SMART VENT INC. v. USA FLOODAIR VENTS, LTD.
Filing
177
OPINION. Signed by Chief Judge Jerome B. Simandle on 6/27/2016. (dmr)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
SMART VENT, INC.,
Plaintiff,
HONORABLE JEROME B. SIMANDLE
Civil Action No.
10-168 (JBS/KMW)
v.
USA FLOODAIR VENTS, LTD.,
OPINION
Defendant.
APPEARANCES:
Anthony J. DiMarino, III, Esq.
Emmett S. Collazo, Esq.
A.J. DIMARINO, III, PC
57 Euclid Street, Suite A
Woodbury, NJ 08096
Counsel for Plaintiff
Robert Mahoney, Esq.
NORRIS, MCLAUGHLIN & MARCUS, PC
721 Route 202 206
PO Box 5933
Bridgewater, NJ 08807
-andDaniel P. Burke, Esq.
DANIEL P. BURKE & ASSOCIATES, PLLC
240 Townsend Square
Oyster Bay, NY 11788
Counsel for Defendant
SIMANDLE, Chief Judge:
Contents
INTRODUCTION.............................................. 2
FACTUAL AND PROCEDURAL BACKGROUND........................ 10
The NFIP Regulations on Flood Vents .................... 10
FEMA Technical Bulletin 1, or TB-1 ..................... 12
Smart Vent’s Flood Vent and its ICC-ES Evaluation Report 16
USA Floodair’s Flood Vent and its Individual Certification
Process ..................................................... 18
Litigation in this District and Markman Decision ....... 23
PRELIMINARY ISSUES ..................................... 25
Admissibility of Coulbourne Report ..................... 26
1.
Daubert Standard ...................................... 26
2.
Mr. Coulbourne’s Report is Admissible ................. 28
The Parties’ Stipulation on the term “Recessed” ........ 34
Admissibility of the Supplemental Declarations of Diane
Bergaglio and Neil Opatkiewicz .............................. 37
STANDARD OF REVIEW APPLICABLE TO THE PARTIES’ CROSS-MOTIONS
FOR SUMMARY JUDGMENT.......................................... 40
Summary Judgment, Generally ............................ 40
Patent Infringement Standard ........................... 42
DISCUSSION............................................... 45
Patent Infringement Issues ............................. 45
1. Factual Issues Preclude Summary Disposition of the
Parties’ Positions on Literal Infringement of the Claim Term
“Outer Frame” ............................................. 46
2. USA Floodair’s Product Literally Infringes the Construed
Claim Term “Door” ......................................... 51
Unfair Competition Issues .............................. 57
CONCLUSION............................................... 64
INTRODUCTION
In this patent infringement and unfair competition action,
Plaintiff Smart Vent, Inc. (hereinafter, “Plaintiff” or “Smart
Vent”), advances its position that the distribution of Defendant
USA Floodair Vents, Ltd.’s (hereinafter, “Defendant” or “USA
Floodair”) “certified” flood vents infringes the patent covering
2
Smart Vent’s NFIP-certified1 foundational flood vent, U.S. Patent
No. 5,944,445 (hereinafter, the “’445 patent” or the “original
Patent”), as amended during ex parte reexamination (hereinafter,
the “’445 C1 patent” or the “Patent”), and amounts to unfair
competition because USA Floodair “falsely” advertises its vents
as FEMA, ICC, and NFIP-certified.2
Smart Vent’s Patent generally describes 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.”
(’445 Patent at 2:57-62.)
The flood vent taught by
the asserted claims, in turn, consists of an (1) “outer frame
1
The NFIP, or National Flood Insurance Program, “enables
property owners in participating communities to purchase flood
insurance” at discounted rates in exchange for compliance with
“State and community floodplain management regulations that seek
to reduce future flood damage.” (Compl. at ¶ 9.) As relevant
here, these regulations require that foundational flood vents
meet certain criteria based upon the square footage of the
crawlspace and the structure of the foundation, among other
factors. (Id. at ¶ 11.)
2 In the aftermath of Defendant’s request for reexamination of
claims 1-11 of the ’445 patent, the U.S. Patent & Trademark
Office (hereinafter, the “PTO”) cancelled claims 2 and 7 of the
original Patent, amended claims 1, 3, 4, 5, 6, and 8, and added
claims 12-15. See Smart Vent, Inc. v. USA Floodair Vents, Ltd.,
No. 10-168 JBS, 2014 WL 6882281, at *1 (D.N.J. Dec. 3, 2014), on
reconsideration in part, 2015 WL 5009213 (D.N.J. Aug. 21, 2015).
Given that the asserted claims flow from the added claims on the
reexamination certificate, the Court will, in the interests of
simplicity, refer to the reexamined patent, the ’445 patent C1,
as the ’445 patent.
3
... 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.”
(Id. at 3:1-15.)
The advertisements for the foundational flood vent produced
by USA Floodair similarly describe a vent that “provides air
ventilation in a crawl space to increase air flow [all] while
providing flood protection.”
(Ex. G to Coulbourne Dec.)
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.”
(Id.)
Following a lengthy period of pretrial discovery, the
parties now cross-move for summary judgment on the issues of
infringement and unfair competition [see Docket Items 141 &
4
153],3 but agree that the disposition of the infringement portion
of this litigation turns, in its entirety, upon whether the
flood vent of USA Floodair meets (literally or equivalently) two
limitations in claim 15 of the ’445 patent.4
(See, e.g., Def.’s
Br. at 1-2, 8-18; Pl.’s Opp’n at 6-22; Def.’s Reply at 1-3.)
More specifically, resolution of the infringement aspect of this
case hinges upon whether USA Floodair’s flood vent contains (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 this Court in its Markman decision.
See
Smart Vent, Inc. v. USA Floodair Vents, Ltd., No. 10-168, 2014
3
In addition, USA Floodair moves to strike the declaration of
Smart Vent’s infringement and engineering expert on the grounds
discussed below. [See Docket Item 158.]
4 In other words, the parties substantively agree that USA
Floodair’s accused product meets all elements of claim 15, other
than the “outer frame” and “door” limitations, and only argued
these limitations throughout their voluminous summary judgment
submissions. Despite this agreement, during oral argument, USA
Floodair argued, for the first time, that the claim term
“screen” provides an additional infringement issue in this
action. Nevertheless, USA Floodair made no mention of this
claim term in its summary judgment briefing (see generally
Def.’s Br.; Def.’s Reply), nor identified this claim term in its
non-infringement contentions (which it last updated in October
2015). (See Ex. S to DiMarino Dec. (reproducing USA Floodair’s
“UPDATED, POST REEXAMINATION NONINFRINGEMENT CONTENTIONS AND
RESPONSES,” and arguing non-infringement of the claim terms
“outer frame” and “door”).) As a result, USA Floodair has
waived any non-infringement argument relative to the term
“screen.” See L. PAT. R. 3.7; see also LMT Mercer Grp., Inc. v.
Maine Ornamental, LLC, No. 10-4615, 2014 WL 284238, at *5-*8
(D.N.J. Jan. 24, 2014) (describing the framework for amending
contentions under the Local Patent Rule 3.7).
5
WL 6882281, at *1 (D.N.J. Dec. 3, 2014), on reconsideration in
part, 2015 WL 5009213 (D.N.J. Aug. 21, 2015) (collectively, the
“Markman decision”).5
In resolving these issues, however, the parties advance
diametrically opposed positions.
USA Floodair, on the one hand,
takes the position that its product stops short of any literal
infringement, because (1) the dimensions of its outer frame
differ from the construed dimensional ranges of the ’445 patent,
and (2) because the pull tabs of its door “always” protrude
“outwardly beyond the front or the back of the outer frame,”
rather than being fully “recessed” inwardly from the outer
frame.
(Def.’s Br. at 10-12; Def.’s Reply at 6-22.)
Beyond
that, USA Floodair claims that the circumstances of the
reexamination precludes Smart Vent from relying upon doctrine of
equivalents infringement.
(See generally id.)
Smart Vent, by
contrast, advances the view that USA Floodair’s product
literally infringes the “outer frame” and/or “door” limitations
of the ’445 patent, (1) because the outer frame of the accused
device squarely matches the construed dimensions of the patented
invention, and (2) because the door sits inwardly from the outer
5
On reconsideration, the Court narrowed, slightly, its initial
construction of the claim terms “width and height of a standard
concrete masonry unit (CMU)” and “door.” See Smart Vent Inc. v.
USA Floodair Vents, Ltd., No. 10-168, 2015 WL 5009213 (D.N.J.
Aug. 21, 2015).
6
frame and only protrudes because of USA Floodair’s inclusion of
“excessively large pull tabs.”
(Pl.’s Opp’n at 8-22.)
Turning then to the unfair competition aspect of this
litigation, the parties again put forth widely disparate
positions.
USA Floodair, for its part, argues that Smart Vent
cannot demonstrate any unfairness in its “certified” vent
claims, because “licensed, professional engineers” have
confirmed that the vents “exceed the [actual] requirements of
the NFIP,” as well as the related technical bulletins.
Reply at 25-27.)
(Def.’s
Smart Vent, by contrast, takes the view that
USA Floodair’s advertisements of “FEMA, ICC and NFIP State
Engineered Certified Complaint Vents” plainly violate federal
and state unfair competition laws, because the relevant
regulations require an Evaluation Report issued by the
International Code Council Evaluation Service (hereinafter, an
“ICC-ES Evaluation Report”), not an individual certification in
the form provided by USA Floodair.
(Pl.’s Opp’n at 28-33.)
In order to place the parties’ positions in the proper
context, the Court notes that the language of claim 15 recites,
in relevant part, a “flood gate for use in an enclosed space”
that includes:
an outer frame having side walls defining a fluid
passageway therethrough, wherein the outer frame has a
width of a standard concrete masonry unit (CMU), a
height of one or two CMUs;
7
a door pivotally mounted in said frame for
bidirectional rotation between two open positions and
a closed position therebetween to permit tidal water
flow therethrough, wherein the door is recessed[6] from
the front and back of the outer frame, and includes a
ventilation opening.
(’445 patent at 3:1-11 (emphases added).)
In construing this
asserted claim, the Court reached, in relevant part, the
following constructions:
Term
Claim Construction
“width and height of a
standard concrete masonry unit
(CMU)”
“outer frame”
8” by 16”, +/- a 3/8” mortar
joint.
“door”
a movable barrier which can
open and close, including pull
tabs and a grille pattern
backed by screening
the border that surrounds the
fluid passageway, in which the
door is mounted, but excluding
the face plate or front
portion.
6
The Court did not, however, construe the term “recessed,”
because the parties agreed during the Markman hearing that the
term required no construction, and instead meant “‘set inwardly
from the front and the back.’” Smart Vent, Inc., 2014 WL
6882281, at *11 n.10. Indeed, during the Markman hearing,
counsel for Plaintiff specifically proposed that “recessed” be
defined as “set inwardly from” the front and the back of Smart
Vent’s patented flood vent—a definition the Court adopted with
the consent of the parties. (Markman Tr. at 53:6-55:2.)
Nevertheless, in the wake of the Markman hearing (at which time
Smart Vent placed emphasis on the parties’ agreement on the term
“recessed”), USA Floodair filed a letter, claiming that it made
no concession on the meaning of the term “recessed,” and
requesting that this Court’s nearly two-year old Markman
decision “be amended to correct [a] clerical error” concerning
the meaning of the term “‘recessed.’” [Docket Item 175.] The
Court, however, finds the position of USA Floodair without merit
for the reasons discussed below.
