DCT

3:22-cv-01083

Crossford Intl LLC v. Keith Handy Design Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:22-cv-01083, D. Conn., 08/26/2022
  • Venue Allegations: Venue is alleged to be proper as Defendants are subject to personal jurisdiction in the district, transact business in Connecticut, and have engaged in the manufacture, distribution, and sale of goods throughout the United States.
  • Core Dispute: Plaintiffs seek a declaratory judgment that Defendants' patents related to conveyor belt cleaning systems are invalid, unenforceable, and not infringed by Plaintiffs' current or future products.
  • Technical Context: The technology concerns apparatus and methods for cleaning industrial conveyor belts, particularly within the food production and processing industries where sanitation is critical.
  • Key Procedural History: This action arises from a former business and development relationship between the parties, established by a 2015 Memorandum of Understanding and a Confidentiality Agreement. Plaintiffs allege that Defendants have threatened patent litigation and that the patents-in-suit are invalid and unenforceable due to multiple issues, including: anticipation by prior art allegedly overlooked by the USPTO; failure to name a Plaintiff's employee as a co-inventor on two patents despite his alleged contributions; and failure to disclose material prior art during prosecution, giving rise to claims of inequitable conduct.

Case Timeline

Date Event
2004-03-12 ’476 Patent Priority Date
2010-08-31 ’476 Patent Issue Date
2012-11-12 ’975 Patent Priority Date
2015-04-14 Parties enter Memorandum of Understanding and Confidentiality Agreement
2015-06-01 Alleged inventive contribution by Plaintiff's employee to '623 Patent technology
2016-02-02 ’975 Patent Issue Date
2016-04-01 Alleged inventive contribution by Plaintiff's employee to '354 Patent technology
2016-06-16 ’623 Patent Priority Date
2017-09-15 ’354 Patent Priority Date
2018-12-11 ’623 Patent Issue Date
2019-09-05 Defendant allegedly sends cease and desist letter to a third party regarding '476 Patent
2020-03-31 ’354 Patent Issue Date
2022-08-26 Complaint Filing Date

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

U.S. Patent No. 7,784,476 - "Portable Conveyor Cleaning Assembly" (Issued Aug. 31, 2010)

The Invention Explained

  • Problem Addressed: Industrial facilities, such as bakeries, often use numerous conveyors of varying widths, making it prohibitively expensive to have a dedicated cleaning assembly for each one. These conveyors often have mesh or interlinked structures that are difficult to clean effectively (Compl. ¶1; ’476 Patent, col. 1:11-23).
  • The Patented Solution: The patent describes a portable cleaning assembly designed to be adaptable to different conveyor sizes. The core innovation is a second engagement member that is adjustably mounted on an elongate body, allowing the assembly's width to be changed to fit various conveyors. A cleaning member, mounted on a movable carriage, then travels back and forth along this body to clean the item (’476 Patent, Abstract; col. 2:27-41).
  • Technical Importance: The invention provides a single, robust, and portable apparatus capable of cleaning multiple conveyors of different dimensions, thereby offering a more economical and flexible solution for industrial sanitation (’476 Patent, col. 3:41-54).

Key Claims at a Glance

  • The complaint challenges all claims of the patent (Compl. ¶92). Independent claim 1 is representative and includes the following essential elements:
    • An elongate reciprocal movement providing means, including an elongate body and a carriage member movable along the body.
    • A cleaning member mounted on the carriage.
    • A first engagement member mounted to the body and engageable from above on an item to be cleaned.
    • A second engagement member also engageable from above on the item, which is adjustably mounted on the elongate body to be set at a required spacing from the first engagement member.
    • The carriage member is movable along a required proportion of the body between the engagement members.
    • The proportion of the elongate body along which the carriage moves is adjustable.

U.S. Patent No. 9,248,975 - "Cleaning Apparatus" (Issued Feb. 2, 2016)

The Invention Explained

  • Problem Addressed: The cleaning arrangements for conveyors must themselves be cleaned to avoid cross-contamination, but this process can be difficult and unsatisfactory with existing designs (’975 Patent, col. 1:8-13).
  • The Patented Solution: The patent discloses a cleaning apparatus with a frame that mounts to the conveyor and a cleaning unit that is selectively and slidably movable between an "in use" position engaging the conveyor and a "rest position" clear of the conveyor. This is facilitated by transverse guides on the frame that engage with the cleaning unit, allowing it to be easily installed for use and removed for separate, thorough cleaning (’975 Patent, Abstract; col. 1:14-30).
  • Technical Importance: This modular design improves sanitation and operational efficiency by allowing the main cleaning unit to be completely removed from the conveyor path for maintenance or during production, without dismantling the entire frame structure (’975 Patent, col. 4:36-49).

