DCT

3:23-cv-00077

Crossford Intl LLC v. Keith Handy Design Ltd

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:23-cv-00077, D. Conn., 01/20/2023
  • Venue Allegations: Plaintiffs allege venue is proper because Defendants transact business in the State of Connecticut and are subject to personal jurisdiction in the district.
  • Core Dispute: Plaintiffs seek a declaratory judgment that they do not infringe, and that Defendants' patents related to conveyor belt cleaning systems are invalid and unenforceable.
  • Technical Context: The technology concerns apparatus and methods for cleaning industrial conveyor systems, such as those used in food production, where adjustable and sanitary equipment is critical.
  • Key Procedural History: This declaratory judgment action arises from a prior business relationship between the parties, where Plaintiff Goodway Technologies was a distributor for Defendant KHD. The complaint alleges that Defendants threatened patent litigation and that the patents-in-suit are invalid and unenforceable due to inequitable conduct during prosecution, including the failure to name one of Plaintiffs' employees as a co-inventor on two of the patents and the failure to disclose material prior art.

Case Timeline

Date Event
2004-03-12 U.S. Patent No. 7,784,476 Priority Date
2010-08-31 U.S. Patent No. 7,784,476 Issued
2012-11-12 U.S. Patent No. 9,248,975 Priority Date
2015-04-14 Parties enter Memorandum of Understanding and Confidentiality Agreement
2015-06-01 Plaintiff's employee allegedly proposes rotary head concept (related to '623 Patent)
2016-02-02 U.S. Patent No. 9,248,975 Issued
2016-04-01 Plaintiff's employee allegedly recommends sequential cleaning pattern concept (related to '354 Patent)
2016-06-16 U.S. Patent No. 10,150,623 Priority Date
2017-09-15 U.S. Patent No. 10,604,354 Priority Date
2018-12-11 U.S. Patent No. 10,150,623 Issued
2019-09-05 Defendants allegedly send cease and desist letter regarding '476 Patent to a third party
2020-03-31 U.S. Patent No. 10,604,354 Issued
2023-01-20 Complaint for Declaratory Judgment Filed

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

U.S. Patent No. 7,784,476 - "Portable Conveyor Cleaning Assembly"

  • Patent Identification: U.S. Patent No. 7,784,476, "Portable Conveyor Cleaning Assembly," issued August 31, 2010.

The Invention Explained

  • Problem Addressed: The patent background describes the difficulty and expense of cleaning multiple industrial conveyors that have different widths, as this often requires different, dedicated cleaning assemblies (ʼ476 Patent, col. 1:11-24).
  • The Patented Solution: The invention is a portable cleaning assembly designed to be adaptable to conveyors of varying sizes. It features an elongate body spanning the conveyor, with a cleaning carriage that reciprocates along it. The key feature is that the members engaging the conveyor sides are adjustable, allowing a single unit to be mounted on different conveyor widths and the cleaning path to be set accordingly ('476 Patent, Abstract; col. 2:27-41).
  • Technical Importance: This approach provides a versatile, single-unit solution for facilities with multiple, differently-sized conveyors, potentially reducing equipment costs and standardizing cleaning processes ('476 Patent, col. 3:41-48).

Key Claims at a Glance

  • The complaint seeks a declaration of invalidity and non-infringement for all claims of the patents-in-suit (Compl. ¶¶ 92, 96). Independent claim 1 is representative.
  • Essential elements of Independent Claim 1 include:
    • An elongate reciprocal movement means with an elongate body and a movable carriage member.
    • A cleaning member mounted on the carriage.
    • First and second engagement members to mount the assembly on an item, engageable from above.
    • The second engagement member is adjustably mounted on the elongate body to accommodate different widths.
    • The proportion of the body along which the carriage moves is also adjustable.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 9,248,975 - "Cleaning Apparatus"

  • Patent Identification: U.S. Patent No. 9,248,975, "Cleaning Apparatus," issued February 2, 2016.

The Invention Explained

  • Problem Addressed: The patent identifies the need for cleaning arrangements that are themselves easy to clean to avoid cross-contamination, a significant concern in the food industry (’975 Patent, col. 1:5-12).
  • The Patented Solution: The invention is a cleaning apparatus with a frame that mounts to a conveyor and a cleaning unit that can be moved along transverse guides. This allows the cleaning unit to be shifted between an "in use" position engaging the conveyor and a "rest position" clear of the conveyor. This design facilitates easy installation, retraction for conveyor use, and complete removal of the cleaning unit for separate, thorough cleaning ('975 Patent, Abstract; col. 1:13-28).
  • Technical Importance: The technology focuses on the operational workflow and sanitation of the cleaning equipment itself, providing a system that can be quickly deployed or stowed and easily maintained.

