DCT

5:19-cv-02026

Sandvik IP Ab v. Kimball Equipment Co

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:19-cv-02026, C.D. Cal., 10/22/2019
  • Venue Allegations: Venue is alleged to be proper because each Defendant has a principal or a regular and established place of business within the district and has committed the alleged acts of patent infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendants’ cone manganese liners for gyratory crushers infringe a utility patent and a design patent related to the structure and appearance of an inner crushing shell.
  • Technical Context: The technology concerns specialized wear parts for gyratory crushers, which are capital-intensive machines essential for size reduction of rock and ore in the mining, quarrying, and construction industries.
  • Key Procedural History: The complaint alleges that Defendants had actual notice of U.S. Patent No. 7,338,000 at least since April 28, 2017, when Plaintiff’s counsel sent a notification letter, a fact which may be relevant to the claim of willful infringement.

Case Timeline

Date Event
2005-03-24 U.S. Patent No. 7,338,000 Priority Date
2008-03-04 U.S. Patent No. 7,338,000 Issue Date
2013-06-27 U.S. Patent No. D781,937 Priority Date
2017-03-21 U.S. Patent No. D781,937 Issue Date
2017-04-28 Alleged date of notice of infringement of the '000 Patent
2019-10-22 Complaint Filing Date

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

U.S. Patent No. 7,338,000 - "Shell for a Gyratory Crusher and a Gyratory Crusher"

  • Patent Identification: U.S. Patent No. 7,338,000, "Shell for a Gyratory Crusher and a Gyratory Crusher," issued March 4, 2008 (Compl. ¶20; ’000 Patent, front page).

The Invention Explained

  • Problem Addressed: The patent’s background section describes a common problem in gyratory crushers where some material pieces are too large for the primary crushing gap. This can cause blockages that reduce capacity and require manual cleaning, or force operators to use an inefficiently wide gap setting, which deteriorates the quality of the crushed product and causes unfavorable wear on the machine's shells (’000 Patent, col. 1:43-58).
  • The Patented Solution: The invention introduces an inner crusher shell with at least one "additional crusher surface," which functions as a wedge or shoulder. This surface is geometrically configured to have a decreasing distance to the shell's center axis in the direction of rotation. This design allows the shell to catch oversized objects on a shelf-like feature and, through the gyrating motion, squeeze and break them into smaller pieces before they enter the main crushing gap, thereby improving efficiency and throughput (’000 Patent, Abstract; col. 6:10-24).
  • Technical Importance: This design purports to make a crusher less sensitive to variations in the size of supplied material, enabling it to process a wider range of inputs without needing frequent shell replacements or sacrificing operational efficiency (’000 Patent, col. 2:15-27).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2-4, 7-9, and 11-14 (Compl. ¶22).
  • Independent Claim 1 requires, in essence:
    • An inner shell for a gyratory crusher that rotates in a first direction to crush material against an outer shell.
    • The inner shell has at least one "additional crusher surface" with a decreasing distance to the center axis as viewed in horizontal projection in the first direction of rotation.
    • This additional surface has a "first end" (downstream) at a "first distance" from the center axis and a "second end" (upstream) at a "second distance" from the center axis.
    • The "second distance" is greater than the "first distance."
    • This geometry allows objects to be introduced near the first end and then squeezed and crushed as they move toward the second end.

U.S. Design Patent No. D781,937 - "Crushing Shell"

  • Patent Identification: U.S. Design Patent No. D781,937, "Crushing Shell," issued March 21, 2017 (Compl. ¶43; D’937 Patent, front page).

The Invention Explained

  • Problem Addressed: Design patents protect the ornamental, non-functional appearance of an article of manufacture rather than solving a technical problem.
  • The Patented Solution: The D’937 Patent claims the specific ornamental design for a crushing shell as depicted in its seven figures. The design is characterized by the overall visual appearance of a frustoconical body featuring a tiered upper portion with symmetrically placed, recessed wedge-like elements that create a distinct visual impression (D’937 Patent, Figs. 1-7).

Key Claims at a Glance

  • Design patents contain a single claim for the ornamental design as shown and described (D’937 Patent, Claim).
  • The asserted claim protects the overall visual appearance of the crushing shell, including its specific proportions, surface contours, and the arrangement of its primary features as illustrated in the patent's drawings.

III. The Accused Instrumentality

Product Identification

The accused products are identified as "CWP's Cone Manganese Liners products," specifically including part numbers 15-0009 and 15-2170, which are described as "wedged inner shell mantles for gyratory crushers" (Compl. ¶¶ 15, 23).

Functionality and Market Context

The complaint alleges the accused products are used as inner shells in gyratory crushers, where they rotate to crush material within a gap formed with an outer shell (Compl. ¶23). The complaint provides a side-by-side visual comparison to allege that the appearance of the accused products infringes the D’937 Patent (Compl. ¶47). This table shows photographs of a dark, metallic, frustoconical object labeled "Infringing Product" that has recessed features on its upper portion (Compl. ¶47). The complaint does not provide specific details regarding the accused products' market share or commercial positioning.

