DCT

3:23-cv-00924

Crossford Intl LLC v. Keith Handy Design Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:23-cv-00924, D. Conn., 07/12/2023
  • Venue Allegations: Venue is alleged to be proper based on Defendants transacting business in the State of Connecticut and the judicial district.
  • Core Dispute: Plaintiffs seek a declaratory judgment of non-infringement, invalidity, and unenforceability of four of Defendants' patents related to conveyor belt cleaning systems.
  • Technical Context: The technology concerns industrial cleaning systems for conveyor belts, which are critical for sanitation and maintenance in industries such as food and beverage processing.
  • Key Procedural History: This declaratory judgment action arises from a former business relationship between the parties, governed by a 2015 Memorandum of Understanding and a Confidentiality Agreement. Plaintiffs allege that Defendants misappropriated Plaintiffs' confidential information and the inventive contributions of a key employee to prosecute and obtain the patents-in-suit. The complaint also raises specific invalidity challenges based on the prosecution history of the earliest patent, and includes counts for trade secret misappropriation, breach of contract, and unfair competition.

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 Plaintiffs' employee allegedly proposes rotary head concept (related to '623 Patent)
2016-02-02 U.S. Patent No. 9,248,975 Issued
2016-04-01 Plaintiffs' employee allegedly recommends sequential pattern cleaning (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 to competitor Steamericas regarding '476 Patent
2020-03-31 U.S. Patent No. 10,604,354 Issued
2023-07-12 Complaint for Declaratory Judgment Filed

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 multiple conveyors of different widths, and providing a dedicated cleaning assembly for each can be "prohibitively expensive" ('476 Patent, col. 1:18-23).
  • The Patented Solution: The patent describes a single, portable cleaning assembly with adjustable end members. These members can be repositioned along an "elongate body" to match the width of different conveyors, allowing one device to service multiple lines ('476 Patent, Abstract; col. 2:31-38). A carriage with a cleaning member (e.g., fluid jets) moves back and forth along this body to clean the conveyor surface ('476 Patent, col. 2:27-31).
  • Technical Importance: The invention aims to provide a versatile and cost-effective solution for maintaining hygiene on various conveyor systems within a facility.

Key Claims at a Glance

  • The complaint seeks a declaration of invalidity and non-infringement of the patent generally, without specifying claims (Compl. ¶91-93). Independent claim 1 is central to the technology.
  • Independent Claim 1 requires:
    • 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 engageable from above on an item to be cleaned.
    • A second engagement member, also engageable from above, that is adjustably mounted on the elongate body.
    • The carriage member being movable along a required proportion of the body between the engagement members.
    • The proportion of the elongate body along which the carriage moves being adjustable.

U.S. Patent No. 9,248,975 - Cleaning Apparatus, issued Feb. 2, 2016

The Invention Explained

  • Problem Addressed: The cleaning arrangements themselves require cleaning, and this process has "often not proved particularly straightforward," creating risks of cross-contamination, especially in the food industry (’975 Patent, col. 1:8-13).
  • The Patented Solution: The invention is a modular cleaning apparatus where the main "cleaning unit" can be selectively detached from a frame that remains mounted to the conveyor ('975 Patent, Abstract; col. 1:14-23). The cleaning unit slides along transverse guides and can be completely removed, allowing it to be taken to a separate station for thorough sanitation without disturbing the entire installation ('975 Patent, Fig. 7-8; col. 4:1-15).
  • Technical Importance: By enabling the easy removal of the core cleaning unit, the invention facilitates more effective sanitation protocols, a critical requirement in hygiene-sensitive environments.

Key Claims at a Glance

  • The complaint seeks a declaration of invalidity and non-infringement of the patent generally (Compl. ¶91-93). Independent claim 1 is representative.
  • Independent Claim 1 requires:
    • A frame with end parts mountable adjacent to a conveyor's side edges.
    • A cleaning unit selectively locatable to extend between the end parts.
    • The cleaning unit being selectively movable between a rest position (clear of the conveyor) and an in-use position (engaging the conveyor).
    • The frame including a cross part with transverse guides.
    • Side edges of the cleaning unit being slidably engageable with the guides when moving.

