EcoServices, LLC v. Certified Aviation Services, LLC

NOTICE OF MOTION AND MOTION for Judgment of Indefiniteness of the '860 Patent

C.D. Cal.July 25, 2018

DEFENDANT CAS’S MOTION FOR JUDGMENT OF INDEFINITENESS, CASE NO. 5:16-CV-01824-RSWL-SP 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MAYER BROWN LLP Dale J. Giali (SBN 150382) dgiali@mayerbrown.com 350 South Grand Avenue, 25th Floor Los Angeles, CA 90071-1503 Telephone: (213) 229-9500 Facsimile: (213) 625-0248 Stephen E. Baskin (pro hac vice) sbaskin@mayerbrown.com Dara M. Kurlancheek (pro hac vice) dkurlancheek@mayerbrown.com Canek Acosta (SBN 301901) cacosta@mayerbrown.com 1999 K Street, N.W. Washington, DC 20006 Telephone: (202) 263-3000 Facsimile: (202) 263-3300 Gregory J. Apgar (pro hac vice) gapgar@mayerbrown.com 1221 Avenue of the Americas New York, NY 10020 Telephone: (212) 506-2500 Facsimile: (212) 262-1910 Attorneys for Defendant/Counter-Plaintiff Certified Aviation Services, LLC UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA EASTERN DIVISION EcoServices, LLC, Plaintiff, vs. Certified Aviation Services, LLC, Defendant. Case No. 5:16-cv-01824-RSWL-SP DEFENDANT CERTIFIED AVIATION SERVICES, LLC’S MOTION FOR JUDGMENT OF INDEFINITENESS OF THE ’860 PATENT Trial Date: June 26, 2018 Case 5:16-cv-01824-RSWL-SP Document 273 Filed 07/25/18 Page 1 of 11 Page ID #:16546 - 1 - DEFENDANT CAS’S MOTION FOR JUDGMENT OF INDEFINITENESS, CASE NO. 5:16-CV-01824-RSWL-SP 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Pursuant to the Court’s minute entry (D.I. 253), Defendant Certified Aviation Services (“CAS”) respectfully moves for judgment that claims 1 and 2 of U.S. Patent 5,868,860 (the “’860 Patent”) are indefinite, and accordingly invalid, under 35 U.S.C. § 112, par. 2.1 I. INTRODUCTION The ’860 Patent claims a method of washing turbine compressors. The method involves spraying finely-divided liquid particles into a compressor, and it results in the particles following “the same routes through the turbine compressor as those previously taken by the air-borne contaminants.” JX4, ’860 Patent, Cl. 1. The specification discloses that, in prior systems, the particles did not follow the contaminant path. Instead, centrifugal forces pushed them out towards the tips of the engine blades. The ’860 Patent states that by overcoming the centrifugal effect, the claimed method provides a more effective wash. The claims of the ’860 Patent require that the washing liquid conform to four parameters to accomplish the Patent’s goals: the claims specify that the spray has a certain pressure, volumetric flow, particle velocity, and, relevant to this motion, particle size. It is the use of these parameters that allows the liquid to overcome the centrifugal effect and follow the contaminant path. In particular, the claims require “a liquid particle size (diameter) lying in the range of 250-120 μm.” This contrasts with prior art systems, the patent explains, where the sprays typically contained “particle sizes of 150-950 μm.” JX 4 at 2:5-13. EcoServices has taken the position that not all particles in the spray need be within the range of 120 to 250 micrometers. Rather, EcoServices contends that merely some particles must be within that range. But nothing in the Patent identifies the quantity of in-range particles necessary to qualify. It supplies no objective 1 The Court’s Final Pretrial Order identifies “[w]hether the ’860 Patent is invalid as indefinite” as an issue for trial. D.I. 209 at 34. CAS identified this issue as triable to the Court. See D.I. 164 at 25-26. Case 5:16-cv-01824-RSWL-SP Document 273 Filed 07/25/18 Page 2 of 11 Page ID #:16547 - 2 - DEFENDANT CAS’S MOTION FOR JUDGMENT OF INDEFINITENESS, CASE NO. 5:16-CV-01824-RSWL-SP 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 boundary. One skilled in the art would not know if the patent merely requires one in-range particle, a majority of in-range particles, or more particles in the range- or some other metric. As a result, the asserted claims are indefinite. II. BACKGROUND The ’860 Patent claims a method of washing turbine compressors using a spray that meets specific numerical parameters and