DCT
2:18-cv-00161
Somero Enterprises Inc v. Daniel R Stoltzfus
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Somero Enterprises, Inc. (Florida)
- Defendant: Daniel R. Stoltzfus (Individual)
- Plaintiff’s Counsel: Buchanan Ingersoll & Rooney, PC; Honigman Miller Schwartz and Cohn LLP
- Case Identification: Somero Enterprises, Inc. v. Daniel R. Stoltzfus, 2:18-cv-00161, M.D. Fla., 05/25/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Middle District of Florida because the Defendant sent infringement accusation letters to the Plaintiff's CEO in the district, traveled to the district to discuss the allegations, and conducts business in Florida.
- Core Dispute: Plaintiff seeks a declaratory judgment that its SP-16 Concrete Hose Puller does not infringe the Defendant’s patent related to mobile apparatuses for moving concrete pump hoses, and that the patent is invalid.
- Technical Context: The technology concerns specialized, mobile construction equipment designed to maneuver heavy, concrete-filled hoses on job sites, particularly in confined areas where larger boom trucks cannot operate.
- Key Procedural History: The complaint states that prior to this lawsuit, the Defendant sent cease-and-desist letters to the Plaintiff and its dealers, alleging infringement. The Defendant also reportedly initiated a reexamination of the patent-in-suit. Notably, the complaint alleges that the patentee narrowed the patent’s claims during prosecution by adding a "horn member" limitation to overcome an examiner's rejection, a fact that may give rise to arguments of prosecution history estoppel.
Case Timeline
| Date | Event |
|---|---|
| 2008-07-08 | '957 Patent Priority Date (Provisional Application) |
| 2012-11-20 | '957 Patent Issue Date |
| 2017-02-02 | Defendant sends letter to Somero alleging infringement |
| 2017-04-14 | Somero responds, rejecting infringement claims |
| 2017-10-24 | Defendant sends letter notifying Somero of reexamination request |
| 2018-01-XX | Defendant sends cease-and-desist letters to Somero's dealers |
| 2018-02-06 | Defendant meets with Somero executives in Florida |
| 2018-05-25 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,312,957 - "Apparatus For Moving Concrete Pump Hoses"
- Patent Identification: U.S. Patent No. 8,312,957, "Apparatus For Moving Concrete Pump Hoses", issued November 20, 2012.
The Invention Explained
- Problem Addressed: The patent addresses the difficulty of maneuvering heavy concrete pump hoses in confined construction areas, such as between the floors of a building, where conventional boom trucks cannot reach or are not available. Existing mobile devices for this purpose were described as having limitations in flexibility and movement (ʼ957 Patent, col. 1:21-49).
- The Patented Solution: The invention is a mobile, four-wheeled apparatus that supports the concrete hose below the main frame of the vehicle, which is claimed to provide a lower center of gravity and greater stability compared to prior art devices that carry the hose on top ('957 Patent, col. 3:3-6). A key feature of this support system is the use of front and rear "horn members" that cradle the hose above the ground but underneath the chassis ('957 Patent, col. 8:10-14).
- Technical Importance: This design approach sought to provide a more stable and maneuverable vehicle for placing concrete in difficult-to-reach locations, operable with both flexible hoses and rigid pipes ('957 Patent, col. 2:15-19).
Key Claims at a Glance
- The complaint notes that Defendant asserted at least claim 8, but seeks a declaration of non-infringement as to all claims (Compl. ¶26, Prayer for Relief ¶a). The complaint also states every claim requires a "horn member" (Compl. ¶24).
- Independent Claim 1 requires:
- A mobile apparatus for supporting a concrete hose from a concrete pump
- A frame supported for movement by a front and rear pair of wheels
- A steering mechanism for the wheels
- An attachment apparatus for selectively supporting the concrete hose, including a "front horn member and a rear horn member"
- Independent Claim 8 requires:
- A mobile apparatus for supporting a concrete pump hose
- A frame with front and rear pairs of ground engaging members
- A "front horn member and a rear horn member" mounted on the frame to support the hose beneath the frame
- A grappling apparatus to secure and elevate the hose onto the horn members
- The complaint does not explicitly reserve the right to assert dependent claims, as it is a declaratory judgment action filed by the accused infringer.
III. The Accused Instrumentality
Product Identification
- The Somero SP-16 Concrete Hose Puller (Compl. ¶3).
Functionality and Market Context
- The SP-16 is a small, four-wheeled tractor designed to move and position heavy concrete delivery hoses on construction sites (Compl. PageID 184). The complaint alleges that the feature accused of infringement is not a "horn member" but rather "a set of narrow tongs that look like large ice tongs" (Compl. ¶22). A photograph in the complaint shows these tongs positioned at the front of the SP-16, appearing to grip or cradle a hose from below (Compl. ¶22). The complaint alleges that Defendant's accusations of infringement have "shut down Somero's sales of SP-16 hose pullers" (Compl. PageID 184).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The table below summarizes the Plaintiff's non-infringement position for the central disputed element, based on the complaint's allegations.
