Seal4Safti Inc v. California Expanded Metal Products Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Seal4Safti, Inc. (Washington)
  • Defendant: California Expanded Metal Products Co. (California)
  • Plaintiff’s Counsel: THE HAMIDEH FIRM, P.C.
• Case Identification: 2:20-cv-10409, C.D. Cal., 11/13/2020
• Venue Allegations: Venue is alleged to be proper as Defendant resides within the Central District of California.
• Core Dispute: Plaintiff seeks a declaratory judgment of non-infringement, unenforceability, and invalidity for five of Defendant’s patents related to head-of-wall fire-blocking devices.
• Technical Context: The technology involves firestop systems used in building construction to seal the gap between the top of a wall and the ceiling, primarily using metal tracks fitted with heat-expandable intumescent material.
• Key Procedural History: The complaint describes a complex history of litigation involving the asserted patents, which were originally invented by James Klein and later assigned to Defendant CEMCO as part of a settlement. In prior litigation preceding the assignment, CEMCO itself argued that certain of these patents were invalid. More recently, CEMCO accused Seal4Safti—a new entity formed by the principals of a former supplier to the original inventor—of infringement in court filings and a cease and desist letter, giving rise to this declaratory judgment action.

Case Timeline

Date	Event
2004	Messrs. Sydry and Orszulak (Seal4Safti's principals) allege first use of a product with an intumescent firestop strip
2007-10-04	Earliest Priority Date for ’365, ’718, ’314, and ’526 Patents
2009-09-21	Earliest Priority Date for ’389 Patent
2010-03-23	U.S. Patent No. 7,681,365 Issues
2010-10-19	U.S. Patent No. 7,814,718 Issues
2012	CEMCO initiates first major litigation involving the "Klein patents"
2012-03-20	U.S. Patent No. 8,136,314 Issues
2012-04-10	U.S. Patent No. 8,151,526 Issues
2017-07	Prior "2016 litigation" is dismissed
2019-09-10	U.S. Patent No. 10,406,389 Issues
2020-03	Plaintiff Seal4Safti, Inc. is organized
2020-06-22	CEMCO files brief accusing Seal4Safti of infringement
2020-07-10	CEMCO files reply brief reiterating infringement accusations against Seal4Safti
2020-07-27	CEMCO sends cease and desist letter to Seal4Safti
2020-11-13	Complaint for Declaratory Judgment filed

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

U.S. Patent No. 10,406,389 - "Wall Gap Fire Block Device, System and Method"

The Invention Explained

• Problem Addressed: The patent describes conventional head-of-wall fire blocks, such as stuffing mineral wool into gaps and covering it with a flexible coating, as labor-intensive, expensive, and prone to degradation over time, which reduces their effectiveness (’389 Patent, col. 1:24-40).
• The Patented Solution: The invention provides a pre-fabricated fire block strip that can be applied to a construction component like a header track, either at the factory or on the job site. The strip includes an intumescent material portion that expands with heat and, in some embodiments, a foam portion to provide a smoke and air seal, all of which is designed to be secured to the wall structure with an adhesive layer (’389 Patent, col. 2:11-38).
• Technical Importance: This approach simplifies installation and offers a standardized product solution compared to the manual, multi-step process of installing traditional mineral wool fire blocks.

Key Claims at a Glance

• The complaint seeks a declaratory judgment regarding the ’389 patent generally; claim 1 is the first independent claim.
• Essential elements of independent claim 1 include:
  • A fire-rated wall assembly comprising a horizontal support structure, studs, a track, and a wall board defining a deflection gap.
  • An elongate fire-block wall component attached to the track and extending along the gap.
  • The fire-block component itself comprises three distinct portions: a fire-resistant material portion, a foam material portion, and an adhesive portion.
  • The fire-block component is positioned to seal the deflection gap.

U.S. Patent No. 7,681,365 - "Head-of-Wall Fireblock Systems and Related Wall Assemblies"

The Invention Explained

• Problem Addressed: The patent background identifies a need for improved fireblock systems that can effectively seal dynamic head-of-wall joints—which are designed to allow for ceiling movement—noting that existing methods are often labor-intensive and expensive (’365 Patent, col. 2:40-49).
• The Patented Solution: The patent discloses a head-of-wall assembly where an intumescent strip is affixed directly onto an outer sidewall surface of the U-shaped metal header track. In a fire, this integrated strip expands to fill the construction gap, retarding the spread of smoke and fire while still accommodating the dynamic nature of the joint (’365 Patent, Abstract; col. 4:40-54).
• Technical Importance: By integrating the fire-blocking material with a primary structural component, the invention created a streamlined product that simplified installation for fire-rated dynamic wall systems.