IV. Analysis of Infringement Allegations

’000 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An inner shell for use in a gyratory crusher... which during crushing will rotate around its own center axis in a first direction... "Each of the Infringing Products is an inner shell for use in a gyratory crusher... [and] rotates around its center axis in a first direction and crushes the material against the outer shell of the crusher." ¶23 col. 1:10-18
wherein the inner shell has at least one additional crusher surface, which, in horizontal projection and as seen in the first direction, has a decreasing distance to said center axis "Each of the Infringing Products has at least one additional crusher surface that in horizontal projection and as seen in the first direction, has a decreasing distance to said center axis." ¶24 col. 2:1-4
and which at a first end, which is situated at the downstream end... is situated at a first distance from the center axis, and at a second end, which is situated at the upstream end... is situated at a second distance from the center axis, which second distance is greater than said first distance "A first end of the additional surface is situated at... a first distance from the center axis. Further, a second end... is situated at... a second distance from the center axis. Finally, the second distance is greater than said first distance..." ¶24 col. 2:4-10
so that objects can be introduced between the additional crusher surface and the outer shell near said first end in order to, near said second end, be squeezed between the additional crusher surface and the outer shell and be crushed. "...so that objects can be introduced between the additional crusher surface and the outer shell near said first end in order to, near said second end, be squeezed between the additional crusher surface and the outer shell and be crushed." ¶24 col. 2:10-14

Identified Points of Contention

  • Technical Questions: The complaint's infringement allegations for the '000 Patent track the claim language directly but do not provide supporting evidence like technical drawings, measurements, or operational data for the accused products. A central question will be whether discovery produces evidence to substantiate these conclusory allegations, particularly the precise geometric relationships (e.g., "decreasing distance," "second distance is greater than said first distance") required by the claim.
  • Design Patent Infringement: For the D’937 patent, the core dispute will be the application of the "ordinary observer" test. The complaint alleges that an ordinary observer would perceive the designs to be "substantially the same" (Compl. ¶50). The analysis will focus on a comparison of the overall visual effect of the accused products against the patented design, and whether any differences are significant enough to alter the overall appearance in the eyes of an ordinary purchaser. The visual comparison table provided in the complaint will be a key piece of evidence for this analysis (Compl. ¶47).

V. Key Claim Terms for Construction

The Term: "additional crusher surface" (’000 Patent, Claim 1)

  • Context and Importance: This term defines the core novel feature of the patented invention. The outcome of the infringement analysis will likely depend on whether the "wedges" on the accused products are construed as meeting the definition of an "additional crusher surface." Practitioners may focus on this term because its scope will determine whether the accused feature is covered by the claim.
  • Intrinsic Evidence for a Broader Interpretation: The specification describes the feature functionally, stating its purpose is to "squeeze the objects into pieces" and be "adapted for optimum crushing," which could support a construction covering any surface that performs this function, regardless of its specific form (’000 Patent, col. 2:15-16, col. 3:19-21).
  • Intrinsic Evidence for a Narrower Interpretation: The patent’s embodiments show the "additional crusher surface" as being formed on a distinct "shoulder" which is part of a "shelf" structure (’000 Patent, col. 3:12-16, Fig. 2a). This could support a narrower construction that limits the term to a surface integrated into such a specific configuration.

The Term: "decreasing distance to said center axis" (’000 Patent, Claim 1)

  • Context and Importance: This geometric limitation is critical for defining the shape and function of the "additional crusher surface." Proving infringement will require demonstrating that the accused product's geometry satisfies this precise constraint.
  • Intrinsic Evidence for a Broader Interpretation: The claim language does not specify the rate or continuity of the decrease. This may support a construction where any overall decrease in radius along the rotational path, even if not perfectly smooth or monotonic, meets the limitation.
  • Intrinsic Evidence for a Narrower Interpretation: The patent figures, such as Figure 3, depict a smooth, continuous "bulging arc-shape" where the distance to the center axis (CL) decreases from D2 to D1. This could be used to argue that the term requires a specific, continuous curvature as shown in the preferred embodiments, rather than an abrupt or stepped change in distance (’000 Patent, col. 2:45-47, Fig. 3).

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement. It asserts inducement by alleging Defendants actively and knowingly encourage others (e.g., end-users) to use the infringing products (Compl. ¶34). It asserts contributory infringement by alleging Defendants sell a product that they know is "especially made or especially adapted for practicing the invention" and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶35).

Willful Infringement

The complaint alleges willful infringement based on Defendants' continued infringing conduct after receiving actual notice of the ’000 Patent via a letter dated "approximately April 28, 2017" (Compl. ¶¶ 12, 37). The prayer for relief seeks a finding of willful infringement for both patents-in-suit (Compl. p. 9).

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

  • A core issue will be one of evidentiary proof: Can Plaintiff produce technical evidence, such as 3D scans or engineering drawings of the accused products, sufficient to demonstrate that their geometry meets the specific relational and functional limitations recited in claim 1 of the '000 patent, moving beyond the conclusory allegations in the complaint?
  • A second key issue will be one of visual perception: In the context of industrial equipment, would an "ordinary observer" view the overall ornamental design of the accused crushing shell as substantially the same as the D'937 patented design, or are there sufficient visual differences to distinguish them?
  • Finally, a central question regarding damages will be one of culpability: Did Defendants' conduct after receiving alleged notice of the '000 patent in April 2017 rise to the level of objective recklessness required to support a finding of willful infringement and a potential award of enhanced damages?