ranges. The specification states that “the object of the present invention is to . . . provide conditions for the lean use of resources and for obtaining an effective compressor wash, and to reduce the use of liquids that present a hazard to health and to the environment, and to enable turbine motors to be cleaned effectively with far less quantities of liquid.” Id. at 1:43-49. In prior washing systems, centrifugal forces pushed the spray particles outward towards the tips of the compressor fan blades, causing an ineffective wash. See id. at 1:24-36; Trial Tr. 6/27/2018 at 23:7-12 (cross-examination of ’860 Patent inventor Mr. Asplund). In contrast, the ’860 Patent specification states that, in the inventive method, “the liquid particles will follow the same routes as those earlier taken by the air-borne contaminants through the object.” JX4 at 2:3-5. Thus, “[b]ecause the liquid particles are given a size and velocity which together overcome the centrifugal effect, all accessible surfaces of the object will be cleaned effectively and efficiently.” Id. at 2:14-18. The claims of the ’860 Patent recite ranges of four numerical parameters that allow the washing liquid to overcome the centrifugal effect. Specifically, Claim 1 (the only independent claim) recites a method of washing turbine compressors that is: characterized by running the turbine compressors and spraying the finely-divided liquid quantities through at least one nozzle towards and through the turbine compressor at an overpressure within the range of 50-80 Case 5:16-cv-01824-RSWL-SP Document 273 Filed 07/25/18 Page 3 of 11 Page ID #:16548 - 3 - DEFENDANT CAS’S MOTION FOR JUDGMENT OF INDEFINITENESS, CASE NO. 5:16-CV-01824-RSWL-SP 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 bars and at a liquid particle size in the range of 250-120 μm, and with a total volumetric flow through the nozzle or nozzles within the range of 0.5-60 l/min., and with a liquid particle velocity of 100-126 m/sec., whereby the liquid is finely-divided to a degree at which the particles of liquid will follow the same routes through the turbine compressor as those previously taken by the air-borne contaminants, when spraying said liquid onto and through said turbine compressor. JX 4, ’860 Patent, Claim 1. It is the use of the four claimed parameters (overpressure, particle size, volumetric flow, and particle velocity) together that results in the spray overcoming the centrifugal effect and following the path of the contaminants through the compressor. Trial Tr. 6/27/2018 at 23:25-24:11 (cross- examination of Mr. Asplund); id. at 104:10-21 (direct testimony of EcoServices’s expert Mr. Kushnick). Although the claims recite four parameters, the evidence shows that particle size is of particular importance in achieving the patent’s goals. For example, Mr. Kushnick testified that “what’s new” in claim 1 of the ’860 Patent is “the method of making these small particles of water.” Id. at 104:10-14 (direct testimony of Mr. Kushnick); see also id. at 182:24-183:2 (Mr. Kushnick testifying that the purpose of the patent is to make the particles “so small that they’ll follow the flow path regardless of what the centrifugal effect is”). And Mr. Asplund testified that he developed his solution after thinking to “atomize the water,” “get the droplets light enough,” and “experiment[] with droplet sizes.” Id. at 18:16-19:9 (direct testimony of Mr. Asplund). The particle size recited in the claims is “a liquid particle size in the range of 250-120 μm.” JX4 at 4:8-9. The specification contrasts this range from prior systems “working with . . . particle sizes of 150-950 μm.” Id. at 2:10-12. The Case 5:16-cv-01824-RSWL-SP Document 273 Filed 07/25/18 Page 4 of 11 Page ID #:16549 - 4 - DEFENDANT CAS’S MOTION FOR JUDGMENT OF INDEFINITENESS, CASE NO. 5:16-CV-01824-RSWL-SP 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 specification provides no guidance on what it means to have “a liquid particle size in the range of 250-120 μm.” Both parties’ experts-Mr. Kushnick and Dr. Micklow-agree that particles smaller than 120 μm or bigger than 250 μm would not overcome the centrifugal effect and