DCT
3:19-cv-01420
Savannah IP Inc v. Performance Insulation & Energy Services Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Savannah IP, Inc. (Oregon)
- Defendant: Performance Insulation & Energy Services, Inc. (Oregon)
- Plaintiff’s Counsel: Schwabe, Williamson & Wyatt, P.C.
- Case Identification: 3:19-cv-01420, D. Or., 09/05/2019
- Venue Allegations: Venue is alleged to be proper in the District of Oregon because Defendant maintains its principal place of business in the district, has an additional place of business there, and has allegedly committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s construction-site moisture reduction services infringe patents related to methods for measuring, actively drying, and verifying the moisture content of wood framing before it is enclosed.
- Technical Context: The technology addresses the risk of mold and structural damage caused by trapping excess moisture within the walls of new buildings, a problem exacerbated by modern, tightly-sealed construction practices.
- Key Procedural History: The complaint states that Plaintiff notified Defendant of the alleged infringement of the ’023 Patent via letters dated November 16, 2016, and January 18, 2018, which included an offer to license the technology. This alleged pre-suit notice forms the basis for the willfulness claims.
Case Timeline
| Date | Event |
|---|---|
| 2003-07-16 | Priority Date for ’023 and ’200 Patents |
| 2015-12-15 | U.S. Patent No. 9,213,023 Issues |
| 2016-11-16 | Plaintiff sends first notice letter regarding '023 Patent |
| 2018-01-18 | Plaintiff sends second notice letter |
| 2019-03-19 | U.S. Patent No. 10,234,200 Issues |
| 2019-09-05 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,213,023, “Building Moisture Content Certification System and Method,” issued December 15, 2015
The Invention Explained
- Problem Addressed: The patent’s background section notes that modern construction demands often require builders to enclose wood framing quickly, which can trap moisture from rain, snow, or wet materials inside the walls. This creates a high risk for mold growth and structural damage, leading to costly remediation and legal issues (’023 Patent, col. 1:15-53).
- The Patented Solution: The invention proposes a formalized system for measuring and certifying the moisture content of a building's interior components during construction. The process involves taking moisture readings, comparing them to a pre-defined acceptable level, and then issuing a "pass" or "fail" certificate based on the results (’023 Patent, Abstract; Fig. 1). The patent also describes an associated method for actively drying a structure if it fails the initial moisture test, using equipment like blowers and dehumidifiers (’023 Patent, col. 6:10-25).
- Technical Importance: This system provides builders and owners with a verifiable record that moisture levels were proactively managed and reduced to a safe level at a critical point in construction, potentially mitigating liability for future mold or moisture issues (’023 Patent, col. 3:21-29).
Key Claims at a Glance
- The complaint asserts "one or more claims," with the factual allegations mapping to independent claim 1 (Compl. ¶15, ¶¶17-21).
- Independent Claim 1 recites a method with the essential elements of:
- Measuring moisture content at a plurality of interior locations with a moisture meter.
- Comparing the measured moisture to a threshold level.
- Drying a space in the building with at least one drying device located within the building.
- Re-measuring moisture content to confirm it is below the threshold.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 10,234,200, “Moisture Reduction and Mold and Moisture Damage Preventative System and Method in Construction,” issued March 19, 2019
The Invention Explained
- Problem Addressed: Similar to its parent patent, the ’200 Patent addresses the problem of residual moisture in new construction projects. It frames the issue as one that has historically been handled in a "reactive fashion," with remedies only applied after mold has already appeared (’200 Patent, col. 2:7-11).
- The Patented Solution: The invention details a preventative and curative process for treating a wood frame after the roof and windows are installed but before insulation and wallboard are added. The method involves measuring moisture, determining if it exceeds a threshold, and if so, deploying specific drying equipment (dehumidifiers, heaters, air movers) within a sealed-off space to actively reduce moisture levels (’200 Patent, Abstract; col. 4:40-52). A key step in the process is the placement of a vapor barrier to isolate the treatment area (’200 Patent, col. 5:33-40).
- Technical Importance: This method provides a structured, proactive treatment applied during a specific construction phase to ensure the building's frame is sufficiently dry before being sealed, thereby reducing the likelihood of future mold growth (’200 Patent, col. 4:40-46).
Key Claims at a Glance
- The complaint asserts "one or more claims," with the factual allegations mapping to independent claim 1 (Compl. ¶28, ¶¶30-34).
- Independent Claim 1 recites a process with the essential elements of:
- Measuring the moisture content of a wood frame at multiple locations.
- Determining if the moisture level meets a threshold that recommends drying.
- Placing and operating at least one drying device (dehumidifier, space heater, or air mover) to reduce the moisture level.
- Placing at least one vapor barrier between the treated space and other spaces in the building.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
- Product Identification: The "Accused Performance Services," which are processes offered by the Defendant for treating moisture in new construction projects (Compl. ¶8-9).
- Functionality and Market Context: The complaint alleges that the Accused Performance Services involve employing patented technology for reducing the moisture content of wood framing (Compl. ¶8-9). The alleged functionality includes measuring moisture levels with a meter at multiple locations, comparing the readings to a threshold, using drying devices such as dehumidifiers and heaters to reduce moisture, and re-measuring to confirm the reduction (Compl. ¶18-21). For the ’200 Patent, the complaint specifically alleges that the service includes treating a wood frame before wallboard is applied and placing a vapor barrier to isolate the space being dried (Compl. ¶30, ¶34). The complaint does not provide further detail on the market position or commercial importance of these services.
