DCT
0:16-cv-03291
Epg Companies v. Telemetry Process Controls Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Epg Companies (Minnesota)
- Defendant: TELEMETRY AND PROCESS CONTROLS, INC. (Minnesota)
- Plaintiff’s Counsel: HAUGEN LAW FIRM PLLP
- Case Identification: 0:16-cv-03291, D. Minn., 09/29/2016
- Venue Allegations: Venue is alleged to be proper in the District of Minnesota as both parties are Minnesota corporations with principal places of business within the district, and the defendant allegedly transacts business and has committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s "Performance Pump" line of submersible pumps infringes patents related to sump draining apparatus that feature easily serviceable sensor assemblies.
- Technical Context: The technology concerns submersible pumps used in environmental remediation and monitoring, such as draining collected liquid (leachate) from landfill basins.
- Key Procedural History: Plaintiff Epg Companies asserts it holds an exclusive license to the patents-in-suit. The complaint alleges that Defendant had pre-suit knowledge of the patents, potentially obtained through a former EPG employee and access to confidential design information, prior to or during the development of the accused product. The complaint does not mention any prior litigation or post-grant proceedings involving the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2002-12-12 | Priority Date for '848 and '835 Patents |
| 2004-05-04 | Issue Date for U.S. Patent No. 6,729,848 |
| 2009-03-10 | Issue Date for U.S. Patent No. 7,500,835 |
| 2016-09-29 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,729,848 - Sensor Mount for Sump Draining Apparatus (Issued May 4, 2004)
The Invention Explained
- Problem Addressed: The patent describes that in prior art sump draining apparatus, pressure transducers (sensors) were often difficult to access. Servicing or replacing them required a time-consuming and complex disassembly of the entire pump, including removal of the motor, which risked damaging the delicate and expensive sensor. (’848 Patent, col. 1:17-28).
- The Patented Solution: The invention proposes a "sensor mount" shaped like a receptacle that cradles the sensor. This entire mount assembly is designed to be slidable in an axial direction into and out of an open end of the pump's main housing. This allows the sensor to be removed for service or replacement without disassembling the primary pump and motor components, thereby saving time and reducing the risk of damage. (’848 Patent, Abstract; col. 1:31-44).
- Technical Importance: This design improves the serviceability of submersible pumps in the field, seeking to reduce labor costs and downtime associated with sensor maintenance and replacement. (’848 Patent, col. 2:1-6).
Key Claims at a Glance
- The complaint alleges infringement of at least one claim (Compl. ¶20). The analysis below focuses on independent claim 1 as representative of the patent's core teachings. The plaintiff reserves the right to assert additional claims.
- Independent Claim 1: An apparatus comprising:
- a housing having first and second end portions, an inlet, an opening, and an axial direction;
- a pump in the housing;
- a motor in the housing to drive the pump;
- a sensor for sensing a condition; and
- a sensor mount for the sensor, engaged with the housing's second end portion, where the sensor mount and sensor are "slidable in the axial direction into and out of the opening... such that the sensor is easily taken in and out of the housing."
U.S. Patent No. 7,500,835 - Sump Draining Apparatus Having Easily Replaceable Sensor and Mount Therefor (Issued March 10, 2009)
The Invention Explained
- Problem Addressed: Like its parent patent, the ’835 Patent addresses the difficulty of accessing and replacing sensors within submersible pumps, noting the expense and delicacy of the pressure transducers used. (’835 Patent, col. 1:20-31).
- The Patented Solution: The invention builds on the concept of a removable sensor mount by adding a "cord restraint" located at the first end of the housing (opposite the sensor). This restraint is "releasably engaged" with the sensor's cord, allowing it to be loosened. Slackening the cord facilitates the sliding removal of the sensor and its mount from the second end of the housing, a key step in the service process. (’835 Patent, col. 1:47-54; col. 4:16-44).
- Technical Importance: The addition of a releasable cord restraint provides a specific mechanism to further enable the easy removal of the sensor assembly, complementing the slidable mount design. (’835 Patent, Abstract).
Key Claims at a Glance
- The complaint alleges infringement of at least one claim (Compl. ¶30). The analysis below focuses on independent claim 1 as representative. The plaintiff reserves the right to assert additional claims.
- Independent Claim 1: An apparatus comprising:
- a housing, pump, motor, and sensor;
- a sensor mount that is "receptacle shaped for cradling" the sensor and "supporting the sensor removably";
- a cord for the sensor; and
- a "cord restraint" at the first end of the housing that is "releasably engaged with the cord" so a portion can be loosened to permit the sensor to be disengaged from the housing.
III. The Accused Instrumentality
- Product Identification: The accused instrumentality is the TPC "Performance Pump." (Compl. ¶12).
- Functionality and Market Context: The Performance Pump is identified as a submersible pump used for environmental monitoring and recovery wells (Compl. ¶13). The complaint alleges that the product incorporates the key features of the patented inventions, including a housing, sensor, and a sensor mount arranged for easy removal, as well as a cord restraint. (Compl. ¶21, ¶31). The complaint provides a photograph of a partially disassembled accused pump, allegedly showing the sensor mount inside the housing (Compl. ¶21).
