Barrier Guard Tech LLC v. 1 800 Bollards Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Barrier Guard Technologies, LLC (Wyoming)
  • Defendant: 1-800-Bollards, Inc. (California)
  • Plaintiff’s Counsel: Garteiser Honea—IP Trial Boutique
• Case Identification: 8:24-cv-01172, C.D. Cal., 05/31/2024
• Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendant is a California corporation that maintains a "regular and established business presence" in the district, including a corporate and sales office in Irvine, California.
• Core Dispute: Plaintiff alleges that Defendant’s security bollard systems infringe a patent related to anti-ram systems with shallow-mounted foundations.
• Technical Context: The technology concerns vehicle security barriers, specifically bollards designed to prevent vehicles from ramming into buildings or restricted areas, a market driven by counter-terrorism and security needs.
• Key Procedural History: U.S. Patent No. 8,215,865 has undergone two ex parte reexaminations. A first reexamination certificate (C1) issued in 2020, confirming the patentability of all claims. A second reexamination certificate (C2) issued in November 2022, cancelling Claim 1, which is the only claim specifically identified in the complaint's infringement allegations. This cancellation predates the filing of the complaint and raises a threshold question regarding the viability of Plaintiff's asserted cause of action.

Case Timeline

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

U.S. Patent No. 8,215,865 - "Anti-Ram System and Method of Installation," issued July 10, 2012

The Invention Explained

• Problem Addressed: The patent addresses the difficulties of installing conventional anti-ram bollards, which typically require deep excavations (e.g., 4 to 6 feet) ('865 Patent, col. 2:45-46). Such deep foundations are costly, time-consuming, and often impractical in developed urban areas due to the presence of underground utilities like gas, water, and electrical lines ('865 Patent, col. 1:63 - col. 2:10).
• The Patented Solution: The invention is a bollard system that utilizes a "shallow mounted base pad" or foundation ('865 Patent, Abstract). Instead of relying on a deep anchor, this system uses a wide, heavy, shallow base (e.g., 5" to 14" deep) to which the bollards are secured ('865 Patent, col. 2:41-49). Upon impact, the forces are transmitted down the bollard to this shallow pad, which then transfers the load horizontally into the surrounding soil over a large surface area, resisting rotation and preventing a vehicle breach ('865 Patent, col. 2:50-64). The base is constructed from a framework of structural members, such as steel tubes, forming a "grillage" that is filled with concrete on-site ('865 Patent, col. 4:40-47; Fig. 4).
• Technical Importance: This shallow-mount approach was intended to provide a more efficient and less disruptive method for installing robust vehicle barriers in locations where deep excavation is not feasible ('865 Patent, col. 2:11-16).

Key Claims at a Glance

• The complaint asserts infringement of at least independent Claim 1, which was cancelled during reexamination proceedings that concluded in 2022 (Compl. ¶28; '865 Patent, C2 Certificate). The patent also contains independent claims 16 and 33, which were not cancelled (Compl. ¶13; '865 Patent, C2 Certificate).
• Independent Claim 1 (Cancelled):
  • A bollard structure comprising at least one bollard.
  • A base with opposed ends and a plurality of intersecting and tied-together structural members.
  • The bollard is secured to the base and extends upwardly to transmit forces to the base.
  • The base is configured to be mounted in a "shallow excavation" with the bollard extending above grade.
  • The structural members are configured to "retain... supporting media introduced into the base" to resist rotation of the bollard and base upon impact.
• The complaint does not explicitly reserve the right to assert other claims, but its prayer for relief seeks an injunction against infringement of the patent generally (Compl. ¶(b), p. 9).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused products as "at least the High Security Fixed Deep Mount M30 that includes a bollard" (Compl. ¶23).

Functionality and Market Context

The complaint provides no specific technical details about the structure, installation, or operation of the Accused Instrumentalities beyond identifying them by name (Compl. ¶23). It alleges that Defendant advertises, sells, and distributes these products in the Central District of California and elsewhere (Compl. ¶7). The complaint includes a screenshot of Defendant's website contact page to establish its business presence in the district. This screenshot from Defendant's website shows contact information for its Irvine, California office (Compl. ¶9, Fig. 1).

