Case 1:17-cv-00770-JDW Document 270-1 Filed 12/26/23 Page 1 of 22 PageID #: 29440
`Case 1:17-cv-00770-JDW Document 270-1 Filed 12/26/23 Page 1 of 22 PagelD #: 29440
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`EXHIBIT A
`EXHIBIT A
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`

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`Case 1:17-cv-00770-JDW Document 270-1 Filed 12/26/23 Page 2 of 22 PageID #: 29441
`PROLITEC INC., Plaintiff, v. SCENTAIR TECHNOLOGIES, LLC,..., Slip Copy (2023)
`2023 Markman 8697973
`
`2023 WL 8697973
`United States District Court, D. Delaware.
`
`PROLITEC INC., Plaintiff,
`v.
`SCENTAIR TECHNOLOGIES,
`LLC, Defendant.
`
`Civil Action No. 20-984-WCB
`|
`Filed 12/13/2023
`
`MEMORANDUM OPINION AND ORDER
`
`WILLIAM C. BRYSON UNITED STATES CIRCUIT
`JUDGE
`
`*1 In this patent infringement case, the parties have each
`filed motions for summary judgment. Defendant ScentAir
`Technologies, LLC, seeks summary judgment of no direct or
`indirect infringement. Dkt. No. 217 at 1. Plaintiff Prolitec Inc.
`seeks partial summary judgment that its asserted claims are
`not indefinite, not obvious, and not anticipated by various
`ScentAir products. Dkt. No. 218 at 1.
`
`Each party has also moved to exclude certain expert testimony
`from the opposing party pursuant to Daubert v. Merrill Dow
`Pharmaceuticals, Inc., 509 U.S. 579 (1993). ScentAir seeks
`to exclude testimony from two of Prolitec's expert witnesses,
`Marcus Hultmark and Robert Vigil. Dkt. No. 217 at 1–2.
`Prolitec seeks to exclude testimony from Prolitec's expert,
`Timothy Morse, relating to (1) whether the preambles of
`the asserted claims are limiting, (2) whether the accused
`products exhibit “channel flow,” and (3) whether the claims
`are anticipated by the AirQ products. Dkt. No. 218 at 1. I
`heard oral argument on these motions on December 5, 2023.
`
`I. BACKGROUND
`
`Prolitec alleges that ScentAir infringes six claims across
`two of Prolitec's patents: dependent claims 17 and 23 of
`U.S. Patent No. 9,162,004 (“the ’004 patent”) and dependent
`claims 15–17 and 22 of U.S. Patent No. 9,745,976 (“the ’976
`patent”). Prolitec originally alleged that ScentAir infringed
`various additional claims across four patents but dropped
`
`those additional claims following an inter partes review
`(“IPR”) proceeding in which the Patent Trial and Appeal
`Board (“PTAB”) found those additional claims unpatentable.
`See Dkt. Nos. 108-3 and 108-5.
`
`In its counterclaim, ScentAir asserts that Prolitec infringes
`ScentAir's U.S. Patent No. 10,838,388. The court has
`stayed the proceedings on ScentAir's counterclaim, however,
`pending an ex parte reexamination of ScentAir's patent by the
`U.S. Patent and Trademark Office. Dkt. No. 212.
`
`A. The Patents in Suit
`The ’976 patent is a continuation of the ’004 patent. Both
`patents are titled “Removable Cartridge for Liquid Diffusion
`Device and Cartridge Insert Thereof.” The specifications of
`the two patents are nearly identical, and the patents share the
`same 10 figures.
`
`Claims 17 and 23 of the ’004 patent both depend from claim
`9 of that patent. Those claims cover the following subject
`matter:
`
`9. A cartridge for use with a liquid diffusing device,
`the cartridge comprising: a cartridge housing defining an
`internal housing cavity partially filled with a liquid to be
`diffused;
`
`a diffusion head positioned within the internal housing
`cavity, the diffusion head including a venturi device for
`generating a diffused liquid from the liquid contained in the
`internal housing cavity; and
`
`an insert positioned downstream of the diffusion head,
`the insert including an inlet to receive the diffused liquid
`generated by the venturi device, an outlet zone through
`which to discharge the diffused liquid toward an external
`environment, and a tortuous passage extending between the
`inlet and the outlet zone.
