DCT
1:21-cv-02104
Pipp Mobile Storage Systems Inc v. Innovative Growers Equipment Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pipp Mobile Storage Systems, Inc. (Delaware)
- Defendant: Innovative Growers Equipment, Inc. (Illinois)
- Plaintiff’s Counsel: Thorelli & Associates; Gardner, Linn, Burkhart & Ondersma LLP
- Case Identification: 1:21-cv-02104, N.D. Ill., 04/19/2021
- Venue Allegations: Venue is alleged to be proper based on Defendant being an Illinois corporation with a place of business and having committed alleged acts of infringement within the Northern District of Illinois.
- Core Dispute: Plaintiff alleges that Defendant’s vertical farming air flow systems infringe a patent related to circulating air and carbon dioxide in a vertical gardening system.
- Technical Context: The technology addresses environmental control within high-density indoor vertical farming, a field focused on optimizing atmospheric conditions to maximize plant growth and yield.
- Key Procedural History: The complaint alleges Defendant had pre-suit knowledge of the asserted patent and its underlying application via notice letters sent in December 2019 and March 2021. An Inter Partes Review (IPR) was subsequently filed against the patent-in-suit (IPR2022-00893). An IPR certificate issued on January 29, 2024, canceling claims 25-27, 45, 50, 58, and 59, which includes the sole independent claim asserted in this complaint.
Case Timeline
| Date | Event |
|---|---|
| 2017-08-24 | '099 Patent Priority Date |
| 2018-08-24 | '099 Patent Application Filing Date |
| 2019-12-06 | Plaintiff's predecessor sends notice of published application |
| 2019-12-23 | Defendant's counsel responds to pre-issuance notice |
| 2020-10-20 | '099 Patent Issue Date |
| 2020-11-29 | Defendant's website captured showing accused product |
| 2021-03-09 | Plaintiff sends cease and desist letter for issued patent |
| 2021-04-19 | Complaint Filing Date |
| 2024-01-29 | IPR Certificate issues cancelling asserted claim 25 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,806,099 - "System and Method for Providing Carbon Dioxide and Circulating Air for a Vertical Gardening System"
- Patent Identification: U.S. Patent No. 10,806,099, "System and Method for Providing Carbon Dioxide and Circulating Air for a Vertical Gardening System," issued October 20, 2020.
The Invention Explained
- Problem Addressed: The patent’s background section identifies challenges in vertical farming, including ineffective air circulation from traditional fans, non-uniform distribution of carbon dioxide, and the large volume occupied by conventional air filters. (’099 Patent, col. 1:20-43). It also notes that stagnant, humid air around plant leaves can hinder transpiration. (’099 Patent, col. 2:36-43).
- The Patented Solution: The invention is a flow distribution assembly designed for vertical grow racks. As described in the specification, air is drawn into a housing (often by a fan mounted on top), where it can be filtered and mixed with carbon dioxide. (’099 Patent, col. 4:1-4). This conditioned air then flows into one or more low-profile, elongated ducts that extend horizontally along a rack, distributing the air downward onto plants through openings on the ducts' lower surfaces. (’099 Patent, col. 4:4-12; Fig. 1). This configuration is intended to disrupt the typical spiral airflow from a fan to evenly pressurize the ducts and deliver air directly to the plant canopy. (’099 Patent, col. 2:24-29).
- Technical Importance: This approach seeks to provide a more targeted and efficient method of environmental control compared to general room-level systems, addressing specific microclimate issues at the plant level in space-constrained vertical farms. (’099 Patent, col. 2:10-19).
Key Claims at a Glance
- The complaint asserts independent claim 25. (Compl. ¶22).
- The essential elements of independent claim 25 are:
- A flow distribution assembly, comprising: a housing having an air inlet portion; and
- an elongated duct fluidly coupled to an outlet portion of the housing and having a plurality of openings defined on a lower surface of the elongated duct,
- wherein the elongated duct extends from the housing and where the elongated duct is configured to be positioned upon and extend along a rack,
- and where the housing is directly secured to the elongated duct,
- wherein air passing through the air inlet portion is received into the housing in a downward direction,
- and the air passing through the outlet portion is received into the elongated duct in a horizontal direction.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- Defendant’s “air flow systems” and components thereof, including what is marketed as the “Innovative Air Flow System.” (Compl. ¶10, p. 5).
Functionality and Market Context
- The complaint alleges the accused product is an air flow system for vertical gardening racks. (Compl. ¶10). Functionally, it is alleged to include a housing with an air inlet, an elongated duct fluidly coupled to the housing, and multiple openings on the duct's lower surface. (Compl. ¶14). The complaint includes an annotated photograph and rendering of the accused system, which highlights these components and indicates with arrows that air is received into the housing in a downward direction and passes into the duct in a horizontal direction. (Compl. ¶14, p. 8). An annotated photograph and rendering of the accused system identify the housing, elongated ducts, and openings, with arrows indicating the alleged air flow path. (Compl. p. 8). The complaint alleges these systems are marketed, imported, used, and sold by the Defendant. (Compl. ¶10).
