DCT

2:20-cv-11317

T&M Inventions LLC v. R&S Mfg Sales Co Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:20-cv-11317, C.D. Cal., 12/14/2020
  • Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendant is incorporated and resides in the district, and has a regular and established place of business in Newbury Park within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s skylight systems for metal roofs infringe three patents related to curbless support and closure structures for roof-penetrating installations.
  • Technical Context: The technology concerns methods for installing fixtures like skylights onto standing-seam metal roofs, a common feature in commercial and industrial buildings, by mounting them directly to the roof's structural ribs to improve weather resistance and simplify installation.
  • Key Procedural History: The complaint details a pre-suit notice letter sent to Defendant on August 1, 2013, which identified the patents-in-suit and accused an earlier version of the accused product (the "SS24") of infringement. Defendant responded on August 9, 2013, acknowledging receipt of the notice. This history is central to the plaintiff's allegations of willful infringement.

Case Timeline

Date Event
2008-10-02 Earliest Priority Date for ’798 and ’799 Patents
2011-03-14 Earliest Priority Date for ’801 Patent
2013-05-14 ’798, ’799, and ’801 Patents Issue Date
2013-08-01 Plaintiff sends notice letter to Defendant alleging infringement by the "SS24" product
2013-08-09 Defendant responds to Plaintiff's notice letter
Post-2013-08-01 Defendant allegedly introduces the accused "RS24 Prismatic Skylight"
2020-12-14 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,438,798 - "Roof Penetrating Closure Structures and Systems"

  • Patent Identification: U.S. Patent No. 8,438,798, "Roof Penetrating Closure Structures and Systems," issued May 14, 2013.
  • The Invention Explained:
    • Problem Addressed: The patent describes conventional skylight installations as requiring complex, leak-prone curb structures mounted within a roof cutout, which can be difficult to retrofit and seal effectively against water intrusion (’798 Patent, col. 1:35-43).
    • The Patented Solution: The invention proposes a "curbless construction system" that mounts directly onto the elevated structural ribs of a metal roof panel system. This system uses a rail and closure structure that spans the flat portion of a single roof panel between two adjacent ribs, utilizing the inherent beam strength of the ribs for support (’798 Patent, col. 3:12-25, FIG. 6). This approach is intended to simplify installation and improve weather resistance by keeping the mounting points above the primary water line of the roof panel flats (’798 Patent, col. 3:23-27).
    • Technical Importance: This design aims to reduce the complexity and failure points of traditional roof curb systems, allowing for more reliable and adaptable installation of skylights and other roof fixtures on common standing seam metal roofs (’798 Patent, col. 3:6-11).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1 (Compl. ¶32).
    • Essential elements of Claim 1 include:
      • A roof adaptive system for a sloping metal roof with elevated ribs and panel flats.
      • The system comprises a rail and closure structure configured to be supported by adjacent elevated ribs and to span the panel flat of a single roof panel between those ribs.
      • The structure comprises: (a) first and second rails mounted to the adjacent ribs on opposing sides of the panel flat; (b) an upper diverter extending between the rails at the upper end of the aperture; and (c) a lower closure extending between the rails at the lower end of the aperture.
    • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 8,438,799 - "Support Structures on Roofs"

  • Patent Identification: U.S. Patent No. 8,438,799, "Support Structures on Roofs," issued May 14, 2013.
  • The Invention Explained:
    • Problem Addressed: The patent addresses the need for an effective way to support various loads (such as skylights) on metal roofs that have ribs with a specific structure: a "rib shoulder" and a "standing seam extending up from such shoulder" (’799 Patent, col. 14:1-5). Traditional systems are described as complex and prone to leaking (’799 Patent, col. 1:26-34).
    • The Patented Solution: The invention is a load support structure comprising first and second rails specifically configured to be mounted to the "rib shoulders" of the roof panels. The rails are designed to "extend upwardly from such rib shoulders alongside and above such standing seams," creating a raised support frame that uses the strongest parts of the roof profile for support while staying above the water line (’799 Patent, col. 14:1-17, FIG. 8). End elements connect the rails to complete the structure.
    • Technical Importance: This solution provides a method for securely mounting loads that is tailored to the specific geometry of standing seam roof panels, leveraging the structural integrity of the rib shoulders for support while accommodating thermal expansion and contraction (’799 Patent, col. 9:20-44).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1 (Compl. ¶45).
    • Essential elements of Claim 1 include:
      • A roof adaptive system for a metal roof where ribs comprise a rib shoulder and a standing seam.
      • The system comprises a load support structure supported by first and second elevated roof panel ribs.
      • The structure comprises: (a) first and second rails mounted to the first and second roof panel ribs at the rib shoulders, and extending upwardly from the rib shoulders alongside and above the standing seams; and (b) end elements configured to extend between the rails.
    • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 8,438,801 - "Support Structures on Roofs" (Multi-Patent Capsule)

