DCT
3:20-cv-01350
Hebert v. Allied Rubber & Gasket Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Leland J. Hebert (Arkansas)
- Defendant: Allied Rubber & Gasket Company (California)
- Plaintiff’s Counsel: Atkins & Davidson, APC; Wawrzyn LLC
- Case Identification: 3:20-cv-01350, S.D. Cal., 04/29/2021
- Venue Allegations: Venue is alleged to be proper in the Southern District of California because Defendant is a Californian corporation with a principal place of business in Carlsbad, California, and conducts continuous and systematic business in the District.
- Core Dispute: Plaintiff alleges that Defendant’s adjustable wrenches, designed for fire sprinkler systems, infringe a patent covering a universal offset wrench with an adjustable head.
- Technical Context: The technology relates to specialized hand tools for the installation and removal of fire sprinkler heads, a field where tools must accommodate various sizes and access concealed fittings.
- Key Procedural History: The complaint alleges a prior business relationship where Defendant agreed to purchase and resell Plaintiff's patented wrenches. After a series of purchases, Defendant allegedly stopped paying for the right to make and sell the wrenches but continued to do so, leading to claims of willful infringement. The complaint also includes allegations of false marking and unfair competition stemming from this history.
Case Timeline
| Date | Event |
|---|---|
| 2012-03-20 | U.S. Patent No. 8,850,931 Priority Date |
| 2013-01-01 | Plaintiff launched firesprinklertool.com to sell wrenches |
| 2014-10-14 | U.S. Patent No. 8,850,931 Issued |
| 2015-07-19 | Parties agreed Plaintiff would sell wrenches to Defendant |
| 2015-08-07 | Plaintiff sold 100 wrenches to Defendant |
| 2016-10-03 | Plaintiff’s final alleged sale of 155 wrenches to Defendant |
| 2021-04-29 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,850,931 - "Offset Wrench with Adjustable Head," Issued October 14, 2014
The Invention Explained
- Problem Addressed: The patent's background describes the difficulty of working on overhead fire sprinkler heads, which come in different sizes and are often concealed within ceilings or other structures. This requires specialized tools, and using a standard wrench can damage the sprinkler head, piping system, or surrounding ceiling. (’931 Patent, col. 1:15-38).
- The Patented Solution: The invention is a single, universal tool featuring an offset, width-adjustable head. As described in the abstract and detailed description, the device has a handle connected to a shank at a first offset angle, and a fixed jaw extending from the shank at a second offset angle. An adjustable jaw moves relative to the fixed jaw via a mechanical adjustment mechanism, such as a thumbwheel. (’931 Patent, Abstract; col. 2:58-67). This dual-offset design allows the wrench to reach recessed sprinkler heads, while the adjustable jaw allows it to fit various models. (’931 Patent, col. 4:15-17).
- Technical Importance: The invention aims to provide a single, versatile tool that can replace multiple fixed-size wrenches, thereby saving time, reducing equipment costs, and minimizing damage during sprinkler installation or maintenance. (’931 Patent, col. 1:49-57).
Key Claims at a Glance
- Independent Claim 1:
- a handle having a grip;
- a shank extending from the handle at a first offset angle;
- a fixed jaw extending from the shank at a second offset angle;
- an adjustable jaw moveably coupled to the shank;
- a smooth collar affixed to the shank opposite the fixed jaw;
- a threaded collar affixed to the adjustable jaw's base member;
- an adjustment mechanism mechanically connected between the collars for adjusting the distance between the jaws.
- Independent Claim 8:
- a generally flat wrench handle with a grip end;
- a generally flat shank extending from the handle at a first offset angle;
- a fixed jaw extending from the shank at a second offset angle;
- an adjustable jaw moveably coupled to the shank;
- a smooth collar (tubular member) affixed to the back surface of the shank;
- a threaded collar (tubular member) affixed to the back surface of the adjustable jaw's base member;
- an adjustment recess in the shank to accommodate the threaded collar;
- an adjustment mechanism connected between the collars to adjust jaw distance.
- The complaint also asserts dependent claims 2, 3, and 9 and reserves the right to assert others. (Compl. ¶16).
