DCT

8:23-cv-00063

Barrette Outdoor Living Inc v. USA Fence Co

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:23-cv-00063, M.D. Fla., 01/09/2023
  • Venue Allegations: Venue is alleged to be proper in the Middle District of Florida based on the Defendant's residence, principal place of business, and the occurrence of a substantial part of the events giving rise to the infringement claims within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s fencing and railing products infringe four patents related to a concealed, sliding, and pivotal connection mechanism that allows fence panels to be adjusted for installation on sloped terrain.
  • Technical Context: The technology addresses the "racking" of fence panels, an important feature for installing pre-fabricated fence sections on non-level ground, by enabling greater flexibility in the connection between vertical pickets and horizontal rails.
  • Key Procedural History: The complaint does not mention any prior litigation between the parties, Inter Partes Review (IPR) proceedings involving the patents-in-suit, or prior licensing history.

Case Timeline

Date Event
2009-02-09 Earliest Priority Date for all four patents-in-suit
2013-04-09 U.S. Patent No. 8,413,965 Issues
2015-10-06 U.S. Patent No. 9,151,075 Issues
2017-01-24 U.S. Patent No. 9,551,164 Issues
2018-05-08 U.S. Patent No. 9,963,905 Issues
2023-01-09 Complaint Filed

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

U.S. Patent No. 8,413,965 - "Fence/Rail Assembly with Concealed Sliding, Pivotal Connection, and Manufacturing Method Therefor"

  • Patent Identification: U.S. Patent No. 8,413,965, "Fence/Rail Assembly with Concealed Sliding, Pivotal Connection, and Manufacturing Method Therefor," issued April 9, 2013.

The Invention Explained

  • Problem Addressed: The patent describes a problem with prior art fence assemblies where the ability to "rack" or pivot the vertical pickets relative to the horizontal rails is limited. This rotation is often obstructed by the edge of the picket opening in the rail, restricting installation to terrain with only minor slopes (’965 Patent, col. 5:51-63).
  • The Patented Solution: The invention introduces a concealed connecting mechanism that is pivotally attached to the picket but also slidably engaged with the rail. This sliding capability allows the entire pivot point to shift horizontally within the rail as the picket is angled, thereby enabling a much greater range of pivotal motion without requiring larger, less-aesthetic openings in the rail (’965 Patent, Abstract; col. 3:25-34).
  • Technical Importance: This approach allows pre-assembled fence panels to be installed on more steeply changing terrain, increasing installation efficiency and aesthetic appeal compared to prior art systems (’965 Patent, col. 5:48-50).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2, 5, 6, and 8-12 (Compl. ¶18).
  • Independent Claim 1 requires, in part:
    • A plurality of vertical pickets, each with at least one pivot hole.
    • A plurality of elongate rails with picket openings.
    • One or more connectors, each comprising an elongate strip with a boss on one side and a sliding surface on the other.
    • The boss is inserted into a picket’s pivot hole to form a pivotal connection.
    • The sliding surface is slidably engaged with an inner surface of the rail's side wall.
    • This combination allows for a pivotal range of the pickets relative to the rails of "at least about 20 degrees in each direction."

U.S. Patent No. 9,151,075 - "Fence/Rail Assembly with Concealed Sliding, Pivotal Connection, and Manufacturing Method Therefor"

  • Patent Identification: U.S. Patent No. 9,151,075, "Fence/Rail Assembly with Concealed Sliding, Pivotal Connection, and Manufacturing Method Therefor," issued October 6, 2015.

The Invention Explained

  • Problem Addressed: Like the ’965 Patent, this patent addresses the limited rackability of conventional fence systems due to mechanical interference between the pickets and rails (’075 Patent, col. 5:53-64).
  • The Patented Solution: The patent discloses a similar concealed sliding and pivotal connection. The claims further refine the concept, with Claim 1 detailing a combination of a pivotal connection and a slidable connection to permit a combined motion, and Claim 19 explicitly reciting a connector "sized to span multiple of the pickets" with a "series of bosses" (’075 Patent, Abstract; col. 3:25-34; Claim 19). This design allows multiple pickets to move in a coordinated fashion.
  • Technical Importance: The invention provides a robust, concealed mechanism that significantly expands the installation flexibility of pre-fabricated fencing on uneven ground (’075 Patent, col. 5:48-52).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 19 (Compl. ¶21).
  • Independent Claim 1 requires a structure similar to Claim 1 of the ’965 Patent, but is phrased to require "a pivotal connection...to permit a pivoting motion" and "a slidable connection...to permit a sliding motion" that combine to allow a pivotal range of "at least about 20 degrees."
  • Independent Claim 19 builds on this by requiring:
    • A "plurality of connectors" where each connector is an elongate strip "sized to span multiple of the pickets."
    • Each connector has a "series of bosses" that pivotably connect to multiple pickets.
    • The pivotal range is not limited by interaction of the connector strips with the pickets.