Key Claims at a Glance

  • The complaint seeks a declaration of invalidity and non-infringement for all claims (Compl. ¶¶ 92, 96). Independent claim 1 is representative.
  • Essential elements of Independent Claim 1 include:
    • A frame with end parts mountable adjacent to a conveyor's side edges.
    • A cleaning unit that is selectively locatable between the end parts.
    • The cleaning unit is selectively movable between a "rest position" and an "in use position."
    • The frame includes a cross part with transverse guides.
    • The cleaning unit has side edges that slidably engage the transverse guides.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 10,150,623 - "Cleaning Apparatus"

  • Patent Identification: U.S. Patent No. 10,150,623, "Cleaning Apparatus," issued December 11, 2018.

Technology Synopsis

This patent discloses a cleaning apparatus that replaces potentially hazardous spinning arms with a driven, rotatable disc. The disc contains internal passages and nozzles that distribute cleaning fluid, such as steam, onto a surface like a conveyor belt ('623 Patent, Abstract; col. 1:17-25). The design aims to provide wide-area coverage without the safety risks of extended moving arms ('623 Patent, col. 1:17-25, col. 3:45-51).

Asserted Claims

The complaint does not specify claims; independent claims are 1, 14, 15, and 16.

Accused Features

The complaint alleges that the inventive concept of a "rotary head" for the cleaning system was conceived by an employee of the Plaintiff and communicated to the Defendant, who is not named as an inventor on the patent (Compl. ¶¶ 71-73).

U.S. Patent No. 10,604,354 - "Treatment Method"

  • Patent Identification: U.S. Patent No. 10,604,354, "Treatment Method," issued March 31, 2020.

Technology Synopsis

This patent claims a method for automatically optimizing the cleaning of a conveyor belt. The method involves a control system that receives data inputs such as belt width, belt speed, and debris level. Based on these inputs, it automatically calculates the optimal extent and speed of a reciprocating cleaning head to ensure complete coverage without excessive overlap or missed areas ('354 Patent, Abstract; col. 2:18-32).

Asserted Claims

The complaint does not specify claims; independent claims are 1 and 11.

Accused Features

The complaint alleges that the inventive concept of using "user defined variable to treat the conveyor belts in sequential patterns" was conceived by an employee of the Plaintiff and communicated to the Defendant, who is not named as an inventor on the patent (Compl. ¶¶ 75-77).

III. The Accused Instrumentality

Product Identification

As this is a declaratory judgment action, the "accused" products are those of the Plaintiffs, Crossford International and Goodway Technologies. The complaint refers to them generally as "Crossford's BIOSPRAY® branded surface sanitizer systems and solutions," "dry steam cleaning products," and potential future "competing systems" (Compl. ¶¶ 16, 17, 87).

Functionality and Market Context

Plaintiffs' products provide "maintenance and sanitation equipment and solutions" for various industries, with a focus on cleaning automated production lines in food and beverage processing facilities (Compl. ¶¶ 12, 19). The complaint alleges that Defendants have threatened litigation, asserting that any competing systems developed by Plaintiffs would fall within the scope of the Defendants' patents (Compl. ¶ 87).

IV. Analysis of Infringement Allegations

The complaint is for a declaratory judgment of non-infringement and does not contain infringement allegations or claim charts mapping the patents to Plaintiffs' products. Instead, it makes blanket denials of infringement (Compl. ¶ 97) and focuses on arguments for invalidity and unenforceability. Therefore, a claim chart summary cannot be constructed from the complaint.

