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Exergen Corp. v. Brooklands Inc.

United States District Court, D. Massachusetts

February 20, 2018

EXERGEN CORPORATION, Plaintiff/Counter-Defendant,
v.
BROOKLANDS INC., Defendant/Counter-Plaintiff.

          AMENDED MEMORANDUM AND ORDER

          DOUGLAS P. WOODLOCK UNITED STATES DISTRICT JUDGE

         The 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.

         Before 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.

         Turning 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 court.

         I. BACKGROUND

         A. Procedural Posture

         On 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 at 312-17.

         Although 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 appropriate.

         B. Factual Background

         Dr. 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.

         1. ‘813 and ‘238 Patents

         Exergen 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.

         (emphasis added).

         Claim 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 temperature.

         (emphasis added).

         2. ‘435 Patent

         On May 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.

         (emphasis added).

         3. Prior Litigation

         Exergen 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).

         More 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.

         4. The ‘938 Patent

         Dr. 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 ...


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