DCT
1:21-cv-00245
Graco Inc v. Carlisle Construction Materials LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Graco Inc. and Graco Minnesota Inc. (Minnesota)
- Defendant: Carlisle Construction Materials, LLC (Delaware)
- Plaintiff’s Counsel: Fish & Richardson P.C.
- Case Identification: 1:21-cv-00245, D. Del., 04/28/2021
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation and therefore resides in the district.
- Core Dispute: Plaintiff alleges that Defendant’s ST1 spray gun system infringes patents related to the mechanical design and functionality of plural component spray guns.
- Technical Context: The technology concerns industrial spray guns used to mix and dispense fast-setting, multi-component materials, such as polyurethane foams and polyurea coatings, which are widely used in construction and manufacturing.
- Key Procedural History: The complaint notes that U.S. Patent No. RE46,002 is a reissue of U.S. Patent No. 7,694,893. No other prior litigation or administrative proceedings are mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2002-10-22 | Earliest Priority Date for U.S. Patent No. RE46,002 |
| 2004-11-15 | Earliest Priority Date for U.S. Patent No. 7,527,172 |
| 2009-05-05 | U.S. Patent No. 7,527,172 Issued |
| 2016-05-17 | U.S. Patent No. RE46,002 Issued |
| 2021-04-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissue Patent No. RE46,002 - "Plural Component Spray Gun for Fast Setting Materials," Issued May 17, 2016
The Invention Explained
- Problem Addressed: The patent describes that prior art plural component spray guns were often cumbersome and required a number of tools and substantial effort to disassemble and clean, particularly for fast-setting materials that can quickly clog the internal components (’002 Patent, col. 1:20-25). A specific issue identified is the need to prevent "spitting" of fluid when seals wear, which requires component replacement (’002 Patent, col. 1:55-63).
- The Patented Solution: The invention claims to provide a spray gun designed to be easily serviceable with minimal tools. Key features include tool-less installation of side seal cartridges and a mechanism to inject grease directly into the gun through a dedicated fitting, which then spreads through the mix chamber via purge air for storage without full disassembly (’002 Patent, col. 1:36-41; Abstract).
- Technical Importance: The claimed features address practical field-serviceability and maintenance issues, which are critical for equipment that handles reactive chemicals under time-sensitive construction or manufacturing conditions.
Key Claims at a Glance
- The complaint asserts independent claim 11.
- Essential elements of claim 11 include:
- A spray gun for fast setting plural component materials
- A gun body
- An air cap
- A fluid housing attached to the gun body and receiving the air cap
- A mix chamber located in the fluid housing
- A purge air passage
- A grease fitting connected to the purge air passage through which grease is injected into the fluid housing for storage
- The complaint does not explicitly reserve the right to assert other claims of the ’002 Patent.
U.S. Patent No. 7,527,172 - "Plural Component Mixing and Dispensing Apparatus," Issued May 5, 2009
The Invention Explained
- Problem Addressed: The patent background notes the difficulty in prior art guns of achieving "consistently effective mixing of the plural component materials and wide and uniform spray patterns" (’172 Patent, col. 2:51-57).
- The Patented Solution: The invention describes a specific geometric configuration for the mixing and dispensing element. This includes a two-part construction for the mixing chamber, precise dimensional relationships between the mixing chamber and the fluid admission passages, and a requirement that the cylindrical sidewalls of the admission passages be "tangent to the cylindrical sidewall of the mixing chamber" where they intersect (’172 Patent, col. 5:20-35). This tangency is intended to ensure materials flow smoothly into the mixing chamber with minimal turbulence to create a swirling action that promotes effective mixing (’172 Patent, col. 5:35-44).
- Technical Importance: The invention focuses on improving the quality and consistency of the final mixed product by controlling the fluid dynamics within the mixing chamber through specific, engineered geometries.
Key Claims at a Glance
- The complaint asserts independent claim 10.
- Essential elements of claim 10 include:
- A two-part mixing and spraying element with a forward part and a rearward part, forming an unobstructed cylindrical internal mixing chamber.
