DCT
8:18-cv-00540
QC Mfg Inc v. Solatube Intl Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: QC Mfg, Inc. (California)
- Defendant: Solatube Intl, Inc. (Delaware); BRIGHTER CONCEPTS, INC. DBA SOLATUBE HOME DAYLIGHT (California)
- Plaintiff’s Counsel: Russ, August & Kabat
- Case Identification: 8:18-cv-00540, C.D. Cal., 03/29/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendants reside in, have committed acts of infringement in, and maintain a regular and established place of business within the Central District of California.
- Core Dispute: Plaintiff alleges that Defendant’s Whole House Fan systems infringe two patents related to quiet and energy-efficient ventilation technology.
- Technical Context: The technology concerns whole house fans, which cool residential structures by drawing in cooler outside air, representing an energy-efficient alternative to traditional air conditioning.
- Key Procedural History: The complaint alleges a history of interactions, including that Defendant expressed interest in distributing or acquiring Plaintiff’s products as early as 2009. Plaintiff alleges it sent cease and desist letters notifying Defendant of infringement of the ’774 patent in July 2017 and March 2018, and of the ’603 patent in March 2018, prior to filing suit. These allegations support claims for willful infringement based on pre-suit knowledge.
Case Timeline
| Date | Event |
|---|---|
| 2004-07-13 | ’774 Patent Priority Date |
| 2007-08-30 | ’603 Patent Priority Date |
| 2009-03-03 | ’774 Patent Issued |
| ~2009 | Defendant allegedly became aware of Plaintiff's fan system |
| ~Jan. 2016 | Plaintiff's copyrighted product photograph allegedly published |
| ~Jan. 2017 | Defendant allegedly began purchasing Plaintiff's products |
| 2017-02-28 | Plaintiff's copyrighted video published on Vimeo |
| 2017-05-08 | Plaintiff's copyrighted video published on YouTube |
| ~May 2017 | Defendant's advertisement for whole house fans appears |
| ~July 2017 | Defendant's advertisement appears in magazine |
| 2017-07-28 | Plaintiff sends first cease and desist letter ('774 Patent) |
| 2017-08-01 | Defendant allegedly gains knowledge of '774 Patent |
| 2017-08-17 | Defendant's allegedly infringing video published |
| 2018-02-27 | ’603 Patent Issued |
| 2018-03-12 | Plaintiff sends second cease and desist letter ('774 Patent) |
| 2018-03-19 | Plaintiff sends cease and desist letter ('603 Patent) |
| 2018-03-29 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,497,774 - "Whole House Fan System and Methods of Installation" (Issued Mar. 3, 2009)
The Invention Explained
- Problem Addressed: Traditional whole house fans are typically installed flush with a home's ceiling, causing them to be noisy and to transmit significant vibrations throughout the building structure ('774 Patent, col. 1:32-39).
- The Patented Solution: The invention physically separates the fan from the ceiling-mounted air vent (register). The fan is moved into the attic and connected to the register via a flexible, acoustically insulating duct. Crucially, the fan assembly is suspended from an attic rafter using flexible straps, which prevents it from directly contacting the building structure, thereby isolating noise and vibration ('774 Patent, Abstract; col. 3:5-10).
- Technical Importance: This design's ability to dramatically reduce operational noise created a new market for "Advanced Whole House Fans" that were more acceptable to homeowners than their louder predecessors (Compl. ¶¶7, 9, 17).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶31).
- The essential elements of independent claim 1 include:
- A fan with a motor and blades.
- A "venturi collar" surrounding the fan blades to reduce noise.
- An "air admitting device" (e.g., a register) for a ceiling opening.
- An "elongated, flexible acoustically insulating material" (e.g., a duct) connecting the fan and the air admitting device.
- At least one "strap" to suspend the fan and duct from a rafter, attenuating vibration.
- The complaint reserves the right to assert additional claims (Compl. ¶33, fn. 2).
U.S. Patent No. 9,903,603 - "Air Cooling System For A Building Structure" (Issued Feb. 27, 2018)
The Invention Explained
- Problem Addressed: While conventional evaporative coolers are energy-efficient, they are often large, unsightly, noisy, and can introduce excessive moisture into a home. Prior art attempts to use remote fans with these coolers were often ineffective due to insufficient airflow ('603 Patent, col. 1:28-54).
- The Patented Solution: The patent describes combining a quiet, powerful, remotely-mounted fan assembly (suspended in the attic) with a separate cooling unit, such as an evaporator. The fan is specified to be powerful enough to create significant negative static pressure in the living area, which actively pulls air through the cooling unit, and positive static pressure in the attic, which forces hot air out through vents ('603 Patent, Abstract; col. 2:54-62).
