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
Among the attorneys representing Atlas in its various actions
is George C. Summerfield, of Stadheim & Grear, Chicago.
Naperville was represented by Baker & Hostetler, of
Coleman granted Atlas 21 days to file an amended complaint.