DCT

2:17-cv-07018

StormTrap LLC v. Pre Con Products

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-07018, C.D. Cal., 09/22/2017
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant is a California corporation with its principal place of business in the district and has committed alleged acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s modular underground storm water detention systems infringe six patents related to the design, structure, and assembly of such systems.
  • Technical Context: The technology concerns precast concrete modules used to construct large, underground basins for managing storm water runoff, a common requirement in commercial and municipal land development.
  • Key Procedural History: Plaintiff states it provided Defendant with extensive, 38-page claim charts detailing the alleged infringement prior to filing suit, and that Defendant "consistently avoided responding." Additionally, U.S. Patent No. 7,160,058 underwent an inter partes reexamination requested by a third party, resulting in the USPTO confirming the patentability of original claims and issuing a certificate for amended and new claims.

Case Timeline

Date Event
2002-10-17 Priority Date for ’402, ’335, and ’058 Patents
2006-01-31 U.S. Patent No. 6,991,402 Issues
2007-01-09 U.S. Patent No. 7,160,058 Issues
2008-03-18 U.S. Patent No. 7,344,335 Issues
2009-07-01 Request for Inter Partes Reexamination of ’058 Patent Filed
2009-09-03 Priority Date for ’890, ’880, and ’400 Patents
2011-02-22 Reexamination Certificate for U.S. Patent No. 7,160,058 Issues
2014-07-08 U.S. Patent No. 8,770,890 Issues
2016-08-30 U.S. Patent No. 9,428,880 Issues
2016-10-11 U.S. Patent No. 9,464,400 Issues
2017-09-22 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,991,402 - Methods and Modules for an Underground Assembly for Storm Water Retention or Detention

The Invention Explained

  • Problem Addressed: The patent background describes a need for underground storm water systems that are modular to accommodate site constraints, provide unrestricted internal water flow, and can withstand significant surface loads from traffic or earth. (’402 Patent, col. 1:21-49).
  • The Patented Solution: The invention is a precast concrete module comprising a horizontal "deck portion" and at least one vertical "side portion." (’402 Patent, col. 2:6-10). The side portions contain openings, creating both longitudinal and lateral channels that are in fluid communication, which allows for "relatively unconstrained fluid flow" when multiple modules are assembled together. (’402 Patent, col. 2:11-20; Abstract).
  • Technical Importance: This modular approach with integrated flow channels sought to provide greater versatility in design and installation compared to prior art systems, while maintaining the structural integrity required for subterranean applications. (’402 Patent, col. 1:31-34).

Key Claims at a Glance

  • The complaint asserts independent apparatus claim 42. (Compl. ¶ 26).
  • Essential elements of Claim 42 include:
    • An assembly for retaining storm water comprising at least one "first module" and a plurality of "side modules."
    • The first module has a horizontal deck portion and at least one vertical side portion, defining a longitudinal channel and a lateral channel that are in fluid communication.
    • Each channel extends upward from bottom edges to allow "relatively unconstrained flow."
    • The side modules each have a deck portion and two vertical side portions extending from "opposite longitudinal sides" of the deck.
    • The side modules include some with no openings in one side portion, and all having an opening in another side portion for fluid communication with the first module.

U.S. Patent No. 7,344,335 - Methods and Modules for an Underground Assembly for Storm Water Retention or Detention

The Invention Explained

  • Problem Addressed: As with related patents in the family, the '335 Patent addresses the need for versatile, high-capacity underground storm water systems. It specifically contemplates increasing storage volume by stacking modules vertically. (’335 Patent, col. 2:40-50).
  • The Patented Solution: The invention describes a method and assembly for a "double depth configuration." (’335 Patent, col. 2:40-41). This is achieved by placing a first level of modules (e.g., U-shaped modules) in an upright orientation and then placing a second level of "inverted" modules on top of the first level, thereby creating a two-tiered storage structure with connected longitudinal and lateral channels. (’335 Patent, col. 2:41-49). An illustration of a double-level assembly is provided in the complaint. (Compl. ¶ 61).
  • Technical Importance: This double-level design allows for a significant increase in storm water storage capacity within the same surface footprint, a critical advantage for space-constrained development sites. (’335 Patent, col. 3:5-8).

