SC Johnson & Son Inc v. Dial Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: S. C. Johnson & Son, Inc. (Wisconsin) and Consultoria Técnica E Representações, LDA (Portugal)
  • Defendant: The Dial Corporation (Delaware)
  • Plaintiff’s Counsel: Heller Ehrman LLP
• Case Identification: 3:08-cv-00505, W.D. Wis., 08/26/2008
• Venue Allegations: Venue is alleged to be proper based on Defendant being registered to do business in Wisconsin and regularly and systematically conducting business activities, including selling products to retailers, in the district.
• Core Dispute: Plaintiffs allege that Defendant’s plug-in air freshener product, which dispenses multiple fragrances, infringes a patent related to evaporation devices with multiple heating elements.
• Technical Context: The technology relates to electrically heated, plug-in air fresheners capable of evaporating and dispensing multiple volatile substances (e.g., different scents) from a single device.
• Key Procedural History: The patent-in-suit, RE40,464, is a reissue of U.S. Patent No. 6,563,091. Plaintiff S. C. Johnson & Son, Inc. is an exclusive, worldwide licensee of the patent, and a license agreement between the plaintiffs became effective on March 28, 2007. The reissue process, which typically involves amendment of the original patent's claims, may give rise to questions regarding the scope of the asserted claims and the applicability of prosecution history estoppel.

Case Timeline

Date	Event
2001-04-05	'464 Patent Priority Date
2003-05-13	Original U.S. Patent 6,563,091 Issue Date
2007-03-28	License Agreement between Plaintiffs effective
2007-12-01	Alleged first offer for sale of Accused Product (approx.)
2008-08-26	'464 Reissue Patent Issue Date
2008-08-26	Complaint Filing Date

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

U.S. Reissue Patent No. RE40,464 - “Evaporation device for multiple volatile substances,” issued August 26, 2008

The Invention Explained

• Problem Addressed: The patent describes prior art evaporation devices as being limited, often able to evaporate only one substance at a time, requiring users to change containers to switch scents or insecticides (RE40,464 E, col. 3:1-6). Furthermore, prior methods for adjusting the degree of evaporation were often mechanically complex and expensive to manufacture (RE40,464 E, col. 2:52-56).
• The Patented Solution: The invention proposes a single evaporation device with a heating block containing a "plurality of heating elements" and a "plurality of wick openings" (RE40,464 E, col. 12:50-57). This design allows for different volatile substances to be evaporated from the same device. A control device can selectively activate or deactivate one or more of the heating elements, which can have different heating capacities, thereby providing a simpler, more flexible way to control the rate and mixture of evaporation compared to mechanically adjusting the distance between a wick and a single heater (RE40,464 E, col. 3:20-35; col. 4:56-65).
• Technical Importance: The invention provides for a multi-functional, compact, and economically produced device that can simultaneously or sequentially dispense multiple different fragrances or other volatile substances, with an adjustable evaporation rate controlled electrically rather than mechanically (RE40,464 E, col. 4:41-51).

Key Claims at a Glance

• The complaint alleges infringement of "valid claims" of the '464 patent but does not identify any specific claims (Compl. ¶12). Independent claim 29 is representative of the asserted technology.
• Independent Claim 29:
  • An evaporation device for evaporating volatile substances such as insecticides and aromatics comprising:
  • a housing containing a heating block with a plurality of heating elements;
  • a plurality of containers for a volatile substance to be evaporated;
  • a plurality of wick openings formed in said heating block;
  • a plurality of wicks having wick ends protruding out of said containers into said wick openings;
  • a control device for the activation and deactivation of said heating elements to adjust the heat produced by the heating elements and the evaporation of the volatile substance; and
  • at least one separator disposed in the area between said wick openings to achieve at least partial thermal uncoupling between wick openings and the heating elements.
• The complaint makes a general allegation of infringement, which would implicitly include dependent claims, but does not explicitly reserve the right to assert them (Compl. ¶13).

