DCT
2:18-cv-00244
Pungkuk EDM Wire Mfg Co Ltd v. Opecmade Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pungkuk EDM Wire Mfg Co., Ltd. (Republic of Korea)
- Defendant: Opecmade, Inc. AND OPEC Engineering Co., Ltd. (Republic of Korea)
- Plaintiff’s Counsel: McKOOL SMITH, P.C.
- Case Identification: 2:18-cv-00244, E.D. Tex., 06/07/2018
- Venue Allegations: Venue is alleged to be proper because Defendants are foreign corporations not resident in the United States, which may be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s electrical discharge machining (EDM) wires infringe a patent related to the specific metallurgical composition and structure of multi-layer EDM wires.
- Technical Context: The technology concerns specialized wires used as electrodes in electrical discharge machining, a high-precision manufacturing process for cutting and shaping conductive materials.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 1988-01-01 | Defendant OPEC allegedly established. |
| 1993-01-01 | Defendant OPEC allegedly began developing EDM wires. |
| 2005-04-01 | Priority Date for U.S. Patent No. 7,723,635. |
| 2010-05-25 | U.S. Patent No. 7,723,635 Issued. |
| 2018-06-07 | Complaint Filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,723,635 - "ELECTRODE WIRE FOR ELECTRIC DISCHARGE MACHINING AND MANUFACTURING METHOD OF THE SAME"
- Issued: May 25, 2010.
The Invention Explained
- Problem Addressed: The patent's background section describes problems with prior art electrode wires, including the exfoliation of the wire's surface, generation of dust, and disconnection during the machining process, all of which negatively impact performance ('635 Patent, col. 1:33-44). The technical challenge is to create a wire with high tensile strength, high electrical conductivity, and a uniform structure to overcome these issues ('635 Patent, col. 1:40-44).
- The Patented Solution: The invention is a multi-layered electrode wire with a specific metallurgical structure designed to enhance performance. It consists of a core, a "covering layer" with a specific copper-zinc composition (e.g., a β phase alloy), and distinct "grains" on top of that layer with a different, higher-zinc composition (e.g., a (β+γ) phase alloy) ('635 Patent, col. 2:28-32, FIG. 4). This structure is achieved through a specific manufacturing process involving heat treatment to diffuse zinc and form the desired metallurgical phases, which allegedly improves both electrical conductivity and tensile strength ('635 Patent, col. 2:33-44).
- Technical Importance: The specified multi-phase structure aims to provide a wire with a periphery that is both highly conductive (due to β phases) and strong (due to dispersed grains), thereby improving machining speed and reliability ('635 Patent, col. 2:33-44).
Key Claims at a Glance
- The complaint asserts independent claims 1, 5, and 8 (Compl. ¶18).
- Independent Claim 5 (Product Claim):
- An electrode wire for electric discharge machining, comprising:
- a core;
- a covering layer formed on a periphery of the core; and
- grains formed on the covering layer,
- wherein the core comprises copper or an a phase copper-zinc alloy,
- the covering layer comprises an (alpha+beta) phase copper-zinc alloy or a beta phase copper-zinc alloy, and
- the grains comprise a (beta+gamma) phase copper-zinc alloy,
- wherein the grains are spaced from one another on a periphery of the covering layer and the covering layer is formed between the grains to surround the grains.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Accused Products" as electrical discharge machining (EDM) wires, including the Deltacut 900, EDM Performance, LEO Zinc Coated EDM Wires, PUMA Hybrid EDM Wires, Cut1st-A, Cut1st-G, Zinco1st, Zebra, and Tiger wire electrodes (Compl. ¶17). The complaint focuses on the PUMA Hybrid EDM Wires as a representative example (Compl. ¶19).
Functionality and Market Context
- The Accused Products are wires used in EDM machines to cut conductive workpieces (Compl. ¶10). The complaint alleges that Defendants are "a supplier of the world's best-selling coated electrical discharge machining (EDM) wires" and export to approximately 20 countries, including the United States (Compl. ¶16). The complaint includes a marketing image for the "Hybrid Puma" product, which notes features such as "Cutting speed is 30% faster than conventional coated wire" (Compl. p. 6). The infringement allegations are based on the material composition and microstructure of these wires, specifically a core material of CuZn35 and a coating material of Zn Alloy (Compl. p. 6).
