DCT
1:20-cv-00341
Ameristar Perimeter Security Inc v. RSA Protective Tech LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ameristar Perimeter Security USA Inc. (Delaware)
- Defendant: RSA Protective Technologies, LLC (Delaware)
- Plaintiff’s Counsel: Fish & Richardson P.C.
- Case Identification: 1:20-cv-00341, D. Del., 03/06/2020
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant RSA is a Delaware limited liability company and therefore a resident of the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its 'shallow mount bollards' do not infringe Defendant’s patent related to anti-ram bollard systems.
- Technical Context: The technology concerns anti-terrorism physical security barriers, specifically vehicle bollards designed for installation in shallow excavations, a key feature for urban environments with extensive underground utilities.
- Key Procedural History: This action for declaratory judgment was filed after the patent owner, RSA, sued one of the plaintiff’s customers, Los Angeles International Airport (LAX), for infringement of the same patent. After this complaint was filed, the patent-in-suit underwent two ex parte reexaminations. The first concluded with all claims confirmed. The second, concluding in November 2022, resulted in the cancellation of independent claim 1, while confirming the patentability of the other independent claims, 16 and 33. The cancellation of claim 1 significantly narrows the scope of the dispute.
Case Timeline
| Date | Event |
|---|---|
| 2004-07-26 | '865 Patent Priority Date |
| 2012-07-10 | '865 Patent Issue Date |
| 2019-12-06 | RSA files infringement suit against Plaintiff's customer (LAX) |
| 2020-03-06 | Complaint for Declaratory Judgment Filed |
| 2020-07-23 | First Reexamination Certificate (C1) for '865 Patent Issued (Claims Confirmed) |
| 2022-11-17 | Second Reexamination Certificate (C2) for '865 Patent Issued (Claim 1 Cancelled) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,215,865 - "Anti-Ram System and Method of Installation," Issued July 10, 2012
The Invention Explained
- Problem Addressed: Traditional anti-ram bollard systems require deep excavations (e.g., 4-6 feet) to anchor their foundations. In dense urban areas, such deep digging is often impossible or prohibitively expensive due to subsurface utilities like gas, water, and communication lines. ('865 Patent, col. 1:55-65, col. 2:1-10).
- The Patented Solution: The invention proposes a "shallow mount pad or base" that requires minimal excavation (e.g., 5-14 inches). This base is a framework of intersecting structural members (a 'grillage') to which the vertical bollards are attached. Instead of relying on a deep anchor, the system distributes the force of a vehicle impact across a wide, shallow foundation, which transfers the load into the surrounding soil to resist rotation and prevent a breach. ('865 Patent, col. 2:30-49, Fig. 3).
- Technical Importance: This shallow-mount approach enables the deployment of high-security anti-ram barriers in locations previously unsuitable for such installations, expanding security options for critical infrastructure in urban centers. ('865 Patent, col. 2:11-16).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of independent claims 1, 16, and 33. As noted, claim 1 was subsequently cancelled during reexamination.
- Independent Claim 16 (representative) requires:
- A plurality of bollards.
- A base with opposed ends and intersecting, tied-together structural members.
- For each bollard, a "first structural member" extending between the opposed ends of the base, and another structural member intersecting the first.
- Each bollard is secured to at least two of these structural members.
- The base is configured for mounting in a shallow excavation.
- The structural members are configured to retain supporting media (e.g., concrete) within the base to resist rotation from an impact.
- The complaint states that Ameristar’s products do not infringe any claims of the '865 Patent, including dependent claims 2-15, 17-32, and 34-35. (Compl. ¶22).
III. The Accused Instrumentality
Product Identification
The "Ameristar shallow mount bollards," specifically including the "Ultra Shallow Mount Bollard series." (Compl. ¶2, ¶16).
Functionality and Market Context
- The complaint describes the accused products as shallow mount bollards designed to protect spaces, buildings, and people from both accidental and intentional vehicle collisions, including terrorist attacks. (Compl. ¶10).
- The complaint includes a set of technical diagrams, allegedly from RSA's complaint against LAX, that depict various layouts and assembly details for fixed shallow mounted bollards. (Compl. ¶19, p. 7). One diagram, titled "ASSEMBLY DETAIL," shows a linear arrangement of bollards on a common base structure. (Compl. ¶19, p. 7).
- The products are marketed for installation around buildings, on sidewalks, and on roadways. (Compl. ¶10). The dispute arises from RSA's allegation that these products, as used by customers like LAX, infringe the '865 Patent. (Compl. ¶14).
IV. Analysis of Infringement Allegations
The complaint does not allege infringement but rather seeks a declaration of non-infringement. It identifies several key limitations from the independent claims that it alleges the accused products do not meet. (Compl. ¶21). The following table summarizes these non-infringement contentions with respect to representative independent claim 16.