would provide a less effective cleaning. See Trial Tr. 6/27/2018 at 183:7- 23 (cross-examination of Mr. Kushnick); Trial Tr. 6/29/2018 at 19:14-24 (direct testimony of Dr. Micklow).Yet, EcoServices contends that this limitation is satisfied if any drops are within the claimed size range.2 To argue that the Cyclean system infringes, Mr. Kushnick opined that the claims require only one particle within the range. See Trial Tr. 6/27/18 at 185:21 - 186:6; see also id. at 135:23- 136:15; id. at 138:14-17.3 Mr. Kushnick employed this understanding of the claim limitation to conform to EcoServices’s evidence of alleged infringement. To contend that CAS’s systems infringe, Mr. Kushnick produced testing results of three different nozzles alleged to be representative of the nozzle used by the accused Cyclean system. See JX315. In total, 84 tests were performed, and the results of each test included data on the sizes of the particles in the spray generated by the nozzle. Each of Mr. Kushnick’s 84 nozzle tests produced a different range of droplet sizes. See id. In all 84 tests, at least 65% of the droplets-and for some tests significantly more-were outside the claimed range of 120 - 250 μm. Trial Tr. 6/27/2018 at 183:24 - 184:5; Ex. A, Kushnick Dep. Tr. at 169:18-23. 2 A person of ordinary skill in the art would realize that the spray recited in the ’860 patent claims would produce a range of droplet sizes. See Ex. A, Kushnick Dep. Tr. at 155:7-12 (agreeing that “a person of ordinary skill in the art reading Claim 1 of the ’860 Patent would understand that the spray claimed in the patent would produce an array of droplet sizes”). 3 Highlighting the uncertainty, Mr. Kushnick later admitted that a wash performed with just one particle in the range “wouldn’t be according to the patent.” Trial Tr. 6/27/2018 at 186:7-16. Case 5:16-cv-01824-RSWL-SP Document 273 Filed 07/25/18 Page 5 of 11 Page ID #:16550 - 5 - DEFENDANT CAS’S MOTION FOR JUDGMENT OF INDEFINITENESS, CASE NO. 5:16-CV-01824-RSWL-SP 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 For example, Mr. Kushnick testified at trial regarding the results of the test entitled NZ6_70_0_30. See id. at 134:25 - 135:16; see also JX315.045. In that test, approximately 15% of the particles were within the claimed range of 120-250 μm, and the remaining 85% were outside the range. Trial Tr. 6/27/2018 at 137:14- 138:13; see also JX315.045. The total distribution of particle sizes in that test ranged from approximately 2 μm to 600 μm. See Trial Tr. 6/27/2018 at 137:14- 138:13; JX315.045. EcoServices’s essential theory was that these results show that CAS’s systems satisfy the particle-size limitation. III. LEGAL STANDARDS 35 U.S.C. § 112, par. 2 requires a patent’s specification to “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” “[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). To satisfy this requirement, “a patent must be precise enough to afford clear notice of what is claimed, thereby ‘appris[ing] the public of what is still open to them.’” Id. at 2129 (quoting Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996)). “Otherwise there would be ‘[a] zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims.’” Id. (quoting United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1942)). Thus, “under Nautilus, ‘[t]he claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.’” Dow Chem. Co. v. Nova Chemicals Corp. (Canada), 803 F.3d 620, 630 (Fed. Cir. 2015) (quoting Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014)). And while “‘[s]ome modicum of uncertainty’ may be tolerated, the patent and prosecution history must disclose a single known approach or establish that, Case 5:16-cv-01824-RSWL-SP Document 273 Filed 07/25/18 Page 6 of 11 Page ID #:16551 - 6 - DEFENDANT CAS’S MOTION FOR JUDGMENT OF INDEFINITENESS, CASE NO. 5:16-CV-01824-RSWL-SP 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 where multiple known approaches exist, a person having ordinary skill in the art would know which approach to select.” Dow Chem., 803 F.3d at 630 (quoting Nautilus, 134 S. Ct. at 2128). IV. ARGUMENT The claim term “at a liquid particle size in the range of 250-120 