DCT
1:19-cv-01130
Laitram LLC v. Ashworth Bros Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Laitram, L.L.C. and Intralox, L.L.C. (Louisiana)
- Defendant: Ashworth Bros., Inc. (Delaware)
- Plaintiff’s Counsel: Morris, Nichols, Arsht & Tunnell LLP; Olson & Cepuritis, Ltd.
- Case Identification: 1:19-cv-01130, D. Del., 06/19/2019
- Venue Allegations: Venue is asserted in the District of Delaware based on Defendant being a Delaware corporation.
- Core Dispute: Plaintiff alleges that Defendant’s positive-drive spiral conveyor systems infringe two patents related to the mechanical engagement between a conveyor belt and a rotating drive tower.
- Technical Context: The technology concerns industrial spiral conveyors, which provide a long conveying path in a small footprint and are widely used in the food industry for processes like cooling, proofing, and freezing.
- Key Procedural History: The asserted patents are part of a family tracing priority to 2010. Notably, subsequent to the filing of this complaint, inter partes review (IPR) proceedings were initiated against both patents. In IPR2020-00593, all asserted claims of the ’388 patent (claims 9-13) were cancelled. In IPR2020-00594, all asserted claims of the ’645 patent (claims 1-4) were also cancelled. This development renders the specific infringement counts in the complaint moot, as the underlying claims are no longer enforceable.
Case Timeline
| Date | Event |
|---|---|
| 2010-07-12 | Earliest Priority Date for '388 and '645 Patents |
| 2016-01-01 | Accused Product advertised (or earlier, based on 2016 copyright notice) |
| 2018-07-17 | U.S. Patent No. 10,023,388 ('388 Patent) Issued |
| 2019-01-29 | U.S. Patent No. 10,189,645 ('645 Patent) Issued |
| 2019-06-19 | Complaint Filed |
| 2023-10-25 | IPR Certificate issues cancelling all asserted claims of '645 Patent |
| 2024-02-08 | IPR Certificate issues cancelling all asserted claims of '388 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,023,388 - "Positive-Drive Spiral Conveyor"
- Patent Identification: U.S. Patent No. 10,023,388, "Positive-Drive Spiral Conveyor," issued July 17, 2018.
The Invention Explained
- Problem Addressed: The patent describes a problem in prior art positive-drive spiral systems related to "cleanly engaging the belt with and disengaging it from the drive structure on the cage" (’388 Patent, col. 1:43-48). Abrupt mechanical engagement can cause operational problems and wear.
- The Patented Solution: The invention proposes a rotating drive tower with vertical drive members. These members have outwardly projecting ridges whose geometry changes along the height of the tower. Specifically, a "lower segment" of the drive member features a ridge that is "tapered along a portion of its length," which facilitates a smoother initial engagement as the conveyor belt enters the spiral path (’388 Patent, col. 2:61-65, Fig. 1).
- Technical Importance: This design aims to achieve robust, non-slip positive driving while mitigating the harsh engagement and disengagement forces found in other systems, thereby improving system reliability and longevity (Compl. ¶19).
Key Claims at a Glance
- The complaint asserts independent claims 9 and 11.
- Independent Claim 9 requires, among other elements:
- A rotating drive tower with a plurality of parallel drive members.
- Each drive member includes an "outwardly projecting ridge" whose distance from the vertical axis varies.
- Each drive member includes a "lower segment" where the ridge is "tapered along a portion of its length."
- A conveyor belt is "positively driven without slip" by these ridges engaging the belt's inside edge.
- Independent Claim 11 requires, among other elements:
- A rotating drive tower with parallel drive members having upper and lower segments.
- Each drive member includes a "ridge projecting radially outward."
- The distance of the ridge's outer edge from the axis of rotation is a "first distance" in the upper segment and a "greater second distance" in a lower portion of the lower segment.
- The complaint asserts dependent claims 10, 12, and 13 (Compl. ¶42).
U.S. Patent No. 10,189,645 - "Positive-Drive Spiral Conveyor"
- Patent Identification: U.S. Patent No. 10,189,645, "Positive-Drive Spiral Conveyor," issued January 29, 2019.
The Invention Explained
- Problem Addressed: Like its family member, this patent addresses the challenge of achieving smooth engagement in positive-drive spiral conveyors (’645 Patent, col. 1:50-55).
- The Patented Solution: This patent discloses a different geometry to solve the problem. The solution involves a drive tower where the "parallel drive members angle outwardly away from the vertical axis toward the bottom in a lower portion of the drive tower" (’645 Patent, Abstract; col. 2:4-7). This flared or angled configuration at the bottom of the tower is intended to guide the belt into its helical path smoothly.