`
`*2 17. The cartridge of claim 9 wherein the tortuous
`passage follows a non-linear path that assists in preventing
`liquid from leaking from the cartridge when the cartridge
`is upended.
`
`23. The cartridge of claim 9 wherein the tortuous passage
`of the insert is configured to provide a convoluted flow path
`that retards a flow of the liquid to be diffused through the
`insert when the cartridge is temporarily held upside-down.
`
` © 2023 Thomson Reuters. No claim to original U.S. Government Works.
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`Case 1:17-cv-00770-JDW Document 270-1 Filed 12/26/23 Page 3 of 22 PageID #: 29442
`PROLITEC INC., Plaintiff, v. SCENTAIR TECHNOLOGIES, LLC,..., Slip Copy (2023)
`2023 Markman 8697973
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`Claims 15–17 and 22 of the ’976 patent all depend from
`independent claim 9 of that patent. Those claims cover the
`following subject matter:
`
`cannot leak; and (3) the phrase “retards a flow of the liquid”
`was given its plain and ordinary meaning. Dkt. No. 124.
`
`9. A cartridge for use with a liquid diffusing device, the
`cartridge comprising:
`
`a cartridge housing defining an internal housing cavity
`partially filled with a liquid to be diffused;
`
`a venturi device for generating a diffused liquid from the
`liquid contained in the internal housing cavity; and
`
`an insert positioned downstream of the venturi device,
`the insert including an inlet to receive the diffused liquid
`generated by the venturi device, an outlet zone through
`which to discharge the diffused liquid toward an external
`environment, and a tortuous passage extending between
`the inlet and the outlet zone, the tortuous passage being
`partially capped by the cartridge housing to enclose a
`portion of the tortuous passage and to define an aerosol
`outlet at a remaining uncovered portion.
`
`15. The cartridge of claim 9 wherein the tortuous passage is
`at least partially defined by a vertical sidewall of the insert.
`
`16. The cartridge of claim 9 wherein the tortuous passage
`follows a non-linear path that assists in preventing liquid
`from leaking from the cartridge when the cartridge is
`upended.
`
`17. The cartridge of claim 9 wherein the insert is provided
`between the cartridge housing and the venturi device.
`
`22. The cartridge of claim 9 wherein the tortuous passage
`of the insert is configured to provide a convoluted flow path
`that retards a flow of the liquid to be diffused through the
`insert when the cartridge is temporarily held upside-down.
`
`All six asserted claims share a common preamble, derived
`from the two independent claims. The preamble recites “[a]
`cartridge for use with a liquid diffusing device.”
`
`After the conclusion of the IPR proceeding, the court
`construed three terms or phrases used in the claims: (1) the
`term “tortuous passage” was construed to mean a “physical
`channel having repeated twists, bends or turns”; (2) the phrase
`“assists in preventing the liquid from leaking” was given its
`plain and ordinary meaning, although the court added that
`ScentAir would be precluded from arguing that the liquid
`
`B. The Accused Products
`ScentAir's “Breeze” product is a liquid scent diffuser, which
`operates by atomizing liquid fragrance oil and dispersing
`droplets of the fragrance oil within a target space using a
`pump and a fan. Dkt. No. 220-10, Ex. 10 at ¶ 30. The
`product has two principal parts: the dispersing or diffusion
`device itself (the “Breeze diffusion device”) and a removable
`fragrance cartridge (the “Breeze cartridge”). Id. at ¶ 31.
`The Breeze cartridge is a disposable bottle that arrives in a
`separate box from the Breeze diffusion device. Id. The Breeze
`diffusion device includes, among other components, a lid that
`is connected by a plastic air supply hose to the body of the
`diffusion device. Id. Images of the Breeze cartridge (left and
`center) and the Breeze device (right) are shown below.
`
`*3 Tabular or graphical material not displayable at this time.
