By Robert Margolis, J.D.
Doctrine of equivalents and other arguments failed to support infringement claims.
The Federal District Court in Utah has granted summary judgment of non-infringement, finding that doTerra International, LLC’s "Cloud Diffuser" does not infringe on a patent owned by ESIP Series 1, LLC and ESIP Series 2, LLC for a device that improves the diffusion of essential oils (ESIP Series 1 v. doTerra Inc., July 28, 2021, Shelby, R.).
ESIP owns U.S. Patent No. 7,878,418 ("the ’418 patent"), for improved diffusion of essential oils. ESIP alleged that doTerra’s device, the Cloud Diffuser, infringes several claims of the ’418 patent. doTerra moved for summary judgment of non-infringement against ESIP’s infringement claims. The court granted the motion. The court held that no reasonable jury could find that the Cloud Diffuser infringes all of the claim limitations in the three claims of the ’418 patent that ESIP claimed were infringed.
Aperture, nozzle. ESIP alleges that the way the Cloud Diffuser’s "aperture" is situated and spaced with respect to the diffuser’s nozzle satisfies the claim limitation in the ’418 patent. ESIP’s infringement contentions do not provide specific dimensions as to the diameter of the Cloud Diffuser Nozzle or the spacing between the nozzle and aperture.
Two of the ’418 patent claims asserted recited a specific distance between the nozzle and aperture—from "one to about 10 times" the diameter of the nozzle. Therefore, unless the distance between the aperture and nozzle of the Cloud Diffuser fell within this range, there could be no infringement of these claims. doTerra ‘s expert determined that the distance was well outside that range, and ESIP provided no contrary evidence. Instead, ESIP argued that there still could be infringement under the "doctrine of equivalents," which applies if the device performs substantially the same function in substantially the same way, to achieve substantially the same result. But as the court noted, "equivalents" cannot erase "meaningful structural and functional limitations of the claim on which the public is entitled to rely in avoiding infringement." Compco, Inc. v. May Dep’t Stores Co., 46 F.3d 1556, 1562 (Fed. Cir. 1994). The significant difference in the measurement set forth in the ’418 patent’s claim requirements from the measurement of the Cloud Diffuser was too great for the doctrine of equivalents to apply, the court held. In any event, even if the doctrine of equivalents could be supported factually, ESIP did not assert the doctrine in its final infringement contentions, as required by the court’s Local Patent Rules.
Duty cycle. "Duty cycle," from two of the ’418 patent claims, means "the fractional time of operation compared to the total elapsed time." Those two claims describe how the device allows for "controlling the duty cycle" by controlling the ratio of the duration operation time to the duration of delay. Notwithstanding that every interval setting of the Cloud Diffuser yields a 1/2 ratio of time of operation to total time, ESIP alleged that the Cloud Diffuser’s operational time can be selectively controlled by adjusting the operational time, thus infringing the ’418 patent. As the court found, however, even adjusting the Cloud Diffuser’s operational time did not change the relevant duty cycle ratio. ESIP argued that "controlling" the duty cycle is not the same thing as "changing" the duty cycle, but the court found no meaningful difference between the two. To selectively control a ratio is to change it, according to the court.
Atomizer, pump. The ’418 patent’s "atomizer," as recited in the claims, is satisfied by a removable plastic chamber in the Cloud Diffuser. The Cloud Diffuser’s pump is connected to the atomizer by a piece of housing, but is separate from the atomizer. This is different than the preferred embodiment of the ’418 patent.
One of the claims of the ’418 patent requires the atomizer be connected directly to a reservoir and pump, which the court’s claim construction order found to require a direct connection between the atomizer and reservoir, but not a direct connection with the pump. The Cloud Diffuser does not have a direct connection between the atomizer and pump, so specific to this claim limitation, the court held that doTerra is not entitled to summary judgment of non-infringement.
Two of the claims require that the pump "anchor" the atomizer, which the court construed as requiring that the pump "firmly secures" the atomizer to a supporting surface, to prevent it from tipping over. If the Cloud Diffuser’s pump also "firmly secures" its atomizer to a supporting surface to avoid the device tipping over, it could be infringing. The court found, however, that the pump does not "firmly secure" the atomizer, noting how the pump represents only a small part of the device’s total weight and is located high up inside the housing. Saying that the pump firmly secures the atomizer is analogous "to claiming the Statute of Liberty is anchored by its Crown," in the court’s words.
The Case is No. 2:15-cv-00779-RJS-DBP.
Attorneys: John Pate (Pate Baird PLLC) for ESIP Series 1 and ESIP Series 2, LLC. Elliot James Hales (Dorsey & Whitney LLP) for doTerra International, LLC; Puzhen, LLC and Puzhen Life USA, LLC.
Companies: ESIP Series 1, LLC; ESIP Series 2, LLC; doTerra International, LLC; Puzhen Life USA, LLC; Puzhen, LLC
MainStory: TopStory Patent GCNNews UtahNews
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