DCT
2:22-cv-00135
Parker Intangibles LLC v. Testo Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Parker-Hannifin Corp. (Delaware) and Parker Intangibles, LLC (Delaware)
- Defendant: Testo, Inc. (Delaware) and Testo SE & Co. KGaA (Germany)
- Plaintiff’s Counsel: Faegre Drinker Biddle & Reath LLP; Renner, Kenner, Greive, Bobak, Taylor & Weber Co., L.P.A.
- Case Identification: 2:22-cv-00135, E.D. Pa., 05/20/2024
- Venue Allegations: Venue is alleged to be proper as to Testo SE & Co. KGaA because it is an alien corporation, and as to Testo, Inc. because it allegedly resides in the district, maintains a regular and established place of business, and has committed acts of infringement there.
- Core Dispute: Plaintiffs allege that Defendants’ smart probe kits for HVAC/R systems infringe patents related to hose-free sensor systems that wirelessly transmit data to a portable electronic device.
- Technical Context: The technology at issue seeks to replace traditional, hose-based manifold gauges used by HVAC/R technicians with discrete, wireless sensors that communicate with a smart device, aiming to improve convenience, prevent refrigerant loss, and avoid cross-contamination.
- Key Procedural History: The '051 Patent is a continuation of the application that resulted in the '183 Patent. The complaint alleges that Plaintiffs provided Defendants with notice of the patents-in-suit and offered a license in May 2021, which was not accepted. Significantly, USPTO records indicate that all asserted independent claims of both the '183 and '051 patents were statutorily disclaimed by Plaintiff Parker Intangibles LLC on June 22, 2023, nearly one year before the filing of this First Amended Complaint. A disclaimer has the effect of dedicating the claims to the public, as if they had never been part of the patent.
Case Timeline
| Date | Event |
|---|---|
| 2014-01-20 | Priority Date ('183 & '051 Patents) |
| 2019-05-07 | U.S. Patent 10,281,183 Issue Date |
| 2020-08-11 | U.S. Patent 10,739,051 Issue Date |
| 2021-05 | License offered to Testo, Inc. |
| 2023-06-22 | Disclaimer of all asserted independent claims filed |
| 2024-05-20 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,281,183 - “Hose Free Sensor System for Refrigerant Unit,” issued May 7, 2019
The Invention Explained
- Problem Addressed: The patent describes conventional HVAC/R diagnostic tools, known as gauge sets, as suffering from several deficiencies. These tools rely on bulky hoses that are inconvenient to transport, risk leaking refrigerant into the environment, and can cause cross-contamination between different refrigerant systems (’183 Patent, col. 1:56-2:16). Furthermore, they require technicians to remain physically close to the unit to read the gauges, which can be inefficient and expose them to noisy environments (’183 Patent, col. 2:25-30).
- The Patented Solution: The invention proposes a "hoseless sensor system" that replaces the physical hoses and manifold with a set of individual, wireless sensors for pressure and temperature (’183 Patent, Abstract). These sensors are placed directly on the refrigerant unit's tubing and wirelessly transmit data to a separate "portable electronic device," such as a smartphone running a specific software application. This device receives the sensor data and automatically calculates key system conditions like "superheat and subcooling," allowing for remote monitoring and diagnosis (’183 Patent, col. 2:33-59).
- Technical Importance: This approach allows for a lighter, more portable diagnostic kit that eliminates the primary sources of refrigerant loss and contamination associated with traditional hose-based systems (’183 Patent, col. 6:45-62).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 12, both of which were statutorily disclaimed on June 22, 2023.
- Independent Claim 1 (Disclaimed): A sensor system for a refrigerant unit comprising:
- a plurality of sensors (including first/second pressure and first/second temperature sensors) for sensing system parameters;
- a portable electronic device configured to receive the parameters and calculate system conditions;
- the temperature sensors being clamps with integrated electronics; and
- a negative limitation requiring "no external physical connections among the plurality of sensors and the portable electronic device."
- Independent Claim 12 (Disclaimed): A temperature sensor clamp comprising:
- a clamping portion configured to clamp on a tube, which includes a sensor element;
- a handle with integrated electronics electrically connected to the sensor element; and
- a negative limitation requiring the clamp to have "no external physical electrical or fluidic connections."