Key Claims at a Glance

  • The complaint asserts independent method claim 1 and independent apparatus claim 11. (Compl. ¶¶ 54, 74). The right to assert dependent claims is reserved. (Compl. ¶ 51).
  • Essential elements of Claim 1 (method) include:
    • Placing a "first level" of modules in a first configuration.
    • Placing a "second level" of modules in a second or "inverted configuration," supported by the first level.
    • Connecting the resulting longitudinal and lateral channels.
  • Essential elements of Claim 11 (apparatus) include:
    • A "first level comprising a plurality of upright modules."
    • A "second level comprising a plurality of inverted modules."
    • Each module having a deck and at least one side portion.
    • A plurality of longitudinal and lateral channels defined by the levels.

U.S. Patent No. 7,160,058

  • Technology Synopsis: This patent relates to modular storm water assemblies that provide for fluid communication through both longitudinal and lateral flow channels. It further describes providing an outer boundary or wall for the assembly, as well as supporting the assembly on an impermeable floor. (Compl. ¶¶ 109, 111).
  • Asserted Claims: Independent claims 1, 8, 16, 23, and 24. (Compl. ¶ 112).
  • Accused Features: The complaint alleges that the STORM PRISM SP360 system, through its combination of interior and side/corner modules, creates continuous and aligned channels for unconstrained flow and provides peripheral walls that form an outer boundary. (Compl. ¶¶ 115, 117-118). It also alleges infringement when the system is installed on a poured concrete or other impermeable floor. (Compl. ¶ 120).

U.S. Patent No. 8,770,890

  • Technology Synopsis: This patent describes modules featuring a top deck portion with a "cantilevered section" that extends beyond the load-bearing supports. This cantilevered design creates outer channels for fluid flow beneath the overhang, in addition to the interior channel between the supports. (Compl. ¶ 180). The patent also covers stacked, multi-layer configurations of these modules. (Compl. ¶ 180).
  • Asserted Claims: Independent claim 1. (Compl. ¶ 183).
  • Accused Features: The complaint alleges the STORM PRISM SP360 module infringes by having a deck with a main section and two cantilevered sections extending laterally beyond two inwardly spaced, load-bearing supports, which thereby define an interior channel and two outer channels. (Compl. ¶¶ 185-188).

U.S. Patent No. 9,428,880

  • Technology Synopsis: This patent is directed to a single, integrally-formed module for use in a storm water assembly. The module's key features include a top deck with cantilevered sections extending beyond spaced-apart supports, creating interior and outer flow channels. (Compl. ¶ 217). The claims include detailed geometric arrangements of the supports, legs, and channels.
  • Asserted Claims: Independent claims 1, 28, and 47. (Compl. ¶ 219).
  • Accused Features: The STORM PRISM SP360 module is alleged to meet the claimed structure of a deck portion with a main section and cantilevered sections, two spaced-apart supports, and the resulting interior, outer, and cross channels. (Compl. ¶¶ 222-229).

U.S. Patent No. 9,464,400

  • Technology Synopsis: This patent claims an assembly that combines at least one "first module" with a cantilevered deck portion and at least one "side module" that includes a wall. The invention focuses on the specific combination of an interior-type module that provides cantilevered flow channels with a perimeter-type module that provides a boundary. (Compl. ¶¶ 268, 270).
  • Asserted Claims: Independent claims 1 and 21. (Compl. ¶ 270).
  • Accused Features: The complaint alleges the STORM PRISM SP360 system infringes by comprising an assembly of interior modules (the "first module") and side modules, where the side module includes a support that comprises a wall. (Compl. ¶¶ 273, 283).

III. The Accused Instrumentality

  • Product Identification: The STORM PRISM SP360 system. (Compl. ¶ 8).
  • Functionality and Market Context: The complaint describes the STORM PRISM SP360 as a modular system for underground storm water detention and retention, designed to compete directly with Plaintiff's products. (Compl. ¶ 10). The system is based on precast concrete modules fabricated off-site and assembled on-site into single-level or double-level configurations. (Compl. ¶ 11). The system includes at least three types of modules: interior, side, and corner. (Compl. ¶ 12). An illustration in the complaint depicts a STORM PRISM SP360 interior module, which includes a rectangular top "deck" with support structures spaced inwardly from the deck's edges, creating overhangs and an unobstructed path through the module's interior. (Compl. ¶ 12). Other visuals show the side and corner modules that form the system's perimeter. (Compl. ¶ 14).

