IP Law Daily More facts needed to determine whether foundational flood vents infringed patent
Tuesday, June 28, 2016

More facts needed to determine whether foundational flood vents infringed patent

By Thomas Long, J.D.

Foundational flood vent manufacturer Smart Vent, Inc., was entitled to summary judgment, in part, on its claims that competitor USA Floodair Vents, Ltd., sold vents that infringe a patent owned by Smart Vent, the federal district court in Camden, New Jersey, has determined (Smart Vent, Inc. v. USA Floodair Vents, Ltd., June 27, 2016, Simandle, J.). The accused products literally infringed the "door" limitation of the patent-in-suit, but further development of the facts was needed to decide whether other claim limitations were infringed. The court denied Smart Vent’s motion for summary judgment on its assertion that USA Floodair falsely advertised, in violation of the Lanham Act and New Jersey law, that its competing vents were certified by the National Flood Insurance Program (NFIP) and other government bodies, although the court found that USA Floodair’s ads contained statements that were literally false, as a matter of law.


Smart Vent’s U.S. Patent No. 5,944,445 ("the ’445 patent") generally described a "maintenance free flood vent" that "can be installed in new and existing crawl spaces and foundations," that "can remain in use year round," and that can be used for "air ventilation" and as an "opening for the [pressure-sensored] entry and exit of tidal flood waters." The patented flood vent consisted of an (1) "outer frame ... defining a fluid passageway ... [with] a width of a standard concrete masonry unit (CMU) [and] a height of one or two CMUs," (2) "a door pivotally mounted ... for bidirectional rotation between two open positions and a closed position ... to permit tidal water flow," and (3) "at least one catching assembly for holding the door in [a] closed position against a minimum level of [water] pressure."

Accused Product

USA Floodair’s advertisements described a vent that "provides air ventilation in a crawl space to increase air flow [all] while providing flood protection." The USA Floodair flood vent itself then "fits into an opening the size of a regular concrete block," and consists of an (1) "outer frame" with the dimensions of 10" x 18", (2) a "perforated door," and (3) "[e]ngineered openings ... designed to provide the equalization of hydrostatic flood forces on exterior walls by allowing for the automatic entry and exit [of] floodwaters."

Patent Infringement

Resolution of the infringement claims depended on whether USA Floodair’s flood vent contained (1) an "outer frame" within the construed dimensional ranges, and (2) a "recessed ... door" of the sort described by the ’445 patent and construed by the court.

"Outer frame." The court determined that factual issues precluded summary judgment with respect to Smart Vent’s literal infringement assertions based on the claim term "outer frame." The court construed "outer frame" to mean "the border that surrounds the fluid passageway, in which the door is mounted, but excluding the face plate or front portion." The court also construed the phrase "width and height of a standard concrete masonry unit (CMU)" to refer to a concrete masonry unit of the dimensions 8" by 16", +/- a 3/8 mortar joint. According to the patent claim language, the "outer frame" bears dimensions identical to "the concrete blocks that generally form foundational crawlspaces," in that it sits flush with the interior sides of the walls.

Therefore, the question of whether USA Floodair’s product infringed the ’445 patent turned on whether the accused device contained an outer frame of the dimensions 8" by 16", +/- a 3/8 mortar joint. That is, to infringe, the outer frame of USA Floodair’s product must have a horizontal distance of 16", +/- 3/8 (i.e., a measurement from 15.625" to 16.375"), such that it filled the entire fluid passageway (or, the open space left following the removal of the concrete masonry unit). There was conflicting expert evidence on this point, with each party’s expert reaching a widely disparate conclusion. Moreover, documentation submitted by Smart View was insufficient to support its view, as a matter of law. Smart View’s expert’s declaration failed to provide enough information to discern the precise starting and ending points for his calculations. Some of the materials provided by USA Floodair supported a finding that the outer frame of its flood ventmay rest within the construed dimensional limitations of the ’445 patent, but also could support USA Floodair’s position that these measurements take in account the width of the front or rear flange of the vent, thereby differing from the dimensional ranges specified by the patent.

Resolving the question of infringement on this claim term will require a factual determination into whether the outer frame of USA Floodair’s product should be measured based upon the border inserted into the exterior of the wall, or only the portion that rests within the fluid passage, the court said. This inquiry required a greater factual presentation into the precise manner in which USA Floodair’s product sat within the boundary of the fluid passageway. Accordingly, the issue could not be resolved on summary judgment.

"Door"—literal infringement. The court construed the claim term "door" to mean "a movable barrier which can open and close, including pull tabs and a grille pattern backed by screening." When placed in context, the claim construction meant that in order to infringe the construed claim term "door," the door of the USA Floodair product must be recessed from the front and back of the outer frame, and must include (1) pull tabs, (2) a grille pattern backed by screening, and (3) a ventilation opening. The only dispute between the parties was with respect to whether USA Floodair’s product contained qualifying pull tabs.

USA Floodair argued that its product could not infringe because its pull tabs extended outwardly from the front and back of the frame, and not inwardly, as claimed by the ’445 patent. The court declined to superimpose a qualification into the claim language that would require the door and its components to becompletely recessed from the front and back of the outer frame, rather than simply set inward. The claim language did not support the view that the entire depth "recessed" pull tabs would have to remain within the frame to be considered recessed.

The court found, as a matter of law, that the door of USA Floodair’s allegedly infringing flood vent literally infringed the "recessed ... door" limitation of the ’445 patent because its starting point rests within the outer frame. Therefore, Smart Vent was entitled to summary judgment on the question of whether the USA Floodair product literally infringed the construed claim limitation "recessed ... door."

Unfair Competition

Smart Vent asserted that USA Floodair engaged in unfair competition by falsely advertising that its products were certified as compliant by the Federal Emergency Management Agency (FEMA), the International Code Council (ICC), and the NFIP. Because the regulations of the NFIP required nothing more than a certification, the court said, the only advertising statements that supported Smart Vent’s unfair competition claims were those directed at FEMA compliance. USA Floodair argued that the engineering certificates associated with its products plainly complied with the relevant FEMA technical bulletin (TB-1).

TB-1 provided further detail and guidance concerning the certification process contemplated by the NFIP regulations, and it stated that "engineered openings," such as the foundational flood vents involved in this case, may be certified through an "individual certification" or an evaluation report issued by the ICC. USA Floodair’s products had not met the certification requirements of TB-1, the court said. Therefore, USA Floodair’s ads made a false statement. In addition, it was undisputed that the accused goods traveled in interstate commerce. Smart Vent was entitled to summary judgment on these two elements of its unfair competition claim.

However, there was not enough evidence with respect to the remaining elements—actual deception or a tendency to deceive consumers, materiality, and likelihood of injury to Smart Vent—for the court to grant summary judgment on the overall unfair competition claim. Smart Vent provided little more than attorney argument and speculation with respect to the harm and materiality elements, and no evidence as to deception.

The case is No. 1:10-cv-00168-JBS-KMW.

Attorneys: Anthony J. DiMarino, III, and Emmett S. Collazo (A.J. DiMarino, III, PC) for Smart Vent, Inc. Robert Mahoney (Norris, McLaughlin & Marcus, PC) and Daniel P. Burke (Daniel P. Burke & Associates, PLLC) for USA Floodair Vents, Ltd.

Companies: Smart Vent, Inc.; USA Floodair Vents, Ltd.

MainStory: TopStory Patent NewJerseyNews

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