DCT
3:18-cv-00543
RMH Tech LLC v. PMC Industries Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: RMH Tech LLC and Metal Roof Innovations, Ltd. (Colorado)
- Defendant: PMC Industries, Inc. (Connecticut)
- Plaintiff’s Counsel: Sheridan Ross P.C.
- Case Identification: 16-cv-01762, D. Colo., 07/11/2016
- Venue Allegations: Venue in the District of Colorado is alleged based on Defendant having shipped the accused product into the state, offering it for sale to Colorado residents, and operating an interactive commercial website accessible in Colorado.
- Core Dispute: Plaintiff alleges that Defendant’s COLOR SNAP™ roof mounting system infringes a patent related to an adaptable mounting system for securing items to the standing seams of metal roofs.
- Technical Context: The technology concerns modular mechanical assemblies that clamp onto the raised seams of metal roofing, providing a secure attachment point for accessories like snow guards or equipment panels without penetrating the roof surface.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of the patent and its infringement. It further alleges that Defendant failed to provide a timely response as promised and did not cease sales, which forms the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 1999-05-17 | ’629 Patent Priority Date |
| 2002-10-29 | ’629 Patent Issue Date |
| 2016-07-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,470,629 - "Mounting System and Adaptor Clip"
- Patent Identification: U.S. Patent No. 6,470,629, “Mounting System and Adaptor Clip,” issued October 29, 2002.
The Invention Explained
- Problem Addressed: The patent addresses the challenge of attaching equipment or structures to standing seam metal roofs where the mounting points on the roof do not align with pre-set attachment points on the structure being mounted, often requiring costly and time-consuming custom fitting and drilling on-site (ʼ629 Patent, col. 1:47-57).
- The Patented Solution: The invention provides a mounting system featuring an adaptor clip that connects a roof-seam clamp to a cross member. The key feature is that the adaptor can slide along the length of the cross member to any desired position before being fixed in place, allowing it to align with a roof clamp regardless of the clamp’s location (ʼ629 Patent, col. 2:5-12; Fig. 1). This creates a versatile, adjustable interface between the roof and the attached structure (ʼ629 Patent, col. 7:4-16).
- Technical Importance: This design offered a flexible and "easy and economical" installation method for the growing market of standing seam metal roofs, avoiding the need for precise pre-drilled hole alignment (ʼ629 Patent, col. 1:11-15, col. 4:63-65).
Key Claims at a Glance
- The complaint asserts independent claim 15 (Compl. ¶14).
- The essential elements of independent claim 15 are:
- first and second mounting clamps;
- first and second mounting adaptors, each having first and second portions, with the first adaptor portion disposed on a mounting clamp;
- first and second fasteners anchoring the first adaptor portions to the clamps;
- a cross member; and
- first and second "means for detachably interconnecting" the cross member with the second adaptor portion of each mounting adaptor.
- The complaint notes its assertion is "Without limitation as to the claims to be asserted," which may reserve the right to assert other claims, including dependent claims (Compl. ¶14).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant's COLOR SNAP™ product, identified as a mounting system (Compl. ¶¶16-17).
Functionality and Market Context
- The COLOR SNAP™ system is used for mounting items to metal roofs (Compl. ¶17). The complaint provides an annotated photograph illustrating the accused system's components, including mounting clamps (A), adaptors (B), a cross member (F), and fasteners (E) (Compl. p. 5). The system allegedly operates by using the clamps (A) to grip a roof seam, while the adaptors (B) connect the clamps to the cross member (F), which in turn would support an external object (Compl. ¶¶17-21).
IV. Analysis of Infringement Allegations
’629 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| first and second mounting clamps | The accused COLOR SNAP™ product includes components labeled "A" which are identified as first and second mounting clamps. | ¶17 | col. 4:7-8 |
| first and second mounting adaptors, wherein each of said first and second mounting adaptors comprises first and second mounting adaptor portions, wherein said first mounting adaptor portion of said first mounting adaptor is disposed on said first mounting clamp... | The product includes components labeled "B" as adapters, which are alleged to have a first portion "C" disposed on the clamp "A" and a second portion "D". | ¶18 | col. 5:56-58 |
| first and second fasteners that anchor said first adaptor portion of said first and second mounting adaptors, respectively, to said first and second mounting clamps, respectively | The product includes fasteners, labeled "E", which are alleged to anchor the mounting adapters "B" to the mounting clamps "A". | ¶19 | col. 4:15-18 |
| a cross member | The product includes a component labeled "F", which is identified as a cross member. | ¶20 | col. 4:5-6 |
| first and second means for detachably interconnecting said cross member with said second adaptor portion of said first and second mounting adaptors, respectively | The product is alleged to include a means for interconnecting the cross member "F" with the second adapter portion "D" by "trapping a portion of the cross member." | ¶21 | col. 7:4-16 |
Identified Points of Contention
- Scope Questions: The final limitation of Claim 15 is a means-plus-function element, whose scope is limited to the structure disclosed in the patent and its equivalents. A central dispute will be whether the accused product's method of connecting the cross member to the adaptor is structurally equivalent to the patent's disclosed "beaded portion" and "channel portion" structure ('629 Patent, col. 5:56-58, col. 7:4-16). The complaint's description of this connection as "trapping a portion of the cross member" (Compl. ¶21) raises the question of whether this is functionally and structurally equivalent to the patent's slidable C-channel design.
- Technical Questions: A key evidentiary question will be whether Plaintiff can demonstrate that the components of the COLOR SNAP™ product, as labeled in the complaint's photograph, map directly onto the multipart structure required by Claim 15. Specifically, the relationship between the physical adaptor "B" and its alleged constituent "first" and "second" portions (C and D) will require factual proof to substantiate the infringement theory.
V. Key Claim Terms for Construction
- The Term: "means for detachably interconnecting said cross member with said second adaptor portion"
- Context and Importance: This is a means-plus-function limitation under 35 U.S.C. § 112, para. 6. Its construction is critical because infringement will require a showing that the corresponding structure in the accused device is identical or equivalent to the specific structure disclosed in the patent's specification. Practitioners may focus on this term as the dispositive issue for infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the purpose of the means is to solve the problem of inflexibility by allowing the adaptor to slide along the cross member (ʼ629 Patent, col. 7:11-16). The argument would be that any structure achieving this slidable interconnection should be considered an equivalent.
- Evidence for a Narrower Interpretation: A party could argue the claim is limited to the specific corresponding structure disclosed in the specification for performing the function. This structure consists of a "beaded portion" (312) on the adaptor that is slidably received by a "first channel portion" (204) on the cross member, which has a generally C-shaped cross-section (ʼ629 Patent, Fig. 2, Fig. 3, col. 4:56-62).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant encourages "use and installation of the product on standing seams of metal roofs" (Compl. ¶25).
- Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge. The complaint asserts that Plaintiff notified Defendant of the ʼ629 Patent and the alleged infringement, but Defendant failed to respond as promised and continued to sell the COLOR SNAP™ product (Compl. ¶23).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural equivalence under the means-plus-function framework: is the accused product's mechanism for connecting its cross member and adaptor—described as "trapping a portion"—structurally equivalent to the specific "beaded portion" and mating "channel" structure disclosed in the '629 patent specification?
- A key evidentiary question will be one of component mapping: can Plaintiff's infringement theory, which relies on labeling components in a photograph, be factually substantiated to show that the accused COLOR SNAP™ product contains every element of Claim 15, particularly the distinct "first and second mounting adaptor portions" as recited in the claim?