DCT
1:21-cv-00027
MMT Inc v. Hydro Intl Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MMT, INC. d/b/a StormTree (Rhode Island)
- Defendant: Hydro Intl, Inc. (Delaware), HIL Technology, Inc. (Maine), and HYDRO INTERNATIONAL, plc (United Kingdom)
- Plaintiff’s Counsel: Feeney IP Law
- Case Identification: MMT, INC. v. Hydro Intl, Inc., et al., 1:21-cv-00027, D.R.I., 01/14/2021
- Venue Allegations: Venue is asserted based on the defendants’ contacts with Rhode Island, alleged tortious injury within the state, and an express contractual submission to jurisdiction in a Nondisclosure Agreement.
- Core Dispute: Plaintiff alleges that Defendant’s stormwater filtration products infringe two patents related to open-design bioretention systems, and further alleges that the products were developed using confidential information obtained from the Plaintiff under a Nondisclosure Agreement.
- Technical Context: The technology concerns stormwater management systems, specifically "tree filters" that use soil media and vegetation to remove pollutants from runoff, a key component of modern green infrastructure.
- Key Procedural History: The complaint alleges that the parties entered into a Nondisclosure Agreement (NDA) in 2015 to explore a strategic partnership. Plaintiff alleges it disclosed confidential technical and business information, including details about its patented and patent-pending technology. After negotiations failed, Defendant allegedly used this information to develop the accused competing product. The complaint also notes that during the prosecution of its own patent application, Defendant allegedly failed to disclose Plaintiff’s '885 Patent to the USPTO, which was later cited against Defendant’s application in a third-party submission, leading to a rejection of certain claims.
Case Timeline
| Date | Event |
|---|---|
| 2009-06-19 | Priority Date for U.S. Patent No. 8,333,885 |
| 2012-12-18 | U.S. Patent No. 8,333,885 Issued |
| 2014-10-01 | Approx. date Hydro first contacted inventor regarding partnership |
| 2015-02-24 | Parties entered into Confidentiality and Nondisclosure Agreement (NDA) |
| 2015-08-11 | Priority Date for U.S. Patent No. 10,563,392 |
| 2015-10-27 | Hydro allegedly ended negotiations to develop its own product |
| 2016-03-03 | Hydro filed its own U.S. Provisional Patent Application |
| 2016-12-14 | Hydro filed U.S. Patent Application claiming priority to its provisional |
| 2018-01-01 | Approx. date Hydro began marketing the "Hydro Bioinfiltrator" |
| 2018-04-02 | USPTO issued Office Action rejecting claims in Hydro's application based on Plaintiff's patents |
| 2020-02-18 | U.S. Patent No. 10,563,392 Issued |
| 2021-01-14 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,333,885 - "Stormwater Filtration System and Method with Pretreatment Capability," Issued Dec. 18, 2012
The Invention Explained
- Problem Addressed: The patent describes conventional "tree box filter" systems as being constructed like closed, five-sided concrete vaults ('885 Patent, col. 3:9-15). This design can lead to premature plant death by restricting root growth ("pot bound") and can become inefficient as the filter media clogs with sediment over time ('885 Patent, col. 4:41-52; col. 5:26-36).
- The Patented Solution: The invention proposes a stormwater treatment system with two key features. First, it includes a separate "pretreatment chamber" designed to capture and collect sand, sediment, and other debris before the water reaches the main filter media, thereby preventing clogging ('885 Patent, Abstract; col. 8:37-44). Second, the system has an "open bottom" and at least one "partially open side wall," which allows plant roots to grow unrestricted into the surrounding native soil and permits filtered water to infiltrate directly into the ground ('885 Patent, col. 8:1-12; Claim 1).
- Technical Importance: This approach sought to improve the long-term viability and maintenance profile of bioretention systems by separating sediment collection from the primary filtration media and by removing the physical barriers that impede natural root growth and water infiltration.
Key Claims at a Glance
- The complaint asserts infringement of "at least one claim" without specifying an independent claim (Compl. ¶41). Independent claim 1 is representative.
- Independent Claim 1 requires:
- A treatment container with a filter media and a partially open side wall.
- A "separate collection chamber" to receive stormwater before it is transferred to the container.
