DCT

8:23-cv-00329

Emerging Acquisitions LLC v. Leslie Wells

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:23-cv-00329, C.D. Cal., 08/03/2023
  • Venue Allegations: Venue is alleged to be proper as Defendants reside in, and the alleged acts of infringement (making, using, selling the accused product) occurred in, the Central District of California. The complaint also asserts that one defendant, Van Dyk Recycling Solutions, maintains a regional headquarters in the district.
  • Core Dispute: Plaintiff alleges that a municipal solid waste (MSW) recycling facility operated by Defendants infringes two patents related to systems and methods for sorting recyclable materials using air separation.
  • Technical Context: The technology concerns industrial-scale sorting of mixed waste streams, using aerodynamic properties rather than just size to separate lighter recyclables like paper and plastic containers from heavier waste.
  • Key Procedural History: Plaintiff alleges providing pre-suit notice of infringement of the '856 patent to defendant Van Dyk Recycling Solutions in January and February 2022 and to defendant Wells in August 2022, and notice of the '646 patent to Van Dyk in May 2023. The complaint notes that defendants acknowledged these notices but continued their allegedly infringing activities, which forms the basis for the willfulness allegations.

Case Timeline

Date Event
2006-11-03 Priority Date for '856 Patent and '646 Patent
2009-09-08 U.S. Patent No. 7,584,856 Issued
2010-10-12 U.S. Patent No. 7,810,646 Issued
2022-01-07 Notice Letter Sent to Defendant VDRS re: '856 Patent
2022-02-10 Notice Letter Sent to Defendant VDRS re: '856 Patent
2022-08-23 Notice Letter Sent to Defendant Wells re: '856 Patent
2023-05-23 Notice Letter Sent to Defendant VDRS re: '646 Patent
2023-08-03 Complaint Filed

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

U.S. Patent No. 7,584,856 - "Air Separation of Recyclable Material"

  • Patent Identification: U.S. Patent No. 7,584,856, "Air Separation of Recyclable Material," issued September 8, 2009.

The Invention Explained

  • Problem Addressed: The patent addresses the inefficiency of conventional disc screen systems, which separate materials based on size alone. This method is inadequate for sorting municipal solid waste (MSW), where valuable recyclables (e.g., paper, plastic containers) may have similar sizes to non-recyclable waste (e.g., wood, rocks) ('856 Patent, col. 1:41-52).
  • The Patented Solution: The invention proposes a multi-stage process that first uses an air separator to distinguish materials by their aerodynamic properties. A fan blows a stream of mixed waste, causing lighter items like paper and plastic containers to be carried upward and onto a conveyor, while heavier materials fall away. This sorted stream of light recyclables is then fed to a secondary separation screen that separates two-dimensional items (paper, cardboard) from three-dimensional items (containers) ('856 Patent, Abstract; col. 1:54-65; Fig. 1).
  • Technical Importance: This method allows for more effective reclamation of recyclables from a mixed municipal waste stream by adding a density-based separation step, which traditional size-based screeners cannot perform ('856 Patent, col. 1:48-52).

Key Claims at a Glance

  • The complaint asserts independent method claim 8 (Compl. ¶26(a)).
  • Essential elements of Claim 8 include:
    • receiving MSW including non-shredded paper, cardboard, and containers with different shapes and weights.
    • blowing all of the MSW in an upward diagonal direction into an air chamber, causing the lighter, non-shredded recyclable items to land on a first conveyor while other, heavier MSW drops vertically onto a second conveyor.
    • moving the separated recyclable items from the first conveyor onto a separation screen.
    • moving the items up the separation screen such that the non-shredded plastic and metal containers drop off a back end, while the non-shredded paper and cardboard are carried over a top end, thereby substantially separating them.
  • The complaint also alleges infringement of dependent claims 11 and 12 and reserves the right to assert additional claims (Compl. ¶¶25, 34).

U.S. Patent No. 7,810,646 - "Air Separation of Recyclable Material"

  • Patent Identification: U.S. Patent No. 7,810,646, "Air Separation of Recyclable Material," issued October 12, 2010.

The Invention Explained

  • Problem Addressed: The technology addresses the same problem as its parent '856 patent: the limitations of size-based sorting for heterogeneous MSW streams ('646 Patent, col. 1:44-55).
  • The Patented Solution: The '646 patent claims the apparatus (the system) that carries out the sorting method. The system comprises an air separator with an elongated chamber, a conveyor within the chamber, a fan, and a rotating drum. The fan blows MSW dropped into the chamber, with the lighter recyclable items being lifted over the rotating drum and onto the conveyor, while heavier waste is unaffected and drops out through a separate opening ('646 Patent, Abstract; col. 7:13-48).
  • Technical Importance: It provides protection for the physical machinery that embodies the inventive sorting process, complementing the method claims of the '856 Patent.