8
Against that backdrop, in resolving the parties’ crossmotions for summary judgment, the Court must address two
distinct series of questions.
First, as to the infringement
aspects of this action, the Court must determine whether the
undisputed evidence demonstrates only one conclusion regarding
infringement, namely, that USA Floodair’s flood vent product
meets the construed claim limitations “outer frame” and/or
“door.”
Second, the Court must, through the prism of a two-part
inquiry, consider whether USA Floodair’s flood vent satisfies
regulatory requirements for NFIP-certified flood vents.
More
specifically, the Court must determine whether the NFIP
regulations and related technical bulletins permit an individual
certification of compliance (the position advanced by USA
Floodair), or narrowly require only an ICC-ES Evaluation Report
(the competing position staked out by Smart Vent).
From that
conclusion, the Court must go on to consider whether a triable
issue exists on Smart Vent’s claim that USA Floodair “falsely”
and/or “misleadingly” advertised its flood vents as FEMA, ICC,
and NFIP-certified.
For the reasons that follow, Smart Vent’s motion for
summary judgment will be granted in part and denied in part on
the issue of infringement and granted in part and denied in part
on the issue of unfair competition.
9
USA Floodair’s motions for
summary judgment and to strike will, by contrast, be denied in
their entirety.7
FACTUAL AND PROCEDURAL BACKGROUND8
The NFIP Regulations on Flood Vents
In 1968, Congress enacted the National Flood Insurance
Program (hereinafter, the “NFIP”) as part of the National Flood
Insurance Act, 42 U.S.C. §§ 4001-4131 (hereinafter, the “NFIA”),
in order to provide previously unavailable flood insurance
protection to property owners in flood-prone areas.
(See
generally Pl.’s SMF at ¶¶ 13-15; Def.’s RSMF at ¶¶ 13-15.)
More
specifically, the NFIA authorized the Federal Emergency
Management Agency (hereinafter, “FEMA”) “to establish and carry
out a [unified and subsidized] national flood insurance program”
that would allow “interested persons to purchase insurance”
against any losses “arising from any flood occurring in the
7
The Court conducted oral argument upon the pending motions on
May 19, 2016, at which time the Court received a model of USA
Floodair’s vent as an exhibit (hereinafter, “Def.’s Ex. 1”).
8 The Court distills this undisputed version of events from the
parties’ statements of material facts, affidavits, and exhibits.
The Court disregards, as it must, those portions of the parties’
statements of material facts that lack citation to relevant
record evidence (unless admitted by the opponent), contain
improper legal argument or conclusions, or recite factual
irrelevancies. See generally L. CIV. R. 56.1(a); see also Kemly
v. Werner Co., ___ F. Supp. 3d ____, 2015 WL 8335030 (D.N.J.
Dec. 8, 2015) (disregarding portions of the parties’ statements
of material facts on these grounds); Jones v. Sanko Steamship
Co., Ltd., ___ F. Supp. 3d ____, 2015 WL 8361745 (D.N.J. Dec. 8,
2015) (same).
10
United States.”
42 U.S.C. § 4011(a).
In other words, the NFIA
designated FEMA as the administrator of the NFIP program, and
vested it with the authority to develop and promulgate
regulations relative to flood plain management criteria.
See,
e.g., 42 U.S.C. § 4014.
As relevant here, in order to qualify for the federallysubsidized flood insurance, the NFIP regulations enacted by FEMA
impose an array of structural requirements on (1) new
residential construction, (2) the repair of substantially
damaged buildings, and (3) the improvement of existing buildings
in flood hazard areas.
(See Ex. H to Graham Dec.)
More
specifically, these regulations
[r]equire, for all new construction and substantial
improvements, that fully enclosed areas below the
lowest floor that are ... subject to flooding ... be
designed to automatically equalize hydrostatic flood
forces on exterior walls by allowing for the entry and
exit of floodwaters.
44 C.F.R. § 60.3(c)(5) (emphasis added).
In other words, the
regulations require that foundational spaces (or, the lower
levels of dwellings) have flood vents that permit the automatic
entry and exit of water.
See id.
The “designs” for these flood
vents must, in turn,
either be certified by a registered professional
engineer or architect or meet or exceed the following
minimum criteria: A minimum of two openings having a
total net area of not less than one square inch for
every square foot of enclosed area subject to flooding
shall be provided.
11
44 C.F.R. § 60.3(c)(5) (emphasis added).
Thus, the NFIP
regulations require, on their face, only a certification of
compliance with net area requirements.
See id.
FEMA Technical Bulletin 1, or TB-1
In its capacity as administrator of the NFIP, in August
2008, FEMA published a Technical Bulletin,9 “Openings in
Foundation Walls and Walls of Enclosures Below Elevated
9
Although the parties extensively rely upon the requirements
identified in TB-1 and attempt at least to operate within its
tenets, USA Floodair disputes whether the technical bulletin
carries with it the force of law. (See Def.’s SMF at ¶ 32
(“FEMA technical bulletins do not create regulations.”).) Smart
Vent argues, by contrast, that the interpretation FEMA offers of
its own regulations in TB-1 “provides legal requirements.”
(Pl.’s RSMF at 7 32.) Smart Vent’s argument, however, misses
the mark, because TB-1 states, on its face, that it does “not
create regulations” and instead provides only “specific guidance
for complying with the requirements of existing NFIP
regulations.” (Ex. H to Graham Dec. at 28.) TB-1 then directs
“[u]sers” to consult, if necessary, the actual legal
requirements of the NFIP under 44 C.F.R. § 60.3. (Id.) In
other words, the guidance provided in TB-1 provides only FEMA’s
persuasive interpretation of the NFIP, but stops short of
creating new legal requirements or otherwise heightening the
regulations expressed in 44 C.F.R. § 60.3. As a result, Smart
Vent cannot point to TB-1 as a controlling regulation, nor can
the Court find USA Floodair in breach of the NFIP solely on
account of its failure to follow TB-1’s guidance, because TB-1
directs itself only to guidance, not binding requirements.
Stated differently, the Court cannot find anything false or
misleading in USA Floodair’s advertisement of an NFIP-compliant
flood vent, simply because its vents fall short of the guidance
provided in TB-1, because its certification process otherwise
comports with the limited facial requirements of 40 C.F.R. §
60.3(c)(5). That determination, however, leaves unresolved the
question of whether USA Floodair “falsely” or “misleadingly”
advertised its products as TB-1 compliant—a circumstance that,
in turn, provides the basis, at least in part, of Smart Vent’s
unfair competition claims.
12
Buildings in Special Flood Hazard Areas in accordance with the”
NFIP” (hereinafter, “TB-1”), in an effort to “explain[] the NFIP
requirements for flood openings and [to] provide[] guidance for
prescriptive (non-engineered) and engineered openings.”10
(Ex. H
to Graham Dec. at 1.)
More specifically, TB-1 provides further detail and
guidance concerning the certification process contemplated by
the NFIP regulations, and states that “engineered openings,”11 as
here, may be certified through an “individual certification” or
an “Evaluation Report issued by the ICC-ES.”12
(Ex. H to Graham
Dec. at 24-25.)
10
TB-1 replaced Technical Bulletin 1-93, a similar FEMA
instructional guide entitled “Openings in Foundation Walls.”
(Ex. H to Graham Dec.)
11 An “engineered” flood opening activates, or opens and shuts,
against rising pressure in order to equalize hydrostatic loads.
(Ex. H to Graham Dec. at 31.) A “non-engineered” flood opening,
by contrast, has no automated mechanism, and serves only “to
satisfy the prescriptive requirement that calls for 1 square
inch of net open area for each square foot of enclosed area.”
(Id. at 20, 31.) In other words, these “non-engineered” flood
openings can be as simple as “omitted blocks” or a permanent
hole in a foundational wall. (Id. at 21-23, 31.) The flood
vents at issue in this litigation both constitute “engineered
openings,” because Smart Vent and USA Floodair each designed
their product to automatically vent tidal waters.
12 The ICC-ES, a subsidiary of the International Code Council®,
evaluates, tests, and certifies the code compliance of flood
vents, among other products. (See Pl.’s SMF at ¶¶ 58-59, 63,
77; see also Ex. D to Graham Dec. (describing the testing and
performance requirements for code-compliant flood vents, and
identifying the ICC-ES as a “subsidiary” of the ICC).
13
With respect to the individual certification process, TB-1
explains that “building designers or owners may ... use unique
or individually designed openings or devices.”13
13
(Id. at 24.)
USA Floodair reads the language of TB-1 permissively to allow
individual certifications for any engineered openings. (See
Def.’s SMF at ¶¶ 22-23.) More specifically, USA Floodair points
to a broad statement which explains that the certification of
engineered openings “may take the form of the individual
certification described above, or ... an Evaluation Report
issued by the ICC-ES.” (Id. at ¶ 22 (emphasis in original).)
Smart Vent, by contrast, reads the requirements of TB-1 more
narrowly to permit individual certifications only for “‘unique’
or ‘individually designed’ flood vents, not mass-produced flood
vents.” (Pl.’s RSMF at ¶ 23.) In reviewing these positions,
the Court notes, at the outset, that USA Floodair’s position
cites to, but ignores, the qualifying language as “described
above” and then the explanatory disclosures to which that
language points. (Def.’s SMF at ¶ 22 (emphasis in original).)
Indeed, in the explanatory section of “Engineered openings with
individual certification[s],” a/k/a the “above” section, TB-1
details the individual certification process only in connection
with “unique or individually designed openings or devices,” not
in connection with mass-produced flood vents like those
manufactured by USA Floodair. (Ex. H to Graham Dec. at 24
(emphasis in original).) Aside from that distinction, the
individual certification process requires the design
professional to “identify the [specific] building” in which the
flood vent will be installed—presumably because the design
professional uniquely or individually designed the opening for
the particular structure. (Id.) The certification underpinning
the ICC-ES Evaluation Report requires, by contrast, no
indication of the specific installation address—presumably
because the certification speaks to the overall capabilities of
a type of opening, as opposed to the suitability of a specific
flood vent for a particular foundational space. Thus, although
TB-1, at times, refers generically to an “individual
certification” (without qualifying detail), the remainder of TB1—and particularly the section specifically directed at
explaining the individual certification process—makes clear that
this alternative route to certification pertains only to
specialized or uniquely-constructed flood vents. (Id. at 24-25,
31.) USA Floodair’s statement (in at least one advertisement)
concerning the compliance of its flood vents with TB-1 therefore
14
In such a scenario, a licensed design professional must (1)
“identify the building in which the engineered openings will be
installed,” (2) certify that the flood openings “automatically
equalize hydrostatic flood loads,” (3) provide a description of
the “range of flood characteristics” supported by the
certification, and (4) note “the installation requirements or
limitations that, if not followed, will void the
certification.”14
(Id. at 24.)
The ICC-ES Evaluation Report, by contrast, entails
“technical evaluations of documentation submitted by the
manufacturer, including technical design reports,
certifications, and testing that demonstrate[s] code compliance
and performance” for a particular type of engineered opening.
(Id. at 25.)
The technical review is then buttressed by design
certifications in the form described in the individual
certification process, except that the certification need not
include any particular installation address.