`
`Dkt. No. 220-10, Ex. 10 at ¶¶ 30, 31.
`
`Tabular or graphical material not displayable at this time.
`
`Id. at ¶ 32.
`
`To use the Breeze cartridge with the Breeze diffusion device,
`the user screws the cartridge into the lid of the device. See id.
`at ¶ 31. Replacing the Breeze cartridge is done in the same
`way, as demonstrated in the excerpt from the Breeze user
`manual, set forth below:
`
`Tabular or graphical material not displayable at this time.
`
`Dkt. No. 220-3, Ex. 3 at SCENTAIR_00028286. The
`insertion of the Breeze cartridge into the body of the of the
`Breeze diffusion device is depicted below:
`
`Tabular or graphical material not displayable at this time.
`
`Dkt. No. 220-9, Ex. 9 at 25.
`
`Prolitec's expert, Dr. Hultmark, testified at his deposition
`that it is possible to disconnect the air hose from the lid
`of the diffusion device. Dkt. No 223-6, Ex. F at 220:6–
`221:13. However, the Breeze user manual instructs that the
`hose “should not be removed, as it connects the device lid to
`the pump” located within the body of the diffusion device,
`Dkt. No. 220-3, Ex. 3 at SCENTAIR_00028271. ScentAir's
`
` © 2023 Thomson Reuters. No claim to original U.S. Government Works.
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`Case 1:17-cv-00770-JDW Document 270-1 Filed 12/26/23 Page 4 of 22 PageID #: 29443
`PROLITEC INC., Plaintiff, v. SCENTAIR TECHNOLOGIES, LLC,..., Slip Copy (2023)
`2023 Markman 8697973
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`expert, Dr. Morse, acknowledged at his deposition that the
`hose could be disconnected from the lid, but he added that
`doing so would “probably plastically deform the hose, so
`you'd probably damage it in some way.” Dkt. No. 223-4, Ex.
`D at 256:15–257:3.
`
`C. The Prior Art
`There are three prior art products relevant to the parties’
`motions: the Air Berger ScentBox, the ScentAir ScentDirect,
`and the ScentAir ScentStream.
`
`Air Berger is a French company that ScentAir acquired in
`July 2023. See Dkt. No. 219-1, Ex. D. Air Berger's ScentBox
`product was publicly available before the priority date of both
`asserted patents. See Dkt. No. 219 at 15; Dkt. No. 224 at 18.
`After purchasing Air Berger, ScentAir began selling its own
`ScentBox product, which Dr. Morse analyzed in forming his
`opinions. Dkt. No. 224 at 18. According to ScentAir, there
`have been no material changes to the ScentBox design since
`ScentAir's 2013 acquisition of Air Berger.
`
`The ScentDirect product is the commercial embodiment
`of U.S. Patent No. 8,881,999 (“Baylock”), which ScentAir
`owns. See Dkt. No. 219 at 18–22; Dkt. No. 224 at 24–26
`(not identifying any material differences between Baylock
`and the ScentDirect product). The ScentStream product is
`also manufactured by ScentAir and is similar but not identical
`to the device disclosed in Baylock. See Dkt. No. 219 at
`24 (describing Baylock and the ScentStream product as
`“substantially similar”).
`
`II. LEGAL STANDARDS
`
`The court “shall grant summary judgment if the movant
`shows that there is no genuine dispute as to any material
`fact and the movant is entitled to judgment as a matter of
`law.” Fed. R. Civ. P. 56(a). A material fact is “genuine” if the
`evidence is such that a reasonable jury could return a verdict
`for the nonmoving party. Anderson v. Liberty Lobby, Inc., 477
`U.S. 242, 248 (1986). With regard to an issue on which the
`nonmoving party bears the burden of proof at trial, the party
`seeking summary judgment “bears the initial responsibility
`of informing the district court of the basis for its motion,
`and identifying those portions of ‘the pleadings, depositions,
`answers to interrogatories, and admissions on file, together
`with the affidavits, if any,’ which it believes demonstrate the
`absence of a genuine issue of material fact.” Celotex Corp.