  • Patent Identification: U.S. Patent No. 8,438,801, "Support Structures on Roofs," issued May 14, 2013.
  • Technology Synopsis: This patent discloses a "closure support structure" that forms an "upstanding enclosing wall" around a roof aperture (’801 Patent, col. 22:1-10). The system comprises elongate side rails, an upper diverter, and a lower closure, all mounted directly onto the upstanding ribs of elongate metal roof panels to provide a complete, weather-tight enclosure (’801 Patent, col. 22:10-33).
  • Asserted Claims: The complaint asserts independent claim 15 (Compl. ¶57).
  • Accused Features: The complaint alleges that the combination of side rails, upper diverter, and lower closure in the Defendant’s RS24 product creates the claimed "upstanding enclosing wall" (Compl. ¶¶60-61).

III. The Accused Instrumentality

  • Product Identification: The accused product is the "RS24 Prismatic Skylight," also referred to as the "SS24 Skylight System" (the "Accused Product") (Compl. ¶¶21, 26-27).
  • Functionality and Market Context: The Accused Product is a skylight system designed for installation on standing seam metal roofs (Compl. ¶26, p. 5). The complaint alleges it functions as a "roof adaptive system" that uses rails shaped to match the profile of a raised rib on a standing seam roof to support loads (Compl. ¶29). Marketing materials cited in the complaint describe the system as featuring an aluminum base with side flanges that "nest with the roof panel profile for a seamless integration" (Compl. ¶39, p. 10). The product is shown with an "Upslope Curb Diverter" and a "Downslope Curb Closure" to manage water flow around the roof aperture (Compl. ¶¶40-41). The complaint provides an annotated diagram from Defendant's materials identifying the system's first and second rails, upper diverter, and lower closure (Compl. ¶61, p. 19).

IV. Analysis of Infringement Allegations

’798 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A roof adaptive system configured to be installed about an aperture in a sloping metal roof...such metal roof comprising a plurality of roof panels...arranged side by side, edges of adjacent such roof panels meeting at elevated rib structure portions thereof... The Accused Product is depicted on Defendant's website as a system for installation on a sloping, standing seam metal roof with elevated ribs. ¶35, ¶36 col. 11:47-56
said roof adaptive system comprising a rail and closure structure...configured to be supported by adjacent ones of the elevated ribs and to extend about such aperture and to span the panel flat portion of a single such roof panel... The Accused Product allegedly features a rail and closure structure that is supported by adjacent ribs and spans the flat panel between them. ¶37, ¶38 col. 11:56-63
(a) first and second rails, having lengths, and being configured to be mounted to respective first and second ones of such adjacent ribs on opposing sides of such single panel flat; Marketing materials allegedly show the Accused Product has first and second rails that "nest with" the roof panel profile on opposing ribs. An annotated diagram identifies these rails. ¶39 col. 11:64-67
(b) an upper diverter configured to extend from said first rail to said second rail across an upper end of such aperture; The Accused Product allegedly features an "Upslope Curb Diverter" that extends between the rails. ¶40 col. 12:1-3
(c) a lower closure configured to extend from said first rail to said second rail across a lower end of such aperture. The Accused Product allegedly features a "downslope curb") that functions as a lower closure extending between the rails. ¶41 col. 12:4-6
  • Identified Points of Contention:
    • Scope Questions: The case may turn on whether the Accused Product's components (e.g., "Upslope Curb Diverter") meet the specific functional and structural definitions of the claim terms "upper diverter" and "lower closure" as understood in the context of the patent.
    • Technical Questions: A key question will be the nature of the mounting. Does the Accused Product's method of "nesting with" the roof panel profile satisfy the claim requirement of being "mounted to" the adjacent ribs, and does it achieve the support configuration described in the patent?