  • Identified Points of Contention: The central disputes raised in the complaint are not over claim scope but over patent validity and enforceability.
    • Anticipation ('476 Patent): The primary contention is that the '476 Patent is invalid as anticipated by a prior art reference, German Patent No. EP 0 820 965 A1 ("Bruhin") (Compl. ¶ 28). The complaint alleges the USPTO Examiner erred in allowing the patent by concluding Bruhin did not teach certain claim elements (Compl. ¶ 29). The complaint describes how specific figures in the Bruhin patent allegedly disclose these elements (Compl. ¶ 30).
    • Inventorship ('623 and '354 Patents): A core dispute is whether a Crossford employee, Reyes, should have been named as a co-inventor on the '623 and '354 patents. The complaint alleges Reyes conceived of and collaborated on the "rotary head" concept of the '623 Patent after reviewing a competitor's product, a visual of which is referenced as Exhibit K (Compl. ¶¶ 71, 73). It further alleges Reyes suggested the "user defined variable" cleaning patterns that form the basis of the '354 Patent, as documented in Exhibit L (Compl. ¶¶ 75, 76).
    • Inequitable Conduct (All Patents): The complaint repeatedly alleges that Defendant Handy engaged in inequitable conduct by failing to disclose material prior art and, for the '623 and '354 patents, by failing to name Reyes as an inventor (Compl. ¶¶ 32-33, 38, 43, 48).
    • Enablement ('354 Patent): The complaint raises a validity challenge under 35 U.S.C. § 112, alleging that the specification of the '354 patent provides insufficient detail for a person skilled in the art to practice the invention, specifically how various data inputs are used to calculate an optimal cleaning program (Compl. ¶¶ 50-51).

V. Key Claim Terms for Construction

While the complaint focuses on invalidity, the anticipation argument against the '476 Patent highlights terms whose construction will be critical.

  • The Term: "engageable from above" (from '476 Patent, Claim 1)

  • Context and Importance: Practitioners may focus on this term because the complaint alleges the USPTO Examiner's allowance of the '476 patent was based on an erroneous finding that the Bruhin prior art lacked this feature (Compl. ¶ 29). Whether Bruhin's mounting system meets this limitation will be a central question in the anticipation analysis.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language itself is functional and does not specify a particular structure. Parties arguing for a broader scope may contend that any mechanism that secures the assembly onto the top or upper surface of a conveyor's side structure meets this limitation.
    • Evidence for a Narrower Interpretation: The specification describes a specific embodiment using an "F shape section bracket 44" with a "foot 48" that sits on the conveyor structure ('476 Patent, col. 2:49-54, Fig. 3). A party could argue the term should be limited to such a structure that hooks or clamps over the top of the item.

  • The Term: "proportion of the elongate body along which the carriage moves being adjustable" (from '476 Patent, Claim 1)

  • Context and Importance: This is the second key limitation the complaint alleges the Examiner wrongly found to be absent from the Bruhin reference (Compl. ¶ 29). The dispute will turn on whether Bruhin's mechanism for setting the travel distance of its cleaning element qualifies as "adjustable" under the patent's claims.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes adjustability via a slidable end assembly that is locked in place with "clamp screws" ('476 Patent, col. 2:55-59). An argument could be made that any mechanism allowing the travel limits to be set and changed, even manually, falls within the plain meaning of "adjustable."
    • Evidence for a Narrower Interpretation: The description states "the amount of reciprocal movement... can be set to provide full cleaning of the mesh" ('476 Patent, col. 3:15-17). A party might argue this requires a more sophisticated or precise setting mechanism than what is allegedly disclosed in Bruhin, or that "adjustable" implies a range of settings rather than a single fixed relocation.

VI. Other Allegations

  • Indirect Infringement: The complaint preemptively denies any liability for indirect infringement, stating that "Crossford has not induced or contributed to any infringement of any of the claims of the Patents-in-Suit" (Compl. ¶ 98).
  • Willful Infringement: The complaint does not allege willfulness. However, should Defendants counterclaim for infringement, the facts alleged by Plaintiffs regarding the prior business relationship, the signing of a Memorandum of Understanding, and direct threats of litigation could be used to establish Defendants' claim of pre-suit knowledge of the patents, a required element for proving willful infringement (Compl. ¶¶ 53, 85-88).

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

  • A central issue will be one of inventorship and enforceability: Did a Crossford employee make inventive contributions to the '623 and '354 patents, and, if so, does Defendant's failure to name him as an inventor and disclose related information rise to the level of inequitable conduct that would render those patents unenforceable?
  • A key validity question will be one of anticipation: Does the Bruhin prior art reference, which was before the patent office, actually teach all elements of the '476 patent's claims, particularly the concepts of "engagement from above" and "adjustable" movement, as Plaintiffs allege and contrary to the USPTO's allowance?
  • An underlying evidentiary question will be the effect of the parties' prior relationship: How will evidence from the parties' collaboration and subsequent dispute—including allegations of trade secret misappropriation and breach of contract—impact the court's analysis of the patent-specific claims of invalidity and inequitable conduct?