DCT
2:17-cv-03877
Hanchett Entry Systems Inc v. Rutherford Controls Intl Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hanchett Entry Systems, Inc. (Arizona)
- Defendant: Rutherford Controls Int'l Inc. (Canada); VCR Capital Corp. (Canada); Rutherford Controls Int'l. Corp. (Virginia)
- Plaintiff’s Counsel: Woods Oviatt Gilman LLP
- Case Identification: 2:17-cv-03877, D. Ariz., 10/23/2017
- Venue Allegations: Plaintiff alleges venue is proper in the District of Arizona based on Defendants' business activities, including sales and distribution of products within the state. Additionally, venue is asserted based on a forum selection clause in a July 2012 settlement agreement between the parties, which designated the District of Arizona for any related disputes.
- Core Dispute: Plaintiff alleges that Defendants’ RCI CL Series Electric Strikes infringe four U.S. patents related to adjustable electric door strike mechanisms, and that the sale of these products constitutes a breach of a prior settlement agreement.
- Technical Context: The technology concerns electric strikes used in access control systems, focusing on mechanisms that permit on-site adjustment to compensate for misalignment between a door's latch and the doorframe, a common installation challenge.
- Key Procedural History: The complaint states that the parties were involved in prior litigation ("RCI I suit") filed in May 2012, where Plaintiff asserted infringement of the '966 Patent. That suit was resolved via a Settlement Agreement in July 2012. Plaintiff now alleges that Defendants' current activities breach that agreement and infringe the original patent plus three related patents issued after the settlement.
Case Timeline
| Date | Event |
|---|---|
| 2007-03-28 | Priority Date ('966, '067 Patents) |
| 2009-08-10 | Priority Date ('744, '227 Patents) |
| 2012-04-03 | U.S. Patent 8,146,966 Issued |
| 2012-05-01 | Prior "RCI I" lawsuit filed |
| 2012-07-25 | Settlement Agreement executed |
| 2012 (at least as early as) | Defendant allegedly received notice of '966 Patent |
| 2013-06-18 | U.S. Patent 8,465,067 Issued |
| 2014-07-22 | U.S. Patent 8,783,744 Issued |
| 2015 (at least as early as) | Defendant allegedly received notice of '067 and '744 Patents |
| 2016-10-25 | U.S. Patent 9,476,227 Issued |
| 2016 (at least as early as October) | Defendant allegedly received notice of '227 Patent |
| 2017-10-23 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,146,966 - "Integration of Vertical Adjustability in an Electric Strike," issued April 3, 2012
The Invention Explained
- Problem Addressed: The patent describes a problem in door installations where a door and its latch bolt do not properly align with the electric strike in the doorframe, causing an "ineffective or an inoperative strike locking system" that often requires costly modification of the doorframe or dust box to fix (’966 Patent, col. 1:50-58).
- The Patented Solution: The invention is an electric strike that incorporates a "selectively positionable" ramp element within the strike housing. This ramp element can be adjusted vertically at the time of installation to align perfectly with the door's latch and dead latch, compensating for any misalignment without requiring structural changes to the doorframe (’966 Patent, col. 2:8-18, Fig. 1).
- Technical Importance: This approach simplifies installation and improves the reliability of electric strike systems by providing a built-in mechanism to correct for common installation inaccuracies (’966 Patent, col. 2:13-18).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 9, 13, 14, and 15 (Compl. ¶44).
- Independent Claim 1 (Apparatus):
- a housing including a strike cavity
- a strike faceplate connected to the housing
- a ramp element connected to the housing that is selectively positionable relative to the faceplate, includes a first ramp surface, a channel in that surface, and a longitudinal axis
- wherein the ramp element is selectively positionable along its longitudinal axis to allow for selective adjustment of the channel to permit a dead latch to pass through
U.S. Patent No. 8,465,067 - "Integration of Vertical Adjustability in an Electric Strike," issued June 18, 2013
The Invention Explained
- Problem Addressed: This patent, a continuation of the '966 Patent's application, addresses the same problem of vertical misalignment between a door latch assembly and an electric strike (’067 Patent, col. 1:47-54).
