DCT

1:16-cv-01976

Romar MEC LLC v. Magswitch Technology Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:16-cv-01976, D. Colo., 08/03/2016
  • Venue Allegations: Venue is alleged to be proper as all Defendants are deemed residents of Colorado, and a substantial part of the events giving rise to the claims are alleged to have occurred in Colorado.
  • Core Dispute: Plaintiff alleges that Defendant’s lines of magnetic positioning tools and releasable pry bars infringe five patents related to portable magnetic tools for industrial fabrication.
  • Technical Context: The technology at issue involves industrial tools that use switchable magnets to temporarily anchor to a large metal workpiece, enabling an operator to apply precise force for aligning, positioning, or prying components during fabrication processes like welding in shipbuilding or tank construction.
  • Key Procedural History: The complaint does not mention any prior litigation, inter partes review (IPR) proceedings, or licensing history relevant to the patents-in-suit.

Case Timeline

Date Event
2007-10-29 ’017 and ’302 Patents Priority Date
2008-12-23 ’681, ’563, and ’378 Patents Priority Date
2010-01-19 ’681 Patent Issue Date
2012-08-14 ’017 Patent Issue Date
2012-10-23 ’563 Patent Issue Date
Before 2013 Magswitch allegedly begins sale of infringing "Stiff Jack" products
Before 2013 Magswitch allegedly begins sale of infringing "MAG PRY" products
After 2013 Magswitch allegedly begins sale of infringing "MAG PRESS" products
2014-06-03 ’378 Patent Issue Date
2015-11-17 ’302 Patent Issue Date
2016-08-03 Complaint Filing Date

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

U.S. Patent No. 7,647,681 - "Portable Magnetic Positioning Tool", issued January 19, 2010.

The Invention Explained

  • Problem Addressed: The patent’s background describes the difficulty, time, and labor involved in properly positioning and aligning large metal components, such as reinforcement beams on steel plates, for industrial fabrication, noting that conventional tools are often impractical ( Compl. Ex. 16, ’681 Patent, col. 1:17-30).
  • The Patented Solution: The invention is a portable tool that uses switchable magnets to securely attach to a ferromagnetic work surface. An extendable member, such as a hydraulic ram, is mounted on the tool's frame and can be advanced to apply precise force against a second component, pushing it into alignment with the first for operations like welding (’681 Patent, Abstract; col. 2:36-44, Fig. 3).
  • Technical Importance: This design provides a mobile, temporary, and strong anchor point on large metal structures, allowing an operator to apply significant alignment force without requiring large, fixed jigs or backstops (’681 Patent, col. 1:21-30).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 7 (Compl. ¶110).
  • Essential elements of independent claim 1 include:
    • A frame with at least two vertical support members and one horizontal support member.
    • An extendable member on the horizontal support member adapted for linear movement.
    • At least two switchable magnets on the vertical support members, each with a housing, two permanent magnets, and a lever for rotation.
    • At least two wheels on the frame, separate from the magnets.
  • The complaint reserves the right to assert additional claims (Compl. ¶110).

U.S. Patent No. 8,291,563 - "Portable Magnetic Positioning Tool", issued October 23, 2012.

The Invention Explained

  • Problem Addressed: This patent, a continuation from the same family as the ’681 patent, likewise addresses the difficulty of aligning large metal components in industrial settings like shipbuilding (’563 Patent, col. 1:18-31).
  • The Patented Solution: The invention is a portable positioning tool with a frame structure, at least two switchable magnets to anchor to a workpiece, and a linearly extendable member to apply force. The claims define a specific structural arrangement including a frame with first and second sides, a support member between them, and wheels connected to the frame (’563 Patent, Abstract; col. 7:15-32, Fig. 3).
  • Technical Importance: The technology allows for the mobile and precise application of force to align large workpieces by creating a temporary, high-strength anchor point on a ferrous surface (’563 Patent, col. 1:24-31).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 17 (Compl. ¶111).
  • Essential elements of independent claim 1 include:
    • A frame with a first side, a second side, and a support member between them.
    • At least one linearly extendable member on the support member.
    • A first magnet on the first side and a second magnet on the second side, both switchable.
    • At least two wheels connected to the frame, apart from the magnets.
  • The complaint reserves the right to assert additional claims (Compl. ¶111).

U.S. Patent No. 8,739,378 - "Portable Magnetic Positioning Tool", issued June 3, 2014.