Key Claims at a Glance

  • The complaint challenges all claims of the patent (Compl. ¶92). Independent claim 1 is representative and includes the following essential elements:
    • A frame with end parts, each mountable adjacent a side edge of a conveyor.
    • A cleaning unit selectively locatable to extend between the end parts.
    • The cleaning unit is selectively movable between a rest position clear of the conveyor and an in-use position engaging the conveyor.
    • The frame includes a cross part with a pair of transverse guides.
    • Side edges of the cleaning unit are slidably engageable with the guides when moving to or from its position between the end parts.

Multi-Patent Capsule: U.S. Patent No. 10,150,623

  • Patent Identification: U.S. Patent No. 10,150,623, "Cleaning Apparatus," Issued Dec. 11, 2018.
  • Technology Synopsis: The patent addresses the safety hazards and balancing problems associated with traditional spinning-arm cleaners. The invention proposes using a rotating disc made of plastics material with internal passages and nozzles that deliver cleaning fluid. This disc-based design is described as being inherently more balanced and safer upon contact than spinning arms (’623 Patent, Abstract; col. 1:16-24).
  • Asserted Claims: The complaint asserts invalidity and unenforceability of all claims, with Claim 1 being the main independent claim (Compl. ¶92).
  • Alleged Basis for DJ Action: The complaint alleges that the '623 Patent is unenforceable because the concept of a "rotary head" was an inventive contribution from a Plaintiff's employee, Evan Reyes, who was not named as an inventor. It further alleges this contribution was made after Reyes discovered a competitor's product and that Defendant failed to disclose this product as prior art during prosecution (Compl. ¶¶ 71-74, 107).

Multi-Patent Capsule: U.S. Patent No. 10,604,354

  • Patent Identification: U.S. Patent No. 10,604,354, "Treatment Method," Issued Mar. 31, 2020.
  • Technology Synopsis: The patent describes a method and apparatus for optimizing conveyor belt cleaning. The system automatically calculates the required pattern and speed for a transversely moving cleaning head based on user inputs such as belt width, belt speed, and debris level. This calculation is intended to ensure full coverage with minimal inefficient overlap (’354 Patent, Abstract; col. 2:19-32).
  • Asserted Claims: The complaint asserts invalidity and unenforceability of all claims, with Claims 1 (method) and 11 (apparatus) being independent (Compl. ¶92).
  • Alleged Basis for DJ Action: The complaint alleges the '354 Patent is unenforceable due to a Plaintiff's employee, Reyes, making inventive contributions regarding the use of user-defined variables for sequential cleaning patterns, for which he was not named as an inventor (Compl. ¶¶ 75-77). The complaint also alleges the patent is invalid under 35 U.S.C. § 112 for lacking sufficient written description and enablement (Compl. ¶¶ 50-51).

III. The Accused Instrumentality

  • Product Identification: The complaint seeks a declaratory judgment of non-infringement concerning its intellectual property, referred to as the "Crossford IP," which may include current and future products (Compl. ¶95).
  • Functionality and Market Context: The complaint does not identify a specific product or provide technical details of its functionality. The basis for the declaratory judgment action is founded on Defendants' alleged "threats of patent litigation" and "cautionary statements" that if Plaintiffs were to "create [their] own competing systems, those products would fall within the scope of KHD’s broad-based interpretation of the claims" (Compl. ¶¶ 85, 87). Plaintiffs are described as global manufacturers of maintenance and sanitation solutions for various industries, including food and beverage processing (Compl. ¶12). The complaint does not provide sufficient detail for a direct infringement analysis of a specific instrumentality.

IV. Analysis of Non-Infringement and Invalidity Allegations

The complaint does not provide a claim chart mapping patent claims to a specific product. Instead, its primary theory of non-infringement is that the Patents-in-Suit are invalid and/or unenforceable, and therefore cannot be infringed (Compl. ¶96). The core of the complaint focuses on affirmative allegations of invalidity and unenforceability.

  • ’476 Patent Invalidity Argument: The central invalidity argument against the ’476 Patent is that it is anticipated under 35 U.S.C. § 102 by German Patent No. EP 0 820 965 A1 ("Bruhin") (Compl. ¶28). The complaint alleges the USPTO Examiner erred in allowing the patent, contending that Bruhin, contrary to the Examiner’s finding, does disclose the key distinguishing features (Compl. ¶¶ 29-31). The complaint supports this by referencing Figures 2 and 3 of the Bruhin patent, which it alleges show the claimed "engagement members ... engageable from above" and an "adjustably moveable" carriage member (Compl. ¶30).