’799 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A roof adaptive system...a given such roof panel rib comprising a rib shoulder, and a standing seam extending up from such shoulder... The complaint cites Defendant's marketing materials, which show a cross-section of the Accused Product mounted to a standing seam metal roof illustrating a rib shoulder and standing seam. ¶50 col. 14:1-5
said roof adaptive system comprising a load support structure...configured to be supported by first and second ones of the elevated roof panel ribs and to extend about such aperture and across a such panel flat... The complaint alleges the Accused Product is a load support structure supported by the roof ribs and extending across a panel flat, citing an annotated diagram. ¶51 col. 14:5-10
(a) first and second rails...being configured to be mounted to first and second ones of such roof panel ribs at such rib shoulders, and to extend upwardly from such rib shoulders alongside and above such standing seams... The complaint alleges the Accused Product's rails mount to the rib shoulders and extend upward alongside and above the seams, citing diagrams from Defendant's materials. ¶52 col. 14:11-15
(b) end elements configured to extend between adjacent ends of said first and second rails, thus to define ends of said load support structure. An annotated diagram from Defendant's materials is used to allege the presence of upper and lower end elements that extend between the rails. ¶53 col. 14:16-18
  • Identified Points of Contention:
    • Scope Questions: The dispute will likely center on the precise definitions of "rib shoulder" and the spatial relationship "alongside and above such standing seams." The construction of these terms will be critical to determining infringement.
    • Technical Questions: What evidence does the complaint provide that the Accused Product is actually "mounted...at such rib shoulders" as required by the claim? The cross-section diagram provided in the complaint (Compl. ¶50, p. 14) will be central evidence for both parties in arguing this point.

V. Key Claim Terms for Construction

For the ’798 Patent:

  • The Term: "roof adaptive system"
  • Context and Importance: This term appears in the preamble of the asserted claims of both the ’798 and ’799 patents. Practitioners may focus on this term to determine if it is limiting and, if so, what structural or functional characteristics a system must have to be "adaptive."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests the system is adaptive because it "utilizes the beam strength rib elements of the roof panels as an integral part of the closure support structure" and can "move with the expansion and contraction of the roof" (’798 Patent, col. 3:28-34). This could support a functional definition based on integration with and movement relative to the roof.
    • Evidence for a Narrower Interpretation: A defendant may argue the term is defined by the specific structures disclosed, such as the curbless rail and closure system mounted on elevated ribs, suggesting that only systems with this specific architecture qualify as "adaptive" under the patent.

For the ’799 Patent:

  • The Term: "mounted to...at such rib shoulders, and to extend upwardly from such rib shoulders alongside and above such standing seams"
  • Context and Importance: This phrase from Claim 1 of the ’799 Patent recites a very specific geometric and mounting arrangement. The entire infringement analysis for this patent may depend on whether the Accused Product meets this precise limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A plaintiff may argue that "shoulder" refers generally to the transition area between the flat panel and the angled side of the rib, and that any mounting in this region that results in the rail being beside and higher than the seam meets the claim. The specification describes the system as an improvement that utilizes the existing roof structure, suggesting the terms should be read to cover structures that achieve this functional goal (’799 Patent, col. 3:10-21).
    • Evidence for a Narrower Interpretation: The figures provide specific depictions of the "shoulder" (e.g., ’799 Patent, FIG. 1, element 16) and the rail's relationship to it (FIG. 8, element 242). A defendant could argue these specific embodiments define the required mounting location and spatial relationship, and that any deviation in the accused product is non-infringing.

VI. Other Allegations

  • Indirect Infringement: The complaint does not provide sufficient detail for analysis of indirect infringement. The allegations focus on Defendant's direct acts of making, using, selling, and offering for sale the Accused Product (Compl. ¶¶33, 46, 58).
  • Willful Infringement: The complaint alleges that Defendant's infringement has been willful and deliberate since at least August 1, 2013, the date of a notice letter sent by Plaintiff's counsel (Compl. ¶¶42, 54, 64). The complaint attaches both the notice letter and Defendant's response as exhibits, alleging this correspondence provided Defendant with actual pre-suit knowledge of the patents-in-suit and the infringement allegations (Compl. ¶¶22-23, 30).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can the specific claim language describing the mounting location, such as "mounted to...at such rib shoulders" and extending "alongside and above such standing seams" (’799 Patent), be construed to read on the configuration of the accused RS24 system? The resolution will depend on how the court interprets these precise structural and spatial limitations in light of the patent's specification and figures.
  • A key evidentiary question will be one of factual correspondence: assuming the court adopts a construction of the claim terms, what evidence will demonstrate how the accused RS24 product is actually constructed and installed? The analysis will likely focus on detailed comparisons between the claim language and technical evidence related to the Accused Product's geometry, such as the cross-section diagrams provided in the complaint.
  • A central question for damages will be willfulness: did the Defendant's receipt of the August 1, 2013 notice letter, which identified the patents and the original accused product, render its subsequent alleged infringement of the related RS24 product objectively reckless? The pre-suit knowledge alleged by the Plaintiff raises the possibility of enhanced damages if infringement is found.