DCT

1:09-cv-02878

Caught Fish Enterprises LLC v. Blaze Wharton Construction Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:09-cv-02878, D. Colo., 12/09/2009
  • Venue Allegations: Venue is alleged based on Defendant BWC’s operation of an interactive website facilitating sales into Colorado, actual sales of accused products within the state, and an alleged regular and established business presence in Colorado.
  • Core Dispute: Plaintiffs allege that Defendants’ clamps, used to control snow movement on metal roofs, infringe a patent for a non-penetrating mounting device for building surfaces.
  • Technical Context: The technology concerns clamping devices that attach to the raised, standing seams of metal roofing panels to mount accessories without piercing the roof surface, thereby avoiding potential leaks.
  • Key Procedural History: The patent-in-suit is subject to a terminal disclaimer, which may tie its enforceability and term to that of a parent patent. The patent's front page also indicates it is a continuation of a series of prior applications, establishing an earlier priority date for its subject matter. The complaint does not mention any prior litigation or licensing history.

Case Timeline

Date Event
1992-07-13 '588' Patent Earliest Priority Date
1999-11-16 U.S. Patent No. 5,983,588 Issued
2009-12-09 Complaint Filed

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

U.S. Patent No. 5,983,588 - "Mounting Device for Building Surfaces," issued November 16, 1999

The Invention Explained

  • Problem Addressed: The patent describes issues with prior methods of attaching items, such as snow guards, to metal roofs. Methods that pierced the roofing surface with screws or nails created potential leak points and could compromise the roof's designed thermal movement characteristics ('588' Patent, col. 3:17-38, 49-54). Existing non-penetrating clamps were described as time-consuming to install and not easily adaptable to various roof seam profiles ('588' Patent, col. 1:46-61).
  • The Patented Solution: The invention is a "unitary mounting body" or clamp with a slot that fits over the raised seam of a metal roof ('588' Patent, col. 4:20-29). The clamp is secured in place by one or more set screws with "blunt-nosed" or "rounded non-piercing ends" that are tightened against the seam ('588' Patent, col. 9:1-4). This method provides a secure attachment by frictionally engaging and potentially "dimpling" the seam material without creating a hole, thus avoiding leaks and simplifying installation and repositioning ('588' Patent, Abstract; col. 9:3-14).
  • Technical Importance: The invention provided a non-damaging, adjustable, and easy-to-use method for mounting accessories onto the increasingly common standing-seam metal roofs ('588' Patent, col. 1:28-35).

Key Claims at a Glance

The complaint does not specify which claims are asserted, alleging infringement of "one or more claims" (Compl. ¶7). The allegations most closely track independent Claim 1.

  • Independent Claim 1:
    • An apparatus attachable to a building roof or wall surface with spaced, longitudinal raised portions.
    • The apparatus comprises a "first clamp means" for detachably engaging a raised portion.
    • The clamp means includes a body with a cavity and "means for frictionally engaging an external surface" of the raised portion.
    • The means for frictionally engaging comprises at least one "blunt-nose screw having a generally convexly-shaped nose" that is threadably interconnected to the body.
    • The screw is "extendable into said cavity to deform said external surface of said raised portion."
  • The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

The accused products are "clamps used for controlling snow movement upon metal roofing panels" manufactured, used, and sold by Defendants (Compl. ¶15).

Functionality and Market Context

  • The complaint alleges the accused clamps are comprised of a body with a slot "designed to accept the profile of a standing metal roof seam" (Compl. ¶15).
  • In operation, the clamps are allegedly "placed over the standing metal roof seam and secured to the standing metal roof seams by use of threaded set screws" (Compl. ¶15).
  • A key feature alleged is that "[t]he screws have a blunt end and thus do not pierce the metal roof" (Compl. ¶15). The complaint does not provide further detail on the accused products' market position or commercial importance.