`
`v. Catrett, 477 U.S. 317, 323 (1986) (quoting Fed. R. Civ. P.
`56(c) as of 1986). The burden on the moving party in that
`situation can be satisfied by “showing,” that is, by “pointing
`out to the district court—that there is an absence of evidence
`to support the nonmoving party's case.” Id. at 325. If the
`moving party carries its burden, the nonmovant must “come
`forward with specific facts showing that there is a genuine
`issue for trial.” Matsushita Elec. Indus. Co. v. Zenith Radio
`Corp., 475 U.S. 574, 587 (1986) (cleaned up).
`
`*4 The admissibility of expert testimony is governed by
`the Supreme Court's decision in Daubert v. Merrill Dow
`Pharmaceuticals, Inc., 509 U.S. 579 (1993), and its progeny.
`Under Daubert and Federal Rule of Evidence 702, the
`trial court is assigned the task of ensuring that an expert's
`testimony rests on a reliable foundation and is relevant to the
`task at hand. Id. at 597. In particular, the court must determine
`whether the reasoning or methodology underling the expert's
`testimony is scientifically valid and whether the reasoning or
`methodology can properly be applied to the facts at issue.
`Id. at 593. In Kumho Tire Co. v. Carmichael, 526 U.S. 137,
`149 (1999), the Court made clear that the Daubert framework
`applies broadly to “scientific, technical, or other specialized
`knowledge,” and that the rules of evidence require the trial
`judge to determine “whether the testimony has ‘a reliable
`basis in the knowledge and experience of [the relevant]
`discipline.” Id. (quoting Daubert, 509 U.S. at 592).
`
`III. SCENTAIR'S MOTIONS
`
`ScentAir moves for summary judgment of no direct
`infringement and no indirect infringement, and to exclude
`certain expert testimony at trial. Dkt. No. 217.
`
`A. Direct Infringement
`ScentAir argues that the accused Breeze product does not
`directly infringe the asserted claims either literally or under
`the doctrine of equivalents. ScentAir's argument is that the
`Breeze cartridge does not include all limitations of the
`asserted claims and that the Breeze cartridge and the lid of
`the Breeze diffusion device do not, in combination, constitute
`a “cartridge,” as that term is used in the claims. There are
`two main sub-disputes pertinent to this issue: (1) whether
`the preambles of the asserted claims should be construed as
`limiting and, if so, (2) whether there is a material dispute of
`fact regarding infringement by the combination of the Breeze
`cartridge and the lid of the Breeze diffusion device.
`
` © 2023 Thomson Reuters. No claim to original U.S. Government Works.
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`Case 1:17-cv-00770-JDW Document 270-1 Filed 12/26/23 Page 5 of 22 PageID #: 29444
`PROLITEC INC., Plaintiff, v. SCENTAIR TECHNOLOGIES, LLC,..., Slip Copy (2023)
`2023 Markman 8697973
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`1. Claim Construction Issues
`
`ScentAir argues that in light of the positions the parties
`have taken on summary judgment, the court is required to
`conduct further claim construction addressed to the preambles
`of the asserted claims. Although the parties focus on whether
`the preamble language is limiting, the most important
`unresolved question regarding claim construction is what
`the claim term “cartridge” means—in particular whether the
`claimed cartridge must be “removable” and what constitutes
`removability in this context.
`
`Each of the asserted claims contains a preamble that recites
`“[a] cartridge for use with a liquid diffusing device.” ScentAir
`argues that the preambles are limiting and that the term
`“cartridge” in the preambles should be construed to mean a
`“separate part removable from, and receivable by, a liquid
`diffusing device.” Dkt No. 220 at 11. In response, Prolitec first
`contends that ScentAir waived that argument by not raising
`it in the claim construction proceedings. Dkt. No. 223 at 6.
`Second, Prolitec argues that the preambles are not limiting.
`Id. at 7.
