Shoffiett v. Goode

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Mike D. Shoffiett SR (Louisiana), acting Pro Se
  • Defendant: Jim Goode SR, Heirs & Assigns (Texas); Fiberlene, LLC (Texas); Betty Goode Wife / Executor of Dale Goode (Deceased) (New Mexico)
  • Plaintiff’s Counsel: Pro Se
• Case Identification: 6:18-cv-01545, W.D. La., 03/15/2019
• Venue Allegations: Plaintiff alleges that the case was filed in federal court pursuant to an order from a Louisiana state court judge in a related state court proceeding.
• Core Dispute: Plaintiff alleges that Defendants fraudulently obtained U.S. Patent No. 8,062,403 by misappropriating Plaintiff’s confidential technical information and "rejected" 1995 patent claims, which were disclosed to Defendants under a prior business relationship.
• Technical Context: The technology at issue involves multi-layer, reusable air filters for commercial and residential heating and air conditioning (HVAC) systems.
• Key Procedural History: The complaint alleges a complex business history, starting with Plaintiff developing a "corrected" filter design in 1992. In 2003, Defendants allegedly purchased an exclusive license to Plaintiff's technology. The complaint asserts that Defendants later used this licensed technology to file for and obtain the '403 patent. Plaintiff alleges his 1995 patent application for the "correction" was rejected because the product had been on sale for too long, a fact he claims was known to Defendants.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,062,403 - "FILTER ELEMENTS FOR CIRCULATING AIR SYSTEMS"

• Patent Identification: U.S. Patent No. 8,062,403, "FILTER ELEMENTS FOR CIRCULATING AIR SYSTEMS", issued November 22, 2011 (the ’403 Patent).

The Invention Explained

• Problem Addressed: The patent’s background section identifies drawbacks in prior art reusable filters, such as inefficient layer arrangements that "plug up the filters catch cell" and the use of rivets to join the frame corners, which "exhausts the possibility of disassembling the system" for thorough cleaning of individual layers (’403 Patent, col. 1:35-50).
• The Patented Solution: The invention is a reusable air filter assembly with a specific six-layer, "stage loaded" configuration designed for efficient particle capture. The layers are arranged in a precise order: expanded metal lath, small fiber material, large fiber material, small crimp wire cloth, another layer of small fiber material, and a final layer of expanded metal lath (’403 Patent, col. 2:29-35). The solution also includes a frame held together by screws and L-shaped corner brackets, which allows for disassembly (’403 Patent, col. 2:41-51).
• Technical Importance: The claimed configuration seeks to improve upon prior art by providing a filter that is not only effective at capturing airborne particles of various sizes but is also more easily and completely cleaned, extending its reusable life (’403 Patent, col. 1:51-56).

Key Claims at a Glance

• The complaint does not formally assert specific claims, but its allegations center on the invention described and claimed in the ’403 Patent. The broadest independent claim, Claim 1, is central to the patented technology.
• The essential elements of Independent Claim 1 include:
  • A frame composed of two "sandwiching" units secured by a screw.
  • A specific six-layer series of filter material arranged in a precise order from upstream to downstream.
  • Screws anchoring the frame units.
  • Support brackets at the corners, through which the screws extend.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The complaint identifies "a permanent a/c filter manufactured and sold by Defendants in 2017" (Compl. p. 1). These products are allegedly sold by Defendant Fiberlene, LLC.

Functionality and Market Context

• The complaint alleges that the accused filters embody the Plaintiff's "1995 'rejected' patent claims" and that the Defendants' patent abstract makes the "exact same claims" as the Plaintiff's 1995 patent abstract (Compl. p. 1). The core allegation is not that the Defendants' product has a particular functionality that reads on a patent claim, but rather that the entire design of the product and its associated patent were misappropriated from the Plaintiff (Compl. pp. 1, 3). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not present a traditional infringement claim where a plaintiff's patent is asserted against a defendant's product. Instead, it alleges that the Defendants committed "Patent FRAUD" by patenting the Plaintiff's invention. The following table summarizes the Plaintiff's apparent theory of misappropriation, mapping the core elements of the Defendants' patent back to the Plaintiff's alleged contributions.

