1:17-cv-01579
Smart Vent Products Inc v. Shook
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Smart Vent Products, Inc. (Florida, with principal place of business in New Jersey)
- Defendant: Ted Shook, d/b/a American Floodvent and Lone Star Flood Vents (Texas)
- Plaintiff’s Counsel: A.J. DiMarino, P.C.
- Case Identification: 1:17-cv-01579, D.N.J., 03/08/2017
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is subject to personal jurisdiction in the district, deeming it a resident, and because a substantial part of the events giving rise to the claims, including tortious acts intended to cause damage to the New Jersey-based Plaintiff, occurred there.
- Core Dispute: Plaintiff alleges that Defendant’s foundation flood vent products infringe a patent related to flood gate devices and that Defendant engages in unfair competition through false advertising of those products.
- Technical Context: The technology concerns flood vents designed to be installed in building foundations to automatically equalize hydrostatic pressure during a flood, thereby preventing structural wall collapse.
- Key Procedural History: The patent-in-suit, U.S. Patent No. 5,944,445, was the subject of an ex parte reexamination, which concluded with the issuance of a Reexamination Certificate on February 12, 2014. This proceeding confirmed the patentability of several amended claims and added new claims, including the asserted Claim 15, which may affect the scope of available prior art and arguments related to patent validity.
Case Timeline
| Date | Event |
|---|---|
| 1997-07-10 | ’445 Patent Priority Date |
| 1999-08-31 | ’445 Patent Issue Date |
| 2014-02-12 | ’445 Patent Reexamination Certificate Issued |
| 2017-03-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,944,445 - "Device and Method for Relieving Flooding from Enclosed Space", Issued August 31, 1999
The Invention Explained
- Problem Addressed: The patent describes a need for a device that satisfies conflicting building requirements for structures in coastal flood zones ('445 Patent, col. 1:12-28). Such structures need vents to allow floodwater to pass through foundation walls to equalize pressure, but also need to prevent pests from entering and allow for seasonal ventilation control (i.e., open in summer, closed in winter) to protect plumbing ('445 Patent, col. 1:29-44).
- The Patented Solution: The invention is a "maintenance free flood vent" that integrates these functions ('445 Patent, col. 2:56-68). It proposes a flood gate with a door that pivots in both directions to allow water to flow in or out, but is held closed by a "catching assembly" until water pressure reaches a certain threshold ('445 Patent, Abstract). This automates the flood relief function while a screen and an optional temperature-responsive louver system handle ventilation and pest control ('445 Patent, col. 3:28-38).
- Technical Importance: The invention claims to provide a single, integrated device that can be installed year-round to meet FEMA requirements for flood-prone areas while also providing for controlled ventilation, a combination the patent suggests was not available in the prior art ('445 Patent, col. 2:41-55).
Key Claims at a Glance
- The complaint asserts independent Claim 15, which was added during reexamination (Compl. ¶62).
- The essential elements of Claim 15 are:
- An outer frame having side walls defining a fluid passageway, where the frame has a width of a standard concrete masonry unit (CMU) and a height of one or two CMUs.
- A door pivotally mounted in the frame for bidirectional rotation.
- The door is recessed from the front and back of the outer frame.
- The door includes a ventilation opening.
- At least one catching assembly for holding the door in a closed position against a minimum level of pressure from tidal water flow.
- Whereby tidal flood waters exceeding the minimum pressure level are automatically vented.
- The complaint’s prayer for relief seeks an injunction against any product that falls within the scope of "any claim" of the patent, suggesting the right to assert other claims is reserved (Compl. p. 24, ¶3).
III. The Accused Instrumentality
Product Identification
The accused products are the American Floodvent models FV-1 and FV-316 (Compl. ¶65).
Functionality and Market Context
The complaint alleges these products are flood gates intended for installation in building foundation walls to allow for the "automatic entry and exit of floodwaters" (Compl. ¶65). The complaint includes a screenshot of the Defendant's website, which markets the products as "engineered floodvents" that are "FEMA compliant, ICC compliant and engineer and architectural tested and certified" (Compl. p. 13). Plaintiff alleges these products are mass-produced and are marketed with "template-styled certifications" for consumers to fill out, rather than being individually certified as required for "engineered openings" by FEMA regulations (Compl. ¶¶51, 55).