- A "primarily open bottomed compartment" located below the container to receive treated water.
- A drain pipe and an outlet pipe to manage water flow.
U.S. Patent No. 10,563,392 - "Stormwater Biofiltration System and Method," Issued Feb. 18, 2020
The Invention Explained
- Problem Addressed: This patent builds on the same problems as the '885 Patent, focusing on the deficiencies of "closed box" systems that confine filter media and plant roots, leading to "girdling" roots, poor tree health, and reduced infiltration efficiency ('392 Patent, col. 4:41-5:34).
- The Patented Solution: The invention refines the "open-design" concept into a "table-like structure" that lacks a bottom wall or sump entirely ('392 Patent, Claim 1; Compl. ¶43). It is defined by "at least four substantially open vertical sidewalls" and a "partial horizontal top sidewall." This minimalist frame holds the engineered filter media while maximizing contact with the surrounding native soil, allowing for unimpeded root expansion and water infiltration into the ground ('392 Patent, col. 7:40-53). Figure 3c from the patent, reproduced in the complaint, illustrates this table-like structure with open sides and an open bottom design (Compl. p. 13).
- Technical Importance: The invention represents a move away from any form of "container" toward a structural frame, with the goal of more closely mimicking natural ground conditions to improve bioretention performance and plant survivability.
Key Claims at a Glance
- The complaint asserts infringement of claims 1-15 (Compl. ¶44).
- Independent Claim 1 requires:
- A stormwater treatment system with bioretention functionality.
- Comprising "at least four substantially open vertical sidewalls."
- A "partial horizontal top sidewall" affixed to one or more sidewalls, which exposes the interior to the atmosphere.
- The system contains layers or a mixture of organic/inorganic material.
- The system "does not have a bottom wall or a sump."
- The complaint does not specify which dependent claims are asserted but reserves the right to do so.
III. The Accused Instrumentality
Product Identification
- The accused products are the "Hydro Bioinfiltrator" and its rebranded version, the "StormScape™" (Compl. ¶39, ¶40).
Functionality and Market Context
- The complaint alleges the accused product is marketed as an "open design" system (Compl. ¶39).
- A promotional brochure for the StormScape™ product, included in the complaint, describes it as having an "open base" that "won't restrict root growth" and allows for infiltration (Compl. p. 17).
- The complaint includes a side-by-side visual comparison showing the StormScape™ product as a "table-like" structure with four legs, a top frame for holding filter media, and an open bottom (Compl. p. 14).
- Transcripts from defendant's webinars are cited, in which the product is described as a "table type design" with an "open bottom and sides" to allow vegetation to "thrive more quickly" (Compl. ¶46). This marketing is alleged to position the product as a direct competitor to Plaintiff's patented open-design system in what is described as a "small, niche market" (Compl. ¶50).
IV. Analysis of Infringement Allegations
The complaint does not provide sufficient detail for analysis of infringement of the '885 Patent in a claim chart format. The allegation is that a promotional brochure for the accused "Hydro Bioinfiltrator" depicts a device that infringes at least one claim (Compl. ¶41). The complaint provides a more detailed theory for the '392 Patent.
'392 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A stormwater treatment system with bioretention functionality comprising at least four substantially open vertical sidewalls... | The accused StormScape™ product is alleged to have four legs that function as the "substantially open vertical sidewalls." A visual comparison in the complaint depicts these four leg structures. (Compl. p. 14). | ¶44 | col. 13:46-54 |
| ...and a partial horizontal top sidewall affixed to one or more of said sidewalls... | The top frame of the accused product, which contains the filter media, is alleged to be the "partial horizontal top sidewall." (Compl. p. 14). | ¶44 | col. 13:48-50 |
| ...wherein when said system is partially buried in the ground, said partial horizontal top sidewall exposes the interior of the system to the atmosphere... | The top of the accused product is shown with a grate, which exposes the internal filter media to the atmosphere to receive stormwater. (Compl. p. 14). | ¶44 | col. 13:50-52 |
| ...further wherein said system contains discrete layers of organic and inorganic or a mixture of organic and inorganic material... | The defendant’s website allegedly states that "finer particles and pollutants will be trapped on the top layer (3 inches or so) of engineered filter media." A screenshot from a product brochure shows "Engineered Media" as a component. (Compl. p. 17). | ¶44, ¶48 | col. 13:52-54 |
| ...provided said system does not have a bottom wall or a sump. | The defendant allegedly markets the product as having an "open base" and "open bottom." (Compl. ¶46). A webinar screenshot states, "Open Base Won't Restrict Root Growth." (Compl. p. 16). | ¶44, ¶46 | col. 13:53-54 |
- Identified Points of Contention:
- Scope Questions: A central dispute for the '392 Patent will be whether the four "legs" of the accused StormScape™ product meet the claim limitation of "at least four substantially open vertical sidewalls." The defendant may argue that structural legs are not "sidewalls," even if they are vertical and create an open side.
