DCT

2:22-cv-03513

Upstream Holdings LLC v. Steven C Brekunitch

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:22-cv-03513, C.D. Cal., 05/23/2022
  • Venue Allegations: Venue is alleged in the Central District of California based on Defendants' manufacturing activities, business operations, and, for certain individual defendants, alleged residence in the district.
  • Core Dispute: Plaintiff alleges that Defendants' manufacture and production of gutter protection products infringe a patent related to an apparatus for preventing pests and debris from entering rain gutters.
  • Technical Context: The technology concerns gutter guards with a sophisticated filtration system using varied aperture sizes and a corrugated surface to manage water flow while blocking debris.
  • Key Procedural History: The complaint alleges that on December 3, 2021, the then-owner of the patent sent a cease-and-desist letter to Defendants Brekunitch and Brek Leasing, providing pre-suit notice of the asserted patent. The complaint also details an alleged partnership formed in March 2020 between certain defendants and a third party to manufacture the equipment used to produce the accused products.

Case Timeline

Date Event
2016-05-02 ’668 Patent Priority Date
2019-12-31 ’668 Patent Issue Date
2020-03-XX Partnership formed to manufacture roll forming equipment (approx. date)
2020-07-30 Lease signed for commercial space in Corona, CA
2020-08-15 Roll forming equipment located in Corona commercial space (by date)
2021-12-03 Cease-and-desist letter sent to certain Defendants
2022-02-23 Defendants allegedly remove roll forming equipment from Corona facility
2022-05-23 Complaint Filing Date

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

U.S. Patent No. 10,519,668 - "Apparatus for Prevention of Pests and Debris from Gutters" (December 31, 2019)

The Invention Explained

  • Problem Addressed: The patent addresses the problem of conventional gutters becoming clogged with leaves and other debris, which renders them inoperable and may attract pests and rodents (Compl. ¶45; ’971 Patent, col. 1:36-41).
  • The Patented Solution: The invention is a gutter cover with two distinct portions designed for differential water and debris handling. A first portion, typically covering the main gutter area, has a corrugated surface and small apertures to filter fine debris like shingle granules. A second portion, located near the gutter's front lip, features a deeper channel with larger apertures, designed to manage higher volumes of water and allow larger granules to pass through, thereby preventing clogs and promoting drainage (’971 Patent, Abstract; col. 4:61-66). Patent Figure 1, attached as Exhibit B to the complaint, depicts a perspective view of the patented gutter cover design that Defendants are accused of manufacturing (Compl. Ex. B, p. 20).
  • Technical Importance: The two-part design with a corrugated surface and a drainage channel attempts to create a more effective filtration system than conventional guards by slowing water flow and segregating filtration tasks based on particle size and water volume (’971 Patent, col.4:30-39).

Key Claims at a Glance

  • The complaint alleges infringement of "one or more claims" without specifying which ones (Compl. ¶47). The patent contains one independent claim, Claim 1.
  • Independent Claim 1 requires, in part:
    • A "first portion" with apertures of a specific "first size" (1/16 to 3/16 inch width), a defined number of rows (11 to 15), specific spacing (3/8 to 5/8 inch), and a "corrugated surface".
    • A "second portion" with a "channel" (defined as two vertical walls and a horizontal bottom) and apertures of a "second size" larger than the first (1/8 to 1/4 inch width), a defined number of rows (1 to 4), and a specific channel depth (3/16 to 7/16 inch).
    • The "channel" is configured to make water "pool and flow in a circular motion" before draining.
    • The cover is configured to be mounted to a roof fascia and on top of the front lip of the gutter, with the bottom of the "channel" positioned below the top of the gutter lip.
  • The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities as custom-manufactured gutter protection products and the roll forming equipment, tooling, and dies used to produce them (Compl. ¶¶23-24, 31). The products themselves are not identified by a brand name but are described as "two unique designs protected by the '668 patent" (Compl. ¶24).

Functionality and Market Context

The complaint does not provide a technical description of how the accused products operate. Instead, it alleges that certain Defendants contracted with vendors to "design and manufacture roll forming equipment and tooling... necessary to produce" products embodying the patented designs (Compl. ¶24). The core allegation is that the defendants set up a manufacturing operation specifically to copy the patented invention (Compl. ¶22, ¶24). The complaint does not contain allegations regarding the products' commercial importance beyond their production for potential distribution (Compl. ¶26).

IV. Analysis of Infringement Allegations

The complaint does not provide a claim chart or a detailed mapping of accused product features to claim limitations. The infringement theory is based on allegations that Defendants contracted to have equipment made specifically to produce designs protected by the patent (Compl. ¶24). The following table summarizes this theory against the elements of the sole independent claim.

