United States District Court, D. Massachusetts
AMENDED MEMORANDUM AND ORDER
DOUGLAS P. WOODLOCK UNITED STATES DISTRICT JUDGE
plaintiff Exergen's initiative in bringing this patent
infringement litigation has proven counterproductive. The
case occasioned my decision to hold the asserted claims 51
and 54 of the ‘938 patent invalid. Exergen v.
Brooklands, Inc., 125 F.Supp.3d 307 (D. Mass. 2015).
Exergen, nevertheless, undertook to continue the litigation
by seeking a determination that it did not commit inequitable
conduct with respect to obtaining the invalid patent claims
in the first place.
reaching the issue of inequitable conduct, I consider it
prudent to address the question whether the prior
determination of invalidity should foreclose further
litigation. After consideration of the parties'
submissions on that question and analysis of answers found in
Federal Circuit case law, I have determined that the question
of inequitable conduct is not categorically moot in this
case. As a consequence, it seems the better part of
discretion to address the question of inequitable conduct.
to the merits of the issue of inequitable conduct, I conclude
that plaintiff Exergen is entitled to summary judgment. That
determination now marks the conclusion of this case in this
December 4, 2012, Exergen Corporation initiated this patent
infringement action against Brooklands for alleged
infringement of claims 51 and 54 of U.S. Patent No. 7, 787,
938 (‘938 patent). Brooklands asserted affirmative
defenses under: 35 U.S.C. § 101 (unpatentable subject
matter), § 102 (anticipation), and § 103
(obviousness). Brooklands also asserted a counterclaim
against Exergen seeking declaratory judgment that the
‘938 patent is unenforceable because of inequitable
conduct. Brooklands moved for summary judgment on its
affirmative defenses and on August 28, 2015, I granted
Brooklands summary judgment under § 101 finding that the
asserted claims 51 and 54 of the ‘938 patent involved
unpatentable subject matter. Exergen, 125 F.Supp.3d
the core substantive question in the case - patent
infringement - was effectively resolved by the finding of
invalidity, Exergen pressed on in opposition to
Brooklands' inequitable conduct counterclaim by filing
the motion for summary judgment now before me. After I raised
the question of mootness, Exergen reversed course and argued
that the case should be terminated without reaching the
question of inequitable conduct. Brooklands, for its part,
continued to maintain it was entitled to resolution of the
inequitable conduct question on the merits. In order to put
the issues in context, an elaboration of the factual and
procedural development of this patent litigation is
Francisco Pompei is the founder and CEO of Exergen and has
patented numerous products, in addition to being the named
inventor of the ‘938 patent. I begin by discussing
Exergen's related patents, of which the ‘938 patent
was a continuation, and then examine the facts surrounding
prosecution of the ‘938 patent.
‘813 and ‘238 Patents
was issued U.S. Patent No. 5, 012, 813 (‘813 patent) on
May 7, 1991. On August 5, 1997, Exergen was issued U.S.
Patent No. 5, 653, 238 (‘238 patent). Dr. Pompei was
the named inventor on both of these patents. Both patents
describe a “heat balance method” in the context
of an ear thermometer device. Both also include broader
claims, such as Claim 7 of the ‘813 patent:
A radiation detector comprising: a thermopile mounted to view
a target of biological surface tissue; a temperature
sensor for sensing ambient temperature; an electronic circuit
coupled to the thermopile and temperature sensor and
responsive to the voltage across the thermopile and the
temperature sensed by the sensor to provide an indication of
an internal temperature within the biological tissue
adjusted for the ambient temperature to which the surface
tissue is exposed; and a display for providing an indication
of the internal temperature.
36 of the ‘238 patent is similarly broad:
A temperature detector comprising: a radiation sensor mounted
to view a target; a temperature sensor for sensing
ambient temperature; an electronic circuit coupled to the
radiation sensor and temperature sensor and responsive to a
signal from the radiation sensor and the temperature sensed
by the temperature sensor to provide an indication of an
internal temperature of the target adjusted for the
ambient temperature to which the target is exposed; and an
output for providing an indication of the internal
2, 2000, Dr. Pompei was issued U.S. Patent 6, 056, 435
(‘435 patent). The ‘435 patent, and the related
family of patents, claimed a device for detecting internal
body temperature in the armpit area. This patent does not
assert temperature measurements in the forehead or temporal
artery; it recites some claims that extend more broadly. For
example, claim 16 states:
A body temperature detector comprising: a radiation sensor
which views a target surface area of a body; and
electronics which compute an internal temperature of the body
as a function of an ambient temperature and a sensed surface
temperature, wherein the ambient temperature within the
function is an assumed ambient temperature.
previously brought suit against forehead thermometer
manufacturers in Exergen Corp. v. Wal-Mart Stores,
Inc., No. 01-cv-11306-RCL (D. Mass). There, Exergen
asserted that defendants' thermometers infringed the
broad claims of the ‘813 patent, the ‘435 patent
(within the ‘813 patent family), the ‘238 patent,
the ‘205 patent (within the ‘813 patent family),
and ‘685 patent (predecessor to the ‘938 patent).
In Wal-Mart, Judge Lindsay conducted a hearing on
claim construction of claim 7 of the ‘813 patent and
construed the terms “biological surface tissue”
to mean “a living layer of external human tissue having
a temperature that can be measured, ” and
“internal temperature” to mean “temperature
of the region existing beneath the surface of the biological
tissue targeted for measurement.” Exergen Corp. v.
Wal-Mart Stores, Inc., No. 01-cv-11306-RCL at 5-10 (D.
Mass. filed Jul. 14, 2004). At the conclusion of the
Wal-Mart jury trial, the jury found that Exergen had
proved the defendants infringed the ‘813, ‘205,
and ‘685 patents which the jury considered valid. The
Federal Circuit, however, overturned the jury's
determinations that the ‘813 and ‘685 patents
were infringed and that the ‘205 patent was not
invalid. Exergen Corp. v. Wal-Mart Stores, Inc., 575
F.3d 1312, 1331 (2009).
recently, in Exergen Corp. v. Kids-Med, Inc., No.
08-CV-11416-DPW, 2016 WL 2993165 (D. Mass. May 23, 2016),
Exergen alleged that the defendant's forehead
thermometers violated the broad claims of the ‘813 and
‘435 patents. In Kids-Med, I construed the
term “target surface area” as used in the
‘435 patent to differ from the term “target of
biological surface area” used in the ‘813 patent.
Id. at *6. I construed “target surface
area” to mean “an area of a surface within the
viewing range of the radiation sensor.” Id.
The ‘938 Patent
Pompei is the named patent holder of the ‘938 patent
and its predecessor, the ‘685 patent. Both patents
describe how to obtain body temperature measurements on
unprotected body sites, such as the forehead. Attorney James
Smith prosecuted the ‘938 patent. Attorney Smith is an
experienced patent practitioner who was admitted to ...