U.S. Patent No. 9,551,164 - "Fence/Rail Assembly with Concealed Sliding, Pivotal Connection, and Manufacturing Method Therefor"

  • Patent Identification: U.S. Patent No. 9,551,164, "Fence/Rail Assembly with Concealed Sliding, Pivotal Connection, and Manufacturing Method Therefor," issued January 24, 2017.
  • Technology Synopsis: This patent continues to address the fence rackability problem with a concealed, sliding, pivotal connector. Its claims add a specific structural limitation for the rail itself, requiring an "inner profile that is sized and shaped to retain the connector strips" and a "leading, inner edge" that is "beveled to facilitate slipping the rail over the...connector strip" during assembly (’164 Patent, Abstract; Claim 1).
  • Asserted Claims: Independent claims 1 and 17 are asserted (Compl. ¶22).
  • Accused Features: The complaint alleges that the accused USA/Fortress Fences embody this technology, specifically including rails with an inner profile and a beveled leading edge that retains the hidden connectors while simplifying the assembly process (Compl. ¶19, ¶22).

U.S. Patent No. 9,963,905 - "Fence/Rail Assembly with Concealed Sliding, Pivotal Connection, and Manufacturing Method Therefor"

  • Patent Identification: U.S. Patent No. 9,963,905, "Fence/Rail Assembly with Concealed Sliding, Pivotal Connection, and Manufacturing Method Therefor," issued May 8, 2018.
  • Technology Synopsis: This patent also discloses a fence assembly with a concealed sliding, pivotal connection. The asserted claim focuses on the specific geometry of the connection, requiring that each connector include a "projection" and each picket include a "pivot hole for receiving the...projection such that the pivotal range of the pickets...is not limited by interaction of the connector strips with the pickets" (’905 Patent, Abstract; Claim 1).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶23).
  • Accused Features: The accused USA/Fortress Fences are alleged to use connectors with rivet-like projections that engage pivot holes in the pickets, a structure that allegedly achieves the claimed unimpeded pivotal range (Compl. ¶19, ¶23).

III. The Accused Instrumentality

  • Product Identification: Fortress Fence Products AP-FT3 48"-2" x 72" EP (.060)-T3 (Item # 403207212M) and Fortress Fence Products FT3-ATHENS 48” RES-71-T3 (Item # 413487141M), referred to collectively as the “USA/Fortress Fences” (Compl. ¶15).
  • Functionality and Market Context: The complaint describes the accused products as fence assemblies constructed of aluminum pickets and rails. The rails are alleged to have an extruded profile that allows for the insertion of aluminum connectors. These connectors are said to be "pivotally connected to the pickets by elements that act as pivot axles" and "slidably connected to the rails," where they are held by ledges within the rail profile (Compl. ¶19). The complaint alleges that this structure enables "back and forth racking of the pickets relative to the rails," and cites an exhibit as depicting the sliding motion of the connector strips (Compl. ¶19, Ex. 7). The products are positioned as direct "copy" of the patented technology sold by Defendant (Compl. ¶15).

IV. Analysis of Infringement Allegations

'965 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a plurality of vertical pickets, each picket comprising an upper end and a lower end opposite the upper end, each picket further comprising at least one pivot hole formed therein between the upper and lower ends The USA/Fortress Fence has pickets with upper and lower ends and pivot holes formed therein. ¶20 col. 4:8-10
a plurality of elongate rails extending transverse to the pickets...each rail further comprising a plurality of picket openings formed therein The USA/Fortress Fence has rails that extend transversely to the pickets and have picket openings that receive the pickets. ¶20 col. 3:45-49
one or more connectors for connecting the plurality of pickets to the plurality of rails, each connector comprising an elongate strip with opposing first and second sides, wherein at least one boss extends from the first side of the strip, and a sliding surface is formed on the second side The USA/Fortress Fence includes elongate connectors in the form of a strip with a cylindrical boss on a first side and a sliding surface on a second side. ¶20 col. 4:5-8
wherein each at least one boss of a respective connector is inserted into the at least one pivot hole in a respective one of the plurality of pickets such that the connector is pivotably connected to the picket The bosses of the connectors are inserted into the picket pivot holes, pivotably connecting the connectors to the pickets. ¶20 col. 4:8-12
wherein the sliding surface of the respective connector is slidably engaged with an inner surface of the side wall of a respective one of the plurality of rails The accused fence has hidden connectors within the rails that slide relative to the rails. ¶20 col. 4:1-3
whereby pivoting...causes the respective connector to slide along the inner surface of the side wall of the respective rail...in such a manner that a pivotal range of the plurality of pickets relative to the plurality of rails is at least about 20 degrees in each direction. The hidden connector contributes to the range of motion in racking, and the pivotal range is alleged to be "more than 20 degrees in each direction." ¶20 col. 6:1-8