`
`In support of its claim of waiver, Prolitec argues that
`ScentAir was on notice prior to claim construction that
`Prolitec considered the combination of the lid of the Breeze
`product, together with the Breeze cartridge, to infringe
`the asserted claims. ScentAir disputes Prolitec's assertion
`regarding notice. According to ScentAir, Prolitec's “vague
`infringement allegations” were insufficient to provide notice
`of Prolitec's position that the combination of the Breeze
`cartridge and lid was infringing. Dkt. No. 226 at 2.
`
`I agree with ScentAir that Prolitec did not explicitly advance
`a theory of infringement based on the combination of
`the Breeze cartridge, funnel, and lid prior to the claim
`construction proceedings. Because Prolitec had not expressly
`stated at the time of claim construction that its theory of
`infringement was that the cartridge-lid combination was the
`infringing component of the Breeze product, the question
`whether the preambles are limiting, together with the meaning
`of the term “cartridge,” did not emerge as critical issues at
`that time. In light of the positions the parties have taken in
`the briefing on the dispositive motions, that issue is before the
`court now.
`
`*5 While it is preferable for claim construction disputes
`to be fully vetted and resolved at the time of formal claim
`construction proceedings, the court has a duty to resolve
`fundamental disputes about the meaning of claims even when
`the disputes arise after claim construction proceedings are
`concluded. See O2 Micro Int'l Ltd. v. Beyond Innovation
`Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008); see also
`Conoco, Inc. v. Energy & Env't Int'l, L.C., 460 F.3d 1349,
`1359 (Fed. Cir. 2006) (“[A] district court may engage in claim
`construction during various phases of litigation, not just in a
`Markman order.”); SanDisk Corp. v. Memorex Prods., Inc.,
`415 F.3d 1278, 1291 (Fed. Cir. 2005) (claim construction
`can be revised after preliminary injunction proceedings); ART
`+COM Innovationpool GmbH v. Google Inc., 155 F. Supp.
`3d 489, 507 (D. Del. 2016) (additional claim construction
`conducted at the summary judgment stage). The dispute over
`the preambles, and in particular the meaning of the term
`“cartridge,” has now arisen. In light of the parties’ current
`positions on infringement, it is clear that the meaning of
`that term and whether the preambles of the two independent
`claims are limiting are of central importance in the resolution
`of the present motions.
`
`Although a preamble does not ordinarily limit a claim, a
`preamble is considered limiting if it “describes a fundamental
`characteristic of the claimed invention that informs one of
`skill in the art as to the structure required by the claim.”
`Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1357–58 (Fed.
`Cir. 2012); see also Bell Commc'ns Research, Inc. v. Vitalink
`Commc'ns Corp., 55 F.3d 615, 620 (Fed.Cir.1995) (“When
`the claim drafter chooses to use both the preamble and the
`body to define the subject matter of the claimed invention,
`the invention so defined, and not some other, is the one the
`patent protects.”). Similarly, “[w]hen limitations in the body
`of the claim rely upon and derive antecedent basis from the
`preamble, ... the preamble may act as a necessary component
`of the claimed invention.” Eaton Corp. v. Rockwell Int'l
`Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).
`
`In this case, the preambles are clearly limiting. The
`specifications and the claims both make clear that the
`asserted claims are directed to a removable cartridge that
`operates in conjunction with a liquid diffusing device.
`The ‘976 and ’004 Patents are both titled “Removable
`Cartridge for Liquid Diffusion Device and Cartridge Insert
`Thereof.” The background sections of both patents describe
`the need for improved “cartridges and cartridge components,”
`rather than improved scent diffusion devices more generally.
`See ’004 Patent at 1:42–43; ’976 Patent at 1:42–43. The
`
` © 2023 Thomson Reuters. No claim to original U.S. Government Works.
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`specifications further explain that their respective disclosures
`relate “specifically to a removable cartridge for use with
`a diffusion device,” ’976 Patent at 4:5–6; and that the
`“cartridges ... may be used with a diffusion device or system ...
`adapted to removably receive” them, ’004 Patent at 4:4–
`6. Perhaps most compellingly, the detailed descriptions of
`both patents explain that scent diffusion devices, “which
`may be adapted to receive embodiments of the cartridges
`and cartridge components described herein are not shown or
`described in further detail to avoid unnecessarily obscuring
`descriptions of such embodiments.” ’004 Patent at 3:35–39;
`’976 Patent at 3:39–43 (same quote).