IV. Analysis of Infringement Allegations

'402 Patent Infringement Allegations

Claim Element (from Independent Claim 42) Alleged Infringing Functionality Complaint Citation Patent Citation
[B] at least one first module having a horizontally disposed deck portion and at least one substantially vertically disposed side portion extending therefrom... The accused system's interior module has a horizontal deck and vertical, curved side portions. ¶29 col. 2:6-10
[C] said side portion and said deck portion defining a longitudinal channel in said first module; The interior module has three longitudinal channels: one between the side portions and two under the deck's cantilevered overhangs. ¶30 col. 2:10-12
[D] said side portion having at least one opening therein and defining a lateral channel in said first module; Each side portion of the interior module has an opening that defines an interior lateral channel. Outer lateral channels also exist under the deck overhangs. ¶31 col. 2:13-15
[F] each said channel extending upwardly from said bottom edges to allow relatively unconstrained flow... The outer channels extend to the bottom edges. While an interior beam interrupts flow, the complaint alleges outer channels allow unconstrained flow. ¶33 col. 2:17-20
[G] the assembly further including a plurality of side modules, each side module having...two corresponding substantially vertically disposed side portions extending from opposite longitudinal sides of said side module deck portion... The accused system includes side modules with a horizontal deck and two vertical side portions. The complaint notes the side portions may be "slightly offset" rather than extending from opposite sides. ¶34 col. 3:56-62
[H] wherein the plurality of side modules includes some of said side modules having one of said side portions which define no openings, The outer walls of the accused side modules are alleged to be mostly without openings. ¶35 col. 3:40-45
[I] all of said side modules having another one of said side portions having at least one opening therein, said opening...being aligned and in fluid communication with a selected one of said channels of said first module. All accused side modules allegedly have an opening on the side portion facing the assembly's interior, which aligns and communicates with a channel of an adjoining interior module. ¶36 col. 3:45-51

Identified Points of Contention

  • Scope Questions: A central question may be whether the term "relatively unconstrained flow" can read on a system where an "interior lateral channel" has a "beam that interrupts flow." (Compl. ¶¶ 33, 26). The complaint's theory relies on the "outer channels" satisfying this limitation for the module as a whole. A second scope question concerns whether side portions that are "slightly offset" (Compl. ¶ 34) meet the limitation requiring them to extend from "opposite longitudinal sides" of the deck portion.
  • Technical Questions: The complaint asserts that an interior module has "three longitudinal channels," two of which are located "beside the outsides of the side portions." (Compl. ¶ 30). The analysis may turn on whether the spaces under the deck overhangs, formed between adjacent modules, technically function as channels of the first module itself, as the claim language requires, or as channels of the overall assembly.

'335 Patent Infringement Allegations (Method Claim 1)

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
[B] placing a first level within the ground comprising a plurality of modules in a first configuration... Installers place a lower level of STORM PRISM modules in a first configuration with the deck portion lowermost. ¶56 col. 2:40-49
[C] placing a second level within the ground comprising a plurality of modules in a second or inverted configuration, said inverted modules being supported by the first level... A second level of modules is placed in an inverted orientation on top of, and supported by, the first level modules. ¶57 col. 2:45-49
[D] connecting a plurality of longitudinal channels each defined by at least a portion of a selected one of the first level and the second level; U-shaped openings on the modules align when placed end-to-end, connecting to adjoining modules to form longitudinal channels across both levels. ¶58 col. 2:43-45
[E] connecting a plurality of lateral channels each defined by at least a portion of a selected one of the first level and the second level. U-shaped openings positioned 90 degrees from the longitudinal openings are aligned in both levels, connecting to form lateral channels. ¶59 col. 2:43-45

'335 Patent Infringement Allegations (Apparatus Claim 11)

Claim Element (from Independent Claim 11) Alleged Infringing Functionality Complaint Citation Patent Citation
[B] a first level comprising a plurality of upright modules; The accused assembly includes a lower level of modules with the deck portion lowermost (inverted from the patent's typical depiction, but alleged to be an "upright" configuration in context of a double-stack). ¶76 col. 2:41-43
[C] a second level comprising a plurality of inverted modules; The assembly includes a second, upper level of modules in an inverted orientation relative to the lower level, supported by the first level. ¶77 col. 2:43-45
[D] each of said upright and inverted modules having a horizontally disposed deck portion and at least one substantially vertically disposed side portion... The modules in both levels have a horizontal deck portion and vertical side portions. ¶78 col. 1:55-59
[E] a plurality of longitudinal channels each defined by a selected one of said first level and said second level; U-shaped openings in the modules align to form a plurality of longitudinal channels when assembled. ¶79 col. 2:43-45
[F] a plurality of lateral channels each defined by a selected one of said first level and said second level. U-shaped openings at 90 degrees from the longitudinal openings align to form lateral channels when assembled. ¶80 col. 2:43-45