- Technical Importance: This approach provides an alternative structural solution for improving the transition of a conveyor belt onto a positive-drive spiral system, seeking the same benefits of reliability and smooth operation (Compl. ¶19).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 3.
- Independent Claim 1 requires, among other elements:
- A rotating drive tower with a plurality of parallel drive members on its periphery.
- The drive members "angle outwardly away from the vertical axis toward the bottom in a lower portion of the drive tower."
- A conveyor belt is "positively driven without slip" by the drive members engaging the belt's inside edge.
- Independent Claim 3 requires, among other elements:
- A rotating drive tower with parallel drive members that include "outwardly projecting ridges."
- The "distance of the ridges from the vertical axis increases toward the bottom in a lower portion of the drive tower."
- A conveyor belt is "positively driven without slip" by the ridges.
- The complaint asserts dependent claims 2 and 4 (Compl. ¶72).
III. The Accused Instrumentality
Product Identification
- The "PosiDrive Spiral Conveyor System" manufactured and sold by Defendant Ashworth Bros., Inc. (Compl. ¶36).
Functionality and Market Context
- The complaint alleges the accused product is a positive-drive spiral conveyor system. An advertisement for the product, included in the complaint, describes a "unique cage design that engages the inside belt edge" to provide "precise product orientation" and "simplify system controls" (Compl. ¶41). This advertisement shows a spiral conveyor with a central cage engaging the inner edge of a conveyor belt. The complaint further alleges that the structure of the Accused Products is "substantially and accurately described in U.S. Patent No. 9,884,723 ('723 patent), assigned to Ashworth," and uses figures from that patent to map its infringement allegations (Compl. ¶37). The product is marketed as a direct competitor to Plaintiff's system for applications such as cooling, freezing, and cooking (Compl. ¶9, ¶41).
IV. Analysis of Infringement Allegations
’388 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A spiral conveyor comprising: a drive tower extending from a bottom to a top and rotating about a vertical axis | The accused products allegedly have a drive tower (10) extending from a bottom (64) to a top (63) and rotating about a vertical axis (3), as depicted in a figure from Ashworth's '723 patent. This figure shows an assembled spiral drive cage (Compl. ¶50). | ¶50 | col. 2:51-53 |
| a plurality of parallel drive members extending in length from the bottom to the top of the drive tower | The accused products allegedly have parallel drive members (20) extending the length of the drive tower (10), as depicted in a figure from Ashworth's '723 patent (Compl. ¶51). | ¶51 | col. 2:53-55 |
| wherein each of the drive members includes an outwardly projecting ridge whose distance from the vertical axis varies... | Each drive member (20, 140) allegedly includes an outwardly projecting ridge (23, 121) whose distance from the vertical axis varies from bottom to top, as depicted in figures from Ashworth's '723 patent (Compl. ¶52). | ¶52 | col. 2:56-59 |
| wherein each drive member includes a lower segment at the bottom of the drive tower and wherein the ridge in the lower segment is tapered along a portion of its length | The accused products' drive members (1420) allegedly include a lower segment (1497) where the ridge (1421) is tapered along a portion of its length (1447), as depicted in a close-up figure from Ashworth's '723 patent (Compl. ¶53). | ¶53 | col. 2:63-65 |
| a conveyor belt positively driven without slip on a helical path around the drive tower by the ridges of the drive members engaging an inside edge of the conveyor belt | The accused products' conveyor belt is allegedly positively driven by the ridges of the drive members engaging its inside edge, as depicted in a figure from Ashworth's '723 patent (Compl. ¶54). | ¶54 | col. 2:65-col. 3:2 |
’645 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A spiral conveyor comprising: a drive tower extending from a bottom to a top and rotatable about a vertical axis | The accused products allegedly have a drive tower (10) extending from bottom (64) to top (63) and rotatable about a vertical axis (3), as depicted in a figure from Ashworth's '723 patent (Compl. ¶79). | ¶79 | col. 7:1-3 |
| a plurality of parallel drive members extending in length on the periphery of the drive tower from the bottom to the top | The accused products allegedly have drive members (20) extending in length on the periphery of the drive tower (10), as depicted in a figure from Ashworth's '723 patent (Compl. ¶80). | ¶80 | col. 7:1-3 |
| wherein the parallel drive members angle outwardly away from the vertical axis toward the bottom in a lower portion of the drive tower | Each accused drive member (20) allegedly angles outwardly away (93) from the vertical axis toward the bottom (64) in a lower portion of the drive tower (10). This allegation is supported by a figure from Ashworth’s ’723 patent showing the interaction between the belt and the lower tiers of the drive cage (Compl. ¶81). | ¶81 | col. 7:4-7 |
| a conveyor belt positively driven without slip in a helical path around the drive tower by the drive members engaging an inside edge of the conveyor belt | The accused products allegedly have a conveyor belt that is positively driven without slip by the drive members engaging an inside edge of the belt, as depicted in a figure from Ashworth's '723 patent (Compl. ¶82). | ¶82 | col. 7:8-10 |
Identified Points of Contention
- Technical Questions: A key factual question is whether the structures depicted in Ashworth's '723 patent, which the complaint uses as a proxy for the accused product, actually function in the manner required by the claims. For the '388 patent, this involves determining if the accused ridge geometry (Compl. ¶53) constitutes a "taper" that facilitates engagement as described in the patent. For the '645 patent, the question is whether the accused drive members (Compl. ¶81) truly "angle outwardly away" in the claimed manner.