- Evidence: No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’023 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| measuring, with a moisture meter, moisture content at a plurality of interior locations within a building | Performance measures, with a moisture meter, moisture content at a plurality of interior locations within a building. | ¶18 | col. 5:32-37 |
| comparing the measured moisture content with a threshold moisture content level | Performance compares the measured moisture content with a threshold moisture content level. | ¶19 | col. 6:4-9 |
| drying, with at least one drying device, a space of the building in order to reduce the moisture content...wherein the at least one drying device is located within the building while drying the space | Performance dries, with at least one drying device, a space of the building...wherein the at least one drying device is located within the building while drying the space. | ¶20 | col. 6:10-18 |
| measuring, with the moisture meter, moisture content at one or more of the plurality of interior locations to confirm that the moisture content is below the threshold moisture content level | Performance measures...moisture content at one or more of the plurality of interior locations to confirm that the moisture content is below the threshold moisture content level. | ¶21 | col. 6:49-54 |
’200 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| measuring moisture content of the wood frame using a moisture meter within a plurality of locations within said space | Performance measures the moisture content of the wood frame using a moisture meter within a plurality of locations within the space. | ¶31 | col. 4:52-61 |
| determining whether the measured moisture content meets a threshold indication recommending that drying be performed | Performance determines whether the measured moisture content meets a threshold indication recommending that drying be performed. | ¶32 | col. 4:62-67 |
| placing least one drying device in communication with said space and operating it...wherein the at least one drying device is selected from the group consisting of a dehumidifier, a space heater, and an air moving device | Performance places at least one drying device...and operates it...wherein the at least one drying device is a dehumidifier, a space heater, or an air moving device. | ¶33 | col. 6:40-45 |
| further comprising the step of placing at least one vapor barrier between said space and other space located within said new construction | Performance further places a vapor barrier between the space and other spaces located within the new construction. | ¶34 | col. 5:33-40 |
- Identified Points of Contention:
- Factual Basis: The complaint’s infringement allegations closely track the language of the asserted claims. A central point of contention will likely be the factual evidence supporting each alleged step, as the complaint itself offers no specific documentation, marketing materials, or operational details of the Accused Performance Services.
- Scope Questions: The ’023 Patent is heavily oriented around "certification" in its title, abstract, and specification. Although claim 1 does not explicitly recite issuing a certificate, a question may arise as to whether Defendant's alleged act of "certif[ying] a moisture content level" (Compl. ¶17) is equivalent to the comprehensive certification system described in the patent, or if the claim should be interpreted more narrowly in light of that context.
V. Key Claim Terms for Construction
Term from ’200 Patent, Claim 1: "vapor barrier"
- Context and Importance: This term appears in the final element of independent claim 1 of the ’200 Patent and is a specific, affirmative step required by the method. The allegation that Defendant performs this step is made without supporting detail (Compl. ¶34). Practitioners may focus on this term because its definition and the evidence of its use will be critical to proving infringement; if Defendant's service does not include placing a "vapor barrier" as construed, infringement of this claim fails.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself uses the general term "at least one vapor barrier between said space and other space" (col. 6:46-48), which could arguably encompass any material that substantially retards the passage of water vapor and is placed to isolate the treatment area.
- Evidence for a Narrower Interpretation: The specification provides a specific, concrete example of what constitutes a vapor barrier in the context of the invention: "plastic sheeting in roll form and duct tape to seal the sheeting to close off the opening" (’200 Patent, col. 5:35-38). This explicit example could be used to argue for a narrower construction, requiring an item specifically brought to the site and installed to seal the space for treatment.
VI. Other Allegations
- Indirect Infringement: The complaint makes boilerplate allegations of induced and contributory infringement for both patents, stating Defendant's infringement occurs by "making, using, licensing, selling, [and] offering for sale, the Accused Performance Services" (Compl. ¶23, ¶36). The complaint does not specify which party is being induced to infringe or provide specific facts to support an inducement theory, such as alleging that Defendant instructs its customers to perform certain claimed steps.
- Willful Infringement: The complaint alleges willful infringement of both patents (Compl. ¶25, ¶38). For the ’023 Patent, this allegation is supported by specific claims of pre-suit knowledge based on two notice letters sent in 2016 and 2018 (Compl. ¶11). For the ’200 Patent, issued after these letters, the complaint alleges Defendant had "actual notice" of the patent and its infringement without specifying the date or method of that notice, beyond a general awareness of Plaintiff's patenting efforts (Compl. ¶11, ¶35).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidence: The complaint's infringement counts are composed of conclusory allegations that mirror the patent claims. A key question is what non-conclusory evidence Plaintiff will produce to demonstrate that Defendant's services, as actually performed, meet every limitation of the asserted claims, particularly the "placing at least one vapor barrier" step of the ’200 Patent.
- A second issue will be one of willfulness: Plaintiff has alleged sending two pre-suit notice letters regarding the ’023 Patent. This raises a critical question for trial: did Defendant's continued operation of its services after receiving these letters constitute objective recklessness or a deliberate disregard of a known risk of infringement, sufficient to justify an award of enhanced damages under 35 U.S.C. § 284?
- Finally, the case may present a question of claim scope: For the ’200 Patent, the definition of "vapor barrier" will be pivotal. The core question will be whether the term is limited to the specification's example of temporary "plastic sheeting" or if it can be construed more broadly to cover other materials that might serve to isolate a space during treatment.