DCT

2:19-cv-00497

Nordic Water Products Ab v. Veolia Water Solutions & Tech Support

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:19-cv-00497, D. Utah, 07/16/2019
  • Venue Allegations: Plaintiffs allege venue is proper in the District of Utah because Defendant threatened patent infringement against WesTech, which has its principal place of business in the district, and because Defendant conducts regular business in the district.
  • Core Dispute: Plaintiffs seek a declaratory judgment that their redesigned rotary disc filters do not infringe Defendant's patent and, further, that the patent is invalid and unenforceable.
  • Technical Context: The lawsuit concerns high-capacity rotary disc filters, a technology central to large-scale water and wastewater treatment for municipal and industrial applications.
  • Key Procedural History: The complaint describes a history of disputes between the parties, including a 2015 lawsuit over a parent patent ('785 Patent). That litigation was resolved by a 2016 Settlement Agreement, which required Plaintiffs to implement a specific product redesign. The current dispute arises from Defendant’s allegations that this redesigned product infringes the newly-issued U.S. Patent No. 10,188,971, a continuation from the same patent family as the '785 Patent. Plaintiffs contend that the 2016 settlement agreement estops Defendant from bringing the current claims.

Case Timeline

Date Event
2003-02-27 '971 Patent Priority Date
2015-11-13 Prior lawsuit filed by Veolia over parent '785 Patent
2016-09-09 Global settlement agreement executed by parties
2019-01-29 U.S. Patent No. 10,188,971 Issued
2019-01-30 Veolia sends letter to WesTech alleging infringement
2019-04-30 Veolia provides infringement chart to Plaintiffs' counsel
2019-07-16 Declaratory Judgment Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,188,971 - "Rotary disc filter and module for constructing same"

  • Patent Identification: U.S. Patent No. 10,188,971, "Rotary disc filter and module for constructing same," issued January 29, 2019.

The Invention Explained

  • Problem Addressed: The patent’s background section identifies issues with prior art rotary disc filters, including the limited lifespan and difficult replacement of filter cloths, and the undesirable "entrainment" of water in the filter compartments during rotation, which reduces the overall filtration capacity ('971 Patent, col. 1:13-20; col. 2:32-40).
  • The Patented Solution: The invention proposes a modular filter design where, among other features, liquid communication is established between adjacent filter segments. This is achieved via a "second liquid duct" which allows liquid to move between compartments as the filter rotates ('971 Patent, Abstract; col. 2:60-65). This transfer of liquid is intended to counteract the entrainment effect, preventing filtered-out particles from being carried over into the clean water stream and thereby increasing the filter's efficiency.
  • Technical Importance: By reducing liquid entrainment, the design aims to increase the operational capacity and efficiency of large-scale filtration systems without increasing their physical footprint ('971 Patent, col. 2:63-65).

Key Claims at a Glance

  • The complaint identifies independent claims 1, 15, 19, and 23 as being at issue (Compl. ¶72). Claim 1 is representative.
  • The essential elements of independent claim 1 include:
    • A rotary drum and one or more disc-shaped filter members comprising multiple compartments.
    • Each compartment is bound by opposed edges and two filters, allowing liquid to flow outwardly.
    • A drive for rotating the assembly.
    • "Openings formed in the edges of the compartments" that are configured to perform two functions:
      • (i) "substantially reduce the entrainment of liquid" in the compartments during rotation; and
      • (ii) "pass substantially all of the liquid held in one compartment to an adjacent trailing compartment" in response to rotation.
  • The complaint notes that Veolia has also accused numerous dependent claims (Compl. ¶31).

III. The Accused Instrumentality

Product Identification

  • The complaint states the accused products are Plaintiffs' redesigned SuperDisc™ rotary disc filters, which incorporate the "EVO Cassette" (Compl. ¶¶24, 71). These products are sold by WesTech in the United States and manufactured by Nordic Water (Compl. ¶¶8, 17).

Functionality and Market Context

  • The SuperDisc™ is an "inside-out" rotary disc filter used for treating municipal wastewater (Compl. ¶57). In operation, water enters a central rotating drum, passes into individual filter cassettes (the "compartments"), and flows out through a filter cloth, leaving solids behind (Compl. ¶61). A key functionality alleged by Plaintiffs is that in their redesigned EVO Cassette, the openings between compartments are designed such that the device does "not pass more than about 60% of the liquid from one compartment to an adjacent trailing compartment" (Compl. ¶79). The complaint includes an image showing a typical SuperDisc™ unit with multiple large, round discs attached to a central rotating drum (Compl. ¶58, p. 13). Another visual provides a close-up view of an individual filter cassette, illustrating its structure (Compl. ¶59, p. 13).

IV. Analysis of Infringement Allegations

This is a declaratory judgment action where Plaintiffs allege non-infringement. The following chart summarizes Plaintiffs' primary non-infringement arguments as presented in the complaint, focusing on the key limitations of Claim 1.