(See id.)
Under either path, TB-1 encourages “[c]areful attention to
compliance with the NFIP regulations for flood openings,”
provides, as detailed below, the only basis for Smart Vent’s
unfair competition claim, because its individual certification
fails to meet the requirements of TB-1.
14 In addition, the certification must list the design
professional’s name, title, address, signature, licensing
information, and must bear “the signature and applied seal of
the certifying registered design professional.” (Ex. H to
Graham Dec. at 24.)
15
because compliance influences “the vulnerability to flood damage
and the cost of NFIP flood insurance.”
(Id. at 4.)
For that
reason, TB-1 directs consumers to closely inspect the
requirements of 44 C.F.R § 60.3, and to “contact their NFIP
state coordinator or the appropriate FEMA regional office” for
any additional guidance.
(Id. at 28.)
Against that regulatory backdrop, Smart Vent and USA
Floodair both purport to produce competing NFIP-compliant flood
vents.
(Pl.’s SMF at ¶¶ 1, 3-5; Def.’s SMF at ¶¶ 1, 3-5.)
Smart Vent’s Flood Vent and its ICC-ES Evaluation
Report
The ’445 Patent, as explained above, describes a flood vent
that serves as an air ventilation system and water pressure
release mechanism for foundational crawlspaces.
(See generally
’445 patent at 2:57-3:50.)
The flood vent itself features an outer frame that rests
within the interior sides of the foundational walls, and an
automatic louver assembly that opens and closes in response to
ambient temperatures and/or the pressure level associated with
tidal flood waters.
(Id. at 3:12-33.)
In that way, the
invention provides crawl space ventilation, all while reducing
the risk of structural damage by allowing rising tidal waters to
automatically vent through the crawl space when the water
pressure exceeds a certain minimum threshold.
16
(Id.)
The ’445 patent, in turn, depicts the flood vent as
follows:
(’445 Patent.)
The commercially-produced flood vents then
appear in the form reflected in the following graphic:
(Ex. G to Graham Dec.; Ex. B to DiMarino Dec.)
17
In order to demonstrate that its product complies with NFIP
and FEMA regulations, and to allow its customers to avail
themselves of discounts on their NFIP insurance, Smart Vent
looks to the ICC-ES to produce an Evaluation Report.15 (Pl.’s SMF
at ¶¶ 58-59, 63, 77.)
In each Evaluation Report, the ICC-ES
explains that the “automatic foundation flood vents” of Smart
Vent underwent rigorous testing for compliance with various
codes, and finds, on each occasion, that the flood vents meet
the regulatory requirements.
(Ex. G to Graham Dec.)
Based upon
these results, Smart Vent advertises its flood vents as “FEMA
ACCEPTED,” “ICC-ES EVALUATED,” and indeed the “Only Code
Compliant Foundation Flood Vent.”
(Ex. B. to DiMarino Dec.
(emphasis in original).)
USA Floodair’s Flood Vent and its Individual
Certification Process
USA Floodair similarly touts the ability of its flood vent
to regulate ambient temperatures in foundational crawlspaces,
and to equalize the hydrostatic flood forces on exterior walls.
(See Ex. Q to DiMarino Dec.; Ex. G to Coulbourne Dec.)
The vent
itself then includes, much like Smart Vent’s product, an
“engineered” assembly that activates with the pressure of tidal
15
The ICC-ES issued its first Evaluation Report on February 1,
2008, and then re-issued additional (but substantively
identical) Reports on February 1, 2009, February 1, 2011,
December 1, 2012, and February 1, 2015. (See Exs. F & G to
Graham Dec.; Pl.’s SMF at ¶¶ 73-75; Def.’s RSMF at ¶¶ 73-75.)
18
water flow (Ex. G to Coulbourne Dec.), comes fabricated in
aluminum (the FAAL model) and stainless steel (the FASS model)
forms, and appears in the following commercial form:
(Ex. Q to DiMarino Dec.)
USA Floodair’s advertisements, in
turn, describe the dimensions of the flood vent as having a
“Rough opening” of 8” by 16”,16 an “Outer frame” of 10” by 18”,
and an “Inner frame” of 7
15/
16
by 15
7/
8,
and depicts the
dimensions of the actual flood vent (including the inner and
outer frame) as follows:17
16
The rough opening refers to the block wall or concrete masonry
unit into which the flood vent will be installed. (See, e.g.,
Ex. E to Coulbourne Dec. (depicting the rough opening).)
17 As explained below, Smart Vent’s expert, William Coulbourne,
P.E., disputes USA Floodair’s dimensional calculations. (See
Coulbourne Dec. at ¶¶ 26-29.)
19
(Exs. E, F, & G to Coulbourne Dec. (emphasis in original).)
In light of its design, structure, and function, USA
Floodair claims that its flood vent “[m]eets FEMA, NFIP, ICC &
ASCE requirements for engineered openings” and “can be certified
by a state registered professional engineer” pursuant to TB-1.18
18
USA Floodair advertises its flood vents, for example, using
the following graphic:
(Exs. A & Q to DiMarino Dec.)
20
(Ex. Q to DiMarino Dec.; Ex. G to Coulbourne Dec.)
In other
words, USA Floodair’s claim of an NFIP-compliant vent has
historically rested upon an individual certification, rather
than an ICC-ES Evaluation Report.
(Pl.’s SMF at ¶ 84; Def.’s
RSMF at ¶ 84; Ex. M to DiMarino Dec. (attaching various pre-May
2014 flood vent certifications).)
More specifically, when a USA
Floodair purchaser requested a flood vent certification for
insurance purposes, USA Floodair would “engage an individual
engineer” licensed in the relevant state “to prepare an
individual certification,”19 in accordance with its
interpretation of the NFIP regulations and TB-1.
(Pl.’s SMF at
¶¶ 86-88; Def.’s RSMF at ¶¶ 86-88.)
In the wake of this litigation (which takes direct aim at
USA Floodair’s claim of compliance), though, USA Floodair
adopted a new model certification process in March 2014 to
“assurance compliance” with regulatory requirements.
DiMarino Dec.)
(Ex. G to
More specifically, Neil Opatkiewicz of USA
19
USA Floodair issued these certifications, at least in their
initial form, either by having “one of several engineers ...
retained for certification purposes” send a completed
certification directly to the requestor, or by completing one of
the blank, but pre-signed, certifications maintained in USA
Floodair’s office. (Pl.’s SMF at ¶¶ 89-90; Def.’s RSMF at ¶¶
89-90; see also Ex. M to DiMarino Dec. (attaching various preMay 2014 flood vent certifications).) In order to demonstrate
compliance with the net area requirements of 44 C.F.R. §
60.3(c)(5), USA Floodair then separately provided the purchaser
with calculations on the square footage (i.e., net area) covered
by the flood vents. (See, e.g., Ex. R to Supp. Opatkiewicz Dec.)
21
Floodair engaged Brandon Raudebaugh of Conn Engineering
Consultants, Inc. (hereinafter, “Conn Engineering”) to develop a
“sample” certification that better aligned with the requirements
of TB-1.
(Ex. N to DiMarino Dec.; Pl.’s SMF at ¶ 93; Def.’s
RSMF at ¶ 93; Def.’s SMF at ¶ 30; Pl.’s RSMF at ¶ 30.)
These
“Certification[s] of Engineered Flood Openings in accordance
with NFIP, FEMA Technical Bulletin 1-08 and ASCE/SEI 24-08,” in
turn, include (1) a certification statement, (2) design
characteristics, (3) limitations and installation requirements,
(4) information on the background of the certifying professional
engineer, (5) the installation address, and (6) the specific USA
Floodair model installed.
(Ex. N to DiMarino Dec. (emphasis in
original).)
Armed with this template-style certification,20 upon receipt
of a certification request, USA Floodair now emails Conn
Engineering with the relevant installation and model
information, Mr. Raudebaugh (a non-engineer) completes the basic
information, and then presents it to an engineer, Jason M. Conn,
for review and signature.21
(Pl.’s SMF at ¶¶ 94, 104; Def.’s
20
In May 2014, current counsel for USA Floodair approved the
form and use of the sample certification. (Pl.’s SMF at ¶ 103;
Def.’s RSMF at ¶ 103.)
21 In other words, the certification process involves no actual
interaction with the property, contact with the structure, or
communication with the architect, designer, or engineer
associated with the structure. (See Pl.’s SMF at ¶ 106; Def.’s
RSMF at ¶ 106.) Smart Vent takes issue with this hands-off
22
RSMF at ¶¶ 94, 104; see also Ex. N to DiMarino Dec. (describing
Mr. Conn’s professional qualifications).)
As a result, USA
Floodair labels its products as compliant with all FEMA and NFIP
guidelines guideless engineered openings, and advertises the
vents as certified or certifiable by a state registered
professional engineer in accordance with TB-1.22
(See Pl.’s SMF
at ¶¶ 110-17; Def.’s RSMF at ¶¶ 110-17.)
Litigation in this District and Markman Decision
Based upon the specifications of USA Floodair’s product and
its claim of NFIP compliance, Smart Vent filed Complaints in
this District,23 asserting claims for patent infringement and
unfair competition under the Lanham Act, 15 U.S.C. §
1125(a)(1)(B), the New Jersey unfair competition statute,
approach to certification, because it claims that the NFIP, as
interpreted by TB-1, requires personal contact with the relevant
installation space. In support of this interpretation, though,
Smart Vent points to nothing within the NFIP regulations
themselves (which remain, in any event, silent on this topic),
and the provisions of TB-1 concerning individual certification
remain (at least in this respect) ambiguous at best. Indeed, no
aspect of TB-1 requires direct contact by the certifying
engineer. Against that backdrop, the Court can find no fault in
USA Floodair’s individual certification approach, simply because
Mr. Conn never personally observed the relevant property.
22 USA Floodair’s advertisements, as described and depicted
above, include various iterations of its NFIP-related claims.
Generally speaking, though, USA Floodair advertised its flood
vents as “FEMA, ICC and NFIP State Engineered Certified
Compliant vents.” (Pl.’s SMF at ¶ 118; Def.’s RSMF at ¶ 118.)
23 Smart Vent filed the initial Complaint in this action on
January 12, 2010 [see Docket Item 1], followed by an Amended
Complaint on November 18, 2011. [See Docket Item 59.]
23
N.J.S.A. §§ 56:4-1, 4-2, and state common law.
(Am. Compl. at
¶¶ 23-57.)
Following discovery, the Court confronted, as relevant
here, the parties’ competing positions concerning the
construction of the following terms in claim 15 of the ’445
patent (with emphasis for the disputed claim terms):
an outer frame having side walls defining a fluid
passageway therethrough, wherein the outer frame has a
width of a standard concrete masonry unit (CMU), a
height of one or two CMUs;
a door pivotally mounted in said frame for
bidirectional rotation between two open positions and
a closed position therebetween to permit tidal water
flow therethrough, wherein the door is recessed from
the front and back of the outer frame, and includes a
ventilation opening.
(’445 patent at 3:1-11 (emphases added).)
After surveying the
intrinsic and extrinsic record relative to the term “standard
concrete masonry unit (CMU),” the Court reasoned that “the
reference to ‘width and height of a standard concrete masonry
unit (CMU),’ reflect[ed] that the invention would be used in
place of, and sized concordant with, the concrete blocks that
generally form foundational crawlspaces.”