`
`The specifications teach that the removability of the claimed
`cartridge is a key feature of the invention. Read in light of the
`specifications, the preambles of independent claim 9 of the
`’004 patent and independent claim 9 of the ’976 patent limit
`the scope of those claims and the claims that depend from
`them to a “cartridge” that is removable from the rest of the
`diffusion device. The preambles are thus limiting.
`
`Both parties agree that if the preambles are limiting, the
`claimed cartridge must be removable. In its opening brief,
`ScentAir proposed that the term “cartridge” be construed
`to mean a “separate part removable from, and receivable
`by, a liquid diffusing device.” Dkt. No 220 at 11. In its
`brief, Prolitec proposed that if the court deemed it necessary
`to construe the term “cartridge,” then that term should be
`construed to mean a “removable assembly.” Dkt. No. 223 at
`12. ScentAir does not oppose the use of “assembly” in the
`construction, nor does it oppose the omission of “receivable
`by a liquid diffusion device.” Dkt. No. 226 at 6. Thus, the
`parties agree that the cartridge is a unit that may consist of
`multiple components but must be removable as a unit.
`
`*6 The problem with the parties’ proposed constructions is
`that they do not fully resolve the parties’ dispute. While both
`parties agree that the claimed cartridge must be removable
`and that it can consist of an assembly of multiple components,
`they disagree about what it means for the cartridge to
`be removable. Prolitec argues that the combination of the
`cartridge and the lid of the Breeze diffusion device serves as a
`functional unit that is removable from the body of the device
`because it is possible to detach that combination from, and
`reattach it to, the air hose that connects the lid to the body
`of the device. ScentAir argues that the combination of the
`cartridge and the lid of the Breeze device does not constitute
`a removable unit, because the mere possibility that the air
`hose can be detached does not overcome the fact that in the
`
`Breeze product the lid, the hose, and the body of the device
`were designed to function as a single unit and not as a set of
`separable parts.
`
`To address this issue, I requested supplemental briefing
`on the meaning of “removable” in the parties’ proposed
`constructions. ScentAir argued that an assembly is removable
`if it is “designed to be separable from the liquid diffusion
`device.” Dkt. No. 237 at 1. Prolitec argued that removability
`means “able to be detached or separated,” regardless of
`whether the device was designed for that purpose. The core
`dispute as to the construction of “cartridge” is thus whether, to
`be a cartridge, an assembly must be “designed to be removed
`and replaced.” Dkt. No. 237 at 2.
`
`The words of a claim “are generally given their ordinary and
`customary meaning,” i.e., “the meaning that the term would
`have to a person of ordinary skill in the art in question at the
`time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303,
`1312–1313 (Fed. Cir. 2005). The plain and ordinary meaning
`of a removable “cartridge,” as that term is used in the patents,
`is an assembly designed to be removable so that it can be
`replaced with a like assembly. Both the intrinsic and extrinsic
`evidence favor that construction.
`
`In construing claims, courts “look first to the intrinsic
`evidence of record.” Vitronics Corp. v. Conceptronic, Inc., 90
`F.3d 1576, 1582 (Fed. Cir. 1996). “[T]he person of ordinary
`skill in the art is deemed to read the claim term not only in
`the context of the particular claim in which the disputed term
`appears, but in the context of the entire patent, including the
`specification.” Phillips, 415 F.3d at 1313. The specifications
`of the patents at issue in this case describe cartridges that may
`be “removed from a host device upon depletion of the liquid
`and replaced with another like cartridge” as an improvement
`over refillable reservoirs. ’004 patent, 1:29–36; ’976 patent,
`1:30–36; see also ’004 patent, 6:35–37; ’976 patent, 6:45–
`46 (“the cartridge [ ] may be readily removed and replaced
`with a like cartridge”). The specifications further state that
`“the depleted cartridge may be discarded as an intact unit or
`collected for refurbishment purposes.” ’004 patent, 6:38–40;
`’976 patent, 6:48–50. The specifications thus make clear that
`the claimed cartridge is a device that can be readily removed,
`may be discarded, and may be replaced with another like
`cartridge.