Multi-Patent Capsule: U.S. Patent No. 10,150,623 - Cleaning Apparatus, issued Dec. 11, 2018

  • Technology Synopsis: This patent addresses the hazards and instability of cleaning systems that use fast-spinning arms ('623 Patent, col. 1:17-24). The invention provides a cleaning apparatus with a rotatable member in the form of a solid "disc" made of plastics material, which is driven by a motor. This disc has internal passages and external nozzles to supply jets of cleaning fluid, offering a more balanced and safer alternative to spinning arms ('623 Patent, Abstract; col. 2:42-51).
  • Asserted Claims: The complaint seeks a declaration regarding the entire patent (Compl. ¶91-93).
  • Accused Features: The complaint alleges that the "basis of the '623 Patent" was an improvement recommended by a Crossford employee, Evan Reyes, to "incorporate a rotary head on KHD's jet system" (Compl. ¶71-72). The dispute centers on whether Plaintiffs' own technology, allegedly co-developed, can be accused of infringement.

Multi-Patent Capsule: U.S. Patent No. 10,604,354 - Treatment Method, issued Mar. 31, 2020

  • Technology Synopsis: The patent describes a method to overcome the difficulty of achieving full, efficient cleaning coverage on a moving conveyor belt without leaving uncleaned areas or creating excessive, wasteful overlap ('354 Patent, col. 2:10-18). The patented method involves a control system that takes user inputs (e.g., belt width, belt speed, debris level) and "automatically calculat[es]" the optimal extent and speed of the cleaning head's reciprocal movement to ensure "full treatment coverage" ('354 Patent, Abstract; col. 2:26-32).
  • Asserted Claims: The complaint seeks a declaration regarding the entire patent (Compl. ¶91-93).
  • Accused Features: The complaint alleges that the "basis of the '354 Patent" was an improvement recommended by Evan Reyes to "implement user defined variable to treat the conveyor belts in sequential patterns" (Compl. ¶75-76).

III. The Accused Instrumentality

Product Identification

The complaint does not identify a specific accused product by name. Instead, it refers to the dispute as concerning "the Crossford IP" and the potential for Plaintiffs' "own competing systems" to be accused of infringement (Compl. ¶87, 95).

Functionality and Market Context

The complaint broadly describes Plaintiffs' business as providing "maintenance solutions" and "dry steam cleaning products for packaging machinery, production lines, and conveyor belts" for industries such as food and beverage processing (Compl. ¶12, 16). The complaint does not provide sufficient detail for analysis of the technical functionality of Plaintiffs' specific products or systems.

IV. Analysis of Infringement Allegations

As this is a complaint for a declaratory judgment of non-infringement filed by the accused infringer, it does not contain infringement allegations or a claim chart from the patentee. Plaintiffs allege non-infringement on the grounds that the patents-in-suit are invalid and unenforceable (Compl. ¶96). The complaint references Figures 2 and 3 of the 'Bruhin' prior art reference to allege that it discloses elements the USPTO examiner found to be missing in the prior art (Compl. ¶30, Ex. F).

Identified Points of Contention

The primary points of contention raised in the complaint are not about infringement, but about patent validity and enforceability.

  • Technical Questions (Validity): For the ’476 Patent, the complaint argues the USPTO Examiner "erred" by allowing the patent over the "Bruhin" prior art reference (Compl. ¶30-31). A central question will be whether Bruhin's disclosure of a "holding mechanism 13" and "suction cup 16" teaches the claimed "engagement members engageable from above," a key distinction relied upon by the examiner (Compl. ¶29-30).
  • Legal Questions (Unenforceability): For the ’623 and ’354 Patents, the complaint raises a significant dispute over inventorship. It alleges that a Crossford employee, Evan Reyes, was a true co-inventor whose contributions were not disclosed to the USPTO (Compl. ¶73, 77). This raises the legal question of whether deceptive intent was involved, which could render the patents unenforceable.

