DCT
3:24-cv-05215
Savannah IP LLC v. Holt Group Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Savannah Intellectual Property LLC (Pennsylvania)
- Defendant: The Holt Group, Inc. (Washington)
- Plaintiff’s Counsel: Hitt Hiller Monfils Williams LLP; The Law Offices of Louis M Heidelberger PLLC
- Case Identification: 3:24-cv-05215, W.D. Wash., 03/20/2024
- Venue Allegations: Venue is alleged to be proper based on Defendant maintaining its principal place of business in Vancouver, Washington, and committing alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s construction services, which involve moisture reduction and certification, infringe patents related to systems and methods for preventing moisture damage and mold in new construction.
- Technical Context: The technology concerns methods for actively measuring and reducing moisture content in wood framing during construction before interior walls are sealed, a process intended to prevent mold and structural damage in modern buildings.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the patents-in-suit. The asserted patents share a common priority date and are part of a family that includes continuation and divisional applications, which may raise questions about claim differentiation and potential prosecution history estoppel. The patents also contain terminal disclaimers, which suggests that issues of potential double-patenting were addressed during prosecution.
Case Timeline
| Date | Event |
|---|---|
| 2003-07-16 | Priority Date for ’688 and ’023 Patents |
| 2003-07-16 | Priority Date for ’200 Patent |
| 2013-10-29 | U.S. Patent No. 8,567,688 Issued |
| 2015-12-15 | U.S. Patent No. 9,213,023 Issued |
| 2019-03-19 | U.S. Patent No. 10,234,200 Issued |
| 2024-03-20 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,567,688 - Moisture Reduction and Mold and Moisture Damage Preventative System and Method in Construction (Issued Oct. 29, 2013)
The Invention Explained
- Problem Addressed: The patent’s background section describes how modern energy-efficient construction can trap moisture from wet building materials (e.g., wood framing) inside sealed walls, creating an environment for mold growth and structural damage, as aggressive construction timelines often prevent sufficient natural drying time (ʼ688 Patent, col. 1:19-58).
- The Patented Solution: The invention is a proactive process used during construction that involves measuring moisture levels in exposed structural components, determining if they exceed a safety threshold, and, if so, actively drying the enclosed space using equipment such as blowers and dehumidifiers before the walls are sealed. The process includes follow-up measurements to confirm moisture has been reduced to an acceptable level (ʼ688 Patent, Abstract; col. 2:36-49; Fig. 1).
- Technical Importance: This approach provided a systematic, preventative method to manage moisture at a critical construction phase, shifting the industry practice from reacting to mold problems after they appear to proactively preventing their formation (ʼ688 Patent, col. 2:2-10).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶17).
- The essential elements of independent claim 1 include:
- A process for treating a space in a new home to prevent structural damage or mold growth.
- Measuring moisture content with a meter at multiple low and high locations on exposed wall studs.
- Determining if the moisture level meets a threshold that recommends drying.
- Positioning and operating at least one drying device (dehumidifier, heater, or air mover) only within the space.
- Substantially sealing off the treated space from other areas with a vapor barrier.
- The complaint also asserts dependent claim 2 and reserves the right to assert additional claims (Compl. ¶17).
U.S. Patent No. 9,213,023 - Building Moisture Content Certification System and Method (Issued Dec. 15, 2015)
The Invention Explained
- Problem Addressed: The patent identifies a need for a formal system to certify the moisture content of a building during construction to help assess the probability of future mold issues and to provide a basis for assigning liability if such problems arise (ʼ023 Patent, col. 1:10-14, 25-34).
- The Patented Solution: The invention describes a method and system for certifying moisture levels, which includes not just the physical acts of measuring and drying, but also the formal steps of comparing measurements to a threshold and then issuing a certificate that documents the moisture status. The process diagrammatically represents the issuance of a “Pass Certificate” or a “Failure Certificate” as a key output (ʼ023 Patent, Abstract; Fig. 1, steps 18, 22).
- Technical Importance: This invention added a documentation and certification layer to the moisture remediation process, creating a formal record that could be used for legal, insurance, or transactional purposes, distinguishing it from purely operational drying methods (ʼ023 Patent, col. 3:20-29).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 11 (Compl. ¶30).
- The essential elements of independent claim 1 (a method claim) include:
- A method for certifying a moisture content level.
- Measuring moisture content at multiple interior locations.
- Comparing the measurements to a threshold level.
- Drying the space with a device located within the building.
- Re-measuring to confirm the moisture content is below the threshold.
- The essential elements of independent claim 11 (a system claim) recite a system with:
- Means for measuring moisture content.
