DCT

3:23-cv-05978

Multiscan Tech USA LLC v. Cohn

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:23-cv-05978, W.D. Wash., 12/15/2023
  • Venue Allegations: Venue is alleged to be proper as the Defendant resides in the district and engages in substantial business activities there.
  • Core Dispute: Plaintiffs seek a declaratory judgment that they are the rightful owners of a patent for agricultural sorting technology currently assigned to the Defendant, a former business partner, and that their products do not infringe this patent.
  • Technical Context: The technology involves high-speed optical sorting systems that use multi-spectral imaging and color analysis (hue, saturation, intensity) to classify and separate agricultural products like nuts and cherries.
  • Key Procedural History: The dispute arises from a 2013 joint venture between Plaintiff Multiscan Technologies, S.L. and Defendant Avner Cohn to adapt Multiscan’s existing sorting technology for the pistachio industry. Plaintiffs allege that Defendant secretly filed for a patent on technology developed through the joint venture using their confidential information and resources.

Case Timeline

Date Event
2010-01-01 MTS selling Multiscan S50C optical cherry sorter since "at least" this time
2013-04-01 MTS chief engineer sends Cohn a video of a pistachio on a roller belt
2013-05-23 MTS chief engineer sends Cohn a video of the prototype pistachio sorter
2013-08-01 MTS begins regularly sending Cohn documentation of pistachio testing
2013-10-01 MTUSA joint venture formed
2013-11-01 MTS begins building the first pistachio sorting prototype
2014-04-01 Prototype S60SP placed in real-world testing environment
2014-06-01 MTS begins testing prototype S60SP in the United States
2014-07-14 MTS engineer sends Cohn an email with a confidentiality legend
2014-11-27 MTS chief engineer emails Cohn an engineering drawing of the S60SP
2015-01-15 '004 Patent Priority Date (Provisional Application Filing)
2015-01-01 Cohn allegedly files patent application in his own name during 2015
2016-01-01 First-year sales of new sorter allegedly exceed $500,000
2017-06-13 '004 Patent Issue Date
2023-12-15 Complaint Filing Date

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

  • Patent Identification: U.S. Patent No. 9,676,004, “Sorting System,” issued June 13, 2017.

The Invention Explained

  • Problem Addressed: The patent background describes the limitations of existing color sorters. Single-color (monochromatic) sorters have a limited range, while multi-color (e.g., RGB) sorters can be difficult for operators to adjust intuitively. The patent seeks a system that is more powerful than a simple sorter but also more user-friendly, especially for detecting small blemishes or sorting objects across a broad color range. ('004 Patent, col. 1:11-44).
  • The Patented Solution: The invention proposes a sorting system that analyzes objects not just by simple color, but by transforming standard color signals (like red, green, blue) into a more intuitive HSI (Hue, Saturation, Intensity) color model. ('004 Patent, col. 3:56-col. 4:4). The system then allows an operator to "variably classify" objects based on a combination of thresholds for hue, saturation, and a "monochromatic color signal" (defined as all colors of a single hue), making it easier to isolate specific defects or characteristics. ('004 Patent, col. 11:1-12). The system is designed to be insensitive to variations in light intensity and can use imaging data from both visible and near-infrared spectra. ('004 Patent, col. 8:31-col. 9:4).
  • Technical Importance: By translating raw color data into the HSI model, the technology purports to align the sorting criteria more closely with human color perception, theoretically allowing for more precise and intuitive operator adjustments than traditional RGB-based systems. ('004 Patent, col. 4:65-col. 5:6).

Key Claims at a Glance

  • The complaint focuses on inventorship of independent claim 1. (Compl. ¶¶ 28, 37).
  • Independent Claim 1:
    • A method of classifying an object comprising the steps of:
    • (a) sensing a multiple color image of at least a portion of said object while said object is moving;
    • (b) producing color signals from said multiple color image indicative of a plurality of colors;
    • (c) transforming said color signals... to (i) a range of hue colors, (ii) a range of saturation colors, and (iii) a monochromatic color signal characterized as all the colors of a single hue; and
    • (d) variably classifying said object depending upon a combination of (i) a monochromatic threshold..., (ii) a hue threshold..., and (iii) a saturation threshold...
  • The complaint does not explicitly reserve the right to assert dependent claims but seeks a declaration of non-infringement of "any valid claim." (Compl. ¶60).

III. The Accused Instrumentality

Product Identification

  • "Plaintiffs' products." (Compl. ¶61).

