1:18-cv-03394
Riteway LLC v. Stegas Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: RiteWay, LLC (Connecticut) and RiteWay Crack Repair, LLC (New York)
- Defendant: Stegas, Inc. (Georgia)
- Plaintiff’s Counsel: LeClairRyan PLLC (Note: Pleadings signed by Hall Booth Smith, P.C.)
- Case Identification: 1:18-cv-03394, N.D. Ga., 07/16/2018
- Venue Allegations: Venue is asserted in the Northern District of Georgia because the Defendant is located in the judicial district, and a substantial part of the events at issue allegedly occurred there.
- Core Dispute: Plaintiff alleges that Defendant’s crack repair system, and the sale of its components, infringes a patent related to a multi-layer method and system for repairing cracks in paved surfaces.
- Technical Context: The technology concerns methods for repairing cracks in asphalt and concrete surfaces, such as tennis courts, to prevent further damage from water intrusion and freeze-thaw cycles.
- Key Procedural History: The complaint alleges that Defendant became aware of the patent-in-suit at an industry trade show in December 2017. Plaintiff also alleges it sent multiple notices of infringement to the Defendant in May and June 2018, which Defendant allegedly disregarded, forming the basis for willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2007-04-04 | ’503 Patent Priority Date (Application Filing) |
| 2009-10-06 | ’503 Patent Issue Date |
| 2017-12-04 | Defendant allegedly became aware of ’503 Patent at a trade show |
| 2018-05-15 | Defendant allegedly offered infringing components for sale via invoice |
| 2018-05-17 | Plaintiff allegedly sent first notice of infringement to Defendant |
| 2018-06-08 | Plaintiff allegedly sent final notice of infringement to Defendant |
| 2018-07-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,597,503 - Method and System For Repairing Cracks In A Paved Surface
The Invention Explained
- Problem Addressed: The patent addresses the problem of repairing cracks in paved recreational surfaces, which can be exacerbated by freeze-thaw cycles. It notes that prior methods, such as simply filling the crack or using "slip-sheet" methods, were often temporary or could lead to undesirable "heaving, and the formation of bubbles and dead spots" (’503 Patent, col. 1:48-50).
- The Patented Solution: The invention is a multi-layer repair patch. As illustrated in Figure 1, the solution involves applying a pliable, watertight tape (12) over the crack, followed by a polyester fabric (18) that is impregnated with a liquid acrylic adhesive. This second layer hardens into a "rigid mat" that provides structural integrity while allowing the underlying tape to remain flexible. A final fiberglass sheet (24A, 24B) is applied over the edges to create a smooth transition to the surrounding pavement (’503 Patent, col. 1:56-col. 2:9; Fig. 1).
- Technical Importance: The claimed invention purports to offer an improved method over prior art by creating a durable, layered system that alleviates stress on the crack while preventing water intrusion, thereby providing a "simple and cost-effective way of maintaining recreational court surfaces" (’503 Patent, col. 2:25-28).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a method) and 8 (a system) (Compl. ¶40).
- Independent Claim 1 (Method):
- applying a watertight tape over a crack... to form a first layer
- contacting the first layer with a first liquid acrylic adhesive
- covering the first layer with a polyester fabric to form a second layer
- impregnating the polyester fabric with a second liquid acrylic adhesive, wherein the second layer hardens to form a rigid mat
- adhering a fiberglass sheet to... the second layer and to the paved surface beyond edges of the second layer to form a transition layer
- Independent Claim 8 (System):
- a watertight tape capable of forming a first layer over a crack
- a polyester fabric impregnated with a liquid acrylic capable of forming a second layer that adheres to... the first layer, wherein the second layer forms a rigid mat
- a fiberglass sheet capable of adhering to... the second layer and to the paved surface beyond edges... to form a transition over the edges
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendant’s crack repair system and the individual components sold for use in that system (Compl. ¶15).