- Means for comparing the measured content with a threshold associated with a certification.
- Means for drying the space, followed by re-measurement to confirm reduction below the threshold.
- The complaint reserves the right to assert other claims (Compl. ¶30).
U.S. Patent No. 10,234,200 - Moisture Reduction and Mold and Moisture Damage Prevention System and Method in Construction (Issued March 19, 2019)
- Technology Synopsis: This patent addresses the problem of moisture being trapped in new construction, which can lead to mold and structural damage (’200 Patent, col. 1:19-34). The patented solution is a preventative process that includes measuring moisture in a wood frame before wall board is applied, determining if the measured content meets a threshold indicating drying is needed, operating drying equipment (such as a dehumidifier, heater, or air mover), and placing a vapor barrier between the treated space and other areas of the construction (’200 Patent, Abstract; col. 6:31-48).
- Asserted Claims: At least Claims 1-7, including independent claim 1 (Compl. ¶43).
- Accused Features: The complaint accuses Defendant's services for treating wood frames in new construction, which allegedly include measuring moisture content, comparing it to a threshold, operating drying devices, and placing vapor barriers (Compl. ¶45-49).
III. The Accused Instrumentality
- Product Identification: The complaint identifies the “Accused Holt Services” as services that allegedly employ the patented technology to address moisture content in construction (Compl. ¶10-11).
- Functionality and Market Context: The complaint alleges that the Accused Holt Services are processes for treating a space within a new home to prevent structural damage and mold (Compl. ¶17). The alleged functionality includes certifying moisture content in wood framing (Compl. ¶19), measuring that content at multiple interior locations with a moisture meter (Compl. ¶20), comparing measurements to a threshold (Compl. ¶21), sealing off the space and drying it with devices such as dehumidifiers, heaters, or air movers (Compl. ¶22), and then re-measuring to confirm the moisture level is below the threshold (Compl. ¶23). The complaint does not provide detail on the commercial importance or market positioning of the services beyond the general allegation that Defendant “makes, uses, sells, and offers for sale” them (Compl. ¶11).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’688 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| measuring moisture content using a moisture meter at a plurality of locations within the space, wherein said plurality of locations include low and high locations of a plurality of exposed wall studs | Holt measures, with a moisture meter, moisture content at a plurality of interior locations within a building including low and high locations at a plurality of exposed wall studs. | ¶20 | col. 6:33-37 |
| determining whether the measured moisture content meets a threshold indication recommending that drying be performed | Holt compares the measured moisture content with a threshold moisture content level. | ¶21 | col. 6:38-40 |
| positioning and operating only within the space at least one drying device for the purpose of reducing the moisture level ... wherein the at least one drying device is selected from the group consisting of a dehumidifier, a space heater, and an air moving device | Holt ... dries, with at least one drying device, a space of the building ... whereby the at least one drying device is directed into and/or located within the space ... and wherein the drying devices may include a dehumidifier, space heater and/or air moving device. | ¶22 | col. 6:41-48 |
| further comprising the step of substantially sealing off the space being treated with a vapor barrier relative to other space within said new home | Holt seals off the space to be treated with vapor barrier relative to other space within the building... | ¶22 | col. 6:49-52 |
- Identified Points of Contention:
- Scope Question: Claim 1 requires “substantially sealing off the space... with a vapor barrier.” A potential point of contention may be the degree of sealing required by the term “substantially” and whether the materials and methods allegedly used by the Defendant meet this limitation as it is construed.
- Technical Question: The claim requires “operating only within the space at least one drying device.” The complaint alleges the drying device is “directed into and/or located within the space” (Compl. ¶22). This phrasing raises the question of whether a device physically located outside the treated space but “directed into” it would satisfy the “only within the space” limitation.
’023 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for certifying a moisture content level... measuring, with a moisture meter, moisture content at a plurality of interior locations within a building | Holt's System and Accused Services include certifying a moisture content level... [and] include measuring, with a moisture meter, moisture content at a plurality of interior locations... (Compl. ¶32-33). | ¶32, ¶33 | col. 8:40-42 |
| comparing the measured moisture content with a threshold moisture content level | Holt's System and Accused Services include comparing measurements ... with a threshold moisture content level. | ¶34 | col. 8:43-44 |
| drying, 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 | Holt's System and Accused Services include drying, with at least one drying device, a space of the building ... wherein the at least one drying device is located within the building... | ¶35 | col. 8:45-50 |
| 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... | Holt's System and Accused Services include measuring, with the moisture meter, moisture content at one or more... locations to confirm that the moisture content is below the threshold... | ¶36 | col. 8:51-55 |
- Identified Points of Contention:
- Scope Question (Claim 11): Independent claim 11 of the ’023 Patent is a means-plus-function claim, reciting “means for measuring,” “means for comparing,” and “means for drying” ('023 Patent, col. 8:56-67). The infringement analysis for this claim will require the court to first identify the corresponding structures disclosed in the specification (e.g., a “GE Protimeter MMS Plus” for measuring) and then determine whether the accused services utilize identical or equivalent structures to perform the claimed functions.
