DCT
2:18-cv-14009
Snow Master Evaporative Snow Systems Inc v. Smilecloudsusa Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Snow Master Evaporative Snow Systems, Inc. (Florida)
- Defendant: Smilecloudsusa, Inc. (Florida)
- Plaintiff’s Counsel: The Law Offices of Neil D. Kodsi
- Case Identification: 2:18-cv-14009, S.D. Fla., 01/09/2018
- Venue Allegations: Venue is alleged to be proper in the Southern District of Florida because the Defendant is a Florida corporation with its principal place of business within the district, and is therefore subject to personal jurisdiction there.
- Core Dispute: Plaintiff alleges that Defendant’s flying foam machines infringe two patents related to an apparatus and method for generating shaped, lighter-than-air foam objects.
- Technical Context: The technology at issue enables the creation of custom-shaped, buoyant foam clouds for entertainment, special effects, and advertising purposes.
- Key Procedural History: The complaint alleges that Plaintiff sent a cease and desist letter to Defendant on or about October 31, 2017, providing pre-suit notice of the patents. U.S. Patent No. 7,919,026 is a continuation-in-part of the application that resulted in U.S. Patent No. 7,883,649.
Case Timeline
| Date | Event |
|---|---|
| 2008-02-05 | Priority Date for '649 and '026 Patents |
| 2011-02-08 | U.S. Patent No. 7,883,649 Issued |
| 2011-04-05 | U.S. Patent No. 7,919,026 Issued |
| 2017-10-31 | Cease and desist letter sent to Defendant |
| 2018-01-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,883,649 - Flying foam apparatus and method of making flying foam, issued Feb. 8, 2011
The Invention Explained
- Problem Addressed: The patent addresses the physical challenge of creating a foam shape that can achieve flight, which requires the foam's total mass to be less than the mass of the air it displaces (’649 Patent, col. 1:7-10).
- The Patented Solution: The invention describes an apparatus that generates foam by introducing a lighter-than-air gas (e.g., helium) into a container with a foam-forming solution via an aeration nozzle (’649 Patent, col. 1:47-54). The resulting foam is forced upward and extruded through a stencil-shaped opening, after which a separator, such as a reciprocating cutting arm, detaches the extruded foam to create an individualized, floating shape (’649 Patent, col. 3:32-45; Fig. 1).
- Technical Importance: The technology provides a method for creating recognizable, buoyant shapes, such as corporate logos, for advertising or entertainment purposes (’649 Patent, col. 2:57-63).
Key Claims at a Glance
- The complaint asserts infringement of one or more claims, with allegations tracking Independent Claim 1 (Compl. ¶19).
- Independent Claim 1 consists of:
- a container;
- a gas source, wherein said gas from said gas source is lighter than atmospheric air;
- an aeration nozzle for aerating a gas from the gas source;
- an outlet; and
- a separator for separating extruded foam into individualized foam shapes.
U.S. Patent No. 7,919,026 - Flying foam apparatus and method of making flying foam, issued Apr. 5, 2011
The Invention Explained
- Problem Addressed: This patent builds on the '649 Patent's technology to address the problem of environmental factors, specifically wind, which can "prematurely dislodge" or deform the delicate foam shape as it is being formed and extruded (’026 Patent, col. 5:24-30).
- The Patented Solution: The solution adds a "housing with peripheral walls" that extend upward from the machine's surface, surrounding the outlet (’026 Patent, col. 6:3-4). These walls act as a shield to "divert wind away" from the foam shape during its extrusion, thereby preserving its form and thickness until it is separated (’026 Patent, col. 5:26-28).
- Technical Importance: This improvement is designed to increase the reliability and quality of the foam shapes produced, particularly when the apparatus is used outdoors or in drafty environments.
Key Claims at a Glance
- The complaint asserts infringement of one or more claims, with allegations tracking Independent Claim 1 (Compl. ¶33).
- Independent Claim 1 consists of:
- a container;
- a gas source, wherein said gas from said gas source is lighter than atmospheric air;
- an aeration nozzle for aerating a gas from the gas source;
- an outlet;
- a separator for separating extruded foam into individualized foam shapes; and
- a housing with peripheral walls that extend above said outlet.
III. The Accused Instrumentality
- Product Identification: The complaint identifies the accused instrumentalities as "DEFENDANT'S flying foam machines" (Compl. ¶19, ¶33).
- Functionality and Market Context: The complaint alleges that Defendant offers these machines for sale, distribution, or use through its websites and other marketing channels (Compl. ¶13). It further alleges that the machines include the components recited in the asserted claims of the patents-in-suit (Compl. ¶19, ¶33). The complaint posits that Defendant is attempting to capitalize on the popularity of Plaintiff's own "commercially successful machines" (Compl. ¶12). The complaint does not provide specific technical details about the operation of the accused machines beyond reciting the claim elements.