IV. Analysis of Infringement Allegations

The complaint references a claim chart attached as Exhibit B, which was not provided with the filed complaint (Compl. ¶¶ 28, 33). Therefore, a detailed element-by-element comparison is not possible based on the provided documents.

The complaint alleges that Defendant directly infringes, either literally or under the doctrine of equivalents, at least Claim 1 of the '865 patent by making, using, selling, and offering for sale the Accused Instrumentalities (Compl. ¶¶ 28-29). The narrative theory is that the accused "High Security Fixed Deep Mount M30" product practices the technology claimed by the '865 Patent (Compl. ¶33).

• Identified Points of Contention:
  • Claim Viability: A threshold legal question is whether Plaintiff can maintain an action for infringement of Claim 1. The public record, including the reexamination certificate attached to the patent, shows that Claim 1 was cancelled by the USPTO on November 17, 2022, approximately 18 months before the complaint was filed ('865 Patent, C2 Certificate). Asserting a cancelled claim raises a fundamental question about the basis for the infringement count as pleaded.
  • Technical Questions: Should the case proceed on other claims (e.g., claims 16 or 33), a central technical question will be whether the accused "Deep Mount" product practices the "shallow excavation" system claimed in the patent. The product's name itself suggests a potential fundamental mismatch with the core inventive concept, which is explicitly framed as an alternative to traditional deep-foundation systems ('865 Patent, col. 2:11-13).

V. Key Claim Terms for Construction

• The Term: "shallow excavation"
• Context and Importance: This term is the central feature distinguishing the invention from the prior art described in the patent. The definition of "shallow" is critical to determining the scope of any asserted claim, as the patent’s primary objective is to avoid the deep excavations of conventional systems. Practitioners may focus on this term because the accused product is identified as a "Deep Mount" system, creating a direct potential conflict on this dispositive limitation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent does not provide a single, formal definition, instead referring to the concept generally as requiring "very little or no excavation" ('865 Patent, col. 2:12-13). This lack of a precise definition could be argued to support a more flexible interpretation dependent on context.
  • Evidence for a Narrower Interpretation: The specification provides specific, repeated numerical ranges. The "Summary of the Invention" describes the shallow mount pad as being "5" to 14" in depth" ('865 Patent, col. 2:48-49). The "Detailed Description" describes an embodiment with a total pad height of "only 6 and 1/2 inches" and another requiring an excavation "approximately 14 inches deep" ('865 Patent, col. 8:31-43). This language provides a strong basis for construing "shallow" as being within this specified range, likely less than 1.5 feet deep.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendant induces infringement by providing materials that "direct end users to commit patent infringement" and contributes to infringement, referencing the unattached Exhibit B for support (Compl. ¶¶ 28, 32).
• Willful Infringement: The complaint alleges knowledge of infringement "at least as of the service of the present complaint" (Compl. ¶26). This forms the basis for a claim of post-suit willful infringement, alleging that Defendant continues to infringe despite having actual knowledge from the complaint and its associated claim chart (Compl. ¶¶ 30-31).

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

1. Claim Viability: A dispositive threshold issue will be whether this lawsuit can proceed based on allegations of infringing Claim 1, given that the USPTO cancelled this claim in a reexamination proceeding that concluded well before the complaint was filed. The court will have to address whether a cause of action can be maintained on a non-existent claim.
2. Definitional Scope: Assuming the complaint is amended to assert the surviving claims, the case will likely turn on a question of technical scope: can the term "shallow excavation," which the patent defines with examples like "5 to 14 inches," be construed to read on a product marketed as a "Deep Mount" system?
3. Evidentiary Sufficiency: A key evidentiary question will be one of factual proof: what evidence can Plaintiff produce to demonstrate that the accused "Deep Mount" product, contrary to its name, is in fact installed in a "shallow excavation" and incorporates the specific structural "grillage" required by the patent's claims? The complaint currently lacks any such technical evidence.