DCT
1:18-cv-01125
Donaldson Co Inc v. Burnett Process Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Donaldson Company, Inc. (Delaware)
- Defendant: Burnett Process, Inc. (New York)
- Plaintiff’s Counsel: Bond, Schoeneck & King, PLLC; Faegre Baker Daniels LLP
- Case Identification: 1:18-cv-01125, W.D.N.Y., 10/12/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is incorporated in the State of New York and therefore "resides" in the judicial district, and because Defendant has committed acts of infringement and maintains a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s TF-0500 air filters infringe three patents related to the structure, sealing systems, and handling features of air filter cartridges.
- Technical Context: The technology concerns replaceable air filter cartridges used in industrial and commercial vehicles to protect engines from damaging particulate matter.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of infringement via a letter dated June 25, 2018, which serves as the basis for the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1999-02-26 | ’565 Patent Priority Date |
| 2003-12-22 | ’384 Patent Priority Date |
| 2004-04-30 | ’245 Patent Priority Date |
| 2004-08-31 | ’565 Patent Issue Date |
| 2012-08-14 | ’384 Patent Issue Date |
| 2013-01-01 | ’245 Patent Issue Date |
| 2018-06-25 | Plaintiff sends notice of infringement letter to Defendant |
| 2018-10-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,783,565 - "FILTER ARRANGEMENT; SEALING SYSTEM; AND METHODS"
- Patent Identification: U.S. Patent No. 6,783,565, "FILTER ARRANGEMENT; SEALING SYSTEM; AND METHODS," issued August 31, 2004 (’565 Patent).
The Invention Explained
- Problem Addressed: The patent addresses the general problem of removing particulate material from gas streams, such as engine air intakes, to prevent damage to internal mechanisms, noting that "continued improvements are sought" in filter arrangements (Compl. Ex. A, ’565 Patent, col. 1:23-42).
- The Patented Solution: The invention is a filter element arrangement featuring a "straight-through flow" media pack and an integrated sealing system. This sealing system comprises a rigid "frame construction" with an axial extension and a separate, compressible "seal member" that is supported by the frame's extension. When the filter is installed, this seal member compresses to form a radial seal against the inside of a filter housing, preventing unfiltered air from bypassing the filter media (Compl. Ex. A, ’565 Patent, Abstract; col. 2:50-60; Fig. 9).
- Technical Importance: The design combines a structurally self-supporting filter element with an integrated radial sealing system, which can simplify installation and improve sealing reliability in inline air cleaner housings (Compl. Ex. A, ’565 Patent, col. 3:5-9).
Key Claims at a Glance
- The complaint asserts infringement of one or more claims, including at least independent claim 1 (Compl. ¶30).
- Essential elements of Claim 1 include:
- A media pack with first and second opposite flow faces and a plurality of flutes, with selected flutes open at one end and closed at the other to direct airflow through the media.
- A sealing system that includes a "frame construction" and a "seal member."
- The frame construction includes an extension that projects axially from a flow face.
- The seal member is supported by this extension.
- The frame construction also has a portion (e.g., cross braces) extending across one of the flow faces.
U.S. Patent No. 8,241,384 - "SEAL, ARRANGEMENT FOR FILTER ELEMENT; FILTER ELEMENT ASSEMBLY; AND, METHODS"
- Patent Identification: U.S. Patent No. 8,241,384, "SEAL, ARRANGEMENT FOR FILTER ELEMENT; FILTER ELEMENT ASSEMBLY; AND, METHODS," issued August 14, 2012 (’384 Patent).
The Invention Explained
- Problem Addressed: The patent identifies the general need for improved filter arrangements to reduce contaminants in air streams for engines and other equipment (Compl. Ex. B, ’384 Patent, col. 1:41-50).
- The Patented Solution: The invention is an air filter cartridge constructed using a "preform" and a "molded seal component." The preform is a rigid structural piece placed at one end of the filter media pack. The molded seal component, or "overmold," is then molded in place over the junction of the preform and the media pack. This overmold serves a dual function: it adheres the preform to the media pack (the "media pack seal portion") and forms the external seal that engages with the air cleaner housing (the "air cleaner seal portion") (Compl. Ex. B, ’384 Patent, Abstract; col. 2:1-9). Figure 4 illustrates the overmold (36) sealing the preform (35) to the media pack (2).