Functionality and Market Context
The complaint alleges that Defendant offers for sale and sells a collection of components intended to be used for crack repair (Compl. ¶15, ¶30). The functionality of these components is alleged to map directly to the elements of the patented system. The complaint references a product and pricing sheet (Exhibit B) and invoices (Exhibit C) that list items such as "Self Adhesive Tape," "Polyester Fabrics," and "Fiberglass Sheets" (Compl. ¶19-21). A specific invoice allegedly identifies the components as "Eternabond Webseal" (tape), "Polyester Fabric," "Acry-Glue" (liquid acrylic), and "Fiberglass" (Compl. ¶25-28). The complaint provides an invoice to a customer, which allegedly lists for sale the components of the patented system (Compl. ¶23; Exhibit C). Plaintiff alleges Defendant marketed this system as an "alternative to RiteWay's commercial services" (Compl. ¶16).
IV. Analysis of Infringement Allegations
’503 Patent Infringement Allegations (Claim 1 - Method)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| applying a watertight tape over a crack in a paved surface to cover the crack and form a first layer, wherein the tape is applied with an adhesive | Defendant sells components, including "Eternabond Webseal," which is a watertight tape, for the purpose of forming a first layer over a crack. This is allegedly evidenced by invoices and product sheets. | ¶19, ¶25 | col. 3:10-15 |
| contacting the first layer with a first liquid acrylic adhesive | Defendant sells components, including "Acry-Glue," a liquid acrylic adhesive, for use with the other components. | ¶27 | col. 4:65-col. 5:4 |
| covering the first layer with a polyester fabric to form a second layer that adheres to the first layer | Defendant sells polyester fabrics intended to be used as a second layer. Invoices and pricing sheets allegedly list "Polyester Fabrics" for this purpose. | ¶20, ¶26 | col. 3:38-42 |
| impregnating the polyester fabric with a second liquid acrylic adhesive, wherein the second layer hardens to form a rigid mat above the first layer | Defendant sells "Acry-Glue," a liquid acrylic adhesive, which is allegedly usable to impregnate the polyester fabric to form a rigid mat. The complaint alleges the pricing sheet includes fabrics that can be impregnated to form a rigid mat. | ¶20, ¶27 | col. 5:30-34 |
| adhering a fiberglass sheet to at least a portion of the second layer and to the paved surface beyond edges of the second layer to form a transition layer over the edges | Defendant sells fiberglass sheets for use as a transition layer. The complaint references invoices and pricing sheets that list fiberglass sheets for adhering to the second layer and pavement. | ¶21, ¶28 | col. 3:48-54 |
’503 Patent Infringement Allegations (Claim 8 - System)
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a watertight tape capable of forming a first layer over a crack in a paved surface | Defendant sells "Eternabond Webseal," a watertight tape, as part of its system. The complaint cites invoices showing this component was offered for sale. | ¶19, ¶25 | col. 3:10-15 |
| a polyester fabric impregnated with a liquid acrylic capable of forming a second layer that adheres to and covers the first layer, wherein the second layer forms a rigid mat | Defendant sells polyester fabrics and a liquid acrylic adhesive ("Acry-Glue"). The complaint alleges these components are capable of forming a second layer that adheres to the first layer and forms a rigid mat. | ¶20, ¶26, ¶27 | col. 3:38-47 |
| a fiberglass sheet capable of adhering to at least a portion of the second layer and to the paved surface beyond edges of the second layer to form a transition over the edges | Defendant sells fiberglass sheets as part of its system. The complaint alleges these sheets are capable of adhering to the second layer and the pavement to form a transition. | ¶21, ¶28 | col. 3:48-54 |
Identified Points of Contention
- Scope Questions: The complaint alleges direct infringement of method claim 1 by "selling the claimed system and components ... thereby practicing the claimed method" (Compl. ¶40). This raises the legal question of whether the sale of components can constitute direct infringement of a method claim under 35 U.S.C. § 271(a), which typically requires performance of all method steps by a single entity. The facts alleged may more directly support a claim for indirect infringement.
