Claim Construction

Claim Construction Order Leads to Settlement in the Northern District

Johnson Controls Technology Company et al v. Price Industries Inc. et al, Civil Action No. 1:20-cv-03692-LMM (N.D. Ga., Dec. 16, 2022)

A patent case in the Northern District of Georgia court has been resolved after two years and 103 days, shortly after the Claim Construction Order was entered on December 2, 2022 by Judge Leigh Martin May.

The Plaintiff, Johnson Controls Technology Company, who produces heating, ventilation, and air-conditioning (“HVAC”) systems equipment and holds hundreds of patents in the area of HVAC control and optimization, brought suit against Price Industries, who also develops and supplies HVAC equipment.

The original Complaint alleges that Defendant infringed four patents – United States Patent Nos. 6,369,716 (“the ’716 patent”), 7,025,281 (“the ’281 patent”), 9,625,166 (“the ’166 patent”), and 9,824,549 (“the ’549 patent”) – through the unauthorized use and sale of various HVAC monitors, thermostats, control units, and other products. Complaint, Civil Action No. 1:20-cv-03692-LMM, Dkt. 1 at 1–2 (N.D. Ga. Sept. 4, 2020).

Plaintiff’s Second Amended Complaint adds U.S. Patent No. 10,871,304 (“the ’304 patent”), entitled “Air Diffuser.” Second Amended Complaint, Civil Action No. 1:20-cv-03692-LMM, Dkt. 33 at 1, 8 (N.D. Ga. Jan. 22, 2021). Throughout both complaints, Plaintiff asserts that Defendant directly infringed and induced infringement by providing customers with certain hardware and services, and by instructing the user in how to use those products and services. Complaint at 1, 2, 21. 

Pursuant to Patent Rule 6.3, the parties submitted a Joint Claim Construction statement on June 21, 2021, stipulating the 20 disputed terms across five patents, followed by submission of supporting briefs and a subsequent hearing.

Judge May’s claim construction order began by establishing the requirements for a person of ordinary skill in the art (POSA) for each patent based on the parties agreement:

“… the Court finds that, for the ‘716 and ‘281 patents, a POSA would have at least a degree in physics, mechanical engineering, electrical engineering, or a degree related to indoor climate or an equivalent or related field, and at least three to five years of experience in the research, development, or design of building HVAC systems and controls, with emphasis on thermal comfort, ventilation, and indoor air quality. For the ‘166 and ‘304 patents, a POSA would have at least a degree in physics, mechanical engineering, fluid dynamics, or an equivalent or related field, and at least three to five years of experience in the research, development, and design of building HVAC with emphasis on the fluid dynamics of air distribution systems, including the evaluation of terminal units, such as air diffusers, for delivery of air to a conditioned space.”

Order for Claim Construction, Civil Action No. 1:20-cv-03692-LMM, Dkt. 108 at 7 (N.D. Ga. Dec. 2, 2022) (internal citation omitted)

The parties found little else to agree on. Judge May was therefore forced to resolve the parties’ other 16 raised claim-construction issues involving terms of the ‘716 patent, the ‘281 patent, and the ‘166 patent.  No claims from the ’549 Patent remained, and thus any related disputes were dropped as moot.

On balance, Judge May defined or construed eight terms, resulting in a mixed bag of constructions not clearly favoring either side, and ordered the parties to mediate.  The Plaintiff notified the Court 14 days later that the parties had reached a settlement. The case was subsequently dismissed on Dec. 16, 2022.

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