DCT

8:18-cv-02895

Golden Rule Fasteners Inc v. Best Materials LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: FCPR Acquisition, LLC v. PCC Processing Technologies, LLC, 8:18-cv-02895, M.D. Fla., 11/28/2018
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants directed patent enforcement activities into the judicial district and are attempting to restrict Plaintiff's business operations located there.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its carpet recycling machine does not infringe five of Defendants' patents, asserting non-infringement, patent expiration, patent exhaustion, and patent misuse.
  • Technical Context: The technology concerns systems and methods for recycling post-consumer carpet by mechanically separating the valuable face fibers (e.g., nylon) from the backing materials.
  • Key Procedural History: The action was filed in response to a demand letter from Defendants dated July 23, 2018. Plaintiff alleges that a prior owner of the accused machine paid Defendants a lump-sum royalty for the device, potentially implicating the patent exhaustion doctrine. The complaint also alleges that four of the five patents-in-suit are expired for failure to pay maintenance fees and that Defendants' attempt to enforce them constitutes patent misuse.

Case Timeline

Date Event
2006-12-06 U.S. Patent No. 8,110,131 Priority Date (Filing Date)
2010-08-12 U.S. Patent No. 8,596,563 Priority Date
2010-08-12 U.S. Patent No. 8,360,348 Priority Date (Filing Date)
2011-01-13 U.S. Patent No. 8,870,104 Priority Date (Filing Date)
2011-06-22 U.S. Patent No. 8,794,552 Priority Date
2012-02-07 U.S. Patent No. 8,110,131 Issues
2013-01-29 U.S. Patent No. 8,360,348 Issues
2013-12-03 U.S. Patent No. 8,596,563 Issues
2014-08-05 U.S. Patent No. 8,794,552 Issues
2014-10-28 U.S. Patent No. 8,870,104 Issues
2016-02-07 ’131 Patent allegedly expired for non-payment of fees
2017-01-29 ’348 Patent allegedly expired for non-payment of fees
2018-07-23 Defendants send Demand and Offer Letter to Plaintiff
2018-08-06 ’552 Patent allegedly expired for non-payment of fees
2018-10-28 ’104 Patent allegedly expired for non-payment of fees
2018-11-28 Complaint for Declaratory Judgment filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,110,131 - "Carpet Reclamation System"

The Invention Explained

  • Problem Addressed: The patent describes the significant environmental and economic problem of disposing of billions of pounds of post-consumer carpet in landfills annually, noting the waste of valuable, reusable polymers like nylon and polypropylene (’131 Patent, col. 1:12-39).
  • The Patented Solution: The invention is a system for reclaiming carpet components. The process involves sorting carpet by fiber type, potentially using an infrared sensor, and then mechanically separating the face fibers from the backing using a separator with a "circulating knife blade" (’131 Patent, col. 1:56-60; col. 5:29-35). Once separated, the face fibers can be extruded into high-quality polymer pellets, and the backing material can be separately processed, thereby reducing waste (’131 Patent, Abstract).
  • Technical Importance: The invention proposes an automated industrial process for converting a major waste stream (used carpet) into valuable raw materials, addressing both landfill capacity and resource conservation.

Key Claims at a Glance

  • The complaint alleges non-infringement of all claims, focusing on elements required by "each and every claim" (Compl. ¶73). Independent claim 1 is representative.
  • Essential elements of independent claim 1 include:
    • classifying said roll of post-consumer carpet according to chemical structure of face fiber by using an infrared spectrometer
    • separating face fiber of said post-consumer carpet by a circulating knife blade of said separator
    • sharpening said circulating knife blade continuously
    • cooling of said continuously sharpened circulating knife blade
    • permitting said separated face fiber to fall into a chute for transport
    • dedusting of said separated face fiber using a willow cleaner
    • processing the separated fibers into polymer pellets and processing the separated backing into a low-quality polymer
  • The complaint does not explicitly reserve the right to assert dependent claims, as it is a declaratory judgment action filed by the accused infringer.