- The complaint reserves the right to assert dependent claims 2, 6, 7, 8, 10, and 15 (Compl. ¶20, 23-25).
U.S. Patent No. 10,739,051 - “Hose Free Sensor System for Refrigerant Unit,” issued August 11, 2020
The Invention Explained
- Problem Addressed: As a continuation of the application for the ’183 Patent, this patent addresses the same problems of inconvenience, potential for refrigerant leaks, and cross-contamination inherent in traditional hose-based HVAC/R gauge sets (’051 Patent, col. 1:60-2:20).
- The Patented Solution: The patent similarly describes a system of hoseless, wireless sensors that communicate with a portable electronic device for calculation and display of refrigerant system parameters (’051 Patent, col. 2:38-59). The claims introduce different phrasing and combinations of elements, such as focusing on a "receiving unit" that gathers data from multiple sensors.
- Technical Importance: The invention provides a modular and flexible diagnostic system that leverages modern wireless and computing technology to improve upon a decades-old industry standard (’051 Patent, col. 6:46-54).
Key Claims at a Glance
- The complaint asserts independent claims 1, 10, 15, and 20, all of which were statutorily disclaimed on June 22, 2023.
- Independent Claim 1 (Disclaimed): A sensor system with a plurality of sensors (pressure and temperature) and a portable device, notable for its negative limitation specifying "no external physical electrical connections that extend from the...temperature sensors" and "no external physical fluidic connections that extend from the...pressure sensors oppositely from the connectors."
- Independent Claim 10 (Disclaimed): A temperature sensor clamp with a clamping portion, sensor element, and integrated electronics, requiring "no external physical electrical connections."
- Independent Claim 15 (Disclaimed): A sensor system similar to Claim 1, with a slightly different formulation of the "no external connections" limitations.
- Independent Claim 20 (Disclaimed): A sensor system comprising a plurality of sensors and a "receiving unit that gathers and combines data from at least two of the plurality of sensors."
- The complaint reserves the right to assert numerous dependent claims (Compl. ¶21, 32-34).
III. The Accused Instrumentality
Product Identification
The complaint identifies the "testo Smart Probes HVAC/R Ultimate kit" and the "testo Smart Probes Refrigeration Set/Kälte-Set" as the "Accused Products" (Compl. ¶18, 19, 20).
Functionality and Market Context
The complaint alleges the Accused Products are kits containing multiple wireless smart probes that function as sensors (Compl. ¶18, 19). It further alleges that these probes are intended to be used with the "testo Smart Probe App," which is loaded onto a customer's portable device, such as a smartphone or tablet (Compl. ¶23). The complaint alleges this system of probes and the app on a portable device together meet the elements of the asserted claims (Compl. ¶20, 21). The complaint references photographs of the accused kits in Exhibit 4, which allegedly depict the various sensors included (Compl. ¶19).
IV. Analysis of Infringement Allegations
The complaint does not contain or reference a claim chart exhibit. The following tables summarize the infringement theory based on the narrative allegations.
'183 Patent Infringement Allegations
| Claim Element (from Independent Claim 1 - Disclaimed) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of sensors for sensing system parameters of the refrigerant unit... | The Accused Products are kits containing multiple smart probes for measuring parameters of an HVAC/R system. | ¶18, 19, 20 | col. 11:63-65 |
| a portable electronic device configured to receive the system parameters...and to calculate system conditions for the refrigerant... | The "testo Smart Probe App," when loaded onto a customer's smartphone or tablet, allegedly receives data from the probes and performs calculations. | ¶23, 24 | col. 12:1-4 |
| there are no external physical connections among the plurality of sensors and the portable electronic device. | The system is alleged to function wirelessly via the app, which implies a lack of the physical hoses and wires the patent sought to eliminate. | ¶23, 24 | col. 12:20-22 |
'051 Patent Infringement Allegations
| Claim Element (from Independent Claim 20 - Disclaimed) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of sensors for sensing system parameters of the refrigerant unit... | The Accused Products are kits containing multiple smart probes, such as pressure and temperature sensors. | ¶19, 21 | col. 14:4-6 |
| a receiving unit that gathers and combines data from at least two of the plurality of sensors... | A customer's smartphone or tablet running the "testo Smart Probe App" allegedly functions as the receiving unit that gathers data from the various probes. | ¶32, 33 | col. 14:7-9 |
| the first and second temperature sensors each comprises a temperature sensor clamp... | The accused kits allegedly include temperature probes that clamp onto refrigerant unit tubes. | ¶19, 21 | col. 14:11-16 |
- Identified Points of Contention:
- Legal Question: The primary point of contention is legal and potentially dispositive: the complaint's infringement counts are premised on independent claims that were statutorily disclaimed by Plaintiffs before the complaint was filed. This raises the fundamental question of whether a viable cause of action exists for infringement of either the disclaimed independent claims or any claims that depend from them.
