DCT
6:23-cv-01710
Screenco Systems LLC v. City Of Cordova
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Screenco Systems, LLC (Idaho)
- Defendant: City of Cordova (Alabama)
- Plaintiff’s Counsel: Clark Law Firm; Constellation Law Group, PLLC
- Case Identification: 6:23-cv-01710, N.D. Ala., 12/18/2023
- Venue Allegations: Venue is alleged to be proper because Defendant is a municipal corporation that resides in the district and has allegedly committed acts of patent infringement within the district.
- Core Dispute: Plaintiff alleges that a septic receiving station used by the Defendant infringes the ornamental design protected by Plaintiff's design patent.
- Technical Context: The dispute concerns equipment for wastewater treatment, specifically portable septic receiving stations used to filter trash and debris from wastewater.
- Key Procedural History: The complaint details significant pre-suit history, alleging that the Defendant first solicited a bid from the Plaintiff for a specific patented product, declined to award the contract, and then acquired and began using a system alleged to be a "substantial replica" of a different one of the Plaintiff's patented products. The Plaintiff also alleges it sent a notice letter regarding the infringement, which was ignored.
Case Timeline
| Date | Event |
|---|---|
| 2015-02-23 | '889 Patent Priority Date (Application Filing Date) |
| 2016-05-31 | '889 Patent Issue Date |
| 2021-01-31 | Defendant allegedly first contacted Plaintiff for cost estimates (month specified) |
| 2021-02-11 | Defendant issued a formal "Bid Notice" for Plaintiff's product |
| 2021-09-05 | News article reported Defendant's purchase of the accused system |
| 2023-02-28 | Plaintiff sent correspondence to Defendant alleging infringement |
| 2023-12-18 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D757,889, “Septic Receiving Station With Screen,” issued May 31, 2016.
The Invention Explained
- Problem Addressed: The patent itself, as a design patent, does not contain a background section describing a technical problem. The complaint frames the context as pertaining to systems for "filtering and removal of trash and debris from wastewater" (Compl. ¶2).
- The Patented Solution: The patent protects the specific ornamental appearance of a septic receiving station. The design, as depicted in the patent's figures, consists of a large, open-topped rectangular housing containing an angled screen made of parallel bars that funnels material downward. Key visual features include the V-shaped hopper underneath the screen, a side-mounted input chute, an output pipe, and a supporting leg structure ('889 Patent, FIG. 1, 6).
- Technical Importance: The complaint alleges that the Plaintiff is a "market leader in the design, manufacture, and sale of systems for wastewater filtration" ('Compl. ¶2).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for a septic receiving station with screen, as shown and described" ('889 Patent, Claim).
- In a design patent, the claim's scope is defined by the visual appearance of the article depicted in the drawings. Infringement is determined by comparing the overall ornamental appearance of the accused product to the design shown in the patent figures.
III. The Accused Instrumentality
- Product Identification: A septic receiving station owned and operated by the Defendant, which the Plaintiff terms the "Replica System" (Compl. ¶24).
- Functionality and Market Context: The accused product is used at the Defendant's wastewater treatment facility to filter septic waste (Compl. ¶4, ¶5). The complaint alleges the system is a "substantial replica" of Plaintiff's "Mini Screen 400" product (Compl. ¶24). It is further alleged that the Defendant uses the Replica System as a source of revenue by charging private businesses for its use, with projected annual revenue of $110,000 (Compl. ¶4, ¶23).
IV. Analysis of Infringement Allegations
Design patent infringement is assessed under the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint supports its infringement allegations with side-by-side visual comparisons. The complaint provides a table comparing a top-down schematic from the '889 Patent's Figure 6 with an overhead photograph of the accused Replica System's screen (Compl. ¶30). A second comparison table contrasts the same patent figure with a different angled photograph of the Replica System, highlighting the material input area (Compl. ¶31). A third table presents a side-by-side view of the '889 Patent's Figure 1 isometric drawing and a side-profile photograph of the accused system (Compl. ¶32).
The core allegations are summarized below by comparing key visual features.
'889 Patent Infringement Allegations
| Design Feature (from '889 Patent Figures) | Alleged Infringing Feature in Replica System | Complaint Citation | Patent Citation |
|---|---|---|---|
| Overall rectangular frame with an open top | The Replica System is depicted as having a similar open-topped rectangular frame. | ¶32 | FIG. 1, 4, 5 |
| Angled screen composed of parallel bars sloping down into a V-shaped hopper | Photographs show the Replica System has an angled screen with parallel bars that appears to slope into a hopper. | ¶30, ¶31 | FIG. 1, 6 |
| Side-mounted material input chute and an opposing perforated wall section | Photographs of the Replica System show a side-mounted input pipe and an opposing wall with perforations, consistent with the patented design. | ¶31, ¶32 | FIG. 1, 6 |
| Overall visual impression as a complete unit | The complaint alleges that the overall appearance of the Replica System is "substantially the same" as the design protected by the patent. | ¶29, ¶34 | FIG. 1-7 |
- Identified Points of Contention:
- Visual Similarity: The central dispute will be a visual comparison: would an ordinary observer, giving the attention a purchaser of such equipment normally gives, find the accused Replica System and the patented design to be substantially the same? The photographic evidence provided in the complaint will be central to this question (Compl. ¶30, ¶31, ¶32).
- Role of Prior Art: The infringement analysis for a design patent requires comparing the patented and accused designs in the context of the prior art. A question for the court will be how the scope of the '889 Patent's design is informed by prior art designs for similar wastewater screening equipment, which is a topic not detailed in the complaint.
V. Key Claim Terms for Construction
For a design patent, claim construction does not typically involve interpreting disputed text-based terms. Instead, it focuses on the scope of the claimed design as a whole, as depicted in the patent's drawings. The claim language, "The ornamental design for a septic receiving station with screen, as shown and described," directs all analysis to the visual representations in Figures 1-7 of the '889 Patent. Therefore, there are no specific claim terms whose construction is likely to be a central point of contention in the manner of a utility patent case. The dispute will instead focus on the application of the "ordinary observer" test to the visual evidence.
VI. Other Allegations
- Indirect Infringement: The complaint alleges direct infringement by the Defendant for "using and/or making" the accused system and does not plead separate counts for indirect infringement (Compl. ¶38, ¶39).
- Willful Infringement: The complaint alleges that the infringement was "willful, deliberate, malicious, and in bad faith" (Compl. ¶41). This allegation is supported by claims of pre-suit knowledge based on communications between the parties in January and February 2021, including a Bid Notice from the Defendant that specifically identified one of Plaintiff's patented products (Compl. ¶14-18). The willfulness claim is also based on the Defendant's alleged decision to ignore a cease-and-desist letter sent by the Plaintiff on February 28, 2023 (Compl. ¶35).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental design of the Defendant's "Replica System" substantially the same as the design claimed in the '889 Patent? The side-by-side photographic evidence presented in the complaint (Compl. ¶30-32) suggests this will be a fact-intensive inquiry.
- A key evidentiary question will concern intent and willfulness: What do the facts surrounding the pre-suit bidding process and subsequent purchase of the accused system indicate about the Defendant's knowledge of the '889 Patent and intent to copy? The allegation that Defendant solicited a bid for a patented Screenco product before acquiring an alleged "replica" will likely be a focus of discovery.
- The case also presents a unique procedural context, as the patent infringement claim is brought alongside state law claims alleging violations of Alabama's competitive bidding laws and constitution. How these parallel claims influence the litigation strategy and potential remedies will be an important aspect of the case.