DCT
8:10-cv-00453
Ready Containment LLC v. Basic Concepts Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ready Containment, LLC (Florida)
- Defendant: Basic Concepts, Inc. (South Carolina) and Edward W. Van Romer (South Carolina)
- Plaintiff’s Counsel: Fowler White Boggs P.A.
- Case Identification: 8:10-cv-00453, M.D. Fla., 02/17/2010
- Venue Allegations: Venue is based on Plaintiff Ready Containment's location and manufacturing activities within the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "Ready Berm™" products do not infringe Defendant’s patent for a foldable spill containment system, and further that the patent is invalid and unenforceable due to alleged fraud on the U.S. Patent and Trademark Office.
- Technical Context: The technology concerns portable, foldable berms used to contain hazardous material spills, such as petrochemicals, during transfer operations involving vehicles.
- Key Procedural History: This is a declaratory judgment action filed by an accused infringer. The complaint alleges that the Defendants previously filed a patent infringement lawsuit against one of Plaintiff’s customers, Interstate Products, Inc., in the District of South Carolina. The central allegation for unenforceability is that the inventor and his patent attorney were aware of, inspected, and possessed a highly material prior art product—the "Seattle Tarp berm"—before filing the application for the patent-in-suit, yet intentionally withheld this information from the patent office.
Case Timeline
| Date | Event |
|---|---|
| 1997-02-03 | Defendants allegedly came into possession of the Seattle Tarp berm. |
| 1997-05-07 | U.S. Patent Application No. 08/852,840 (’233 Patent) filed. |
| 1998-06-09 | U.S. Patent No. 5,762,233 issues. |
| 2006-10-10 | Defendants filed patent infringement suit against Plaintiff's customer. |
| 2010-02-17 | Complaint for Declaratory Judgment filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,762,233 - "Foldable Spill Collector Container"
- Patent Identification: U.S. Patent No. 5,762,233, "Foldable Spill Collector Container", issued June 9, 1998.
The Invention Explained
- Problem Addressed: Prior art portable spill containments with resilient, collapsible walls had limited spill retention capacity because the wall height was restricted. Containments using rigid braces often required interior bracing, which took up valuable floor space and could be damaged by vehicles. (’233 Patent, col. 1:19-44).
- The Patented Solution: The invention is a foldable containment system with improved side bracing for the retaining walls. The solution uses a plurality of rigid side braces, each comprising a vertical leg, an inclined leg, and a horizontal leg connected by a hinge. (’233 Patent, col. 2:15-32). This three-part hinged brace structure is designed to provide robust support for higher walls, can be positioned on either the interior or exterior of the wall, and allows the entire unit to be folded for transport. (’233 Patent, col. 2:32-38; Fig. 2).
- Technical Importance: The described bracing system sought to provide a portable containment that could hold a greater volume of spilled material while maximizing usable internal floor space and allowing for quick setup. (’233 Patent, col. 1:51-57).
Key Claims at a Glance
- The complaint identifies independent claims 1 and 16 as being at issue. (Compl. ¶¶ 27-28, 40).
- Independent Claim 1 recites a portable containment comprising:
- foldable ground sheeting having a floor section;
- a foldable, upstanding retaining wall integral to the floor section;
- a plurality of foldable side braces, which include:
- a generally vertical rigid leg carried by the retaining wall;
- a generally horizontal leg parallel to the ground sheeting;
- an inclined rigid leg extending between an upper portion of the wall and the horizontal leg;
- a hinge at the intersection of the inclined and horizontal legs;
- a brace fixture affixing the hinge at a fixed distance from the retaining wall.
- Independent Claim 16 recites a similar portable containment, with the side braces including:
- a vertical rigid leg, a horizontal leg, and an inclined rigid leg;
- the inclined leg has a terminal end terminating at the horizontal leg;
- a brace fixture affixing the terminal end of the inclined leg at a fixed distance from the retaining wall.
- The complaint asserts that claims 2, 9, and 16 are invalid and/or not infringed, suggesting that dependent claims may also be at issue. (Compl. ¶27).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Plaintiff's "Ready Berm™" product line. (Compl. ¶10).
Functionality and Market Context
- The complaint describes the Ready Berm™ as a product manufactured and sold for the "containment of leaks and spills." (Compl. ¶10). It is positioned as a direct competitor to the products sold by Defendant Basic Concepts. (Compl. ¶54.d).
- The complaint does not provide specific technical details or diagrams of the Ready Berm's construction, but alleges that Defendants have accused it of infringement. (Compl. ¶19). This accusation suggests the Ready Berm™ possesses features that Defendants believe are covered by the claims of the ’233 Patent, such as foldable walls supported by some form of bracing system.
IV. Analysis of Infringement Allegations
The complaint seeks a judgment of non-infringement and therefore does not contain a traditional claim chart. The following table outlines the infringement theory that Defendants would need to prove, based on the patent claims and the general nature of the dispute.
