DCT
2:18-cv-10673
Watlow Electric Mfg Co v. Volvo Cars Of North America LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Watlow Electric Manufacturing Company (Missouri)
- Defendant: Volvo Cars of North America LLC (Delaware) and Volvo Car Corporation (Sweden)
- Plaintiff’s Counsel: Tanenbaum Keale LLP
- Case Identification: 2:18-cv-10673, D.N.J., 06/15/2018
- Venue Allegations: Venue is based on Defendant Volvo Cars of North America, LLC having a principal place of business in the District of New Jersey.
- Core Dispute: Plaintiff alleges that Defendant’s Volvo XC90 plug-in hybrid electric vehicle, which incorporates a high-voltage heater supplied by a third party, infringes two patents related to layered heater technology.
- Technical Context: The technology concerns methods for manufacturing electric heaters that can be applied to complex shapes and systems for heaters that self-regulate temperature, which is particularly relevant for electric vehicles that lack a conventional engine's waste heat.
- Key Procedural History: The complaint alleges that Plaintiff previously disclosed layered heater designs and technical information to Webasto, the manufacturer of the accused heater component, at Webasto's request. Following this disclosure, Webasto allegedly released the accused high-voltage layered heating product. Notably, after this complaint was filed, the asserted independent claim of the ’869 patent (Claim 1) was cancelled in an Inter Partes Review (IPR) proceeding (IPR2019-01100), a development that substantially impacts the viability of that infringement count.
Case Timeline
| Date | Event |
|---|---|
| 2001-12-19 | '869 Patent Priority Date |
| 2004-09-15 | ’496 Patent Priority Date |
| 2008-04-22 | '869 Patent Issue Date |
| c. 2011 | Webasto allegedly approaches Watlow about heater design |
| 2013-09-17 | '496 Patent Issue Date |
| 2018-06-15 | Complaint Filing Date |
| 2021-09-03 | IPR Certificate issues cancelling asserted claims of '869 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,361,869 - Method for the Production of an Electrically Conductive Resistive Layer and Heating and/or Cooling Device, issued April 22, 2008
The Invention Explained
- Problem Addressed: The patent describes prior art methods for producing layered heaters as "relatively complex and therefore...comparably expensive" and generally limited to application on "more or less level surfaces" ('869 Patent, col. 1:36-44).
- The Patented Solution: The invention proposes a more straightforward, two-step manufacturing method. First, an electrically conductive material is applied broadly onto a non-conductive substrate, for example, through thermal spraying ('869 Patent, col. 1:51-61). Second, a laser is used to selectively remove portions of this material, thereby creating a resistive layer with a precise, "complex contour pattern" ('869 Patent, col. 8:51-64). This process is designed to be simpler and adaptable to complex, three-dimensional shapes ('869 Patent, col. 2:25-32).
- Technical Importance: The method simplified the manufacturing of custom-shaped heating elements for non-flat objects, a key requirement for integrating heaters into specialized industrial and automotive components.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶27).
- The key elements of independent claim 1 include:
- A heater adapted for fixed placement proximate a separate and external part or medium to be heated.
- A complex shaped substrate.
- A nonconductive layer formed over the substrate.
- An electrically conductive resistive layer formed on the nonconductive layer by a process of:
- forming a material in the form of particles onto the nonconductive layer, and
- subsequently and selectively removing areas of the material using a laser to form a complex contour pattern.
- The complaint references an exhibit (not provided) that also lists dependent claims 2, 5, and 9 (Compl. ¶27).
U.S. Patent No. 8,536,496 - Adaptable Layered Heater System, issued September 17, 2013
The Invention Explained
- Problem Addressed: In many heating applications, local "heat sinks" cause non-uniform temperature distribution. For example, the ends of a hot runner nozzle in an injection molding machine draw away more heat than the middle, leading to an inconsistent temperature in the molten resin ('496 Patent, col. 1:59-col. 2:2).
