DCT
1:22-cv-23523
System Stormseal Pty Ltd v. ABC Supply Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: System Stormseal Pty Ltd (Australia) and Stormseal USA, LLC (Florida)
- Defendant: Structural Wrap, LLC (Florida); Mule-Hide Products Co., Inc. (Texas); ABC Supply Co., Inc. (Texas)
- Plaintiff’s Counsel: Duane Morris LLP
- Case Identification: 1:22-cv-23523, S.D. Fla., 10/28/2022
- Venue Allegations: Venue is based on Defendant Structural Wrap’s residence in the district, and on the other defendants’ alleged acts of infringement, distribution of accused products, and maintenance of regular and established places of business within the Southern District of Florida.
- Core Dispute: Plaintiff alleges that Defendants’ sale and installation of the WrapRoof and Shur-Gard temporary roofing systems infringe a patent covering a method for installing a heat-shrinkable film on damaged structures.
- Technical Context: The technology relates to temporary protective coverings for buildings, particularly for weatherproofing storm-damaged roofs in a manner more durable than traditional tarpaulins.
- Key Procedural History: The complaint alleges Defendants had pre-suit knowledge of the patent via a cease-and-desist letter. It also notes that the asserted patent underwent a Certificate of Correction to amend claim language from "structure" to "built structure," potentially clarifying claim scope. The complaint further alleges that patents owned by Plaintiff were cited during the prosecution of a patent application by Defendant Structural Wrap, which may be used to support allegations of knowledge.
Case Timeline
| Date | Event |
|---|---|
| 2008-06-02 | ’484 Patent Priority Date |
| 2021-11-09 | ’484 Patent Issue Date |
| 2022-04-12 | Certificate of Correction for ’484 Patent Issued |
| 2022-05-17 | Date by which Defendants allegedly received notice of the ’484 Patent |
| 2022-10-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,168,484 - "Roof and Wall Cover System"
- Patent Identification: U.S. Patent No. 11,168,484, “Roof and Wall Cover System,” issued November 9, 2021.
The Invention Explained
- Problem Addressed: The patent’s background section describes the disadvantages of using conventional tarpaulins to temporarily cover damaged roofs. Tarpaulins are difficult to adequately secure, making them vulnerable to dislodgement by high winds, and they are heavy and awkward to position on a roof (ʼ484 Patent, col. 1:31-45).
- The Patented Solution: The invention provides a method for covering a damaged or uncompleted roof using a sheet of heat-shrinkable film. The method involves securing the edges of the film to the structure—for example, by wrapping them around battens that are then fixed to the underside of the building's eaves—and then applying heat. The heat causes the film to shrink and conform tightly to the roof’s surface, creating a secure, waterproof seal (’484 Patent, Abstract; col. 6:26-35).
- Technical Importance: This method provides a more robust and durable temporary covering than tarps, which is particularly valuable in storm-prone areas where long-term protection is needed before permanent repairs can be made (Compl. ¶23, ¶26).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 2.
- Independent Claim 1 recites a method with the following essential elements:
- applying a sheet of heat shrinkable film (low density polyethylene with shrinking resins) over a portion of a storm-damaged built structure;
- wrapping portions of the film’s leading edge around a first batten and attaching the batten to an underside of a first eave or facia;
- wrapping portions of the film’s trailing edge around a second batten and attaching it to a different location on a second eave or facia; and
- heating the film to shrink it tight against the structure.
- Independent Claim 2 recites a similar method, but begins with the explicit step of:
- cutting a sheet of film from a roll of heat shrinkable film.
- The complaint notes that claims 1, 2, and 3 are asserted, suggesting dependent claims may also be at issue (Compl. ¶38, ¶47).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are the methods used to install the "WrapRoof" and "Shur-Gard" temporary roofing systems (Compl. ¶36, ¶58). The complaint alleges that Shur-Gard is the same product as WrapRoof, rebranded for distribution by Defendants Mule-Hide and ABC Supply (Compl. ¶49, ¶58).
Functionality and Market Context
The accused methods allegedly involve installers cutting a heat-shrinkable film from a large roll, applying it over a roof, securing the edges of the film with "furring strips" (which the complaint equates to battens), and using heat to shrink the film so it conforms to the roof (Compl. ¶¶ 41, 43, 45, 47). The complaint includes a screenshot from a training video showing a large, pre-cut sheet of "Shur-Gard" film being applied to a roof. (Compl. ¶43, p. 11). The products are marketed as a solution for weatherproofing buildings damaged by events like hurricanes (Compl. ¶19). A screenshot from the Mule-Hide website shows the product being marketed to victims of "Hurricane Ian." (Compl. ¶19, p. 6).