'075 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a plurality of vertical pickets, each picket comprising an upper end and a lower end...each picket further comprising at least one pivot hole formed therein The accused fence has a plurality of vertical pickets with upper and lower ends and pivot holes. ¶21 col. 4:8-11
one or more connectors for connecting the plurality of pickets to the plurality of rails, each connector comprising an elongate strip...wherein at least one boss extends from the first side of the strip, and a sliding surface is formed on the second side The accused fence connectors are elongate strips with bosses extending from a first side and a sliding surface on the second side. The complaint identifies these as rivets with cylindrical bosses. ¶21 col. 4:5-8
wherein each connector provides a pivotal connection to the respective picket to permit a pivoting motion therebetween, and a slidable connection to the respective rail to permit a sliding motion therebetween, to permit a combination pivoting and sliding motion between the rail and the picket The accused connectors are allegedly pivotally connected to the pickets and slidably connected to the rails, providing a combination of pivoting and sliding motion. ¶21 col. 3:28-34
whereby pivoting the upper end of the respective picket...causes the respective connector to slide along the inner surface of the side wall of the respective rail...in such a manner that a pivotal range of the plurality of pickets relative to the plurality of rails is at least about 20 degrees in each direction. The complaint alleges that the "hidden fastener technology" contributes to the racking motion and that the pivotal range is "more than 20 degrees in each direction." ¶21 col. 6:1-15
  • Identified Points of Contention:
    • Scope Questions: The claims in the ’965 and ’075 patents require a pivotal range of "at least about 20 degrees." The complaint alleges the accused products achieve "more than 20 degrees" (Compl. ¶20, ¶21). A primary point of contention may be the construction of "about," and whether the accused products, upon testing, actually meet this quantitative threshold.
    • Technical Questions: The complaint alleges the accused fence’s "rivets with cylindrical bosses" meet the "boss" limitation of the claims (Compl. ¶21). A technical question for the court will be whether the structure and function of the accused connector and rivet system map onto the claimed elements of a "connector" with a "boss" and a "sliding surface," or if there is a fundamental structural or operational difference. The complaint references depictions of these features in Exhibit 7, which will serve as an early piece of evidence on this point (Compl. ¶20, ¶21, Ex. 7).

V. Key Claim Terms for Construction

  • The Term: "at least about 20 degrees in each direction" ('965 Patent, Claim 1; '075 Patent, Claim 1)

    • Context and Importance: This quantitative limitation is a cornerstone of the infringement allegation for multiple patents. The term "about" introduces ambiguity, and its interpretation will be critical in determining whether the measured pivotal range of the accused products falls within the scope of the claims. Practitioners may focus on this term because infringement could turn on a numerical measurement.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification contrasts the invention with prior art systems that are limited to "about 15 degrees" of rotation, suggesting "about 20 degrees" is meant to capture a significant, material improvement over that baseline (’965 Patent, col. 5:60-63).
      • Evidence for a Narrower Interpretation: The patent also discloses that in "typical commercial embodiments," the invention permits rotation of "at least 36 degrees" (’965 Patent, col. 6:10-12). A defendant may argue that "about 20 degrees" should be construed narrowly and not as an open-ended range, or that it is rendered indefinite by the word "about."

  • The Term: "connector" ('965 Patent, Claim 1; '075 Patent, Claim 1)

    • Context and Importance: The "connector" is the central inventive component. The claims require it to be a single component with multiple features: an "elongate strip," a "boss," and a "sliding surface." The infringement analysis depends on whether the accused multi-part assembly of a strip and separate rivets (Compl. ¶21) constitutes a single, infringing "connector."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the connector in general terms as a "pivoting, sliding connector" and discusses both "shorter individual-picket connectors" and "longer multi-picket connector strips," suggesting the term is not limited to a single unitary structure (’965 Patent, Abstract; col. 2:41-44).
      • Evidence for a Narrower Interpretation: The figures depict the "boss" (36) as an integral, protruding structure formed on the "connector strip" (34), not as a separate component like a rivet (’965 Patent, Figs. 3, 6A-6E). A defendant could argue that the claims require a unitary structure consistent with these specific embodiments.

VI. Other Allegations

  • Indirect Infringement: The complaint includes conclusory allegations of active inducement and contributory infringement for all four asserted patents (Compl. ¶30, ¶36, ¶42, ¶48). However, it does not plead specific facts to support the requisite knowledge and intent, such as identifying specific instructions or user manuals that would direct customers to infringe.
  • Willful Infringement: The complaint does not contain a separate count for willful infringement. It does, however, request treble damages in the prayer for relief for infringement of a "knowing, willful, and wanton nature" (Compl. p. 28, ¶F). The complaint alleges Defendant has had "actual and/or constructive knowledge" of the ’965 patent since its 2013 issue date, but provides no specific factual allegations to support this claim of pre-suit knowledge (Compl. ¶11).

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

  • A core issue will be one of claim scope and construction: Can the term "about 20 degrees" be construed to cover the measured pivotal range of the accused USA/Fortress Fences, and how will the court define the boundary introduced by the word "about"? The outcome of this construction, combined with factual testing, may be dispositive.
  • A key evidentiary question will be one of structural correspondence: Does the accused product's assembly of a metal strip and separate rivets constitute the claimed "connector" having an integral "boss," as depicted in the patents' embodiments, or is there a fundamental structural mismatch that places the accused design outside the literal scope of the claims?
  • A central question of proof will surround willfulness: The complaint alleges long-standing knowledge of the patents but provides no specific facts to support pre-suit knowledge. The plaintiff will need to produce evidence demonstrating that the defendant's alleged infringement continued despite an objectively high likelihood that its actions constituted infringement of a valid patent.