Key Claims at a Glance

• The complaint references prior litigation where CEMCO asserted claim 1 of the ’365 patent (Compl. ¶21, Ex. B).
• Essential elements of independent claim 1 include:
  • A head-of-wall assembly with a footer track, header track, studs, and wallboard.
  • An elongated intumescent strip affixed lengthwise on at least one of the outer sidewall surfaces of the header track.
  • The intumescent strip is positioned on the upper sidewall portion.
  • The wallboard has an upper interior surface that is in linear contact with the outer surface of the intumescent strip.

U.S. Patent No. 7,814,718 - "Head-of-Wall Fireblocks"

• Technology Synopsis: The patent discloses a head-of-wall fireblock assembly comprising a header track with an intumescent strip affixed to an outer sidewall. The invention is designed to provide a pre-engineered solution for sealing dynamic construction joints against fire and smoke (Compl. ¶13; ’718 Patent, Abstract).
• Asserted Claims: Prior filings referenced in the complaint identify claim 12 as asserted (Compl. ¶21, Ex. B).
• Accused Features: The accused features are Plaintiff's "FRG" intumescent firestop strips when applied to metal header tracks in a wall assembly (Compl. ¶¶ 20, 27).

U.S. Patent No. 8,136,314 - "Head-of-Wall Fireblocks"

• Technology Synopsis: This patent covers a header track for a stud wall assembly that includes an intumescent strip on an outer sidewall. The claims are distinguished by reciting the specific chemical composition of the intumescent material, including required weight percentages of expandable graphite, a fire retardant, and an inorganic filler (Compl. ¶13; ’314 Patent, col. 10:21-33).
• Asserted Claims: Prior filings referenced in the complaint identify claims 1 and 6 as asserted (Compl. ¶21, Ex. B).
• Accused Features: The accused features are Plaintiff's "FRG" intumescent firestop strips, based on their material composition and application to metal tracks (Compl. ¶¶ 20, 27).

U.S. Patent No. 8,151,526 - "Head-of-Wall Fireblock Systems and Related Wall Assemblies"

• Technology Synopsis: The patent describes a complete head-of-wall assembly including a header track, studs, and wallboard. A key feature is an intumescent strip that has an outer protective polymeric coating to protect it from abrasion during ceiling movement, a feature intended to enhance durability in dynamic wall systems (Compl. ¶13; ’526 Patent, col. 5:15-22).
• Asserted Claims: Prior filings referenced in the complaint identify claim 1 as asserted (Compl. ¶21, Ex. B).
• Accused Features: The accused features are Plaintiff's "FRG" intumescent firestop strips when used as part of a complete wall assembly (Compl. ¶¶ 20, 27).

III. The Accused Instrumentality

Product Identification

• Plaintiff’s "Fire-Rated Gasket" ("FRG") products (Compl. ¶18, 20).

Functionality and Market Context

• The FRG products are intumescent strips used in building construction to provide fire resistance at the head-of-wall joint (Compl. ¶¶ 8, 18). Plaintiff alleges that these products are sold for the same purpose as products previously marketed under the BlazeFrame™ and Safti-Seal™ brands (Compl. ¶25). Exhibit A to the complaint includes a diagram illustrating a typical head-of-wall system with a header track (26), footer track (14), and studs (18) where such products would be installed (Compl. Ex. A, p. 16). The complaint alleges that CEMCO's infringement accusations are based on the FRG products being functionally identical to previously litigated products (Compl. ¶21, Ex. B, p. 56).

IV. Analysis of Infringement Allegations

The complaint, being a declaratory judgment action for non-infringement, does not contain its own detailed infringement allegations or claim charts. Instead, it references accusations made by the defendant, CEMCO, in prior court filings and correspondence, which are attached as exhibits (Compl. ¶¶21, 23, Exs. B, D). These exhibits in turn reference infringement charts that were not included with the complaint (Compl. Ex. B, p. 56).

The narrative theory of infringement alleged by CEMCO can be summarized from these documents. CEMCO's core allegation is that Seal4Safti’s new "FRG" products are "the same product" as the Safti-Strip and Safti-Frame products that were previously the subject of litigation and admitted to be infringing (Compl. Ex. B, p. 56). The theory asserts that by selling and instructing customers to apply the FRG intumescent strip to the sidewall of a U-shaped metal track for head-of-wall applications, Seal4Safti directly and indirectly infringes the claims of the patents-in-suit, which cover such assemblies and components (Compl. Ex. B, p. 59-62). For the ’389 Patent, the cease and desist letter makes a general allegation that the FRG products infringe, without specifying claims or elements (Compl. Ex. D, p. 82).

