DCT
1:19-cv-01388
Dura Systems Barriers Inc v. Van Packer Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: DuraSystems Barriers Inc. (Canada)
- Defendant: Van-Packer Co. (Illinois) and Jeremias, Inc. (Georgia)
- Plaintiff’s Counsel: Workman Nydegger; Loevy & Loevy
- Case Identification: 1:19-cv-01388, C.D. Ill., 04/16/2020
- Venue Allegations: Venue is based on Defendant Van-Packer maintaining a regular and established place of business within the district, and Defendant Jeremias having consented to venue in the district.
- Core Dispute: Plaintiff alleges that Defendants’ fire-rated modular duct assemblies infringe a patent related to factory-fabricated, mechanically-joined duct systems for exhausting hazardous gases.
- Technical Context: The technology involves passive fire protection systems, specifically modular ducts used in commercial and industrial settings like kitchens to safely vent flammable materials, a critical component for building safety and code compliance.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2012-01-06 | ’569 Patent Priority Date |
| 2018-06-14 | Accused Van-Packer Model GRZ Product Introduced |
| 2018-07-17 | ’569 Patent Issue Date |
| 2020-04-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,024,569 - "Fire-Rated Modular Duct Assembly And Improvements Therein"
The Invention Explained
- Problem Addressed: The patent describes shortcomings with conventional fire-rated duct systems, which are often fabricated in sections and then welded together on-site. This field welding can be of poor quality, leading to leaks and expensive rework. Furthermore, these systems often have round cross-sections which are inefficient for space-constrained environments, or require the construction of an additional fire-rated gypsum enclosure, adding cost and complexity. (’569 Patent, col. 1:59-2:18).
- The Patented Solution: The invention is a modular, pre-fabricated fire-rated duct system with a generally rectangular cross-section. The system is composed of individual modules, each having an inner duct liner and an outer casing with insulation material filling the void between them. The modules are designed to be mechanically joined at the installation site using flange connectors, which eliminates the need for on-site welding and allows for higher quality control. (’569 Patent, Abstract; col. 2:21-48; Fig. 3).
- Technical Importance: This design approach aims to simplify field installation, improve the reliability of the duct system by moving fabrication into a controlled factory setting, and provide a more space-efficient rectangular profile suitable for modern building construction. (’569 Patent, col. 7:15-24).
Key Claims at a Glance
- The complaint asserts at least independent claim 1. (Compl. ¶38).
- The essential elements of independent claim 1 include:
- A modular fire-rated exhaust duct assembly comprising two or more exhaust duct modules.
- Each module having an inner duct liner, an outer casing, and a void between them for insulation material.
- The modules include "one or more thermal spacers" configured to maintain the spacing and "thermally isolating" the inner liner from the outer casing.
- First and second exterior flange connectors joined to the inner duct liner at opposite ends of each module.
- The flange connectors are configured to form a "field assembly junction" to couple the modules together.
- A "joint encasement section" configured to be field-connectable to encase the junction between modules.
- The complaint alleges infringement of "one or more claims," preserving the right to assert additional claims. (Compl. ¶36).
III. The Accused Instrumentality
Product Identification
- The Van-Packer Model GRZ and Jeremias Model DWGD-RZ, referred to collectively as the "Accused Products." (Compl. ¶23).
Functionality and Market Context
- The Accused Products are described as "fire-rated, zero clearance factory built grease duct" assemblies. (Compl. ¶19). A technical data sheet provided in the complaint specifies that the products feature an "inner liner made of 20 gauge...stainless steel," an outer jacket, and "Three inches of ceramic fiber insulation" between them. (Compl. p. 12). The modules are joined via a "flange-to-flange bolted connection." (Compl. p. 12). A product introduction video shows the modular sections being assembled on-site. (Compl. p. 10). The complaint alleges these products are sold throughout the United States for applications such as commercial kitchen ventilation, placing them in direct competition with the Plaintiff's products. (Compl. ¶20, ¶24, ¶27).
