Golden Rule Fasteners Inc v. Best Materials LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Golden Rule Fasteners, Inc. (Alabama)
  • Defendant: Best Materials, LLC (Arizona)
  • Plaintiff’s Counsel: HENINGER GARRISON DAVIS, LLC
• Case Identification: 2:19-cv-00168, M.D. Ala., 03/07/2019
• Venue Allegations: Plaintiff alleges venue is proper in the Middle District of Alabama because Defendant regularly conducts business in the state, has purposefully availed itself of the privileges of conducting business there, and the causes of action arise from these business contacts.
• Core Dispute: Plaintiff alleges that Defendant’s retrofit roof flashing products infringe patents related to pipe flashing apparatuses designed to be installed around a pipe rather than over it.
• Technical Context: The technology at issue concerns flexible, wrap-around flashing for sealing pipe penetrations on shingle roofs, a market segment where installation is often complicated by obstructions on top of the pipes.
• Key Procedural History: The patents-in-suit are part of a family sharing a common priority date. Subsequent to the filing of this complaint, all three patents-in-suit underwent ex parte reexamination. These proceedings resulted in the cancellation of asserted independent claims in the '303 and '002 patents and the amendment of an asserted independent claim in the '475 patent. The viability of the infringement contentions in the original complaint may be significantly impacted by these post-filing events.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,141,303 - "PIPE FLASHING APPARATUS AND METHOD" (issued March 27, 2012)

The Invention Explained

• Problem Addressed: The patent describes the difficulty of installing conventional roof flashings, which must be slid over the top of a pipe. This method is not possible for pipes with obstructions like electrical wires or weatherheads, and existing retrofit solutions may not properly seal against a shingle roof. ('303 Patent, col. 1:11-20; col. 3:1-12).
• The Patented Solution: The invention is a flexible flashing apparatus featuring a "longitudinal opening" that runs its full length. This allows the flashing to be wrapped around the side of a pipe and then sealed shut, eliminating the need for top-down installation. ('303 Patent, Abstract; col. 2:52-62). The apparatus consists of a conical "collar" with tearable grooves to fit various pipe diameters, a "base" section, and a flat "foot" designed to be integrated with layers of shingles to prevent water intrusion. ('303 Patent, col. 2:7-13, col. 2:30-43).
• Technical Importance: The technology provides a method for creating a weather-proof seal around difficult-to-access pipe penetrations on shingle roofs, which previously posed a challenge for roofers. ('303 Patent, col. 2:1-6).

Key Claims at a Glance

• The complaint asserts "one or more claims of the ’303 Patent, including at least claim 1" (Compl. ¶14). A post-filing reexamination resulted in the cancellation of Claim 1.
• Independent Claim 1 (as originally issued) required:
  • A collar with a conical shape and annular grooves forming tear lines for different diameter pipes.
  • A base with a tapered cylindrical shape, coupled to the collar.
  • A foot coupled to the base, configured so its front portion can be installed atop shingles and its back portion beneath other shingles.
  • A longitudinal opening extending from the collar's apex to the foot's edge, allowing the flashing to be spread apart.
  • The opening is defined by opening members that are pressed together and secured by coupling members.

U.S. Patent No. 8,464,475 - "PIPE FLASHING APPARATUS AND METHOD" (issued June 18, 2013)

The Invention Explained

• Problem Addressed: Similar to its parent patent, the '475 Patent addresses the need for a roof flashing that can be installed around a pipe, rather than over it, particularly on shingle roofs. ('475 Patent, col. 1:20-29).
• The Patented Solution: This invention also describes a wrap-around flashing with a collar, base, and foot. The claims focus on the structure of the longitudinal opening, which is defined as having distinct first, second, and third sections that traverse the collar, base, and foot, respectively. ('475 Patent, claim 1). The invention also introduces the concept of including a "reinforcement material" within the foot to enhance durability. ('475 Patent, claim 8; col. 2:55-58).
• Technical Importance: This patent refines the wrap-around flashing design by claiming a specific segmented structure for the opening and by adding reinforcement to the foot, potentially increasing its robustness and lifespan. ('475 Patent, col. 4:30-35).

Key Claims at a Glance

• The complaint asserts "at least claims 1 and 8" (Compl. ¶22). A post-filing reexamination resulted in the cancellation of Claim 1 and the amendment of independent Claim 8.
• Independent Claim 1 (as originally issued) required:
  • A collar, a base, and a foot.
  • A longitudinal opening extending from the collar apex to the foot edge, comprising first, second, and third sections that traverse the collar, base, and foot, respectively.
• Independent Claim 8 (as originally issued) required:
  • A collar, a base, and a foot.
  • A longitudinal opening with first, second, and third sections.
  • The foot is associated with a reinforcement material.

U.S. Patent No. 8,534,002 - "PIPE FLASHING APPARATUS AND METHOD" (issued September 17, 2013)

Technology Synopsis

This patent continues the subject matter of a wrap-around roof flashing. It discloses a flashing with a conical collar, a "substantially cylindrical base," and a foot, all connected via a longitudinal opening. This opening allows the flashing to be installed around a pipe and then sealed. ('002 Patent, Abstract; col. 2:17-23).