`
`To construe claims, courts also look to extrinsic evidence,
`including dictionaries. See Phillips, 415 F.3d at 1317–
`18. The pertinent dictionary definition of “cartridge” is
`
` © 2023 Thomson Reuters. No claim to original U.S. Government Works.
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`“a usually replaceable or refillable case containing loose
`material and designed to permit ready insertion into a
`larger mechanism, apparatus, or installation,” such as a
`filter cartridge or a cartridge of compressed gas. Webster's
`Third New International Dictionary 345 (2002 ed.). That
`definition is consistent with the specification's use of the term
`“cartridge” to mean an assembly that is readily removable and
`replaceable with a similar assembly.
`
`To be sure, removability and replaceability are terms of
`degree. Virtually “anything can be removed if one is willing to
`destroy the device to remove it.” Neonatal Prod. Grp., Inc. v.
`Shields, No. 13-2601, 2016 WL 1746788, at *9 (D. Kan. May
`3, 2016). Likewise, nearly anything can be replaced if enough
`resources are invested in replacing it. There is no indication
`in the patents how readily removable or easily replaceable
`a cartridge must be. Removability and replaceability are
`therefore best understood in relation to the design intent. An
`assembly is removable and replaceable if it is designed for
`that purpose.
`
`*7 Prolitec argues that, because all the asserted claims are
`apparatus claims, the claim terms should not be defined by
`reference to their intended use. Dkt. No. 236 at 4 (citing
`Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075, 1090
`(Fed. Cir. 2009) (“Apparatus claims cover what a device is,
`not what a device does.”)). Prolitec argues, therefore, that
`the court's claim construction should not depend on “how a
`manufacturer recommends the device to be used.” Dkt. No.
`236 at 4. However, framing the construction of “cartridge”
`by reference to how a device is designed is distinct from
`how a manufacturer recommends the device to be used. It
`is not improper to construe an apparatus claim by reference
`to the manner in which it is designed to operate. See e.g.,
`W. View Research, LLC v. BMW of N. Am., LLC, No. CV
`18-211, 2019 WL 1047479, at *4 (D. Del. Mar. 5, 2019)
`(construing “mobile computerized electronic apparatus” to
`mean “a computerized apparatus which is designed to be
`portable, or is affixed to or part of another object designed to
`be readily movable”); Intuitive Surgical, Inc. v. Auris Health,
`Inc., 549 F. Supp. 3d 362, 369 (D. Del. 2021) (construing “
`‘end effector’ to mean ‘device at the end of an instrument
`used in surgery designed to interact with the environment’ ”);
`Neonatal Prod. Grp., Inc. v. Shields, 276 F. Supp. 3d 1120,
`1130 (D. Kan. 2017) (construing “removable reservoir” to
`mean “a liquid-holding receptacle designed to be removed”).
`
`“Cartridge,” as that term is used in the asserted claims, is
`therefore properly construed to mean an “assembly designed
`to be removable and replaceable with a like assembly.”
`
`2. Literal Infringement by the Cartridge-Lid Functional Unit
`
`Prolitec contends that, regardless of how the court construes
`the preambles of the asserted claims, a fact issue remains as
`to whether the combination of the Breeze cartridge and the
`lid of the Breeze diffusion device constitutes a “cartridge”
`within the meaning of the claims. At the core of that dispute
`is whether the cartridge and lid are a functional unit that is
`“removable and replaceable,” as contemplated by the claims
`as construed.
`
`The parties do not dispute that screwing the Breeze cartridge
`into the lid of the Breeze device creates a cartridge-lid
`assembly that is connected to the body of the Breeze diffusion
`device by a plastic air hose. See Dkt. No. 223 at 14; Dkt.
`No. 220 at 17. Prolitec contends that the combination of
`the cartridge and the lid constitutes a functional assembly
`that is removable and replaceable and therefore infringes
`the asserted claims. See Dkt. No. 223 at 14 (“The accused
`components ... are, as a unit, removable and replaceable”).
