Scott Holland Jul. 22, 2016, 9:50am

For the moment, Naperville doesn’t have to worry about a patent lawsuit regarding its new utility meters after a federal judge in Chicago granted the city’s motion to dismiss the complaint. 

U.S. District Judge Sharon Johnson Coleman on July 19 dismissed the complaint Atlas IP, a Miami-based patent holder, filed against the west suburban city alleging infringement of a patent dating to January 1993. The patent is titled “Medium access control protocol for wireless network,” and Atlas argued Naperville committed infringement by installing residential smart meters, made by Elster Metering, earlier this decade. Atlas claimed the way the Elster devices communicated with each other violated its patent. 

In moving to dismiss, Naperville argued Atlas, which has filed similar infringement suits in several federal jurisdictions in recent years, did not allege sufficient facts or explain which claims of its patent are at issue. The city also said Atlas didn’t define whether the “alleged infringement was direct, indirect, literal or under the doctrine of equivalents,” but Coleman said Atlas pointed out its allegations support only a direct infringement claim. 

That claim failed, Coleman wrote, because the technical allegations are conclusory and lack factual support — simply citing claim language is not sufficient to prove infringement. In one instance, Atlas alleged the Elster device “has the ability to power off” without providing extra support explaning why this is important. 

“This deficiency,” Coleman added, “is underscored by a lack of any allegation that the accused smart meter powers off or has the ability to power off ‘by using the cycle establishing information transmitted from the hub,’ which is the other part of the ‘powering off’ claim limitation.” 

In its motion to dismiss, Naperville also sought supplemental authority from an opinion of federal Judge Milton I. Shadur, who on May 1, dismissed with prejudice a nearly identical claim Atlas filed against Exelon, also in Chicago. 

Coleman granted that motion and said she considered “that case and the parties’ arguments regarding its relevance” to the dismissal motion. She wrote that Shadur found Atlas’ second amended complaint failed to describe how the accused products employed the patented technology. While different products are at issue in the two actions, “the relevance of the differences in the accused products, if any, is belied by the fact that the complaints are nearly identical,” she wrote. 

However, she also noted Atlas is appealing that dismissal “arguing that the district court’s construction of certain claims were incorrect and premature.” 

Among the attorneys representing Atlas in its various actions is George C. Summerfield, of Stadheim & Grear, Chicago. 

Naperville was represented by Baker & Hostetler, of Chicago. 

Coleman granted Atlas 21 days to file an amended complaint.

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