DCT
1:25-cv-00374
Tramec Sloan LLC v. Surti
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tramec Sloan, L.L.C. (Delaware)
- Defendant: Tarun N. Surti (Tennessee)
- Plaintiff’s Counsel: McGarry Bair PC
- Case Identification: 1:25-cv-00374, W.D. Mich., 04/04/2025
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Michigan because it resides there and because the Defendant has substantial contacts with the district, including having engaged in a prior, decade-long litigation against Plaintiff's predecessor in the same court.
- Core Dispute: Plaintiff seeks a declaratory judgment that its AEROFLAP mud flap product does not infringe the Defendant's patent, and that the patent is invalid and unenforceable.
- Technical Context: The technology relates to aerodynamic mud flaps for heavy-duty trucks, which are designed to reduce water spray and improve fuel efficiency compared to traditional solid rubber flaps.
- Key Procedural History: This declaratory judgment action follows a prior litigation (AeroFlap I) between the patentee (Mr. Surti) and the Plaintiff's predecessor (Fleet Engineers, Inc.). In that case, a jury found that certain "Group A" products infringed the patent-in-suit, a verdict affirmed by the Federal Circuit. The current dispute arises from the patentee's subsequent infringement action filed in Tennessee against a non-existent entity, prompting the Plaintiff (Tramec Sloan) to file this action in Michigan to resolve the controversy regarding its ongoing manufacturing and sales activities.
Case Timeline
| Date | Event |
|---|---|
| 2009-09-02 | Priority Date for U.S. Patent No. RE44,755 |
| 2010-04-20 | Business relationship initiated between patentee and predecessor |
| 2012-04-03 | Original U.S. Patent No. 8,146,949 issues |
| 2012 | AeroFlap I Litigation filed by Fleet Engineers (predecessor) |
| 2013-03-18 | Reissue application for '949 Patent filed |
| 2014-02-11 | U.S. Reissue Patent No. RE44,755 issues |
| 2018-03-30 | Money judgment entered against Mudguard Technologies in AeroFlap I |
| 2021-10-04 | Jury trial begins in AeroFlap I Litigation |
| 2023-08-15 | Federal Circuit affirms jury verdict in AeroFlap I Litigation |
| 2024-10-07 | U.S. Supreme Court denies certiorari |
| 2025-02-03 | Patentee files Tennessee Action |
| 2025-04-04 | Complaint for Declaratory Judgment filed in W.D. Mich. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissue Patent No. RE44,755 - "MUD FLAP"
The Invention Explained
- Problem Addressed: The patent describes how conventional solid rubber mud flaps on large trucks are not only heavy but can also swing upwards from airflow, reducing their effectiveness in blocking spray. While lighter flaps exist, they can still deflect water and debris sideways into the paths of other vehicles (’755 Patent, col. 1:15-33).
- The Patented Solution: The invention is a mud flap with a series of vertical vanes on its front surface that create channels. These channels are designed to capture water and debris thrown up by the truck's tire and direct it downwards toward the road. The channels also contain slotted openings that allow air to pass through the flap, reducing aerodynamic drag and the tendency for the flap to lift, while being narrow enough to block most water and debris from passing through with the air (’755 Patent, Abstract; col. 2:44-56). Figure 5 illustrates this separation, showing water flowing down while air passes through the openings (’755 Patent, Fig. 5).
- Technical Importance: This design aims to improve vehicle safety by reducing vision-obscuring spray and to increase fuel efficiency by lowering aerodynamic drag compared to conventional mud flaps (’755 Patent, col. 4:20-25).
Key Claims at a Glance
- The complaint notes a prior jury verdict found infringement of claims 1, 2, 5, 8, 9, and/or 13 (Compl. ¶31). The lead independent claim appears to be Claim 1.
- Independent Claim 1:
- A mudflap for preventing spray from a wheel of a vehicle... comprising a vertically extending flap which is mounted to the rear of the wheel...
- a plurality of laterally spaced, vertically extending vanes defining a plurality of vertically extending channels on the front side of the flap for directing water and debris... in a downward direction... and not to the rear or sides of the flap,
- and vertically extending slotted openings in the channels of a size permitting air to pass through the openings to the rear of the flap and preventing water and debris from doing so.
