DCT

1:23-cv-06185

FloodBreak LLC v. T Moriarty & Son Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-06185, E.D.N.Y., 08/16/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of New York based on Defendants' citizenship in the state and their conducting of substantial and systematic business within the district, including the alleged acts of infringement.
  • Core Dispute: Plaintiff alleges that Defendants' installation of mechanical closure devices (MCDs) in the New York City subway system infringes a patent related to flood protection for underground air vents.
  • Technical Context: The technology concerns passively-actuated flood barriers for underground ventilation systems, a critical component for protecting subterranean infrastructure like subway tunnels from storm-related flooding.
  • Key Procedural History: The complaint heavily references prior litigation, FloodBreak v. AMI (D. Conn.), against the manufacturer of the same MCDs at issue in this case. In that prior case, the court found "probable cause" that the manufacturer's MCDs infringed the patent-in-suit. The manufacturer later stipulated to the patent's validity and enforceability, and to direct, induced, and willful infringement, resulting in a final judgment and permanent injunction against the manufacturer and those in "active concert or participation" with them.

Case Timeline

Date Event
2013-10-06 '342 Patent Priority Date
2016-04-07 '342 Patent application published
2016-09-07 MTA awards construction contract to Moriarty Inc.
2016-12-14 Plaintiff's founder meets with Moriarty Inc.'s CEO
2017-06-09 Moriarty Inc. represents supplier's MCD as "equal" to Plaintiff's
2017-08-14 MTA accepts "equal" representation
2017-08-17 Moriarty Inc. issues purchase order for accused MCDs
2017-09-05 U.S. Patent No. 9,752,342 Issued
2018-02-22 Plaintiff sends notice letter to MCD supplier (AMI)
2018-03-26 Plaintiff sues MCD supplier (AMI)
2019-02-28 Deposition of Defendant Moriarty noticed in AMI litigation
2021-02-21 Court finds "probable cause" of infringement in AMI litigation
2022-07-21 MCD supplier (AMI) stipulates to validity and infringement
2023-08-16 Complaint Filed

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

U.S. Patent No. 9,752,342 - "Flood Protection for Underground Air Vents" (Issued: Sep. 5, 2017)

The Invention Explained

  • Problem Addressed: The patent describes the significant problem of surface water flooding underground transportation tunnels, like the New York City subway, through ventilation grates during severe rainstorms or storm surges (’342 Patent, col. 1:22-56). It notes that prior solutions, such as sandbagging or fastening plywood covers over grates, are labor-intensive, slow to implement, and often ineffective, as demonstrated during Superstorm Sandy (’342 Patent, col. 2:7-17).
  • The Patented Solution: The invention is a self-contained apparatus installed within a ventilation shaft that allows for normal air circulation but automatically prevents floodwater ingress (’342 Patent, Abstract). The apparatus features one or more panels held in an "upright home position" by a releasable holder, keeping the ventilation passage unobstructed (’342 Patent, col. 4:42-50). Upon release, the panels "rotationally swing downward under the force of gravity" to a lower, sealed position, blocking the passage and preventing water from entering the tunnels below (’342 Patent, col. 4:49-54).
  • Technical Importance: The invention provides a passive, pre-installed, and rapidly deployable solution to a critical infrastructure vulnerability, offering a more reliable and less labor-dependent alternative to manual flood prevention measures (’342 Patent, col. 2:15-17).

Key Claims at a Glance

  • The complaint asserts infringement of at least claims 1, 4-5, 8, 10, 14, and 20-24 (Compl. ¶29).
  • Independent Claim 1, a key apparatus claim, includes the following essential elements:
    • A support for arrangement in a ventilation shaft, defining a passage for fluid communication.
    • One or more stops located near the bottom of the support.
    • One or more panels mounted for rotation from an "upright home position" (where they do not obstruct the passage) to a "lower passage closing position" (where they are stopped by the stops).
    • The rotation from the home to the closing position occurs "solely by gravitational impetus on its own weight."
    • A panel holder with moveable members that holds the panels in the upright home position.
    • A handle operable to move the moveable members to release the panels.
  • The complaint also asserts infringement of dependent claims, which add further limitations to the invention (Compl. ¶29).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the mechanical closure devices (MCDs) that Defendant Moriarty Inc. purchased from a third-party manufacturer, Art Metal Industries, Inc. ("AMI"), and subsequently offered for sale to and installed for the NYC Metropolitan Transit Authority ("MTA") (Compl. ¶¶ 12, 15, 19).

