DCT
1:20-cv-00403
MetalForming Inc v. New Tech Machinery Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MetalForming, Inc. (Georgia)
- Defendant: New Tech Machinery Corp. (Colorado)
- Plaintiff’s Counsel: Michael Best & Friedrich LLP; Thomas | Horstemeyer LLP
- Case Identification: 1:20-cv-00403, D. Colo., 02/17/2020
- Venue Allegations: Venue is alleged to be proper in the District of Colorado because Defendant is a Colorado corporation that resides in the district, maintains a regular and established place of business there, and has allegedly committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s programmable metal forming machines, computer controllers, and associated cutters infringe a patent related to automated machines for forming and cutting metal panels.
- Technical Context: The technology concerns portable, automated roll-forming machines used in the construction and roofing industries to fabricate custom-sized and angled metal panels on-site from raw material coils.
- Key Procedural History: Plaintiff alleges it sent Defendant a first notice letter regarding the patent-in-suit and alleged infringement on February 11, 2019, followed by discussions that did not lead to a resolution, and a second notice letter on October 11, 2019. This alleged pre-suit knowledge forms the basis for the willfulness claims.
Case Timeline
| Date | Event |
|---|---|
| 2010-01-18 | Priority Date for U.S. Patent No. 8,984,923 |
| 2015-03-24 | U.S. Patent No. 8,984,923 Issued |
| 2018 | Defendant Introduced NTM200 Computer Controller |
| 2019-02-11 | Plaintiff's First Alleged Notice of Infringement to Defendant |
| 2019-10-11 | Plaintiff's Second Alleged Notice of Infringement to Defendant |
| 2020-02-17 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,984,923 - "PROGRAMMABLE ROLL FORMER AND ANGLE CUTTER", issued March 24, 2015
The Invention Explained
- Problem Addressed: The patent addresses the challenge of converting complex roofing system data into precise measurements for custom metal panels on a job site, a process described as labor-intensive and prone to error when done by hand (’923 Patent, col. 1:11-17).
- The Patented Solution: The invention is an automated and programmable machine that integrates several steps of panel fabrication. It decoils a sheet of metal, can optionally notch the material at precise locations, forms the sheet into a panel with specific edge profiles using a roll former, and then cuts the finished panel to a specific length and angle using an exit cutter (’923 Patent, Abstract). A central element is a programmable controller that can import data representing a building's structure, calculate the required panel dimensions, and automatically direct the machine's operations to produce the panels (’923 Patent, col. 4:57-67; Fig. 10).
- Technical Importance: The technology aims to provide a system for automatically and accurately fabricating custom metal roofing panels directly at an installation site, increasing efficiency and precision over manual methods (’923 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts independent claims 11 and 14 (’923 Patent, Compl. ¶16).
- Independent Claim 11 recites a programmable forming machine comprising:
- a roll former
- a means for moving the elongated sheet
- an exit cutter
- a programmable controller configured to import an "electronic representation of a building" to determine the panel profile
- a notching apparatus
- a decoiler reel
- Independent Claim 14 recites a programmable forming machine comprising:
- a roll former
- a means for moving the elongated sheet
- an exit cutter
- a programmable controller configured to direct operations according to a "measurement of a roofing system imported from a measurement device"
- a display connected to the controller
- The complaint alleges that direct infringement by Defendant's customers involves one or more of claims 1-20, suggesting a reservation of rights to assert additional claims (Compl. ¶45, ¶53).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the combination of Defendant’s SSQ II MultiPro Roof Panel Machine product (the "SSQ II"), the NTM100 and/or NTM200 Computer Controller, and the Angled Slitter attachable cutter (Compl. ¶12-16).
Functionality and Market Context
- The complaint alleges the SSQ II is a roll-forming machine with a hydraulic drive system for moving metal sheet, and that it includes a notching apparatus and a decoiler reel (Compl. ¶19, ¶20, ¶23, ¶24).
- The NTM100 and NTM200 are described as programmable controllers designed for use with the SSQ II machine (Compl. ¶13-14). The NTM200 allegedly directs the machine's forming and cutting operations based on imported data, such as an "electronic representation of a building" or measurements from a device like a "total station" (Compl. ¶22, ¶29).
- The Angled Slitter is identified as an attachable "exit cutter" for the SSQ II, used to cut formed panels to a selected length and angle (Compl. ¶15, ¶21).
- An image from Defendant’s website shows the accused SSQ II MultiPro Roof Panel Machine, which is advertised as having "Angle Cutting & Notching Functions" (Compl. p. 6). The complaint also cites marketing materials describing the SSQ II as a "best-selling, most advanced, accurate, and user-friendly multi-profile machine" (Compl. p. 6).