2014 WL 6882281, at *7.
Smart Vent, Inc.,
For that reason, the Court construed
the term to refer to a concrete masonry unit with dimensions 8”
by 16”,
+/
-
a
3/
8
mortar joint.
Id. at *9; see also Smart Vent,
Inc., 2015 WL 5009213, at *2 (revising, slightly, the Court’s
initial construction on reconsideration).
24
Turning then to the phrase “outer frame having side walls
defining the fluid passageway,” the Court determined, guided in
large part by the parties’ stipulation that the phrase “fluid
passageway” meant the “‘interior sides of the walls,’” that the
claim language supported only the view that the “outer frame”
referred to the “border that surrounds the fluid passageway,”
but excludes the face plate or front portion of the flood vent.
Smart Vent, Inc., 2014 WL 6882281, at *9-10.
Finally, based upon claim language and specification, the
Court construed the term “door,” consistent with its ordinary
meaning, “by reference to its intended purpose: providing a
mechanism to open and close the flood vent.”
Id. at *10.
In
other words, the Court found that the term “door” meant “a
movable barrier which can open and close, including pull tabs
and a grille backed by screening.”
Id. at *10-*11; see also
Smart Vent, Inc., 2015 WL 5009213, at *4.
In the wake of the Markman decision, and expert discovery,
the parties’ pending cross-motions for summary judgment
followed.
PRELIMINARY ISSUES
Prior to considering the parties’ substantive summary
judgment positions, the Court addresses, at the outset, three
introductory issues concerning (1) the admissibility of Smart
Vent’s expert report on the topic of infringement, (2) the
25
parties’ stipulation on the claim term “recessed,” and (3) Smart
Vent’s challenges to the admissibility of the supplemental
declarations of Diane Bergaglio, the current owner of USA
Floodair, and Mr. Opatkiewicz, a USA Floodair employee.
Admissibility of Coulbourne Report
The Court first addresses USA Floodair’s objections to the
admissibility of Smart’s infringement expert, William L.
Coulbourne, a licensed professional engineer.
1.
Daubert Standard
Federal Rule of Evidence 702 “embodies a trilogy of
restrictions on expert testimony: [1] qualification, [2]
reliability, and [3] fit.”
Schneider v. Fried, 320 F.3d 396,
404 (3d Cir. 2003) (citing In re Paoli R.R. Yard PCB Litig., 35
F.3d 717, 741–43 (3d Cir. 1994)); see also FED. R. EVID. 702.
As relevant here,24 the reliability requirement focuses upon
whether the expert’s conclusion rests upon “the ‘methods and
24
Defendant mounts no specific challenge to Mr. Coulbourne’s
qualifications, nor to the general “fit” of his opinions to the
disputed infringement issues in this litigation. (See generally
Def.’s Br. at 3-6.) Rather, Defendant points, more nebulously,
to the fact that Mr. Coulbourne “has no prior experience
reviewing patents or providing infringement opinions” and
provides no “basis” or “source” for “his understanding about the
law of infringement.” (Id. at 1, 3.) Nevertheless, in his
expert declaration, Mr. Coulbourne assumes application of
certain basic patent infringement premises (see Coulbourne Dec.
at ¶¶ 13-15), and then details his opinion on the structural and
dimensional identity of the competing flood vents based upon his
many years of professional engineering experience with flood
vents. (See Ex. A to Coulbourne Dec. (describing Mr.
26
procedures of science’ rather than on ‘subjective belief or
unsupported speculation.’”
Calhoun v. Yamaha Motor Corp.,
U.S.A., 350 F.3d 316, 321 (3d Cir. 2003) (quoting Daubert v.
Merrell Dow Pharm., Inc., 509 U.S. 579, 589 (1993)).25
Reliability, however, does not require the proffering party to
demonstrate the “correctness” of the expert opinion.
In re
Paoli, 35 F.3d at 744 (concluding that the “evidentiary
requirement of reliability” amounts to a lower burden “than the
merits standard of correctness”); see also Krys v. Aaron, 112 F.
Coulbourne’s extensive experience relative to flood vents).)
Thus, although USA Floodair takes exception with the somewhat
thin nature of Mr. Coulbourne’s patent-specific qualifications,
his resume reflects that he easily possesses more knowledge than
the average lay person regarding structural aspects of flood
vents. Indeed, since 1995, Mr. Coulbourne has served as a
“consulting structural engineer” in damage investigations caused
by floods and hurricanes, has assisted FEMA with “flood
mitigation programs,” and has served as a member of the
Standards Committee for the American Society of Civil Engineers
(a body that “‘provides minimum requirements for flood resistant
design and construction of structures ... located, in whole or
in part, in Flood Hazard Areas’”). (Coulbourne Dec. at ¶¶ 4-0.)
In view of the breadth of that experience, Mr. Coulbourne easily
possesses the minimum qualifications necessary to engage in a
technical comparison of the floods vents produced by Smart Vent
and USA Floodair.
25 Where the reliability turns upon the intricacies of an
expert’s scientific technique, Daubert (and its progeny) directs
courts to undertake an inquiry, in essence, into whether the
disputed technique has gained acceptance in the relevant
scientific community. See In re Paoli, 35 F.3d at 742 n.8
(listing the relevant factors). These “specific factors neither
necessarily nor exclusively applies to all experts,” Kumho Tire
Co. v. Carmichael, 526 U.S. 137, 141 (1999); see also Kannakeril
v. Terminix Int’l, Inc., 128 F.3d 802, 806-07 (3d Cir. 1997)
(same), and have no application here, in view of the simplicity
of Mr. Coulbourne’s opinion.
27
Supp. 3d 181, 189 (D.N.J. 2015) (same).
Indeed, so “long as an
expert’s scientific testimony rests upon good grounds ... it
should be tested by the adversary process – competing expert
testimony and active cross–examination – rather than excluded
from jurors’ scrutiny for fear that they will not grasp its
complexities or satisfactorily weigh its inadequacies.”
United
States v. Mitchell, 365 F.3d 215, 244 (3d Cir. 2004) (quoting
Ruiz–Troche v. Pepsi Cola Bottling Co., 161 F.3d 77, 85 (1st
Cir. 1998)) (emphasis added).
Even more, courts have
“‘considerable leeway’ in determining the reliability of
particular expert testimony under Daubert.”
Simmons v. Ford
Motor Co., 132 F. App’x. 950, 952 (3d Cir. 2005) (quoting Kumho,
526 U.S. at 152–53); see also Kemly v. Werner Co., ___ F. Supp.
3d ____, No. 13-7059, 2015 WL 8335030, at *3 (D.N.J. Dec. 8,
2015) (describing the same analytical framework); Krys v. Aaron,
112 F. Supp. 3d 181, 189-90 (D.N.J. 2015) (same).
2.
Mr. Coulbourne’s Report is Admissible
Mr. Coulbourne, a professional engineer with over forty
years of experience, produced a twelve-page declaration, in
which he expressed his view that the flood vent of USA Floodair
infringes claim 15 of the ’445 patent.
Coulbourne Dec. at ¶¶ 11, 18.)
(See generally
As part of his opinion, Mr.
Coulbourne explained his understanding of patent infringement
principles, the claim language, and constructions reached in the
28
Markman decision.
(See id. at ¶¶ 13-18.)
From these accepted
premises, Mr. Coulbourne then detailed the bases for his opinion
that the USA Floodair vent includes the construed “‘outer
frame’” and “‘door’” in the form claimed in the ’445 patent (and
embodied in Smart Vent’s commercial product).
(Id. at ¶¶ 22-
63.)
In moving to exclude Mr. Coulbourne’s declaration on
reliability grounds, USA Floodair argues that Mr. Coulbourne
failed to apply “reliable principles and methods in reaching his
opinions,” because he failed to faithfully “accept and apply”
the Court’s Markman decision.26
(Def.’s Br. at 4-6; Def.’s Reply
26
In addition, US Floodair takes aim at Mr. Coulbourne’s
declaration on account of his failure to consider whether
“prosecution history estoppel” or the “specific exclusion
principle” bar any argument of infringement under the doctrine
of equivalents. (Def.’s Br. at 4-5; Def.’s Reply at 3.)
Nevertheless, the application of the doctrine of prosecution
history estoppel constitutes a legal question for the Court, not
for a technical expert. See Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., 344 F.3d 1359, 1368 (Fed. Cir. 2003)
(“Questions relating to the application and scope of prosecution
history estoppel ... fall within the exclusive province of the
court.”); Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520
U.S. 17, 39 n.8 (1997) (explaining that, “if prosecution history
would apply ... partial or complete judgment should be [entered]
by the court, [because] there would be no further material issue
for the jury to resolve”). Indeed, any legal discussion of
prosecution history estoppel may have provided, by itself, a
basis for exclusion. See, e.g., Astrazeneca UK Ltd. V. Watson
Labs., Inc. (NV), No. 10-915, 2012 WL 5900686, at *1-*2 (D. Del.
Nov. 14, 2012) (discussing the “well-established practice of
excluding testimony of legal experts,” and barring a patent
lawyer from discussing prosecution history estoppel). USA
Floodair’s position on the omission of these legal opinions from
this engineering expert’s report therefore misses the mark.
29
at 1-7.)
More specifically, USA Floodair takes the position
that Mr. Coulbourne restated the claim constructions of the
terms “‘door’” and “‘screen,’” but then implicitly rewrote
and/or rejected them, in order to fit Smart Vent’s infringement
theory.
(Def.’s Br. at 5-6; Def.’s Reply at 2-7.)
As a result,
USA Floodair argues that Mr. Coulbourne rendered an unhelpful
and essentially irrelevant infringement opinion.
(Def.’s Br. at
5-6; Def.’s Reply at 2-7.)
Nevertheless, the Court finds Mr. Coulbourne’s declaration
reveals that he accepted and faithfully applied the Markman
constructions, and reached an infringement position consonant
with his view of the structural aspects of the competing
products.
(See generally Coulbourne Dec.)
Indeed, as to the
“door,” Mr. Coulbourne recognized that the Court construed the
term “door” as “‘a movable barrier which can open and close,
including pull tabs and a grille pattern backed by screening,’”
and then applied the construed term “door” to the accused
device.
(Id. at ¶¶ 38, 41-42, 48-51.)
In this application, Mr.
Coulbourne determined that the door of the accused product
literally infringes Smart Vent’s “door,” because the door of USA
Floodair’s product acts as a “movable barrier that ... can swing
in opposite directions between open and closed positions,”
includes “a pull tab and ventilation openings in a grille
pattern,” and sits inwardly “from the front and back of the
30
outer frame, with the exception of a portion of the pull tab.”
(Id. at ¶¶ 41-42, 50-51.)
Mr. Coulbourne then opined, in the
alternative, that the door of the accused product infringes
Smart Vent’s product under an equivalence analysis, because it
“perform[s] substantially the same function in substantially the
same way to achieve substantially the same result,” despite the
fact that the pull tabs protrude “beyond the front of the outer
frame.”27
(Id. at ¶¶ 56-59.)
Against that backdrop, Mr.
Coulbourne proffered a classical expert opinion, concerning his
application of the construed claim term “door” to the accused
device.
