya's instructions to "input technical details and specifications into CAD and/or other design software programs" (Compl. ¶30). The complaint further alleges that Bovensiep, without Plaintiff's knowledge, falsely informed the patent attorney that he was a co-inventor (Compl. ¶50, ¶52). To support Plaintiff's claim of ownership over the underlying design work, the complaint references a drawing Bovensiep allegedly attached to an Invention Disclosure Form which states the drawing is the "property of Fluid Cooling Systems, LLC" (Compl. ¶45-46).
• Ownership via Implied-in-Fact Contract (Count II): Plaintiff alleges that it is the sole owner of the '913 Patent, including any rights Bovensiep might claim (Compl. ¶88). This claim is based on an "implied-in-fact contract" arising from the circumstances of Bovensiep's employment. The complaint alleges Bovensiep was hired specifically to assist in developing new products, was paid for his work on the invention, and that there was a mutual understanding at the company that inventions created by employees belonged to FCS (Compl. ¶34, ¶84-87).
• Unfair Competition (Counts III & IV): Plaintiff alleges that Bovensiep has engaged in unfair competition under Michigan common law and federal law (15 U.S.C. § 1125) by claiming ownership and attempting to license the '913 Patent to third parties, including Miller-Leaman, Inc. and Zero Gravity Filters, Inc. (Compl. ¶61-63, ¶92, ¶95). These attempts allegedly involved the use of "photographs, videos, and documents created and owned by FCS" (Compl. ¶64-65).

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

• A core issue will be one of inventorship: did Defendant’s alleged contribution of creating CAD models based on another’s instructions (Compl. ¶30) constitute a non-inventive exercise of ordinary skill, or did it rise to the level of "conception" of a claimed element as understood under U.S. patent law? The court’s decision will depend on the factual evidence distinguishing the initial concept from its final, detailed design.
• A secondary, but critical, question will be one of ownership: if the court finds Defendant to be a rightful co-inventor, did an implied-in-fact contract exist that automatically assigned his ownership rights to the Plaintiff? This will turn on evidence regarding the nature of his employment and the mutual understandings between the parties at the time the invention was created.
• A final evidentiary question relates to unfair competition: irrespective of inventorship, did Defendant’s alleged use of Plaintiff’s proprietary materials (Compl. ¶64-65) to market the patent create liability for misappropriation or false association?