DCT
2:19-cv-09987
SRK Engineering Inc v. John Babcock
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SRK Engineering Inc. (California) and Jeremy Kirkpatrick (California)
- Defendant: John Babcock (Utah), Inside Bet, LLC (Utah), and All The Walls, Inc. (Utah)
- Plaintiff’s Counsel: Alston & Bird LLP
- Case Identification: 2:19-cv-09987, C.D. Cal., 11/21/2019
- Venue Allegations: Venue is based on allegations that Defendants conducted work in California for the California-based Plaintiff as a paid consultant, and that the alleged violative acts were directed at Plaintiffs and their activities within the district.
- Core Dispute: Plaintiffs allege that their employee, Jeremy Kirkpatrick, is an omitted co-inventor of four patents related to retaining wall systems and that Plaintiff SRK Engineering Inc. is the rightful owner of those patents by assignment.
- Technical Context: The technology concerns precast concrete structures and counterfort systems for building large-scale retaining walls used in civil engineering projects such as highways and railroad embankments.
- Key Procedural History: The complaint alleges that during the prosecution of the application for the '598 Patent, the named inventor added a "co-planar limitation" to overcome a prior art rejection. Plaintiffs assert this limitation was a significant contribution conceived by Jeremy Kirkpatrick, underscoring its importance to patentability.
Case Timeline
| Date | Event |
|---|---|
| 2015-01-01 (approx.) | SRK Engineering hires Defendant Babcock and All the Walls as a contractor |
| 2017-09-28 | Earliest priority date for all Patents-in-Suit (filing of U.S. App. No. 15/719,397) |
| 2018-06-18 | Filing date of U.S. App. No. 16/011,486 (leading to '418 Patent) |
| 2018-09-28 | Filing date of U.S. App. Nos. 16/146,873 ('164 Patent) and 16/146,961 ('583 Patent) |
| 2018-10-02 | U.S. Patent No. 10,087,598 issues |
| 2018-11-27 (approx.) | Defendants allegedly verbally agree to add Kirkpatrick as a co-inventor of the '598 Patent |
| 2019-03-25 | Defendants allegedly reverse position on adding Kirkpatrick as a co-inventor |
| 2019-05-07 | U.S. Patent No. 10,280,583 issues |
| 2019-07-02 | U.S. Patent No. 10,337,164 issues |
| 2019-09-03 | U.S. Patent No. 10,400,418 issues |
| 2019-11-21 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,087,598 - Counterfort Retaining Wall, issued October 2, 2018
The Invention Explained
- Problem Addressed: The patent's background describes conventional retaining walls built in tiers, where loads from upper tiers are transferred through compressible soil fill to lower tiers, an inefficient method for very high walls (’598 Patent, col. 1:19-29). Additionally, placing the necessary "counterfort" support beams required digging deep "slot cuts" into the backfill, which increased labor costs and time (’598 Patent, col. 5:12-18).
- The Patented Solution: The invention proposes using T-shaped counterfort beams that are elevated, meaning their bottom surface is positioned above the horizontal joint between tiers of wall panels (’598 Patent, Abstract; col. 5:20-24). This elevated position reduces the necessary depth of the slot cuts and lowers the vertical "surcharge pressure" that the upper wall assembly exerts on the lower tiers, allowing for more efficient and structurally sound tall walls (’598 Patent, col. 9:5-13; Fig. 6).
- Technical Importance: This approach sought to reduce excavation and labor costs while improving the structural load distribution in multi-tiered retaining walls, potentially enabling the construction of taller and more cost-effective structures (’598 Patent, col. 5:36-39).
Key Claims at a Glance
- The complaint asserts independent claims 1, 14, and 19, and dependent claim 21 (Compl. ¶¶ 33, 35).
- Independent Claim 1 includes:
- A plurality of wall panels in an array forming a plurality of tiers, "wherein the wall panels of a first tier are coplanar to wall panels of a second tier";
- A plurality of face joint members positioned between the wall panels; and
- A plurality of counterfort beams, each comprising a counterfort web and flange, coupled to a face joint member such that a "bottom surface of the counterfort flange is above a bottom edge of the face joint member," and further comprising an "inclined rear panel."
- Independent Claim 14 includes: A similar system where wall panels of a first tier are coplanar to wall panels of a second tier, a face joint member, and a counterfort beam with an inclined rear panel at a second end.
- Independent Claim 19 includes: A similar system with coplanar wall panel tiers, a face joint member, and a counterfort beam with an elevated flange and an inclined rear panel.