- Technical Questions: A central technical question will be whether the combination of Defendant's offered components, when assembled, actually forms a "rigid mat" as required by both asserted claims. The properties of the Defendant's polyester fabric when combined with its "Acry-Glue" will be a key factual issue.
V. Key Claim Terms for Construction
The Term: "rigid mat" (claims 1 and 8)
Context and Importance: This term is critical because it distinguishes the invention from prior art flexible patches. The patent contrasts the "rigid mat" of the second layer with the "soft, pliable, watertight first layer" (’503 Patent, col. 2:18-19), suggesting a key functional difference. The outcome of the infringement analysis may depend on the degree of stiffness required to meet the "rigid" limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a quantitative definition of "rigid." It describes the second layer as a "stress mat" that "holds the repair system in place" (’503 Patent, col. 2:18-21), which could support an argument that any level of rigidity sufficient to perform this function meets the limitation.
- Evidence for a Narrower Interpretation: The term "harden" is used to describe the formation of the mat (’503 Patent, cl. 1), which suggests a transformation from a flexible or liquid state to a solid, non-pliable one. The contrast with the explicitly "pliable and flexible" first layer (’503 Patent, col. 3:11-12) could be used to argue for a high degree of rigidity.
The Term: "impregnating" / "impregnated" (claims 1 and 8)
Context and Importance: This term defines the relationship between the polyester fabric and the liquid acrylic. Practitioners may focus on this term because the extent of saturation required could be a point of dispute. Whether a surface coating is sufficient, or if full saturation is required, will impact whether the accused method and system infringe.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes applying the acrylic with a "paint roller" over the fabric (’503 Patent, col. 5:21-24), which could suggest that a substantial surface application that causes the layers to adhere and harden is sufficient, even without complete through-and-through saturation.
- Evidence for a Narrower Interpretation: The common technical meaning of "impregnate" implies saturating a porous material. A defendant might argue that its instructions or the properties of its materials lead only to a surface bond, not true impregnation of the fabric.
VI. Other Allegations
Indirect Infringement
Count II of the complaint alleges induced infringement of at least method claim 1 (Compl. ¶49). The factual basis includes Defendant’s alleged sale of all necessary components (Compl. ¶23), knowledge of the patent from a trade show and notice letters (Compl. ¶13, ¶37), and alleged instructions and encouragement to customers to use the components to perform the patented method (Compl. ¶50, ¶53). The complaint specifically alleges Defendant advised one customer to obtain components to "practice the method claimed" (Compl. ¶29).
Willful Infringement
The complaint alleges both pre- and post-suit knowledge. Pre-suit knowledge is alleged to have begun on December 4, 2017, when a representative of Defendant allegedly discussed the patent with Plaintiff’s personnel at a trade show (Compl. ¶13). Post-suit knowledge is supported by allegations that Plaintiff sent notice letters in May and June 2018, and that Defendant refused to cease its allegedly infringing conduct (Compl. ¶37-38). The complaint alleges Defendant acted "recklessly," "wantonly, and deliberately" (Compl. ¶47).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of infringement theory: for the asserted method claim, the case may turn on whether Plaintiff can sustain its claim for direct infringement based on the sale of components, or if the analysis will focus entirely on whether Defendant's actions meet the specific intent standard for induced infringement.
- A central claim construction and factual question will be the definitional scope of the term "rigid mat". The case will likely require the court to determine how "rigid" the second layer must be to infringe, and whether the accused system, when assembled, meets that standard.
- A key evidentiary question will be one of inducement: can the Plaintiff produce sufficient evidence that the Defendant not only sold the components but actively and knowingly instructed or encouraged its customers to assemble them in a manner that practices all steps of the patented method, thereby demonstrating the specific intent required for induced infringement.