- Scope Questions: The case raises the question of whether the terms "tapered" and "angle outwardly away" are broad enough to read on the specific design of the accused PosiDrive system. The plaintiff's reliance on the defendant's own patent figures to show infringement suggests a belief that the structures are definitionally equivalent, a point a defendant would almost certainly contest.
V. Key Claim Terms for Construction
Term 1: "tapered" ('388 Patent, Claim 9)
- Context and Importance: This term is critical because the tapered nature of the ridge in the lower segment is the core inventive concept for facilitating smooth belt engagement. The outcome of the infringement analysis for claim 9 hinges on whether the accused product's ridge geometry falls within the scope of this term.
- Intrinsic Evidence for a Broader Interpretation: The specification describes the result of the taper as the ridge's distance from the vertical axis increasing from a constant distance to a greater distance ('388 Patent, col. 3:28-34). This functional description could support an interpretation covering any geometry that achieves this increasing distance.
- Intrinsic Evidence for a Narrower Interpretation: Figure 2B of the patent depicts the tapered region (42) as a smooth, linear ramp. A defendant may argue that "tapered" should be limited to such a linear profile, potentially excluding other geometries that might be present in the accused product.
Term 2: "angle outwardly away from the vertical axis" ('645 Patent, Claim 1)
- Context and Importance: This phrase defines the central structural feature of the invention claimed in the '645 patent. Whether the accused product infringes will depend on if its drive members are arranged in a way that satisfies this geometric limitation. Practitioners may focus on this term because it is a relative spatial term that could be subject to different interpretations.
- Intrinsic Evidence for a Broader Interpretation: The summary of the invention presents the concept generally, without specifying a particular angle or shape, suggesting any configuration where the drive members are not perfectly vertical but lean outward at the bottom could suffice ('645 Patent, col. 2:4-7).
- Intrinsic Evidence for a Narrower Interpretation: The specification also describes embodiments as a "skirt portion" that "tapers outwardly" ('645 Patent, col. 4:55-58, Figs. 17-18). This could be used to argue that the term requires a specific flared or conical shape, rather than any outward lean.
VI. Other Allegations
Indirect Infringement
- The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Ashworth provides "instructions on how to make the Accused Products" to third parties (Compl. ¶44, ¶74). Contributory infringement is based on allegations that Ashworth sells component parts, such as drive members, that have no substantial non-infringing use (Compl. ¶43, ¶73).
Willful Infringement
- Willfulness is alleged based on pre-suit knowledge. The complaint asserts that Ashworth is a sophisticated competitor, was aware of Plaintiff's patents and patent markings through its website, has cited Plaintiff's patent family in its own patent prosecution, and continued to offer the accused products for sale at tradeshows after the patents issued (Compl. ¶29-35, ¶45, ¶75).
VII. Analyst’s Conclusion: Key Questions for the Case
Given the public record of post-filing events, the primary issues in this case have shifted from infringement to procedure. The key questions that would have defined the dispute are now largely overshadowed.
Threshold Issue of Enforceability: The most critical issue is the legal status of the asserted claims. With all asserted claims in both the '388 and '645 patents having been cancelled in IPR proceedings that concluded after the complaint was filed, the foundational basis for the infringement action has been eliminated. The central question for the court is the procedural disposition of a case based entirely on claims that are no longer valid.
Definitional Scope: Had the claims survived, a core issue would have been one of claim construction: can the term "tapered" in the ’388 patent and "angle outwardly away" in the ’645 patent be construed to cover the specific mechanical structures of the accused PosiDrive system, particularly as depicted in Ashworth's own '723 patent?
Evidentiary Strategy: An interesting legal question raised by the complaint's structure is the viability of using a defendant's own patent as the primary evidence of an accused product's infringing structure. This creates a unique dynamic where the defendant would be forced to argue that its own patent disclosures do not align with the plaintiff's claim language.