IV. Analysis of Infringement Allegations
The complaint alleges that Defendant’s machines contain each element of the asserted independent claims. No probative visual evidence provided in complaint.
'649 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a. a container | "DEFENDANTS' machines include the following: A. a container" | ¶19.A | col. 5:3 |
| b. a gas source, wherein said gas from said gas source is lighter than atmospheric air | "B. a gas source, wherein said gas from said gas source is lighter than atmospheric air" | ¶19.B | col. 5:4-6 |
| c. an aeration nozzle for aerating a gas from the gas source | "C. an aeration nozzle for aerating a gas from the gas source" | ¶19.C | col. 5:7-8 |
| d. an outlet | "D. an outlet" | ¶19.D | col. 5:9 |
| e. a separator for separating extruded foam into individualized foam shapes | "E. a separator for separating extruded foam into individualized foam shapes" | ¶19.E | col. 5:10-11 |
'026 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a. a container | "DEFENDANTS' machines include the following: A. a container" | ¶33.A | col. 5:58 |
| b. a gas source, wherein said gas from said gas source is lighter than atmospheric air | "B. a gas source, wherein said gas from said gas source is lighter than atmospheric air" | ¶33.B | col. 5:59-61 |
| c. an aeration nozzle for aerating a gas from the gas source | "C. an aeration nozzle for aerating a gas from the gas source" | ¶33.C | col. 5:62-63 |
| d. an outlet | "D. an outlet" | ¶33.D | col. 5:64 |
| e. a separator for separating extruded foam into individualized foam shapes | "E. a separator for separating extruded foam into individualized foam shapes" | ¶33.E | col. 5:65-67 |
| f. a housing with peripheral walls that extend above said outlet | "F. a housing with peripheral walls that extend above said outlet" | ¶33.F | col. 6:3-4 |
- Identified Points of Contention:
- Scope Questions: Both asserted claims use the transitional phrase "consisting of," which is legally restrictive and closes the claim to any elements not explicitly recited. A primary question will be whether the accused machines contain any components beyond those listed in the claims. The presence of any additional, unrecited element in the accused device could support a non-infringement defense.
- Technical Questions: The complaint provides conclusory allegations without specific factual support. This raises the question of what evidence will be produced to show that a component of the accused machine functions as the claimed "separator." For the ’026 Patent, a further question is what structure in the accused machine constitutes the "housing with peripheral walls" and whether it performs the wind-blocking function described in the specification.
V. Key Claim Terms for Construction
The Term: "consisting of" (preamble of Claim 1 of both the ’649 and ’026 Patents)
- Context and Importance: This term is a legal term of art that is highly restrictive. Practitioners may focus on this term because it signifies that the claimed apparatus must have the listed elements and no others. If Defendant's machine includes any additional component, it would not literally infringe. The case may therefore turn on a strict component-by-component comparison.
- Intrinsic Evidence for Interpretation: The term itself is not defined in the specification, as its meaning is established by case law. Its use in the claim itself is the most powerful evidence of an intent to create a closed claim, excluding any other elements. There is no intrinsic evidence that would support a broader (e.g., "comprising") interpretation.
The Term: "separator for separating extruded foam into individualized foam shapes" (Claim 1(e) of both patents)
- Context and Importance: The definition of this functional element is critical, as the complaint does not specify how the accused device allegedly separates the foam. The dispute will likely center on what structures can satisfy this limitation.
- Evidence for a Broader Interpretation: The claim language itself is purely functional and does not recite a specific structure, which may support an interpretation that any component that achieves separation infringes, regardless of its mechanism.
- Evidence for a Narrower Interpretation: The specification primarily describes the separator as a "cutting blade" or a "cutting arm 40" that "reciprocally moves" across the outlet to sever the foam (’649 Patent, col. 2:10-11; col. 3:33-45). This embodiment may be used to argue that the term should be construed more narrowly to require a mechanical, moving cutter.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement, stating Defendant knowingly and intentionally encouraged others to infringe (Compl. ¶7). The factual support offered is the allegation that Defendant encourages the marketing, sale, and distribution of infringing machines (Compl. ¶27, ¶41).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged continued infringement after receiving a "notification and cease and desist letter" on or about October 31, 2017, which allegedly established pre-suit knowledge of the patents and infringement (Compl. ¶14, ¶29, ¶43).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: can Plaintiff prove that the accused machines contain only the elements recited in the asserted "consisting of" claims? The presence of any additional component in the accused devices could be fatal to the infringement case.
- A key evidentiary question will be one of functional and structural correspondence: what is the specific mechanism or structure in the accused machines that performs the function of the claimed "separator," and for the ’026 patent, the "housing with peripheral walls"? The complaint's lack of factual detail on these points suggests that discovery into the precise design and operation of the accused machines will be central to resolving the dispute.