DCT
1:15-cv-02785
Brandt v. Honnecke
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Steven Lee Brandt and James Clay Walters (Colorado) (Appearing Pro Se)
- Defendant: Von Honnecke, Chase Honnecke, and S&H Heating, A/C, Sheetmetal Co. (Colorado)
- Defendant’s Counsel: Ellen Reilly, The Reilly Intellectual Property Law Firm, P.C.
- Case Identification: 1:15-cv-02785, D. Colo., 02/29/2016
- Venue Allegations: Plaintiffs allege venue is proper in the District of Colorado because Defendant S&H Heating, A/C, Sheetmetal Co. is a Colorado corporation that transacts business within the district.
- Core Dispute: Plaintiffs allege that Defendant’s furnace filter box products infringe a patent related to a ready-to-assemble furnace filter box and its method of assembly.
- Technical Context: The technology concerns furnace filter boxes, a key component in residential and commercial heating, ventilation, and air conditioning (HVAC) systems.
- Key Procedural History: The complaint alleges that Plaintiffs provided Defendant with pre-suit notice of potential infringement on two separate occasions. The first notice was sent via letter on March 10, 2014, prior to the patent's issuance, to which Defendant allegedly replied on April 2, 2014, stating an unwillingness to cease manufacturing. A second notice was allegedly sent on October 27, 2015, after the patent had issued. These allegations form the basis for a claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2012-11-02 | Patent Priority Date ('029 Patent) |
| 2014-03-10 | Plaintiffs send first cease and desist letter to Defendant |
| 2014-04-02 | Defendant allegedly replies, refusing to cease activities |
| 2015-04-07 | U.S. Patent No. 8,999,029 Issues |
| 2015-10-27 | Plaintiffs send second cease and desist letter to Defendant |
| 2016-02-29 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,999,029 - “FURNACE FILTER BOX AND METHOD OF ASSEMBLY”
The Invention Explained
- Problem Addressed: The patent’s background section describes deficiencies with typical sheet metal furnace filter boxes, which are cut and formed to specific sizes. This practice creates "handling, shipping, and safety issues for the manufacturer, distributor and installer" ('029 Patent, col. 1:18-22; Compl. ¶23).
- The Patented Solution: The invention is a furnace filter box designed to be shipped disassembled in a compact box and assembled on a jobsite, which reduces labor and transportation expenses ('029 Patent, col. 2:40-43). The design incorporates features such as vertical strength ribs that allow the box's panels to be cut to size on-site to fit a particular furnace, without compromising the unit's structural integrity ('029 Patent, col. 3:17-25). Figure 2 of the patent illustrates the core concept by depicting the filter box in its disassembled state, ready for shipment or on-site assembly ('029 Patent, Fig. 2).
- Technical Importance: This approach allows a standardized product to be adapted for various furnace sizes, reducing the need for manufacturers and distributors to stock numerous pre-sized units (Compl. ¶17).
Key Claims at a Glance
- The complaint asserts independent claims 1, 10, and 17, along with dependent claims 2, 3, 5, 8, 9, 11, 13, 15, 16, and 20 (Compl. ¶¶31-55).
- Independent Claim 1 (Apparatus): A furnace filter box comprising:
- a vertical front panel with a furnace filter door
- the front panel attached to vertical sides of a first side panel and a second side panel
- the first and second panels attached to a vertical back panel
- a horizontal bottom panel attached to a bottom portion of the front, back, and side panels
- a pair of horizontal furnace filter rails mounted inside an upper portion of the side panels for holding a filter
- a vertical air intake opening in the first side panel
- Independent Claim 10 (Apparatus): A furnace filter box with elements similar to Claim 1, further requiring:
- the front, back, and side panels include "spaced apart vertical strength ribs"
- the furnace filter rails are "U shaped" and have a "width of 1 inch and greater"
- Independent Claim 17 (Method): A method of assembling a furnace filter box, with steps including:
- attaching sides of a front panel to sides of first and second side panels
- attaching the side panels to a back panel
- attaching a bottom panel
- mounting a pair of "U" shaped furnace filter rails
- cutting an air intake opening in the first side panel
- mounting the assembled box next to a furnace intake opening
III. The Accused Instrumentality
Product Identification
- The "Furnace Pedestal, Return Air Filter Box" ("the accused Products") manufactured and sold by Defendant S&H (Compl. ¶56).
Functionality and Market Context
- The complaint alleges the accused product is a "copy" of the Plaintiffs' patented product (Compl. ¶60). Its functionality is alleged to mirror the elements of the asserted claims. The complaint cites a YouTube video, allegedly authored by an account associated with the Defendant, which depicts a filter box with the features of claim 10 and shows a method of assembly consistent with claim 17 (Compl. ¶57, ¶58). The complaint describes the YouTube video as showing a filter box comprising a vertical front panel, side panels, back panel, horizontal bottom panel, "U" shaped horizontal furnace filter rails, and vertical strength ribs (Compl. ¶58).