- Technical Importance: This manufacturing approach integrates the structural support, internal sealing of components, and external housing seal into a single overmolding process, which may enhance manufacturing efficiency and the structural integrity of the final filter cartridge (Compl. Ex. B, ’384 Patent, col. 6:5-10).
Key Claims at a Glance
- The complaint asserts infringement of one or more claims, including at least independent claim 1 (Compl. ¶39).
- Essential elements of Claim 1 include:
- A media pack comprising alternating fluted and facing sheets with defined inlet and outlet flutes.
- A "preform" that includes a housing seal support section.
- A "molded seal component" that includes both an "air cleaner seal portion" and a "media pack seal portion."
- The air cleaner seal portion is configured to form a radially outwardly directed seal.
- The media pack seal portion adheres the preform to the media pack.
U.S. Patent No. 8,343,245 - "FILTER ARRANGEMENTS; HOUSINGS; ASSEMBLIES; AND, METHODS"
- Patent Identification: U.S. Patent No. 8,343,245, "FILTER ARRANGEMENTS; HOUSINGS; ASSEMBLIES; AND, METHODS," issued January 1, 2013 (’245 Patent).
- Technology Synopsis: This patent describes a filter cartridge designed for easy removal from an air cleaner housing. The invention features a "band" that is permanently mounted around the filter media pack. This band incorporates a "handle member," providing a user with a secure point to grasp for installing or removing the filter cartridge (Compl. Ex. C, ’245 Patent, Abstract; col. 2:10-14).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶48).
- Accused Features: The complaint alleges the TF-0500 filter includes a "band... permanently mounted" to the media pack that contains a "handle member," where the band is spaced and separate from the housing seal arrangement (Compl. ¶49, ¶50).
III. The Accused Instrumentality
Product Identification
The accused product is the air filter element bearing the part number TF-0500 (the "TF-0500 filter") (Compl. ¶19).
Functionality and Market Context
The complaint identifies the TF-0500 filter as an "Obround Primary Air Disposal Filter" intended for use in medium-duty commercial trucks, tractors, and other heavy equipment (Compl. p. 6). A screenshot from Defendant's website shows the TF-0500 filter, which has a non-circular media pack and a surrounding seal and support structure (Compl. p. 6). The complaint alleges that Defendant markets this product online (Compl. ¶22).
IV. Analysis of Infringement Allegations
’565 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) a media pack having first and second opposite flow faces and a plurality of flutes... selected ones of said flutes being open at said first end portion and closed at said second end portion; and selected ones of said flutes being closed at said first end portion and open at said second end portion | The TF-0500 filters include a media pack with opposite flow faces and flutes where inlet flutes are open at one end and closed at the other, and outlet flutes are closed at the first end and open at the other. | ¶32 | col. 3:1-64 |
| (b) a sealing system including a frame construction and a seal member | The TF-0500 filters include a sealing system with a frame construction and a seal member. | ¶32 | col. 5:5-7 |
| (i) said frame construction including an extension projecting axially from one of said first and second flow faces | The frame construction on the TF-0500 filters includes an extension projecting axially from a flow face. | ¶32 | col. 5:12-19 |
| (ii) said seal member being supported by said extension of said frame arrangement | The seal member on the TF-0500 filters is supported by the extension of the frame. | ¶32 | col. 5:30-34 |
| (iii) said frame construction having a portion extending across one of said first flow face and second flow face | The frame construction on the TF-0500 filters has a portion extending across a flow face. | ¶32 | col. 7:40-44 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the accused filter’s integrated seal and support structure meets the claim limitation of a "sealing system including a frame construction and a seal member," which the patent depicts as distinct components. The analysis may explore whether a single, molded component can satisfy the limitations of both a "frame construction" and a "seal member" that is "supported by" an "extension" of that frame.
- Technical Questions: The complaint provides conclusory allegations that the accused product meets these structural limitations. A factual question will be what evidence demonstrates that the TF-0500 filter contains a distinct "frame construction" that provides support to a "seal member" in the specific manner required by the claim.