Asserted Claims

The complaint asserts "at least claims 1 and 7" (Compl. ¶30). A post-filing reexamination resulted in the cancellation of all claims, including 1 and 7.

Accused Features

The complaint alleges that the accused products infringe by being roof flashing products that possess a longitudinal opening for installation around a pipe and are made of an elastomeric material. (Compl. ¶30).

III. The Accused Instrumentality

Product Identification

The accused products are sold under names including "Master Flash Electrical Mast Connection, EPDM," "Electrical Mast Connection," "Master Flash® Retrofit," and "Electrical Mast Connection Master Flash®" (Compl. ¶6, 12).

Functionality and Market Context

The complaint alleges these are roof flashing products designed to create a "weather-proof seal" around pipes, particularly in situations where installation "over the top of the pipe is not possible" (Compl. ¶14). The products are described as being made of an elastomeric material (EPDM) and featuring a "longitudinal opening" that allows the flashing to be spread apart, placed around a pipe, and then secured by "coupling members" (Compl. ¶14). The complaint also alleges that certain accused products have a foot reinforced with material such as metal (Compl. ¶22). The products are advertised and sold through Defendant's website and at retailer locations (Compl. ¶12, 14). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'303 Patent Infringement Allegations

'475 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A primary question is whether the general features described in the complaint meet the specific structural limitations of the claims. For instance, does the allegation of providing "weather protection" suffice to meet the '303 patent's specific claim that the foot is configured for layered installation atop and beneath shingles?
• Technical Questions: The complaint does not allege that the accused product's longitudinal opening is structured into the "first, second, and third sections" required by the '475 patent's claims. An evidentiary question will be whether the accused product actually has this specific tripartite structure. Further, the complaint lacks detail on whether the accused products possess a distinct "collar," "base," and "foot" that are "coupled" as claimed, or if they are of a different, more integrated construction.

V. Key Claim Terms for Construction

The Term: "a foot... configured so that a front portion of the foot may be installed atop one or more shingles... and a back portion of the foot may be installed beneath one or more shingles" ('303 Patent, Claim 1)

• Context and Importance: This term is central to how the patented flashing integrates with a shingle roof to ensure a waterproof seal. Practitioners may focus on this term because the infringement allegation is a general statement about "weather protection," which may not satisfy this specific structural and functional requirement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A plaintiff might argue this language covers any flat flange on a flashing that is large enough to be installed in a standard overlapping manner with shingles.
  • Evidence for a Narrower Interpretation: The specification suggests a more specific function, stating "the thickness and flexibility of the foot 101 is such that it acts as a shingle" ('303 Patent, col. 2:51-52). This could be interpreted to require the foot itself to have shingle-like properties, not just be a simple flange, potentially narrowing the claim's scope.

The Term: "longitudinal opening" ('303 Patent, Claim 1; '475 Patent, Claim 8)

• Context and Importance: This is the core inventive concept that enables the "retrofit" installation. Its construction will determine whether any slit in a flashing infringes or if the opening must possess specific characteristics disclosed in the patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The term itself is general, and a party could argue it reads on any lengthwise slit that allows the flashing to be wrapped around a pipe.
  • Evidence for a Narrower Interpretation: The specification describes the opening being sealed by "one or more fasteners, such as clip 400" that engage with "clip grooves 205" on the opening members ('303 Patent, col. 2:63-65; col. 3:13-25). A party could argue that a proper construction of "longitudinal opening" requires this specific interlocking and sealing mechanism, as depicted in Figures 2-5.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement of infringement, asserting that Defendant encourages and enables infringing use by providing "information brochures, promotional material," and instructions on its website (Compl. ¶15, 23, 31). It is also alleged that Defendant offers services to "select, deploy and integrate" the products for customers (Compl. ¶15).

Willful Infringement

The complaint alleges willful infringement based on both pre-suit and post-suit conduct. The pre-suit willfulness allegation is made "upon information and belief" that Defendant was aware of an objectively high likelihood of infringement prior to the lawsuit (Compl. ¶16, 24, 32). Post-suit willfulness is predicated on continued infringement after receiving notice via service of the complaint (Compl. ¶15, 17).

VII. Analyst’s Conclusion: Key Questions for the Case

• A dispositive threshold issue will be the impact of post-filing reexaminations. With the asserted independent claims of the '303 and '002 patents cancelled, and the asserted independent claim 8 of the '475 patent amended, a central question is whether Plaintiff's infringement case on these patents remains viable as pled, or if it is foreclosed for the '303 and '002 patents and requires a new theory for the amended '475 patent claim.
• Assuming claims survive, a key evidentiary question will be one of structural correspondence. Do the accused "Master Flash" products possess the specific, multi-part architecture (e.g., a distinct collar, base, and foot; a tripartite longitudinal opening) recited in the patent claims, or is there a fundamental mismatch between the products' actual construction and the detailed claim limitations?
• Finally, the case may turn on a question of definitional scope during claim construction. Can the term "foot... configured" for layered shingle integration be read broadly to cover any flange providing general "weather protection," or does the specification's language that the foot "acts as a shingle" impose a narrower, functional limitation that the accused products do not meet?