DCT
2:19-cv-21097
Across Intl LLC v. SH Scientific Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Across International, LLC (New Jersey)
- Defendant: SH Scientific Corp. (Oregon); SH Scientific Co. Ltd. (South Korea); Mr. Jihoon Bang
- Plaintiff’s Counsel: Weitzman Law Offices, LLC
- Case Identification: 2:19-cv-21097, D.N.J., 12/05/2019
- Venue Allegations: Venue is asserted based on the Plaintiff's headquarters residing within the district, and on Defendants having directed accusations of infringement to the Plaintiff within the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its laboratory cold trap products do not infringe Defendant's patent, and further alleges the patent is invalid and unenforceable due to the patent owner’s failure to disclose its own prior art products to the U.S. Patent Office during prosecution.
- Technical Context: The technology involves cold traps, which are devices used in laboratory vacuum systems to condense and freeze vapors before they can enter and damage a vacuum pump.
- Key Procedural History: The complaint alleges that Defendants, during the prosecution of the patent-in-suit, failed to disclose their own prior art cold trap products (Model SH-CTBR1/SH-CTBR2/T40) that were allegedly on sale more than a year before the patent application's effective filing date. The complaint further alleges that Defendants made arguments to the patent examiner to overcome prior art rejections that they knew were contradicted by their own undisclosed prior art products, forming the basis for claims of inequitable conduct and unenforceability.
Case Timeline
| Date | Event |
|---|---|
| 2014-11-17 | Alleged first offer for sale of Defendants' prior art products (SH-CTBR1/SH-CTBR2/T40) |
| 2016-11-22 | Patent Priority Date (Korean Application) |
| 2017-02-28 | U.S. Patent Application Filing Date |
| 2018-09-01 | Plaintiff begins selling its accused T40 Cold Trap products |
| 2019-09-17 | U.S. Patent No. 10,413,863 Issue Date |
| 2019-10-29 | Defendants send cease-and-desist letter to Plaintiff |
| 2019-11-06 | Defendants' representative allegedly calls Plaintiff to demand license fee or threaten suit |
| 2019-12-05 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,413,863 - "Cold Trap"
Issued September 17, 2019.
The Invention Explained
- Problem Addressed: The patent's background section describes an issue in conventional cold traps where the cold "receiving portion" is directly coupled (e.g., by welding) to the main body of the device ('863 Patent, col. 1:53-56). This direct thermal contact causes cold to be transferred to the main body, leading to undesirable dew condensation which can cause short circuits in electronic components, and also reduces the overall energy efficiency of the device by warming the trap ('863 Patent, col. 1:57-68).
- The Patented Solution: The invention proposes a cold trap with a distinct "insulation portion" installed between the main body and the trap portion ('863 Patent, col. 2:27-33). This insulation component serves two functions: it structurally supports the flange of the trap portion and thermally isolates it, blocking the transfer of cold to the main body ('863 Patent, col. 7:38-44). By preventing this heat exchange, the design aims to eliminate condensation and improve the efficiency of freezing evaporated steam from the vacuum system ('863 Patent, col. 4:11-18).
- Technical Importance: This design purports to enhance the stability and energy efficiency of cold traps used to protect laboratory vacuum pumps from moisture ('863 Patent, col. 2:16-25).
Key Claims at a Glance
- The complaint identifies independent claims 1 and 10 as being at issue (Compl. ¶¶33-40).
- Independent Claim 1:
- a main body connectable to an exhaust line between a vacuum dryer and a vacuum pump, the main body having an upper horizontal surface;
- a trap portion suspended by a flange of the trap portion through a first receiving hole in the upper horizontal surface; and
- an insulation portion installed between the upper horizontal surface of the main body and the trap portion that blocks cold of the trap portion from being conducted to the upper horizontal surface of the main body, the insulation portion supporting the flange.
- Independent Claim 10:
- a main body having an upper horizontal surface defining a receiving hole;
- a trap portion having a trap chamber suspended downwardly through the receiving hole, rigidly retained, and connectable to an exhaust line; where
- the trap portion has a support flange that is supported by but spaced apart from the upper surface of the main body to prevent heat exchange between the main body and the trap portion.
- The complaint asserts non-infringement and invalidity of dependent claims 2-9 and 11-17 (Compl. ¶¶35, 40, 42).
III. The Accused Instrumentality
Product Identification
The "T40 Cold Trap" products sold by Across International since September 2018 (Compl. ¶¶23-25).
Functionality and Market Context
- The complaint alleges that the accused T40 Cold Trap products are, in all material respects, "structurally identical" to the prior art cold trap products (Model SH-CTBR1/SH-CTBR2/T40) that Defendant SH Korea previously sold to the Plaintiff (Compl. ¶25).
- The complaint describes the accused products as using a "prior art removable glass cold trap that is independent of the T40 Cold Trap products," where a portion of the glass trap extends into a fluid bath cooled by coils (Compl. ¶31). This description is offered as part of the plaintiff's argument for non-infringement.
- The complaint alleges that these products compete directly with those sold by the Defendants (Compl. ¶8, ¶27).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
This is a declaratory judgment action where the Plaintiff alleges non-infringement. The following table summarizes the Plaintiff's specific contentions that its product lacks required claim elements.