- Technical Question (Claim 1): Claim 1 requires the step of “certifying a moisture content level.” The complaint alleges that Holt performs this step (Compl. ¶32). A key question for the court will be to construe the meaning of “certifying.” The inquiry will focus on whether providing a report or guarantee is sufficient, or if the patent requires the creation of a formal document explicitly labeled as a “certificate,” as depicted in the patent's own figures ('023 Patent, Fig. 1).
V. Key Claim Terms for Construction
’688 Patent
- The Term: “substantially sealing off” (Claim 1)
- Context and Importance: The scope of this term is critical to infringement, as it defines the required degree of isolation for the treatment area. Practitioners may focus on this term to dispute whether temporary measures satisfy the claim, or if a more robust and complete seal is required to be “substantial.”
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests flexibility, describing the sealing of openings “with some sort of vapor barrier (for example, plastic sheeting in roll form and duct tape to seal the sheeting...)” ('688 Patent, col. 5:21-26). This could support an interpretation that common, non-hermetic methods are sufficient.
- Evidence for a Narrower Interpretation: The term “vapor barrier” itself implies a certain level of performance in blocking moisture transfer. A defendant could argue that “substantially” requires a seal effective enough to maintain a significant humidity or pressure differential, which may demand more than what is minimally described in the patent's examples.
’023 Patent
- The Term: “certifying” (Claim 1) / “moisture content level certification” (Claim 11)
- Context and Importance: This term is central to the novelty of the ’023 Patent, distinguishing it from a mere drying method. Its construction will determine what actions meet the claim. Practitioners may focus on this term to argue whether a simple data report is sufficient, or if a formal declaration or a document explicitly titled “certificate” is necessary.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s background discusses the need to “identify the probability of mold growth claims” and “certify this moisture state,” which could support a view that any formal communication of moisture status for liability or informational purposes constitutes “certifying” ('023 Patent, col. 1:12-14, 59-60).
- Evidence for a Narrower Interpretation: The specification repeatedly and specifically describes issuing a “moisture content level pass certificate” or “failure certificate” ('023 Patent, col. 3:9-15). Figure 1 explicitly shows process boxes for “issue Moisture Content Level Pass Certificate” (18) and “issue Moisture Content Level Failure Certificate” (22), strongly suggesting that “certifying” requires the creation of a formal, designated document.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement and contributory infringement for all three patents, asserting that by making, using, and selling the Accused Holt Services, Defendant causes its employees or customers to directly perform the steps of the patented methods (Compl. ¶25, 38, 51).
- Willful Infringement: For each patent, the complaint alleges that Defendant “had actual notice” of the patents and their infringement prior to the lawsuit and nonetheless continued its infringing activities. This alleged knowledge is framed as “willful, deliberate, and in reckless disregard” of Plaintiff's rights, forming the basis for a claim for enhanced damages under 35 U.S.C. § 284 (Compl. ¶27, 40, 53).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: what specific actions and documentary outputs constitute “certifying a moisture content level” as required by the '023 Patent? The court's construction of this term will be pivotal in determining whether the Accused Holt Services perform this claimed step, or if the patent requires a more formal act, such as the issuance of a document explicitly labeled a “certificate” as suggested by the patent's own figures.
- A second central question will concern claim construction in light of prosecution history: The patents-in-suit originate from a common application and are subject to terminal disclaimers. This shared history may give rise to arguments of prosecution history estoppel or require a narrow construction to preserve validity over prior art and each other. The court's analysis of the prosecution file will be critical in defining the enforceable scope of key terms like “substantially sealing off” (’688 Patent) and the means-plus-function limitations (’023 Patent).
- A key evidentiary question will be one of factual proof: what evidence will establish the precise operational details of the “Accused Holt Services”? While the complaint's allegations mirror the claim language, the outcome will depend on factual evidence proving whether Holt’s actual procedures, equipment, and customer deliverables align with the claim limitations as construed by the court, particularly regarding the use of a “vapor barrier” ('688 and '200 Patents) and the location of drying equipment ('688 and '023 Patents).