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., 08/17/2022
  • Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because the defendants manufactured, or aided in the manufacture of, the accused infringing products at facilities located within the district.
  • Core Dispute: Plaintiff alleges that Defendants’ gutter covers, produced using custom-built machinery, infringe a patent related to a dual-zone gutter protection system.
  • Technical Context: The technology concerns protective covers for rain gutters, designed to allow water to enter while filtering out debris such as leaves and preventing pests.
  • Key Procedural History: The complaint alleges that on December 3, 2021, the then-owner of the patent-in-suit sent a formal notice to Defendants Brekunitch and Brek Leasing, demanding they cease and desist from producing any product that would violate the patent.

Case Timeline

Date Event
2016-05-02 U.S. Patent No. 10,519,668 Priority Date
2019-12-31 U.S. Patent No. 10,519,668 Issue Date
2020-03-XX Defendants allegedly entered partnership to manufacture equipment
2020-07-30 Defendants allegedly signed lease for manufacturing facility in Corona, CA
2020-08-15 Manufacturing equipment allegedly located at Corona, CA facility
2021-12-03 Patent owner sent cease-and-desist notice to certain Defendants
2022-01-XX Alleged infringing production in Corona, CA continued
2022-02-23 Defendants allegedly removed manufacturing equipment from Corona facility
2022-08-17 Complaint Filing Date

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

  • Patent Identification: U.S. Patent No. 10,519,668, APPARATUS FOR PREVENTION OF PESTS AND DEBRIS FROM GUTTERS, issued December 31, 2019.
  • The Invention Explained:
    • Problem Addressed: The patent’s background section describes the problem of conventional rain gutters collecting debris, which can render them inoperable, as well as attracting pests and rodents (’971 Patent, col. 1:36-43).
    • The Patented Solution: The invention is a gutter cover constructed from a single piece of material, featuring two distinct portions to manage water flow and debris. A first portion, which sits over the main gutter opening, has a corrugated surface and rows of small apertures to slow down water and filter out larger debris (’971 Patent, col. 4:22-39). A second, narrower portion includes a recessed channel with larger apertures, designed to handle heavier water flow and allow smaller particles like roof shingle granules to pass through, preventing clogs (’971 Patent, col. 4:61-5:6). The channel is also described as being configured to make water churn or flow in a circular motion to aid in clearing these smaller granules (’971 Patent, col. 4:64-5:3).
    • Technical Importance: The claimed design seeks to provide a more effective filtration system than a simple screen by using a dual-zone approach with specifically sized and arranged apertures and distinct surface geometries to manage different types of debris and water flow rates (’971 Patent, Abstract).
  • Key Claims at a Glance:
    • The complaint asserts independent Claim 1 (’971 Patent, col. 10:14-44; Compl. ¶26).
    • The essential elements of Claim 1 include:
      • A first portion with apertures of a first size (1/16 to 3/16 inch width) and a corrugated surface.
      • A second portion including a channel and apertures of a second, larger size (1/8 to 1/4 inch width).
      • The channel is defined as having two vertical walls and a horizontal bottom surface and is configured to direct water to pool and flow in a circular motion.
      • The cover is configured to be mounted with the first portion on the roof fascia and the second portion on the front lip of the gutter.
      • The configuration requires that the bottom of the channel sits below the top of the gutter’s front lip.
    • The complaint alleges infringement of "one or more claims" of the ’668 Patent (Compl. ¶57).

III. The Accused Instrumentality

  • Product Identification: The accused products are gutter covers, referred to as the "K1" and "K2" designs, manufactured by the Defendants (Compl. ¶24, ¶27). The complaint's allegations focus primarily on the "K1 design" (Compl. ¶27).
  • Functionality and Market Context:
    • The complaint alleges the accused "K1 design" is an "identical copy" of a patented design and is a cover for protecting a gutter (Compl. ¶27). The accused device is described as having a first corrugated portion that mounts to the roof fascia and a second portion containing a recessed channel that mounts to the rain gutter lip (Compl. ¶27). A photograph provided in the complaint shows the accused device installed on a section of gutter, with annotations identifying the "Fascia Mount" and "Gutter Lip Mount" locations (Compl. at 11). The complaint alleges that Defendants manufactured "thousands of feet" of the product for "use, sale, or distribution" (Compl. ¶19).

