DCT
5:18-cv-01048
Special Projects Operations Inc v. Broco Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Special Projects Operations, Inc. (Virginia)
- Defendant: Broco, Inc. (California)
- Plaintiff’s Counsel: Davis Wright Tremaine LLP; Whiteford, Taylor & Preston, LLP
- Case Identification: 5:18-cv-01048, C.D. Cal., 05/15/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant resides in the judicial district, has a regular and established place of business in the district, and has committed the alleged acts of patent infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s EASYLIGHT brand torching rod products and systems infringe a patent related to exothermic torching rods with simplified ignition mechanisms.
- Technical Context: The technology concerns exothermic torching rods, used by military, police, and rescue personnel to cut through metal barriers in emergency and tactical situations.
- Key Procedural History: The patent-in-suit is a continuation of a chain of prior applications. Plaintiff, Special Projects Operations, Inc., acquired the rights to the patent through two separate assignments from Osen-Hunter Group, LLC and OHG Innovative Technologies, LLC.
Case Timeline
| Date | Event |
|---|---|
| 2012-02-29 | Earliest Priority Date for U.S. Patent No. 9,849,536 |
| 2017-03-15 | Assignment of interest in patent application from OHG to Plaintiff |
| 2017-12-26 | U.S. Patent No. 9,849,536 Issued |
| 2018-05-03 | Assignment of interest in patent application from OIT to Plaintiff |
| 2018-05-15 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,849,536 - "Silent Entry Torching and Oxygen Delivery System and Configuration" (Issued Dec. 26, 2017)
The Invention Explained
- Problem Addressed: The patent describes conventional exothermic torching systems as difficult to use in emergency or rescue operations because they require heavy, high-amperage 12-volt or 24-volt batteries and associated equipment to ignite the rod (Compl. ¶11). The background section further notes that conventional rods using magnesium cores can be hazardous to ship and may degrade over time, leading to failures (’536 Patent, col. 1:57-2:10).
- The Patented Solution: The invention is a torching rod that simplifies ignition by incorporating an ignition source, such as steel wool, that can be sparked by a small, portable, low-voltage power source like a 9-volt battery (Compl. ¶12). This design replaces hazardous magnesium cores with safer stainless steel fibers and creates a self-contained, portable system that eliminates the need for bulky external ignition equipment ('536 Patent, col. 2:11-24, 6:4-10). Figure 3 of the patent illustrates the concept of using a simple battery (306) to ignite the steel wool (302) at the tip of the torching rod (100).
- Technical Importance: This approach makes exothermic torching systems lighter, more portable, and easier to deploy for first responders, military, and police, particularly in confined spaces or time-sensitive situations ('536 Patent, col. 2:18-24).
Key Claims at a Glance
- The complaint asserts independent claims 1, 5, 10, and 16 (Compl. ¶22).
- Independent Claim 1 recites a torching rod comprising:
- a consumable fuel source of elongate members surrounding a hollow center portion;
- a flowpath formed by the hollow center portion for oxygen;
- a rigid tube sheath enclosing the fuel source and hollow portion; and
- an ignition source positioned to intersect the flowpath, with a portion extending outside the rod.
- Independent Claim 16 recites a torching system comprising:
- a torching rod (with elements similar to Claim 1, including a pressurized flowpath);
- a handle device with a body, inlet, outlet, and a valve to adjust oxygen flow;
- an oxygen container to supply the pressurized flowpath; and
- a regulator coupled to the oxygen container.
- The complaint reserves the right to assert additional claims (Compl. ¶22).
III. The Accused Instrumentality
Product Identification
- Defendant’s torching rods and related systems sold under the trademark EASYLIGHT (Compl. ¶17).
Functionality and Market Context
- The complaint alleges the EASYLIGHT torching rods are constructed with a consumable fuel source made of elongate members held inside a rigid exterior sheath, which creates a central oxygen flow path (Compl. ¶17). The rods allegedly feature an ignition source of steel wool at the end that intersects the oxygen flowpath and is designed to be ignited by a 9-volt battery (Compl. ¶¶17-18). The complaint further alleges these rods are sold both individually and as part of a complete system that includes a handle device, an oxygen container, and a regulator (Compl. ¶19). The complaint references a promotional advertisement for the EASYLIGHT system from the Defendant's website as Exhibit B, though the exhibit itself is not included in the provided filing (Compl. ¶17). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint references a claim chart exhibit (Exhibit C) that was not provided (Compl. ¶22). The analysis below is based on the narrative allegations in the complaint body.