IV. Analysis of Infringement Allegations
’569 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| two or more exhaust duct modules | The Accused Products are modular systems comprising at least two exhaust duct modules that are joined together. | ¶39 | col. 2:25-26 |
| each of said exhaust duct modules having an inner duct liner and an outer casing, and a void being formed between...said void being configured for receiving an insulation material | The Accused Products are constructed with an inner liner, an outer casing (or shell), and a void between them containing ceramic fiber insulation. | ¶40 | col. 2:26-31 |
| and including one or more thermal spacers configured to...thermally isolating said inner duct liner from said outer casing | The Accused Products allegedly include thermal spacers that maintain the inner liner and outer casing in a spaced relationship. The complaint provides an annotated photograph identifying this feature. (Compl. p. 20). | ¶41 | col. 2:32-36 |
| a first exterior flange connector...a second exterior flange connector...being joined directly to one end of said inner duct liner | The Accused Products allegedly utilize first and second exterior flange connectors at the ends of each module for field connection. | ¶42 | col. 2:36-43 |
| said first and said second exterior flange connectors being configured to form a field assembly junction for coupling respective ends of said exhaust duct modules | The flange connectors on the Accused Products are bolted together in the field to join the modular sections and form a continuous duct run. | ¶43 | col. 2:43-46 |
| a joint encasement section configured to be field connectable to each of said exhaust duct modules and encase said junction | The Accused Products are alleged to include a joint encasement section, identified in an installation diagram as a "DRAW BAND," that is installed over the junction. (Compl. p. 23). | ¶44 | col. 2:45-48 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges that a "DRAW BAND" component in the accused system meets the "joint encasement section" limitation. (Compl. ¶44, p. 23). A potential dispute may arise over whether this component, which appears to be a simple band, can be construed as a "section" that "encases" the junction in the manner contemplated by the patent, which describes a more substantial structure. (’569 Patent, col. 7:15-33).
- Technical Questions: The complaint provides a photo identifying a "thermal spacer" in the accused product. (Compl. ¶41, p. 20). Claim 1 requires this spacer to be configured for both maintaining spacing and "thermally isolating" the liner from the casing. A key technical question will be whether the accused spacer actually performs this thermal isolation function, or if its material and construction create a significant thermal bridge between the inner and outer layers, potentially taking it outside the scope of the claim.
V. Key Claim Terms for Construction
The Term: "joint encasement section"
Context and Importance: This term's construction appears central to the infringement analysis for the final element of claim 1. The complaint identifies a "DRAW BAND" as the infringing feature, raising the question of what structural characteristics are required for a component to be a "joint encasement section." (Compl. ¶44, p. 23).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language requires a section that is "configured to...encase said junction," which could be argued to encompass any component that covers or surrounds the connection point. (’569 Patent, col. 8:64-66).
- Evidence for a Narrower Interpretation: The specification's detailed description discloses this element as a multi-part component (700) with an outer metallic profile (730) and an insulating material layer (740), formed into a "hat configuration" with flanges (760) for attachment. (’569 Patent, col. 7:15-46; Figs. 7-9). This detailed embodiment may be used to argue for a narrower construction that requires more than a simple metallic band.
The Term: "thermal spacers thermally isolating said inner duct liner from said outer casing"
Context and Importance: The infringement allegation for this element hinges on whether the accused spacers perform the dual functions of physical spacing and thermal isolation. Practitioners may focus on this term because the material composition and design of the accused spacer will be critical evidence.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the spacers' role as being "configured to maintain said inner duct liner and said outer casing in a spaced relationship so that said insulation material occupies said void." (’569 Patent, col. 2:32-36). This language emphasizes the physical spacing function.
- Evidence for a Narrower Interpretation: The express claim language requires that the spacers also be "thermally isolating." (’569 Patent, col. 8:56-58). This suggests that a spacer made of a highly conductive material, which would create a thermal bridge, might not meet the limitation, even if it provides the required physical spacing. The specification also notes that thermal spacers can be "recessed into the insulation material," which could be argued as a feature contributing to the isolating function. (’569 Patent, col. 6:55-57).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by, among other things, inducing customers and distributors to use the Accused Products. (Compl. ¶46). It also alleges contributory infringement, stating that Defendants supply material components of the patented assembly along with instructions, and that the products lack substantial non-infringing uses. (Compl. ¶47).
- Willful Infringement: Willfulness is alleged based on Defendants' purported "actual knowledge" of the ’569 Patent. (Compl. ¶48). The complaint asserts that Plaintiff provided both Defendants with actual notice of the patent and the alleged infringement prior to filing the lawsuit. (Compl. ¶28, ¶29, ¶35).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "joint encasement section," which is described in the patent's preferred embodiment as a substantial, insulated structure, be construed to cover the accused "DRAW BAND," which appears from complaint exhibits to be a simpler clamping component?
- A second central question will be one of functional performance: does the accused product's "thermal spacer" perform the specific function of "thermally isolating" the inner and outer duct walls as required by the claim language, or does its design and material composition create a thermal bridge that negates this claimed function, even while providing physical separation?