1:12-cv-01703
Duct Doctor USA Inc v. Pearsall
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Duct Doctor USA, Inc. (DDUSA) and IAQ, Inc. (IAQ) (Georgia)
- Defendant: Donald S. Pearsall (Florida); Steven Bobby (Georgia); Maggie & Molly, IAQ, LLC (Georgia); and SM Bobby Enterprises, Inc. (Georgia)
- Plaintiff’s Counsel: Wagner, Johnston & Rosenthal, P.C.
- Case Identification: 1:12-cv-01703, N.D. Ga., 05/16/2012
- Venue Allegations: Venue is alleged based on Defendants' business transactions and commission of tortious acts within Georgia. For Defendant Pearsall, venue is also alleged based on a contractual agreement to litigate disputes in the district.
- Core Dispute: Plaintiffs allege that Defendants, after the termination of a franchise agreement, are infringing a patent on a duct cleaning apparatus by continuing to use proprietary vehicles that embody the patented technology.
- Technical Context: The technology concerns the design of truck-mounted vacuum systems used for cleaning heating, ventilation, and air conditioning (HVAC) ducts in buildings.
- Key Procedural History: The patent infringement claim is asserted in the context of a broader commercial dispute. Plaintiffs allege that Defendant Pearsall, a former franchisee, continued to use patented equipment and compete with Plaintiffs after the franchise agreement was terminated. The complaint alleges Defendants had pre-suit knowledge of the patent through franchise agreement disclosures, invoices, and signage on the accused vehicles themselves.
Case Timeline
| Date | Event |
|---|---|
| 2000-02-03 | ’772 Patent Priority Date (Filing Date) |
| 2002-08-13 | ’772 Patent Issue Date |
| 2005-11-10 | Franchise Agreement Executed |
| 2011-10-19 | Plaintiffs Send Notice of Default |
| 2012-01-17 | Franchise Agreement Terminated |
| 2012-05-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,430,772 - "DUCT CLEANING APPARATUS"
Issued August 13, 2002 (’772 Patent). (Compl. ¶16).
The Invention Explained
- Problem Addressed: The patent’s background section describes issues with prior art duct cleaning trucks, noting that they often required coiling or bending long suction hoses for storage, which could lead to kinks and reduced efficiency over time (’772 Patent, col. 2:53-61). This storage method was also described as inefficient, limiting the total length of hose and the number of tools that could be carried on the vehicle (’772 Patent, col. 2:61-68).
- The Patented Solution: The invention proposes a truck-mounted apparatus with an improved internal layout designed to solve these problems. Its central feature is an array of horizontal racks specifically configured to store "substantially straight lengths of suction hose," thereby avoiding the kinking associated with coiling (’772 Patent, col. 3:24-28). This design claims to optimize the use of space within the truck's housing, allowing for more equipment storage while maintaining an efficient airflow system comprising an air inlet, filters, and a blower (’772 Patent, Abstract; Fig. 1).
- Technical Importance: The described approach sought to enhance the durability, storage capacity, and operational readiness of mobile duct cleaning equipment by addressing common limitations in prior art vehicle layouts (’772 Patent, col. 3:41-45).
Key Claims at a Glance
- The complaint alleges infringement of the ’772 Patent generally without identifying specific claims (Compl. ¶81). Independent claim 1 is the broadest apparatus claim.
- The essential elements of independent claim 1 include:
- a housing configured to mount on a vehicle and having plural compartments;
- a blower mounted in the housing operative to produce suction at an air inlet at one end of the housing and deliver air to an air outlet;
- a plurality of racks within a compartment of the housing and configured to receive substantially straight lengths of suction hose;
- the racks being substantially aligned with an access opening at the one end of the housing, allowing removal of the hoses for coupling to the air inlet; and
- an air filter means within the housing to remove particulate matter from the air. (’772 Patent, col. 9:18 - col. 10:2).
- The complaint does not foreclose the possibility of asserting other independent or dependent claims.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "Proprietary Air Duct Cleaning Trucks," which Plaintiffs provided to Defendant Pearsall during a franchise agreement. One specific vehicle, the "Powell Truck," is also identified. (Compl. ¶¶ 29, 33, 55, 81).
Functionality and Market Context
The complaint alleges these are mobile duct cleaning units that "contain an apparatus identified in the Patent" (Compl. ¶29). Defendants are accused of using these trucks to operate a competing business, "Affordable Duct Cleaning," after Plaintiffs terminated the franchise agreement (Compl. ¶¶ 43, 55). The core of the dispute is the unauthorized use of these specific vehicles to compete directly against the Plaintiffs' franchise system (Compl. ¶¶ 55-56).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges infringement in general terms, stating that Defendants use vehicles "which contain the apparatus covered by the Patent," without providing a detailed element-by-element breakdown of infringement. (Compl. ¶81). The following chart summarizes the infringement theory for claim 1 based on the facts alleged.
