DCT

3:18-cv-00503

FloodBreak LLC v. Art Metal Industries LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:18-cv-00503, D. Conn., 03/08/22
  • Venue Allegations: Venue is based on Defendant AMI’s principal place of business being located in the District of Connecticut.
  • Core Dispute: Plaintiff alleges that Defendant’s Mechanical Closure Devices, used to protect underground ventilation systems from flooding, infringe a patent directed to gravity-activated flood barrier technology.
  • Technical Context: The technology provides a method for rapidly sealing large ventilation grates, such as those used in subway systems, to prevent catastrophic flooding during storms.
  • Key Procedural History: This Amended Complaint follows a prior history between the parties. Plaintiff alleges that Defendant’s CEO was notified of Plaintiff’s pending patent application in 2015 and 2016. The complaint also alleges that Defendant’s CEO submitted a patent assurance letter to the NYC Transit Authority in June 2016, and that Plaintiff sent a formal cease-and-desist letter in February 2018, putting Defendants on notice of the issued patent and alleged infringement.

Case Timeline

Date Event
2013-10-06 '342 Patent Priority Date (Provisional Application)
2014-10-06 '342 Patent Application Filing Date
2015-02-01 Approx. date Plaintiff alleges it first notified Defendant's CEO of pending patent
2015-08-01 Approx. date Plaintiff began selling its own MCDs
2016-04-07 '342 Patent Application Publication Date
2016-06-15 Date Defendant's CEO allegedly submitted a patent assurance letter
2017-09-05 '342 Patent Issue Date
2018-02-22 Date Plaintiff sent formal notice of infringement letter to Defendants
2022-03-08 Amended Complaint Filing Date

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

U.S. Patent No. 9,752,342 - “Flood Protection For Underground Air Vents”

  • Patent Identification: U.S. Patent No. 9,752,342, “Flood Protection For Underground Air Vents,” issued September 5, 2017.

The Invention Explained

  • Problem Addressed: The patent describes the significant challenge of protecting underground infrastructure, such as subways, from flooding through street-level ventilation grates. It notes that manual methods like using sandbags or fastening plywood covers are labor-intensive, slow to deploy, and often ineffective against sudden storm surges (’342 Patent, col. 2:8-17).
  • The Patented Solution: The invention is a pre-installed apparatus within a ventilation shaft that features one or more panels. In normal conditions, the panels are held in an "upright home position" by a releasable holder, allowing air to ventilate freely (’342 Patent, col. 4:42-48). Upon threat of flooding, the holder can be released, causing the panels to "rotationally swing downward under the force of gravity" to a sealed position, thereby blocking the passage and preventing water from entering the underground system (’342 Patent, col. 4:48-52).
  • Technical Importance: This approach provides a "simpler, faster, relatively inexpensive and more effective method" for flood protection compared to manual, last-minute efforts, which is critical for protecting public transportation and utility infrastructure (’342 Patent, col. 2:15-17).

Key Claims at a Glance

  • The complaint asserts infringement of claims 1, 4-5, 8, 10, 14, and 20-24 (Compl. ¶24). Independent claim 1 is central.
  • The essential elements of independent claim 1 include:
    • A "support" for arrangement in a ventilation shaft, defining a "passage".
    • One or more "stops" connected to the support near the bottom opening.
    • One or more "panels" mounted for rotation from an "upright home position" (where they do not obstruct the passage) downward to a "lower passage closing position".
    • The downward rotation occurs "solely by gravitational impetus on its own weight".
    • A "panel holder" with "moveable members" to hold the panels in the upright position.
    • A "handle" that is operable to move the moveable members to release the panels.
  • The complaint reserves the right to assert other claims, which may include dependent claims that further narrow these elements (Compl. ¶24).

III. The Accused Instrumentality

  • Product Identification: The accused products are identified as "Mechanical Closure Devices" ("MCDs") manufactured, used, and sold by Defendant AMI (Compl. ¶12).
  • Functionality and Market Context: The complaint alleges that the accused MCDs are used for "blocking flooding water from entering underground ventilation passages" and have been installed in the "New York City subway system" (Compl. ¶¶11, 12). The complaint further alleges that Defendant AMI partnered with installers to supply an MCD that was "represented as being 'equal to the specified Flood Break unit'," the latter being Plaintiff's own product (Compl. ¶12).

