DCT

2:23-cv-21093

Preferred Utilities Mfg Corp v. ISP Automation Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-21093, D.N.J., 10/11/2023
  • Venue Allegations: Venue is alleged to be proper in the District of New Jersey because the Defendant has committed acts of infringement in the district and maintains a regular and established place of business there.
  • Core Dispute: Plaintiff alleges that Defendant’s submersible fuel pump systems infringe a patent related to waterproof enclosures for such systems.
  • Technical Context: The technology addresses the need to protect critical fuel pumps for backup generators from flooding, a problem highlighted by infrastructure failures during events like Hurricane Sandy.
  • Key Procedural History: The parties engaged in significant pre-suit correspondence. In 2015, Plaintiff notified Defendant of its pending patent application. After the patent issued in 2018, Plaintiff again contacted Defendant, identifying the patent and an accused product. Defendant responded by stating it had conducted a "detailed and lengthy study" and concluded the patent was invalid and unenforceable, which may be relevant to the complaint's allegations of willful infringement.

Case Timeline

Date Event
2014-03-03 Priority Date for U.S. Patent No. 9,932,981
2015-06-29 Plaintiff notifies Defendant of its pending patent application
2015-07-08 Defendant responds to Plaintiff's notice
2018-04-03 U.S. Patent No. 9,932,981 Issues
2018-05-15 Plaintiff notifies Defendant of issued patent and an accused product
2018-09-24 Defendant responds to Plaintiff, alleging patent is invalid
2023-10-11 Complaint Filed

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

U.S. Patent No. 9,932,981 - "Waterproof Pump Enclosure and System Including Same"

  • Patent Identification: U.S. Patent No. 9,932,981 ("the ’981 Patent"), "Waterproof Pump Enclosure and System Including Same", issued April 3, 2018.

The Invention Explained

  • Problem Addressed: The patent addresses the failure of emergency backup power systems caused by the flooding of fuel pumps, which are often located in building basements near fuel tanks. Elevating these pumps is often impractical due to suction lift constraints, which limit how high a pump can pull fuel from a tank below it (’981 Patent, col. 1:21-42; Compl. ¶¶ 15-16).
  • The Patented Solution: The invention is a submersible, waterproof enclosure designed to house a conventional fuel pump and motor assembly. The enclosure comprises a sealed cylindrical body, a removable gasketed cover for access, and importantly, an internal sliding plate on which the pump is mounted. This sliding plate allows the pump assembly to be partially pulled out of the enclosure for maintenance without disconnecting it, providing serviceability while ensuring protection from water inundation (’981 Patent, Abstract; col. 2:10-14).
  • Technical Importance: This design allows positive displacement pumps to be safely installed below anticipated flood levels, preserving their proximity to fuel tanks while protecting them from the primary cause of failure in such environments (Compl. ¶17).

Key Claims at a Glance

  • The complaint asserts direct infringement of independent claim 1 and dependent claims 2-13 of the ’981 Patent (Compl. ¶¶ 27, 43).
  • Independent Claim 1 of the ’981 Patent recites the following essential elements:
    • A submersible and waterproof enclosure with a body, a plate covering one end, and a removable cover on the other.
    • Inlet and discharge openings for fuel flow.
    • A pump and motor assembly inside.
    • At least one leak-tight nipple for electrical connections.
    • An internal mounting plate defining a horizontal surface.
    • A sliding plate coupled to the mounting plate, configured for horizontal movement to allow the pump assembly to be partially extended outside the enclosure for maintenance.
    • A substantially horizontal center axis for the enclosure body.
  • The complaint reserves the right to modify its infringement theories and assert additional claims as discovery progresses (Compl. ¶50).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the "Accused Products" as ISP Automation's fuel pumping, storage, and maintenance systems for emergency standby generators (Compl. ¶23). A specific example cited is the "Submersible Fuel OIP Pump Set – DPF-7-5-SUB" (Compl. ¶38).

Functionality and Market Context

  • The accused products are alleged to be submersible and waterproof enclosures for fuel pumps (Compl. ¶33). The complaint presents a diagram labeling an accused product as a "Submersible Tank – 48” Diameter X 82” Long – Painted Carbon Steel" (Compl. ¶33, p. 10). Plaintiff alleges these are competing products that are sold, used, and imported by the Defendant (Compl. ¶11).

