Litigation Developments: Delaware Infringement Suit Ongoing in the Prolitec Inc./ScentAir Technologies, LLC Patent Disputes

WASHINGTON, DC—On July 24, 2020, Prolitec Inc. filed a further patent suit against ScentAir Technologies, LLC, complaining of infringement and asserting several additional patents. Prolitec's new action in federal district court, the latest in nearly a decade of litigation between the parties, accuses the ScentAir Breeze™ product of infringing three Prolitec patents: (1) U.S. Patent No. 9,162,004; (2) U.S. Patent No. 9,480,767; and (3) U.S. Patent No. 9,745,976. This lawsuit is ongoing in the U.S. District Court for the District of Delaware, even as a previous Wisconsin matter involving the same litigants draws to a close.

Prolitec secured an en banc victory at the Federal Circuit during a lengthy series of proceedings involving the U.S. District Court for the Eastern District of Wisconsin, the U.S. Patent and Trademark Office (USPTO), and the U.S. Court of Appeals for the Federal Circuit. Despite a judgment for ScentAir on the claims asserted in the Wisconsin district court, Prolitec obtained from the related parallel proceedings amended claim 3 of its U.S. Patent No. 7,712,683, a claim that did not exist at the beginning of the dispute. Thus, the ’683 patent persists with a valid, substitute claim issued by the USPTO pursuant to Federal Circuit appeal. See Prolitec Inc. v. ScentAir, Inc., No. 2015-1020, Dkt. 80 at 1 (Fed. Cir. Oct. 18, 2017) (en banc) (vacating and remanding); ScentAir Techs. Inc. v. Prolitec Inc., IPR2013-00179, Dkt. 84 at 23 (PTAB April 10, 2019) and Dkt. 86 (PTAB Mar. 2, 2020) (noting Federal Circuit dismissal of ScentAir’s subsequent appeal).

Prolitec, founded in 1996, specializes in liquid-diffusion devices and was an early leader in the field of scent delivery systems for commercial, hospitality, and other large indoor settings, providing its ambient scenting products worldwide.