μm” does not with reasonable certainty inform a person skilled in the art of the scope of the claim. Nothing in the claim language or the patent specification provides an objective measure to determine what percentage of the droplets needs to be within the claimed range. The patent simply does not inform one skilled in the art if one (as Mr. Kushnick appears to suggest), some, a majority, or more particles is required4-or of any other metric. Because one skilled in the art cannot know the bounds of the claimed invention, the claims are indefinite. It is common ground that a person of ordinary skill in the art would understand that the claim does not require 100% of the particles in a stream to be within the claimed range. Neither party has contended as such. It is also undisputed that the ’860 Patent claims a spray that overcomes the centrifugal effect (which according to the specification produces a more effective wash requiring less water), and that particles either smaller than 120 μm or larger than 250 μm do not do so and are therefore ineffective at cleaning the compressor. See JX4 at 2:19-32; Trial Tr. 6/27/2018 at 183:7-23; Trial Tr. 6/29/2018 at 19:14- 24. The particle size limitation must accomplish the express objects of the invention. See, e.g., Pacing Techs., LLC v. Garmin Int'l, Inc., 778 F.3d 1021, 1025 (Fed. Cir. 2015) (concluding that the claimed “repetitive motion pacing system” must be interpreted to accomplish the “objects of the present invention” where the 4 At trial, Mr. Asplund testified that in his system, the “vast majority of the particles and the spray” were within the claimed range. Trial Tr. 6/27/2018 at 26:22-27:24. Case 5:16-cv-01824-RSWL-SP Document 273 Filed 07/25/18 Page 7 of 11 Page ID #:16552 - 7 - DEFENDANT CAS’S MOTION FOR JUDGMENT OF INDEFINITENESS, CASE NO. 5:16-CV-01824-RSWL-SP 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 specification stated that objects were accomplished by the pacing system). The ’860 Patent describes overcoming the centrifugal effect as an “object of the present invention.” JX4 at 1:23-50. And, according to the Patent, “the inventive method” is use of the particle size range of 120 to 250 μm, which is a “novel method . . . based on a totally new principle” of giving the particles “a size and velocity which together overcome the centrifugal effect.” Id. at 1:66 - 2:16. But, at trial, EcoServices’s infringement case was premised on the contention that the claim limitation is satisfied even if only a small percentage of the particles in the spray are within that range. In fact, Mr. Kushnick testified that the limitation is satisfied if only one particle in the spray-say, for example, one particle out of a million-is within the range of 120 to 250 µm. See Trial Tr. 6/27/18 at 185:21 - 186:6.5 As these proceedings confirm, a person skilled in the art would not understand what the particle size limitation requires. The Patent does not say. In these circumstances, courts routinely hold patent claims invalid as indefinite; neither the claims nor the specification “provide objective boundaries for those of skill in the art.’” Dow Chem., 803 F.3d at 630. In Berkheimer v. HP Inc., 881 F.3d 1360, 1363-64 (Fed. Cir. 2018), for example, the Federal Circuit affirmed a determination that the claim term “archive exhibits minimal redundancy” was indefinite. The patent sought to eliminate redundancies, but eliminating all redundancies was unlikely in the field of the invention. Id. at 1364. Thus, the claim explicitly allowed for “minimal redundancy.” Id. at 1363. But the specification disclosed “no point of comparison for skilled artisans to determine an objective boundary of ‘minimal’ when the 5 This understanding of the patent is irreconcilable with the patent itself and Mr. Kushnick’s separate testimony. He, for example, testified that if an engine were washed with a spray having only one particle in the range, the cleaning “wouldn’t be according to the patent” and “wouldn’t do it as well.” Trial Tr. 6/27/2018 at 186:7-16. Case 5:16-cv-01824-RSWL-SP Document 273 Filed 07/25/18 Page 8 of 11 Page ID #:16553 - 8 - DEFENDANT CAS’S MOTION FOR JUDGMENT OF