Turning then to the term “screen,” Mr. Coulbourne
recognized that the Court construed the term to mean “a
structure having holes which are small enough to prevent
penetration by animals, insects, and other pests, and which are
large enough to permit airflow,” but found that no difference
would exist between the construed screen of Smart Vent’s product
and the allegedly infringing device of USA Floodair, because the
USA Floodair’s product has, in his opinion, equivalent openings
that “allow the free flow of air,” all while being “small enough
27
The pull tabs on Smart Vent’s device, by contrast, rest in a
“completely recessed” position “from the front and back of the
outer frame.” (Coulbourne Dec. at ¶ 57.) In other words, the
pull tabs of Smart Vent’s product do not protrude, or stick out,
beyond the plane described by the surface of the outer frame.
31
to ... act as a barrier and [to] prevent penetration by unwanted
items, such as animals.”28
(Coulbourne Dec. at ¶¶ 39, 43-46.)
Thus, on this issue too, Mr. Coulbourne provided a classical
expert opinion on the hotly-disputed infringement issues in this
litigation.
Finally, with regard to the “outer frame,” Mr. Coulbourne
prefaced his opinion, as in other instances, by reference to the
Markman construction of “‘outer frame,’” and then expanded upon
that definition by explaining, in his view, how one of ordinary
skill in the art would measure the “‘outer frame’” from various
points.
(Id. at ¶¶ 22-23, 26-36.)
More specifically, he
“measured the outer frame with a tape measure,”29 and determined,
28
USA Floodair deems Mr. Coulbourne’s analysis “glaring[ly]
deficien[t]” because he failed to specify that the barrier of
the accused device could prevent penetration by “‘insects and
other pests,’” as opposed to only “animals.” (Def.’s Reply at 4
(emphasis in original).) Nevertheless, a review of Mr.
Coulbourne’s conclusions, in their entirety, fairly suggests
that he intended to imbed the notion of “insects and other
pests” within the larger rubric of “animals.” Indeed, he
prefaced his discussion, in relevant part, with the observation
that the construed “screen” has holes “‘small enough to prevent
penetration by animals, insects, and other pests.’” (Coulbourne
Dec. at ¶ 39.) Against that backdrop, in finding the construed
“screen” identical to the accused screen, Mr. Coulbourne must,
necessarily, have intended to incorporate the idea of “animals,
insects, and other pests,” without using the whole phrase a
second time. The imprecision in his actual language therefore
proves insufficient to warrant exclusion; this narrow
shortcoming, if any, would be better explored through crossexamination, not exclusion.
29 USA Floodair challenges Mr. Coulbourne’s opinion, in part, on
the grounds that measuring “a flood vent with a tape measure”
requires “no scientific, technical or other specialized
32
based upon those dimensions and USA Floodair’s own product
specifications, that the accused device “fall[s] within the
range of the width and height of a standard concrete masonry
unit as that term has been construed by the Court.”
31, 33, 35-36.)
(Id. at ¶¶
In other words, Mr. Coulbourne provided, again,
a prototypical expert opinion concerning the manner in which the
construed claim limitations should be applied to the accused
device.
In sum, the factual narrative underpinning Mr. Coulbourne’s
various conclusions resonates with Smart Vent’s view of the
disputed, but arguably provable, evidence on the issue of
infringement.
USA Floodair, by contrast, directs it challenges
primarily to the weight of the expert evidence—an issue that can
be aired through cross-examination and argument, and not through
exclusion of his otherwise reliable and relevant work.
For all of these reasons, the Court finds Mr. Coulbourne’s
opinion admissible on the issue of infringement.
The Court next
knowledge.” (Def.’s Reply at 7.) USA Floodair’s argument,
however, implies that Mr. Coulbourne did little more than
reiterate dimensions contained on USA Floodair’s own
specifications. (See id.) Rather, Mr. Coulbourne performed his
own measurements to buttress his position that USA Floodair
sized the accused flood vents to fit within “an opening in a
[concrete masonry unit] block wall.” (Coulbourne Dec. at ¶¶ 3031.) This conclusion, although simplistic, then relies upon his
expertise in the engineering and installation of flood vents,
and qualifies as a technical or specialized opinion within the
meaning of Federal Rule of Evidence 702.
33
addresses USA Floodair’s newly-minted, and post-argument,
position on the stipulated term “recessed.”
The Parties’ Stipulation on the term “Recessed”
During the claims construction phase of this litigation,
the Court, as explained above, did not construe the term
“recessed,” because the parties agreed during the Markman
hearing that the term required no construction, and instead
meant “‘set inwardly from the front and the back.’”
Inc., 2014 WL 6882281, at *11 n.10.
Smart Vent,
Indeed, during the Markman
hearing, counsel for USA Floodair specifically proposed that
“recessed” be defined as “set inwardly from” the front and the
back of Smart Vent’s patented flood vent.
55:2.)
(Markman Tr. at 53:6-
This Court, in turn, adopted that definition with the
consent of the parties.
See Smart Vent, Inc., 2014 WL 6882281,
at *11 n.10 (“The Court need not construe the term ‘recessed,’
because the parties agreed during the Markman hearing that this
term requires no construction, as it means ‘set inwardly from
the front and the back.’”).
During the Markman hearing (and in its briefing), Smart
Vent placed great emphasis on the stipulated meaning of
“recessed” in its argument on infringement of the construed
“door.”
USA Floodair, in turn, challenged Smart Vent’s
infringement position on the merits, but again acknowledged its
agreement on the meaning of the term “recessed.”
34
Nevertheless,
in the wake of this Court’s comments during the Markman hearing,
USA Floodair filed a substantively one-paragraph letter,
claiming that it made no concession on the meaning of the term
“recessed,” and requesting that the nearly two-year old Markman
decision “be amended to correct [a] clerical error” concerning
the meaning of the term “‘recessed.’”
[Docket Item 175.]
Stated differently, in the aftermath of a hearing where the
Court expressed some doubts on the merits of USA Floodair’s noninfringement position — and at which time USA Floodair expressed
no concern on the understanding of the term “recessed” — it now
attempts to reach back to claims construction in order to avoid
a potentially adverse outcome on the pending motion.
[See
generally id.]
Clearly, USA Floodair’s eleventh-hour about-face fails.
Indeed, the Markman transcript and resulting Markman decision
reveals the parties’ uniform understanding that “recessed” meant
“set inwardly from the front and the back.”
Indeed, the Court
adopted that construction at the suggestion of counsel for USA
Floodair, and because counsel for Smart Vent voiced no
objection.30
(See generally Markman Tr. at 53:6-55:2.)
30
The
Smart Vent opposes USA Floodair’s last-minute request on
precisely that basis. [See Docket Item 176 at 2 (disputing USA
Floodair’s position on “clerical error,” because the Court
“properly construed” the term “‘recessed’” based upon the
parties’ agreement).]
35
parties’ briefing, in turn, reflects the same understanding.
Indeed, USA Floodair’s own briefing explains that the Court’s
Markman decision “decided” that: “recessed” [means] “set
inwardly from the front and back,” and then proceeds to apply
that construction in its non-infringement argument.
(Def.’s
Reply at 6-7 (emphasis in original); see also Def.’s Br. at 10
(relying upon the same construction).)
Further, a party can’t advance new terms for claim
construction beyond those the parties have identified in their
pre—Markman submissions under L. Pat. R. 4.3.
One could not
have an orderly claim construction process and hearing if, after
the Court issues its Markman rulings, a party were free to
revoke its stipulated construction of a previously undisputed
term.
Against that backdrop, the Court finds no support for USA
Floodair’s claim of a “clerical error” on the construction of
the claim term “recessed.”31
Beyond that, USA Floodair itself
31
Although USA Floodair couches, without support, its request in
terms of a “‘clerical error,’” it ultimately seeks (when
liberally construed) relief in the form typically provided
through a motion for reconsideration. [Docket Item 175
(identifying no case or legal support for its request).]
Nevertheless, the time to seek reconsideration has long since
expired, and will not be reopened under the circumstances
presented here. See L. CIV. R. 7.1(i) (requiring that any motion
for reconsideration “be served and filed within 14 days after
the entry of the order or judgment on the original motion”); see
also Ezeiruaku v. Bull, No. 14-2567, 2014 WL 7177128, at *1 n.1
(D.N.J. Dec. 16, 2014) (explaining, with greater detail, the
36
finds no significant “difference in meaning between USA
Floodair’s proposed construction of the term ‘recessed’ and the
construction” ultimately adopted by the Court.
175.]
[Docket Item
As a result, the Court rejects USA Floodair’s reject to
amend the Markman decision as frivolous.
The Court last
addresses Smart Vent’s objections to the admissibility of
certain declarations.
Admissibility of the Supplemental Declarations of
Diane Bergaglio and Neil Opatkiewicz
With respect to the unfair competition aspect of this
litigation, USA Floodair takes, in essence, a two-fold approach:
first, USA Floodair claims that the NFIP permits individual
certifications in the precise form it provided; and second, USA
Floodair argues that FEMA accepted its flood vent
certifications, even if they fell technically short of the
requirements of the NFIP and/or TB-1.
In order to buttress this
latter position, USA Floodair points to the declarations of
Diane Bergaglio (the current owner of USA Floodair) and Neil
Opatkiewicz (an employee of USA Floodair), which memorialize
conversations between USA Floodair and Diane Otto, the Planning
time deadlines for motions for reconsideration under the Local
Rule). Moreover, even if USA Floodair had timely filed a motion
for reconsideration under L. Civ. R. 7.1(i), it would have
failed because the Court did not overlook the matter of the
meaning of “recessed” (because the parties indicated there was
no dispute), nor was there some sort of subsequent change of
law.
37
and Zoning Manager for the City of Tybee Island, Georgia,
concerning conversations Ms. Otto purportedly had with FEMA on
the topic of USA Floodair’s sample certification.
(See, e.g.,
Opatkiewicz Dec. at ¶¶ 9, 10, 11, 12, 13, 16, & 18; Bergaglio
Dec. at ¶¶ 4 & 11.)
Smart Vent, in turn, objects to these
portions of the declarations as inadmissible hearsay.
(See
generally Pl.’s Opp’n.)
“Affidavits or declarations in support of or in opposition
to a motion for summary judgment must ‘be made on personal
knowledge,’ must ‘affirmatively’ indicate the affiant’s
competence to testify to such matters, and must set forth facts
that would be otherwise ‘admissible in evidence.’”
City Select
Auto Sales, Inc. v. David/Randall Assocs., Inc., 96 F. Supp. 3d
403, 409 n.4 (D.N.J. 2015) (quoting FED. R. CIV. P. 56(c)(4);
citing Leese v. Martin, No. 11-5091, 2013 WL 5476415, at *6
(D.N.J. Sept. 30, 2013)).
In other words, on summary judgment,
the Court may credit a factual declaration “only to the extent
[that it] constitutes evidence at least potentially admissible
at trial,” id. (citing Hurd v. Williams, 755 F.2d 306, 308 (3d
Cir. 1985)), rather than hearsay without any hope of being
presented through “direct testimony, i.e., ‘in a form that would
be admissible at trial.’”
Williams v. Borough of West Chester,
891 F.2d 458, 466 n.12 (3d Cir. 1989) (citation omitted)
(“hearsay evidence produced in an affidavit opposing summary
38
judgment may be considered if the out-of-court declarant could
later present that evidence through direct testimony, i.e., ‘in
a form that would be admissible at trial’”).