- The Patented Solution: Rather than claiming the apparatus itself, this patent claims a method for aligning a dead latch with an electric strike. The method involves identifying a misalignment and then "selectively positioning" a ramp element within the strike to align a channel with the dead latch, thereby accommodating the misalignment (’067 Patent, col. 6:15-44).
- Technical Importance: The patent protects the novel process of using an adjustability feature to solve the installation problem, complementing the apparatus claims of the parent patent.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶60).
- Independent Claim 1 (Method):
- identifying a misalignment between the channel of a ramp element and a dead latch
- selectively positioning the ramp element relative to the dead latch so the channel is aligned with the dead latch
- wherein the channel is selectively positioned along the axis of the ramp element and in a plane parallel to the latch faceplate
Multi-Patent Capsule: U.S. Patent No. 8,783,744 - "Door Strike Having a Kicker and an Adjustable Dead Latch Release," issued July 22, 2014
- Technology Synopsis: This patent discloses an electric strike containing a pivotable "kicker" that interlocks with a keeper. When the strike is unlocked, the kicker actively urges the spring latch out of the strike cavity. It also includes an adjustable dead latch release platform that can be installed in multiple locations within the housing to accommodate various mortise lockset designs (’744 Patent, Abstract).
- Asserted Claims: Claims 10 and 12 are asserted; claim 10 is independent (Compl. ¶72).
- Accused Features: The complaint alleges that all models of the CL Series Strikes contain each element of the asserted claims (Compl. ¶71).
Multi-Patent Capsule: U.S. Patent No. 9,476,227 - "Door Strike Having a Kicker and an Adjustable Dead Latch Release," issued October 25, 2016
- Technology Synopsis: As a continuation of the '744 Patent's application, this patent further details the adjustable dead latch platform. It claims a platform that is movable into the strike cavity and also "adjustably positionable" in a second, perpendicular direction, providing a specific two-axis adjustment capability (’227 Patent, Claim 1).
- Asserted Claims: Claims 1, 2, 12, and 13 are asserted; claims 1 (apparatus) and 12 (method) are independent (Compl. ¶86).
- Accused Features: The CL Series Strikes are alleged to include a "dead latch platform that is adjustably positionable in a second direction that is perpendicular to a first direction into a housing cavity" (Compl. ¶84).
III. The Accused Instrumentality
- Product Identification: The complaint identifies the accused products as the "RCI CL Series Electric Strikes" ("CL Series Strikes"), naming "Model FCL114LM" as an exemplary model ("the Examined Model") (Compl. ¶¶35, 42).
- Functionality and Market Context: The complaint alleges the CL Series Strikes are electric strike products for use in door latch systems (Compl. ¶35). Their allegedly infringing functionality includes having a "channel for providing clearance to a dead latch" and a "ramp with a channel that is selectively positionable relative to the strike faceplate" (Compl. ¶¶36-37). For the later patents, the accused functionality is further described as including an "adjustably positionable" dead latch platform (Compl. ¶84). The complaint does not provide further detail on the products' market context beyond alleging they are made, used, sold, and imported into the United States (Compl. ¶¶41, 58).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint’s infringement allegations are based on an "examination" of an accused model but do not include detailed claim charts or technical evidence (Compl. ¶¶43, 59). The following summary is based on the narrative allegations.
'966 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing including a strike cavity... configured for selectively receiving said latch bolt and said dead latch | The overall body of the CL Series Strikes, which is designed to receive a latch system. | ¶36 | col. 4:1-2 |
| a strike faceplate connected to said housing | The faceplate of the CL Series Strikes. | ¶37 | col. 4:5-8 |
| a ramp element connected to said housing, said ramp element is selectively positionable relative to said strike faceplate | The CL Series Strikes are alleged to "have a ramp with a channel that is selectively positionable relative to the strike faceplate." | ¶37 | col. 4:31-33 |
| wherein said ramp element is selectively positionable... thereby allowing for the selective adjustment of said channel so that said dead latch... is permitted to pass through said channel | The alleged purpose and result of the selectively positionable ramp in the CL Series Strikes. | ¶37 | col. 4:36-44 |
'067 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for aligning a dead latch with an electric strike... identifying a misalignment between the channel... and the dead latch | The complaint alleges that the CL Series Strikes are used by customers in the U.S. to perform the patented method, which would include an installer identifying a misalignment. | ¶¶60-61 | col. 6:26-31 |
| selectively positioning the ramp element, and thereby the channel, relative to the dead latch so that the channel is aligned with the dead latch | An installer allegedly uses the "selectively positionable" feature of the CL Series Strikes to perform this alignment step. | ¶59 | col. 6:32-38 |
Identified Points of Contention:
- Evidentiary Questions: The complaint's allegations are conclusory, stating that an examination of the product found "each and every element" of the claims without providing the results of that examination (Compl. ¶¶43, 59, 71, 83). A primary point of contention will be whether Plaintiff can produce sufficient factual evidence during discovery to substantiate its infringement theories for each asserted patent.