Functionality and Market Context

  • The complaint seeks a declaratory judgment that Plaintiffs' own products do not infringe the '004 Patent. (Compl. ¶63). It alleges that the technology in the '004 Patent was developed by Plaintiffs for a pistachio sorter, specifically the "S60SP prototype." (Compl. ¶¶ 9, 17-18). This prototype used a "built-in vision system, which uses high-resolution, high-speed cameras," to process images and sort products based on criteria like "color, saturation, intensity...." (Compl. ¶18). The complaint alleges that Plaintiffs' technology for sorting agricultural products by "hue and color" predates the joint venture with the Defendant. (Compl. ¶21). However, the complaint does not provide specific technical details about the products Plaintiffs currently manufacture or sell.

IV. Analysis of Declaratory Judgment Allegations (Non-Infringement)

The complaint does not provide a claim chart or a detailed technical breakdown of why Plaintiffs' products do not infringe. Instead, it presents several legal and equitable arguments for a declaratory judgment of non-infringement.

The primary theories are:

  1. Ownership/License: Plaintiffs argue that because they are the rightful owners or co-owners of the '004 Patent, or at a minimum possess an irrevocable license or shop right, they cannot be held liable for infringement for practicing their own invention. (Compl. ¶¶ 31, 32, 48, 61). This argument centers on the allegations that Plaintiffs' employees were the true inventors and that Defendant, as a fiduciary of the joint venture, misappropriated the corporate opportunity by filing the patent in his own name. (Compl. ¶¶ 28, 43, 54).
  2. Invalidity: As an alternative, Plaintiffs seek a declaration that the '004 Patent is invalid under 35 U.S.C. §§ 101, 102, 103, and 112. (Compl. ¶¶ 66, 67). The factual basis for this claim is not detailed, but it is predicated on the assertion that if Defendant's infringement claims were to be maintained, the patent itself could not withstand scrutiny. (Compl. ¶66).

The complaint does not provide sufficient detail for a technical analysis comparing the specific functionality of Plaintiffs' current products against the limitations of the asserted claims.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

  • The Term: "monochromatic color signal characterized as all the colors of a single hue" (Claim 1)

    • Context and Importance: This term is a cornerstone of the claimed invention, distinguishing it from prior art. The patent appears to create its own lexicon, defining "monochromatic" in a non-standard way. The construction of this term will be critical to determining the scope of the claim, as it defines one of the three analytical pillars (along with hue and saturation) for classification.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language itself is open-ended. A party could argue that any signal representing variations (like shades or tones) within a single hue falls within this definition.
      • Evidence for a Narrower Interpretation: The specification provides a more precise definition: "Monochromatic colors are all the colors, (e.g., tints, tones, and shades) of a single hue. Monochromatic colors may be derived from a single base hue and extended using its shades, tones and tints." ('004 Patent, col. 7:25-30). This suggests the signal must specifically represent this family of related colors derived from one base hue, not just any single-color measurement.

  • The Term: "variably classifying" (Claim 1)

    • Context and Importance: This term appears in the final, active step of the method claim. Its meaning is essential to understanding what processing the claimed method requires. Practitioners may focus on this term because whether a system "variably" classifies could depend on whether the thresholds are dynamic, interdependent, or simply applied in combination.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: One could argue that simply using a "combination" of three different types of thresholds (monochromatic, hue, saturation) as required by the claim inherently constitutes "variable" classification.
      • Evidence for a Narrower Interpretation: The specification describes an operator display with sliders and selectors for defining sorting regions based on hue, saturation, and intensity. ('004 Patent, col. 6:30-59; Fig. 9). A narrower view might argue that "variably classifying" requires a system with this type of user-configurable, multi-parameter input for defining classification rules, not just a fixed, hard-coded combination of thresholds.

VI. Other Allegations

  • Indirect Infringement: Plaintiffs seek a declaratory judgment that they have not contributed to or induced infringement of the '004 Patent. (Compl. ¶63). The complaint does not present specific facts to rebut a hypothetical inducement/contribution claim, as this is part of a preemptive action.

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

This case is primarily a dispute over ownership and inventorship masquerading as a patent case. The core questions for the court appear to be rooted in corporate and contract law, with patent law providing the context and the asset in dispute.

  1. A central issue will be one of inventorship and ownership: Did Defendant Avner Cohn conceive of the invention claimed in the '004 Patent independently, or was the invention conceived by Plaintiffs' employees and developed using Plaintiffs' resources and confidential information under the auspices of the joint venture? The resolution of this question, which will depend on evidence of conception and reduction to practice, will likely determine ownership of the patent or, at minimum, whether Plaintiffs have an equitable license to practice it.

  2. A secondary, but potentially dispositive, question is one of claim scope: What is the correct construction of the term "monochromatic color signal characterized as all the colors of a single hue"? The patent uses this unique definition to distinguish its method. The viability of both the non-infringement and invalidity claims may turn on whether this term is construed narrowly based on the specification’s specific definition or more broadly.