U.S. Patent No. 8,360,348 - "Method and Apparatus for Recycling Carpet"

The Invention Explained

  • Problem Addressed: The patent notes that separating carpet components is difficult because they are often made of different, incompatible polymers, and existing methods either fail to achieve clean separation or use complex chemical processes (’348 Patent, col. 1:35-54).
  • The Patented Solution: The patent discloses a purely mechanical apparatus where a carpet strip is fed to a high-speed rotating "main drum" covered in pins (’348 Patent, col. 3:55-65). The pins tear apart the carpet structure, causing the valuable face fibers to separate and fall into a "first receptacle." The lighter, torn backing fibers remain engaged with the drum pins longer and are carried to a different location where they fall into a "second receptacle," thereby achieving mechanical separation of the two material streams (’348 Patent, Abstract; col. 4:1-14).
  • Technical Importance: This design offers a specific mechanical configuration intended to improve the purity of separated carpet components without chemicals, potentially increasing the recycling value.

Key Claims at a Glance

  • The complaint alleges non-infringement of all claims, focusing on an element required by "each and every claim" (Compl. ¶81). Independent claim 1 is representative.
  • Essential elements of independent claim 1 include:
    • a) a feed belt for driving a carpet strip
    • b) a pair of nip rollers
    • c) a dish plate, said dish plate having an edge
    • d) a main drum, said main drum having a plurality of pins... said fibers separated from said backing passing to a first receptacle
    • e) a second receptacle for receiving said shredded backing fibers at said back end of the apparatus.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 8,596,563 - "Method and Apparatus for Recycling Carpet"

  • Technology Synopsis: As a continuation of the '348 patent, this patent refines the apparatus for mechanically separating carpet components. It describes an apparatus with a feed belt, a dish plate, and a rotating pinned drum, focusing on the configuration of rollers, including a "bottom feed roller," to drive and position the carpet section as it is shredded by the drum.
  • Asserted Claims: Independent claims 1 and 11 (Compl. ¶101).
  • Accused Features: The complaint alleges the Accused Device lacks "a bottom feed roller" as required by the claims (Compl. ¶102, 103).

U.S. Patent No. 8,794,552 - "Apparatus and Process for Separating Carpet Fibers"

  • Technology Synopsis: This patent describes a multi-stage process for improving the purity of recycled carpet pile. After an initial mechanical separation, a subsequent stage uses a "weight pan" to measure a set amount of material and a "shaker pen" (a vibrating chamber with a mesh) to dislodge and separate remnant backing fibers from the desired pile fibers through vibration.
  • Asserted Claims: "each and every claim" (Compl. ¶87).
  • Accused Features: The complaint alleges the Accused Device lacks a "weight pan" and a "shaker pen" (Compl. ¶88, 89, 90).

U.S. Patent No. 8,870,104 - "Method for Separating Carpet Fibers"

  • Technology Synopsis: This patent claims the method corresponding to the apparatus in the '552 patent. It details the process steps of delivering a predetermined amount of separated pile U's to a shaker chamber via a "weighing" step, shaking the chamber to separate residual backing, and feeding the purified pile U's to a hammer mill to crush any remaining adhesive.
  • Asserted Claims: "each and every claim" (Compl. ¶95).
  • Accused Features: The complaint alleges the Accused Device does not perform the claimed "weighing" step (Compl. ¶96, 97).

III. The Accused Instrumentality

Product Identification

  • A single "post-consumer carpet processing machine" referred to as the "Accused Device" (Compl. ¶29, 33).

Functionality and Market Context

  • The complaint states that the Plaintiff, Florida Carpet, purchased the Accused Device at an auction for the purpose of recycling waste carpet (Compl. ¶29, 37). The complaint provides no affirmative technical details about the device's operation. Instead, it defines the device by the patented features it allegedly lacks, asserting it was designed to be different from and to avoid infringement of the patents-in-suit (Compl. ¶33). The complaint alleges that a prior owner, Denero Industrial, concluded that an embodiment of the patented machine was "irredeemably dysfunctional" and consequently designed the "different, functional" Accused Device (Compl. ¶32, 33). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint makes only negative allegations, asserting the absence of claimed elements.

’131 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
classifying said roll of post-consumer carpet according to chemical structure of face fiber by using an infrared spectrometer and a Fourier transform process The complaint alleges the Accused Device does not have an infrared spectrometer. ¶74 col. 6:57-65
separating face fiber of said post-consumer carpet by a circulating knife blade of said separator The complaint alleges the Accused Device does not have a circulating knife blade. ¶75 col. 5:29-32
sharpening said circulating knife blade continuously using a sharpener to continuously present a sharp cutting edge for said severing; and cooling of said continuously sharpened circulating knife blade The complaint’s allegation that the Accused Device lacks a circulating knife blade implies it also lacks the associated sharpening and cooling steps. ¶75 col. 5:32-35