Key Claims at a Glance

  • The complaint asserts independent system claim 1 (Compl. ¶27).
  • Essential elements of Claim 1 include:
    • an air separator configured to receive MSW.
    • an elongated air chamber with a first opening (for MSW input) and a second opening (for light material output).
    • a first conveyor located at least partially within the chamber.
    • a fan configured to blow recyclable MSW items upward so at least some of them land on the first conveyor, while heavier MSW drops through a third opening.
    • a rotating drum located above the third opening, where the fan blows recyclable items up and over the drum.
  • The complaint also alleges infringement of claims 2, 5, 8, 9, and 23 and reserves the right to assert additional claims (Compl. ¶¶26, 40).

III. The Accused Instrumentality

Product Identification

  • The "MSW Recycling and Waste Management Facility in Santa Barbara County, California" (Compl. ¶10). The complaint specifically identifies components within the facility, including a "Wal-Air Drum Separator" and a "Lubo Elliptical Screen" (Compl. ¶¶26(c)-26(d)).

Functionality and Market Context

  • The facility is alleged to be a system that receives MSW and uses air density separators and other components to separate paper and recyclable containers from other solid waste (Compl. ¶26(a)). The complaint alleges the "Wal-Air Drum Separator" performs the air separation step, and the "Lubo Elliptical Screen" performs the subsequent step of separating flat paper/cardboard from 3D containers (Compl. ¶¶26(c)-26(e)). The complaint includes a labeled diagram of the accused system, showing the arrangement of multiple conveyors, air separators, and other sorting components (Compl. p. 7). This facility is alleged to be used by Santa Barbara County to manage community waste and increase the yield of recovered materials (Compl. ¶¶5, 13, 21-22).

IV. Analysis of Infringement Allegations

'856 Patent Infringement Allegations

Claim Element (from Independent Claim 8) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving Municipal Solid Waste (MSW) including recyclable MSW items ... including non-shredded paper, non-shredded cardboard, non-shredded plastic containers, and non-shredded metal containers that have different shapes and weights... The facility is designed and operated to receive and process a stream of municipal solid waste that includes organics, recyclable paper, cardboard, and plastic and metal containers (Compl. ¶26(b)). ¶26(b) col. 8:13-28
blowing all of the MSW in an upward diagonal direction as the MSW is being dropped into an air chamber so that the non-shredded paper, non-shredded cardboard, non-shredded plastic containers, and non-shredded metal containers are blown in an upward diagonal direction... land onto the first conveyor as the first conveyor conveys the... containers in an upward diagonal direction as the other MSW drops vertically downward onto a second conveyor... The facility uses a "Wal-Air Drum Separator" that allegedly performs this step, blowing lighter recyclables upward while heavier materials drop downward onto a separate conveyor (Compl. ¶26(c)). ¶26(c) col. 8:29-47
moving the non-shredded paper, non-shredded cardboard, non-shredded plastic containers, and non-shredded metal containers that have been separated from the other MSW from the first conveyor onto a separation screen The facility is designed and operated to move the separated, non-shredded materials onto a "Lubo Elliptical Screen installation," which is alleged to be a separation screen (Compl. ¶26(d)). ¶26(d) col. 9:7-10
moving the non-shredded paper, non-shredded cardboard, non-shredded plastic containers, and non-shredded metal containers up the separation screen so that the non-shredded plastic containers and non-shredded metal containers drop off of a back end of the separation screen while the non-shredded paper and non-shredded cardboard is carried over a top end of the separation screen... The facility is designed such that on the Lubo Elliptical Screen, non-shredded paper and cardboard are carried over the top while non-shredded plastic and metal containers drop off a back end of the screen (Compl. ¶26(e)). ¶26(e) col. 9:13-24

'646 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an air separator configured to receive the MSW including recyclable MSW items and other heavier MSW materials, the recyclable MSW items including different combinations of non-shredded paper, non-shredded cardboard, non-shredded plastic containers, or non-shredded metal containers The facility includes and utilizes a "Wal-Air Drum Separator" for separating MSW, including separating non-shredded paper, cardboard, and containers from other heavier materials (Compl. ¶27(b)). ¶27(b) col. 7:15-20
an elongated air chamber including a first opening at a first end configured to receive the MSW dropped into the air chamber and a second opening at a second opposite end The "Wal-Air Drum Separator" allegedly uses an elongated air chamber with one opening to receive MSW and a second opening at the opposite end (Compl. ¶27(c)). ¶27(c) col. 7:21-25
a first conveyor located at least partially within the air chamber and having a conveying direction oriented along the air chamber The "Wal-Air Drum Separator" allegedly uses a conveyor oriented with a conveying direction along the length of, and at least partly within, the elongated chamber (Compl. ¶27(d)). ¶27(d) col. 7:26-29
a fan configured to blow the recyclable MSW items dropped into the first opening in the air chamber in an upward diagonal direction... so that at least some of the recyclable MSW items land on the first conveyor... while most of the other heavier MSW materials drop down... through a third opening in the air chamber The "Wal-Air Drum Separator" allegedly uses a blower that blows recyclable MSW items in an upward diagonal direction onto the conveyor, while heavier materials drop down through a third opening (Compl. ¶27(e)). ¶27(e) col. 7:30-41
a rotating drum located above the third opening in the chamber, wherein the fan blows at least some of the recyclable MSW items up over the rotating drum and through the air chamber while at least some of the other heavier MSW materials drop vertically downward through the third opening The "Wal-Air Rotating Drum Separator" allegedly includes a rotating drum located above an opening, such that a blower blows some materials over the drum while heavier materials fall through the opening under the drum (Compl. ¶27(f)). ¶27(f) col. 7:40-48
  • Identified Points of Contention:
    • Scope Questions: Claim 8 of the '856 patent requires "blowing all of the MSW." A central question may be whether "all" refers to the entire MSW stream entering the facility, or only the portion of the stream that is presented to the air separator after any pre-screening steps. The defense may argue that if any material bypasses the air blower, this limitation is not met.
    • Technical Questions: The infringement case hinges on whether the specific operational characteristics of the accused "Wal-Air Drum Separator" and "Lubo Elliptical Screen" map directly onto the claimed functions. A question for the court will be what evidence demonstrates that the accused system's fan blows material "up over the rotating drum" as recited in Claim 1 of the '646 Patent, and whether the components are arranged in the precise spatial relationship claimed (e.g., the drum being "above the third opening").