'957 Patent Infringement Allegations
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality (per Plaintiff's Complaint) | Complaint Citation | Patent Citation |
|---|---|---|---|
| a front horn member and a rear horn member mounted on said frame to support said concrete pump hose beneath said frame | The SP-16 has a "pair of front and rear tongs that operate to support the concrete hose." | ¶36 | col. 11:41-44 |
| Plaintiff alleges the tongs are not horn-shaped, do not provide an elongated platform to support the hose, and do not have features that prevent hose kinking. | ¶23 | col. 8:51-58 | |
| a grappling apparatus mounted on said frame... to secure and elevate said concrete pump hose from said base surface onto said front and rear horn members | The complaint describes the accused feature as "gripping tongs," but does not separately analyze a grappling apparatus. The photo of the SP-16 depicts a tong-like mechanism. | ¶22, ¶23 | col. 11:45-49 |
Identified Points of Contention
- Scope Questions: The central dispute concerns the proper construction of the term "horn member." A primary question is whether this term is limited to the flared, elongated structures depicted in the '957 patent's figures, such as the one highlighted in the complaint (Compl. ¶18), or if it can be interpreted more broadly to cover any structure that supports the hose, such as the accused "gripping tongs" on the SP-16 (Compl. ¶22).
- Technical Questions: A key factual question will be whether the accused "gripping tongs" function in the same way as the patented "horn members." The complaint alleges the tongs are not horn-shaped, do not provide an "elongated platform," and do not prevent kinking (Compl. ¶23), raising the question of what evidence will be presented to compare the functional characteristics of the two structures.
V. Key Claim Terms for Construction
- The Term: "horn member"
- Context and Importance: This term appears in every claim of the '957 patent and is the sole basis for the non-infringement argument detailed in the complaint (Compl. ¶17, ¶46). The complaint alleges this term was added during prosecution to overcome a rejection, making its interpretation and the potential application of prosecution history estoppel critical to the outcome of the case (Compl. ¶15-16). Practitioners may focus on this term because its construction appears to be dispositive of literal infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party seeking a broader, more functional definition might point to language describing the purpose of the horn members, such as providing "enhanced support of the concrete pump hose" ('957 Patent, col. 2:60-61) or simply to "support the concrete hose or pipe 5" ('957 Patent, col. 8:11-12).
- Evidence for a Narrower Interpretation: The complaint itself argues that the name "comes from the distinct horn-like shape" shown in the patent's figures (Compl. ¶18). The patent specification repeatedly refers to the structures as "horn members" and describes them as having a "curved shape" and "arcuately flared flanges" that limit lateral movement of the hose ('957 Patent, col. 3:19-22; col. 8:51-58). The specific visual depiction in figures like Figure 20, which is reproduced in the complaint, may be used to argue the term is limited to the particular shape shown.
VI. Other Allegations
- Indirect Infringement: The Plaintiff seeks a declaration that it does not indirectly infringe any claim of the '957 patent (Compl. ¶47). The complaint notes that Defendant sent letters to Somero's dealers accusing them of infringement by "selling or using SP-16" (Compl. ¶29), which forms the basis for the controversy regarding indirect infringement.
- Willful Infringement: As a declaratory judgment action, there is no claim for willful infringement against the Plaintiff. However, the Plaintiff alleges that the Defendant has acted in "bad faith" by "ignoring the critical horn member limitation" and that its motive is to "force a product that competed with machines sold by his company Line Dragon out of the market" (Compl. ¶39-40). Based on these allegations, Plaintiff seeks a declaration that this is an "exceptional case" warranting an award of attorneys' fees (Prayer for Relief ¶f).
VII. Analyst’s Conclusion: Key Questions for the Case
- Definitional Scope and Estoppel: The case will likely hinge on the construction of "horn member." Can the term, which was added to secure patentability, be interpreted broadly enough to read on the accused "gripping tongs"? A related question is whether prosecution history estoppel will bar the patentee from asserting that the tongs are an equivalent to the claimed "horn member."
- Functional Comparison: Assuming the claim term is not strictly limited by its shape, a key evidentiary question will be one of functional comparison: do Somero's "gripping tongs" perform substantially the same function (e.g., providing an elongated support platform and preventing kinking) in substantially the same way to achieve the same result as the patented "horn members"? The complaint explicitly denies this functional equivalence.
- Bad Faith Enforcement: A secondary but significant issue is whether the Defendant’s pre-suit enforcement activities, particularly sending accusation letters to dealers while allegedly aware of the product’s different structure, constitute bad faith sufficient to make this an "exceptional case" under 35 U.S.C. § 285.