- The Patented Solution: The patent describes a "smart" layered heater that self-regulates its power output. It uses resistive traces made from a material with specific temperature coefficient characteristics (e.g., a Positive Temperature Coefficient or "PTC" material) ('496 Patent, col. 2:25-30). When a section of the heater cools down (e.g., near a heat sink), the material's resistance in that area decreases, causing it to draw more current and produce more heat locally. Conversely, hotter sections draw less power. This dynamic response helps maintain a constant temperature across the entire heated surface ('496 Patent, Abstract; col. 2:30-34).
- Technical Importance: This technology allows for the creation of heaters that can dynamically and automatically compensate for variable heat loads without complex external sensors or controllers, improving thermal efficiency and process control.
Key Claims at a Glance
- The complaint asserts independent claim 5 (Compl. ¶28). Note: The complaint text at ¶28 contains a typographical error, referring to "claim 5 of the '869 Patent," but the associated exhibit description and context clearly point to the '496 Patent.
- The key elements of independent claim 5 include:
- A constant voltage layered heater.
- A dielectric layer.
- At least one resistive layer defining a circuit configuration with at least one resistive trace.
- The resistive trace is oriented relative to a heating target.
- The resistive trace comprises a material with "temperature coefficient characteristics such that the resistive trace provides power commensurate with demands of the heating target."
- A protective layer formed on the resistive layer.
III. The Accused Instrumentality
Product Identification
- The accused products are Volvo vehicles, specifically the "Volvo XC90 plug-in electric," that include a "high voltage heater product made by Webasto" (the "Webasto HVH") (Compl. ¶¶24, 25).
Functionality and Market Context
- The Webasto HVH serves as an electric heating source for the vehicle (Compl. ¶24). In plug-in hybrid and pure electric vehicles, which may not have a conventional combustion engine's constant waste heat, such electric heaters are required for functions like heating the passenger compartment and defrosting windows (Compl. ¶19). The complaint describes the Webasto HVH as a "layered heater product" (Compl. ¶26).
IV. Analysis of Infringement Allegations
The complaint references claim chart exhibits (Exhibits C and D) that were not attached to the filed document; therefore, the following analysis is based on the narrative allegations in the complaint body.
'869 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A heater adapted for fixed placement proximate a separate and external part or medium to be heated... a complex shaped substrate; | The Webasto HVH is a heating source within the Volvo XC90, allegedly designed for a complex shape to fit within the vehicle. | ¶11, ¶19, ¶25 | col. 8:45-48 |
| a nonconductive layer formed over the substrate; and | The complaint alleges the accused device is a "layered heater product," which inherently implies the presence of dielectric/non-conductive layers as part of its structure. | ¶10, ¶26 | col. 8:49-50 |
| an electrically conductive resistive layer formed on the nonconductive layer by a process of...selectively removing areas...using a laser... | The complaint alleges the Webasto HVH is a "layered heater product that appears to utilize the same technological information as the layered heater design previously provided by Watlow to Webasto," which employed this technology. | ¶26, ¶27 | col. 8:51-64 |
- Identified Points of Contention:
- Evidentiary Question: The complaint's allegation of infringement rests on the inference that because Watlow disclosed its laser-based manufacturing technology to Webasto, the Webasto HVH must be made using that same claimed process (Compl. ¶26). A primary point of contention will be whether Plaintiff can produce evidence that the accused heaters are, in fact, manufactured by applying a material layer and then selectively removing parts of it with a laser, as strictly required by the claim.
- Procedural/Legal Question: The asserted independent claim 1 (along with dependent claims 2-4) was cancelled in IPR2019-01100. This post-filing event presents a dispositive challenge to this count of infringement, as a cancelled claim cannot be infringed.