U.S. Patent No. 10,280,583 - Multi-Web Counterfort Wall System, issued May 7, 2019
The Invention Explained
- Problem Addressed: This patent addresses the same general field of retaining wall construction, focusing on the structural connection between the vertical face joint members and the horizontal counterfort beams that extend into the soil backfill (’583 Patent, col. 1:24-32).
- The Patented Solution: The invention discloses a "multi-web" design where the face joint member has at least two vertical webs extending from its rear face, and the counterfort beam has at least two corresponding vertical webs extending from its flange (’583 Patent, Abstract). The system is assembled by coupling the webs of the counterfort beam to the webs of the face joint member, creating a more distributed and potentially stronger connection compared to a single-web design (’583 Patent, col. 2:32-37; Fig. 53).
- Technical Importance: This multi-web architecture offers a different structural approach for transferring loads from the wall face to the soil-embedded counterforts, potentially increasing stability and design flexibility (’583 Patent, col. 2:1-4).
Key Claims at a Glance
- The complaint asserts dependent claim 2 (Compl. ¶ 35).
- Independent Claim 1 (from which Claim 2 depends) includes:
- A face joint member with a substantially flat face and "at least two webs extending orthogonally on an opposite side";
- A counterfort beam with "at least two counterfort webs extending from a counterfort flange"; and
- The counterfort beam is coupled to the face joint member by "coupling the at least two counterfort webs to the at least two webs of the face joint member."
U.S. Patent No. 10,337,164 - Threadbar Connections For Wall Systems, issued July 2, 2019
- Technology Synopsis: This patent focuses on the connection mechanism between the counterfort beam and the face joint member (’164 Patent, Abstract). It discloses using a "connecting threadbar" that passes through the components and can be tensioned, allowing the precast concrete parts to be locked together securely on-site (’164 Patent, col. 2:47-52).
- Asserted Claims: Dependent claim 10 (Compl. ¶ 35).
- Alleged Contribution: The complaint alleges that the "Monolithic Structure" concept conceived by Kirkpatrick is embodied in claim 10 of this patent (Compl. ¶ 35).
U.S. Patent No. 10,400,418 - Combined Counterfort Retaining Wall and Mechanically Stabilized Earth Wall, issued September 3, 2019
- Technology Synopsis: This patent describes a hybrid retaining wall that combines a lower portion made of a counterfort retaining wall with an upper portion made of a mechanically stabilized earth (MSE) wall (’418 Patent, Abstract). The invention places the bottom layer of the MSE wall above the counterfort beams of the lower wall structure, integrating two different retaining wall technologies (’418 Patent, col. 1:29-37).
- Asserted Claims: Dependent claims 16, 20, and 23 (Compl. ¶ 34).
- Alleged Contribution: The complaint alleges that the "Coplanar Wall" concept conceived by Kirkpatrick is embodied in these claims (Compl. ¶ 34).
III. Analysis of Inventorship Allegations
No probative visual evidence provided in complaint.
The core of the complaint is not infringement of the patents by a product, but rather a dispute over the inventorship of the claimed subject matter. The following table summarizes the allegations regarding Jeremy Kirkpatrick's inventive contributions.
’598 Patent Inventorship Allegations
| Claim Element (from Independent Claim 1) | Alleged Inventive Contribution by Kirkpatrick | Complaint Citation | Patent Citation |
|---|---|---|---|
| wherein the wall panels of a first tier are coplanar to wall panels of a second tier | Kirkpatrick conceived of the use of a "unique wall panel system wherein the panel faces of the upper tier wall panels are coplanar with the panel faces of the lower tier wall panels ('Coplanar Wall')." | ¶¶ 20, 33 | col. 15:37-39 |
| (from dependent claim 21) wherein each counterfort beam ... is formed together with a face joint member ... using monolithic construction | Kirkpatrick conceived of and suggested "forming the face joint member into the counterfort together to develop a monolithic construction ('Monolithic Structure')." | ¶¶ 22, 35 | col. 18:45-48 |
’583 Patent Inventorship Allegations
| Claim Element (from Independent Claim 1) | Alleged Inventive Contribution by Kirkpatrick | Complaint Citation | Patent Citation |
|---|---|---|---|
| (from dependent claim 2) wherein the counterfort beam is formed together with the face joint member using monolithic construction | Kirkpatrick conceived of and suggested "forming the face joint member into the counterfort together to develop a monolithic construction ('Monolithic Structure')." | ¶¶ 22, 35 | col. 37:16-19 |
- Identified Points of Contention:
- Legal Question (Conception): A central issue will be whether Kirkpatrick’s alleged contributions meet the legal standard for joint inventorship, which requires contribution to the "conception" of the invention. The analysis will question what evidence exists to show Kirkpatrick formed a "definite and permanent idea of the complete and operative invention" for the coplanar and monolithic features before they were communicated to the named inventor.