V. Key Claim Terms for Construction

’476 Patent

  • Term: "engageable from above"

  • Context and Importance: The complaint highlights that the USPTO Examiner allowed the claims of the '476 Patent after finding that the Bruhin prior art failed to teach "engagement members engageable from above" (Compl. ¶29). Plaintiffs now allege the examiner erred, contending that Bruhin's suction cups do meet this limitation (Compl. ¶30). The construction of this term is therefore critical to the validity analysis.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: A party could argue that the plain and ordinary meaning of "engageable from above" is not limited to a specific mechanism and would cover any component that connects to the top surface of the conveyor's side structure, which could include Bruhin's system.
    • Evidence for a Narrower Interpretation: The patent specification describes "F shape section bracket[s]" (col. 2:49-50) and illustrates a specific mechanical mounting structure (Fig. 3). A party could argue these embodiments limit the term to a mechanical clamping or bracketing action, as opposed to suction.

  • Term: "the proportion of the elongate body along which the carriage moves being adjustable"

  • Context and Importance: This was another feature the USPTO Examiner found was not taught by Bruhin (Compl. ¶29). Plaintiffs argue that Bruhin does, in fact, disclose this feature (Compl. ¶30). The construction of this term will determine whether the prior art teaches the claimed adjustability of the cleaning path's length.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language is broad. A party may argue it covers any method of changing the carriage's travel distance, whether mechanically, electronically, or by repositioning components.
    • Evidence for a Narrower Interpretation: The specification discusses setting the movement using the "control box 20" or via sensors (col. 3:17-21). A party could argue this implies an automated or electronic adjustability that is absent in the purely mechanical system of Bruhin.

VI. Other Substantive Allegations

Unenforceability (Inequitable Conduct and Incorrect Inventorship)

The complaint alleges that Defendant Handy failed to disclose material information to the USPTO during prosecution of all four patents-in-suit (Compl. ¶32-34, 38-39, 43-44, 48-49). For the ’623 and ’354 Patents, the allegations are more specific, asserting that Defendant Handy failed to name Plaintiffs' employee, Evan Reyes, as a co-inventor after he allegedly conceived of the core ideas for the "rotary head" and "sequential patterns" cleaning method (Compl. ¶71-77). The complaint also alleges a failure to disclose a known prior art product from Amerivap Systems Inc. during prosecution of the '623 Patent (Compl. ¶74).

Related Commercial Torts

The complaint includes counts for trade secret misappropriation, alleging Defendants used Plaintiffs' confidential information—gained through their business relationship—to obtain the patents-in-suit (Compl. ¶107-108). It also alleges breach of the parties' Memorandum of Understanding and Confidentiality Agreement (Compl. ¶137, 140) and unfair competition (Compl. ¶113-114).

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

  • A core issue will be one of inventorship and enforceability: Will the court find, based on evidence of the parties' collaboration, that Plaintiffs' employee was a co-inventor of the '623 and/or '354 patents? A finding of incorrect inventorship with deceptive intent could render those patents unenforceable and dramatically shift the landscape of the dispute.
  • Another key issue will be the validity of the '476 Patent: Can Plaintiffs prove by clear and convincing evidence that the "Bruhin" prior art reference teaches the limitations that the USPTO relied upon for allowance? This will likely turn on the court's construction of claim terms like "engageable from above."
  • A central strategic question will be the interplay between the patent and commercial tort claims: How will the allegations that the patents were procured through breach of contract and misappropriation of trade secrets influence the court's view of the patent-specific claims, particularly the allegations of inequitable conduct?