IV. Analysis of Infringement Allegations
'923 Patent Infringement Allegations (Claim 11)
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [a] a roll former having an entrance, a metal cutter, an exit and at least two sides with one or more rollers on each of the at least two sides for forming the selected profile... | The SSQ II is a roll former with the claimed components, including rollers on its left and right sides. | ¶19 | col. 11:27-33 |
| [b] a means for moving the elongated sheet of the formable material through the roll former | The SSQ II uses a hydraulic drive system to move the sheet through the roll former. | ¶20 | col. 11:34-36 |
| [c] an exit cutter proximate to the exit of the roll former and configured to receive the elongated sheet and selectively enabled to cut the elongated sheet at the selected length and cut the angled end or the straight end | The Angled Slitter, attached to the SSQ II, functions as an exit cutter to make angled or straight cuts at a selected length. | ¶21 | col. 11:37-42 |
| [d] a programmable controller...configured to import the electronic representation of a building and determine the selected profile for an appropriate panel... | The NTM200 controller, used with the SSQ II, is alleged to be a programmable controller that imports an electronic representation of a building to determine panel profiles. | ¶22 | col. 11:43-48 |
| [e] a notching apparatus selectively enabled to punch a notch or a hole in at least one edge of the elongated sheet... | The SSQ II has a notching apparatus that can punch notches or holes as directed by the controller. | ¶23 | col. 11:49-59 |
| [f] a decoiler reel for holding a roll of the elongated sheet of the formable material for entrance into the roll former | The SSQ II has a decoiler reel for holding the roll of metal. | ¶24 | col. 11:59-62 |
'923 Patent Infringement Allegations (Claim 14)
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [a] a roll former having an entrance, a metal cutter, an exit and two sides with rollers on each of the two sides for forming the selected profile... | The SSQ II is a roll former with the claimed components, including top and bottom drive rollers. | ¶26 | col. 13:8-12 |
| [b] a means for moving the elongated sheet of the formable material through the roll former | The SSQ II uses a hydraulic drive system to move the sheet through the roll former. | ¶27 | col. 13:13-15 |
| [c] an exit cutter proximate to the exit of the roll former and configured to receive the elongated sheet and enabled to cut the elongated sheet to the length and with the angled end or the straight end... | The Angled Slitter, attached to the SSQ II, functions as an exit cutter to make angled or straight cuts. | ¶28 | col. 13:16-20 |
| [d] a programmable controller...configured to direct the means for moving and the exit cutter according to a measurement of a roofing system imported from a measurement device | The NTM200 controller can import a measurement from a device, such as a total station, and direct the machine accordingly. | ¶29 | col. 13:21-28 |
| [e] a display electrically connected to the programmable controller that renders a user interface | The NTM200 has a display that provides a user interface. | ¶30 | col. 14:1-3 |
Identified Points of Contention
- Scope Questions: The primary difference between asserted independent claims 11 and 14 lies in the controller's input data. The case may raise the question of whether the NTM200 controller's functions satisfy the distinct requirements of importing an "electronic representation of a building" (Claim 11) versus importing a "measurement of a roofing system from a measurement device" (Claim 14), and what evidence distinguishes these two modes of operation.
- Technical Questions: Element [b] in both claims is a "means for moving the elongated sheet." Under 35 U.S.C. § 112(f), the scope of this element is limited to the corresponding structures disclosed in the specification and their equivalents. The infringement analysis will raise the question of whether the accused "hydraulic drive system" (Compl. ¶20, ¶27) is structurally equivalent to the "rolling dies" or other "means of moving material" disclosed in the patent (’923 Patent, col. 4:54-56; col. 9:13-17).
V. Key Claim Terms for Construction
Term: "import the electronic representation of a building" (Claim 11[d])
- Context and Importance: This term is critical for Claim 11, as it defines the nature of the data the controller must be configured to process. Practitioners may focus on this term because its construction will determine whether a simple data file with panel dimensions is sufficient, or if a more complex architectural model (e.g., CAD or BIM) is required to meet the limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses importing data from "design software" and "building information modeling," which "can define the spatial relationship between various components of a building structure" (’923 Patent, col. 4:15-18, 4:60-63). This could support an interpretation that covers a range of electronic data formats that represent a building.
- Evidence for a Narrower Interpretation: The specific mention of "spatial relationship between various components" could support an argument that the term requires a file format more complex than a simple cut list, one that describes how different parts of a building fit together.
Term: "means for moving the elongated sheet" (Claim 11[b], Claim 14[b])
- Context and Importance: This is a means-plus-function term, and its construction is governed by 35 U.S.C. § 112(f). Practitioners may focus on this term because the infringement analysis will depend on identifying the specific structures disclosed in the patent that perform the function of moving the metal sheet, and then determining if the accused "hydraulic drive system" is an equivalent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the controller can activate a "means of moving material... whether it is a feed wheel or the rolling dies 52 of the roll former 12, the decoiler reel 16, or other device for moving material through the machine" (’923 Patent, col. 9:13-17). This language may support identifying multiple disclosed structures, providing a broader basis for an equivalence argument.
- Evidence for a Narrower Interpretation: An opposing argument might be that the primary and most clearly linked structure for performing the function of moving the material through the roll former is the "rolling dies 52" themselves (’923 Patent, col. 4:54-56). The other mentioned components could be argued to perform distinct or ancillary functions.
VI. Other Allegations
Indirect Infringement
The complaint alleges both induced and contributory infringement.
- Inducement: The inducement claim is based on allegations that Defendant’s user manuals instruct customers to combine the SSQ II, NTM200, and Angled Slitter in a manner that directly infringes the ’923 Patent (Compl. ¶43-45).
- Contributory Infringement: This claim is based on allegations that the accused products are components of a patented machine, are especially made for an infringing use, and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶50-52).
Willful Infringement
Willfulness is alleged based on Defendant’s purported knowledge of the ’923 Patent since at least February 11, 2019, from pre-suit notice letters, and its subsequent and continued alleged infringement (Compl. ¶32-33, ¶36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of structural equivalence: for the "means for moving" limitation, is the accused "hydraulic drive system" equivalent to the "rolling dies" or other specific structures disclosed in the ’923 Patent for performing the claimed function?
- A core issue will be one of definitional scope: can the data processing capabilities of the accused NTM200 controller be shown to meet the distinct claim requirements of importing an "electronic representation of a building" (Claim 11) and importing a "measurement of a roofing system" (Claim 14)?
- The case will also turn on a question of system functionality: do the accused components, when combined and operated as allegedly instructed by Defendant, necessarily perform every step of the asserted claims, a determination critical to the allegations of indirect and willful infringement?