- The rearward part has planar outer side portions and at least two cylindrical admission passages.
- Each admission passage's cylindrical sidewall must be "tangent to the cylindrical sidewall of the rearward internal mixing chamber portion."
- The rearward mixing chamber portion's diameter is greater than the admission passages' diameters.
- The forward part forms a spraying orifice.
- The sum of the cross-sectional areas of the admission passages is "substantially equal to the cross sectional area of the spraying orifice."
- The complaint does not explicitly reserve the right to assert other claims of the ’172 Patent.
III. The Accused Instrumentality
Product Identification
- Defendant’s ST1 spray gun, used alone or in connection with its IS40 Intellispray Proportioner (Compl. ¶10).
Functionality and Market Context
- The complaint alleges the ST1 is an "air purge spray gun" for "fast setting plural component materials," such as "resin" and "iso" (isocyanate) (Compl. ¶17).
- The allegations focus on the mechanical structure of the ST1 gun's components, including its gun body, fluid housing, air cap, mix chamber, and internal passages (Compl. ¶¶18-23). The complaint uses diagrams from the ST1 service manual to identify these components. For example, a diagram from the service manual shows the inputs for "resin" and "iso" components and an "AIR" input for purging (Compl. ¶17, p. 4).
- The complaint does not provide specific allegations regarding the product's market share or commercial importance beyond identifying it as an infringing product.
IV. Analysis of Infringement Allegations
RE46,002 Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a gun body | The ST1 comprises a gun body, as shown in an exploded view diagram from its service manual. This is described as a diagram of the ST1 spray gun components with the gun body outlined. | ¶18 | col. 16:59-60 |
| an air cap | The ST1 comprises an air cap, as shown in a diagram from its service manual. | ¶19 | col. 17:41 |
| a fluid housing attached to said gun...body and receiving said air cap | The ST1 comprises a fluid housing that attaches to the gun body and receives the air cap, as shown in service manual diagrams. | ¶20 | col. 17:42-43 |
| a mix chamber located in said fluid housing | The ST1 comprises a mix chamber located in the fluid housing, as shown in service manual diagrams and a separate view of the assembled mix chamber and mix tip. | ¶21 | col. 17:64-65 |
| a purge air passage | The ST1 comprises a purge air passage, identified as passage "2" in a service manual diagram and an accompanying reference table. | ¶22 | col. 17:57-58 |
| a grease fitting connected to said purge air passage through which grease is injected... | The ST1 comprises a grease fitting that the complaint alleges is connected to the purge air passage, as shown in a diagram instructing the user to "Apply one shot of fresh grease to the gun." | ¶23 | col. 18:1-4 |
U.S. Patent No. 7,527,172 Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a two-part assembly having a forward part and a rearward part and forming an unobstructed cylindrical internal mixing chamber... | The ST1 comprises a "mix tip" (forward part) and a "mix chamber" (rearward part) that form an unobstructed cylindrical internal mixing chamber. This is supported by photographs of a sample ST1. | ¶30 | col. 11:56-59 |
| said rearward part having planar and opposed outer side portions and forming a rearward internal mixing chamber portion including an unobstructed central passageway... | The "mix chamber" of the ST1 allegedly has planar and opposed outer side portions and forms a rearward internal mixing chamber portion with an unobstructed central passageway. A photograph shows a ruler measuring the component. | ¶31 | col. 12:1-6 |
| said rearward part also having at least two admission passages...with its cylindrical sidewall being tangent to the cylindrical sidewall of the rearward internal mixing chamber portion... | The rearward part of the ST1 allegedly has two admission passages. The complaint asserts these passages are tangent to the internal mixing chamber portion, stating that "each of the admission passages individually reaches or touches the internal mixing chamber portion." This is supported by close-up photographs of a sample ST1 component. | ¶¶32-33 | col. 12:6-14 |
| the sum of the cross-sectional areas of the cylindrical admission passages being substantially equal to the cross sectional area of the spraying orifice. | The complaint presents a chart from the ST1 service manual and alleges that, for a specific combination of parts, the sum of the cross-sectional areas of the admission passages is .0028 inches and the cross-sectional area of the spraying orifice is also .0028 inches, meeting the "substantially equal" limitation. A close-up photograph shows a ruler measuring one of the components. | ¶37 | col. 12:35-39 |
- Identified Points of Contention:
- Scope Questions: For the ’002 Patent, a question may arise as to whether the accused "grease fitting" is "connected to said purge air passage" in the manner required by claim 11. The complaint shows a grease fitting and a purge air passage, but the precise nature of their connection within the accused device may be disputed.