- Technical Questions: For the '885 Patent, a key question is evidentiary: does the accused product contain a "separate collection chamber" for pretreatment as claimed? The complaint provides little direct evidence on this point, instead showing a "flow-spreading baffle wall" in a product brochure (Compl. p. 17), raising the question of whether this structure is equivalent to the claimed chamber.
V. Key Claim Terms for Construction
Term: "substantially open vertical sidewalls" ('392 Patent, Claim 1)
- Context and Importance: This term is the structural heart of the '392 patent's "table-like" design. The infringement case hinges on whether the four legs of the accused StormScape™ product fall within this definition. Practitioners may focus on this term because the visual evidence shows legs, whereas the term "sidewalls" could imply panels.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent emphasizes maximizing contact with surrounding soil and allowing free root passage. An interpretation where any vertical support creating an open perimeter qualifies as a "substantially open... sidewall" may support this objective. The specification also refers to openings in sidewalls to allow for water movement and root growth beyond the container walls ('392 Patent, col. 12:20-27).
- Evidence for a Narrower Interpretation: The patent consistently refers to "sidewalls 10, 11, 12, 13" and depicts them as planar, albeit potentially open, structures in figures like FIG. 1 ('392 Patent, col. 9:61-62). An argument could be made that "sidewalls" requires a surface or panel, and that "legs" are a structurally distinct and unclaimed element.
Term: "separate collection chamber" ('885 Patent, Claim 1)
- Context and Importance: This is a key distinguishing feature of the '885 invention over prior art. To prove infringement, the plaintiff must show the accused product contains this element.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's summary describes the chamber's purpose as containing incoming sediment and debris ('885 Patent, col. 7:21-24). Plaintiff may argue that any physically partitioned area that performs this function meets the definition, regardless of its specific form.
- Evidence for a Narrower Interpretation: The figures show a distinct, walled structure (element 4 in FIG. 1) that is separate from the main filter area ('885 Patent, col. 8:37-44). Defendant may argue the term requires this degree of structural separation and containment, and that a simple "baffle" as shown in its brochure (Compl. p. 17) does not constitute a "chamber."
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by providing marketing materials, brochures, and webinars that instruct customers and installers on how to use the StormScape™ product in its intended, allegedly infringing open-design configuration (Compl. ¶46, ¶47, ¶48).
- Willful Infringement: The complaint lays a detailed foundation for willfulness. It alleges Defendant had pre-suit knowledge of the '885 Patent and the '392 patent family through direct disclosures under an NDA beginning in 2015 (Compl. ¶26, ¶27, ¶61, ¶68). The willfulness claim is further supported by allegations that Defendant used this confidential information to develop a competing product after partnership negotiations failed, and that it failed to disclose the '885 Patent to the USPTO during its own patent prosecution (Compl. ¶33, ¶36, ¶63).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "substantially open vertical sidewalls," as claimed in the '392 Patent, be construed to read on the four structural "legs" of the accused StormScape™ product, or does the term require planar, wall-like structures?
- A key evidentiary question will be one of structural presence: does the accused product contain a "separate collection chamber" as required by claim 1 of the '885 Patent, or is its "flow-spreading baffle" a structurally and functionally distinct feature? The complaint's current allegations appear stronger for the '392 Patent than for the '885 Patent.
- The case presents a significant dispute over alleged bad faith conduct. Beyond technical infringement, a central battleground will be the claims of trade secret misappropriation and willful infringement, which are based on the detailed narrative of the parties' prior business relationship under an NDA and the subsequent development of the accused product.