Identified Points of Contention

  • Scope Questions: For both claims 1 and 11, the dispute may focus on what constitutes an "upright" versus an "inverted" configuration. The complaint alleges the lower level with "deck portion is lowermost" (Compl. ¶ 76) is the claimed "upright" configuration, while the upper level is "inverted" relative to it. The patent specification appears to describe the upright orientation as forming a floor for the assembly. (’335 Patent, col. 2:41-43). The interpretation of these orientation terms will be critical.
  • Technical Questions: Dependent claims 5 and 6, asserted by the complaint, require "elongated U-shaped modules." (Compl. ¶¶ 62, 65). A photograph of the accused product shows modules with circular openings. (Compl. ¶ 60). The infringement analysis will question whether the accused modules, which have arched supports, meet the "U-shaped" limitation literally or under the doctrine of equivalents.

V. Key Claim Terms for Construction

For the ’402 Patent

  • The Term: "relatively unconstrained flow"
  • Context and Importance: This term appears in claim 42 and is central to the patent's purported solution of improving on prior art systems with restricted flow. Practitioners may focus on this term because the complaint alleges it is met even where an "interior lateral channel" has a "beam that interrupts flow," relying on "outer channels" to provide the required unconstrained flow. (Compl. ¶ 33). The definition will determine whether a partial obstruction within one of several channels defeats the claim limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states the invention permits "relatively unconstrained flow throughout the system," suggesting a system-level assessment rather than a focus on a single, partially obstructed channel. (’402 Patent, col. 1:40-42). The term "relatively" itself suggests that flow need not be completely free of any impediment.
    • Evidence for a Narrower Interpretation: The claim requires "each said channel" to allow this flow. This language could support an argument that if any single channel (e.g., the interior one) is constrained by a beam, the limitation is not met, regardless of flow in other channels. The patent abstract also describes channels that extend upwardly from the bottom edges to allow this flow, which might imply a full-height, open path. (’402 Patent, Abstract).

For the ’335 Patent

  • The Term: "inverted configuration"
  • Context and Importance: This term is essential to both independent claims 1 and 11, defining the double-level structure. Practitioners may focus on this term because the parties may dispute which orientation is "upright" and which is "inverted." The complaint alleges the lower-level modules with decks facing down are "upright" and the upper-level modules with decks facing up are "inverted." (Compl. ¶¶ 57, 77). The case may turn on whether this mapping aligns with the patent's disclosure.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term is relative; claim 1 recites placing a second level in an inverted configuration relative to the first level. This language may allow for flexibility, so long as the two levels are oriented opposite to one another to form a stacked structure.
    • Evidence for a Narrower Interpretation: The specification describes an assembly where "U-shaped modules are placed within the ground in an upright manner with the deck portion forming a floor to the assembly. Inverted U-shaped modules may then be placed...above." (’335 Patent, col. 2:41-45). This could be interpreted to mean "upright" requires the deck to be down (forming a floor) and "inverted" requires the deck to be up. This specific embodiment could be used to argue for a narrower definition that may or may not align with the accused product's configuration.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for all six asserted patents. The allegations are based on Defendant’s alleged knowledge of the patents, stemming from pre-suit correspondence where Plaintiff provided detailed claim charts, and Defendant’s subsequent continued sale of the STORM PRISM SP360 system for use by end-users in an infringing manner. (Compl. ¶¶ 39, 95, 169, 206, 257, 309).
  • Willful Infringement: Willfulness is alleged for all six patents. The complaint bases this on the same pre-suit notice, stating that despite receiving extensive claim charts, Defendant "consistently avoided responding with even one reason why it does not infringe" and continued its allegedly infringing activities. (Compl. ¶¶ 43-44, 99-100, 173-174, 210-211, 261-262, 313-314).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can claim terms such as "relatively unconstrained flow" and extending from "opposite longitudinal sides" be construed to cover the accused product's specific geometry, which includes an internal beam that "interrupts flow" and supports that are allegedly "slightly offset"? The complaint's repeated reliance on the doctrine of equivalents suggests these will be primary areas of dispute.
  • A second key question will concern the interpretation of orientation: for the patents covering two-level systems, does the accused product's stacked assembly, with its lower-level decks facing down and upper-level decks facing up, meet the "upright" and "inverted configuration" limitations as defined by the patent's specification and claims?
  • A final question will be one of validity in light of prosecution history: for the ’058 patent, which survived an inter partes reexamination, the scope of the confirmed and amended claims will be closely scrutinized. The prosecution history estoppel created during that proceeding may significantly influence how the claims are construed and whether they can be asserted to cover the accused system.