DCT
1:24-cv-00481
Sandvik Mining Construction USA LLC v. CMS Cepcor Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sandvik Mining and Construction USA LLC (Delaware) and Sandvik Intellectual Property AB (Sweden)
- Defendant: CMS Cepcor Limited (United Kingdom) and CMS Cepcor Americas LLC (Delaware)
- Plaintiff’s Counsel: Shaw Keller LLP; Morrison & Foerster LLP
- Case Identification: Sandvik Mining and Construction USA LLC v. CMS Cepcor Limited, 1:24-cv-00481, D. Del., 04/15/2024
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant CMS Cepcor Americas LLC is a Delaware corporation, and Defendant CMS Cepcor Limited is a foreign corporation that may be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s replacement parts for gyratory rock crushers infringe patents related to main shaft sleeves and assemblies featuring specific tapered geometries and hydraulic-assist mounting/dismounting features.
- Technical Context: The technology concerns high-wear components in industrial gyratory crushers used in the mining and aggregate industries, where operational downtime for maintenance is a significant cost factor.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of infringement of the ’568 Patent via a letter dated October 4, 2023, and notice of infringement of the ’090 Patent via a letter dated February 20, 2024, which may form the basis for claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2012-08-02 | ’568 Patent Priority Date |
| 2013-11-12 | ’090 Patent Priority Date |
| 2017-11-28 | ’568 Patent Issue Date |
| 2021-05-25 | ’090 Patent Issue Date |
| 2023-10-04 | Alleged notice of ’568 Patent infringement to Defendant |
| 2024-02-20 | Alleged notice of ’090 Patent infringement to Defendant |
| 2024-04-15 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,827,568 - "Gyratory Crusher Main Shaft Sleeve" (Issued November 28, 2017)
The Invention Explained
- Problem Addressed: The patent describes the difficulty of maintaining large gyratory crushers, where protective sleeves are typically friction-fit onto the main shaft. Mounting these sleeves often requires heating, and removal frequently necessitates cutting the sleeve off, a process that is time-consuming, labor-intensive, and risks damaging the main shaft itself (’568 Patent, col. 1:49-65).
- The Patented Solution: The invention is a main shaft sleeve with a unique geometry designed to ease installation and removal. While the external surface of the sleeve is substantially cylindrical, the internal surface is conical, tapering inwardly from the lower end to the upper end. This tapered internal profile is designed to mate with a correspondingly tapered main shaft, facilitating a more controlled fit and release compared to a purely cylindrical interference fit (’568 Patent, Abstract; col. 2:4-17).
- Technical Importance: This design seeks to simplify the replacement of a critical wear component, thereby reducing crusher downtime and the risk of collateral damage during maintenance (’568 Patent, col. 2:1-3).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶ 25).
- The essential elements of Claim 1 are:
- A gyratory crusher comprising a main shaft with a tapered upper region.
- A sleeve fitted over that tapered region, the sleeve having an elongate axial wall.
- The thickness of the sleeve's axial wall decreases from its upper end to its lower end.
- The sleeve's internal facing surface tapers inwardly from the lower end to the upper end.
U.S. Patent No. 11,014,090 - "Gyratory Crusher Main Shaft and Assembly" (Issued May 25, 2021)
The Invention Explained
- Problem Addressed: The patent addresses the same problem as the ’568 Patent: the conventional methods for mounting and dismounting protective sleeves on crusher main shafts are inefficient and risky (’090 Patent, col. 1:41-59).
- The Patented Solution: This invention enhances the tapered shaft-and-sleeve concept by adding at least one groove to the external surface of the main shaft in the tapered region. This groove is designed to receive pressurized fluid, which can be introduced to create a hydraulic film between the shaft and the sleeve. This film acts as a lubricant to ease mounting and, more importantly, can generate separation force to facilitate dismounting without cutting (’090 Patent, Abstract; col. 2:10-24).
- Technical Importance: By adding a hydraulic-assist feature, the invention aims to make the process of changing sleeves faster, safer, and less reliant on brute force or destructive methods (’090 Patent, col. 2:4-9).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶ 45).
- The essential elements of Claim 1 are:
- A gyratory crusher main shaft comprising a shaft body with a tapered upper axial region.
- A shaft sleeve mounted on the tapered axial region.
- At least one groove indented on the external surface of the shaft's tapered region.
- The groove is arranged to receive a pressurized fluid to facilitate mounting and dismounting of the sleeve.
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are "tapered conical sleeves and corresponding main shaft assemblies" sold by CMS Cepcor as replacement parts for gyratory crushers (Compl. ¶ 18, 38). The complaint specifically identifies replacement parts for the "Sandvik CH420 cone crushers" (Compl. ¶ 21, 41).
- Functionality and Market Context: The complaint alleges that the Accused Products are marketed as direct replacements for Sandvik's own components and are "manufactured to original factory tolerances" (Compl. ¶ 21, 41). The complaint includes a screenshot from the Defendant's website advertising "CH420 Spare Parts & Replacements" to support this allegation (Compl. ¶ 21, 41). The central premise of the infringement claim is that the Accused Products are designed to be functionally identical to the patented Sandvik parts they are intended to replace (Compl. ¶ 25, 45).
IV. Analysis of Infringement Allegations
The complaint does not provide a detailed, element-by-element infringement analysis. Instead, it bases its allegations on the premise that the Accused Products are replacement parts designed to the same specifications as Sandvik's patented products.