  • Technology Synopsis: This patent, also in the same family, discloses a portable tool for performing work on a workpiece by using a switchable magnet as a temporary anchor. The tool comprises a frame, a support member, and an extendable member which can be a tool bit (e.g., drill bit) or a ram for applying force (’378 Patent, Abstract; col. 1:17-29).
  • Asserted Claims: The complaint asserts independent claims 1 and 12 (Compl. ¶112).
  • Accused Features: The "3 Ton Stiff Jack," "6 Ton Stiff Jack," and related "Stiff Jack" products are accused of infringing this patent (Compl. ¶112).

U.S. Patent No. 8,240,017 - "Releasable Pry Bar", issued August 14, 2012.

  • Technology Synopsis: This patent addresses the need for applying prying or pushing force to align workpieces. The invention is a pry bar tool that integrates a lever with a rotatably attached, switchable magnet, which acts as a releasable fulcrum on a metal surface to provide leverage for alignment (’017 Patent, Abstract; col. 2:59-65).
  • Asserted Claims: The complaint asserts independent claims 1, 10, 16, and 27 (Compl. ¶115).
  • Accused Features: The "MagPress Device I" and "MagPress Device II" are accused of infringing this patent (Compl. ¶115).

U.S. Patent No. 9,187,302 - "Releasable Pry Bar", issued November 17, 2015.

  • Technology Synopsis: This patent, from the same family as the ’017 patent, describes a tool for aligning workpieces using a lever and a releasable anchor. The tool features an elongated handle and a switchable magnet that functions as a movable fulcrum, allowing an operator to apply prying force effectively on large metal sheets (’302 Patent, Abstract; col. 1:16-19).
  • Asserted Claims: The complaint asserts independent claims 1, 9, and 17 (Compl. ¶116).
  • Accused Features: The "MagPress Device I" and "MagPress Device II" are accused of infringing this patent (Compl. ¶116).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies two main product lines:
    1. The "STIF-JAK Infringing Product Line," which includes various "portable magnetic positioning tools" such as the "3 Ton Adjustable Stiff Jack Tools" and "6 Ton Adjustable Stiff Jack Tools" (Compl. ¶104-109).
    2. The "MAG PRESS Infringing Product Line," which includes "releasable pry bars" identified as "MagPress Device I" and "MagPress Device II" (Compl. ¶113-114).

Functionality and Market Context

  • The complaint alleges that Defendants make, use, and sell these tools for industrial applications, positioning them in the same market and for the same customers as Plaintiff's products, such as shipbuilders and construction companies (Compl. ¶70, 104, 113). The complaint includes marketing materials as exhibits to illustrate the products. Exhibit 21 is a marketing document illustrating the '3 Ton Stiff Jack,' showing a tool with a magnetic base and an adjustable jack mechanism (Compl. ¶105, Ex. 21). Exhibit 26 is a marketing document for the 'MagPress Device I,' depicting a tool with a handle and a magnetic base designed for prying or positioning (Compl. ¶113, Ex. 26).

IV. Analysis of Infringement Allegations

The complaint alleges infringement in a conclusory manner without providing a detailed, element-by-element mapping of accused product features to the patent claims. The following charts summarize the infringement theory as can be inferred from the general allegations and the nature of the accused products.

’681 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a frame having at least two vertical support members and at least one horizontal support member The structural body of the accused "Stiff Jack" products ¶110 col. 7:15-19
an extendable member disposed on the horizontal support member...adapted to move in a linear direction The jacking mechanism of the accused "Stiff Jack" products, which applies linear force ¶110 col. 7:34-40
at least two switchable magnets each disposed on one of the vertical support members The switchable magnetic bases of the accused "Stiff Jack" products that anchor the tool to a workpiece ¶110 col. 7:46-56
wherein each magnet comprises a housing, at least two permanent magnets, and a lever for causing rotation The internal switching mechanism of the magnets in the accused "Stiff Jack" products ¶110 col. 4:24-64
at least two wheels disposed on the frame, apart from the magnet Wheels or rollers on the accused "Stiff Jack" products that facilitate movement ¶110 col. 8:59-63

