DCT
0:23-cv-00443
NanoFire LLC v. Fireaway Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NanoFire LLC (New York)
- Defendant: Fireaway Inc. (Minnesota)
- Plaintiff’s Counsel: Dorsey & Whitney LLP; Hecht Partners LLP
- Case Identification: 0:23-cv-00443, D. Minn., 02/22/2023
- Venue Allegations: Venue is asserted in the District of Minnesota on the basis that Defendant Fireaway Inc. is incorporated in Minnesota and maintains its headquarters and principal place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s aerosol fire extinguishers, specifically the StatX 2500E model, infringe three patents related to fire extinguishing chemical compositions and a mechanical safety apparatus for such devices.
- Technical Context: The technology concerns chemical agents for aerosol-based fire suppression systems, which are presented as environmentally safe and effective alternatives to traditional fire extinguishers.
- Key Procedural History: The complaint alleges that Defendant has been on notice of the patents-in-suit since at least November 15, 2021, forming the basis for a claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2010-09-16 | Priority Date for '108 and '014 Patents |
| 2011-08-16 | Priority Date for '328 Patent |
| 2014-10-21 | '014 Patent Issued |
| 2015-12-01 | '108 Patent Issued |
| 2016-02-02 | '328 Patent Issued |
| 2021-11-15 | Alleged Date of Notice to Defendant |
| 2023-02-22 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,199,108
- Patent Identification: U.S. Patent No. 9,199,108, "Fire Extinguishing Composition Generating Fire Extinguishing Substance Through High-Temperature Decomposition," issued December 1, 2015.
The Invention Explained
- Problem Addressed: The patent identifies shortcomings in prior art fire suppression systems, including the high-pressure storage risks of gas systems and the large amount of heat generated by existing aerosol agents, which necessitates complex and costly cooling systems and creates a risk of secondary fires (’108 Patent, col. 2:15-34).
- The Patented Solution: The invention is a fire extinguishing device with a specific internal architecture. It comprises a fire extinguishing composition that works via chemical decomposition, positioned above a pyrotechnic agent that serves as the heat source. This arrangement is designed to create a more efficient and safer device by controlling the release of the extinguishing substance and reducing the need for an external cooling apparatus (’108 Patent, Abstract; col. 2:45-55).
- Technical Importance: The claimed configuration seeks to advance aerosol fire suppression technology by providing a self-contained, non-pressurized device that is safer and less mechanically complex than prior systems (’108 Patent, col. 2:35-43).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claim 13 (Compl. ¶20, ¶45).
- Independent claim 1 requires:
- A fire extinguishing device with a nozzle.
- A composition comprising a pyrotechnic agent and a fire extinguishing composition.
- The fire extinguishing composition is arranged above the pyrotechnic agent and closer to the nozzle.
- The fire extinguishing composition generates its substance via high-temperature decomposition.
- The composition contains a fire extinguishing material at a concentration of at least 80% by weight.
- The pyrotechnic agent acts as a heat and power source.
- Fire extinguishing is achieved by igniting the agent, generating the substance, and spraying it out together with the pyrotechnic agent.
U.S. Patent No. 8,865,014
- Patent Identification: U.S. Patent No. 8,865,014, "Fire Extinguishing Composition Generating Fire Extinguishing Substance By High Temperature Sublimation," issued October 21, 2014.
The Invention Explained
- Problem Addressed: The patent addresses similar problems as the ’108 Patent: the environmental and safety issues with Halon substitutes and the inefficiency and high heat output of existing aerosol agents (’014 Patent, col. 2:9-24).
- The Patented Solution: This invention is a fire extinguishing composition that generates a fire-suppressing substance through sublimation (a direct solid-to-gas phase transition). The process of sublimation is described as rapidly absorbing heat, which helps cool the device and the surrounding area, thereby reducing the need for a separate cooling system and improving overall efficiency (’014 Patent, Abstract; col. 2:62-68).
- Technical Importance: This patent claims a specific chemical mechanism—sublimation—to achieve fire suppression, distinguishing it from systems based on decomposition or simple oxidation-reduction, with the goal of creating a safer and more effective composition (’014 Patent, col. 2:51-61).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶47).
- Independent claim 1 requires:
- A fire extinguishing composition that generates substance via high temperature sublimation.