’568 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a main shaft including a shaft body... a thickness of the shaft body being tapered... so as to decrease in cross-sectional area | The accused main shaft assemblies allegedly include a main shaft with a tapered region, as they are designed as replacements for Sandvik CH420 crushers. | ¶22, ¶25 | col. 6:3-6 |
| a sleeve fitted over the tapered region of the second end of the main shaft, the sleeve including an elongate axial wall | The accused tapered conical sleeves are allegedly designed to be fitted over the tapered region of a corresponding main shaft. | ¶18, ¶25 | col. 6:7-9 |
| wherein a thickness of the axial wall at a region between the first and second ends decreases in a direction from the second end to the first end | The accused sleeves are alleged to meet this limitation because they are designed to the same specifications as Sandvik's patented parts. | ¶25 | col. 6:14-17 |
| in the axial direction the internal facing surface at said region... extending transverse to the longitudinal axis so as to taper inwardly towards the longitudinal axis in the direction from the first to the second end | The accused sleeves allegedly have the claimed internal conical geometry because they are designed to mate with the corresponding tapered shaft in Sandvik crushers. | ¶18, ¶25 | col. 6:17-22 |
’090 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a shaft body... an axial region of the shaft body extending from the second end and being tapered... | The accused main shafts allegedly have a tapered axial region, as they are advertised as replacements for Sandvik CH420 crushers. | ¶41, ¶45 | col. 7:7-11 |
| a shaft sleeve mounted on the tapered axial region | The accused sleeves are allegedly designed for mounting on the corresponding accused tapered shafts. | ¶38, ¶45 | col. 7:12 |
| at least one groove indented at the external surface and positioned at the tapered axial region | The accused main shafts are alleged to include this groove because they are designed to the same specifications as Sandvik's patented products. | ¶45, ¶49 | col. 2:10-14 |
| the at least one groove being arranged to receive a pressurised fluid to facilitate mounting and dismounting of the shaft sleeve at the shaft body | The groove on the accused shafts allegedly performs this function, as it is designed to be compatible with the Sandvik system. | ¶45, ¶49 | col. 2:13-15 |
- Identified Points of Contention:
- Technical Questions: The primary question for both patents is factual: Do the accused products sold by CMS Cepcor actually possess the specific geometries and features required by the claims? For the ’568 patent, this involves the sleeve's specific internal taper and decreasing wall thickness. For the ’090 patent, it involves the presence of a fluid-assist groove on the shaft. The complaint's theory relies on the allegation of copying, which will need to be substantiated with evidence.
- Scope Questions: The complaint's theory appears to be one of literal infringement based on copying. A potential point of contention could arise if the accused parts deviate from the patented design. This would raise the question of whether any such deviations are insubstantial enough to fall under the doctrine of equivalents.
V. Key Claim Terms for Construction
Term (’568 Patent): "internal facing surface... so as to taper inwardly towards the longitudinal axis in the direction from the first [lower] to the second [upper] end"
- Context and Importance: This limitation defines the core geometry of the patented sleeve. The infringement analysis for the ’568 patent will depend entirely on whether the accused sleeves have this specific internal conical shape. Practitioners may focus on this term to determine if there is any ambiguity in the term "taper" that could exclude the accused design.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim uses the general term "taper," which could be argued to encompass any surface that narrows, not just a simple, straight-sided cone.
- Evidence for a Narrower Interpretation: The specification repeatedly describes the shape as a "conical shape profile" and a "section of a cone" (’568 Patent, col. 2:10, 5:52), which may support an interpretation limiting the scope of "taper" to a frustoconical geometry like that shown in the patent's figures.
Term (’090 Patent): "at least one groove... arranged to receive a pressurised fluid to facilitate mounting and dismounting"
- Context and Importance: This functional language is central to the ’090 patent's inventive concept. A dispute may arise over whether an indentation on an accused shaft is a "groove" and whether it is "arranged to facilitate" the claimed function, or if it serves another purpose or is merely an incidental manufacturing feature.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff might argue that "arranged to" simply means "capable of" or "suitable for," and that any channel on the shaft that could be used with fluid meets the limitation, regardless of the defendant's intent.
- Evidence for a Narrower Interpretation: The specification describes the groove in the context of a "fluid supply conduit" that delivers fluid for the express purpose of assisting with mounting/dismounting (’090 Patent, col. 5:15-24, Fig. 2). This may support an argument that the term requires the groove to be specifically designed and integrated into a system for that purpose.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement theory is based on allegations that the defendant advertises and instructs customers on how to incorporate the accused parts into crushers in an infringing manner (Compl. ¶ 26, 30, 46, 51). The contributory infringement theory is based on the allegation that the accused parts are specifically designed for this infringing use and have no substantial non-infringing use (Compl. ¶ 31, 52).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge. The complaint specifically pleads that the defendant had knowledge of the ’568 patent and its infringement since at least October 4, 2023, and of the ’090 patent since at least February 20, 2024, via notice letters from the plaintiff (Compl. ¶ 28, 48). The complaint also pleads willful blindness, arguing that by making replacement parts for patented Sandvik products, the defendant was aware of a high probability of infringement (Compl. ¶ 29, 49).
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be one of factual identity and evidence: The plaintiff’s case rests on the allegation that the defendant’s products are essentially copies "manufactured to original factory tolerances." The key question will be whether discovery and expert analysis confirm that the accused sleeves and shafts possess the specific tapered internal geometry of the ’568 patent and the fluid-assist grooves of the ’090 patent, respectively.
A second key issue will be willfulness and state of mind: The complaint pleads specific dates of pre-suit notice for both patents. This raises a direct question for the court regarding the defendant's conduct after receiving these notices. The case will likely examine whether the defendant had a good-faith belief of non-infringement or invalidity, or if its continued alleged infringement was objectively reckless.