’563 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a frame having a first side, a second side, and a support member disposed between and connected to the...sides The structural body of the accused "Stiff Jack" products ¶111 col. 7:15-19
at least one linearly extendable member disposed on the support member The jacking mechanism of the accused "Stiff Jack" products ¶111 col. 7:34-40
a first magnet connected to the first side; a second magnet connected to the second side...both...switchable The switchable magnetic bases of the accused "Stiff Jack" products ¶111 col. 7:46-56
at least two wheels connected to the frame, apart from the first and second magnets Wheels or rollers on the accused "Stiff Jack" products alleged to be separate from the magnet assemblies ¶111 col. 8:59-63

Identified Points of Contention

  • Structural Mismatch: A central question will be whether the physical construction of the accused "Stiff Jack" products literally meets the specific structural limitations of the asserted claims. For example, does the frame of the accused products contain elements that would be construed as "at least two vertical support members and at least one horizontal support member" as required by claim 1 of the ’681 patent?
  • Functional Equivalence: The complaint does not detail the internal mechanics of the accused magnets. This raises the question of whether the accused products' switching mechanism operates by "causing relative rotation of the permanent magnets," as required by claim 1 of the ’681 Patent, or by some other means.
  • Presence of All Elements: Infringement requires the presence of every claim element. The infringement analysis may focus on whether the accused products contain "at least two wheels connected to the frame, apart from the...magnets," as required by both asserted independent claims, a detail not clearly established in the complaint's exhibits (Compl. Ex. 21-25).

V. Key Claim Terms for Construction

Term: "vertical support members" (’681 Patent, Claim 1)

  • Context and Importance: Claim 1 of the ’681 patent requires a frame with "at least two" such members. The definition of this term is critical because if the accused products' frame is construed as a unitary structure without distinct "vertical support members," the infringement claim could fail. Practitioners may focus on this term to determine if the claim is limited to a specific multi-part frame assembly.
  • Intrinsic Evidence for a Broader Interpretation: The specification describes the frame components as potentially being a "rod, bar, beam, or the like," which could support an argument that any upright structural element of the frame qualifies (’681 Patent, col. 7:20-22).
  • Intrinsic Evidence for a Narrower Interpretation: The figures consistently depict the "vertical support members" (e.g., 311, 313) as distinct, parallel rods extending from the main frame, an arrangement a court might find limits the term's scope to a similar non-integrated structure (’681 Patent, Fig. 3).

Term: "apart from the first and second magnets" (’563 Patent, Claim 1)

  • Context and Importance: This term qualifies the location of the required "at least two wheels." The infringement analysis hinges on whether the wheels on the accused products are structurally separate from the magnet assemblies. If the wheels are integrated into the magnet housing, this limitation may not be met.
  • Intrinsic Evidence for a Broader Interpretation: The patent's description focuses on the function of the wheels to allow the tool to be "directed about the work surface" when the magnets are disengaged, suggesting that any wheels performing this function, regardless of exact placement, could be covered (’563 Patent, col. 9:1-8).
  • Intrinsic Evidence for a Narrower Interpretation: Figure 3 depicts wheels (340, 342) connected to the frame members (311, 313) and physically separate from the magnet assemblies (120). A party could argue this demonstrates that "apart from" requires a clear structural separation, not just a functional one (’563 Patent, Fig. 3).

VI. Other Allegations

Indirect Infringement

  • The complaint alleges that Defendant David H. Morton, as the CEO of Magswitch, is the "moving, active, and conscious force" behind the alleged infringement and that he "intentionally induced" and "knowingly aided and abetted" it (Compl. ¶224, 232, 240, 248, 256). The complaint does not, however, plead specific factual support for these allegations, such as references to user manuals or marketing instructions that direct infringing use.

Willful Infringement

  • Willfulness is alleged for all patents-in-suit. The basis for this allegation is that Defendants purportedly had "actual and constructive knowledge" of the patents and acted "despite an objectively high likelihood that their actions would constitute infringement" (Compl. ¶222-223, 230-231, 238-239, 246-247, 254-255).

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

  1. Evidentiary Sufficiency: A primary issue will be factual and evidentiary. As the complaint provides only general allegations, the case will depend on whether discovery reveals that the accused "Stiff Jack" and "MagPress" products actually embody the specific structural and functional elements recited in the asserted claims, a matter not established on the face of the pleadings.
  2. Claim Construction and Scope: The dispute will likely center on claim construction. A core question for the court will be one of definitional scope: can structural terms like "vertical support members" (’681 Patent) and wheels positioned "apart from the...magnets" (’563 Patent) be interpreted broadly enough to read on the accused product designs, or are they limited to the more specific arrangements depicted in the patent embodiments?