III. The Accused Instrumentality
Product Identification
The complaint identifies four accused products: the "Recessed Universal Wrench" (SKU: 3099189), the "Concealer" Wrench, the "Adjustable Offset Wrench" (SKU 3099188), and the "Universal Head Socket Wrench" (SKU: 3099189S), which is described as the Recessed wrench without a handle. (Compl. ¶¶17, 29, 37, 45).
Functionality and Market Context
The complaint describes the accused products as adjustable wrenches with offset heads, sold for use with fire sprinkler systems. (Compl. ¶¶17, 29, 37). The allegations for the "Recessed" and "Concealer" products describe a handle, an offset shank, a fixed jaw, a moveable adjustable jaw, and an adjustment mechanism, mirroring the structure of the patented invention. (Compl. ¶¶18-24, 30-36). The complaint alleges that Defendant previously had an agreement to sell the Plaintiff's patented wrenches and now sells the accused products, which are alleged to be direct copies. (Compl. ¶¶10-12, 17). The complaint references a picture of the claimed adjustable jaw of the "Recessed" wrench, attached as Exhibit 4, to show its structure. (Compl. ¶21).
IV. Analysis of Infringement Allegations
’931 Patent Infringement Allegations (Claim 1, "Recessed" Wrench)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a handle having a grip | The Recessed includes a handle having a grip. | ¶18 | col. 2:59 |
| a shank extending from said handle opposite said grip at a first offset angle relative to said handle | The Recessed includes a shank extending from the handle at a first offset angle of approximately 95 degrees. A picture of this shank is provided as Exhibit 2. | ¶19 | col. 2:60-62 |
| a fixed jaw extending from said shank at a second offset angle relative to said shank | The Recessed includes a fixed jaw extending from the shank at a second offset angle of approximately 95 degrees. A picture of this fixed jaw is provided as Exhibit 3. | ¶20 | col. 2:62-63 |
| an adjustable jaw moveably coupled to said shank...comprising: generally flat base member; and, a jaw member | The Recessed has an adjustable jaw moveably coupled to the shank, comprising a generally flat base member and a jaw member extending from it. | ¶21 | col. 2:64-67 |
| a smooth collar comprising a smooth interior wall affixed to said shank opposite said fixed jaw | The Recessed has a smooth collar with a smooth interior wall affixed to the shank opposite the fixed jaw. A picture of this collar is provided as Exhibit 5. | ¶22 | col. 3:32-33 |
| a threaded collar comprising a threaded interior wall affixed to said base member opposite said jaw member | The Recessed has a threaded collar with a threaded interior wall affixed to the base member opposite the jaw member. A picture of this collar is provided as Exhibit 6. | ¶23 | col. 3:34-36 |
| an adjustment mechanism mechanically connected between said smooth collar and said threaded collar for adjusting a distance... | The Recessed has an adjustment mechanism connected between the collars for adjusting the distance between the jaws. A picture of this mechanism is provided as Exhibit 7. | ¶24 | col. 3:37-41 |
’931 Patent Infringement Allegations (Claim 8, "Recessed" Wrench)
The complaint’s narrative allegations in paragraphs 18-24 map to the elements of Claim 8, which largely parallel Claim 1 but add specificity regarding the "generally flat" nature of the handle/shank and the presence of an "adjustment recess."
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a generally flat wrench handle comprising a grip end | The Recessed includes a handle with a grip. (Compl. ¶18). The patent describes the handle as "generally flat." | ¶18 | col. 3:56-57 |
| a generally flat shank extending from said handle...at a first offset angle | The Recessed includes a shank extending from the handle at an offset angle. (Compl. ¶19). The patent describes the shank as "generally flat." | ¶19 | col. 4:5-6 |
| an adjustment recess disposed laterally through said shank to accommodate said threaded collar | The complaint alleges the "Recessed" has an adjustment mechanism and provides a picture in Exhibit 7, which may be argued to show the recess. The patent's dependent claim 14 explicitly mentions the wheel being disposed within the recess. | ¶24 | col. 2:8-10 |
| an adjustment mechanism mechanically connected to said smooth collar and said threaded collar for adjusting a distance... | The Recessed has an adjustment mechanism connected between the smooth and threaded collars. (Compl. ¶24). Exhibit 8, referenced in support of dependent claim allegations, shows the disassembled actuator wheel, which forms part of the adjustment mechanism connecting the collars. (Compl. ¶25). | ¶24, 25 | col. 2:11-14 |
Identified Points of Contention
- Scope Questions: Claim 3 requires offset angles of "approximately ninety-five degrees." The complaint alleges the accused products meet this limitation. (Compl. ¶19, 20). The dispute may center on the permissible deviation from 95 degrees allowed by "approximately," especially given the patent's disclosure of a preferred range of 90-100 degrees. (’931 Patent, col. 4:3-5).