Application of these principles here requires that large
portions of the challenged declarations be disregarded, because
they recite little more than largely unknown and hearsay
exchanges between a non-party and FEMA representatives. (See,
e.g., Opatkiewicz Dec. at ¶¶ 9, 10, 11, 12, 13, 16, & 18;
Bergaglio Dec. at ¶¶ 4 & 11.)
Indeed, Ms. Bergaglio, for
example, states that she received a phone call from “a building
official from the City of Tybee Island, Georgia,” who requested,
on behalf of FEMA, “more information on certifications” USA
Floodair had provided for its “flood vents.”
¶ 11.)
(Bergaglio Dec. at
Mr. Opatkiewicz discloses, in turn, conversations he had
with Ms. Otto regarding exchanges she had with FEMA auditors
(see, e.g., Opatkiewicz Dec. at ¶¶ 9, 10, 11, 12, 13, 16, & 18),
and then expresses his view based upon these third-party
conversations that FEMA found USA Floodair’s certifications
“acceptable.”
(Id. at ¶ 16.)
The Court finds these aspects of the declarations contain
classical hearsay upon hearsay (if not, hearsay upon hearsay
upon hearsay), because Ms. Bergaglio and Mr. Opatkiewicz learned
the proffered information from Ms. Otto (or an associated
municipal employee) who in turn received the information from
39
unidentified (and seemingly unidentifiable) FEMA
representatives.
Given the unknown identity of the FEMA
declarants, the lack of documentation of any such advice, and
the absence of any indication that unknown FEMA agents might
testify at trial,32 the Court will disregard those aspects of the
declarations as unprovable hearsay.
Compare Davis v. City of E.
Orange, No. 05-3720, 2008 WL 4328218, at *9 n.19 (D.N.J. Sept.
17, 2008) (citations omitted) (declining to disregard hearsay
aspects of a declaration because the out-of-court declarant
would later present the evidence through direct testimony).
With those prefatory conclusions, the Court turns to the
parties’ substantive positions on summary judgment.
STANDARD OF REVIEW APPLICABLE TO THE PARTIES’ CROSS-MOTIONS
FOR SUMMARY JUDGMENT
Summary Judgment, Generally
Summary judgment is appropriate if “there is no genuine
issue as to any material fact and the moving party is entitled
to judgment as a matter of law.”
Alabama v. North Carolina, 560
U.S. 330, 344 (2010) (citations and internal quotation marks
32
Indeed, during oral argument, the parties acknowledged that
the FEMA representative could not be identified, despite their
efforts in discovery. Indeed, the parties remain embroiled in
discovery on this topic, along with discovery targeted towards
USA Floodair’s ongoing changes to its certification process.
[See, e.g., Docket Items 169, 170, & 172.] During oral
argument, however, the parties agreed that the outstanding
discovery has no impact on the pending motion.
40
omitted); see also FED. R. CIV. P. 56(a).
Stated differently,
“[w]here the record taken as a whole could not lead a rational
trier of fact to find for the non-moving party,” the Court may
grant summary judgment.
Matsushita Elec. Indus. Co., Ltd. v.
Zenith Radio Corp., 475 U.S. 574, 587 (1986).
In evaluating a motion for summary judgment, the Court must
view the material facts in the light most favorable to the nonmoving party, and must make every reasonable inference in that
party’s favor.
See Scott v. Harris, 550 U.S. 372, 378 (2007);
Halsey v. Pfeiffer, 750 F.3d 273, 287 (3d Cir. 2014).
An
inference based upon “‘speculation or conjecture,’” however,
“‘does not create a material factual dispute sufficient to
defeat summary judgment.’”
omitted).
Halsey, 750 F.3d at 287 (citations
Rather, the non-moving party must support each
essential element with concrete record evidence.
See Celotex
Corp. v. Catrett, 477 U.S. 317, 322-23 (1986).
Moreover, “[t]he standard by which the court decides a
summary judgment motion does not change when the parties file
cross-motions,” as here.
United States v. Kramer, 644 F. Supp.
2d 479, 488 (D.N.J. 2008).
In other words, “the court must
consider the motions independently and view the evidence on each
motion in the light most favorable to the party opposing the
motion.”
Id. (citation omitted).
41
Patent Infringement Standard
As relevant here, 35 U.S.C. § 271(a) governs direct
infringement and provides that, “whoever without authority
makes, uses, offers to sell, or sells any patented invention,
within the United States ... during the term of the patent
therefor, infringes the patent.”
See also Commil USA, LLC v.
Cisco Sys., Inc., ___ U.S. ___, 135 S. Ct. 1920, 1926 (2015)
(describing the “three forms” of statutory liability for patent
infringement).
Evaluation of summary judgment on the issue of infringement
(or, noninfringement) requires a two-part inquiry: claim
construction by the court of the asserted claim terms as a
matter of law, see, e.g., Akzo Nobel Coatings, Inc. v. Dow Chem.
Co., 811 F.3d 1334, 1339 (Fed. Cir. 2016); Purdue Pharma L.P. v.
Boehringer Ingelheim, GMBH, 237 F.3d 1359, 1363 (Fed. Cir.
2001); Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed. Cir.
1998), and then a factual determination of whether the properly
construed claim terms “‘read on the accused product or method.’”
Clare v. Chrysler Grp. LLC, ___ F.3d ____, No. 2015-1199, 2016
WL 1258182, at *2 (Fed. Cir. Mar. 31, 2016) (quoting GeorgiaPac. Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1330 (Fed. Cir.
1999)); see also Kustom Signals, Inc. v. Applied Concepts, Inc.,
264 F.3d 1326, 1332 (Fed. Cir. 2001) (describing the patent
infringement analysis as “a question of fact”).
42
In other words,
the second stage of the infringement inquiry focuses upon a
comparison of the asserted patent claims against the accused
invention.
See generally Spectrum Pharm., Inc. v. Sandoz Inc.,
802 F.3d 1326, 1336 (Fed. Cir. 2015) (citation omitted).
More specifically, the patent holder must demonstrate, by a
preponderance of the evidence, that the accused device infringes
the patent either literally or under the doctrine of
equivalents.
See Akzo Nobel Coatings, Inc., 811 F.3d at 1339
(citation omitted); see also Envirotech Corp. v. Al George,
Inc., 730 F.2d 753, 758 (Fed. Cir. 1984) (citation omitted).
Literal infringement, in turn, requires that the accused product
include “‘every limitation’” in the “‘exact[]’” form described
by the asserted claims.
Microsoft Corp. v. GeoTag, Inc., ___
F.3d ____ No. 2015-1140, 2016 WL 1274394, at *6 (Fed. Cir. Apr.
1, 2016) (quoting Crown Packaging Tech., Inc. v. Rexam Beverage
Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009) (internal
quotation marks and citation omitted)).
In other words, literal
infringement requires (under the so-called “all-elements rule”)
one-to-one correspondence between the patented invention and the
accused device.
See, e.g., Transocean Offshore Deepwater
Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1356
(Fed. Cir. 2012) (citation omitted).
Doctrine of equivalents infringement requires, by contrast,
“‘equivalence between the elements of the accused product ...
43
and the claimed elements of the patented invention.’”
Id.
(quoting Duramed Pharm., Inc. v. Paddock Labs., Inc., 644 F.3d
1376, 1380 (Fed. Cir. 2011) (internal quotation marks and
citation omitted)).
More succinctly, a patentee may establish
infringement under the doctrine of equivalents if an element of
the accused product “‘performs substantially the same function
in substantially the same way to obtain the same result as the
claim limitation.’”
Spectrum Pharm., Inc. v. Sandoz Inc., 802
F.3d 1326, 1337 (Fed. Cir. 2015) (emphases added) (quoting Pozen
Inc. v. Par Pharm., Inc., 696 F.3d 1151, 1167 (Fed. Cir. 2012)
(citation omitted)).
Under either theory, though, summary judgment may be
granted only if the undisputed factual evidence points to only
one reasonable conclusion regarding infringement.
See Chimie v.
PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed. Cir. 2005);
TechSearch, LLC v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir.
2002); Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d
1316, 1323 (Fed. Cir. 2001).
As applied here to the parties’
cross-motions for summary judgment, each party “carries the
burden on its own motion to show entitlement to judgment as a
matter of law after demonstrating the absence of any genuine”
factual disputes.
Massey v. Del Labs., Inc., 118 F.3d 1568,
1573 (Fed. Cir. 1997); see also Baxter Healthcare Corp. v. HQ
Specialty Pharma Corp., 133 F. Supp. 3d 692, 697-98 (D.N.J.
44
2015) (describing and applying the same analytical framework to
cross-motions for summary judgment on the issue of
infringement).
DISCUSSION
Patent Infringement Issues
As explained above, the parties substantively agree that
the infringement portion of this litigation hinges upon whether
USA Floodair’s allegedly infringing device meets, literally or
equivalently,33 the construed claim limitations “outer frame” and
“recessed ... door.”34
The Court will address each claim term in
turn.
33
The Court rejects, at the outset, the notion that Smart Vent
has conceded the issue of literal infringement. (See Def.’s Br.
at 9-10.) In its infringement contentions, Smart Vent states
that the accused device contains “[a]lmost every limitation” of
asserted claim 15. (Ex. E to Burke Dec. at ¶ 5.) USA Floodair,
in turn, seizes upon this single statement to buttress its
position that Smart Vent cannot, by its own admission, prove
literal infringement. (See Def.’s Br. at 9-10.) Nevertheless,
this position relies upon an overly narrow parsing of a single
statement, and in any event, Smart Vent explains in its briefing
that it included the word “[a]lmost” in recognition of the fact
that USA Floodair’s product “does not literally” infringe
certain claim limitations, like a “grill pattern backed by
screening.” (Pl.’s Opp’n at 9 n.4 (emphasis in original).) In
other words, Smart Vent intended the term “[a]lmost” to capture
undisputed claim terms, and not to waive any of its substantive
infringement positions.
34 The Court rejects, as explained above, the notion that the
claim term “screen” presents an additional infringement issue in
this action.
45
1.
Factual Issues Preclude Summary Disposition of
the Parties’ Positions on Literal Infringement of
the Claim Term “Outer Frame”35
The Court begins, as it must, with the Markman decision, in
which the Court construed the term “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,” Smart
Vent, Inc., 2014 6882281, at *10, and 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”,
mortar joint.
+/
-
a
3/
8
Id. at *9; see also Smart Vent, Inc., 2015 WL
5009213, at *2.
The Court must then marry these constructions
with the claim language that describes “the outer frame has a
width of a standard concrete masonry unit (CMU), a height of one
or two CMUs.”
(’445 patent at 3:1-11 (emphases added).)
In
other words, the “outer frame” bears dimensions identical to
“the concrete blocks that generally form foundational
crawlspaces,” Smart Vent, Inc., 2014 WL 6882281, at *7, in that
it sits flush with the interior sides of the walls.
35
See id. at
Smart Vent has not briefed the application of doctrine of
equivalents infringement to the claim term “outer frame,” and
argues instead only literal infringement. (See, e.g., Pl.’s
Opp’n at 10-12.) USA Floodair likewise focuses its attention
only on literal infringement. (See, e.g., Def.’s Br. at 12.)
Thus, the Court does not address the doctrine of equivalents
relative to the claim term “outer frame.”
46
*9-*10 (explaining the parties’ stipulation that the phrase
“fluid passageway” meant the “interior sides of the walls”).
