IP Law Daily, PATENT—D. Del.: Scent technology provider’s motion for judgment on pleadings denied in patent case against competitor, (Jun 28, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Patent asserted in counterclaim could not be invalidated in motion for judgment on pleadings due to unresolved factual disputes.

The federal district court in Delaware denied Prolitec Inc.'s motion for judgment on the pleadings in its patent infringement lawsuit against ScentAir Technologies, LLC, ruling that claims of the asserted patent in ScentAir's counterclaim cannot be invalidated at the early stage of litigation because of factual disputes that needed resolution (Prolitec Inc. v. ScentAir Technologies, LLC, No. 20-984-WCB (D. Del. June 24, 2024)).

Background. The plaintiff/counter defendant, Prolitec Inc., specializes in providing advanced scent delivery systems and technologies. The defendant/counter-claimant, ScentAir Technologies, LLC, is a leading provider of scent marketing solutions, offering scent delivery services for various commercial environments.

Prolitec sued Scent Air for infringement of four patents, but narrowed its claims to two patents—U.S. Patent Nos. 9,162,004 and 9,745,976. ScentAir counterclaimed for infringement of four patents, but later amended its counterclaims to focus solely on U.S. Patent No. 10,838,388 (the ’388 patent), which involves a scent delivery system managed by a central controller. The ’388 patent’s claims describe a method for controlling networked scent delivery devices based on master schedules and data structures referred to as “in table” and “out table.” Prolitec moved for judgment on the pleadings, arguing that the asserted claims of the ’388 patent are invalid under 35 U.S.C. § 101.

Court’s analysis. The court used the two-step framework for determining patent eligibility under Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014), and Mayo Collaborative Servs. v. Prometheus Lab’ys, Inc., 566 U.S. 66 (2012). The first step involves determining whether the claims are directed to a patent-ineligible concept, such as an abstract idea, law of nature, or natural phenomenon. If the claims are directed to such a concept, the second step requires examining the elements of the claims to determine whether they contain an "inventive concept" that transforms the nature of the claim into a patent-eligible application.

Prolitec contended that, despite the detailed method described in the ’388 patent, the steps of the method are articulated in terms of their results without sufficiently describing the means to achieve them. Moreover, Prolitec asserted that the steps outlined in claim 1 of the ’388 patent—such as establishing a communication network, generating command data, and storing device status—are generic functions that any computer network can perform.

Referencing Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329 (Fed. Cir. 2017), Prolitec argued that claims describing results without detailed implementation methods are abstract and unpatentable.

ScentAir argued that these structures enabled a more efficient and effective scent delivery system by allowing real-time monitoring and control of scent devices, representing a specific technological solution to a technical problem. ScentAir's position was that the “in table” and “out table” were not merely generic data storage elements but were specifically designed to enhance the functionality of the scent delivery system. ScentAir also emphasized that these data structures facilitated dynamic and precise scent management, which conventional means could not accomplish.

Ultimately, the court ruled that the determination of whether “in table” and “out table” are more than generic data structures is a fact question that, on a Rule 12(c) motion, must be resolved in favor of the non-movant ScentAir. Thus, Prolitec’s motion for judgment on pleadings was denied.

The Case is No. 20-984-WCB.

Judge: Bryson, W.

Attorneys: Alexandra M. Joyce (McCarter & English, LLP) for Prolitec Inc. Steven L. Caponi (K&L Gates LLP) for ScentAir Technologies, LLC.

Companies: Prolitec Inc.; ScentAir Technologies, LLC

Cases: Patent DelawareNews