  • ’354 Patent § 112 Invalidity Argument: The complaint alleges the ’354 Patent is invalid for failing to meet the written description and enablement requirements of 35 U.S.C. § 112. It specifically argues that the specification provides "insufficient disclosure regarding the conversion of how input for debris level, figure for debris level, speed of movement of the conveyor belt, and cycle time are used to calculate a cleaning program" (Compl. ¶51).

  • Unenforceability Arguments (All Patents): A significant portion of the complaint is dedicated to arguing that the patents are unenforceable due to inequitable conduct. The allegations include:

    • Improper Inventorship: Defendant Handy allegedly failed to name Plaintiff’s employee, Evan Reyes, as a co-inventor on the ’623 and ’354 patents despite his purported conceptual contributions (Compl. ¶¶ 73, 77).
    • Failure to Disclose Prior Art: Defendant Handy allegedly failed to disclose known, material prior art during the prosecution of all four patents-in-suit (Compl. ¶¶ 33, 39, 44, 49), including a specific competitor product in the case of the ’623 Patent (Compl. ¶74).

  • Identified Points of Contention:

    • Factual Questions (Inventorship): A central factual dispute will be determining the nature and extent of the contributions made by Plaintiff’s employee, Reyes, to the ’623 and ’354 patents. The court will need to assess whether these contributions rise to the level of co-inventorship.
    • Legal/Technical Questions (Validity): The anticipation argument against the ’476 Patent raises the question of whether the Bruhin reference teaches every element of the asserted claims, which will depend on claim construction. The enablement argument against the ’354 Patent raises the question of whether its disclosure would require a person skilled in the art to engage in undue experimentation to practice the invention.

V. Key Claim Terms for Construction

For the ’476 Patent:

  • The Term: "engageable from above on an item to be cleaned" (from Claim 1)
  • Context and Importance: This term was a key basis for the patent examiner's allowance of the claims over the Bruhin prior art (Compl. ¶29). Plaintiffs now allege the examiner was wrong and that Bruhin does disclose this feature (Compl. ¶30). The construction of this term is therefore dispositive for the anticipation argument.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification describes the engagement members in general terms, for example as being "locatable on respective side structures of a conveyor" (’476 Patent, col. 2:9-11), which may support a broader reading not limited to a specific geometry.
    • Evidence for a Narrower Interpretation: The embodiment shown in the figures depicts F-shaped brackets with a "foot" (48) that rests on the top surface of the conveyor's side structure (’476 Patent, Fig. 3, col. 2:48-54). A party could argue "from above" requires this specific top-down engagement configuration.

For the ’975 Patent:

  • The Term: "a rest position clear of the conveyor" (from Claim 1)
  • Context and Importance: The novelty of the claimed apparatus appears to rest on its ability to be moved from an "in use" position to a "rest position." The definition of what constitutes being "clear of the conveyor" is critical to distinguishing the invention from prior art and assessing potential infringement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term could be construed broadly to mean any position where the cleaning unit is not in physical contact with or directly over the moving surface of the conveyor belt, allowing for operational use of the conveyor.
    • Evidence for a Narrower Interpretation: The specification and figures show the cleaning unit (14) sliding entirely out of the frame (12) along guide members (28) (e.g., ’975 Patent, Figs. 6-8; col. 4:4-14). This could support a narrower interpretation where "clear of the conveyor" requires the unit to be physically removed from the space between the frame's end parts.

VI. Other Allegations

  • Indirect Infringement: Plaintiffs explicitly state that they have "not induced or contributed to any infringement of any of the claims of the Patents-in-Suit" (Compl. ¶98).

No probative visual evidence provided in complaint.

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

This declaratory judgment action appears to hinge less on a traditional infringement analysis and more on the history of the parties' relationship and the prosecution of the patents. The central questions for the court will likely be:

  1. A dispositive issue will be one of enforceability and inventorship: Does the evidence support the claim that a plaintiff's employee made inventive contributions to the ’623 and ’354 patents, and did the defendant knowingly fail to name him as an inventor? An affirmative finding could render those patents unenforceable.

  2. A key legal question will be one of validity over prior art: Does the Bruhin reference disclose every element of the ’476 patent's claims, as construed by the court? The case may turn on whether Bruhin’s mounting mechanism can be considered "engageable from above."

  3. An important evidentiary question will be one of enablement: Does the ’354 patent’s specification provide enough technical detail for a person skilled in the art to implement the claimed automated cleaning method without resorting to undue experimentation?