IV. Analysis of Infringement Allegations
Claim Chart Summary
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a core | The Accused Products contain a core consisting of CuZn35. | ¶21 | col. 7:40-44 |
| a covering layer formed on a periphery of the core | The Accused Products have a covering layer formed by coating the core with a Zn alloy. | ¶22 | col. 7:38-39 |
| grains formed on the covering layer | The Accused Products have grains formed on the covering layer, as shown in a microanalysis report. | ¶23 | col. 7:48-51 |
| wherein the core comprises copper or an a phase copper-zinc alloy | The core's CuZn35 composition is alleged to correspond to "a phase copper-zinc alloy." | ¶21 | col. 4:25-26 |
| the covering layer comprises an (alpha+beta) phase copper-zinc alloy or a beta phase copper-zinc alloy | The covering layer is alleged to comprise 37 to 49 weight % of zinc, which is alleged to correspond to "a beta phase copper-zinc alloy." | ¶22 | col. 9:33-38 |
| and the grains comprise a (beta+gamma) phase copper-zinc alloy | The grains are alleged to comprise 49 to 58 weight % of zinc, which is alleged to correspond to "a (beta+gamma) phase copper-zinc alloy." | ¶23 | col. 9:39-44 |
| wherein the grains are spaced from one another on a periphery of the covering layer and the covering layer is formed between the grains to surround the grains | The complaint alleges this structure exists in the Accused Products, supported by a microanalysis image showing discrete surface structures. The "[Microanalysis Report of Grains]" shows distinct, roughly circular features identified by red arrows and circles (Compl. p. 8). | ¶24 | col. 16:10-15 |
Identified Points of Contention
- Technical Questions: A primary question will be whether the zinc percentages identified in the Accused Products (e.g., 37-49% in the covering layer, 49-58% in the grains) factually map to the specific metallurgical phases ("beta phase", "(beta+gamma) phase") required by the claims. This determination may depend on expert analysis of phase diagrams for copper-zinc alloys. The complaint provides microanalysis reports purporting to show these compositions (Compl. pp. 7, 9).
- Scope Questions: The case may turn on the interpretation of the physical arrangement of the wire's layers. A key question is whether the Accused Products' microstructure, as depicted in the complaint's visual evidence (Compl. p. 8), meets the limitation that "the grains are spaced from one another...and the covering layer is formed between the grains to surround the grains." The degree of "spacing" and what it means for a layer to "surround the grains" could be central points of dispute.
V. Key Claim Terms for Construction
The Term: "(beta+gamma) phase copper-zinc alloy"
Context and Importance: This term defines the material composition of the outermost "grains," which are critical to the claimed invention's properties. The infringement analysis directly relies on mapping the accused product's measured zinc content (allegedly 49-58 wt%) to this specific metallurgical phase definition (Compl. ¶23). Practitioners may focus on this term because the case hinges on whether the accused wire's material science aligns with the patent's specific phase requirements.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the term simply refers to a copper-zinc alloy with a zinc concentration that falls within the known metallurgical range where beta and gamma phases coexist. The specification provides weight percentage ranges for various phases, such as the β phase containing "about 46.2 to 49.5 weight % of zinc" ('635 Patent, col. 6:20-23) and the γ phase containing "about 58 to 72 weight % of zinc" ('635 Patent, col. 6:25-27), which could be used to define the boundaries of the combined (β+γ) phase.
- Evidence for a Narrower Interpretation: A party could argue the term requires a specific, identifiable microstructure containing distinct regions of both beta and gamma phases, not just a material with an average composition in that range. The patent repeatedly emphasizes the formation of specific phases through heat treatment to achieve its advantages, suggesting the presence of the actual phase structure is important ('635 Patent, col. 3:5-8).
The Term: "grains are spaced from one another on a periphery of the covering layer"
Context and Importance: This limitation describes the physical structure of the wire's surface, which distinguishes it from a simple layered coating. Infringement depends on whether the accused wire's surface topology, as shown in the microanalysis report (Compl. p. 8), exhibits this "spaced" relationship.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that any non-continuous arrangement of grains, where they do not form a solid, unbroken layer, satisfies this limitation. The phrase itself does not quantify the degree of spacing required.
- Evidence for a Narrower Interpretation: A party could point to FIG. 4 of the patent, which depicts distinct, separate polygonal grains (35) on the surface of the covering layer (33). This figure could be used to argue that the claim requires clearly delineated, individual grains with observable space between them, rather than a merely rough or textured surface.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants knowingly and intentionally induce infringement by "providing these products to OPEC customers and end users for use in an infringing manner" (Compl. ¶27). The basis for intent is alleged to be knowledge of the patent "at least as of the date of this Complaint" (Compl. ¶27).
- Willful Infringement: Willfulness is alleged based on Defendants' awareness of the '635 patent and an "objectively high likelihood" that their actions constituted infringement (Compl. ¶25). The complaint also alleges ongoing infringement post-filing, which could support a claim for post-suit willfulness (Compl. ¶27).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of metallurgical mapping: does the evidence show that the zinc weight percentages in the accused wires correspond, as a matter of material science, to the specific "beta phase" and "(beta+gamma) phase" copper-zinc alloys required by the asserted claims, or is there a technical mismatch?
- A key evidentiary question will be one of microstructural interpretation: does the physical structure of the accused wire's surface exhibit "grains" that are "spaced from one another" and "surrounded" by the covering layer, as those terms are construed in light of the patent's specification and figures, or does it represent a different physical arrangement?
- The case may also raise a question of claim construction: what is the precise definition of a "(beta+gamma) phase" alloy—is it defined by a mere compositional range, or does it require the identifiable presence of both distinct phases within the material's microstructure?