DCT
0:23-cv-00199
S J Electro Systems LLC v. Alderon Industries LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: S. J. Electro Systems, LLC (Delaware)
- Defendant: Alderon Industries, LLC (Minnesota)
- Plaintiff’s Counsel: Taft Stettinius & Hollister LLP
- Case Identification: 0:23-cv-00199, D. Minn., 01/26/2023
- Venue Allegations: Venue is alleged to be proper in the District of Minnesota based on Defendant Alderon's principal place of business being located within the district.
- Core Dispute: Plaintiff alleges that Defendant’s alarm system products infringe a patent related to a water-resistant housing that uses a specialized sound vent to allow audible alarms while preventing water ingress.
- Technical Context: The technology concerns protective enclosures for electronic alarm systems, such as those used for sump pumps or in other wet environments, where balancing audibility with water resistance is a key design challenge.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of infringement, including claim charts, on September 30, 2021. It further alleges that after this notice, Defendant altered the design of its accused product but continued to sell older inventory and advertise the new product with the allegedly infringing feature. This history may be relevant to the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2013-06-10 | ’672 Patent Priority Date (Filing Date) |
| 2014-05-27 | ’672 Patent Issue Date |
| 2021-09-30 | Plaintiff sends notice of infringement to Defendant |
| 2022-02-02 | Manufacturing date of "Older VersAlarm" product |
| 2022-04-19 | Manufacturing date of "Newer VersAlarm" product with design change |
| 2022-05-16 | Date of web archive allegedly showing false advertising |
| 2022-08-05 | Date of continued alleged false advertising |
| 2023-01-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,737,672 - "Water Resistant Alarm System"
The Invention Explained
- Problem Addressed: The patent’s background section describes issues with conventional alarm systems for wet applications. These systems often rely on seals or gaskets to prevent water from damaging internal electronics. Such seals can increase cost, wear out over time, and muffle the sound of the alarm, reducing its effectiveness (’672 Patent, col. 1:35-42).
- The Patented Solution: The invention is an alarm system housing that is water-resistant without using traditional seals. It achieves this through a novel "sound vent" with an internal, non-straight pathway. This baffled structure allows sound waves to exit the housing while making it difficult for water to travel upwards and into the interior. The housing also features a removable cover and overlapping flanges that guide water away, improving serviceability and protection (’672 Patent, Abstract; col. 2:50-63).
- Technical Importance: This approach seeks to provide a more reliable, cost-effective, and easily serviceable alarm housing for outdoor or other water-prone environments by eliminating the need for failure-prone gaskets (’672 Patent, col. 1:46-49).
Key Claims at a Glance
- The complaint asserts infringement of claims 1-25. The independent claims are 1, 24, and 26 (Compl. ¶12).
- Independent Claim 1, a representative claim, requires:
- A housing having an interior
- A speaker within the interior of the housing
- A "sound vent" within the housing that allows sound to pass outwardly while preventing water entry
- The sound vent includes an escape opening, a first passage, and a "sound passage" connecting them
- The first passage is adapted to allow sound from the speaker to enter the sound passage
- The sound passage "prevents a direct path" for the sound between the first passage and the escape opening
- The complaint reserves the right to assert all dependent claims (Compl. ¶12).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are the VersAlarm I/O, Power Post, Power Post Control Panel, and Power Post Monitoring System (collectively, "Accused Products") (Compl. ¶11).
Functionality and Market Context
- The complaint identifies the accused products as alarm system and control products (Compl. ¶10). The key infringing feature is alleged to be a "sound chamber" (Compl. ¶15).
- Plaintiff alleges that it is in possession of two versions of the VersAlarm I/O product: an "Older VersAlarm" which includes the "sound chamber," and a "Newer VersAlarm" from which the sound chamber was removed (Compl. ¶15).
- Defendant's product literature is alleged to have touted the sound chamber as a feature that "allows for maximum sound output from the alarm buzzer and prevents water from getting into the enclosure" (Compl. ¶17). Alderon's product literature, which the complaint alleges is attached as Exhibit 4, is described as displaying the sound chamber feature (Compl. ¶17).
IV. Analysis of Infringement Allegations
The complaint references a claim chart exhibit (Exhibit 3) that was not provided with the pleading. The following table summarizes the infringement theory for the lead independent claim based on the narrative allegations.