’233 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a foldable ground sheeting overlying the ground in an unfolded configuration... having a floor section | The Ready Berm™ is described as a berm for containment, implying it has a floor section made of a foldable material. | ¶10 | col. 6:38-42 |
| a foldable, generally upstanding retaining wall integrally connected to said floor section | The product's function as a containment berm implies it has upstanding walls to hold liquid. | ¶10 | col. 6:43-48 |
| a plurality of foldable side braces... | Defendants' infringement allegations suggest the Ready Berm™ utilizes some form of foldable bracing to support its walls. | ¶19 | col. 6:49-51 |
| a generally vertical rigid leg carried by said retaining wall | The complaint does not provide sufficient detail for analysis of this specific element. | N/A | col. 6:52-53 |
| a generally horizontal leg generally parallel to said ground sheeting | The complaint does not provide sufficient detail for analysis of this specific element. | N/A | col. 6:54-56 |
| an inclined rigid leg extending between an upper portion of said retaining wall and said horizontal leg | The complaint does not provide sufficient detail for analysis of this specific element. | N/A | col. 6:57-59 |
| a hinge defined at an intersection of said inclined leg and said horizontal leg | The complaint does not provide sufficient detail for analysis of this specific element. | N/A | col. 6:60-63 |
| a brace fixture affixing said hinge at a fixed distance from said retaining wall | Defendants' infringement allegations suggest the Ready Berm™ bracing system includes a mechanism to hold the brace in a fixed position relative to the wall. Defendants sent a letter to a competitor accusing its product of infringement. (Compl. ¶54.e). | ¶19 | col. 6:64-col. 7:2 |
- Identified Points of Contention:
- Structural Mismatch: The primary infringement question will be whether the specific structure of the Ready Berm’s™ wall support system meets every limitation of the asserted claims. The claims recite a very particular three-part ("vertical", "horizontal", "inclined") rigid leg structure with a defined "hinge" and "brace fixture". Any deviation in the Ready Berm's™ design from this claimed structure could support a non-infringement argument.
- Functional Mismatch: Even if the Ready Berm™ has a functionally similar bracing system, the court will need to determine if it operates in the same way to achieve the same result as the claimed invention. For example, does the Ready Berm™ feature a "brace fixture" that "affixes" a "hinge" at a "fixed distance" in the manner described by the patent?
V. Key Claim Terms for Construction
The Term: "brace fixture"
Context and Importance: This term appears in the final limitation of independent claim 1 and is central to how the side brace is anchored. Its definition is critical because if the Ready Berm's™ anchoring mechanism does not meet the definition of a "brace fixture," there can be no literal infringement. Practitioners may focus on this term to determine if it requires a separate component or can be read more broadly to cover integral parts of the brace or sheeting.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language states the fixture "affixing said hinge at a fixed distance," which could potentially cover any structure that performs that function. (col. 6:64-67). The specification notes the brace fixture "secures the hinge at a fixed distance." (col. 2:28-32).
- Evidence for a Narrower Interpretation: The specification discloses specific embodiments of the "brace fixture," such as an "anchor tab of ground sheeting" under which the horizontal leg is secured or a "connector strap." (’233 Patent, col.2:38-49; col. 6:11-14). A defendant might argue these embodiments limit the term's scope.
The Term: "abutting relationship"
Context and Importance: This term appears in dependent claim 10, which requires the rigid arm of the horizontal leg to have a free end "disposed in an abutting relationship with said vertical leg." How closely the parts must "abut" could be a point of contention. This term's construction will determine the required geometry and contact between the brace components.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The general description does not impose strict requirements on the nature of the contact, suggesting any form of contact or close proximity might suffice. (col. 6:39-44).
- Evidence for a Narrower Interpretation: Figure 3A shows the free end of the horizontal leg (part of 24) making direct physical contact with the vertical leg (20) at the retaining wall (10). A party could argue this drawing limits "abutting" to mean direct, surface-to-surface contact. (’233 Patent, Fig. 3A).
VI. Other Allegations
- Unenforceability / Inequitable Conduct: This is the most detailed allegation in the complaint. Plaintiff alleges that the inventor and his patent attorney knew about the "Seattle Tarp berm" prior to filing the patent application, physically inspected it, knew it was material to patentability, and intentionally withheld it from the USPTO with the intent to deceive. (Compl. ¶¶ 31-34, 41-42, 52, 54). The complaint alleges this prior art berm anticipates claims 1, 2, 9, and 16. (Compl. ¶40).
- Exceptional Case: Plaintiff seeks attorneys' fees under 35 U.S.C. § 285, alleging this is an "exceptional case." (Compl. ¶20). The basis for this allegation appears to be the alleged "fraud on the USPTO" (a term for inequitable conduct) by the Defendants. (Compl. ¶56).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of unenforceability: can the Plaintiff provide clear and convincing evidence that the patentee and his counsel knew the "Seattle Tarp berm" was material prior art and made a deliberate decision to conceal it from the USPTO with deceptive intent? The outcome will depend heavily on evidence of what the patentee knew and when.
- A key validity question will be one of anticipation: does the prior art "Seattle Tarp berm," once its features are established, contain each and every element of the asserted patent claims, as the Plaintiff alleges?
- Assuming the patent survives the validity and enforceability challenges, a core infringement question will be one of structural equivalence: does the Plaintiff’s "Ready Berm™" product contain the specific, multi-part rigid brace structure recited in the claims, including the "vertical leg", "horizontal leg", "inclined leg", "hinge", and "brace fixture", or is there a fundamental structural difference that places it outside the scope of the claims?