III. The Accused Instrumentality

Product Identification

• The accused product is the "Renuzit® Tri Scents™" plug-in scented oil air freshener ("Tri Scents product") (Compl. ¶11).

Functionality and Market Context

• The complaint alleges the Tri Scents product is a "plug-in scented oil air freshener with multiple fragrances" (Compl. ¶11).
• The complaint identifies Defendant Dial as a direct competitor to Plaintiff S. C. Johnson in the home air freshener market (Compl. ¶9). The complaint does not provide further technical details regarding the specific operation, components, or structure of the accused product.

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail for analysis of infringement against any specific claim. The allegations are conclusory, stating only that the "Tri Scents product constitutes infringement of the '464 patent, either directly or indirectly, literally, or under the doctrine of equivalents" (Compl. ¶13). No specific claims are identified, and no theory of how the accused product meets any particular claim limitations is provided.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Scope Questions: A central question will be whether the accused "Tri Scents product" contains a "separator" that achieves "at least partial thermal uncoupling" as required by claims such as claim 29. The interpretation of "separator" will be critical—whether it requires a distinct physical structure or if spatial separation between heating elements is sufficient.
  • Technical Questions: The complaint provides no evidence or description of the internal structure of the accused product. A key factual question will be whether the product actually contains a "plurality of heating elements" that are selectively activated by a "control device," or if it uses an alternative mechanism to achieve the evaporation of multiple fragrances.

V. Key Claim Terms for Construction

• The Term: "at least one separator disposed in the area between said wick openings to achieve at least partial thermal uncoupling" (from claim 29).
• Context and Importance: The presence and function of this "separator" is a required element in independent claims 29 and 35. Its construction will be critical to determining infringement. Practitioners may focus on this term because the accused product may achieve separation of scents through simple spatial distance between heating elements rather than a distinct, identifiable "separator" component, raising a direct question of whether the product falls within the claim's scope.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests that a separator need not be a solid physical structure, stating that it "preferably consists of an air gap going through the heating block" ('464 Patent, col. 5:17-20). Further, claim 34, which depends from claim 29, specifies that the "separator includes an air gap," which could imply that the term "separator" in the independent claim is broader than just an air gap ('464 Patent, col. 12:22-25).
  • Evidence for a Narrower Interpretation: The preferred embodiment explicitly shows the separator as a distinct physical feature: "an air gap 57 through heating block 40 as a separation between two wick recesses 42 and 43" ('464 Patent, col. 9:1-4). This is illustrated in Figure 8 as a physical void (57) formed in the heating block itself. An argument could be made that the term requires some form of structural separation integrated with the heating block, not merely ambient space between otherwise separate components.

VI. Other Allegations

• Indirect Infringement: The complaint makes a conclusory allegation of "indirectly" infringing but pleads no specific facts to support the knowledge and intent elements required for induced or contributory infringement (Compl. ¶13).
• Willful Infringement: The complaint requests a determination that infringement "is and has been willful" and seeks enhanced damages (Compl. ¶D, p. 4). However, it does not plead any specific facts to support this allegation, such as pre-suit knowledge of the patent or egregious conduct.

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

• A core issue will be one of claim scope and construction: How will the term "separator," which requires the function of achieving "at least partial thermal uncoupling," be construed? Will the court determine that this requires a specific structural element integrated into the heating block, as depicted in the patent's figures, or can it be met by mere spatial separation between heating components in the accused device?
• A key evidentiary question will follow: Assuming a claim construction is adopted, what evidence will Plaintiffs present to demonstrate that the internal architecture of the "Renuzit® Tri Scents™" product actually contains the "plurality of heating elements," "control device," and "separator" structures as recited in the asserted claims?
• A third question relates to the adequacy of the pleadings: Given the complaint's lack of specificity regarding which claims are asserted and the corresponding infringement theory, an initial focus of the case may be on motions practice challenging the sufficiency of the infringement allegations under federal pleading standards.