’672 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing having an interior; a speaker within said interior of said housing | The Accused Products are alarm systems that have a housing containing a buzzer or speaker. | ¶11, ¶17 | col. 2:50-53 |
| a sound vent within said housing that allows sound generated from said speaker to pass outwardly from said housing, wherein said sound vent prevents the entry of water into said interior of said housing | The "Older VersAlarm" product is alleged to include a "sound chamber" or "sound vent" that is described in Defendant's literature as allowing "maximum sound output from the alarm buzzer and prevents water from getting into the enclosure." | ¶15, ¶17 | col. 1:55-60 |
| wherein said sound vent includes an escape opening, a first passage and a sound passage fluidly connected... | The Accused Products are alleged to "embody or use the inventions claimed in the '672 Patent," which implies the "sound chamber" has the claimed passages. | ¶11, ¶12 | col. 7:31-36 |
| wherein said sound passage prevents a direct path for said sound between said first passage and said escape opening | The complaint alleges that the "Older VersAlarm" infringes the '672 patent, which requires this feature. The complaint’s reference to its claim chart implies an allegation that the accused "sound chamber" contains a non-direct path. | ¶11, ¶12, ¶15 | col. 7:39-42 |
- Identified Points of Contention:
- Scope Questions: The case may turn on whether the accused "sound chamber" in the "Older VersAlarm" falls within the scope of the term "sound vent" as defined in the patent.
- Technical Questions: A primary factual dispute will be whether the internal structure of the accused "sound chamber" actually "prevents a direct path" for sound, as required by claim 1. The complaint makes a conclusory allegation on this point, the proof of which will depend on evidence regarding the accused product's physical construction. The complaint also raises a factual question about the timeline of the design change from the "Older" to the "Newer" product and which products were sold when (Compl. ¶15).
V. Key Claim Terms for Construction
The Term: "sound vent"
Context and Importance: This term is the central element of the invention. Its construction will likely determine whether the "sound chamber" in the accused "Older VersAlarm" infringes the claims.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that the term should be defined by its dual functions recited in the claim: allowing sound to pass outwardly while preventing water entry. The claim language itself does not require a specific number of baffles (’672 Patent, col. 7:27-30).
- Evidence for a Narrower Interpretation: Defendant may argue the term is implicitly limited to the structures disclosed in the specification, which show a specific arrangement of lower, middle, and upper baffles that create a tortuous path (’672 Patent, col. 6:4-20; Figs. 7, 10). The summary of the invention also describes the vent in the context of the overall housing structure, including the removable cover (’672 Patent, col. 2:50-63).
The Term: "prevents a direct path"
Context and Importance: This limitation distinguishes the claimed invention from a simple opening in a housing. Infringement by the "Older VersAlarm" will depend on whether its "sound chamber" meets this requirement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain meaning suggests any path that is not a straight line of sight. The claim language does not specify how the direct path must be prevented, potentially encompassing various baffle or labyrinth designs.
- Evidence for a Narrower Interpretation: The specification discloses a specific mechanism for preventing a direct path, namely a "center baffle 74" that "splits the sound passage into two sound passages that must go around the center baffle 74" (’672 Patent, col. 6:11-20). A party could argue that this disclosed embodiment limits the scope of the term.
VI. Other Allegations
- Indirect Infringement: The prayer for relief seeks an injunction against inducing infringement (Prayer ¶2). However, the complaint's substantive counts focus on direct infringement under 35 U.S.C. § 271(a) and do not plead specific facts, such as providing instructions to end-users, that would be necessary to support a claim for inducement.
- Willful Infringement: The complaint alleges that Defendant's infringement has been willful. The allegations are based on Defendant receiving actual notice of the ’672 Patent and the alleged infringement via a letter and claim charts on September 30, 2021, and subsequently continuing its infringing conduct (Compl. ¶10, ¶13). The complaint also raises the possibility of pre-notice knowledge through market competition and the hiring of former SJE employees (Compl. ¶14).
VII. Analyst’s Conclusion: Key Questions for the Case
- Definitional Scope: A central issue will be the construction of the term "sound vent". The case may turn on whether the term is construed broadly based on its recited function, or more narrowly to encompass the specific multi-baffle structure detailed in the patent’s embodiments. This construction will be critical in determining if the accused "sound chamber" infringes.
- Factual Proof of Infringement: A key evidentiary question will be whether the physical structure of the "Older VersAlarm" product's "sound chamber" actually "prevents a direct path" for sound as required by the claims. As the complaint is not detailed on this technical point, this will likely be a focus of discovery and expert testimony.
- Willfulness and Damages: The complaint's allegations of a design change occurring after Defendant received notice of infringement create a significant question regarding willfulness. The court will examine Defendant's conduct, including its continued sale of the older product design and its advertising practices for the newer design, to determine whether any infringement was "willful, wanton, and deliberate," which could expose Defendant to enhanced damages.