DCT
1:24-cv-01436
Research Products Corp v. Brilliant Initiatives LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Research Products Corporation (Wisconsin)
- Defendant: Brilliant Initiatives LLC (New York)
- Plaintiff’s Counsel: Foley & Lardner LLP
- Case Identification: 1:24-cv-01436, N.D.N.Y., 11/25/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant resides in, has committed acts of infringement in, and maintains a regular and established place of business in the Northern District of New York.
- Core Dispute: Plaintiff alleges that Defendant’s "Riverline" brand of collapsible replacement air filters infringes three patents related to self-sealing, user-installable air filter technology.
- Technical Context: The technology concerns extended surface pleated mechanical (ESPM) air filters for whole-house HVAC systems, which are designed to be shipped in a collapsed state and expanded by the user for installation.
- Key Procedural History: The complaint alleges Defendant has been aware of Plaintiff's products and patents since at least June 2, 2024, and that Plaintiff provided Defendant with a formal notice of infringement via letter in September 2024.
Case Timeline
| Date | Event |
|---|---|
| 2007-12-31 | Earliest Priority Date for ’881, ’674, and ’267 Patents |
| 2012-04-17 | ’881 Patent Issued |
| 2013-04-09 | ’674 Patent Issued |
| 2015-02-03 | ’267 Patent Issued |
| 2024-06-02 | Alleged date of Defendant's first knowledge of patents |
| 2024-09 | Plaintiff sent Defendant notice of infringement letter |
| 2024-10-03 | Date of end-user review cited as evidence of infringement |
| 2024-11-25 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,157,881 - "Collapsible Extended Surface Filter and Air Cleaner System Using Collapsible Extended Surface Filter"
- Patent Identification: U.S. Patent No. 8,157,881, "Collapsible Extended Surface Filter and Air Cleaner System Using Collapsible Extended Surface Filter," issued April 17, 2012.
The Invention Explained
- Problem Addressed: The patent describes prior art collapsible filters as being labor-intensive for end users to install, often requiring assembly of multiple components like inner housings and pleat spacers, which adds complexity and time to the replacement process (’881 Patent, col. 1:57-2:7).
- The Patented Solution: The invention is a user-friendly collapsible filter designed to "effectively self-seal" within an air cleaner housing (’881 Patent, col. 2:26-34). The filter features a pleated media with flexible end portions that, when inserted into the housing, bend and conform to the housing's side surfaces, creating a seal that directs airflow through the filter media rather than around it (’881 Patent, col. 15:1-20). This design simplifies installation by eliminating the need for separate, complex sealing components.
- Technical Importance: This approach aimed to combine the shipping and storage cost advantages of a collapsible filter with the ease-of-use typical of rigid, cartridge-style filters (’881 Patent, col. 2:48-55).
Key Claims at a Glance
- The complaint asserts independent claim 15 (Compl. ¶43).
- The essential elements of claim 15 include:
- A collapsible filter for an air cleaner having an enclosing structure with a first wall, a second wall, and two side surfaces.
- A pleated media filter with first and second ends, first and second side portions, and flexible end portions.
- A first and second end structure at the ends of the pleated media filter.
- Wherein, after placement in the enclosing structure, the first and second flexible end portions engage and conform to the side surfaces by bending, forming an angle to the pleat edge and creating an effective seal.
- And wherein each end structure is located adjacent to the first and second walls, providing an effective seal between the end structures and the walls.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,414,674 - "Collapsible Extended Surface Filter and Air Cleaner System Using Collapsible Extended Surface Filter"
- Patent Identification: U.S. Patent No. 8,414,674, "Collapsible Extended Surface Filter and Air Cleaner System Using Collapsible Extended Surface Filter," issued April 9, 2013.
The Invention Explained
- Problem Addressed: As a continuation of the '881 patent's application, this patent addresses the same challenge of creating an easy-to-install collapsible filter (’674 Patent, col. 2:14-25).
- The Patented Solution: This patent focuses on the structural relationship between the filter and the air cleaner frame. It claims a filter with end members that interact with support features within the frame to create a seal, combined with flexible end portions of the filter media that bend to seal against the frame's side surfaces (’674 Patent, Abstract; col. 14:24-33). The specific geometry, such as the filter media length being greater than the end member length, is a described feature.
- Technical Importance: This design provides a specific mechanical framework for ensuring a comprehensive seal on all four sides of the filter through interaction with corresponding structures in the air cleaner housing (’674 Patent, col. 4:11-24).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶94).
- The essential elements of claim 1 include:
- A collapsible air cleaner filter comprising a pleated media filter, first and second end members, and a frame for an in-duct air cleaner.
