DCT
9:22-cv-81726
Stormseal USA LLC v. ABC Supply Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Stormseal USA, LLC (Florida) and System Stormseal Pty Ltd. (Australia)
- Defendant: ABC Supply Co., Inc. (Texas), Mule-Hide Products Co., Inc. (Texas), and Structural Wrap, LLC (Florida)
- Plaintiff’s Counsel: Duane Morris LLP
- Case Identification: 9:22-cv-81726, S.D. Fla., 11/04/2022
- Venue Allegations: Venue is alleged based on Defendant Structural Wrap's residence and regular place of business in the district. For Defendants ABC Supply and Mule-Hide Products, venue is based on alleged acts of infringement, including product distribution and training sessions, and the maintenance of a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendants' method of installing the "WrapRoof" and "Shur-Gard" temporary roofing systems infringes a patent covering a method for installing heat-shrinkable film on damaged structures.
- Technical Context: The technology relates to temporary, weather-proof coverings for buildings damaged by storms, a critical service in disaster recovery areas where permanent repairs are often delayed.
- Key Procedural History: The complaint notes that the asserted patent was subject to a Certificate of Correction to amend claim language. Plaintiff also alleges providing pre-suit notice of the patent and its infringement to the Defendants via cease-and-desist letters.
Case Timeline
| Date | Event |
|---|---|
| 2008-06-02 | '484 Patent Priority Date |
| 2021-11-09 | '484 Patent Issue Date |
| 2022-04-12 | '484 Patent Certificate of Correction Issued |
| 2022-05-17 | Plaintiff allegedly sent notice letters to Defendants |
| 2022-11-04 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,168,484 - Roof and Wall Cover System (Issued Nov. 9, 2021)
The Invention Explained
- Problem Addressed: The patent's background describes the inadequacy of traditional temporary coverings like canvas tarpaulins for storm-damaged roofs. Such tarps are described as heavy, difficult to secure, and vulnerable to being dislodged by high winds, posing ongoing risks to the building's interior (’484 Patent, col. 1:31-45). The patent also notes that applying protective film from a heavy roll directly onto a roof surface is often "extremely difficult, if not dangerous" (’484 Patent, col. 2:1-2).
- The Patented Solution: The invention is a method for securely covering a damaged roof. It involves applying a sheet of heat-shrinkable film, wrapping the edges of the film around elongated members called "battens," attaching these battens to the structure (e.g., under the eaves), and then applying heat. The heat causes the film to shrink, creating a tight, form-fitting, and waterproof barrier over the damaged area (’484 Patent, Abstract; col. 6:28-51). This method aims to provide a more durable and secure seal than conventional tarps.
- Technical Importance: This method provided a more robust and reliable alternative to traditional tarps, allowing structures to remain protected from the elements for extended periods until permanent repairs could be made (Compl. ¶¶23, 26).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 2, as well as dependent claim 3 (Compl. ¶¶68, 79, 91).
- Independent Claim 1 (as recited in the complaint) includes the following essential method steps:
- 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
- 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
- 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
- heating the sheet of heat shrinkable film to shrink it tight against the built structure
- Independent Claim 2 (as corrected and recited in the complaint) is similar to Claim 1 but adds a preliminary step:
- cutting a sheet of film from a roll of heat shrinkable film
- after said cutting step, applying the sheet of film over the portion of the roof
- (the remaining wrapping, attaching, and heating steps are substantially similar to Claim 1)
- The complaint also asserts dependent claim 3 but reserves the right to assert additional claims (Compl. ¶¶38, 50, 56).
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" film is the same product as "WrapRoof" film, rebranded for distribution by Defendants Mule-Hide Products and ABC Supply (Compl. ¶¶49, 58).
Functionality and Market Context
The complaint alleges the accused method involves installing a heat-shrinkable film that comes in large rolls (Compl. ¶39). The method is alleged to include cutting the film from a roll, applying the sheet over a roof, using "furring strips" (which the complaint equates to battens) to secure the film's edges to the structure's eaves or facia, and then heating the film to make it shrink and conform to the roof (Compl. ¶¶41, 45, 47). The complaint provides a screenshot from a "Shur-Gard Training Series" video showing workers applying a pre-cut sheet of film, marked as a "32'x90' Roll," to a roof (Compl. ¶43). The accused products are positioned as direct competitors to Stormseal's system, particularly in the post-hurricane temporary roofing market (Compl. ¶¶19, 37).