’668 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a first portion, the first portion including apertures of a first size... wherein the first portion extends in a range of 3 to 4 inches and includes 11 to 15 rows of apertures... which are spaced in a range of 3/8 inch to 5/8 inch, the first portion having a corrugated surface; The complaint alleges Defendants manufactured products embodying the patented designs, which would include a first portion with the claimed dimensions, aperture configuration, and corrugated surface. ¶¶24, 47, 50 col. 10:16-23
a second portion, the second portion including a channel and apertures of a second size... wherein the channel includes two vertical walls joined by a horizontal bottom surface... wherein the channel is configured to direct water to pool and flow in a circular motion... wherein the second portion extends in a range of 3/4 to 1.5 inch... and includes 1 to 4 rows of apertures... the channel having a depth of 3/16 inch to 7/16 inch; The complaint alleges Defendants manufactured products embodying the patented designs, which would include a second portion containing a channel and apertures with the specific structure and dimensions required by the claim. ¶¶24, 47, 50 col. 10:24-41
wherein an end of the first portion is configured to be mounted to a fascia of the roof and the end edge of the second portion is configured to be mounted on top of a front lip of the gutter such that a bottom of the channel is below a top of the front lip of the gutter. The complaint alleges Defendants manufactured products embodying the patented designs, which would include the claimed mounting configuration for installation on a gutter. ¶¶24, 47, 50 col. 10:42-47
  • Identified Points of Contention:
    • Evidentiary Questions: Claim 1 is highly specific, reciting numerous quantitative ranges for widths, depths, row counts, and spacing. A primary point of contention will be an evidentiary one: does the accused product, as manufactured by the Defendants, meet every precise numerical limitation of the claim? The complaint offers no specific measurements or data to support these elements.
    • Technical Questions: What evidence does the complaint provide that the accused product’s channel performs the specific function of causing water to "pool and flow in a circular motion" as required by the claim? The functionality of the accused product is not described, creating a potential dispute over whether it operates in the manner claimed.

V. Key Claim Terms for Construction

  • The Term: "corrugated surface"

  • Context and Importance: This term appears in the limitation for the "first portion" in Claim 1. Its construction is important because it defines the required topography of a major component of the device. Whether the accused product has a "corrugated surface" will be a central infringement question. Practitioners may focus on this term because the specification provides examples like "curved, or wave-like" surfaces and "ridges," which could be used to argue for a specific structural meaning beyond merely "not flat."

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term "corrugated" is a common English word, which may support an argument for applying its plain and ordinary meaning, covering various repeating patterns of ridges and grooves.
    • Evidence for a Narrower Interpretation: The specification describes the surface as "corrugated, curved, or wave-like" (’971 Patent, col. 4:31-32) and mentions that it may include "a plurality of flat portions" that "form the corrugated surface" and connect apertures at an "apex" or "valley" (’971 Patent, col. 4:40-48). A party could argue these examples limit the term to specific, non-uniform wave patterns rather than simple, uniform corrugation.

  • The Term: "channel"

  • Context and Importance: This is a central element of the "second portion" in Claim 1. The claim defines the channel structurally ("two vertical walls joined by a horizontal bottom surface") and functionally ("configured to direct water to pool and flow in a circular motion"). Its construction will be critical, as infringement requires matching both the structure and the function.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: A party might argue that any structure meeting the basic "two vertical walls" and "horizontal bottom" definition qualifies, and that the functional language ("configured to") only requires that the structure be suitable for causing pooling, not that it must do so in all conditions.
    • Evidence for a Narrower Interpretation: A party could argue the functional language imposes a strict requirement. The specification explains that the pooling and "circular motion" is intended to help "roof shingle granule(s) pass through" (’971 Patent, col. 5:1-4). This specific purpose could be used to argue that the term "channel" should be construed to require a structure that demonstrably achieves this specific debris-clearing function.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges infringement under 35 U.S.C. § 271(b) and (c) (Compl. ¶47, ¶50, ¶53). The factual basis for these allegations includes claims that Defendants Brekunitch and Brek Leasing contracted with other Defendants, such as M & M Machinery, to "design and manufacture" the infringing equipment and products (Compl. ¶23-¶24). It is also alleged that various individual defendants "participated in the production of articles protected by the '668 patent" (Compl. ¶30, ¶35, ¶37, ¶39). These allegations may support a theory of inducement by actively encouraging and aiding the direct infringement.
  • Willful Infringement: The complaint alleges that certain Defendants had pre-suit knowledge of the ’668 Patent via a cease-and-desist letter sent on December 3, 2021, which is attached as Exhibit A (Compl. ¶29, Ex. A). It is alleged that infringing activities continued after receipt of this notice, forming the basis for willful infringement (Compl. ¶48, ¶51, ¶54). The complaint also alleges willful infringement continuing after notice of the complaint itself (Compl. ¶68).

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

  • A central issue will be one of evidentiary proof: The patent’s sole independent claim recites numerous specific numerical ranges for dimensions, spacing, and component counts. As the complaint lacks specific technical data for the accused products, a key question for the court will be whether the plaintiff can produce evidence demonstrating that the defendants' products meet every one of these precise quantitative limitations.
  • A key legal question will be one of claim construction: Can the term "corrugated surface", described in the patent with "wave-like" examples, be construed to cover the specific surface topography of the accused products? The outcome of the construction of this term and "channel" will likely be dispositive for the infringement analysis.
  • A significant question for damages will be willfulness: The complaint provides evidence of a detailed pre-suit notice letter. A core issue will be whether the defendants' alleged continued manufacturing and other activities after receiving this notice rose to the level of objective recklessness required to support a finding of willful infringement and potential enhanced damages.