- Technical Questions: Claim 9 requires a "freely rotatable actuator wheel disposed along a rear surface of said shank." (’931 Patent, col. 8:31-32). The patent emphasizes that the wheel is not in contact with the shank, which allows it to rotate freely. (’931 Patent, col. 5:29-32). A key technical question will be whether the accused products' adjustment mechanisms are constructed and operate in this specific manner, or if there is a functional or structural difference.
V. Key Claim Terms for Construction
The Term: "approximately ninety-five degrees" (Claim 3)
- Context and Importance: The precise offset angles are a defining feature of the invention, enabling access to concealed sprinkler heads. The scope of "approximately" will determine whether minor variations in the accused products' geometry fall within or outside the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses that the angles are "preferably between ninety degrees (90°) and one hundred degrees (100°)," suggesting the invention is not strictly limited to a single angle. (’931 Patent, col. 4:3-5).
- Evidence for a Narrower Interpretation: The same passage states the angles are "preferably ninety-five degrees (95°)," which could be argued to teach that 95 degrees is the optimal, intended angle, and "approximately" should be construed narrowly around that value. (’931 Patent, col. 4:4-5).
The Term: "freely rotatable actuator wheel" (Claim 9)
- Context and Importance: This term appears in an asserted dependent claim and defines a specific functional aspect of the adjustment mechanism. Practitioners may focus on this term because the complaint's allegations for the "Recessed" wrench do not explicitly state that its actuator wheel is "freely rotatable" in the manner described by the patent. (Compl. ¶¶25-28).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue "freely rotatable" simply means the wheel can be turned by a user without undue force to adjust the jaw, a general characteristic of most such mechanisms.
- Evidence for a Narrower Interpretation: The specification provides a specific structural basis for this function: "The wheel 33 is generally disposed at a center of the back surface of the shank 21 and is not in contact with nor is it connected to the shank 21 or the either of the collars 32, 38; thus allowing it to freely rotate." (’931 Patent, col. 5:29-32). This could support a narrower construction requiring the wheel to be physically disconnected from the shank.
VI. Other Allegations
Willful Infringement
The complaint alleges willful infringement based on Defendant's pre-suit knowledge of the ’931 patent. (Compl. ¶¶14, 48). The factual basis includes the parties' prior business relationship, during which Defendant allegedly sold products marked with the ’931 patent number, and a subsequent refusal to pay royalties while continuing to make and sell allegedly infringing products. (Compl. ¶¶8-12). The complaint further alleges that Defendant's CEO told the plaintiff that he "no longer owned his patent" and threatened to "blow holes in your patent" if a suit was filed, which may be argued as evidence of egregious conduct. (Compl. ¶63).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of infringement fact-finding: Do the accused products, particularly the "Recessed" and "Concealer" wrenches, embody each element of the asserted claims? This will involve a technical comparison of the products' geometry against the "approximately ninety-five degrees" limitation and a functional analysis of whether the accused adjustment mechanism operates as a "freely rotatable actuator wheel" as specifically defined in the patent.
- A second key question will relate to willfulness and damages: Given the alleged prior business relationship where Defendant sold authorized, patent-marked products, what evidence will demonstrate whether Defendant's subsequent actions were objectively reckless and constituted willful infringement, potentially justifying enhanced damages?
- The case also presents a question of estoppel or admission: Plaintiff alleges that by previously marking products with the ’931 patent number, Defendant "admitted that the patent-in-suit covered the accused ARGCO product and is a valid patent." (Compl. ¶5). The court will have to determine what legal weight, if any, to give this prior action in the context of both infringement and validity.