8:11-cv-00708
Fournier Industries Inc v. Prime Solution Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fournier Industries, Inc. (Canadian corporation)
- Defendant: Prime Solution, Inc. (Michigan corporation)
- Plaintiff’s Counsel: Novak Druce & Quigg LLP
- Case Identification: 8:11-cv-00708, M.D. Fla., 04/04/2011
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has a sales representative in the district, advertises this representative on its website, and has sold the accused product category to customers within the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its dewatering equipment products do not infringe Defendant’s patent related to liquid/solid separation technology and/or that the patent is invalid.
- Technical Context: The technology concerns industrial equipment used to dewater slurries and sludges, a critical process in industries such as wastewater treatment, mining, and paper manufacturing.
- Key Procedural History: The complaint states that this action was precipitated by a letter from Defendant’s counsel to Plaintiff on or about February 15, 2010. This letter allegedly referenced Plaintiff’s dewatering products, enclosed a copy of the patent application that would become the patent-in-suit, and noted potential liability for royalties and post-issuance infringement. This letter created the justiciable controversy required for a declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2004-08-09 | '943 Patent Priority Date |
| 2010-02-15 | Defendant's counsel sends letter to Plaintiff |
| 2011-03-01 | '943 Patent Issue Date |
| 2011-04-04 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,895,943 - "Rotary Fan Press," Issued March 1, 2011
The Invention Explained
- Problem Addressed: The patent addresses the need for an improved apparatus for various industrial processes including "feeding, compressing, liquid extraction, washing and chemical treatment of sludge, slurries or other wet materials" found in sectors like wastewater treatment and the pulp and paper industry (U.S. Patent No. 7,895,943, col. 1:16-28).
- The Patented Solution: The invention is a liquid extraction assembly that uses pressure to dewater a mass. The core of the assembly is a housing that defines a path for the material. Along this path, at least one "rotating screen" with "parallel elongated slots" forms a wall. As the slurry is forced through the assembly, pressure pushes it against the rotating screen, forcing liquid out through the slots while retaining the solids ('943 Patent, Abstract; col. 1:29-40). The rotation of the screen assists in moving the material and potentially in self-cleaning ('943 Patent, col. 11:15-24).
- Technical Importance: The use of rotating screens with specifically configured slots aims to provide a high solid capture rate and easier cleaning compared to prior art perforated plates ('943 Patent, col. 8:60-63).
Key Claims at a Glance
- The complaint seeks a declaration of non-infringement and/or invalidity of the "valid, enforceable claim[s] of the '943 Patent" without specifying which claims are at issue (Compl. ¶21, 26). Independent claim 1 is representative of the core apparatus claims.
- Independent Claim 1:
- A liquid extraction assembly for extracting liquid from a mass comprising:
- a housing having an inlet and an outlet;
- the housing further including a path between the inlet and the outlet;
- the housing being configured to have the mass forced into the inlet to move the mass from the inlet to the outlet;
- the housing including at least one rotating screen adjacent the path, each at least one rotating screen defining one wall of the path;
- the at least one rotating screen including a plurality of parallel elongated slots located at the path, the at least one screen is circular, and at least one of the elongated slots extends from a first point on the circumference of the at least one rotating screen to a second point on the circumference of the at least one rotating screen;
- wherein pressure from mass forced into the input presses the mass against the slots of the rotating screen to thereby force at least a portion of liquid in the mass to pass through the elongated slots of the at least one rotating screen; and
- wherein the at least one rotating screen comprises two substantially parallel rotating screens rotating side by side and apart from one another, with the path extending between the screens.
III. The Accused Instrumentality
Product Identification
- The complaint refers generally to "Fournier Industries' dewatering products" and its "accused dewatering equipment products" (Compl. ¶16, 21). No specific product models are named.
Functionality and Market Context
- The complaint describes the accused products as "dewatering equipment" used for liquid/solid separation to remove water from slurries, which makes the resulting material lighter and more economical to transport (Compl. ¶4). It alleges that these products compete with equipment sold by the Defendant, Prime Solution (Compl. ¶16). The complaint does not provide further technical detail on the operation of the accused products.