Functionality and Market Context

The complaint alleges these MCDs were installed in ventilation ducts in the NYC subway system as part of a construction contract valued at over $17 million (Compl. ¶15). It further alleges that Moriarty Inc. represented these MCDs to the MTA as "equal" to Plaintiff's own commercial products to win the contract, and then purchased them from AMI for installation (Compl. ¶¶ 16-18). The complaint does not contain technical descriptions or figures illustrating the accused MCDs' specific design or operation. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide element-by-element infringement allegations or a claim chart. The infringement theory is presented narratively. Plaintiff alleges that Defendant Moriarty Inc. directly infringed the ’342 Patent by, among other things, offering to sell and selling the AMI MCDs within the United States (Compl. ¶29). The core of the infringement allegation rests on the assertion that "the same MCDs Moriarty Inc. bought from AMI and sold to NYC MTA infringed the '342 patent," a fact Plaintiff claims was established in the prior FloodBreak v. AMI litigation (Compl. ¶24).

  • Identified Points of Contention:
    • Legal Question: A central issue may be the legal effect of the prior AMI litigation on the present case. The court will need to determine whether the findings and stipulations from the case against the manufacturer (AMI) can be used against the downstream installer and seller (Moriarty), who was not a party to the prior action. The scope and enforceability of the injunction against those in "active concert or participation" with AMI may be a key point of dispute (Compl. ¶26).
    • Factual Question: The analysis may turn on whether the MCDs installed by Moriarty are factually identical to those adjudicated in the AMI case. While the complaint alleges they are the "same MCDs" (Compl. ¶24), Defendants may raise questions about product variations or modifications that could distinguish their devices from those previously found to infringe.

V. Key Claim Terms for Construction

  • The Term: "solely by gravitational impetus on its own weight"

    • Context and Importance: This term from Claim 1 is critical for defining the passive, automatic nature of the patented flood barrier. Practitioners may focus on this term because it limits the closing mechanism exclusively to gravity, potentially excluding devices that rely on or are assisted by other forces like water pressure or springs.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party might argue that "solely" should be interpreted to mean that gravity is the primary or initiating force, not precluding incidental forces that might also be present during deployment. However, the specification provides little direct support for this reading.
      • Evidence for a Narrower Interpretation: The plain meaning of "solely" suggests exclusivity. The specification consistently reinforces this narrow interpretation, describing panels that "gravitationally fall" (’342 Patent, col. 4:15-16), are released to "swing downward under the force of gravity" (’342 Patent, col. 4:49-50), and whose rotation is driven by their "own weight" (’342 Patent, col. 14:26-29).

  • The Term: "upright home position not obstructing said passage"

    • Context and Importance: This phrase from Claim 1 defines the device's normal, non-deployed state. Its construction is important for determining whether a device that is not perfectly vertical or that slightly protrudes into the air passage in its resting state meets this limitation.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: One could argue "not obstructing" is a functional limitation, meaning it does not materially impede the required ventilation, even if there is some minor physical encroachment into the passage.
      • Evidence for a Narrower Interpretation: The specification describes the panels in their home position as being "tucked away from pedestrian causal view" (’342 Patent, col. 4:30-31) and under a "beam" (’342 Patent, col. 7:50-53), while the figures (e.g., Fig. 7) depict the panels in a fully vertical orientation, suggesting a position completely clear of the passage.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendant James P. Moriarty Jr., as CEO of Moriarty Inc., actively induced infringement (Compl. ¶32). The factual basis for this claim includes allegations that he personally supervised, directed, and approved the company's infringing activities, with knowledge of FloodBreak's patent rights (Compl. ¶¶ 32-33).
  • Willful Infringement: The complaint alleges willful infringement by both Defendants, asserting they had knowledge of the patent and acted deliberately (Compl. ¶¶ 30, 33). The basis for this allegation is extensive, citing pre-issuance knowledge of the patent application from direct meetings with the inventor (Compl. ¶16), post-issuance knowledge from receiving a copy of the patent with a deposition notice in the AMI litigation (Compl. ¶23), and knowledge of the prior litigation in which the supplier of the same MCDs was found to be a willful infringer (Compl. ¶25).

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

  1. A central issue will be the preclusive effect of the prior judgment: To what extent are the findings and stipulations of infringement, willfulness, and validity from the FloodBreak v. AMI litigation binding on or persuasive against Moriarty, the downstream installer and seller of the same accused products, who was not a party to that action?
  2. A key factual question will be one of knowledge and intent: Can Plaintiff prove that Defendants' alleged knowledge of the patent—derived from pre-suit meetings, a deposition notice, and the widely publicized prior litigation—was sufficient to establish that their continued installation and sale of the accused MCDs constituted willful infringement?
  3. An underlying evidentiary question will be one of product identity: Assuming the prior litigation is not fully preclusive, can Plaintiff establish that the specific MCDs installed by Moriarty are technically and legally indistinguishable from the apparatus claimed in the ’342 Patent?