IV. Analysis of Infringement Allegations
'484 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| applying a sheet of heat shrinkable film over the portion of the roof... | Defendant Structural Wrap and its trained contractors apply the WrapRoof/Shur-Gard film to the surface of a roof, extending it over the portion to be covered. | ¶43 | col. 10:11-16 |
| the sheet... being a film of low density polyethylene including shrinking resins | On information and belief, the WrapRoof film is a film of low density polyethylene that includes shrinking resins. | ¶40 | col. 10:15-16 |
| 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 | Defendant uses "furring strips," around which the edges of the film are wrapped, and attaches the strips to the eaves or facia of the structure. | ¶45 | col. 10:17-20 |
| 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... | Defendant uses furring strips at both the leading and trailing edges of the film. | ¶46 | col. 10:21-25 |
| 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... | Defendant heats the film so that it will shrink and conform to the shape of the portion of the roof being wrapped. | ¶47 | col. 10:26-30 |
'484 Patent Infringement Allegations (Claim 2)
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| cutting a sheet of film from a roll of heat shrinkable film | When performing installs, Defendant Structural Wrap cuts the film before applying it over the portion of the roof to be covered. | ¶41 | col. 10:32 |
| after said cutting step, applying the sheet of film over the portion of the roof to extend from a first edge to a second edge of the built structure... | After cutting, Defendant applies the film to the roof surface, extending it from one edge of the structure to another. The complaint includes a video screenshot showing a pre-cut roll being applied (pictured below). | ¶¶43, 44 | col. 10:33-36 |
| [remaining wrapping, attaching, and heating steps] | [Allegations are identical to those for Claim 1, as described in the table above] | ¶¶45-47 | col. 10:37-44 |
A screenshot from a "Shur-Gard Training Series" video allegedly shows contractors applying a pre-cut sheet of film to a roof, which may support allegations of both cutting and applying the film (Compl. ¶43).
- Identified Points of Contention:
- Scope Questions: A central question may be whether the accused "furring strips" are structurally and functionally equivalent to the claimed "batten." The defense could argue that a "furring strip" is a distinct article of commerce with a different meaning in the construction trade, while the plaintiff will likely argue it is merely a semantic difference for the same component.
- Technical Questions: The complaint alleges, on "information and belief," that the accused film is "low density polyethylene including shrinking resins" (Compl. ¶40). This suggests the plaintiff may not have direct evidence of the film's chemical composition, a factual issue that would require discovery to resolve.
- Technical Questions: Infringement of the attachment limitation requires securing the batten to the "underside of a... eave or to a facia". The complaint alleges attachment "to the eaves or facia" (Compl. ¶45). The precise location and method of attachment of the accused furring strips will be a critical factual question for determining literal infringement.
V. Key Claim Terms for Construction
The Term: "batten"
Context and Importance: This term appears in the core functional steps of independent claims 1 and 2. The complaint alleges that Defendants use "furring strips" to perform the function of the claimed "batten" (Compl. ¶45). The dispute may turn on whether a "furring strip" falls within the proper construction of "batten." Practitioners may focus on this term because if "furring strip" is found to be outside the scope of "batten," the infringement case could fail.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition for "batten," which may support giving the term its plain and ordinary meaning as understood by a person of ordinary skill in the art of construction. The specification refers to "a length of batten" (’484 Patent, col. 6:32-33), suggesting it is a generic, elongated structural element.
- Evidence for a Narrower Interpretation: The figures, such as Figure 2, depict element 20 as the batten. A party could argue that the term should be limited to a structure with the specific characteristics and function as depicted in that preferred embodiment, where it is used to anchor the film under an eave.
The Term: "attaching the... batten to an underside of a first eave or to a facia of the built structure"
Context and Importance: This limitation defines the specific location and method for securing the film to the building. The infringement analysis will depend on whether the Defendants' accused installation method, which allegedly involves attaching furring strips "to the eaves or facia" (Compl. ¶45), meets this precise structural requirement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim uses the disjunctive "or," allowing for attachment to either the underside of an eave or to a facia. This provides two alternative locations, which could support a construction that is not overly restrictive.
- Evidence for a Narrower Interpretation: Figure 2 explicitly shows the batten (20) being "mechanically fixed to the underside 22 of the eaves 24" (’484 Patent, col. 6:34-35). A party arguing for a narrower scope could point to this embodiment as defining the primary meaning of the claim language, potentially limiting how broadly "attaching... to a facia" can be interpreted.
VI. Other Allegations
- Indirect Infringement: The complaint makes extensive allegations of indirect infringement. Inducement is alleged based on Defendants providing training sessions, instructional videos, and marketing materials that allegedly instruct installers on how to perform the patented method (Compl. ¶¶48, 51-53, 61-63, 70). The complaint includes a screenshot of an instructional video featuring a principal from Defendant Structural Wrap, which may support the element of intent (Compl. ¶53). Contributory infringement is alleged on the basis that Defendants sell the heat-shrinkable film, which is a "crucial component" of the method, is "especially made or adapted" for infringement, and is not a staple article of commerce (Compl. ¶¶73, 84, 95).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the '484 Patent. The complaint states that Plaintiffs sent notice letters to all Defendants on or before May 17, 2022, but the allegedly infringing conduct continued (Compl. ¶¶54, 64, 71, 76, 82, 88). The complaint also alleges, on information and belief, that Defendant Structural Wrap tracks competitor patents and was aware of the '484 patent even before receiving the notice letter (Compl. ¶55).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the term "batten", as used in the patent, be construed to read on the "furring strips" allegedly used in the accused method? The outcome of this definitional question may be dispositive for the infringement analysis.
- A second key issue of claim construction and factual proof will be: does the accused method's attachment of furring strips "to the eaves or facia" meet the specific claim requirement of attaching to the "underside of a first eave or to a facia"? The case may turn on evidence detailing the precise physical steps of the accused installation process.
- A central question for indirect infringement will be evidentiary: do the Defendants' training videos and manuals, such as those featuring Structural Wrap's principal (Compl. ¶53) and those held at ABC Supply locations (Compl. ¶63), demonstrate the specific intent to encourage installers to perform every step of the patented method?