- Scope Questions: For the '966 and '067 patents, the dispute may center on the meaning of "selectively positionable." For the '744 and '227 patents, the question will be whether the accused products contain the claimed "kicker" and a "dead latch release platform" that operates in the specific manner claimed.
- Method Claim Infringement: For the '067 and '227 method claims, a key issue will be proving that end-users (e.g., installers) perform all the claimed steps and establishing a basis for holding Defendants liable for that direct infringement.
V. Key Claim Terms for Construction
- The Term: "selectively positionable"
- Context and Importance: This term appears in the independent claims of both the '966 and '067 patents and is central to the core inventive concept of adjustability. The entire infringement case for these two patents hinges on whether the adjustment mechanism in the accused CL Series Strikes falls within the scope of this term. Practitioners may focus on this term because its construction will likely determine the outcome for at least two of the four asserted patents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that the term should be interpreted broadly to cover any mechanism that allows an installer to choose a position. The '966 patent specification discloses several distinct embodiments for achieving adjustability, including set screws (Fig. 1), shims (Fig. 6), screws engaging tapped bores (Fig. 7), a lead screw (Fig. 8), and a gear rack (Fig. 9), which may support an argument that the inventors did not intend to limit the claim to any single mechanism (’966 Patent, col. 4:56-64; col. 5:1-17).
- Evidence for a Narrower Interpretation: Defendant may argue for a narrower construction based on the specific embodiments shown. For example, the abstract states the ramp is "adjustable... and is securable at the time of installation," which could be argued to exclude mechanisms that are not fixed in place after adjustment (’966 Patent, Abstract). The consistent depiction of mechanical fasteners or interlocks might be used to argue against a construction that reads on other adjustment methods, such as a friction fit.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for all four patents, stating that Defendants encourage infringement by distributors and customers through marketing, advertising on their website, and by "creating and publishing installation instructions on installing and using the CL Series Strikes" (Compl. ¶¶46, 61, 73, 87). Contributory infringement is also alleged for claims 14 and 15 of the '966 Patent, asserting the CL Series Strikes are "specially made or specially adapted" for use in an infringing system and are not staple articles suitable for non-infringing use (Compl. ¶¶47-49).
- Willful Infringement: Willfulness is alleged for all four patents. The complaint asserts that Defendants had knowledge of each patent, providing specific dates of notice. For the '966 Patent, notice is alleged "at least as early as 2012," which corresponds to the timeline of the prior litigation (Compl. ¶52). For the other patents, notice is alleged to have been received in 2015 and 2016, respectively (Compl. ¶¶64, 76, 90). The allegations of continued infringement despite this knowledge form the basis for the willfulness claim (Compl. ¶¶55, 67, 79, 93).
VII. Analyst’s Conclusion: Key Questions for the Case
- Impact of Prior Settlement: A threshold issue will be the interpretation of the 2012 settlement agreement. The court will need to determine whether the accused CL Series Strikes fall within the scope of products that Defendants agreed not to sell, which could be dispositive of the breach of contract claim and may raise issues of claim or issue preclusion concerning the '966 Patent.
- Scope of Adjustability: The case for the lead patents will likely turn on a question of definitional scope: how broadly will the term "selectively positionable" be construed? The court's interpretation will determine whether the specific adjustment features of the accused products meet this core limitation of the '966 and '067 patents.
- Evidentiary Proof of Infringement: Given the complaint’s lack of specific technical comparisons, a key evidentiary question will be one of functional mapping: can the Plaintiff produce sufficient evidence to prove that the accused products' mechanisms, particularly the alleged "kicker" and "dead latch platform," perform the specific functions required by the claims of the '744 and '227 patents?