`As ScentAir notes, however, “only the Breeze Cartridge is
`designed for removal and replacement.” Dkt. No. 220 at 16
`(emphasis added). The lid of the Breeze diffusion device is
`not designed for removal and replacement when the cartridge
`is replaced. No reasonable jury could find otherwise.
`
`Prolitec argues that the Breeze cartridge and the lid of
`the Breeze diffusion device together constitute a removable
`cartridge within the meaning of the claims. According to
`Prolitec, that is because the lid can be disconnected from the
`body of the diffusion device lid by cutting the air hose or
`pulling the air hose loose from lid. If that is done, Prolitec
`argues, the Breeze cartridge can be screwed into the lid, and
`the two components together will constitute a cartridge that
`satisfies all the limitations of the asserted claims. In particular,
`Prolitec contends that the combined unit will consist of a
`diffusion head including (1) a venturi device for generating
`a diffused liquid, (2) an insert downstream of the diffusion
`head including (3) an inlet to receive the diffused liquid
`generated by the venturi device, (4) an outlet zone through
`which to discharge the diffused liquid, and (5) a tortuous
`passage between the inlet and outlet zone. See ’004 patent,
`claim 9; ’976 patent, claim 9.
`
` © 2023 Thomson Reuters. No claim to original U.S. Government Works.
`
`6
`
`

`

`Case 1:17-cv-00770-JDW Document 270-1 Filed 12/26/23 Page 8 of 22 PageID #: 29447
`PROLITEC INC., Plaintiff, v. SCENTAIR TECHNOLOGIES, LLC,..., Slip Copy (2023)
`2023 Markman 8697973
`
`The problem with Prolitec's theory of infringement is that
`the Breeze product is not designed to function in the way
`Prolitec describes, and as a result the cartridge-lid assembly
`does not infringe the claims as construed. The Breeze user
`manual expressly instructs the user to “NEVER” disconnect
`the lid of the Breeze diffusion device from the body of the
`diffusion device. Dkt. No. 220-3, Ex. 3 at 28271 (all caps
`in original). The user manual further instructs that the hose
`connecting the device lid to the greater body “should not be
`removed.” Id. at 28269. Those directives indicate that the
`cartridge and the lid do not constitute a functional unit that
`is designed to be removable from the body of the diffusion
`device and replaced. See Neonatal, 276 F. Supp. 3d at 1143–
`44 (granting summary judgment of non-infringement where
`the claims required a component to be “removable,” but the
`user manual instructed against performing actions necessary
`to remove the component).
`
`*8 The record makes clear that it is the Breeze cartridge
`without the lid—not the cartridge-lid combination—that is
`designed for replacement and removal. See Dkt. No. 220, Ex
`3 at 28286. The Breeze cartridge is designed to be installed by
`screwing it into the lid, which remains attached to the device
`by the plastic air hose, and to be replaced by unscrewing the
`spent cartridge from the lid and screwing a fresh cartridge into
`the lid in its place, as described in the portion of the Breeze
`user manual set forth below:
`
`Tabular or graphical material not displayable at this time.
`
`Id.
`
`The Breeze cartridge is designed to be disposed of following
`removal. The cartridge-lid combination, by contrast, is not
`designed to be disposed of, as doing so would unnecessarily
`require replacement of the lid. In light of the instructions in
`the user manual, no reasonable juror could view the cartridge-
`lid combination as a functional unit designed to be removable
`and replaceable. Removing and replacing the cartridge by
`itself is not only the indicated mode of replacing the spent
`fragrance agents, but it is also easier to do and is less wasteful.
`
`Because a reasonable jury could not conclude that the
`cartridge-lid combination is an assembly designed to be
`removable and replaceable by a like assembly, Prolitec's
`theory of literal infringement necessarily fails. Specifically,
`the third limitation of both independent claim 9 of the
`’004 patent and independent claim 9 of the ’976 patent
`is not satisfied, because that limitation requires that the
`
`cartridge contain “an insert” that includes “a tortuous passage
`extending between the inlet and outlet zone.”