’348 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
d) a main drum, ... said fibers separated from said backing passing to a first receptacle for recycling The complaint does not dispute the presence of a primary path for separated fibers. ¶80-82 col. 4:57-60
e) a second receptacle for receiving said shredded backing fibers at said back end of the apparatus. The complaint alleges the Accused Device does not have a "second receptacle." ¶81, 82 col. 4:60-63
  • Identified Points of Contention:
    • Scope Questions: A primary issue for the court will be the scope of the claim terms for which Plaintiff alleges absence. For example, regarding the ’348 patent, the analysis will question whether the Accused Device has any structure that separates and collects backing material, which could be construed as a "second receptacle" even if not explicitly named as such. Similarly, for the ’131 patent, the question is whether the Accused Device's separation mechanism performs the function of the claimed "circulating knife blade" under the doctrine of equivalents.
    • Technical Questions: The complaint's allegations are conclusory and lack technical evidence. A key question for discovery will be to determine the actual structure and operation of the Accused Device. The litigation will depend on evidence showing how the Accused Device actually separates carpet fibers from backing and whether that mechanism is distinct from the patented methods.

V. Key Claim Terms for Construction

  • The Term: "circulating knife blade" (’131 Patent, Claim 1)

    • Context and Importance: Plaintiff alleges the Accused Device lacks this feature entirely (Compl. ¶73, 75). The definition of this term is fundamental to the infringement analysis for the ’131 patent, as it describes the core mechanism for severing the fibers from the backing. Practitioners may focus on whether this term implies a specific configuration beyond a simple rotary cutter.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term itself is general. The specification describes its function as to "sever face fibers F from backing B" (’131 Patent, col. 5:34-35), language which could support a construction covering a range of rotating cutting implements.
      • Evidence for a Narrower Interpretation: The patent describes the blade in a specific context: it is "preferably continuously sharpened with a sharpening device" and cooled to prevent overheating (’131 Patent, col. 5:29-35). Defendants may argue the term should be limited to a blade that is part of a system with these specific continuous sharpening and cooling features, as depicted in the preferred embodiment.

  • The Term: "second receptacle" (’348 Patent, Claim 1)

    • Context and Importance: Plaintiff alleges the Accused Device lacks this feature, which is essential to the ’348 patent's claimed invention of separating material streams (Compl. ¶81, 82). The case may turn on whether the Accused Device has any structure that meets this limitation.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language requires a "receptacle for receiving said shredded backing fibers." This could be interpreted broadly to mean any distinct area, container, or conveyor path where the backing material is collected separately from the face fibers.
      • Evidence for a Narrower Interpretation: The abstract describes a process where torn backing fibers "fall in a different receptacle for recycling." The detailed description and figures show the backing being transported by the main drum to a separate apparatus, such as a negative pressure roller and a distinct conveyor belt (’348 Patent, Fig. 3; col. 5:1-5). Defendants may argue that "second receptacle" requires a physically separate collection device, not merely a different exit path from the main drum area.

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain factual allegations regarding indirect infringement but seeks a declaration of non-infringement on those grounds as well (Prayer for Relief, ¶b).
  • Willful Infringement: The complaint alleges patent misuse, which is related to willfulness. Plaintiff claims that Defendants attempted to enforce four patents in their July 23, 2018 demand letter that they knew or should have known were expired for failure to pay maintenance fees (Compl. ¶39, 117). This action, Plaintiff alleges, constitutes an unlawful attempt to extend the term of expired patents (Compl. ¶119, 120).

VII. Analyst’s Conclusion: Key Questions for the Case

  1. A threshold issue will be one of enforceability and patent misuse: are four of the five patents-in-suit invalid due to expiration for non-payment of maintenance fees, as Plaintiff alleges, and did Defendants' assertion of these allegedly expired patents in a demand letter constitute patent misuse, rendering them unenforceable?
  2. A second dispositive issue will be one of patent exhaustion: did Defendants' alleged acceptance of a "lump-sum royalty" from the Accused Device's prior owner for authorization to sell the machine constitute an authorized sale that exhausted all patent rights in that specific device, thereby barring any infringement claim against a subsequent owner?
  3. Should the case proceed past these defenses, a core evidentiary question will be one of technical correspondence: does the Accused Device, in its actual operation, contain structures that are the same as or equivalent to the specific claim limitations Plaintiff alleges are missing, such as the "circulating knife blade" (’131 patent), the "second receptacle" (’348 patent), and the "shaker pen" (’552 patent)?