DCT
2:17-cv-05811
Alfred Miller Contracting Co v. Stockton Products Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Alfred Miller Contracting Company (Louisiana)
- Defendant: Stockton Products Inc. (Nevada)
- Plaintiff’s Counsel: Lowe | LeFan; Ni, Wang & Massand, PLLC
- Case Identification: 2:17-cv-05811, C.D. Cal., 08/04/2017
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular place of business and has committed acts of infringement within the Central District of California.
- Core Dispute: Plaintiff alleges that Defendant’s fireproofing corner bead products infringe a patent related to a self-aligning corner bead for applying fireproofing material to structural steel.
- Technical Context: The technology concerns components used in the construction industry to apply cementitious fireproofing to steel I-beams, a process critical for maintaining structural integrity during a fire.
- Key Procedural History: The complaint was filed in August 2017. A subsequent ex parte reexamination of the patent-in-suit, U.S. Patent No. 9,140,005, concluded on October 5, 2022, with the issuance of a certificate canceling all claims of the patent (Claims 1-19). This event is likely dispositive of the litigation. The complaint also alleges Plaintiff has used the patented invention in its own products since October 2012.
Case Timeline
| Date | Event |
|---|---|
| 2012-10-19 | Plaintiff's alleged first use of the invention (Compl. ¶9) |
| 2013-06-03 | Priority date for U.S. Patent No. 9,140,005 ('005 Patent, front page) |
| 2015-09-22 | U.S. Patent No. 9,140,005 issue date ('005 Patent, front page) |
| 2017-01-01 | Approximate start of alleged infringement ("Since at least 2017," Compl. ¶15) |
| 2017-08-04 | Complaint filing date (Compl. p. 1) |
| 2022-10-05 | Reexamination Certificate issues, canceling all claims of the '005 Patent ('005 C1 Certificate, front page) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,140,005 - "Self-Aligning Corner Bead for Fireproofing Structural Steel Member and Method of Using Same"
- Patent Identification: U.S. Patent No. 9,140,005, “Self-Aligning Corner Bead for Fireproofing Structural Steel Member and Method of Using Same,” issued September 22, 2015 (the “’005 Patent”).
The Invention Explained
- Problem Addressed: The patent’s background section describes conventional methods for installing corner beads on structural steel as difficult and skill-intensive. Specifically, it notes the challenge of properly aligning the bead to ensure a correct and uniform thickness of the applied fireproofing material ('005 Patent, col. 2:36-44).
- The Patented Solution: The invention is a V-shaped corner bead made of welded wire fabric, designed to be "self-aligning" ('005 Patent, Abstract). One "wing" of the V is fastened to the structure. The geometry of the bead—specifically the width of the second, unfastened wing and the angle between the wings—is designed to automatically gauge, or "determine," the correct thickness for the fireproofing material ('005 Patent, col. 2:59-63). A plastic "nosing" on the edge of the second wing acts as a rigid guide (or "screed edge") for leveling the material ('005 Patent, col. 3:9-14).
- Technical Importance: The invention aims to simplify and increase the accuracy of applying fireproofing by replacing a manual, skill-based alignment process with a pre-fabricated component whose physical dimensions dictate the outcome ('005 Patent, col. 2:45-49).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 3, 4, 6, 7, and 9 (Compl. ¶17).
- Independent Claim 1 of the ’005 Patent recites these essential elements:
- A self-aligning corner bead for fireproofing a structural steel member.
- Comprising a strip of welded wire fabric bent along its longitudinal axis to define a first wing and a second wing, with an angle between 90 and 180 degrees.
- The strip is "only fastened" to the steel member at the first wing.
- The outer edge of the second wing comprises a substrate operable to receive fireproofing material.
- The corner bead terminates at the outer edge of the second wing, which is "substantially planar."
- The width of the second wing and the angle between the wings "determine a uniform thickness" of the fireproofing material.
III. The Accused Instrumentality
Product Identification
- The "Plastic Nosed Fireproofing FormAid products" (the "Accused Instrumentality") (Compl. ¶15).
Functionality and Market Context
- The complaint alleges the Accused Instrumentality is a "deliberate copy" of the patented invention (Compl. ¶16). Its functionality is described in terms that mirror the elements of claim 1, including being a corner bead made of a bent strip of welded wire fabric with a plastic nose, where the angle and wing width allegedly determine the thickness of the applied fireproofing material (Compl. ¶18). Plaintiff alleges that its own products incorporating the invention are the "only products" with these benefits and that there is no acceptable non-infringing substitute, suggesting the accused products compete directly in a niche market (Compl. ¶11).
IV. Analysis of Infringement Allegations
The complaint alleges both direct infringement and infringement under the doctrine of equivalents but provides a factual basis only for literal infringement (Compl. ¶17). The complaint supports its infringement allegations with a reference to Figures 1-8 of an Exhibit B, which are described as depicting the Accused Instrumentality (Compl. ¶18).