The question of whether USA Floodair’s product infringes
Smart Vent’s patented product turns, in essence, upon whether
the accused device contains an outer frame of the dimensions 8”
by 16”,
+/
-
a
3/
8
mortar joint.
Stated differently, to infringe
the ’445 patent, 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 fills the entire fluid
passageway (or, the open space left following the removal of the
concrete masonry unit).36
(Compare Pl.’s Opp’n at 10, with
Def.’s Reply at 19.)
In resolving this question, however, the parties advance
widely-disparate positions concerning the appropriate
dimensional measurements of USA Floodair’s product.
Smart Vent,
for example, looks to its expert, Mr. Coulbourne, who measured
the outer frame of the USA Floodair product (from his
perspective) and calculated a width dimension of 15.875, i.e.,
one that falls squarely within the Court’s dimensional
construction of the ’445 patent.
(See Pl.’s Opp’n at 10-12; see
also Coulbourne Dec. at ¶¶ 27-31; Ex. D to Coulbourne Dec.
36
USA Floodair appears to concede that its product meets the
vertical distance, or “height” dimension, of the patented
device.
47
(setting forth pictorial representations of the measurements).)
USA Floodair, by contrast, argues that the “outer edges” of its
frame “do not” sit flush with “the fluid passageway,” and
instead measure only 15.475”—a horizontal dimension outside of
the Court’s dimensional construction of the ’445 patent.
(Def.’s Reply at 19-21.)
Nevertheless, the Court need not
belabor these competing positions, because genuine factual
disputes pervade the records respectively developed by both
parties.
In support of its bid for summary judgment, Smart Vent
principally relies upon two pieces of evidence: the declaration
of William Coulbourne and a narrow caption of the marketing
materials prepared and distributed by USA Floodair.
Opp’n at 10-12.)
(See Pl.’s
Neither piece of evidence, however,
unequivocally endorses Smart Vent’s view.
Indeed, although Mr.
Coulbourne measured the horizontal dimension of USA Floodair’s
product as 15.9375”, the images depicting his measurements and
the description in his declaration provide scant information
from which to divine the precise starting and ending points for
his calculations.
(See generally Coulbourne Dec. at ¶¶ 26-28;
see also Ex. D to Coulbourne Dec.)
The visual depictions of the
measurements then create the impression that Mr. Coulbourne may
have captured part of the face plate (or, flange), because he
measured the frame from its outward facing portion, rather than
48
the narrower portion that rests within the fluid passage.
Ex. D to Coulbourne Dec.)
(See
The relied upon sections of USA
Floodair’s marketing materials, in turn, do indeed contain
support for the view that the outer frame of the flood vent may
rest within the construed dimensional limitations of the ‘445
patent, but also embrace the notion (advanced by USA Floodair)
that these measurements take in account the width of the front
or rear flange.37
(See Ex. E to Coulbourne Dec.)
USA Floodair, in turn, narrows in on this subtle
distinction with the following graphic, which well highlights
the contours of the parties’ nuanced dispute:
USA Floodair’s
Proposed
Measurement
Arguable
Dimensions
of the Fluid
Passageway
(Def.’s Reply at 20.)
Smart Vent’s
Proposed
Measurement
Front Flange
and Arguable
Surplusage
From that view, USA Floodair makes the
creditable argument that the “outer edge” of the flange (or, the
area of “Arguable Surplusage” depicted above) does “not define
the boundary of the fluid passageway,” and thus does not
infringe the ’445 patent.
37
Beyond that, the Court harbors doubts about whether USA
Floodair can be bound, on an infringement analysis, to its
marketing materials, particularly because those materials (as
explained by counsel during oral argument) define the
measurements of the flood vent in different ways.
49
In that way, 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 (as
understood by Smart Vent and depicted above), or only the
portion that rests within the fluid passage (as claimed by USA
Floodair and depicted above).
This inquiry, in turn, requires a
greater factual presentation into the precise manner in which
USA Floodair’s product sits within the boundary of the fluid
passageway.38
More specifically, the factfinder must determine
which aspect of USA Floodair’s vent actually connects to, and
sits within, the interior side of the concrete walls—a factual
determination that would necessarily inform the infringement
analysis.
The robust factual record amassed by the parties
here, however, falls short of definitively answering this
critical factual issue, among others.
Given this genuine issue of material fact, the Court cannot
resolve, one way or another, this question of infringement in
38
In that way, resolution of this question requires far more
than a simple application of the Court’s claim construction to
the accused product. Indeed, given the structural differences
between the two products, the disposition of this inquiry will
require a more nuanced comparison (and factual explication) of
how the competing vents rest within the fluid passageway. The
determination of infringement would, in turn, flow from that
explanation.
50
the context of summary judgment.39
See, e.g., Ethicon Endo-
Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1326-27 (Fed.
Cir. 2015) (vacating summary judgment of noninfringement, based
upon issues of fact concerning whether the accused product met
two claim limitations); Brilliant Instruments, Inc. v.
Guidetech, Inc., 707 F.3d 1342, 1344-46 (Fed. Cir. 2013)
(reversing summary judgment of no literal infringement, where
the declaration of the patentee’s technical expert’s raised a
fact issue concerning whether the accused product met a claim
limitation).
For all of these reasons, the Court finds that factual
disputes preclude the entry of summary judgment in favor of
either party on the question of whether accused device meets
(or, infringes) the construed claim term “outer frame.”
See FED.
R. CIV. P. 56(a).
2.
USA Floodair’s Product Literally Infringes the
Construed Claim Term “Door”
With respect to the second claim limitation, the Court
again looks first to the Markman decision, in which the Court
construed the term “door” to mean “a movable barrier which can
open and close, including pull tabs and a grille pattern backed
39
Indeed, in the alternative to its position in favor of summary
judgment, Smart Vent argues that a factual question exists on
the proper measurement of the accused flood vent, thereby
requiring that summary judgment on the issue of infringement be
denied. (See Pl.’s Opp’n at 12-13.)
51
by screening.”
Smart Vent, Inc., 2014 WL 6882281, at *10-*11;
see also Smart Vent, Inc., 2015 WL 5009213, at *4.
The Court
must then place this construction in the context of the claim
language, which describes “a door pivotally mounted ... wherein
the door is recessed from the front and back of the outer frame,
and includes a ventilation opening.”40
(emphases added).)
(’445 patent at 3:1-11
As a result, 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.
With respect to these claim elements, though, the parties
only argue about whether USA Floodair’s product contains
qualifying pull tabs.
Def.’s Reply at 7-14.)
(Compare Pl.’s Opp’n at 13-16, with
More specifically, USA Floodair takes
the view that the door of its product cannot literally infringe
the construed “door,” because the pull tabs of its product
extend outwardly from the front and back of the frame, and not
inwardly as claimed by the construed ’445 patent.
Reply at 7-14.)
(See Def.’s
Smart Vent, by contrast, argues that USA
Floodair cannot avoid infringement simply through its inclusion
40
During the Markman phase of this litigation, the parties
agreed, as explained above, that “recessed” for purposes of the
’445 patent means “‘set inwardly from the front and the back.’”
Smart Vent, Inc., 2014 WL 6882281, at *11 n.10.
52
of “an excessively large pull tab,” particularly where the
“operational” or “critical” aspects of the door, “i.e., the
moveable barrier ... with [] holes,” remain recessed or
partially recessed from the outer frame.
(Pl.’s Opp’n at 13-
16.)
In addressing these positions, the Court rejects, at the
outset, the notion that the pull tabs constitute, in essence,
non-essential features of the flood vent described in the
construed ’445 patent.
(See id. at 14-16.)
Indeed, in
advancing this argument, Smart Vent does little more than rehash
arguments previously considered and rejected in these
proceedings.
See Smart Vent, Inc., 2014 WL 6882281, at *10-*11
(determining that the pull tabs constitute a critical component
of the door, rather than merely an attachment); Smart Vent,
Inc., 2015 WL 5009213, at *3 (same).
More specifically, during
the Markman phase of this litigation, the Court twice
determined, after surveying the claim language and
specification, that the “pull tabs serve as an actual component
[or element] of the [claimed] door,” because they provide “at
least one means for its bidirectional rotation.”
Smart Vent,
Inc., 2015 WL 5009213, at *3 (citation omitted); see also 2014
WL 6882281, at *10-*11.
As a result, the pull tabs constitute an element
necessarily subsumed within the claim term “door” (and its
53
associated claim language), and the nature of the pull tabs on
the USA Floodair product, in turn, necessarily informs the
infringement inquiry.
Stated differently, the USA Floodair
product only infringes, at least literally, if it includes the
pull tab limitation in the “‘exact[]’” form described by claim
15 of the ’445 patent, Microsoft Corp., ___ F.3d ____, 2016 WL
1274394, at *6 (citation omitted), i.e., a pull tab attached to
a recessed door.41
From that premise, though, the parties’ positions become
somewhat more nuanced, because USA Floodair argues that its
flood vent products do not include “‘recessed’” doors because of
the extended or protruding nature of its pull tabs.
Reply at 7-14.)
(Def.’s
In that way, USA Floodair seeks, in essence, to
superimpose a qualification into the claim language that would
41
Nor do the cases relied upon by Smart Vent compel any
different result. (See Pl.’s Opp’n at 14 (citations omitted).)
Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931 (Fed.
Cir. 1990), for example, has no relevance here, because it
concerns a doctrine of equivalents analysis into the addition of
non-essential features, and not any inquiry into the literal
infringement of essential claims elements, as here. Id. at 94445. Tate Access Floors, Inc. v. Maxcess Techs., Inc., 222 F.3d
958 (Fed. Cir. 2000), in turn, addressed whether an entity with
an otherwise infringing product could avoid a finding of
infringement through the inclusion of an additional element to
its product. Id. at 970. Here, by contrast, the Court has not
found that the accused flood vent infringes the limitations of
claim 15. Even more critically, though, the pull tabs
constitute a critical component of the patented device, and not
simply an add-on by an alleged infringer for purposes of
avoiding infringement.
54
require the door and its components (including, the pull tabs)
to be completely recessed from the front and back of the outer
frame, rather than simply set inward.
(See id.)
That narrow
position, however, finds no support in the plain claim language,
nor in the Markman decision.
(See ’445 patent at 3:1-11
(emphasis added) (claiming “a door pivotally mounted ... wherein
the door is recessed from the front and back of the outer frame,
and includes a ventilation opening”).)
Beyond that, USA Floodair’s argument ignores the substance,
meaning, and effect of the parties’ agreement on the
construction of the term “recessed.”
6882281, at *11 n.10.
Smart Vent, Inc., 2014 WL
During the Markman proceedings, the
parties agreed, as explained above, that the term “recessed”
means “‘set inwardly from the front and the back.’”
Inc., 2014 WL 6882281, at *11 n.10.
Smart Vent,
As applied here, the
language of that definition implies that the “recessed” pull
tabs would begin, or be “‘set,’” from an inward position, but
provides no reasonable basis to require that the entire depth of
the pull tabs remain within the frame to be considered recessed.
Rather, it requires only that the starting portion of the pull
tabs be set inward.
Against that backdrop, the Court finds, as a matter of law,
that the door of USA Floodair’s allegedly infringing flood vent
literally infringes the “recessed ... door” limitation of the
55
’445 patent, because its starting point rests within the outer
frame.