- The filter media has first and second pluralities of flexible end portions separated by pleats.
- The first and second end members are coupled to the ends of the pleated media filter, with specific relative length requirements (e.g., filter media length greater than end member length).
- The frame includes walls, side surfaces, and first and second support features.
- Wherein, after the filter is placed in the frame, the end members interact with the support features and walls to form an effective seal.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,945,267 - "Collapsible Extended Surface Filter and Air Cleaner System Using Collapsible Extended Surface Filter"
- Patent Identification: U.S. Patent No. 8,945,267, "Collapsible Extended Surface Filter and Air Cleaner System Using Collapsible Extended Surface Filter," issued February 3, 2015.
- Technology Synopsis: Continuing the same inventive line, this patent claims a filter specifically designed for an existing air cleaner housing. The key inventive concept appears to be a "first end projection" on the filter's end member that is designed to engage a support member within the housing, allowing the filter to expand and seal (’267 Patent, col. 14:5-21).
- Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶145).
- Accused Features: The complaint alleges that the magnets on Defendant's Infringing Products constitute the "first end projection" recited in the claims and that these magnets engage with the support members of the AprilAire Air Cleaner (Compl. ¶¶ 148, 154, 156).
III. The Accused Instrumentality
Product Identification
The accused products are "Riverline" brand replacement air filters sold by Defendant Brilliant Initiatives LLC (Compl. ¶¶ 15, 16).
Functionality and Market Context
The complaint describes the accused products as collapsible, pleated air filters designed as replacements for Plaintiff's AprilAire® whole-house air cleaners (Compl. ¶13). A key feature alleged is the presence of magnets on the filters, which are advertised to create a "Magnetic Seal" (Compl. ¶¶ 16, 60). The complaint includes a screenshot from Defendant's promotional video showing the filter transitioning from a collapsed to an expanded state (Compl. ¶46). The products are sold through Amazon, allegedly at prices lower than Plaintiff's competing filters, and the complaint notes that hundreds of units have been sold (Compl. ¶¶ 35-37).
IV. Analysis of Infringement Allegations
’881 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a pleated media filter having a first end, a second end, and a filter media having a first side portion and a second side portion which are separated by a pleat edge... | The accused products are pleated filters with ends, sides, and pleat edges. The complaint provides an annotated image identifying these features. | ¶50 | col. 15:36-40 |
| ...the first side portion includes a first flexible end portion, the second side portion includes a second flexible end portion... | The accused products allegedly have flexible end portions on their sides. An annotated image from the complaint points to these areas. | ¶51 | col. 15:40-42 |
| a first end structure provided at the first end of the pleated media filter and a second end structure provided at the second ends of the pleated media filter... | The accused products have plastic end structures at the top and bottom of the filter media. | ¶53 | col. 15:46-50 |
| ...after the collapsible filter is placed into the enclosing structure, the first flexible end portion engages and conforms to a first one of the two side surfaces by bending...forming an effective seal... | The complaint alleges that when the accused filter is installed, its flexible side portions bend to conform to the air cleaner's side surfaces, creating a seal. An annotated image illustrates this bending. | ¶55 | col. 16:1-9 |
| ...and each end structure will be located adjacent to one of the first wall and the second wall, such that an effective seal will be provided... | The complaint alleges the magnets on the accused filter's end structures engage the air cleaner's top and bottom walls to form a seal. A video screenshot shows the "Magnetic Seal Technology." | ¶¶ 59, 60, 17 | col. 16:13-19 |
Identified Points of Contention
- Scope Questions: Claim 15 requires an "effective seal" to be formed by the "flexible end portion...by bending." The complaint alleges the seal is also formed by magnets on the end structures (Compl. ¶60). A question for the court is whether the infringement theory improperly conflates the sealing function of the claimed bending with the sealing function of the allegedly magnetic end structures, which may be covered by a different patent ('267).
- Technical Questions: What evidence will demonstrate that the accused filter's flexible portions "conform" to the side surfaces to form an "effective seal in the presence of air flow"? The complaint relies on static images and marketing videos (Compl. ¶¶ 55, 57), raising the question of whether this functional limitation is met under actual operating conditions.