IV. Analysis of Infringement Allegations
’445 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an outer frame having side walls defining a fluid passageway therethrough, wherein the outerframe has a width of a standard concrete masonry unit CMU, a height of one or two CMU's | The accused devices have an outer frame that measures approximately 7 5/8" in height and between 15 5/8" and 15 ¾" in width, dimensions alleged to fall within the range of a standard CMU. | ¶¶67-74 | col. 4:15-22 |
| a door pivotally mounted in said frame for bidirectional rotation between two open positions and a closed position therebetween to permit tidal water flow therethrough | The accused devices have a movable barrier (a "door") mounted on cylindrical pins that swings in opposite directions. | ¶¶76, 79, 92 | col. 4:35-39 |
| wherein the door is recessed from the front and back of the outer frame | The complaint alleges all aspects of the door are "recessed," or set inwardly, from the front and back of the outer frame. | ¶¶85-87 | col. 4:10-14, Fig. 6 |
| and includes a ventilation opening | The accused doors have ventilation openings in a "grille pattern" with numerous holes that allow air to pass through but are small enough to act as a screen, which is alleged to be equivalent to the claimed element. | ¶¶78, 80-84 | col. 4:30-34 |
| at least one catching assembly for holding the door in said closed position against a minimum level of pressure of said tidal water flow | The accused devices have "multiple tabs at the bottom of the inner frame" that catch a rubber strip on the door to hold it closed. When sufficient water pressure is applied, the rubber strip is forced out of the tabs, opening the door. | ¶¶90-91 | col. 3:23-28 |
| whereby tidal flood waters exceeding said minimum pressure level are automatically vented...reducing a risk of structural damage | The complaint alleges that because the door opens automatically when sufficient pressure is applied, it allows water to flow through the vent, thereby reducing the risk of structural damage. | ¶91 | col. 3:25-28 |
- Identified Points of Contention:
- Technical Questions: A primary technical question is whether the accused "grille pattern" door functions in the same way as the claimed "ventilation opening." The complaint invokes the doctrine of equivalents for this element, alleging the accused design is "insubstantially different" and performs "substantially the same function in substantially the same way" (Compl. ¶84). This suggests a potential mismatch in the literal structure and operation compared to the patent's teachings.
- Scope Questions: The infringement analysis may turn on the scope of the term "catching assembly". The complaint alleges that a system of "tabs" holding a "rubber strip" meets this limitation (Compl. ¶91). The court will have to determine if this structure falls within the scope of the claim term, especially when read in light of the patent's disclosed embodiments (e.g., a spring-loaded ball bearing or a spring-loaded rod mechanism).
V. Key Claim Terms for Construction
The Term: "catching assembly"
Context and Importance: The definition of this term is critical because it is the mechanism that enables the core "automatic" function of the flood gate. The dispute will likely focus on whether the Defendant's simple "tabs" and "rubber strip" design (Compl. ¶91) constitutes a "catching assembly" as claimed. Practitioners may focus on this term because the patent's specific embodiments appear more complex than the accused mechanism.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is functional, requiring a mechanism for "holding the door in said closed position against a minimum level of pressure" ('445 Patent, Reexam Cert., col. 3:12-15). This could support an interpretation covering any structure that performs this function.
- Evidence for a Narrower Interpretation: The specification discloses specific mechanical embodiments, including a spring-loaded ball bearing engaging a detent sleeve (col. 5:15-26, Fig. 3) and a spring-and-rod mechanism (col. 4:52-57, Fig. 10). A party could argue the term should be limited to these types of mechanical, spring-based assemblies or their structural equivalents.
The Term: "ventilation opening"
Context and Importance: This term's construction is central because the complaint explicitly relies on the doctrine of equivalents to meet it (Compl. ¶¶81, 84). This indicates a likely disagreement over the literal meaning of the term and whether the accused product's "grille pattern" literally infringes.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent abstract and claims refer broadly to a door "having a ventilation opening" without specifying its structure ('445 Patent, Abstract; Reexam Cert., col. 3:10-11). This may support a construction where any aperture allowing for airflow qualifies.
- Evidence for a Narrower Interpretation: The preferred embodiment describes a specific structure: a "honeycomb-patterned mesh grille 124 backed by screening 130" ('445 Patent, col. 4:30-34). An argument could be made that a "ventilation opening" requires both a grille for structure and a separate screen for pest control, rather than a single integrated pattern of holes.
VI. Other Allegations
- Indirect Infringement: The complaint alleges facts that may support a claim for induced infringement. It states that "American Floodvent instructs users to create a rough opening for vents of about 8 ¼" by 16 ¼"," which allegedly constitutes instruction to use the product in an infringing manner (Compl. ¶73).
- Willful Infringement: The complaint alleges that Defendant's infringement is "willful and deliberate" (Compl. ¶95). The factual basis appears to stem from allegations that Defendant, despite knowledge of FEMA and other industry regulations, falsely marketed its products as compliant, suggesting a deliberate disregard for industry standards in the same technical space as the patented invention (Compl. ¶¶57-60).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case appears to hinge on two central questions for the court:
A core issue will be one of definitional scope: can the term "catching assembly," which the patent illustrates with spring-loaded mechanical systems, be construed to cover the accused product's simpler mechanism of fixed tabs retaining a rubber strip? The outcome will depend on whether the claim is interpreted functionally or is limited by its disclosed embodiments.
A key evidentiary question will be one of equivalence: since the complaint resorts to the doctrine of equivalents, the case will turn on whether the accused product’s integrated "grille pattern" door performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed "ventilation opening," which the patent illustrates as a distinct grille-and-screen combination.