In other words, the undisputed factual record
demonstrates only the conclusion that the USA Floodair flood
vent contains a recessed door, with pull tabs, a grille pattern
backed by screening, and a ventilation opening.
For all of
these reasons, the Court finds Smart Vent entitled to summary
judgment on the question of whether the USA Floodair product
literally infringes the construed claim limitation “recessed ...
door.”42
See FED. R. CIV. P. 56(a).
42
USA Floodair’s cross-motion
Turning briefly to the parties’ alternative positions on
doctrine of equivalents infringement, the Court notes USA
Floodair’s argument that prosecution history estoppel bars Smart
Vent from pursuing the doctrine of equivalents, because the
narrowing amendment “recessed” arose during the recent
reexamination. (See, e.g., Def.’s Br. at 14-17; Def.’s Reply at
14-19.) USA Floodair’s argument, however, misses the mark.
Generally speaking, “‘[p]rosecution history estoppel limits the
broad application of the doctrine of equivalents by barring an
equivalents argument for subject matter relinquished’” or
narrowed during prosecution, and can occur “‘in one of two ways,
either (1) by making a narrowing amendment to the claim
(“amendment-based estoppel”) or (2) by surrendering claim scope
through argument to the patent examiner (“argument-based
estoppel”).’” Intendis GMBH v. Glenmark Pharm. Inc., USA, ___
F.3d ____, No. 15-1902, 2016 WL 2848916, at *6 (Fed. Cir. May
16, 2016) (citation omitted). This preclusion, however, does
not apply where “‘the rationale underlying the [narrowing]
amendment...bear[s] no more than a tangential relation to the
equivalent in question.’” Id. (citation omitted). In this
case, the “recessed” limitation constitutes a narrowing
amendment, but the prosecution history contains no mention of
the “pull tabs,” because the pull tabs bore at most a tangential
relation to the “recessed” amendment—circumstances wellhighlighted by counsel for Smart Vent during oral argument.
Thus, Smart Vent may still rely upon the doctrine of
equivalents. Turning then to how those principles apply here,
the Court concludes that, even if it found no literal
56
for summary judgment on the same issue will, accordingly, be
denied.
The Court last addresses Smart Vent’s claims of unfair
competition.
Unfair Competition Issues
In its unfair competition claims, Smart Vent generally
alleges that USA Floodair engaged in “willful acts of unfair
competition” in violation of the Lanham Act, 15 U.S.C. §
1125(a)(1)(B), the New Jersey unfair competition statute,
N.J.S.A. §§ 56:4-1, 4-2, and state common law, by falsely and/or
misleadingly identifying its flood vents as certified as
compliant by FEMA, the ICC, and the NFIP.
(See Am. Compl. at ¶¶
30-57.)
In seeking summary judgment on these claims, USA Floodair
contends that its individual engineering certificates plainly
complied with TB-1, and that Smart Vent cannot show any harm
derived from “USA Floodair’s limited use of [its] admittedly
ambiguous [certification] language.”
(Def.’s Br. at 18-23.)
In
its competing motion for summary judgment, by contrast, Smart
infringement because of the protruding nature of the pull tabs
(which it does not), the USA Floodair vent would still infringe
the “door” limitation under an equivalence analysis, because the
pull tabs differ in an insubstantial way, and otherwise perform
substantially the same function in substantially the same way to
obtain substantially the same result, because both enable manual
bidirectional rotation. See Voda v. Cordis Corp., 536 F.3d
1311, 1326 (Fed. Cir. 2008) (describing the “‘difference
phrasings of the test for equivalence’”).
57
Vent seeks summary judgment on the TB-1 and poster-related
issues raised in USA Floodair’s motion, and on the grounds that
USA Floodair’s promotional materials included:
a.
Literally false statements in its individual
flood vent certifications that those
certifications are issued in accordance with
FEMA, NFIP and TB-1 requirements for engineered
openings;
b.
Literally false statements in its individual
flood vent certifications that those
certifications follow design requirements and
specifications that are established in TB-1;
c.
Literally false statements in its marketing and
promotional materials that each of their vents
can be certified by a state registered
professional engineer as stated in TB-1 and that
their flood vents are compliant with all FEMA and
NFIP guidelines for engineered openings;
d.
Literally false statements in its marketing and
promotional materials that its flood vents are
designed and constructed to meet the FEMA and
NFIP requirements and guidelines and also are
created to fulfill FEMA and NFIP guidelines;
e.
Literally false statements on its website that
FEMA and NFIP requirements for engineered
openings are met by its flood vents;
f.
Literally false statements in its marketing and
promotional materials that its customers will
“save money” on their flood insurance, and flood
insurance savings of up to 80% can be obtained
with the purchase of their flood vents; and
g.
Literally false statements on posters exhibited
at two trade shows, one in 2008 and one in 2009
that its flood vents are “FEMA, ICC and NFIP
State Engineered Certified Compliant Vents.”
58
(Pl.’s Opp’n at 23-25.)
In more succinct and demonstrative
terms, Smart Vent takes issue with the following advertisements:
(Exs. A & Q to DiMarino Dec.)
Nevertheless, because the
regulations of the NFIP, as addressed above, require nothing
more than a certification, the only statements that fairly
buttress Smart Vent’s unfair competition claims become those
directed at compliance with TB-1.
More specifically, Smart
Vent’s claim essentially hinges upon whether Smart Vent falsely
59
or misleadingly described its product as certified in accordance
with TB-1.
Section 43(a) of the Lanham Act governs claims of unfair
competition, and permits a civil action against:
[a]ny person ... [who] uses ... any false designation
of origin, false or misleading description of fact, or
false or misleading representation of fact, which ...
misrepresents the nature, characteristics, qualities,
or geographic origin of ... [the] goods, services, or
commercial activities...
15 U.S.C. § 1125(a)(1)(B).43
In other words, section 43(a)
provides “broad protection against various forms of unfair
competition and false advertising,” by specifically prohibiting
false or misleading factual statements concerning commercial
products.
Presley’s Estate v. Russen, 513 F. Supp. 1339, 1376
(D.N.J. 1981) (citations omitted).
A claim of false or
misleading representations, in turn, requires a showing:
a.
that the defendant made a false or misleading
statement concerning its product;
43
The New Jersey unfair competition law states that “[n]o
merchant, firm or corporation shall appropriate for his or their
own use a name, brand, trade-mark, reputation or goodwill of any
maker in whose product such merchant, firm or corporation
deals.” N.J.S.A. § 56:4-1. Unfair competition under New Jersey
common law, however, constitutes a far more amorphous area,
without any clear catalogue of the acts which amount to unfair
competition. See, e.g., Interlink Prods. Int’l, Inc. v. F & W
Trading LLC, No. 15-1340, 2016 WL 1260713, at *5 (D.N.J. Mar.
31, 2016). Nevertheless, because “unfair competition claims
under New Jersey statutory and common law generally parallel
those under § 43(a) of the Lanham Act,” the Court need not
conduct any separate inquiry into the state law requirements.
Bracco Diagnostics, Inc. v. Amersham Health, Inc., 627 F. Supp.
2d 384, 454 (D.N.J. 2009).
60
b.
that the statement caused actual deception or at
least created a tendency to deceive a substantial
portion of the intended audience;
c.
that the deception likely influenced purchasing
decisions by consumers;
d.
that the advertised goods traveled in interstate
commerce; and
e.
that the statement created a likelihood of injury
to the plaintiff in terms of declining sales,
loss of good will, etc.
See Warner-Lambert Co. v. Breathasure, Inc., 204 F.3d 87, 91-92
(3d Cir. 2000).
The Court has already determined, as detailed above, that
TB-1 calls for an individual certification different from that
provided by USA Floodair.
In other words, the Court concludes,
as a matter of law, that USA Floodair made at best a misleading
and at worst a false statement that the USA Floodair vents
comply with TB-1.
The undisputed evidence in that respect
therefore satisfies the first element.
Beyond that, the parties
agree that the USA Floodair vents traveled in interstate
commerce (see Pl.’s SMF at ¶ 5; Def.’s RSMF at ¶ 5),
establishing the fourth requirement for an unfair competition
claim.
As a result, the Court finds the entry of partial
summary judgment appropriate on the first and fourth elements.
The evidence on the remaining elements, however, remains
far sparser and insufficient to warrant summary judgment on the
61
overall unfair competition claim.
Indeed, Smart Vent provides
little, if any, actual evidence on the issues of likely
deception, the factors influencing consumer purchasing
decisions,44 nor any quantification or presentation on the injury
to Smart Vent from these false statements.
Rather, Smart Vent
points, more nebulously, to speculation and attorney argument,
but its factual record falls short of demonstrating the absence
of any triable issue on these elements of an unfair competition
claim.
Smart Vent claims, for example, that USA Floodair’s
misrepresentations have “diverted” sales from Smart Vent to USA
Floodair, but provides no support for that assertion.
SMF at ¶ 125; see also Little Dec. at ¶ 37.)
(Pl.’s
While there is a
reasonable inference that USA Floodair’s misrepresentation that
its product complies with TB-1 led to increasing its sales and
decreasing Smart Vent’s sales, that inference is unavailable to
Smart Vent as the movant in its summary judgment motion.
Beyond
that, it relies only upon the self-serving declaration of its
own Vice-President, who likewise advances the belief of
diversion, but points to no empirical evidence (in the form of
44
The Court recognizes the parties’ substantive agreement that
NFIP certification decreases flood insurance premiums. (See,
e.g., Ex. H to Graham Dec. at 4.) That circumstance, in turn,
creates at least the impression that certification-related
statements would influence purchasing decisions. That
reasonable impression, however, still stops short of
demonstrating the absence of a triable issue, particularly given
the parties’ otherwise limited attention to this requirement.
62
sales data or otherwise) to substantiate that notion.
Little Dec. at ¶ 37.)
(See
USA Floodair explains, by contrast, that
“consumers chose to buy flood vents from USA Floodair rather
than Smart Vent because USA Floodair offers a more cost
effective” and low maintenance “product.”
125.)
(Def.’s RSMF at ¶
State differently, USA Floodair hones in on aspects of
its product, aside from certification, that make it attractive
to consumers, and then augments its assertion with a declaration
that specifically highlights these practical advantages.
(See
Opatkiewicz Supp. Dec. at ¶ 13 (explaining that many consumers
may choose USA Floodair’s product, because it has “a more simple
construction” and requires little maintenance, while “Smart
Vent’s flood vents require maintenance twice a year”).)
Turning then to the issue of deception, Smart Vent adduces
no facts to demonstrate satisfaction of this element.
Indeed,
Smart Vent makes no mention of the term “deception” in any
portion of its 125-paragraph statement of material facts.
USA
Floodair claims, in turn, that its marketing “language” caused
no confusion, but relies only upon Mr. Bergaglio’s speculation
on a topic for which she has no personal knowledge, and not any
actually admissible evidence.
In view of these obviously disputed factual issues, summary
judgment on the second, third, and fifth elements will be
denied.
63
CONCLUSION
For all of these reasons, USA Floodair’s motions for
summary judgment and to strike will be denied, and Smart Vent’s
cross-motion for summary judgment will be granted in part and
denied in part to the extent it concerns infringement of the
’445 patent, and granted in part and denied in part to the
extent it concerns unfair competition.
An accompanying Order
will be entered.
June 27, 2016
Date
s/ Jerome B. Simandle
JEROME B. SIMANDLE
Chief U.S. District Judge
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