’005 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a strip of welded wire fabric... bent along its longitudinal axis thereby defining a first wing and a second wing, each wing forming an angle between approximately 90 degrees and 180 degrees | The Accused Instrumentality includes a strip of welded wire fabric which is bent along its axis with a first and second wing forming an angle of between 90 and 180 degrees. | ¶18 | col. 3:51-57 |
| wherein the strip is only fastened to the structural steel member at one or more fastening positions of the first wing | The complaint alleges that only the first wing is fastened. | ¶18 | col. 3:6-9 |
| wherein an outer edge of said second wing comprises a substrate positioned along said outer edge, said substrate operable to receive a fireproofing material | The Accused Instrumentality includes a plastic nose on the outer edge for receiving fireproofing material. | ¶18 | col. 3:58-61 |
| wherein said corner bead terminates at the outer edge of said second wing, said second wing being substantially planar | The complaint alleges the plastic nose terminates at the edge of the second wing and the second wing is planar. | ¶18 | col. 2:59-63 |
| wherein a second width of said second wing and said angle formed between the wings determine a uniform thickness of the fireproofing material of said structural steel member | The complaint alleges that by modifying the angle of the second wing, the uniform thickness of the fireproofing material is determined. | ¶18 | col. 4:17-23 |
- Identified Points of Contention:
- Scope Questions: The negative limitation "only fastened... at the first wing" raises a potential dispute. The analysis may turn on whether the accused product, in practice, receives any support or attachment from its second wing that could be construed as "fastening," thereby avoiding infringement.
- Technical Questions: A central question is whether the accused product’s geometry functionally "determine[s] a uniform thickness" as claimed. Evidence may be needed to show whether the product is truly "self-aligning" or if installers must still use skill and secondary measurements to achieve a uniform depth, which could suggest a failure to meet this key functional limitation.
V. Key Claim Terms for Construction
The Term: "only fastened ... at ... the first wing"
- Context and Importance: This negative limitation is critical to distinguishing the invention from prior art and to proving infringement. A court's interpretation of "fastened" will be pivotal.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (i.e., less is "fastened"): Plaintiff may argue "fastened" should be construed to mean attached with a distinct joining means, such as the "pneumatic fastener," "welded pins or screws" mentioned in the specification ('005 Patent, col. 4:35-36). Under this view, mere contact or pressure on the second wing would not count as "fastening."
- Evidence for a Narrower Interpretation (i.e., more is "fastened"): Defendant may argue "fastened" should be given its plain meaning, which could include being held in a fixed position by any means, including pressure from the applied cementitious material itself. The patent does not explicitly define the term, leaving its scope open to argument.
The Term: "determine a uniform thickness"
- Context and Importance: This term encapsulates the core "self-aligning" benefit of the invention. Practitioners may focus on this term because infringement hinges on whether the accused product's physical structure causes the uniform thickness, or merely guides an otherwise manual process.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may point to the patent's objective of solving the "difficulty of properly adjusting the traditional corner bead" to argue that "determine" means the bead's geometry is the primary factor in setting the thickness, even if minor imperfections remain ('005 Patent, col. 4:25-27).
- Evidence for a Narrower Interpretation: Defendant could argue that "determine" implies a precise and automatic result. Language stating the invention avoids "inaccuracy in gauging the thickness" may suggest that if significant installer skill or secondary checks are still required, the device does not "determine" the thickness as claimed ('005 Patent, col. 2:45-46).
VI. Other Allegations
- Indirect Infringement: The complaint does not plead specific facts to support a claim for either induced or contributory infringement, such as allegations that Defendant instructed its customers on an infringing use.
- Willful Infringement: The complaint does not contain an explicit allegation of willful infringement or a request for enhanced damages. It does allege that the Accused Instrumentality is a "deliberate copy" of the invention, a factual allegation that could potentially support a future claim of willfulness (Compl. ¶16).
VII. Analyst’s Conclusion: Key Questions for the Case
The viability of this case appears to turn on a singular procedural issue, followed by more conventional claim construction and infringement questions.
A dispositive procedural question: What is the legal effect of the 2022 Reexamination Certificate that canceled all claims of the '005 Patent? The cancellation of all asserted claims during a co-pending litigation is typically fatal to an infringement action, raising the primary question of whether the case is now moot.
A core issue of definitional scope: Assuming the claims were viable, can the functional limitation "determine a uniform thickness" be met by the accused product? The case would depend on whether the product's geometry alone dictates the fireproofing depth or if it primarily functions as a conventional guide that still requires significant installer skill to achieve uniformity.
A key evidentiary question: What evidence exists regarding the installation and function of the accused product? Specifically, does it meet the negative limitation of being "only fastened" at its first wing, or does the second wing provide a degree of support or fixation that places the product outside the literal scope of the claims?