’772 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing configured to mount on a vehicle and having plural compartments; | The accused "Proprietary Air Duct Cleaning Trucks" are vehicle-mounted apparatuses. | ¶¶ 29, 81 | col. 9:20-21 |
| a blower mounted in the housing and operative to produce suction at an air inlet at one end of the housing and deliver air to an air outlet; | The complaint alleges the trucks contain the patented "apparatus," which, as described in the patent, requires a blower to create suction for duct cleaning. | ¶¶ 29, 81 | col. 9:22-24 |
| a plurality of racks within a compartment of the housing and configured to receive substantially straight lengths of suction hose having predetermined length and diameter; | The complaint alleges the trucks contain the patented "apparatus," a key feature of which is a rack system for storing straight, uncoiled suction hoses. | ¶¶ 29, 81 | col. 9:25-29 |
| the racks being substantially aligned with an access opening at the one end of the housing, so as to permit removing the hoses... in proximity for coupling the hoses to the air inlet at the one end; | The complaint alleges the trucks contain the patented "apparatus," which is described as having its hose storage racks aligned with a rear access opening near the air inlet for ease of use. | ¶¶ 29, 81 | col. 9:30-35 |
| air filter means contained within the housing and operative to remove particulate matter from the air exiting the air outlet of the blower... | The complaint alleges the trucks contain the patented "apparatus," which requires an air filtration system as part of its operation. | ¶¶ 29, 81 | col. 9:36-40 |
Identified Points of Contention
- Evidentiary Question: The complaint’s infringement allegations are conclusory and lack specific factual support, such as photographs or technical descriptions of the accused trucks' internal layout. A central issue for the court will be whether discovery reveals that the accused trucks actually contain the specific rack system for "substantially straight" hoses and the other elements as claimed in the patent.
- Technical Question: The analysis will turn on the actual configuration of the accused trucks. The key question is whether the method of hose storage in the accused trucks meets the "plurality of racks... configured to receive substantially straight lengths of suction hose" limitation, or if it utilizes a different storage mechanism that falls outside the claim scope.
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail to identify claim terms already in dispute. However, based on the patent’s prosecution history and stated novelty, the following term may become a focus of the litigation.
The Term
"substantially straight lengths of suction hose" (’772 Patent, col. 9:27).
Context and Importance
This term is critical because the patent distinguishes itself from prior art based on avoiding the need to coil or bend suction hoses for storage (’772 Patent, col. 2:53-61). The definition of what constitutes "substantially straight" will be determinative of infringement, as any significant curvature in the stored hoses of the accused product could be argued to place it outside the claim’s scope.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The use of the word "substantially" suggests that the term does not require perfect, rigid straightness. A plaintiff might argue that any storage configuration that avoids the tight, repeated coiling and associated kinking problems of the prior art falls within the scope of "substantially straight."
- Evidence for a Narrower Interpretation: The patent’s figures, such as Figure 1, depict the suction hoses (12) as perfectly linear tubes stored in defined racks (11). A defendant could argue that the term should be construed more narrowly in light of these preferred embodiments, limiting the scope to systems where hoses are stored without material bending or curvature.
VI. Other Allegations
Indirect Infringement
The complaint alleges Defendants are "actively using (and/or contributing to the other Defendants' use of) the Patent" (Compl. ¶81). While this phrasing suggests contributory infringement or inducement, the factual allegations primarily describe direct infringement through use by the defendant entities. The allegations of coordinated activity between the defendants could support a theory of joint infringement. (Compl. ¶¶ 36-37, 43-46).
Willful Infringement
The complaint alleges that Defendants "knowingly infringed on the Patent" (Compl. ¶85). This allegation is supported by claims that Defendant Pearsall was a former franchisee who was provided the patented trucks, that invoices for the trucks referenced the patent, and that the trucks themselves are "painted with a sign referencing that they are protected by a patent" (Compl. ¶30). This alleges direct, pre-suit knowledge. Continued use after the franchise was terminated is alleged as further willful conduct (Compl. ¶¶ 55-56).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the answers to two central questions:
A Factual Question of Configuration: Is the internal design of the Defendants' accused trucks, particularly the "Powell Truck," actually covered by the asserted patent claims? The case hinges on whether discovery provides evidence that the trucks incorporate the specific "plurality of racks for...substantially straight lengths of suction hose" that is the core of the patented invention.
A Question of Contractual vs. Patent Rights: Given that the dispute arises from a terminated franchise agreement, a core issue will be the interplay between the parties' contractual obligations and the patent rights at issue. The court will need to determine whether the patent infringement claim stands on its own or is an ancillary issue to what is fundamentally a breach of contract and business competition dispute.