IV. Analysis of Infringement Allegations
’099 Patent Infringement Allegations
| Claim Element (from Independent Claim 25) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing having an air inlet portion; and | The accused system includes a housing with an air inlet portion. | ¶14 | col. 4:61-64 |
| an elongated duct fluidly coupled to an outlet portion of the housing and having a plurality of openings defined on a lower surface of the elongated duct, | The accused system includes an elongated duct fluidly coupled to the housing's outlet, with a plurality of openings on its lower surface. | ¶14 | col. 4:4-8 |
| wherein the elongated duct extends from the housing and where the elongated duct is configured to be positioned upon and extend along a rack | The accused system's elongated duct is positioned upon and extends along a rack. | ¶14 | col. 4:51-56 |
| and where the housing is directly secured to the elongated duct, | The housing of the accused system is directly secured to the elongated duct. | ¶14 | col. 4:51-53 |
| wherein air passing through the air inlet portion is received into the housing in a downward direction | Air is received into the accused housing in a downward direction. | ¶14 | col. 4:14-17 |
| and the air passing through the outlet portion is received into the elongated duct in a horizontal direction. | Air passes from the accused housing's outlet into the elongated duct in a horizontal direction. | ¶14 | col. 4:4-6 |
Identified Points of Contention
- Scope Questions: A central question for infringement may be the interpretation of the phrase "directly secured." The analysis would question whether this requires an integral, one-piece construction or if it permits the use of separate couplers or connectors to join the housing and the duct, as depicted in certain patent figures (’099 Patent, Fig. 2B).
- Technical Questions: The claim recites a specific two-part airflow path: "downward" into the housing and "horizontal" into the duct. A key factual question is whether the accused product operates in this precise manner. The complaint’s primary evidence for this is an annotated diagram (Compl. p. 8), and the court would need to evaluate the factual accuracy of this depiction against the actual operation of the accused system.
V. Key Claim Terms for Construction
The Term: "directly secured"
- Context and Importance: This term defines the structural relationship between the housing and the duct. Its construction is important because if the accused product uses an intermediate component (e.g., an adapter, a flexible coupling) to join the two parts, the defendant could argue its product does not meet this limitation. Practitioners may focus on this term to determine if there is a literal distinction in the method of attachment.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses an exploded view (Fig. 2B) where the ducts (117) are fluidly coupled to the filter housing (101) via separate couplings (106, 108). (’099 Patent, col. 4:50-53). A party could argue that "directly secured" should be interpreted in light of these embodiments to mean a firm attachment, even if via a coupling component.
- Evidence for a Narrower Interpretation: The plain meaning of "directly" suggests an immediate, unmediated connection. Figures such as Fig. 1 and 2E depict the housing and duct as contiguous, without visible intermediate parts, which could support an interpretation that requires a more immediate physical joining than what is shown in the exploded view.
The Term: "received into the housing in a downward direction and...received into the elongated duct in a horizontal direction"
- Context and Importance: This limitation defines a specific, two-stage directional flow path for the air. Infringement depends on whether the accused product's airflow strictly conforms to this geometry. The dispute would likely center on the degree of precision required by the terms "downward" and "horizontal."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue these are general directional descriptors relative to the system's orientation on a rack and do not require perfect 90-degree vectors. The crucial feature, they might argue, is the general change in direction from intake to distribution.
- Evidence for a Narrower Interpretation: The figures consistently depict a fan mounted on top of the housing for vertical (downward) intake, with ducts extending perpendicularly (horizontally). (’099 Patent, Figs. 1, 2A, 2E). This consistent depiction of a right-angle turn could support a narrower construction requiring a flow path that is substantially vertical followed by substantially horizontal.
VI. Other Allegations
Indirect Infringement
- The complaint alleges that Defendant induces infringement by providing its air flow systems to third-party customers with knowledge of the ’099 Patent and with the intent that the customers will use the systems in an infringing manner. (Compl. ¶25). It further alleges that Defendant's "information/instructions and products provided" promote this direct infringement by users. (Compl. ¶26).
Willful Infringement
- The willfulness allegation is based on alleged pre-suit knowledge of the patent and its underlying application. The complaint cites a December 2019 notice letter regarding the published application and a March 2021 cease and desist letter regarding the issued ’099 Patent as evidence of this knowledge. (Compl. ¶16-18, ¶26).
VII. Analyst’s Conclusion: Key Questions for the Case
- Overarching Legal Viability: The primary issue in this case is its legal viability, as the sole independent claim asserted in the complaint (Claim 25) was cancelled in an Inter Partes Review proceeding after the complaint was filed. This raises the fundamental question of whether the Plaintiff’s cause of action as pleaded can proceed.
- Definitional Scope: If the claim were still valid, a core issue would be one of definitional scope: can the term "directly secured," as used in the claim, be construed to cover a connection made with intermediate couplers, or does it require an immediate, unmediated attachment between the housing and the duct?
- Factual Conformance: A key evidentiary question would be one of factual conformance: does the accused system’s actual airflow path adhere to the specific two-part directional sequence—"downward" into the housing and "horizontal" into the duct—as required by the claim language, and what evidence beyond annotated diagrams would be required to prove this?