’536 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a consumable fuel source comprising a plurality of elongate members configured to burn during an exothermic operation, wherein the plurality of elongate members surrounds a hollow center portion within the torching rod | The EASYLIGHT rods include a "consumable fuel source comprised of elongate members" that are "arranged to create a central hollow portion." | ¶17 | col. 12:44-47 |
| a flowpath formed by the hollow center portion for oxygen to burn the consumable fuel source | The central hollow portion "defines an oxygen flow path." | ¶17 | col. 12:48-51 |
| a rigid tube sheath enclosing the consumable fuel source and the hollow center portion | The fuel source is "held within a rigid, exterior sheath." | ¶17 | col. 5:49-50 |
| an ignition source positioned to intersect the flowpath to ignite the oxygen within the flowpath, wherein a portion of said ignition source extends outside of said torching rod | An ignition source of steel wool is "provided at the end of the EASYLIGHT torching rod and intersects the oxygen flowpath." | ¶17 | col. 13:59-64 |
’536 Patent Infringement Allegations (Claim 16)
| Claim Element (from Independent Claim 16) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a torching rod comprising... | The EASYLIGHT torching rods, as described in ¶17 of the complaint. | ¶17 | col. 11:63-64 |
| a handle device configured for connection to the torching rod... | Defendant sells the rods "in combination with a system that includes a handle device for connection to the EASYLIGHT torching rods." | ¶19 | col. 14:48-54 |
| an oxygen container configured to supply the pressurized flowpath of oxygen to the handle | The accused system includes "an oxygen container." | ¶19 | col. 15:19-21 |
| a regulator coupled to the oxygen container to regulate the pressurized flowpath | The accused system includes "a regulator." | ¶19 | col. 15:28-33 |
Identified Points of Contention
- Scope Questions: Claim 1 requires a "rigid tube sheath." The patent also discloses embodiments with a "bendable metal sheath" (Claim 7). A potential dispute may arise over the definition of "rigid" and whether the accused EASYLIGHT product's "rigid, exterior sheath" (Compl. ¶17) falls within the scope of that term, or if it possesses a degree of flexibility that might distinguish it from the claim language.
- Technical Questions: A key factual question is whether the accused product's steel wool ignition source is "positioned to intersect the flowpath" and has a portion that "extends outside" the rod, as required by the claims. The complaint alleges the steel wool "intersects the oxygen flowpath" (Compl. ¶17), but the precise physical arrangement will be critical and may require expert testimony to resolve.
V. Key Claim Terms for Construction
"rigid tube sheath" (Claim 1)
- Context and Importance: The scope of "rigid" is central to the infringement analysis for Claim 1. The patent discloses various embodiments, and Defendant may argue its product's sheath is not "rigid" in the manner contemplated by the claim, potentially pointing to more flexible configurations discussed elsewhere in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests some flexibility, stating that in some embodiments, the sheath is "comprised of metal that is bendable when force is applied against it" ('536 Patent, col. 5:54-56).
- Evidence for a Narrower Interpretation: Claim 1 explicitly uses the word "rigid," while dependent Claim 7 introduces a "bendable metal sheath." This suggests that "rigid" was intended to have a meaning distinct from "bendable." The specification also distinguishes between a "rigid rod" and a "flexible cable" configuration ('536 Patent, col. 12:50-52).
"positioned to intersect the flowpath" (Claim 1)
- Context and Importance: This term defines the physical relationship between the ignition source and the oxygen stream. Infringement will depend on the exact placement and configuration of the steel wool in the EASYLIGHT rod. Practitioners may focus on this term because a configuration where the igniter is merely adjacent to the flowpath's exit, rather than intersecting it, could be argued as non-infringing.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term could be interpreted functionally to mean any position where the spark from the ignition source reliably ignites the oxygen, regardless of direct physical obstruction of the flowpath.
- Evidence for a Narrower Interpretation: The figures, such as the cutaway view in Fig. 4B, show the ignition source (302) placed at the very end of the rod, directly in the path of the flow (106), suggesting an end-on, direct intersection. Defendant could argue this specific arrangement is required.
VI. Other Allegations
Indirect Infringement
- The complaint does not contain specific factual allegations supporting claims for either induced or contributory infringement, focusing instead on direct infringement by Defendant for its "making, using, selling, and offering for sale" of the accused products (Compl. ¶22).
Willful Infringement
- The complaint makes a conclusory allegation of willful infringement "Upon information and belief" (Compl. ¶23). It does not specify a basis for pre-suit knowledge, such as a prior notice letter or other communication.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of definitional scope: Can the term
"rigid tube sheath"in Claim 1 be construed to read on the accused EASYLIGHT product's sheath, or will claim differentiation and specification distinctions between "rigid" and "bendable" embodiments limit the term's scope to exclude the accused product? - A key evidentiary question will be one of physical configuration: What is the precise physical placement of the steel wool in the EASYLIGHT torching rod? The case may turn on factual evidence and expert testimony establishing whether this placement constitutes an "intersection" with the oxygen flowpath, as required by the patent, or a different, non-infringing arrangement.
- A third question relates to system infringement: For the system claims, Plaintiff will need to prove that Defendant makes, uses, or sells a combination of elements meeting every limitation of Claim 16. The dispute may focus on whether Defendant's sales of individual components, versus complete kits, satisfy the requirements for direct infringement of the system claim.