DCT
3:12-cv-02445
Clamp Swing Pricing Co v. Super Market Merchandising Supply Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Clamp-Swing Pricing Company (California)
- Defendant: Super Market Merchandising and Supply, Inc. and Kevin Knasel (Missouri)
- Plaintiff’s Counsel: Shartsis Friese LLP
- Case Identification: 3:12-cv-02445, N.D. Cal., 11/11/2013
- Venue Allegations: Venue is asserted based on Defendants being subject to personal jurisdiction in the district and having allegedly committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s modular retail signage products infringe five of its utility and design patents related to modular sign holder devices.
- Technical Context: The technology concerns modular point-of-sale display systems, which allow retailers to assemble custom signs from a common set of components like bases, stems, and frames.
- Key Procedural History: This action was originally filed on May 14, 2012. The operative Second Amended Complaint alleges that Defendants had pre-suit knowledge of at least one patent-in-suit as early as 2007-2008 through a former employee of the Plaintiff. It also alleges Defendants began selling a "New" line of infringing products after being served with the original complaint in May 2012.
Case Timeline
| Date | Event |
|---|---|
| 2000-10-06 | Earliest Priority Date for all Patents-in-Suit |
| 2003-03-11 | U.S. Patent No. 6,530,166 Issues |
| 2007-08-01 | Alleged period of pre-suit knowledge begins |
| 2010-02-23 | U.S. Patent No. D610,623 Issues |
| 2010-02-23 | U.S. Patent No. D610,624 Issues |
| 2010-09-14 | U.S. Patent No. D623,697 Issues |
| 2012-05-14 | Original Complaint Filed |
| 2012-05-17 | Date after which "New Infringing Products" were allegedly sold |
| 2012-07-17 | U.S. Patent No. 8,220,189 Issues |
| 2012-09-26 | First Amended Complaint Filed |
| 2013-11-11 | Second Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,530,166 - "Sign Holder Device," issued March 11, 2003
The Invention Explained
- Problem Addressed: The patent describes the impracticality for retailers to stock preassembled signs for every product and orientation, noting that prior "knockdown" component-based sign kits were often flimsy, difficult to assemble correctly, and resulted in a "haphazard and not professional" appearance when assembled by non-skilled employees (’166 Patent, col. 1:12-47).
- The Patented Solution: The invention is a modular sign holder device built from individual parts—a base, a stem, and a sign frame—that can be quickly assembled and disassembled. A key aspect is the connection between the stem and the frame, where the stem has a "C-shaped extremity" that frictionally grips the frame, and a corresponding ridge-and-tab system ensures the frame is automatically centered and properly aligned, preventing a "misaligned sign frame" (’166 Patent, col. 3:20-41; Abstract).
- Technical Importance: The design aimed to provide the flexibility of a component-based system while ensuring a professional, geometrically centered appearance without requiring special skill or tools for assembly (’166 Patent, col. 2:36-47).
Key Claims at a Glance
- The complaint does not specify which claims are asserted. Claim 1 is analyzed here as a representative independent claim.
- Claim 1 requires:
- A device comprised of a stem, a base, and a sign frame.
- The stem has a first end retained by the base and a second end to retain the frame.
- The sign frame has a left and right side with a gap between them, which contains tabs for positioning.
- The second end of the stem has a "C-shaped extremity" that is "sized to frictionally capture" the sign frame.
- The sign frame is "releasable from said stem by providing lateral force to said frame."
- The complaint reserves the right to assert other claims, which may include dependent claims (Compl. ¶8).
U.S. Patent No. 8,220,189 - "Sign Holder Device," issued July 17, 2012
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’166 Patent, this patent addresses the same problem of providing professional, easy-to-assemble modular signage for retail environments (’189 Patent, col. 1:21-41).
- The Patented Solution: This patent claims a similar modular system but adds the concept of an "adapter" that can be used to connect the components, such as the stem and the base. The adapter itself can have features like indents and protrusions that allow the stem's angular orientation to be changed relative to the base, providing additional display flexibility (’189 Patent, col. 5:56-65; col. 3:55-62).
- Technical Importance: The addition of an adapter for angular adjustment increases the number of possible configurations that can be created from the same set of basic components (’189 Patent, col. 3:55-62).