- Technical Importance: This approach seeks to provide the energy efficiency of evaporative cooling without the associated aesthetic and noise-related drawbacks, by separating the air-moving and air-cooling components ('603 Patent, col. 2:9-14).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶46).
- The essential elements of independent claim 1 include:
- A fan assembly suspended from a roof rafter, comprising an air intake, a motorized fan, and an acoustical/thermal insulating duct at least 4 feet long.
- The fan must have an airflow capacity between 1000 and 6000 cubic feet per minute (cfm).
- The fan assembly must generate a sound level between 0.4 and 0.6 sones in the living area.
- The fan must be adapted to create negative static pressure in the living area to draw in outside air through an "open window."
- The fan must be adapted to expel air into the attic to create positive static pressure.
- The complaint reserves the right to assert additional claims (Compl. ¶48, fn. 3).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are the Solatube Whole House Fan systems (Compl. ¶¶16, 19).
Functionality and Market Context
The complaint alleges the accused products operate by using a fan mounted in a home's attic, which is connected by a flexible, insulated duct to a grille in the ceiling below (Compl. ¶¶35, 49). The system functions by pulling warmer air from the living space into the attic and exhausting it, thereby creating a pressure differential that draws cooler, fresh air into the home through open windows (Compl. ¶34). A diagram included in the complaint shows the accused system pulling air from the living area into the attic, consistent with this description (Compl. p. 12, FIG. at ¶34). The complaint positions the accused products as direct "knock-off" competitors to Plaintiff's "QuietCool" fans (Compl. ¶19).
IV. Analysis of Infringement Allegations
’774 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a fan having a plurality of fan blades and a motor, wherein the fan lessens the static air pressure in the dwelling area by actively drawing air from the dwelling area and then pushing the air into the attic... | The accused systems comprise a fan with blades and a motor that draws air from the dwelling area into the attic, allowing cooler external air to be drawn in through windows. A marketing image depicts this airflow (Compl. p. 13). | ¶34 | col. 2:22-25 |
| a venturi collar, said venturi collar surrounds the fan blades and is adapted to reduce the noise level generated by the air flow | The accused systems are alleged to include a "venturi collar" that surrounds the fan blades to reduce noise. | ¶35 | col. 2:25-26 |
| an air admitting device, said device configured to be positioned in an opening formed in a ceiling of a building structure | The accused systems include an "air admitting device" (e.g., a ceiling grille) for an opening in the ceiling. | ¶35 | col. 2:27-29 |
| an elongated, flexible acoustically insulating material extending between the fan and the air admitting device, said material defining an air passageway between the fan and the air admitting device... and at least a portion of the venturi collar is disposed within the insulating material | The accused systems include an "elongated, flexible acoustically insulating material" (e.g., a duct) that connects the fan and ceiling device. A marketing image shows "Insulated Ducting: for quiet cooling" (Compl. p. 14). | ¶35 | col. 2:30-32 |
| at least one strap, said strap is adapted to suspend the fan and the elongated, flexible acoustically insulating material from the rafter, said strap attenuates the vibration generated from the fan | The accused systems allegedly include at least one strap to suspend the fan and duct from a rafter to attenuate vibration. | ¶36 | col. 3:6-10 |
Identified Points of Contention
- Technical Questions: A key factual question will be whether the accused product's housing or shroud around the fan blades performs the function of a "venturi collar" to "reduce the noise level" as claimed. The complaint's evidence consists of marketing materials that may lack the technical detail to resolve this question (Compl. pp. 13-14).