IV. Analysis of Infringement Allegations
’484 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of providing covers over at least a portion of a roof of a storm damaged built structure comprising the steps of: | Defendants and their trained contractors perform methods to install the WrapRoof and Shur-Gard systems on storm-damaged structures (Compl. ¶36, ¶37). | ¶36, ¶37 | col. 10:13-15 |
| applying a sheet of heat shrinkable film over the portion of the roof, the sheet... being a film of low density polyethylene including shrinking resins; | The accused WrapRoof film is alleged, on information and belief, to be a low density polyethylene film containing shrinking resins (Compl. ¶40). A training video screenshot shows a pre-cut sheet being applied to a roof (Compl. ¶43). | ¶40, ¶43 | col. 10:15-18 |
| wrapping portions of the leading edge around a first batten and attaching the first batten to an underside of a first eave or to a facia of the built structure; | The accused method uses "furring strips," which are alleged to be battens. The film edges are wrapped around these strips, which are then attached to the eaves or facia of the structure (Compl. ¶45). | ¶45 | col. 10:19-22 |
| wrapping portions of the trailing edge around a second batten and attaching the second batten to an underside of a second eave or to the facia of the built structure at a location different than the first batten; | The accused method allegedly uses furring strips at both the leading and trailing edges of the film (Compl. ¶46). | ¶46 | col. 10:23-27 |
| and heating the sheet of heat shrinkable film to bring the film into conformity with the portion of the roof, wherein said heating step shrinks the sheet of film tight against the built structure to cover over the portion of the roof. | The accused method includes heating the film to cause it to shrink and conform to the shape of the roof (Compl. ¶47). | ¶47 | col. 10:28-32 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the accused "furring strips" meet the definition of a "batten" as used in the patent claims (Compl. ¶45). The defense may argue for a narrower construction of "batten" that excludes the accused component.
- Technical Questions: The allegation that the accused film is made of "low density polyethylene that includes shrinking resins" is made "upon information and belief" (Compl. ¶40). This suggests that Plaintiff may not yet have direct evidence of the film's specific material composition, which will be a key subject for discovery.
V. Key Claim Terms for Construction
The Term: "batten"
Context and Importance: This term is critical because the claims require wrapping the film around a "batten" and attaching it, while the complaint alleges Defendants use a "furring strip" (Compl. ¶45). The case may turn on whether a "furring strip," as used by Defendants, falls within the legal scope of "batten." Practitioners may focus on this term because it represents a potential mismatch in terminology between the patent and the accused method.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition of "batten." A party might argue that in the context of the invention, a "batten" is any elongated member used to anchor the film, which could encompass a standard "furring strip."
- Evidence for a Narrower Interpretation: The specification describes and depicts a specific implementation where the film is "wrapped once around a length of batten 20" which is then "mechanically fixed to the underside 22 of the eaves 24" (ʼ484 Patent, col. 6:29-35, Fig. 2). A party could argue these specific descriptions and figures limit the term "batten" to this particular configuration or type of component.
The Term: "built structure"
Context and Importance: This term was added via a Certificate of Correction, replacing the word "structure" in the original claims (Compl. p. 10, n.1). The change suggests an intentional effort to define the scope. The dispute may focus on whether the structures on which the accused method is performed qualify as a "built structure," particularly in the context of Claim 1's limitation to a "storm damaged built structure."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses applying the covering to both "damaged or uncompleted" buildings and a "cladded structure" (ʼ484 Patent, Abstract; col. 8:38). This suggests the invention is applicable to a wide range of buildings in various states of completion or repair.
- Evidence for a Narrower Interpretation: The very act of correcting the claims from "structure" to "built structure" could be argued to impart a specific, limiting meaning. A party might argue this was done to distinguish the invention from applications on non-building structures or to narrow the scope relative to the broader term used in the specification.
VI. Other Allegations
- Indirect Infringement: The complaint makes detailed allegations of induced infringement. It claims Defendants provide extensive training materials, including online videos and in-person training sessions, that instruct installers on how to perform the patented method (Compl. ¶¶ 48, 60-63). A screenshot from a video shows a principal of Defendant Structural Wrap, Larry Bond, participating in and narrating instructional videos for Defendant Mule-Hide's product, suggesting active encouragement (Compl. ¶53, p. 13). The complaint also alleges Defendants contribute to infringement by selling the heat-shrinkable film, which it characterizes as a crucial component especially made for use in the infringing method and not a staple article of commerce (Compl. ¶73, ¶84, ¶95).
- Willful Infringement: Willfulness is alleged based on both pre- and post-suit knowledge. The complaint asserts that Defendants were aware of the ’484 Patent "since no later than May 17, 2022," when Plaintiffs allegedly sent a notice letter (Compl. ¶54, ¶64). It further alleges, upon information and belief, that Defendant Structural Wrap was aware of the patent even earlier because it tracks competitor patents and because Plaintiff’s patents were cited during prosecution of its own patent applications (Compl. ¶55).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and evidentiary proof: Can Plaintiff establish that the Defendants' accused "furring strips" are equivalent to the claimed "battens," and can it produce evidence from discovery to confirm that the accused film's material composition and the installers' real-world actions meet every limitation of the asserted claims?
- A second key question will revolve around inducement: The complaint provides specific factual allegations of Defendants' instructional activities. The central legal question will be whether the evidence demonstrates that Defendants possessed the requisite intent to encourage infringement and that their instructions would "invariably" lead a direct infringer (the installer) to perform all steps of the patented method.
- Finally, the dispute may involve a question of willfulness and damages: Given the allegations of pre-suit notice and the monitoring of competitor patents, a key focus will be on what Defendants knew about the ’484 Patent and when they knew it, which will be critical to Plaintiffs’ claims for enhanced damages.