'865 Patent Non-Infringement Allegations
| Claim Element (from Independent Claim 16) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base comprising opposed ends and a plurality of structural members which intersect and are tied together, for each bollard...at least one first structural member extending from a first of the opposed ends...to a second...and at least one structural member extending to intersect with the at least one first structural member | The complaint alleges that Ameristar's shallow mount bollards do not meet this limitation, suggesting their base structure is not formed from a grillage of intersecting and tied-together members as claimed. | ¶21 | col. 10:17-27 |
| each of the plurality of bollards being secured to at least one of the at least one first structural member and the at least one structural member of the base for the respective bollard | The complaint alleges that the bollards in the accused products are not secured to the specific intersecting structural members as required by the claim. | ¶21 | col. 10:28-34 |
| wherein the at least one first structural member or the at least one structural member or both are configured or tied together to retain within the base supporting media introduced into the base...such that the rotation is resisted...from an impact | The complaint alleges that the structural members in its products do not meet this functional limitation regarding the retention of media to resist rotation. | ¶21 | col. 10:38-46 |
- Identified Points of Contention:
- Structural Questions: The central dispute appears to be whether the base of the Ameristar products constitutes "a plurality of structural members which intersect and are tied together" as recited in the claims. The complaint does not detail the alternative structure of its products, but its denial raises the question of what structural configuration it employs and whether it falls outside the claim scope.
- Functional Questions: A secondary dispute concerns the functional requirement that the structural members be "configured...to retain...supporting media...such that the rotation is resisted." The case may require evidence on how the accused product's base achieves impact resistance and whether that mechanism is distinct from the claimed method of retaining media to resist rotation.
V. Key Claim Terms for Construction
The Term: "structural members which intersect and are tied together"
- Context and Importance: This phrase is the structural heart of the claimed invention and a primary basis for the plaintiff's non-infringement argument. (Compl. ¶21). The definition of what constitutes "intersecting" and "tied together" members will be dispositive. Practitioners may focus on this term because it distinguishes the claimed grillage-style base from other potential foundation designs, such as a single monolithic plate or disconnected anchor points.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the members as "structural tubes to form a grillage (ie. pipes, tubes, channels and sometimes angles)" which could suggest the terms encompass a variety of structural shapes and connection methods. ('865 Patent, col. 4:40-42).
- Evidence for a Narrower Interpretation: The preferred embodiments consistently depict discrete, perpendicular members welded together. Figure 3, for example, shows longitudinal members (26, 28) and transverse members (24) forming a distinct grid. This could support an interpretation requiring a lattice-like structure of physically separate components joined at intersections. ('865 Patent, Fig. 3; col. 7:51-64).
The Term: "configured or tied together to retain within the base supporting media"
- Context and Importance: This functional language is also a point of contention. (Compl. ¶21). Its construction is critical because it defines how the base must achieve its anti-rotation function. The dispute will likely turn on whether the accused products achieve impact resistance through a mechanism other than "retaining" a "supporting media" as claimed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states the goal is to "more efficiently [transmit] the loads to the support media (soil or concrete)," which could be argued to cover any structure that effectively engages with filler material to distribute force. ('865 Patent, col. 3:9-11).
- Evidence for a Narrower Interpretation: The specification explicitly describes "filling the shallow excavation and grillage with concrete to form a finished foundation unit" and providing apertures (31) in the tubular members to be filled with concrete "to add strength and weight". ('865 Patent, col. 4:46-48; col. 8:7-10). This may support a narrower construction requiring a structure that actively contains and integrates with a flowable filler like concrete.
VI. Other Allegations
- Indirect Infringement: The complaint preemptively denies indirect infringement, stating that Ameristar's products "do not infringe, directly or indirectly, any claim of the '865 Patent." (Compl. ¶23). This is a defensive posture in response to the potential for RSA to allege that Ameristar induces or contributes to its customers' alleged infringement. (Compl. ¶16).
- Willful Infringement: The complaint does not contain allegations related to willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A Definitional Question of Structure: The central issue is whether the base of the accused Ameristar bollards falls within the scope of the claim term "a base comprising...structural members which intersect and are tied together." The court's construction of this term, and the subsequent factual determination of how Ameristar's products are built, will be paramount.
- A Procedural Question of Mootness and Scope: With independent claim 1 now cancelled by reexamination, a threshold question is how this post-filing development impacts the case. The dispute is now confined to the remaining asserted claims (e.g., 16 and 33), focusing the technical and legal arguments on the specific limitations present in those claims.
- An Evidentiary Question of Function: The case may turn on evidence demonstrating the precise physical mechanism by which the accused bollard systems resist vehicle impacts. The key question for the court will be whether this mechanism is the same as the claimed function of "retain[ing]...supporting media...such that the rotation is resisted," or if it represents a distinct, non-infringing technical approach.