- The complaint seeks a judgment that it does not infringe any valid claim of the ’755 Patent (Compl. ¶51).
III. The Accused Instrumentality
Product Identification
The AEROFLAP brand mud flap product, manufactured and sold by Tramec Sloan (Compl. ¶¶ 22, 29, Request for Relief ¶ A).
Functionality and Market Context
The complaint describes the AEROFLAP as a mud flap product developed by Plaintiff's predecessor, Fleet Engineers, Inc., after a business relationship with the patentee's company "fell apart" (Compl. ¶22). Following an asset sale, Tramec Sloan took over the manufacturing and sale of the AEROFLAP product (Compl. ¶29). The complaint notes that the AEROFLAP product is made in and sold from a facility in Muskegon, Michigan (Compl. ¶47). The complaint does not provide a technical description of the AEROFLAP's operation, but the dispute's context implies it possesses features related to aerodynamic performance and spray suppression. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint is for a declaratory judgment of non-infringement and does not contain affirmative infringement allegations or a claim chart. Instead, it establishes an "ongoing and actual controversy" (Compl. ¶50) by referencing prior litigation where certain "Group A" versions of the AEROFLAP product were found to infringe claims of the ’755 Patent (Compl. ¶31). The current complaint seeks to resolve the legal status of Tramec Sloan's ongoing activities (Compl. ¶47) in light of the patentee's recent filing of a new lawsuit in another district (Compl. ¶39). The central question of infringement, as framed by the Plaintiff, is whether its current AEROFLAP products infringe any valid claim of the ’755 Patent (Compl. ¶51).
V. Key Claim Terms for Construction
- The Term: "preventing water and debris from doing so"
- Context and Importance: This limitation in Claim 1 describes the function of the "slotted openings." The degree of prevention required by this term is critical. A broad interpretation might only require that the openings block some water and debris, while a narrower reading could require blocking a substantial majority. Practitioners may focus on this term because the dispute will likely involve evidence of how much water, if any, passes through the accused AEROFLAP product's openings.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The reissue claim language was changed from the original patent's "preventing a majority of the water and debris from doing so" (Claim 18) to simply "preventing water and debris from doing so" (Claim 1). An argument could be made that removing the word "majority" implies a less stringent standard of prevention is required.
- Evidence for a Narrower Interpretation: The specification states that "because of the narrow width of the openings, relatively little water and debris can escape through them" (’755 Patent, col. 3:13-15). This suggests the design's intent is to be highly effective at blocking water, potentially supporting a construction that requires near-total prevention. Another reissue claim, Claim 25, uses the phrase "substantially preventing," which could be argued to set a different, possibly higher, standard than the unqualified "preventing" in Claim 1.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain allegations regarding indirect infringement.
- Willful Infringement: The complaint does not allege willfulness. However, it notes that the patentee's complaint in the separate Tennessee Action alleges facts from the prior AeroFlap I Litigation to support a claim for willful infringement against the Plaintiff (Compl. ¶40). This allegation by the patentee forms part of the basis for the Plaintiff's reasonable apprehension of suit.
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action, rooted in over a decade of prior litigation, presents several core questions for the court:
- A primary jurisdictional and procedural question will be one of proper forum: given the extensive prior litigation history in the Western District of Michigan and the patentee's recent filing of a new suit in Tennessee, which court is the appropriate venue to resolve this ongoing dispute between the parties?
- A key substantive issue will be one of res judicata and infringement: to what extent does the prior jury verdict of infringement by "Group A" products preclude Tramec Sloan from arguing non-infringement for its currently manufactured and sold AEROFLAP products? The case may turn on whether the current products are materially unchanged from those previously found to infringe.
- A central validity question will be whether Tramec Sloan can present new evidence or arguments sufficient to meet the high bar for invalidating the ’755 Patent’s claims, which have already survived a prior federal court litigation and appeal. The complaint's boilerplate invalidity contentions under 35 U.S.C. §§ 102 and 103 will need to be substantiated with specific prior art or arguments not previously adjudicated (Compl. ¶53).