- Technical Questions: For the ’172 Patent, the infringement analysis will likely depend on detailed factual evidence and expert testimony. Key questions include:
- Does the geometry of the accused ST1's internal passages meet the specific claim limitation that the admission passages' sidewalls are "tangent" to the mixing chamber's sidewall? The complaint's photographic evidence and assertion that they "touch" (Compl. ¶33) may be challenged.
- Does the accused product meet the "substantially equal" limitation regarding the cross-sectional areas? The complaint provides one example calculation (Compl. ¶37), but whether this holds true for all accused configurations, and how "substantially" is defined, will be a central issue.
V. Key Claim Terms for Construction
For U.S. Patent No. 7,527,172:
The Term: "tangent"
Context and Importance: This geometric term is central to claim 10 and describes the specific relationship between the fluid admission passages and the mixing chamber. The patent teaches this configuration is important for creating smooth, swirling flow for effective mixing (’172 Patent, col. 5:20-35). The infringement case for this patent may turn on whether the accused device's geometry satisfies this precise technical requirement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not provide an explicit definition beyond its ordinary geometric meaning. A party might argue that any configuration where the fluid flows smoothly from the passage into the chamber without a sharp, obstructing corner meets the purpose of the invention.
- Evidence for a Narrower Interpretation: The patent repeatedly uses the specific term "tangent" and explains its functional importance in achieving the invention's objective (’172 Patent, col. 5:29-35). Figure 11, for example, illustrates this precise geometric relationship with offsets (29) between the central axes. A party may argue this requires a strict, mathematically tangent intersection, not merely a close or touching one.
The Term: "substantially equal"
Context and Importance: This term in claim 10 relates the total inlet area (from the admission passages) to the outlet area (the spraying orifice). The complaint alleges an exact equality in one configuration of the accused product (Compl. ¶37). The interpretation of "substantially" will determine how much deviation, if any, is permissible for a product to still be considered infringing.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "substantially" is a term of approximation. A party could argue it allows for minor variations in area that do not materially affect the performance or operation of the device as described in the patent.
- Evidence for a Narrower Interpretation: The patent specification provides a specific example where the areas are "preferably equal" (’172 Patent, col. 5:45-50). A party could argue that "substantially equal" must be interpreted narrowly in light of this preference for exact equality, especially given the patent's focus on precise fluid-dynamic control.
VI. Other Allegations
Willful Infringement
- The complaint explicitly states that "Graco is not pleading willful infringement at this time, but believes that discovery will demonstrate willfulness" and reserves the right to amend (Compl. ¶24, fn. 1; ¶38, fn. 2). The allegations of knowledge are based on the filing of the complaint itself and Defendant's alleged prior awareness of Graco's patents via an online patent marking website (Compl. ¶24, ¶38).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute may depend on the court’s determination of the following key questions:
A central question of claim construction and factual mapping will be whether the accused ST1 gun possesses the specific architecture of claim 11 of the ’002 Patent, particularly concerning the alleged connection between the "grease fitting" and the "purge air passage" for storage purposes.
A key evidentiary and technical question will be one of geometric compliance: do the internal components of the accused ST1 gun meet the precise geometric and dimensional limitations of claim 10 of the ’172 Patent, specifically the requirements that the admission passages be "tangent" to the mixing chamber and that the total inlet and outlet areas be "substantially equal"? This will likely require expert analysis and detailed measurements of the accused device.