IV. Analysis of Infringement Allegations

’981 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A submersible and waterproof enclosure, comprising: a body having a first end and a second end, and an interior region defined between the first end and the second end; A "Submersible Tank – 48” Diameter X 82” Long – Painted Carbon Steel" is identified as the enclosure body with first and second ends and an interior region (Visual Ref: Compl. ¶33, pp. 10-11, Refs. A-D). ¶33 col. 15:52-56
a plate covering the second end of the body and forming a seal therewith; a cover configured for removable attachment to the first end of the body; A removable cover assembly is alleged to meet these limitations (Visual Ref: Compl. ¶33, p. 11, Ref. E). ¶33 col. 15:57-61
an inlet opening ... and a discharge opening... Inlet and discharge piping extending through the body of the enclosure (Visual Ref: Compl. ¶33, pp. 11-12, Refs. F, G). ¶33 col. 15:62-col. 16:1
a pump and motor assembly operatively connected to the inlet opening and the discharge opening... A pump and motor assembly mounted inside the enclosure (Visual Ref: Compl. ¶33, p. 12, Ref. H). ¶33 col. 16:2-6
a mounting plate affixed to the body and positioned within the interior region of the body thereby defining a substantially horizontal surface therein; and A fixed plate inside the enclosure body, alleged to be a mounting plate (Visual Ref: Compl. ¶33, p. 12, Ref. J). ¶33 col. 16:11-14
a sliding plate operatively coupled to an upper surface of the mounting plate and configured for substantially horizontal movement between a first position ... and a second position ... [where] the pump and motor assembly is at least partially extended outside... An internal plate, on which the pump is mounted, that allegedly slides between a fully retracted position and a partially extended position for maintenance (Visual Ref: Compl. ¶33, p. 13, Refs. K, L, M). ¶33 col. 16:15-26
wherein the body has a substantially horizontal center axis; A diagram depicting the enclosure body with a horizontal center axis (Visual Ref: Compl. ¶33, p. 14, Ref. N). ¶33 col. 17:8-9
wherein said nipple allows at least one insulated electrical wire from an external control source to supply power... without allowing water to enter... A nipple for electrical connections providing a waterproof seal (Visual Ref: Compl. ¶33, p. 12, Ref. I). ¶33 col. 17:15-20
  • Identified Points of Contention:
    • Technical Questions: The complaint alleges that a single component, the removable front cover assembly (Ref. E), meets the limitations of both "a plate covering the second end" and "a cover configured for removable attachment to the first end" (Compl. ¶33, p.11). The patent, however, describes these as distinct components at opposite ends of the enclosure body (’981 Patent, col. 7:1-6). This raises the question of whether the accused product's structure maps to the claimed architecture.
    • Scope Questions: A central dispute may concern the "sliding plate" limitation. The claim requires a plate configured for movement to a second position where the pump assembly is "at least partially extended outside the interior region of the body" (’981 Patent, col. 16:22-25). The complaint provides a diagram alleging this functionality (Compl. ¶33, p. 13). The court will need to determine if the accused product's mechanism for maintenance access falls within the scope of this term, or if it operates in a materially different way.

V. Key Claim Terms for Construction

  • The Term: "sliding plate"

    • Context and Importance: This term is a core element of the claimed invention, as it provides for serviceability, a key differentiator. The infringement analysis will depend heavily on whether the defendant's internal pump mount, which the complaint alleges is a sliding plate (Compl. ¶33, p. 13, Ref. K), is properly characterized as "sliding" and allows for the pump to be "partially extended outside" the enclosure as required.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the element as "a sliding plate 128 that is movable relative to the mounting plate 127" (’981 Patent, col. 9:16-17), which does not limit the specific mechanism of movement. This may support an interpretation covering any structure that achieves this relative movement for maintenance access.
      • Evidence for a Narrower Interpretation: The patent describes an embodiment where fasteners (156) must be removed to allow the plate to move (’981 Patent, col. 9:31-36). A party could argue this implies a simple "repositionable" plate rather than a "sliding" one, which might suggest a more integrated track or guide mechanism. The function of extending "outside the interior region" (’981 Patent, col. 16:24-25) will be a critical part of its definition.

  • The Term: "a plate covering the second end of the body"

    • Context and Importance: Practitioners may focus on this term because the complaint appears to map this limitation and the "removable cover" limitation to the same component of the accused product. The patent distinguishes between a "back plate 23 that may be welded to the body pipe 19" and a "cover plate 22 that may be removably affixed" (’981 Patent, col. 7:2-4). The construction of "plate" as a distinct, potentially permanent, component versus the "removable cover" will be critical.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language itself does not require the "plate" to be permanently affixed, only that it "cover[] the second end... and form[] a seal" (’981 Patent, col. 15:57-58). This could arguably be read on a removable component.
      • Evidence for a Narrower Interpretation: The specification consistently describes the "back plate" (23/123) as being "welded" to the body (’981 Patent, col. 7:4, col. 8:46), while the "cover plate" (22/122) is described as "removably affixed" (col. 7:3). This distinction in the preferred embodiments suggests the "plate" and "cover" are intended to be separate and distinct structures at opposite ends of the enclosure.

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain a specific count for indirect infringement. It alleges Defendant "develops, manufactures, imports, distributes, and sells" the accused products, including through a distribution network (Compl. ¶11), but does not allege specific facts to support a claim of inducement, such as instructing end-users on an infringing use.
  • Willful Infringement: The complaint alleges willful infringement based on extensive pre-suit knowledge (Compl. ¶¶ 36-41). The allegations state that Defendant was notified of the patent application as early as 2015 and of the issued patent in 2018. The complaint further alleges that Defendant performed a "detailed and lengthy study" and continued to infringe after concluding the patent was invalid, which provides a factual basis for the willfulness claim (Compl. ¶39). The prayer for relief seeks enhanced damages under 35 U.S.C. § 285 (Compl. ¶e, p. 19).

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

  • A core issue will be one of claim construction and structural mapping: can the accused product, which appears to have a single removable cover assembly at one end, be found to meet the claim limitations requiring both "a plate covering the second end" and a separate "cover configured for removable attachment to the first end"? The outcome may depend on whether these are construed as necessarily distinct components on opposite sides of the enclosure.
  • A second central question will be both legal and factual: does the accused product's internal pump mount function as a "sliding plate" that allows the pump assembly to be "partially extended outside the interior region" as claimed? This will involve construing the term and then comparing it to the actual operation of the accused device, which may not be fully captured in the complaint's diagrams.
  • Finally, the case presents a significant question regarding willfulness and damages: given the documented pre-suit correspondence where Defendant acknowledged the patent and asserted its invalidity, the court will likely examine the objective reasonableness of Defendant's basis for its non-infringement and invalidity positions at that time, which will be dispositive for the willfulness claim and any potential award of enhanced damages.