’603 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a fan assembly adapted to be suspended from a roof rafter in the attic area, said fan assembly comprising an air intake, a motorized fan, and an acoustical and thermal insulating duct, said insulating duct interconnecting the motorized fan and the air intake, the insulating duct being at least 4 feet long | The accused systems are alleged to comprise a fan assembly with an air intake, a motorized fan, and an insulating duct that is at least 4 feet long. The fan is allegedly adapted to be mounted on an intermediate structure in the attic (Compl. ¶49). | ¶49 | col. 4:50-57 |
| wherein the motorized fan has an airflow capacity between 1000 and 6000 cubic feet per minute (cfm); wherein the fan assembly generates a sound level of between 0.4-0.6 sones in at least a portion of the living area | The complaint alleges the accused systems meet these specific performance metrics for airflow capacity and sound level. A side-by-side comparison of marketing videos is offered as evidence of copying, but not of specific performance (Compl. p. 9). | ¶49 | col. 4:66-5:1; col. 5:62-64 |
| wherein the motorized fan is adapted to create a negative static pressure in the living area sufficient to draw outside air through an open window | The accused fan assembly is alleged to create a negative static pressure in the living area to draw air through the intake and duct. | ¶49 | col. 2:54-57 |
| and to expel said air into the attic area to create a positive static pressure sufficient to cause air in the attic area to be pushed out through vents in the attic area and to substantially inhibit outside air to be drawn into the attic area through the vents | The accused fan assembly is alleged to expel air into the attic, creating a positive static pressure that pushes air out through attic vents. A marketing diagram shows air being expelled into the attic (Compl. p. 20). | ¶49 | col. 2:59-62 |
Identified Points of Contention
- Evidentiary Questions: The complaint does not provide test data or other technical evidence demonstrating that the accused product meets the specific quantitative limitations of Claim 1, such as airflow capacity ("1000 and 6000 cfm") and sound level ("0.4-0.6 sones"). Proving that the accused product's performance falls within these claimed ranges will be a central evidentiary challenge for the plaintiff.
- Scope Questions: Claim 1 of the ’603 patent recites a system that draws air "through an open window," a feature of a standard whole-house fan. This contrasts with the patent's specification, which heavily emphasizes an "evaporator system" as a key feature of the invention ('603 Patent, Abstract). This raises the question of whether the claimed invention is coextensive with the invention described in the specification.
V. Key Claim Terms for Construction
Term: "venturi collar" (’774 Patent, Claim 1)
- Context and Importance: This is a specific structural element required by the claim. The infringement analysis for the ’774 patent may depend on whether the defendant's fan housing or shroud can be properly characterized as a "venturi collar." Practitioners may focus on this term because it appears to be more specific than a generic "housing."
- Intrinsic Evidence for a Broader Interpretation: The patent does not provide a specific definition. A party could argue for the term’s plain and ordinary meaning, which might encompass any structure surrounding the fan blades that manipulates airflow to reduce noise.
- Intrinsic Evidence for a Narrower Interpretation: The specification describes a "reducing venturi collar 112" ('774 Patent, col. 2:25-26). A party could argue the term should be limited to this specific embodiment, which implies a particular shape or noise-reduction mechanism.
Term: "air cooling system" (’603 Patent, Claim 1)
- Context and Importance: The construction of this term is critical because of the potential disconnect between the broad claim language and the more specific disclosure in the patent's specification. While asserted Claim 1 recites cooling via an "open window," the specification and abstract are heavily focused on use with an "evaporator system" ('603 Patent, Abstract; col. 1:16-18).
- Intrinsic Evidence for a Broader Interpretation: The language of Claim 1 itself does not mention an evaporator and explicitly recites drawing air "through an open window" ('603 Patent, col. 10:9-11). A party would argue that this plain language controls and that the system is a "cooling system" because it cools a home by drawing in cooler night air.
- Intrinsic Evidence for a Narrower Interpretation: A party may argue that the specification defines the invention as one that solves problems with evaporative coolers and that the term "air cooling system" should be limited to that context to capture the "heart of the invention." Such an interpretation could read a requirement for an evaporator system into the claim.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement for both patents, based on Defendant providing customers with product manuals, technical information, and other instructions that allegedly direct them to use the products in an infringing manner (Compl. ¶¶39, 52).
- Willful Infringement: Willfulness is alleged for both patents. For the ’774 patent, the claim is based on alleged knowledge dating back to 2009 and specific notice via a cease and desist letter in July 2017 (Compl. ¶¶15, 24, 40). For the ’603 patent, the allegation is based on a cease and desist letter sent on March 19, 2018, approximately ten days before the complaint was filed (Compl. ¶¶27, 54).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: Can Plaintiff produce sufficient technical evidence, such as product testing data, to demonstrate that Defendant's fans operate within the specific quantitative performance ranges (e.g., airflow capacity and sones) required by claim 1 of the ’603 patent?
- The case may also turn on a question of claim construction: For the ’603 patent, will the court construe the term "air cooling system" according to the plain language of the claim, which describes a fan using an "open window," or will it be narrowed by the specification's extensive focus on systems incorporating an "evaporator system"?
- Finally, a key infringement question for the ’774 patent will be one of structural definition: Does the accused product contain a component that meets the definition of a "venturi collar," or does its fan housing differ sufficiently in structure and function to fall outside the scope of that claim limitation?