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
As a complaint for declaratory judgment of non-infringement, the filing does not contain detailed infringement allegations or a claim chart. Instead, it makes a general assertion that "Fournier Industries' products, including its accused dewatering equipment products do not infringe any valid, enforceable claim of the '943 Patent" (Compl. ¶21). The central dispute, as framed by the complaint, is whether Plaintiff's equipment practices the invention claimed in the '943 Patent (Compl. ¶22).
- Identified Points of Contention: The dispute will center on whether the technical features of Plaintiff's dewatering equipment meet the limitations of the '943 patent's claims. Based on the language of claim 1, key questions include:
- Structural Questions: Does the Plaintiff's equipment contain components that meet the definition of a "rotating screen"? Does it employ two such screens arranged "substantially parallel" and "side by side" to define a path for the material, as required by claim 1?
- Functional Questions: Does the Plaintiff's equipment utilize "parallel elongated slots" on its screen(s) to separate liquid from the mass? Does the dewatering process rely on pressure from the mass being "forced into the input" to press it "against the slots," as claimed?
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail for analysis of specific claim terms. However, based on the technology and the language of representative independent claim 1, the following terms may become central to the dispute.
The Term: "rotating screen"
Context and Importance: This term is the central structural element of the claimed invention. The definition will determine what type of dewatering mechanism falls within the claim scope. Practitioners may focus on this term to dispute whether the Plaintiff's mechanism for separating solids and liquids qualifies as a "screen" and whether its movement constitutes "rotation" as described in the patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the element generally as a "rotary screen assembly" that "will rotate with the motor assembly output shaft" ('943 Patent, col. 11:15-18). This could support a construction covering any screen-like element that is motor-driven to turn.
- Evidence for a Narrower Interpretation: The specification provides a detailed embodiment of the "rotary screen assembly 200," which includes specific components like a "first side drive wheel 202," a "slotted filter screen 204," and a "center hub/spacer 206" ('943 Patent, col. 8:4-10; Fig. 7). A party could argue these detailed descriptions limit the term to assemblies with this specific or a similar structure.
The Term: "plurality of parallel elongated slots"
Context and Importance: This limitation defines the specific geometry of the openings in the rotating screen. Infringement will depend on whether the openings in the accused equipment are "parallel," "elongated," and qualify as "slots."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is used generally to describe the openings. One might argue that any set of long, narrow, parallel-running openings would meet this limitation, regardless of their specific cross-sectional shape or manufacturing method.
- Evidence for a Narrower Interpretation: The patent discloses a specific embodiment where the slots "preferably have a triangular shape" ('943 Patent, col. 9:4-6; Fig. 16). A defendant could argue this specific disclosure informs, and potentially narrows, the meaning of "slot." Further, the patent contrasts the "slotted filter screens" with "a perforated plate of the prior art," suggesting "slots" are distinct from simple holes ('943 Patent, col. 8:60-63).
VI. Other Allegations
The complaint does not contain allegations of indirect or willful infringement. It seeks a declaratory judgment of non-infringement and invalidity, and requests a finding that the case is "exceptional" to warrant attorneys' fees, but does not plead the specific facts typically associated with willful infringement by an accused infringer (Compl. p. 6).
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears poised to hinge on two fundamental issues for the court's determination:
A central issue will be one of claim construction: How broadly will the court define the core elements of the invention? Specifically, can the term "rotating screen," as detailed in the patent’s specific embodiments, be construed to cover the mechanism used in the Plaintiff's dewatering equipment?
A key evidentiary question will be one of technical comparison: Assuming the court construes the key claim terms, does the Plaintiff's equipment, in its actual operation, possess the structures recited in the claims, such as two "substantially parallel rotating screens" featuring "parallel elongated slots" that define the path for the material being dewatered?
A secondary but dispositive issue will be validity: Plaintiff has also requested a declaration that the claims of the '943 patent are invalid under 35 U.S.C. §§ 102, 103, and/or 112, raising the question of whether the claimed invention was novel, non-obvious, and adequately described and enabled at the time of filing (Compl. ¶25).