INDEFINITENESS, CASE NO. 5:16-CV-01824-RSWL-SP 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 archive includes some redundancies.” Id. at 1364 (emphasis in original). Accordingly, the claim was “not reasonably clear as to what level of redundancy in the archive is acceptable,” and was as a result indefinite. Similarly, the ’860 Patent seeks to improve on the prior art by using a particle size in the range of 120-250 μm, but is unlikely to produce a spray having all particles within that range. And neither the intrinsic nor extrinsic record provides any objective boundary for the percentage of particles that may be outside the range. Following the rationale of Berkheimer, the ’860 Patent is therefore indefinite. In Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1253 (Fed. Cir. 2008), the claims were distinguishable from the prior art because they were “fragile gels.” But the patentee did not “identify the degree of fragility of its invention.” Id. As a result, the degree of improvement over the prior art “remained ambiguous,” and the Federal Circuit affirmed a judgment of indefiniteness. Id. Here, the ’860 Patent also fails to identify the extent to which the particles must differ from the prior art. In this Patent, the patentee both disparaged the use of a particle size range of 150-950 μm, and identified the 120-250 μm range as “totally new” and leading to significant performance benefits-notwithstanding that the prior art range overlaps with the claimed range from 150 to 250 μm. Yet, EcoServices also now asserts that only one particle needs to be within the range of 120 to 250 μm. Just as in Halliburton, “whether the patent expressly or at least clearly differentiates itself from specific prior art . . . is an important consideration in the definiteness inquiry because in attempting to define a claim term, a person of ordinary skill is likely to conclude that the definition does not encompass that which is expressly distinguished as prior art.” 514 F.3d at 1252. Here, the ’860 Patent in no meaningful way contrasts itself from the prior art, leading one skilled Case 5:16-cv-01824-RSWL-SP Document 273 Filed 07/25/18 Page 9 of 11 Page ID #:16554 - 9 - DEFENDANT CAS’S MOTION FOR JUDGMENT OF INDEFINITENESS, CASE NO. 5:16-CV-01824-RSWL-SP 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 in the art to lack any understanding of what it is that these claims purport to preempt. V. CONCLUSION For the foregoing reasons, Defendant CAS respectfully requests that the Court enter judgment that the claims of the ’860 Patent are invalid for indefiniteness. Dated: July 25, 2018 MAYER BROWN LLP By: /s/ Stephen E. Baskin Stephen E. Baskin Dale J. Giali (SBN 150382) Elizabeth M. Burnside (SBN 258184) Stephen E. Baskin (pro hac vice) Dara M. Kurlancheek (pro hac vice) Gregory J. Apgar (pro hac vice) Canek Acosta (SBN 301901) Attorneys for Defendant/Counter- Plaintiff Certified Aviation Services, LLC Case 5:16-cv-01824-RSWL-SP Document 273 Filed 07/25/18 Page 10 of 11 Page ID #:16555 DEFENDANT CAS’S MOTION FOR JUDGMENT OF INDEFINITENESS, CASE NO. 5:16-CV-01824-RSWL-SP 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Certificate of Service I, Stephen E. Baskin, hereby certify that on July 25, 2018, I filed the within and foregoing Defendant Certified Aviation Services, LLC’s Motion for Judgment of Indefiniteness of the ’860 Patent with the Clerk of Court using the CM/ECF system, which automatically sent counsel of record e-mail notification of such filing: Natasha E. Daughtrey ndaughtrey@goodwinlaw.com GOODWIN PROCTER LLP 601 South Figueroa Street, 41st Floor Los Angeles, CA 90017 Telephone: (213) 426-2500 Facsimile: (213) 623-1673 Ronald J. Pabis rpabis@goodwinlaw.com Stephen K. Shahida sshahida@goodwinlaw.com Patrick J. McCarthy pmccarthy@goodwinlaw.com Myomi T. Coad mcoad@goodwinlaw.com GOODWIN PROCTER LLP 901 New York Avenue, NW Washington, DC 20001 Telephone: (202) 346-4000 Facsimile: (202) 346-4444 Attorneys for Plaintiff EcoServices, LLC Dated: July 25, 2018 MAYER BROWN LLP By: /s/ Stephen E. Baskin Stephen E. Baskin Case 5:16-cv-01824-RSWL-SP Document 273 Filed 07/25/18 Page 11 of 11 Page ID #:16556