- The composition comprises a fire extinguishing material (at least 80% by weight) that releases its substance through sublimation, and a pyrotechnic agent.
- The pyrotechnic agent is adopted as a heat and power source.
- Fire extinguishing is achieved by igniting the agent, generating the substance via sublimation, and spraying it out with the pyrotechnic agent.
Multi-Patent Capsule: U.S. Patent No. 9,248,328
- Patent Identification: U.S. Patent No. 9,248,328, "Explosion-Venting Method For Aerosol Suppression Apparatus," issued February 2, 2016.
- Technology Synopsis: This patent addresses a mechanical safety problem rather than a chemical one. It describes a method to mitigate the dangerous recoil force and potential for device explosion that can occur if the aerosol agent deflagrates (burns too quickly). The solution is a venting device that allows for limited, controlled displacement upon deflagration, which absorbs and dissipates the kinetic energy to prevent injury or damage (’328 Patent, Abstract; col. 2:40-47).
- Asserted Claims: The complaint asserts independent claim 1 and dependent claim 7 (Compl. ¶59).
- Accused Features: The complaint alleges the StatX 2500E product embodies and uses this explosion-venting method (Compl. ¶¶62, 67).
III. The Accused Instrumentality
- Product Identification: The accused product is the "Fireaway StatX 2500E Fire Suppression Aerosol Generator" (Compl. ¶17). The complaint provides images of the accused StatX 2500E fire suppression aerosol generator, showing its external cylindrical housing (Compl. ¶19, citing Ex. 5).
- Functionality and Market Context: The complaint alleges the StatX 2500E is an aerosol fire extinguisher that contains a pyrotechnic agent and a fire extinguishing composition (Compl. ¶¶17, 25). It is allegedly sold to consumers throughout the United States via sales representatives and online channels (Compl. ¶¶7, 17). The complaint alleges the product generates a fire extinguishing substance through both high-temperature decomposition and high-temperature sublimation, and that it incorporates a method for explosion-venting (Compl. ¶¶27, 50, 62).
IV. Analysis of Infringement Allegations
'108 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A fire extinguishing device | The StatX 2500E is a fire extinguishing device. | ¶23 | col. 2:45-47 |
| a nozzle | The StatX 2500E has a nozzle. | ¶24 | col. 2:47 |
| a composition comprising a pyrotechnic agent and a fire extinguishing composition placed within the fire extinguishing device | Inside the StatX 2500E are a pyrotechnic agent and a fire extinguishing composition. | ¶25 | col. 2:47-49 |
| the fire extinguishing composition is arranged above the pyrotechnic agent within the fire extinguishing device closer to the nozzle | The fire extinguishing composition of the StatX 2500E is arranged above the pyrotechnic agent...closer to the nozzle. | ¶26 | col. 2:49-52 |
| the fire extinguishing composition generates fire extinguishing substance by high-temperature decomposition | The fire extinguishing composition of the StatX 2500E generates a fire extinguishing substance by high-temperature decomposition. | ¶27 | col. 2:52-53 |
| a fire extinguishing material...the content of the fire extinguishing material being at least 80 wt % | The fire extinguishing composition of the StatX 2500E has a weight percentage of at least 80. | ¶¶28-29 | col. 2:53-57 |
| the pyrotechnic agent is adopted as a heat source and a power source | The pyrotechnic agent in the StatX 2500E is adopted as a heat source and a power source. | ¶30 | col. 2:55-57 |
| wherein fire extinguishing is achieved by: igniting the pyrotechnic agent, generating a large quantity of fire extinguishing substance...and the fire extinguishing substance spraying out together with the pyrotechnic agent. | The StatX 2500E achieves fire extinguishing by igniting the pyrotechnic agent, generating a large quantity of the substance... and spraying it out together with the pyrotechnic agent. | ¶32 | col. 2:59-68 |
'014 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A fire extinguishing composition which generates fire extinguishing substance by high temperature sublimation | The StatX 2500E contains a fire extinguishing composition which generates a fire extinguishing substance by high temperature sublimation. | ¶50 | col. 2:51-54 |
| a fire extinguishing material which can release a fire extinguishing substance with fire extinguishing properties by sublimation...the content of the fire extinguishing material being at least 80 wt% | The StatX 2500E fire extinguishing composition has a material that releases a substance by sublimation and has a weight percentage of at least 80. | ¶¶51-52 | col. 4:57-61 |
| a pyrotechnic agent | The StatX 2500E fire extinguishing composition has a pyrotechnic agent. | ¶53 | col. 4:62 |
| wherein the pyrotechnic agent of the fire extinguishing composition is adopted as a heat source and a power source | The pyrotechnic agent of the StatX 2500E fire extinguishing composition is adopted as a heat source and a power source. | ¶54 | col. 4:63-65 |
| wherein fire extinguishing is achieved by igniting the pyrotechnic agent, generating a large quantity of fire extinguishing substance...and the fire extinguishing substance spraying out together with the pyrotechnic agent. | The StatX 2500E achieves fire extinguishing by igniting the pyrotechnic agent, generating a large quantity of the substance...and spraying it out together with the pyrotechnic agent. | ¶55 | col. 4:66-5:2 |
- Identified Points of Contention:
- Technical Questions: A central dispute may arise over the actual mechanism of the accused product. The complaint alleges infringement of one patent claiming "decomposition" (the '108 patent) and another claiming "sublimation" (the '014 patent). The question of which process, if either, the accused product actually uses will be critical. The complaint does not provide technical evidence to support either allegation.