’384 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) media pack comprising alternating fluted sheet and facing sheet; (i) the media pack having opposite inlet and outlet ends; (ii) the media pack defining... inlet flutes... outlet flutes... | The TF-0500 filters include a media pack of alternating fluted and facing sheets with opposite inlet and outlet ends, defining sets of inlet and outlet flutes. | ¶41 | col. 3:20-37 |
| (b) a preform including a housing seal support section having an interior surface and an opposite exterior surface | The TF-0500 filters include a preform that has a housing seal support section with interior and exterior surfaces. | ¶41 | col. 6:1-2 |
| (c) a molded seal component including an air cleaner seal portion and a media pack seal portion, the air cleaner seal portion having a surface configured to form a radially outwardly directed seal with an air cleaner, and the media pack seal portion adhering the preform to the media pack | The TF-0500 filters include a molded seal component with an air cleaner seal portion for a radially outward seal and a media pack seal portion that adheres the preform to the media pack. | ¶41 | col. 6:5-10 |
- Identified Points of Contention:
- Scope Questions: The dispute may focus on the definitions of "preform" and "molded seal component." A key question will be whether the accused product contains two distinct structures corresponding to these claim terms, or a single integrated component. The court may need to determine if a "preform" must be a fully separate, pre-existing component before the application of the "molded seal component."
- Technical Questions: The complaint does not detail the manufacturing process or specific construction of the TF-0500 filter. A factual question for discovery will be whether the accused product is made with a "preform" onto which a "molded seal component" is subsequently applied to "adhere" it to the media pack, as the claim requires.
V. Key Claim Terms for Construction
The Term: "frame construction" (’565 Patent, Claim 1)
Context and Importance: The existence of a "frame construction" as a distinct element from the "seal member" is a cornerstone of the infringement theory for the ’565 Patent. Practitioners may focus on this term because the accused product may utilize a single, co-molded structure for both sealing and support, raising the question of whether such a unitary piece can meet the two separate claim limitations.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the frame construction’s function as providing a "support structure or backing against which the seal member 250 can be compressed" (Compl. Ex. A, ’565 Patent, col. 6:8-10). This functional language could support an interpretation where any rigid part performing that function qualifies.
- Evidence for a Narrower Interpretation: The patent’s embodiments consistently show the frame construction (170) as a discrete, rigid plastic component with cross braces, onto which the compressible seal member (250) is molded (Compl. Ex. A, ’565 Patent, Fig. 6, Fig. 7). This could support a narrower definition requiring a separately identifiable, rigid structural component.
The Term: "preform" (’384 Patent, Claim 1)
Context and Importance: Infringement of the ’384 Patent hinges on the accused product containing a "preform" that is distinct from the "molded seal component." The term's definition is critical because if the accused filter is constructed as a single integrated unit without a pre-existing component, it may not infringe.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent defines a "preform part" as a component that is "formed prior to formation of the molded seal component" (Compl. Ex. B, ’384 Patent, col. 6:33-36). This suggests that any part that exists before the overmolding step could be considered a "preform."
- Evidence for a Narrower Interpretation: The detailed description and figures depict the preform (35) as a specific, standalone structural grid made of glass-filled nylon that is placed into a mold before the polyurethane overmold is created (Compl. Ex. B, ’384 Patent, col. 8:43-52; Fig. 5). This embodiment could support an argument that "preform" is limited to a distinct, pre-manufactured structural piece.
VI. Other Allegations
- Indirect Infringement: The complaint does not provide sufficient detail for analysis of indirect infringement.
- Willful Infringement: The complaint alleges willful infringement for all three asserted patents. The basis for this allegation is Defendant's alleged continued infringement after receiving actual notice via a letter from Plaintiff dated June 25, 2018 (Compl. ¶35-37; ¶44-46; ¶53-55).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural interpretation: Can the asserted claims, which recite distinct components such as a "frame construction" and a "seal member" (’565 Patent) or a "preform" and a "molded seal component" (’384 Patent), be construed to read on the accused filter's construction, which may be a more integrated or unitary design?
- A second key question will be one of definitional scope regarding the ’245 patent: Does the accused filter’s handle and band structure meet the specific claim requirement of a "band" that is "spaced from, and separate from, the frame portion of the housing seal arrangement" and includes a handle with the claimed finger-fitting geometry?
- A central evidentiary question will be one of technical proof: Beyond conclusory allegations, the case will likely depend on the evidence Plaintiff develops through discovery concerning the specific materials, internal structure, and manufacturing processes of the accused TF-0500 filter to demonstrate how it meets each recited limitation of the asserted claims.