Smart Vent, Inc. v. USA Floodair Vents, Ltd.

193 F.Supp.3d 395

SMART VENT, INC., Plaintiff,

v.USA FLOODAIR VENTS, LTD., Defendant.

Civil Action No. 10-168 (JBS/KMW)

United States District Court, D. New Jersey.

Signed June 27, 2016

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, and Daniel P. Burke, Esq., DANIEL P. BURKE & ASSOCIATES, PLLC, 240 Townsend Square, Oyster Bay, NY 11788, Counsel for Defendant.

OPINION

SIMANDLE, Chief Judge

Contents

I. INTRODUCTION...398

II. FACTUAL AND PROCEDURAL BACKGROUND...401

A. The NFIP Regulations on Flood Vents...401

B. FEMA Technical Bulletin 1, or TB-1...402

C. Smart Vent's Flood Vent and its ICC-ES Evaluation Report...404

D. USA Floodair's Flood Vent and its Individual Certification Process...406

E. Litigation in this District and Markman Decision...408

III. PRELIMINARY ISSUES...409

A. Admissibility of Coulbourne Report...409

1. Daubert Standard...409

2. Mr. Coulbourne's Report is Admissible...410

B. The Parties' Stipulation on the term "Recessed"...413

C. Admissibility of the Supplemental Declarations of Diane Bergaglio and Neil Opatkiewicz...414

IV. STANDARD OF REVIEW APPLICABLE TO THE PARTIES' CROSS-MOTIONS FOR SUMMARY JUDGMENT...415

A. Summary Judgment, Generally...415

B. Patent Infringement Standard...416

V. DISCUSSION...417

A. Patent Infringement Issues...417

1. Factual Issues Preclude Summary Disposition of the Parties' Positions on Literal Infringement of the Claim Term "Outer Frame"...417

2. USA Floodair's Product Literally Infringes the Construed Claim Term "Door"...420

B. Unfair Competition Issues...422

VI. CONCLUSION...425

I. 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 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 ... 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 & 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 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 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. (Def.'s Reply at 25-27.) 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;

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             8" by 16", +/- a 3/8" mortar
standard concrete masonry unit     joint
(CMU)"
"outer frame"                      the border that surrounds the
                                   fluid passageway, in which the
                                   door is mounted, but excluding
                                   the face plate or front
                                   portion
"door"                             a movable barrier which can
                                   open and close, including pull
                                   tabs and a grille pattern
                                   backed by screening

Against that backdrop, in resolving the parties' cross-motions 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. USA Floodair's motions for summary judgment and to strike will, by contrast, be denied in their entirety.⁷

II. FACTUAL AND PROCEDURAL BACKGROUND⁸

A. The NFIP Regulations on Flood Vents

In 1968, Congress enacted the National...