- Factual Question (Corroboration): The dispute will likely turn on the evidence Plaintiffs can produce to corroborate the allegations of conception. The court will examine what documentation or testimony, beyond Kirkpatrick's own statements, supports his alleged conception of the claimed features and his "significant involvement in... reducing to practice" these systems (Compl. ¶¶ 21, 23).
IV. Key Claim Terms for Construction
Term: "coplanar"
- Context and Importance: This term is the basis for the "Coplanar Wall" inventorship allegation. Its construction is critical because it defines the scope of the novel geometric arrangement that Kirkpatrick claims to have conceived. Practitioners may focus on this term to determine if Kirkpatrick’s alleged idea maps directly onto the claimed feature that was key to overcoming a prior art rejection (Compl. ¶ 33).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not given a special definition in the specification. Claim 1 of the ’598 Patent recites "wherein the wall panels of a first tier are coplanar to wall panels of a second tier," which could be argued under a plain and ordinary meaning to refer to the panels as whole structures lying in the same plane.
- Evidence for a Narrower Interpretation: The specification repeatedly describes the panel faces as being coplanar (e.g., ’598 Patent, col. 6:32-34, "the panel faces of the upper tier wall panels 110b are coplanar with the panel faces of the lower tier wall panels 110a"). This language, tied to specific embodiments, may support a construction limited to the alignment of the front surfaces of the wall panels.
Term: "monolithic construction"
- Context and Importance: This term defines the "Monolithic Structure" that Kirkpatrick allegedly conceived. The determination of inventorship for claims 21 of the ’598 Patent and 2 of the ’583 Patent depends on whether Kirkpatrick conceived of this specific manufacturing or assembly method for the claimed components.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not explicitly defined, suggesting it should be given its ordinary meaning in the field of precast concrete construction (i.e., cast as a single, solid piece).
- Evidence for a Narrower Interpretation: The specification provides context by contrasting monolithic construction with an alternative embodiment where the counterfort beam and rear panel are "a separate piece" and coupled together (’598 Patent, col. 11:58-61). This contrast helps frame the meaning of "monolithic" as an integrally formed, single unit comprising both the counterfort beam and the face joint member, as recited in the claims.
V. Other Allegations
- Declaratory Judgment of Patent Ownership: Plaintiffs seek a declaratory judgment that SRK Engineering Inc. is the rightful owner of the Patents-in-Suit (Compl. Count II). The complaint alleges that SRK hired Defendant Babcock as a contractor "to invent retaining wall systems" and paid him significant fees for this work, creating an obligation to assign the resulting inventions to SRK (Compl. ¶¶ 19, 50, 53). It is also alleged that Kirkpatrick, as an employee of SRK, was obligated to assign his inventive rights to the company (Compl. ¶ 45).
- Breach of Oral Contract: Plaintiffs allege that on or around November 27, 2018, Defendant Babcock verbally agreed to add Kirkpatrick as a co-inventor of the '598 Patent (Compl. ¶ 59). The complaint further alleges that Defendants breached this agreement by subsequently refusing to make the correction (Compl. ¶ 61).
VI. Analyst’s Conclusion: Key Questions for the Case
The case does not present a typical infringement dispute but rather a foundational challenge to inventorship and ownership. The outcome will likely depend on the resolution of three central questions:
- A primary issue will be one of evidentiary proof: Can Plaintiffs provide sufficient, corroborated evidence to demonstrate that Jeremy Kirkpatrick conceived of a significant element of the claimed inventions—specifically the "coplanar" panel arrangement and the "monolithic construction"—prior to or independent of the work of the named inventor?
- A key legal question will be one of contractual obligation: Based on the nature of the agreements between the parties, did an explicit or implied obligation exist for Defendant Babcock, as a paid contractor hired to invent, and for Jeremy Kirkpatrick, as an employee, to assign their inventive rights to Plaintiff SRK Engineering Inc.?
- A core factual question for the state law claim will be one of contract formation: Did the alleged verbal discussion of November 27, 2018, constitute an enforceable oral contract to correct inventorship, and did Defendants’ subsequent refusal constitute a breach of that contract?