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’588 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a body with a cavity The accused clamps are "comprised of a body, into which is formed a slot designed to accept the profile of a standing metal roof seam." ¶15 col. 18:17-18
means for frictionally engaging an external surface of said raised portion The clamps are "secured to the standing metal roof seams by use of threaded set screws." ¶15 col. 18:18-19
comprising at least one blunt-nose screw having a generally convexly-shaped nose The accused clamps use "threaded set screws" which "have a blunt end and thus do not pierce the metal roof." ¶15 col. 18:19-22
said screw being extendable into said cavity to deform said external surface of said raised portion... The complaint alleges the clamps are "secured" by the set screws, but does not explicitly allege that the screws "deform" the surface of the roof seam. ¶15 col. 18:22-24
  • Identified Points of Contention:
    • Scope Questions: A central question will be whether the accused "threaded set screws" with a "blunt end" meet the claim limitation of a "blunt-nose screw having a generally convexly-shaped nose" ('588' Patent, col. 18:20-21). The proper construction of "generally convexly-shaped" will be critical if the accused screws, for instance, have a flat-tipped blunt end.
    • Technical Questions: The complaint alleges the accused clamps are "secured" to the roof seam, but it does not allege that they do so by "deform[ing]" the seam surface, a specific functional requirement of Claim 1 ('588' Patent, col. 18:23-24). The case may turn on evidence of whether the accused product's method of securing necessarily causes the deformation required by the claim.

V. Key Claim Terms for Construction

The Term: "deform said external surface"

  • Context and Importance: This term defines the specific function by which the screw secures the clamp. Infringement will depend on whether the accused product's operation meets this limitation. Practitioners may focus on this term because the defendant could argue its product secures the clamp through friction alone, without the "deformation" taught by the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the screws as "dimpling without penetrating" the seam ('588' Patent, col. 9:3-4) and "forcibly engag[ing]" it ('588' Patent, col. 4:33-34). This language could support a construction where any indentation or compression sufficient to secure the device constitutes "deformation."
    • Evidence for a Narrower Interpretation: The specification also describes an embodiment where a cavity is formed on the opposing sidewall so that the seam is "deformed therein" ('588' Patent, col. 4:35-40). This may suggest a more structured, permanent change in shape is required, rather than simple elastic compression.

The Term: "blunt-nose screw having a generally convexly-shaped nose"

  • Context and Importance: This term recites a specific structure of the screw. The complaint only alleges a "blunt end" (Compl. ¶15). If the accused product uses a standard, flat-ended set screw, its shape may not fall within the scope of this limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The primary purpose of the screw tip's shape is to be "non-piercing" ('588' Patent, col. 9:2). Plaintiffs may argue that "generally convexly-shaped" should be interpreted broadly to include any non-sharp configuration that achieves this goal.
    • Evidence for a Narrower Interpretation: The inventor chose the specific words "convexly-shaped" in the claim, which is more limiting than just "blunt" or "non-piercing." The specification also refers to "rounded non-piercing ends" ('588' Patent, col. 9:2), reinforcing the idea of a specific, curved geometry that may be distinguishable from a flat-ended screw.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Blaze Wharton, as President of BWC, "has the authority and power to control all activities of BWC" and has "aided, abetted, contributed to and induced" BWC's alleged infringement (Compl. ¶4, ¶16). This forms the basis for claims of induced and contributory infringement against both the corporate and individual defendants (Compl. ¶18).
  • Willful Infringement: Willfulness is alleged on the basis that Defendants "have been informed of their infringement, but have continued their infringing activities" (Compl. ¶19). This suggests the claim is based on alleged knowledge of the '588' patent and the continued sale of the accused products after receiving notice.

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

  • A core issue will be one of definitional scope: can the term "blunt-nose screw having a generally convexly-shaped nose," as claimed in the patent, be construed to cover the accused product's "threaded set screws" which are only described as having a "blunt end"?
  • A key evidentiary question will be one of technical operation: does the accused clamp's method of being "secured" to a roof seam inherently perform the function of "deform[ing] said external surface" as required by Claim 1, or is there a functional mismatch between the claimed invention and the accused product? The complaint's failure to explicitly allege this deformation creates a central point of dispute.