’403 Patent Misappropriation Allegations

Identified Points of Contention

• Legal Question (Ownership): The central dispute is not over claim scope, but over inventorship and rightful ownership. A key question is whether the invention claimed in the ’403 Patent was derived from the Plaintiff's proprietary information disclosed to the Defendants under an alleged license agreement and duty of confidentiality (Compl. pp. 2-3).
• Factual Question (Derivation): An evidentiary question for the court will be whether the specific technical features claimed in the ’403 Patent, particularly the six-layer filter structure, are in fact identical to the "correction" the Plaintiff alleges he developed and disclosed to the Defendants (Compl. p. 1).
• Validity Question (On-Sale Bar): The complaint itself raises a significant question regarding the validity of the ’403 Patent. Plaintiff alleges his own sales of the "corrected" filter began in 1992 and that his 1995 patent application was rejected because the invention was "sold longer than USPTO rules allow" (Compl. p. 2). These allegations may support a defense that the invention was in the public domain and subject to an on-sale bar long before the ’403 patent's 2007 priority date, potentially rendering the patent invalid regardless of who invented it (Compl. p. 3).

V. Key Claim Terms for Construction

While the case centers on fraud and ownership rather than traditional infringement, the construction of terms defining the core technology remains relevant to determining what was allegedly misappropriated.

The Term: "a series of material disposed in the frame, containing [a specific six-layer arrangement]" (Claim 1)

• Context and Importance: This limitation defines the technical heart of the invention. Practitioners may focus on this term because the Plaintiff's entire case rests on the allegation that this exact six-layer structure is his "correction" (Compl. p. 2). The case will turn on whether the Plaintiff can prove he conceived of and disclosed this specific sequence to the Defendants.
• Intrinsic Evidence for Interpretation: The patent specification provides a highly specific description of the layers, including their material composition and order (’403 Patent, col. 2:29-40). The claim language itself is precise and lists each layer in order, leaving little room for interpretation of the sequence. The dispute is less about what the term means and more about who originated the concept it describes.

The Term: "support brackets" and "screws" (Claim 1)

• Context and Importance: The use of a screw-based, disassemblable frame is a key feature distinguishing the invention from prior art that used permanent rivets. Plaintiff alleges he agreed to this change in 2004 (Compl. p. 3), directly implicating these claim elements in the misappropriation claim.
• Intrinsic Evidence for a Broader Interpretation: The claim language "support brackets" and "screws" is general. One could argue it covers any bracket and screw combination that performs the recited function of holding the frame.
• Evidence for a Narrower Interpretation: The specification discloses a specific embodiment: "L" shaped aluminum brackets and "8x½ inch modified truss head self drilling screw" (’403 Patent, col. 2:47-58, col. 2:65-col. 3:2). A party could argue the claims should be read in light of these specific examples, particularly given the patent's explicit criticism of the prior art's riveted frames (’403 Patent, col. 1:41-45).

VI. Other Allegations

• Indirect Infringement: The complaint does not allege indirect infringement.
• Willful Infringement: The complaint is framed around intentional misconduct. It alleges "Personal and Intentional Patent FRAUD" (Compl. p. 1) and that Defendants "knowingly used ALL Plaintiff's 1995 'rejected' patent claims to achieve patent #8,062,403" (Compl. p. 1). The basis for this alleged willfulness and knowledge is the parties' prior business relationship, including an alleged license agreement and factory training where Defendants were taught Plaintiff's "trade secrets" (Compl. p. 2).

VII. Analyst’s Conclusion: Key Questions for the Case

1. A central issue will be one of origination and ownership: can the Plaintiff provide sufficient evidence to prove that the specific multi-layer filter design claimed in the ’403 patent was his own invention, that it was disclosed to the Defendants in confidence, and that the Defendants consequently engaged in fraud by patenting it as their own?

2. A critical question for the patent's survival will be one of validity based on prior public use: do the Plaintiff's own allegations—that he began selling the "corrected" filter in 1992 and that his own 1995 patent application was rejected for that reason—establish that the invention was in the public domain, thereby invalidating the ’403 patent under the on-sale bar regardless of who is the true inventor?

3. A threshold procedural question is one of cause of action: will the court treat this pro se complaint, which blends allegations of "Patent FRAUD," "PATENT INFINGEMENT," and "CONTRACT VIOLATIONS," as a federal claim for correction of inventorship under 35 U.S.C. § 256, or will it determine that the core of the dispute lies in state-law claims for breach of contract and trade secret misappropriation?