IV. Analysis of Infringement Allegations
’848 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) a housing having first and second end portions... with the second end portion having an opening | The accused TPC Performance Pump includes a main pump body, or housing. | ¶21 | col. 2:55-59 |
| (b) a pump in the housing... (c) a motor in the housing | The accused product is a submersible pump, which necessarily contains a pump and motor within its housing to function. | ¶13 | col. 5:1-6 |
| (d) a sensor for sensing a condition | The accused pump includes a sensor. | ¶21 | col. 2:54 |
| (e) a sensor mount for the sensor, with the sensor mount engaged with the second end portion of the housing, with the sensor mount and sensor being slidable in the axial direction... such that the sensor is easily taken in and out of the housing | The Performance Pump is alleged to include a sensor mount arranged such that the sensor can be "easily taken in and out of the housing." The complaint provides a photograph of a partially disassembled pump allegedly revealing this sensor mount. | ¶21 | col. 1:31-44 |
’835 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) a housing... (b) a pump... (c) a motor... (d) a sensor... | The accused Performance Pump is a submersible pump apparatus containing these core components. | ¶31 | col. 9:56-62 |
| (e) a sensor mount for the sensor, with the sensor mount... supporting the sensor removably with respect to the housing | The accused pump is alleged to have a sensor mount that supports the sensor. | ¶21, ¶31 | col. 9:1-5 |
| (f) a cord for the sensor... | The accused pump's sensor is connected to a cord. | ¶31 | col. 9:6-10 |
| (g) a cord restraint engaged with the first end of the housing, with the cord restraint being releasably engaged with the cord such that a portion of the cord can be loosened... | The Performance Pump is alleged to include a cord restraint engaged with the housing that "may be releasably engaged with the cord." The complaint includes a photograph showing this feature. | ¶31 | col. 9:11-19 |
Identified Points of Contention
- Scope Questions:
- A central question for the ’848 patent will be the construction of the term "easily taken in and out of the housing." The parties may dispute what degree of effort, time, or tool usage meets this functional limitation.
- For the ’835 patent, a point of contention may arise from the complaint's allegation that the cord restraint "may be releasably engaged" (Compl. ¶31). This raises the question of whether the accused component is merely a standard cable gland or if it functions as a "releasably engaged" restraint as contemplated by the patent.
- Technical Questions:
- What evidence demonstrates that the accused pump’s internal components function as a "slidable" "sensor mount" as distinct from a more integrated sensor fixture? The photograph in the complaint shows an internal component, but its method of removal is not depicted. (Compl. ¶21).
- What is the specific mechanism of the accused "cord restraint"? The court will need to examine whether its operation allows the cord to be "loosened" to facilitate sensor removal, as required by claim 1 of the ’835 Patent.
V. Key Claim Terms for Construction
The Term: "easily taken in and out of the housing" (’848 Patent, Claim 1)
- Context and Importance: This functional language is at the heart of the ’848 patent's claimed improvement over the prior art. The definition of "easily" will likely determine the scope of the claim and be a focal point of the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The "Summary of the Invention" section frames the advantage in terms of "accessibility," stating the "pressure transducer is readily accessible for service or replacement" and that "Time is saved." (’848 Patent, col. 1:57-60). This could support a construction based on a significant improvement in service time and effort compared to the prior art, which required full pump disassembly.
- Evidence for a Narrower Interpretation: The detailed description of the operation explains a specific process where "set screws 82 in collar 34 are loosened" and the sensor mount is then "slid in the axial direction away from motor 90 and out of collar 34." (’848 Patent, col. 6:28-32). This could support a narrower construction limited to a process that involves loosening fasteners and sliding, but not complete disassembly of the motor and pump.
The Term: "cord restraint being releasably engaged with the cord" (’835 Patent, Claim 1)
- Context and Importance: This term defines a key structural and functional element added in the ’835 patent. How "releasably engaged" is defined will be critical, particularly as the complaint uses the qualifying phrase "may be releasably engaged." (Compl. ¶31).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language requires that the engagement permits a portion of the cord to "be loosened... for permitting the sensor to be disengaged." (’835 Patent, col. 9:13-16). This functional outcome could be argued to cover any fixture that allows for the introduction of slack into the cord, even a standard compression fitting if it can be loosened without destruction.
- Evidence for a Narrower Interpretation: The specification depicts a specific multi-part mechanism including a "base connector," a "plastic tapered pinching cap," and a "threaded nut." (’835 Patent, Fig. 2B; col. 4:16-39). A defendant might argue that "releasably engaged" should be limited to a mechanism, like the one shown, that is specifically designed for repeated loosening and tightening to facilitate service, rather than a single-use or standard industrial fitting.
VI. Other Allegations
- Indirect Infringement: The complaint alleges direct infringement under 35 U.S.C. §271(a) (Compl. ¶20, ¶30) and does not contain allegations of induced or contributory infringement.
- Willful Infringement: The complaint reserves the right to assert willfulness pending discovery. It lays a foundation for such a claim by alleging that the Defendant had knowledge of the patents-in-suit "before and/or during development of the TPC Performance Pump" (Compl. ¶24, ¶34) and that this knowledge may have been obtained via a former EPG employee and access to "detailed and confidential design information." (Compl. ¶14).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of functional interpretation: Does the process of removing the sensor from the accused "Performance Pump" meet the standard of being "easily taken in and out" as required by the ’848 patent? The resolution will likely depend on factual evidence comparing the serviceability of the accused device to both the patent's teachings and the prior art it sought to improve.
- Another key question will be one of structural and functional equivalence: Does the accused pump’s fitting for the sensor cord function as a "cord restraint being releasably engaged" as claimed in the ’835 patent? The court will need to determine if the accused component is designed to be loosened to provide slack for sensor removal, or if it is a standard, non-releasable fixture, presenting a potential mismatch in technical operation.
- Finally, the allegations of pre-suit knowledge via a former employee create a significant evidentiary question regarding intent. Should infringement be found, the case may turn on what discovery reveals about what Defendant knew concerning the patents-in-suit and when, which will be central to any determination of willfulness.