Key Claims at a Glance
- The complaint does not specify which claims are asserted. Claim 1 is analyzed here as a representative independent claim.
- Claim 1 requires:
- A device comprised of a sign frame, a stem, a base, and an adapter.
- The stem has a C-shaped extremity to frictionally capture the frame.
- The device includes "an adapter for connecting said stem to said adaptor and said adaptor to said base."
- An "indent and protrusion combination" is provided between the adapter and the base.
- The complaint reserves the right to assert other claims, which may include dependent claims (Compl. ¶8).
U.S. Patent No. D610,623 - "Signage Easel Base," issued February 23, 2010
- Technology Synopsis: This is a design patent claiming the ornamental appearance of a specific type of sign base. The claimed design corresponds to the two-part base shown in the utility patents, intended for mounting on wire shelving or racks (’166 Patent, Fig. 7A).
- Asserted Claims: Claim 1.
- Accused Features: The complaint alleges that the bases of the "Original Infringing Products" embody or are a colorable imitation of this patented design (Compl. ¶21, ¶29).
U.S. Patent No. D610,624 - "Signage Counter Base," issued February 23, 2010
- Technology Synopsis: This design patent claims the ornamental appearance of a flat, circular sign base. The claimed design corresponds to the countertop base embodiment depicted in the utility patents (’166 Patent, Fig. 1).
- Asserted Claims: Claim 1.
- Accused Features: The bases of both the "Original Infringing Products" and "New Infringing Products" are alleged to infringe this design patent (Compl. ¶1, ¶21, ¶29).
U.S. Patent No. D623,697 - "Signage Support Stem," issued September 14, 2010
- Technology Synopsis: This patent claims the ornamental design for a signage support stem. The design shows a telescoping stem with a C-shaped head for holding a frame and a T-shaped foot for insertion into a base, corresponding to the stem shown in the utility patents (’166 Patent, Fig. 1, 9).
- Asserted Claims: Claim 1.
- Accused Features: The stems of both the "Original Infringing Products" and "New Infringing Products" are alleged to infringe this design patent (Compl. ¶1, ¶21, ¶29).
III. The Accused Instrumentality
Product Identification
The complaint identifies two sets of accused products: the "Original Infringing Products" (including Item #11049, #11059, #11060, #11061, #11064, and #11065) and the "New Infringing Products" (including Item #11081 and its constituent parts) (Compl. ¶20-21).
Functionality and Market Context
- The accused products are described as modular sign holder systems, including adjustable sign units, counter top bases, easel bases, stems, and sign frames (Compl. ¶20-21). The complaint alleges these products are sold to retailers, including the Plaintiff's own customers, for displaying prices and marketing information in stores (Compl. ¶24).
- The complaint alleges Defendants are direct competitors and that their products are "identical (although poor quality) knock-offs" of Plaintiff's patented products (Compl. ¶23-24). It further alleges that the accused products "slavishly copied" features from Plaintiff's products, including some that are non-functional or only function with Plaintiff's own components (Compl. ¶23).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart or specify asserted claims. The following tables analyze representative independent claims against the alleged functionality of the accused products.
’166 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A sign holder device comprised of individual parts which...comprising a stem having a first end and a second end...a base...and a sign frame... | Defendants' "Original Infringing Products" are described as modular sign sets comprised of separate bases, stems, and frames. | ¶20 | col. 2:64-67 |
| said second end of said stem is provided with a C-shaped extremity sized to frictionally capture said sign frame... | The complaint does not provide specific detail on the connection mechanism but alleges the products are "knock-offs" of Plaintiff's products, which embody this feature. | ¶23 | col. 5:58-63 |
| said sign frame is releasable from said stem by providing lateral force to said frame. | The modular and separable nature of the accused products suggests a releasable connection. | ¶20 | col. 5:61-63 |
| said gap being provided with tabs for positioning said stem on said frame to retain said stem on said frame in a predetermined location... | The complaint alleges "slavish" copying of "every feature," which may include the positioning tabs. | ¶23 | col. 2:9-13 |
’189 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A sign holder device comprised of individual parts...comprising a sign frame, a stem...a base... | Defendants' "Original" and "New Infringing Products" are described as modular sign sets with frames, stems, and bases. | ¶20, ¶21 | col. 2:64-67 |
| and further comprising an adapter for connecting said stem to said adaptor and said adaptor to said base... | The complaint does not provide sufficient detail for analysis of whether the accused products contain a separate "adapter" component as claimed. | N/A | col. 5:56-59 |
| wherein at least one indent and protrusion combination is provided between said adapter and said base. | The complaint does not provide sufficient detail for analysis of an indent/protrusion combination for angular adjustment. | N/A | col. 5:59-61 |
Identified Points of Contention
- Evidentiary Questions: A primary question will be factual: do the accused products actually practice each element of the asserted claims? For the ’166 patent, this will involve demonstrating the specific "C-shaped extremity" and "tabs for positioning." For the ’189 patent, Plaintiff will need to show the accused products contain a distinct "adapter" component that meets the claim limitations.