• Identified Points of Contention:
  • Successor Liability: A threshold dispute will be whether Seal4Safti, as a separate corporate entity, can be held liable for infringing or for violating an injunction from a prior case involving different corporate defendants. CEMCO alleges Seal4Safti is "acting in concert" with the prior defendants, while Seal4Safti's filing of this DJ action suggests it will argue it is a distinct, non-liable party (Compl. ¶21, Ex. B, p. 64).
  • Prior Art/Unenforceability: A central contention raised by the complaint is that the patents are invalid or unenforceable based on prior art and improper inventorship, pointing to the fact that CEMCO itself previously argued for their invalidity before acquiring them (Compl. ¶¶ 15, 24). The complaint also includes, via exhibit, a diagram from a prior art provisional application showing intumescent material attached adhesively to a metal track, which may be used to support obviousness arguments (Compl. Ex. A, p. 34).
  • Technical Equivalence: The complaint does not provide sufficient detail for analysis of technical differences, but a key question for the court will be whether any modifications between the prior Safti-Seal products and the current FRG products are sufficient to take the products outside the scope of the asserted patent claims.

V. Key Claim Terms for Construction

• The Term: "foam material portion" (from Claim 1 of the ’389 Patent)

• Context and Importance: Practitioners may focus on this term because Claim 1 of the ’389 patent requires the "fire-block wall component" to comprise three distinct parts: a fire-resistant portion, a foam portion, and an adhesive portion. The complaint describes the accused FRG product simply as an "intumescent firestop strip" (Compl. ¶18). Whether the FRG product contains a physically and functionally distinct "foam material portion" in addition to its intumescent "fire-resistant material portion" may be a dispositive issue for infringement of the ’389 patent.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification states that the foam strip is "preferably" made from foam but that other "foam-like material" could be used, suggesting the term is not narrowly limited (’389 Patent, col. 5:11-15).
  • Evidence for a Narrower Interpretation: The patent consistently describes the foam strip and the intumescent strip as separate components with different primary functions—the foam provides a "seal" while the intumescent material "expands to fill gaps" (’389 Patent, col. 6:13-17; col. 5:1-5). Figure 1B depicts the foam strip (14) and fire-resistant strip (12) as distinct, adjacent layers (’389 Patent, Fig. 1B).

• The Term: "affixed lengthwise on at least one of the outer sidewall surfaces" (from Claim 1 of the ’365 Patent)

• Context and Importance: The location of the intumescent strip is a critical limitation. Exhibit B of the complaint indicates this term was previously construed by the court in related litigation (Compl. Ex. B, p. 55, n.1). The dispute will likely revisit whether the accused FRG products, as sold and installed, are "affixed" to the "outer sidewall surfaces" of a header track as required by the claim.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language does not specify the method or timing of affixing, which may support an interpretation that covers strips applied either during manufacturing or later in the field by a contractor.
  • Evidence for a Narrower Interpretation: The figures, such as Figure 2, consistently show the intumescent strip (34) positioned on the exterior face of the header track's vertical flange (sidewall 28), which could be used to argue against an interpretation that covers placement on other "outer" surfaces, such as the top web (’365 Patent, Fig. 2; col. 4:40-49).

VI. Other Allegations

• Indirect Infringement: The complaint does not allege indirect infringement but acknowledges that CEMCO has made such accusations. CEMCO's theory, outlined in Exhibit B, is that Seal4Safti induces infringement by providing customers with UL certifications and project submittals that instruct them to assemble the FRG products into infringing head-of-wall assemblies (Compl. Ex. B, p. 63).
• Willful Infringement: The complaint notes that on July 27, 2020, CEMCO sent Seal4Safti a cease and desist letter that explicitly identified the ’389 patent and demanded that Seal4Safti cease all allegedly infringing activities (Compl. ¶23, Ex. D). This letter establishes pre-suit knowledge on the part of Seal4Safti, which could form the basis for a future claim of willful infringement by CEMCO for any post-notice conduct.

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

• A primary legal question will be one of successor liability: can Seal4Safti, Inc., a newly formed corporation, be bound by judgments or injunctions entered against different corporate entities in prior litigation? The case may turn on whether the court finds Seal4Safti to be a successor-in-interest or to be "acting in concert" with the prior defendants to circumvent a court order.
• A core validity question will be one of judicial estoppel: can CEMCO enforce patents that it, according to the complaint, previously argued were invalid and unenforceable prior to acquiring them through a settlement? This raises the issue of whether a party can take fundamentally contradictory legal positions in related litigation.
• A key technical question will be one of claim scope and product configuration: assuming the case proceeds to the merits, does the accused "FRG" product meet specific claim limitations that distinguish the various asserted patents? For example, the case may explore whether the FRG product includes the distinct "foam material portion" required by the ’389 patent, the specific chemical composition of the ’314 patent, or the protective outer coating of the ’526 patent.