DCT
2:19-cv-04386
Golden Rule Fasteners Inc v. Best Materials LLC
Key Events
Complaint
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; Miller, Pitt, Feldman & McAnally, P.C.
- Case Identification: 2:19-cv-04386, D. Ariz., 06/05/2019
- Venue Allegations: Venue is alleged to be proper in the District of Arizona because Defendant is an Arizona corporation with its principal place of business in Phoenix, and it allegedly ships, sells, and advertises the accused products to customers within the district.
- Core Dispute: Plaintiff alleges that Defendant’s “Electrical Mast Connection Master Flash (EMC)” roof flashing products infringe a patent related to split, or “retrofit,” roof flashings designed to be installed around a pipe rather than over its top.
- Technical Context: The technology concerns weather-proofing seals for pipes that protrude through roofs, particularly for applications where obstructions prevent the use of standard, single-piece flashing.
- Key Procedural History: The complaint notes that other claims of the patent-in-suit, as well as two other related patents in the same family, are subject to post-grant examination at the USPTO and are not asserted at this time, but reserves the right to assert them upon completion of those proceedings.
Case Timeline
| Date | Event |
|---|---|
| 2009-10-23 | Priority Date (Filing of '933 Application) |
| 2012-02-23 | Filing of '444 Application (Continuation of '933) |
| 2012-03-27 | U.S. Patent No. 8,141,303 Issues |
| 2012-12-21 | Filing of '588 Application (Continuation of '444) |
| 2013-06-18 | U.S. Patent No. 8,464,475 (Patent-in-Suit) Issues |
| 2013-09-17 | U.S. Patent No. 8,534,002 Issues |
| 2019-06-05 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8464475, "Pipe Flashing Apparatus and Method," issued June 18, 2013.
The Invention Explained
- Problem Addressed: The patent addresses the difficulty of installing conventional, one-piece roof flashings over pipes that have obstructions, such as an electrical mast with a weatherhead or protruding wires, which prevent a flashing from being slid down over the top of the pipe (’475 Patent, col. 3:11-23).
- The Patented Solution: The invention is a flexible roof flashing with a "longitudinal opening" that runs from the top of its cone-shaped collar down through its flat base, or "foot" (’475 Patent, col. 2:64-67). This split design allows the flashing to be wrapped around a pipe from the side, after which the opening is sealed, creating a weather-proof barrier without needing to pass over the top of the pipe (’475 Patent, col. 3:1-10; Fig. 1).
- Technical Importance: This "retrofit" or "wrap-around" design provides a method to seal roof penetrations in common construction scenarios where traditional flashings are physically impossible to install (’475 Patent, col. 3:16-23).
Key Claims at a Glance
- The complaint asserts dependent claims 5 and 6, which rely on independent claim 1. The full scope of the allegation therefore incorporates claim 1.
- The essential elements of the asserted claim path (Claim 1 as narrowed by Claim 5) are:
- A roof flashing comprising a "collar" (conical shape), a "base" (coupled to the collar), and a "foot" (coupled to the base).
- A "longitudinal opening" that extends from the apex of the collar to an edge of the foot.
- The opening has edges that can be pulled apart, increasing its width to allow installation "around a pipe which is not capable of receiving the roof flashing over a top thereof".
- At least one of the collar, the base, and the "foot includes a reinforcement material".
- The complaint explicitly reserves the right to assert other claims of the ’475 Patent pending the outcome of a post-grant examination (Compl. ¶14, fn. 1).
III. The Accused Instrumentality
Product Identification
- The accused product is the “Electrical Mast Connection Master Flash (EMC)” (Compl. ¶12).
Functionality and Market Context
- The complaint describes the EMC product as a “retrofit design” or “split flashing” made of EPDM elastomeric material, which is used in applications where a flashing cannot be slid over a pipe penetration (Compl. Ex. B, p. 19).
- Technically, the product features a flexible, cone-shaped collar and a flat base designed to integrate with roofing materials (Compl. Ex. C, p. 23). A product brochure included as an exhibit shows the product in both an open (split) and closed configuration, illustrating its wrap-around functionality (Compl. Ex. C, p. 23).
- The complaint alleges the product’s base is made of a "heavy-duty aluminum alloy" which provides flexibility and corrosion resistance, and that this constitutes a reinforcement material (Compl. ¶14; Ex. B, p. 20). A photograph of the accused product shows this metallic layer on the underside of the flashing's foot (Compl. Ex. D, p. 25).