- Scope Questions: For the ’189 patent, the language of Claim 1, "an adapter for connecting said stem to said adaptor and said adaptor to said base," appears to contain a typographical error or be circular. The court may need to determine the proper construction of this phrase to assess infringement.
V. Key Claim Terms for Construction
The Term: "C-shaped extremity sized to frictionally capture" (’166 Patent, Claim 1)
Context and Importance
This term defines the core mechanical interface between the stem and the sign frame. The scope of "C-shaped" and the required degree of "frictional capture" will be central to determining literal infringement.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification refers generally to the stem "frictionally captur[ing] the outer surface of frame halves" without specifying a particular shape beyond what is shown in the figures, which could support a construction covering functionally similar gripping mechanisms (’166 Patent, col. 3:25-27).
- Evidence for a Narrower Interpretation: The figures consistently depict a specific, open-ended circular clip shape (e.g., ’166 Patent, Fig. 3, element 4). A defendant may argue the term should be limited to this depicted embodiment or shapes substantially similar to it.
The Term: "adapter" (’189 Patent, Claim 1)
Context and Importance
The presence and function of an "adapter" is a key limitation distinguishing the ’189 patent claims from the earlier ’166 patent. The infringement analysis for the ’189 patent hinges on whether the accused products contain a component that meets the definition of this term.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification describes the adapter as a single, discrete component that can be used to angle the sign frame relative to the stem or the stem relative to the base, suggesting it is an intermediary part (’189 Patent, col. 3:55-62). Any separate component performing this connecting and angling function could be argued to be an "adapter."
- Evidence for a Narrower Interpretation: The patent depicts a specific adapter structure (element 70 in Fig. 4) with a cylindrical portion and a C-shaped portion (’189 Patent, Fig. 4). A defendant may argue that the term "adapter" should be construed to require this specific two-part structure.
VI. Other Allegations
Indirect Infringement
The complaint alleges active inducement and contributory infringement, asserting that Defendants sell the products to customers and "induce others to use" them in an infringing manner (Compl. ¶12, ¶27-28). The factual basis appears to be the sale of the component parts which are intended to be assembled by the end-user.
Willful Infringement
The complaint alleges willful infringement based on two grounds. First, it alleges pre-suit knowledge of the ’166 patent dating back to 2007-2008, when a former CSP employee with knowledge of the patent allegedly provided information to Defendants (Compl. ¶22). Second, it alleges Defendants developed and sold the "New Infringing Products" after the original complaint was served in May 2012, which would constitute post-suit knowledge (Compl. ¶21).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of factual proof and claim scope: Does the evidence show that Defendants' products, particularly the connection mechanism between the stem and frame, meet the specific structural and functional requirements of the ’166 patent’s claims, such as the "C-shaped extremity" and positioning "tabs"?
- A key question for the ’189 patent will be one of claim interpretation and evidence: First, how will the court construe the seemingly circular language in Claim 1 regarding the "adapter"? Second, do the accused products contain a separate component that performs the role of the claimed "adapter," or is the functionality, if present, integrated in a way that avoids infringement?
- For the design patents, the case will turn on a visual comparison: Would an ordinary observer, familiar with the prior art, be deceived into believing the accused product designs are the same as the patented designs? The complaint's allegation of "slavish" copying, if proven, would strongly support infringement (Compl. ¶23).