'496 Patent Infringement Allegations
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A constant voltage layered heater comprising: a dielectric layer; ... a protective layer... | The accused Webasto HVH is described as a "high voltage heater product" and a "layered heater," implying the layered construction. | ¶25, ¶26 | col. 18:8-14 |
| at least one resistive layer...comprising a material having temperature coefficient characteristics such that the resistive trace provides power commensurate with demands of the heating target... | The complaint makes a conclusory allegation that the Webasto HVH falls within the scope of claim 5, but provides no specific facts about the material properties or self-regulating function of the accused heater. | ¶28 | col. 18:1-7 |
- Identified Points of Contention:
- Technical/Evidentiary Question: The complaint provides no technical detail on how the accused Webasto HVH allegedly meets the core functional limitation of the claim. The key dispute will be whether the accused heater's resistive material possesses the specific "temperature coefficient characteristics" that result in it providing "power commensurate with demands" (i.e., self-regulating). Plaintiff will need to produce evidence of the accused heater's material composition, circuit design, and operational performance.
V. Key Claim Terms for Construction
Term: "complex shaped substrate" ('869 Patent, Claim 1)
- Context and Importance: The patent is premised on solving the problem of applying heaters to non-flat surfaces. The definition of "complex shaped" will determine the breadth of geometries to which the claim applies.
- Intrinsic Evidence for a Broader Interpretation: The specification refers generally to "complex three-dimensionally shaped geometry" ('869 Patent, col. 4:41-43) and enabling application to "complex-shaped objects" (col. 1:47-48), suggesting the term is not limited to specific examples.
- Intrinsic Evidence for a Narrower Interpretation: The patent's own figures and detailed descriptions show a "tube shaped flow heater" and a "plate-shaped part" with meanders ('869 Patent, Figs. 1, 4). A party could argue "complex shaped" should be interpreted in light of these disclosed embodiments, potentially excluding shapes of a different character or complexity.
Term: "material having temperature coefficient characteristics such that the resistive trace provides power commensurate with demands of the heating target" ('496 Patent, Claim 5)
- Context and Importance: This functional language is the heart of the '496 patent's "adaptable" invention. The entire infringement case for this patent hinges on whether the accused device performs this specific self-regulating function.
- Intrinsic Evidence for a Broader Interpretation: The claim language is broad and functional. Plaintiff may argue that any material that exhibits a change in resistance with temperature that leads to a useful, power-regulating effect meets this limitation, regardless of the specific mechanism or magnitude.
- Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly highlights specific materials and properties, such as PTC materials with a "relatively high temperature coefficient of resistance (TCR)" or NTC materials with a "relatively high BETA coefficient" ('496 Patent, col. 9:31-34; col. 13:1-2). A defendant may argue that the term should be construed to require materials with these specific, high-coefficient properties described as enabling the invention, not just any material with a non-zero temperature coefficient.
VI. Other Allegations
- Indirect Infringement: The complaint alleges only direct infringement against Volvo (Compl. ¶¶30, 34) and does not contain allegations to support claims of induced or contributory infringement.
- Willful Infringement: The complaint does not explicitly allege willful infringement. While it alleges that third-party Webasto had knowledge of Watlow's technology (Compl. ¶¶20-21), it does not plead that Volvo had any pre-suit knowledge of the patents-in-suit. The standard request for enhanced damages under § 284 is included in the prayer for relief but is not supported by factual allegations of willfulness in the complaint body.
VII. Analyst’s Conclusion: Key Questions for the Case
- Impact of IPR: How will the court address the fact that the sole independent claim asserted from the '869 patent has been cancelled by the USPTO? This post-filing development is almost certainly fatal to the infringement claim in Count I.
- The Manufacturing Process: Can Watlow produce evidence to overcome the inferential nature of its pleadings and prove that the accused Webasto HVH components are manufactured using the specific two-step process of applying a material layer and then selectively removing portions with a laser, as required by the (now-cancelled) claim of the '869 patent?
- The Self-Regulating Function: For the '496 patent, the central issue is one of functional proof: Does the accused Webasto heater actually contain a resistive material with the special temperature-coefficient properties that cause it to self-regulate power output in response to local temperature changes, as claimed? The complaint's conclusory allegation will require significant technical evidence to substantiate.