V. Key Claim Terms for Construction

'856 Patent: "blowing all of the MSW" (Claim 8)

  • Context and Importance: This term's construction is critical because "all" is an absolute term. If the accused system allows any portion of the MSW stream to bypass the specified blowing step, a defendant could argue for non-infringement. Practitioners may focus on this term because its interpretation—whether it means 100% of the facility's intake or 100% of the material at a specific stage—could be dispositive.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes a process where MSW (21) is received from a conveyor (20) and subjected to the air stream. The context suggests "all of the MSW" may refer to the entirety of the material at that particular stage of the process, not necessarily the entire plant's raw intake, which may undergo pre-screening ('856 Patent, Fig. 1; col. 2:58-60).
    • Evidence for a Narrower Interpretation: The patent also discloses an initial "separation screen 14" that removes "fines" (18) from the MSW (21) before it reaches the air separator ('856 Patent, col. 4:29-39). A defendant could cite this to argue that the patented method itself contemplates that less than "all" of the initial MSW is subjected to the blowing step, giving the term a stricter, more literal meaning.

'646 Patent: "rotating drum located above the third opening" (Claim 1)

  • Context and Importance: The relative positioning of the drum and the "third opening" (for heavy material discharge) is a key structural limitation. Infringement will depend on the physical geometry of the accused "Wal-Air Drum Separator." Practitioners may focus on this term because disputes over spatial language like "above" are common in apparatus claims.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: Figure 1 shows the drum (26) positioned relative to a chute (33) such that heavier waste (32) falls down the chute while lighter waste (36) passes over the drum. This functional relationship may support a reading where "above" means "in a higher vertical position that allows for gravity-based separation into the opening below" ('646 Patent, Fig. 1; col. 3:1-4).
    • Evidence for a Narrower Interpretation: A defendant might argue for a strict geometric interpretation, requiring the drum's central axis to be vertically aligned with the perimeter of the third opening. The claim language recites the drum is "located above the third opening," and the description states heavier materials "drop down from the first end of the air chamber, through a third opening" ('646 Patent, col. 7:38-41). Any significant horizontal offset in the accused device could be argued as a deviation from this limitation.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement against Defendant VDRS for designing, selling, installing, and providing operational support for the accused system with knowledge of the patents and the infringement (Compl. ¶¶24, 34(a)). It also alleges inducement against Defendant Mustang for directing the use of the system after receiving notice (Compl. p. 16:1-7).
  • Willful Infringement: Willfulness is alleged based on Defendants' continued infringement after receiving and acknowledging multiple pre-suit notice letters from Plaintiff, starting in January 2022. The complaint alleges Plaintiff specifically warned that continued conduct would be viewed as willful (Compl. ¶¶28-29, 31, 37, 43).

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

  • A core issue will be one of definitional precision: can the term "blowing all of the MSW" in the '856 patent's method claim be construed to read on a system that may perform pre-screening, or does the word "all" impose an absolute requirement that will be difficult for the plaintiff to prove is met by the accused multi-stage facility?
  • A key evidentiary question will be one of operational mapping: can the plaintiff introduce sufficient technical evidence to show that the named, commercially-available components of the accused facility (the "Wal-Air Drum Separator" and "Lubo Elliptical Screen") operate in a manner that maps precisely onto the specific structural and functional limitations of the asserted claims, including the exact spatial relationship of the "rotating drum located above the third opening" as required by the '646 patent?
  • A third central question will concern divided infringement and liability: given the multiple defendants (a county, a director, an operator, and a system designer/seller), the court will need to determine the specific acts attributable to each party and whether those acts constitute direct infringement, inducement, or both, which will be critical for apportioning liability and damages.