IV. Analysis of Infringement Allegations

The complaint does not provide a claim chart or detailed, element-by-element allegations of infringement. It makes a general allegation that the Defendants' MCDs infringe at least Claim 1 and several other claims of the ’342 Patent (Compl. ¶24). The narrative theory is that the accused MCDs, sold for the same purpose and market as the Plaintiff's patented product, incorporate the patented technology of a releasable, gravity-deployed flood barrier.

  • Identified Points of Contention:
    • Technical Questions: A primary factual dispute will concern the precise mechanical operation of the accused MCDs. Does the accused device actually feature panels that are held in an "upright home position" and then fall "solely by gravitational impetus" when released? The complaint does not contain technical diagrams or descriptions of the accused device, making this a central evidentiary question.
    • Scope Questions: The dispute may also involve questions of claim scope. For example, the parties may contest whether the release mechanism of the accused MCD constitutes a "panel holder" with a "handle" as those terms are used in the patent. The definition of these terms and their application to the accused device will be critical.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

  • The Term: "solely by gravitational impetus"

    • Context and Importance: This term is the functional core of the invention, defining the motive force for the protective action. Practitioners may focus on this term because if the accused MCDs use any other motive force (e.g., springs, hydraulics, motors) to assist or drive the closure, they may fall outside the scope of the claim.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification consistently describes the action in these terms, stating panels "gravitationally fall" and "swing downward under the force of gravity," suggesting the term should be given its plain and ordinary meaning as gravity being the prime mover (’342 Patent, col. 4:15-16, col. 4:48-50).
      • Evidence for a Narrower Interpretation: A defendant could argue that "solely" should be interpreted strictly to mean no other forces are at play. The patent’s own disclosure of components like "wiper seals" (’342 Patent, Fig. 21, element 21a/21b) or the inherent friction in any mechanical system could be cited to argue that other forces are always present, raising the question of how literally "solely" must be construed.

  • The Term: "upright home position"

    • Context and Importance: This term defines the default, non-activated state of the apparatus. For infringement to be found, the accused device must be shown to exist in this specific configuration before activation. The question is how "upright" and what specific orientation qualifies as the "home position."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent describes this position as one where the panels "do not obstruct the passage," suggesting a functional definition where any generally vertical orientation that permits ventilation could qualify (’342 Patent, col. 6:62-63).
      • Evidence for a Narrower Interpretation: The patent figures depict the panels in a specific arrangement, tucked vertically beneath a central beam (’342 Patent, Fig. 7). A defendant may argue that "home position" is limited to this specific embodiment, and that a different standby configuration in their device would not meet this limitation.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants induced infringement by providing customers, including the NYC Transit Authority, with an "Operation and Maintenance Manual" that "instructed purchasers and/or users of AMI's MCD how to install, field test, inspect, clean and repair the MCD," thereby encouraging infringing use (Compl. ¶¶19, 26-27). The complaint also alleges direct infringement by the individual CEO and holding company on the basis that AMI is their alter ego (Compl. ¶25).
  • Willful Infringement: Willfulness is alleged based on both pre- and post-suit knowledge. The complaint alleges pre-suit knowledge stemming from direct communications about the pending patent in 2015 and 2016, a patent assurance letter signed by Defendant's CEO in 2016, and a formal cease-and-desist letter sent in February 2018 that identified the patent and the infringing products (Compl. ¶¶15, 17, 20, 29).

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

  • A key evidentiary question will be one of technical operation: Does the Defendants’ accused Mechanical Closure Device function as claimed in the ’342 Patent? Specifically, discovery will need to establish whether its panels are held in an "upright home position" and close "solely by gravitational impetus," or if its mechanism differs in a way that avoids infringement.
  • The case may also hinge on a question of claim construction: How broadly will the court construe the phrase "solely by gravitational impetus"? A narrow interpretation requiring the absolute absence of other forces could favor the defendant, while an interpretation focused on gravity as the exclusive motive force for closure would raise different questions for the fact-finder.
  • A third central issue will be personal liability and willfulness, which will turn on evidence of the individual defendant's knowledge and intent, including the alleged pre-suit notice and communications regarding the patent.