- Scope Questions: The complaint makes conclusory allegations about the internal structure and composition of the StatX 2500E. A key question for the court will be whether the plaintiff can produce evidence that the accused device has the specific internal arrangement ("composition above pyrotechnic agent") and chemical weight percentages ("at least 80 wt %") required by the asserted claims.
V. Key Claim Terms for Construction
For the '108 and '014 Patents
- The Terms: "high-temperature decomposition" (’108 Patent) and "high temperature sublimation" (’014 Patent).
- Context and Importance: The definitions of these terms are fundamental to the infringement analysis for both patents. Practitioners may focus on these terms because they define two distinct physical/chemical processes, and the accused product cannot logically infringe claims requiring both mechanisms unless the terms are construed in an unconventional way or the product contains multiple, distinct compositions. The viability of two of the three infringement counts may depend on the construction of these terms.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specifications of both patents describe the goal of generating a "fire-extinguishing substance" in a gaseous form to inhibit flame (’108 Patent, col. 3:51-58; ’014 Patent, col. 3:20-29). A party could argue that any process that achieves this gas generation from a solid falls within the general scope of the inventions.
- Evidence for a Narrower Interpretation: The patents use these terms distinctly. The '108 patent focuses on a substance that can be "decomposed" and lists numerous chemical compounds (’108 Patent, col. 3:1-4:68). The '014 patent describes "sublimation" as a process that "can rapidly absorb heat" and is distinguished from the "oxidation-reduction reaction" of conventional aerosols, implying a specific endothermic phase transition (’014 Patent, col. 2:62-68, col. 2:16-18). This suggests the terms refer to mutually exclusive technical processes.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain a count for indirect infringement and lacks specific factual allegations, such as references to user manuals or technical documentation, that would typically support a claim for induced infringement. However, the prayer for relief seeks to enjoin customers and distributors, suggesting such a theory may be developed (Compl. p. 13, ¶D).
- Willful Infringement: The complaint alleges that Defendant had pre-suit knowledge of all three patents-in-suit "since at least November 15, 2021" (Compl. ¶15). It further alleges that with this knowledge, Defendant "willfully continues to infringe" (Compl. ¶71).
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be one of technical mechanism: Does the accused product's extinguishing agent operate by "high-temperature decomposition" (as required by the ’108 patent), "high temperature sublimation" (as required by the ’014 patent), or a different process entirely? The factual determination of the product’s mechanism of action may be dispositive for two of the three asserted patents.
The case will likely involve a key evidentiary challenge: Can the plaintiff substantiate its conclusory allegations regarding the internal physical structure and precise chemical formulation of the accused product? Discovery will be needed to determine if the StatX 2500E meets the specific architectural ("agent above pyrotechnic") and compositional ("at least 80 wt%") limitations of the asserted claims.
For the '328 patent, a core question will be one of definitional scope: Does the accused product’s design incorporate the specific, multi-part "explosion-venting method" as claimed, which requires distinct functional components such as a "friction layer", "guiding unit", and "limiting device", or is there a material difference between the product’s general safety features and the specific mechanical solution claimed in the patent?