’674 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a pleated media filter having a first end, a second end, and a filter media extending between the first and second ends... | The accused products have a pleated filter media between two ends, as shown in an annotated image. | ¶98 | col. 14:2-4 |
| a first end member coupled to the first end of the pleated media filter, the first end member extending a second length parallel to the first length, the first length being greater than the second length... | The complaint alleges the accused product's dimensions meet this limitation, where the filter media length (first length) is greater than the end member length (second length). An annotated image depicts this relationship. | ¶101 | col. 14:10-14 |
| a frame for an in-duct air cleaner, the frame includes a first wall, a second wall, two opposing side surfaces, a first support feature provided adjacent the first wall... | The AprilAire Air Cleaner, for which the accused product is a replacement, allegedly provides this frame with the required walls and support features. | ¶105 | col. 14:18-23 |
| ...after the collapsible filter is placed into the frame, the first end member interacts with the first support feature and the first wall...such that an effective seal is provided... | The complaint alleges the magnets on the accused filter's end member interact with the support feature and wall of the AprilAire cleaner to create an effective seal. A video screenshot shows this interaction. | ¶¶ 109, 111 | col. 14:24-33 |
Identified Points of Contention
- Scope Questions: The term "interacts" is central. The patent's specification and figures appear to describe a mechanical interaction (e.g., physical contact and support) between the end member and the frame's support feature (’674 Patent, Fig. 9). The complaint's theory relies on magnetic interaction (Compl. ¶111). This raises the question of whether the claim term "interacts" can be construed to cover magnetic forces, a technology not explicitly disclosed in the patent's embodiments.
- Technical Questions: The infringement allegation for the frame element relies on the combination of the accused filter with a third-party product, the AprilAire Air Cleaner (Compl. ¶94). The properties of that frame, particularly the location and function of its "support feature," will be a key factual question requiring evidence beyond the product's general appearance.
V. Key Claim Terms for Construction
For the ’881 Patent
- The Term: "effective seal"
- Context and Importance: This functional term is crucial because infringement hinges on how the seal is achieved. Practitioners may focus on this term because the complaint attributes the seal to both the claimed "bending" of flexible portions and the use of magnets, which may not be what the claim requires.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The Summary of the Invention describes the goal broadly as providing "an effective seal against air flowing around, rather than through, the collapsible extended surface pleated media filter" (’881 Patent, col. 2:65-68), which could support a focus on the result rather than the specific mechanism.
- Evidence for a Narrower Interpretation: Claim 15 explicitly links the formation of the seal to the action of the flexible end portion "bending," suggesting the mechanism of sealing is an integral part of the limitation (’881 Patent, col. 16:1-9).
For the ’674 Patent
- The Term: "interacts"
- Context and Importance: The definition of this term is critical because the complaint's infringement theory depends on magnetic attraction qualifying as an "interaction" between the filter's end member and the cleaner's support feature (Compl. ¶¶ 109, 111).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The word itself is general. Plaintiff may argue that in its ordinary sense, "interact" means to act in such a way as to have an effect on another, which could include magnetic force.
- Evidence for a Narrower Interpretation: The specification repeatedly describes the interaction in mechanical terms, such as how end members are "held by the support members" (’674 Patent, col. 8:14-16) and how a rail guide "interacts with a rib" on the frame wall (’674 Patent, col. 11:46-48). Figure 9 depicts direct physical contact between the filter end structure (310) and the support rail (194), suggesting a mechanical, not magnetic, interaction.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all three patents. Inducement is based on allegations that Defendant provides instructional videos on its Amazon listings and includes a "Quick Start Guide" with its products, both of which allegedly instruct users on how to perform the infringing installation (Compl. ¶¶ 70-75, 121-126, 166-171). Contributory infringement is based on allegations that the filters are not staple articles of commerce and have no substantial non-infringing use, as they are advertised specifically for use with AprilAire Air Cleaners (Compl. ¶¶ 78-80, 129-131, 174-176).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged knowledge of the patents since at least June 2, 2024, and its continued sales after receiving a notice of infringement letter in September 2024 (Compl. ¶¶ 87, 138, 183).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim differentiation and scope: can Plaintiff prove infringement of the '881 and '674 patents, which claim sealing via mechanical bending and interaction, when its own complaint and the accused product's marketing heavily feature magnets—a technology seemingly covered by the distinct claims of the later '267 patent? The court will need to determine if the sealing functions are separable or if the infringement theory improperly imports limitations from one patent into another.
- A central dispute will likely be one of claim construction: can the term "interacts," rooted in the '674 patent's disclosure of mechanical support structures, be construed broadly enough to encompass the magnetic forces alleged to be used by the accused products? The outcome of this question may determine the viability of the infringement claim for that patent.
- A key evidentiary question will be one of functional proof: beyond static images and marketing materials, what technical evidence will be presented to prove that the accused filters achieve an "effective seal...in the presence of air flow" through the specific mechanisms (e.g., bending) required by each asserted claim?