’971 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Non-Infringing Functionality (per Plaintiffs) Complaint Citation Patent Citation
h. openings formed in the edges of the compartments and configured to: (i) substantially reduce the entrainment of liquid... The redesigned EVO Cassette, with "no more than 50% of the edge of a compartment... containing open area," is alleged not to "substantially reduce" entrainment compared to prior art, which Plaintiffs contend had a similar configuration. ¶¶91, 95 col. 2:35-40
h. openings formed in the edges of the compartments and configured to: (ii) pass substantially all of the liquid held in one compartment to an adjacent trailing compartment... The SuperDisc™ with the EVO Cassette "does not pass more than about 60% of the liquid" between compartments. Plaintiffs contend that a 60% transfer rate does not meet the "substantially all" limitation, which they argue should be construed to mean "essentially all of the liquid." ¶¶78, 79 col. 2:60-65
  • Identified Points of Contention:
    • Scope Questions: The dispute raises the question of how to interpret the term "substantially all." Plaintiffs argue it cannot reasonably be construed to cover a system that transfers only 60% of the liquid between compartments (Compl. ¶79). The case also raises a significant legal question of estoppel: does the 2016 Settlement Agreement, which resolved a dispute over a parent patent and led to the redesign of the accused product, prevent Defendant from asserting this continuation patent against the redesigned product? (Compl. ¶¶80-82).
    • Technical Questions: What is the proper baseline for determining whether the accused product "substantially reduce[s] the entrainment of liquid"? The complaint suggests that because the redesigned product has reduced open area compared to the previous design, its performance on this metric relative to prior art is a key factual question (Compl. ¶¶91, 95).

V. Key Claim Terms for Construction

  • The Term: ""pass substantially all of the liquid""

    • Context and Importance: The construction of this term of degree is central to the non-infringement analysis. Plaintiffs also contend the term is indefinite under 35 U.S.C. § 112 because the specification allegedly provides no guidance as to its meaning (Compl. ¶¶76, 113-115).
    • Intrinsic Evidence for a Broader Interpretation: A party seeking a broader construction might point to the general purpose of the invention—to increase capacity by reducing entrainment—and argue that "substantially all" should be interpreted functionally as any amount of liquid transfer that achieves this stated goal ('971 Patent, col. 2:60-65).
    • Intrinsic Evidence for a Narrower Interpretation: The complaint argues that the phrase "substantially all of the liquid" does not appear in the patent's specification or original claims, suggesting a lack of written description support (Compl. ¶¶36, 77, 109). This lack of a specific definition or standard in the patent for a term of degree may support a narrower construction (e.g., "essentially all") or a finding of indefiniteness.

  • The Term: ""substantially reduce the entrainment of liquid""

    • Context and Importance: This is another comparative term of degree whose construction is critical. Its meaning depends on the baseline to which the claimed device's performance is compared, a point the patent does not explicitly define. Practitioners may focus on this term because its ambiguity creates a significant vulnerability for the patent's validity under § 112.
    • Intrinsic Evidence for a Broader Interpretation: The patent’s "Summary of the Invention" states a general object is to provide a filter where liquid "is not entrained in the rotary motion," which increases capacity ('971 Patent, col. 2:62-65). This could support an interpretation where any technologically meaningful reduction in entrainment satisfies the limitation.
    • Intrinsic Evidence for a Narrower Interpretation: The complaint alleges this term is indefinite because the patent "does not identify to which device or standard the characteristic of the claimed device is compared" (Compl. ¶122). The lack of an objective baseline in the specification for what constitutes a "substantial" reduction could support arguments for both a narrow construction and invalidity.

VI. Other Allegations

  • Indirect Infringement: Plaintiffs seek a declaratory judgment that they have not engaged in any form of infringement, including direct, induced, or contributory infringement (Compl. ¶97). The complaint does not set forth facts supporting such claims, but rather denies that any such liability exists.
  • Willful Infringement: This being a declaratory judgment action by the accused infringer, there is no allegation of willfulness. Instead, Plaintiffs allege that this is an "exceptional case" under 35 U.S.C. § 285, which would entitle them to an award of attorneys' fees (Compl. ¶98). The basis for this allegation includes claims that Defendant based its infringement assertions on incorrect product models, failed to conduct a reasonable pre-suit investigation, and is asserting claims that are invalid for indefiniteness (Compl. ¶98).

VII. Analyst’s Conclusion: Key Questions for the Case

This declaratory judgment action appears to center on three fundamental questions for the court:

  1. A core issue will be one of claim scope and definiteness: Can the term ""pass substantially all of the liquid,"" which was added during prosecution and lacks an explicit definition in the patent specification, be construed with the reasonable certainty required by law? If so, is its scope broad enough to read on a device that Plaintiffs allege transfers only 60% of the liquid between compartments?

  2. A dispositive threshold question will be one of settlement-based estoppel: Does the 2016 Settlement Agreement, which resolved infringement allegations concerning a parent patent and expressly governed the redesign of Plaintiffs' product, legally preclude Defendant from asserting this continuation patent against the very redesign it prompted?

  3. A key invalidity question will be one of written description and enablement: Does the patent’s original disclosure provide adequate support for the specific functional language—"substantially reduce entrainment" and "pass substantially all liquid"—that was added to the claims years after the application was filed, as required by 35 U.S.C. § 112?