IV. Analysis of Infringement Allegations

  • 10,519,668 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 apertures of the first size ... include a width in a range of 1/16 to 3/16 inch... the first portion having a corrugated surface The accused device has a corrugated first portion with small apertures. A photograph with a digital caliper purports to show a measurement of these apertures (labeled "Smaller Aperture Measured"). ¶27, ¶28, ¶29 col. 10:16-23
a second portion, the second portion including a channel and apertures of a second size... wherein the apertures of the second size are larger than the apertures of the first size and include a width in a range of 1/8 to 1/4 inch The accused device's second portion contains a recessed channel with larger apertures. A photograph with a digital caliper purports to show a measurement of these apertures (labeled "Larger Aperture Measured"), which is numerically larger than the measurement shown for the first portion's apertures. ¶27, ¶29 col. 10:24-37
the channel includes two vertical walls joined by a horizontal bottom surface The accused device's channel is alleged to have two vertical walls and a horizontal bottom surface. An annotated photograph labels the "Second Vertical Wall," "First Vertical Wall," and "Channel Bottom." ¶28 col. 10:28-30
the channel is configured to direct water to pool and flow in a circular motion before draining through the apertures of the second size The complaint alleges the roll forming equipment used to make the accused device "incorporated the recessed water channel," but does not explicitly describe the fluid dynamics within it. ¶6 col. 10:32-35
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 The accused device is described as mounting to the fascia and the rain gutter lip. An annotated photograph shows the "Fascia Mount" on the first portion and the "Gutter Lip Mount" on the second portion. ¶27 col. 10:40-43
such that a bottom of the channel is below a top of the front lip of the gutter The complaint alleges that when the accused device is mounted, the bottom surface of its channel is positioned below the gutter lip. ¶28 col. 10:43-44
  • Identified Points of Contention:
    • Scope Questions: Claim 1 recites numerous specific dimensional ranges for widths, lengths, aperture spacing, and row counts. The complaint provides photographic evidence with digital caliper readings purporting to show that the accused "K1" device meets certain of these limitations (Compl. at 12). A potential point of contention will be whether the accused products, as manufactured and sold, meet every numerical limitation recited in the asserted claim.
    • Technical Questions: A key technical question may arise from the functional limitation requiring the channel to be "configured to direct water to pool and flow in a circular motion." While the complaint alleges the presence of a "recessed channel" (Compl. ¶27), it does not provide evidence or specific allegations that this channel actually causes the claimed circular flow. The dispute may turn on whether the accused channel's structure inherently performs this function, or if there is a technical difference in its operation.

V. Key Claim Terms for Construction

  • The Term: "corrugated surface"

    • Context and Importance: This term defines the geometry of the first portion of the cover. Its construction is important because the specification suggests this feature helps slow water flow, aiding filtration. Practitioners may focus on this term because the degree and type of "corrugation" could be a point of dispute if the accused product has a wavy or ridged surface that differs from the patent's specific examples.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification suggests the term is not narrowly limited, stating the first portion may include a "corrugated, curved, or wave-like, surface" to "slow the flow of water" (’668 Patent, col. 4:31-35). This language may support a construction covering a variety of non-flat surfaces.
      • Evidence for a Narrower Interpretation: Dependent claim 5 requires the corrugated surface to have "at least two ridges" (’668 Patent, col. 11:1-2). This could be used to argue that "corrugated surface" in the context of this patent implies the presence of distinct ridges as shown in figures like Fig. 2, rather than just any non-flat texture.

  • The Term: "channel"

    • Context and Importance: This term is central to the structure and function of the second portion of the claimed invention. The claim provides a structural definition ("two vertical walls joined by a horizontal bottom surface"), which the infringement case will rely on.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim itself provides a clear structural definition. A party could argue that any structure meeting this geometric definition is a "channel," regardless of its precise dimensions or the fluid dynamics within it.
      • Evidence for a Narrower Interpretation: The claim also states the channel is "configured to direct water to pool and flow in a circular motion" (’668 Patent, col. 10:32-33). A party could argue that this functional language limits the scope of the structural term, meaning a recessed area that does not produce this "circular motion" is not a "channel" within the meaning of the claim.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that the various individual and corporate defendants "personally participated in and aided and abetted the infringing activities" (Compl. ¶11, ¶19). Specific allegations include designing the roll former machinery to produce the patented design, building the machinery, and participating in the manufacturing of the accused gutter covers (Compl. ¶24, ¶26). These allegations may support claims for induced infringement.
  • Willful Infringement: The complaint alleges that infringement was willful based on both pre-suit and post-notice knowledge. It alleges Defendants were "thoroughly familiar with the claims of the ‘668 patent" from the outset, as they were involved in building machinery specifically to produce the patented designs (Compl. ¶19, ¶24). It further alleges that Defendants received a specific cease-and-desist notice on December 3, 2021, and continued to produce infringing articles thereafter in January and February 2022 (Compl. ¶39, ¶40).

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

  • A core issue will be one of evidentiary proof: the complaint presents a "case in pictures," alleging the accused product is an "identical copy" and providing photographic measurements that appear to map directly to the specific dimensional limitations of Claim 1. The case may therefore turn on whether the defendants can successfully challenge the factual basis of these allegations and demonstrate a mismatch in one or more of the patent's precise structural or dimensional requirements.
  • A secondary legal question will be one of functional equivalence: does the accused product's recessed channel perform the specific function of causing water to "flow in a circular motion" as required by the claim? The resolution of this issue will likely depend on how the court construes this functional language and what evidence of fluid dynamics the parties present.
  • Finally, a central question for damages will be willfulness: given the allegations that Defendants were intimately familiar with the patent's claims from the start and continued to manufacture after receiving a cease-and-desist letter, the court will have to determine if this conduct was sufficiently egregious to warrant an award of enhanced damages.