'863 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a main body connectable to an exhaust line between a vacuum dryer and a vacuum pump | The accused products are alleged to not have "a main body connectable to an exhaust line between a vacuum dryer and a vacuum pump." | ¶33 | col. 7:27-30 |
| an insulation portion installed between the upper horizontal surface of the main body and the trap portion and that blocks cold of the trap portion from being conducted to the upper horizontal surface of the main body | The accused products are alleged to not have the claimed "insulation portion" that blocks cold from being conducted to the main body. | ¶34 | col. 7:38-44 |
| Claim Element (from Independent Claim 10) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a trap portion having a trap chamber | The accused products are alleged to not have "a trap portion having a trap chamber." | ¶36 | col. 8:31-32 |
| a trap chamber ... rigidly retained within the receiving hole and connectable to a vacuum dryer and a vacuum pump | The accused products are alleged to not have a trap chamber that is "rigidly retained" and "connectable" as required by the claim. | ¶37 | col. 8:32-37 |
| the main body is connected to the exhaust line | The accused products are alleged to not have the main body "connected to the exhaust line." | ¶38 | col. 8:37-38 |
| the trap portion having a support flange that is supported by but spaced apart from the upper surface of the main body to prevent heat exchange between the main body and the trap portion | The accused products are alleged to not have a "trap portion" that will "prevent heat exchange between the main body and the trap portion." | ¶39 | col. 8:39-43 |
Identified Points of Contention
- Invalidity vs. Infringement: The complaint's central argument is that if the accused T40 products were found to infringe, the '863 patent must be invalid, because the T40 is allegedly "structurally identical" to Defendants' own prior art products that were on sale more than one year before the patent's filing date (Compl. ¶¶30, 32, 64). This creates a direct link between the infringement and validity analyses.
- Technical Questions: A primary factual dispute will be whether the accused T40 products actually contain the structures recited in the claims. Specifically, what evidence exists to show the absence of a distinct "insulation portion" that both supports a flange and blocks cold transfer, as required by Claim 1, and the absence of a "trap chamber rigidly retained" as required by Claim 10.
V. Key Claim Terms for Construction
The Term: "insulation portion"
- Context and Importance: This term appears in the asserted independent claims and was a key feature used to distinguish the invention from prior art during prosecution (Compl. ¶19, ¶22). The complaint alleges the accused product lacks this feature entirely (Compl. ¶34). Practitioners may focus on this term because its construction will determine whether a single component can serve as both insulation and support, and what degree of thermal "blocking" is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 describes the term functionally as something "that blocks cold... and... support[s] the flange" ('863 Patent, col. 7:40-44), which could suggest that any structure performing these functions meets the limitation.
- Evidence for a Narrower Interpretation: The specification and figures consistently depict the "insulation portion" (30) as a separate, distinct component from both the main body (10) and the trap portion (20) ('863 Patent, Fig. 2; col. 5:36-40). This may support a narrower construction requiring a discrete insulating element.
The Term: "trap portion suspended by a flange"
- Context and Importance: This structural arrangement is presented as a key aspect of the invention and was highlighted in arguments to the patent examiner (Compl. ¶19). The plaintiff alleges its product does not have the claimed "trap portion" (Compl. ¶36, ¶39). The definition will be critical to determine if the plaintiff's "removable glass cold trap" (Compl. ¶31) falls within the scope of this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 requires the trap portion to be "suspended by a flange... through a first receiving hole" ('863 Patent, col. 7:31-34), language which might be read on any number of hanging or supported trap configurations.
- Evidence for a Narrower Interpretation: The figures show a specific arrangement where a flange (211) of the receiving portion (21) rests on top of the insulation portion (30), which in turn rests on the main body (10) ('863 Patent, Fig. 5; col. 5:46-50). This suggests a specific nested, supported structure, not just any form of suspension.
VI. Other Allegations
Indirect Infringement
The complaint seeks a declaratory judgment of non-infringement "directly, indirectly, or contributorily" but contains no specific factual allegations regarding indirect infringement (Compl., Prayer for Relief A).
Willful Infringement / Exceptional Case
This is a declaratory judgment action by the accused infringer. The complaint does not allege willfulness by the plaintiff. Instead, it alleges that Defendants' accusations of infringement are "objectively baseless" and made in bad faith, with knowledge of the patent's invalidity due to their own undisclosed prior art (Compl. ¶¶27, 29). These allegations form the basis for the Plaintiff's request that the court declare the case "exceptional" under 35 U.S.C. §285 and award attorneys' fees (Compl., Prayer for Relief D).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of inequitable conduct and prior art: Did the Defendants' own pre-filing products (the Model SH-CTBR1/SH-CTBR2/T40) anticipate or render obvious the claims of the '863 patent, and was the failure to disclose these products to the USPTO a deliberate act intended to deceive the examiner? The case may turn on evidence establishing the precise structure of those prior art products and the intent of those involved in the patent's prosecution.
- A central evidentiary question will be one of structural identity and infringement: Is the Plaintiff's accused T40 Cold Trap "structurally identical" to the Defendants' alleged prior art products? Resolving this question will likely resolve both the infringement and invalidity disputes simultaneously, as the Plaintiff's primary defense strategy hinges on tying the two issues together.
- A key legal question will concern claim scope: Can the term "insulation portion," which the patent specification depicts as a discrete component, be construed to read on a product that allegedly lacks such a separate element? The construction of this and other key terms will be decisive for the non-infringement analysis.