- Scope Question: Should the case proceed, a key question will be whether a customer's general-purpose smartphone or tablet running the "testo Smart Probe App" can be considered the "portable electronic device" or "receiving unit" of the claimed "sensor system" for the purpose of finding infringement by the Defendants. This may raise issues of divided infringement.
- Technical Question: An evidentiary question is whether the complaint provides sufficient factual support that the accused app performs the specific calculations recited in the patent claims (e.g., "superheat and subcooling"), as opposed to merely displaying raw sensor data.
V. Key Claim Terms for Construction
The Term: "portable electronic device" (’183 Patent, Cl. 1) / "receiving unit" (’051 Patent, Cl. 20)
Context and Importance: The infringement theory relies on a customer's personal smartphone or tablet, loaded with Defendants' app, satisfying this claim element. The definition is critical because the claims require this component to be part of the infringing "system." Practitioners may focus on this term because its construction will determine whether the accused system can be found to infringe as a single entity or if the case will turn on more complex divided infringement doctrines.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explicitly supports a broad reading, stating the device "may be any suitable mobile device, such as, for example, a tablet computer, laptop computer, smartphone, or the like" (’183 Patent, col. 5:6-9).
- Evidence for a Narrower Interpretation: A defendant might argue that the claim language "A sensor system...comprising: a plurality of sensors...and a portable electronic device" ('183 Patent, col. 11:63-12:2) requires the device to be supplied with the sensors as a unified system at the time of sale, and that a customer's separately acquired smartphone cannot be part of the claimed invention attributable to the defendant.
The Term: "no external physical connections" (’183 Patent, Cl. 1)
Context and Importance: This negative limitation is central to the "hose-free" concept that distinguishes the invention from the prior art. Its scope will define the boundary between the patented wireless approach and conventional wired or hosed systems.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's background clearly contrasts the invention with prior art systems using physical refrigerant hoses and wired temperature probes, suggesting the term is meant to exclude those specific types of connections (’183 Patent, col. 1:30-46).
- Evidence for a Narrower Interpretation: The specification describes the system transmitting information "wirelessly" and mentions technologies like Bluetooth and Wi-Fi (’183 Patent, col. 4:1-2; col. 5:50-54). The clear meaning appears to be the absence of a physical tether for data or fluid, and the language "among the plurality of sensors and the portable electronic device" ('183 Patent, col. 12:20-22) provides specific context. Arguments to narrow this further would likely need to rely on extrinsic evidence or prosecution history estoppel.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Testo, Inc. induces infringement by instructing customers to load and use the "testo Smart Probe App" on a portable device with actual knowledge of the patents (Compl. ¶24, 33). It alleges that Testo SE & Co. KGaA induces infringement by supplying the Accused Products to its U.S. subsidiary with the specific intent to encourage infringing sales (Compl. ¶47, 52).
- Willful Infringement: The willfulness allegations against both defendants are based on alleged pre-suit knowledge. The complaint states that Plaintiffs gave Testo, Inc. notice of the patents "well over two years ago" and offered a license in May 2021, which was not accepted (Compl. ¶41, 42, 53).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue is one of legal viability: can infringement counts proceed when they are predicated on independent claims that Plaintiffs statutorily disclaimed nearly a year before filing the operative complaint? The court's answer to this threshold question will likely determine the fate of the entire case.
- Should the case proceed, a central question will be one of divided infringement: can Plaintiffs prove that Defendants are liable for infringing the claimed "system" when a critical component—the "portable electronic device"—is a customer's own smartphone or tablet that is not made or sold by Defendants?
- Finally, an evidentiary question will be one of functional specificity: does the accused "testo Smart Probe App" perform the specific, claimed functions of calculating "system conditions" such as "superheat and subcooling," and what non-conclusory evidence does the complaint offer to support this technical allegation?