IV. Analysis of Infringement Allegations
’475 Patent Infringement Allegations
| Claim Element (from Independent Claim 1, as narrowed by Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A roof flashing comprising: a collar, the collar having a conical shape... a base... a foot... | The accused EMC product is a roof flashing that consists of a cone-shaped collar, a base, and a flat foot. | ¶14; Ex. B, C | col. 2:18-24 |
| a longitudinal opening extending from the apex of the collar to an edge of the foot... | The product is a "split flashing" with an opening that runs the length of the device, allowing it to be wrapped around a pipe. A product brochure photo shows this full-length opening. | ¶14; Ex. C, p. 23 | col. 2:64-67 |
| ...the longitudinal opening... increases to enable the roof flashing to be installable around a pipe which is not capable of receiving the roof flashing over a top thereof. | The product is marketed as a "retrofit design" for applications where "you cannot slide the flashing over / down a penetration," which directly corresponds to the claimed functionality. | ¶14; Ex. B, p. 19 | col. 3:1-10 |
| ...at least one of the collar, the base, and the foot includes a reinforcement material. | The complaint alleges the product's foot is "associated with a reinforced material, such as metal." Product literature states the base is a "heavy-duty aluminum alloy." | ¶14; Ex. B, p. 20 | col. 2:56-59 |
- Identified Points of Contention:
- Scope Questions: A potential issue is whether the distinct terms "base" and "foot" in the patent correspond directly to the components of the accused product, which is sometimes described as having a single integrated "flexible base." The patent describes the "foot" as coupled to the "base" and extending outwardly from it, suggesting two distinct components (’475 Patent, col. 2:40-42). The construction of these terms may be critical.
- Technical Questions: The complaint asserts claim 6, which requires the reinforcement material to be "embedded in the elastomeric material" (’475 Patent, col. 5:19-21). A key factual question will be whether the accused product's "heavy-duty aluminum alloy" layer is "embedded in" the EPDM material as the claim requires, or if it is attached or laminated in a way that falls outside the scope of that term. A photograph of the accused product shows a metallic layer on the flashing's underside, raising the question of its method of attachment (Compl. Ex. D, p. 25).
V. Key Claim Terms for Construction
The Term: "reinforcement material"
Context and Importance: This term is central because it is the specific limitation added by asserted claim 5. The infringement analysis for both asserted claims (5 and 6) depends on whether the accused product's "heavy-duty aluminum alloy" base meets this definition. Practitioners may focus on this term because the accused product's feature is described as a "Corrosion-Resistant Base" made of aluminum, and the dispute may turn on whether this constitutes a "reinforcement material" for the elastomeric flashing itself, or simply the base component.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not narrowly define the term, leaving it open to its plain and ordinary meaning. The term itself suggests any material added to improve strength or durability.
- Evidence for a Narrower Interpretation: The specification provides an example: "thin sheets of metal... embedded within the elastomeric material... in order to keep roof fasteners from damaging the foot 101." (’475 Patent, col. 3:30-34). A party could argue this example limits the term's scope to materials that are embedded and serve the specific purpose of preventing fastener damage.
The Term: "foot"
Context and Importance: The patent structurally distinguishes the "collar", "base", and "foot". Infringement requires mapping these distinct claimed elements onto the accused product. If the accused product's single "flexible base" does not have separate structures corresponding to the claimed "base" and "foot", it may support a non-infringement argument.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states the "foot" is "substantially rectangular" and "acts as a shingle," and is "coupled to the bottom edge of the base" (’475 Patent, col. 2:40-41, col. 2:64). This could be read to cover any flat, shingle-like portion of the flashing that attaches to the roof.
- Evidence for a Narrower Interpretation: Figure 1 and the accompanying description distinguish the "base" (104) from the "foot" (101), showing the "base" as a transitional section between the conical "collar" (102) and the flat "foot" (101). An argument could be made that the "foot" is only the outermost flat flange, distinct from the transitional "base" area.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement, stating that Defendant’s website, brochures, and promotional materials instruct and encourage customers to use the accused product in an infringing manner (Compl. ¶15). The complaint specifically notes Defendant "offers design services to select, deploy and integrate" the products for installing roof flashing (Compl. ¶15).
- Willful Infringement: The complaint alleges willful infringement based on an "objectively high likelihood" that Defendant's actions infringed a valid patent (Compl. ¶16). The pleading alleges Defendant had notice and awareness prior to the complaint's filing but does not state specific facts supporting pre-suit knowledge, relying instead on general allegations of objective recklessness (Compl. ¶16-17).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and structural mapping: can the patent’s three distinct structural elements—"collar", "base", and "foot"—be separately identified in the accused product’s physical design, or does the product’s integrated structure create a mismatch with the claim language? The resolution will depend on whether the court construes these terms to require physically distinct components or allows for functionally integrated regions.
- A key evidentiary question will be one of technical implementation: for infringement of claim 6, is the accused product's aluminum "reinforcement material" "embedded in" the elastomeric material as the claim requires? The case may turn on factual evidence regarding the manufacturing process and physical composition of the accused flashing.
- Finally, a central question will be one of definitional scope: does the accused product's aluminum "base" function as a "reinforcement material" for the elastomeric component, as contemplated by the patent, or does it serve as the primary structural component to which the elastomer is attached, potentially placing it outside the claim's scope?