- The complaint alleges that S&H sells, on average, more than 5,000 units of the accused products per month and has approached Plaintiffs' customers, such as Johnstone Supply, to sell the accused product at a reduced cost (Compl. ¶61, ¶62).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,999,029 - Claim 1 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A furnace filter box adapted for mounting next to an intake air opening in a furnace, the filter box disposed under an air intake opening in a lower portion of a furnace, the filter box adapted for receiving at least one furnace filter therein for filtering intake air received from an air intake duct... | The accused product is a furnace filter box that is mounted next to an intake air opening in a furnace and is adapted for receiving a filter for filtering intake air. | ¶31 | col. 4:40-45 |
| ...the filter box comprising: a vertical front panel with a furnace filter door, the front panel attached to vertical sides of a first side panel and a second side panel, the first and second panels attached to a vertical back panel, a horizontal bottom panel is attached to a bottom portion of the front... | The accused product comprises a vertical front panel with a filter door, attached to first and second side panels, which are in turn attached to a vertical back panel, with a horizontal bottom panel attached to the bottom portion of the other panels. | ¶31 | col. 2:56-59 |
| ...a pair of horizontal furnace filter rails mounted to an inside of an upper portion of the first and second side panels, the filter rails adapted for holding the furnace filter next to an enlarged open top in the filter box and covering the open top... | The accused product includes a pair of horizontal furnace filter rails mounted inside the upper portion of the side panels, adapted for holding a filter next to an open top. | ¶31 | col. 4:53-58 |
| ...and a vertical air intake opening in the first side panel, the air intake opening adapted for receiving an end of the air intake duct. | The accused product includes a vertical air intake opening in a side panel adapted for receiving an air intake duct. | ¶31 | col. 4:58-62 |
U.S. Patent No. 8,999,029 - Claim 10 Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| ...the front, the back and the first and second side panels includes spaced apart vertical strength ribs formed therein for adding strength to the filter box... | The accused product, as depicted in a referenced YouTube video, includes panels with spaced apart vertical strength ribs. | ¶43, ¶58 | col. 3:17-21 |
| ...a pair of "U" shaped horizontal furnace filter rails mounted to an inside of an upper portion of the first and second side panels, the filter rails having a width of 1 inch and greater for receiving... | The accused product, as depicted in a referenced YouTube video, includes a pair of "U" shaped horizontal furnace filter rails mounted inside the side panels, with the rails having a width of 1 inch or greater for receiving different widths of furnace filters. | ¶43, ¶58 | col. 3:36-39 |
Identified Points of Contention
- Evidentiary Questions: The complaint’s infringement allegations are largely conclusory, asserting that the accused product meets the claim limitations without providing detailed technical evidence such as measurements or schematics (Compl. ¶31, ¶43). The primary evidence cited is a publicly available YouTube video (Compl. ¶58). A central question will be what evidence demonstrates that the actual products sold by Defendant practice every limitation of the asserted claims, including specific features like "vertical strength ribs" and rails of a certain width.
- Scope Questions: The term "attached" appears throughout the claims without specifying a mechanism. The patent discloses specific attachment means, such as "S-lock channels" (Claim 5) and screws into "U" shaped flanges (Claim 8; '029 Patent, Fig. 7). The litigation may raise the question of whether "attached" should be interpreted broadly to cover any means of connection or be limited by the specific embodiments disclosed in the specification.
V. Key Claim Terms for Construction
- The Term: "vertical strength ribs" (Claim 10)
- Context and Importance: This term is a key limitation in independent claim 10 and is presented in the patent as a solution to the weakness of prior art panels, especially after being cut to size ('029 Patent, col. 3:17-25). The infringement analysis for claim 10 and its dependents will turn on whether features on the accused product meet this definition. Practitioners may focus on this term because it appears to be a primary point of novelty over a basic box structure.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not explicitly defined in the patent. A plaintiff could argue it should be given its plain and ordinary meaning, covering any vertically oriented feature formed in the panels that adds structural rigidity.
- Evidence for a Narrower Interpretation: The specification describes the ribs as "important to maintain an overall strength of the filter box, particularly if the panels are cut to reduce the height 'H' of the panels" ('029 Patent, col. 3:19-22). A defendant may argue that to qualify as a "strength rib," a feature must be specifically designed and shown to provide this function in a cut-down configuration, as distinguished from a mere decorative or incidental indentation. The patent figures depict these ribs as distinct, formed channels (e.g., '029 Patent, Fig. 3, element 38).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces and contributes to infringement (Compl. ¶73). The factual basis for inducement of method claim 17 appears to be Defendant's alleged advertising and a YouTube video that "depicts various images showing the method of assembly as described in Claim 17" (Compl. ¶57). This suggests an allegation that Defendant instructs its customers on how to perform the patented assembly method.
- Willful Infringement: The complaint alleges willful infringement based on both pre- and post-patent issuance notice. It alleges that Defendant was notified of the pending patent application on March 10, 2014, and expressly refused to cease its activities (Compl. ¶75-77). It further alleges that Defendant was notified of the issued '029 patent on October 27, 2015, but continued its infringing conduct (Compl. ¶78, ¶83).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the term “vertical strength ribs” be construed broadly to cover any vertical indentation on the accused product’s panels, or will it be limited to structures specifically designed to maintain rigidity after the panels are cut, as suggested by the patent’s specification?
- A key evidentiary question will be one of proof of infringement: beyond conclusory allegations and references to a marketing video, what technical evidence will be presented to establish that the accused products, as sold, meet every structural and dimensional limitation of the asserted claims?
- A central question for damages will be willfulness: given the detailed allegations of both pre- and post-issuance notice and Defendant's alleged explicit refusal to cease its conduct, the focus will be on whether the alleged infringement was objectively reckless, potentially justifying an award of enhanced damages.