Johnson Controls Technology Company et al. v Price Industries Inc. et alCivil Complaint No. 1:20-cv-03692-LMM (ND Ga., December 16, 2022)
A patent case in the Northern District Court of Georgia was settled after two years and 103 days, shortly after the Claim Construction Order was entered by Judge Leigh Martin May on December 2, 2022.
The plaintiff, Johnson Controls Technology Company, which manufactures heating, ventilating, and air conditioning (“HVAC”) equipment and holds hundreds of patents related to HVAC controls and optimization, filed a lawsuit against Price Industries, which also designs and supplies HVAC equipment.
The original lawsuit alleges that the defendant infringed four patents — U.S. Patent Nos. 6,369,716 (“the ‘716 patent”), 7,025,281 (“the ‘281 patent”), 9,625,166 (“the ‘281 patent”), the ‘166 patent’) and 9,824,549 (‘the ‘716 patent’ ‘549 patent’) – through the unauthorized use and sale of various HVAC monitors, thermostats, controllers and other products. Complaint, Civil Claim No. 1:20-cv-03692-LMM, Dkt. 1 at 1–2 (ND Ga. 4 Sept 2020).
Plaintiff’s second amended complaint adds U.S. Patent No. 10,871,304 (“the ‘304 Patent”) entitled “Air Diffuser.” Second amended complaint, Civil Claim No. 1:20-cv-03692-LMM, Dkt. 33 at 1, 8 (ND Ga. January 22, 2021). In both lawsuits, the plaintiff alleges that the defendant directly infringed and caused an infringement by making certain hardware and services available to customers and instructing the user how to use those products and services. Complaint at 1, 2, 21.
Pursuant to Patent Rule 6.3, on June 21, 2021, the parties filed a joint claim construction statement specifying the 20 terms at issue for five patents, followed by the filing of supporting briefs and a subsequent hearing.
Judge May’s order of claim construction began by establishing the Person of Average Skill (POSA) requirements for each patent based on the parties’ agreement:
“…the Court finds that for the ‘716 and ‘281 patents, a POSA must have at least a degree in physics, mechanical engineering, electrical engineering, or a degree related to indoor environment, or an equivalent or related field, and at least three to five years of experience in the research, development or design of HVAC systems and controls for buildings with a focus on thermal comfort, ventilation and indoor air quality. For the ‘166 and ‘304 patents, a POSA must 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 HVAC buildings with a focus on the fluid dynamics of Air distribution systems, including the assessment of terminal equipment such as air diffusers for supplying air to a conditioned space.”
Order for claim construction, Civil Claim No. 1:20-cv-03692-LMM, Dkt. 108 at 7 (ND Ga. Dec. 2, 2022) (internal citation omitted)
The parties found little else to agree on. Judge May was therefore forced to resolve the other 16 claims construction problems raised by the parties relating to terms of the ‘716 patent, the ‘281 patent and the ‘166 patent. There remained no claims from the ‘549 patent and therefore all related disputes were dropped as contentious.
In all, Judge May defined or interpreted eight terms, resulting in a mix of constructions that clearly favored neither side, and ordered the parties to mediate. The plaintiff informed the court 14 days later that the parties had reached an agreement. The case was subsequently dismissed on December 16, 2022.
