DCT
1:23-cv-02085
Fern Avenue Solutions LLC v. Protected Solutions LLC
I. Executive Summary and Procedural Information
- Case Name: Fern Avenue Solutions, LLC v. Protected Solutions, LLC
- Parties & Counsel:
- Plaintiff: Fern Avenue Solutions, LLC (Pennsylvania)
- Defendant: Protected Solutions, LLC (Georgia)
- Plaintiff’s Counsel: Morriss | Shim | Davis; Leech, Tishman Fuscaldo & Lampl, LLC
- Case Identification: 1:23-cv-02085, N.D. Ga., 05/09/2023
- Venue Allegations: Venue is asserted on the basis that the Defendant, a Georgia LLC, resides and maintains a regular and established place of business within the Northern District of Georgia.
- Core Dispute: Plaintiff alleges that Defendant’s "ProtectED Rooms Bookcase" infringes a patent related to a moveable, armored furniture piece designed to be rapidly deployed to barricade a room’s entrance.
- Technical Context: The technology provides a security solution for public and private spaces, such as classrooms and offices, by integrating a ballistic barrier into an ordinary piece of furniture that can be moved and locked into place during an emergency.
- Key Procedural History: The complaint alleges that the Defendant has had knowledge of the asserted patent since at least June 9, 2022, nearly a year before the suit was filed, which forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2013-03-14 | ’170 Patent Priority Date (Application Filing) |
| 2016-04-12 | U.S. Patent No. 9,310,170 Issues |
| 2022-06-09 | Alleged date of Defendant’s earliest knowledge of patent |
| 2023-05-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 9,310,170, “Moveable Furniture Piece with Armored Panel,” issued April 12, 2016.
The Invention Explained
- Problem Addressed: The patent identifies the problem of "armed, random violence in schools, universities, workplaces and other public venues" and notes the inadequacy of existing solutions like armored doors, which are described as costly, difficult to install, and aesthetically undesirable in environments like schools (’170 Patent, col. 1:27-30; col. 2:2-9).
- The Patented Solution: The invention is a dual-purpose piece of furniture, such as a bookcase, that functions normally for everyday use but incorporates an armored back panel. The furniture is equipped with a mobility mechanism, like wheels, allowing a person to quickly move it to block a doorway in an emergency. It also includes a locking mechanism to secure the furniture to the surrounding wall or doorframe, creating a barricade (’170 Patent, Abstract; col. 2:54-64). This approach aims to provide a security device that is "relatively inexpensive, unobtrusive and yet easily deployed" (’170 Patent, col. 2:26-29).
- Technical Importance: The invention provides a method for retrofitting security into existing buildings without requiring major structural modifications, by embedding a defensive barrier within an ordinary object already present in the environment (’170 Patent, col. 2:30-34).
Key Claims at a Glance
- The complaint asserts independent claims 1 (an apparatus claim) and 13 (a method claim) (Compl. ¶¶ 20, 34).
- Independent Claim 1 recites:
- A furniture piece for substantially blocking a room entrance, comprising:
- at least one armored panel;
- at least one locking mechanism; and
- a "means for releasably securing the furniture piece" to a location blocking the entrance;
- wherein the furniture piece is moveable from a non-adjacent location to the blocking location.
- Independent Claim 13 recites:
- A method for substantially blocking a room entrance, comprising:
- "repositioning a furniture piece" (containing an armored panel) from a first location to a second location blocking the entrance; and
- "releasably securing the furniture piece" to that second location using a locking mechanism.
III. The Accused Instrumentality
Product Identification
- The "ProtectED Rooms Bookcase" (Compl. ¶12).
Functionality and Market Context
- The complaint alleges the accused product is a bookcase that incorporates an "armored or ballistic panel," a "mobility mechanism such as a set of rollers, wheels or casters," and a "locking mechanism for releasably securing the bookcase" to block an entrance (Compl. ¶13).
- Plaintiff alleges that Defendant’s marketing materials, including a video, demonstrate the intended use of the bookcase for emergency barricading (Compl. ¶14). A screenshot from the Defendant's website shows the accused bookcase in what appears to be a classroom setting, accompanied by the text "When every second counts... ProtectED Rooms shelving systems provide critical protection" (Compl. p. 6, Fig. 2). This visual is used to support the allegation that the product is intended for the infringing use.
IV. Analysis of Infringement Allegations
'170 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A furniture piece for substantially blocking at least one entrance of a room, comprising... | The ProtectED Rooms Bookcase is alleged to be a furniture piece used for blocking a doorway (Compl. ¶22-23). | ¶22, ¶23 | col. 7:36-37 |
| at least one armored panel; | The bookcase is alleged to include an armored panel located at its back plane (Compl. ¶24). | ¶24 | col. 7:39 |
| at least one locking mechanism; and | The bookcase is alleged to include a locking mechanism located on its vertical sides (Compl. ¶25). | ¶25 | col. 7:40 |
| means for releasably securing the furniture piece, using the at least one locking mechanism, to a location adjacent to and substantially blocking the at least one entrance of the room; | This is alleged to be met by the combination of the locking mechanism on the bookcase and a "corresponding hook and plate attached to the wall along either side of the room's doorway for capturing and holding" the mechanism on the bookcase (Compl. ¶26). | ¶26 | col. 6:5-21 |
| wherein the furniture piece is moveable from a location within the room and not adjacent to the at least one entrance of the room to the location adjacent to and substantially blocking the at least one entrance of the room. | The bookcase is alleged to be moveable via a mobility mechanism (rollers, wheels, or casters) from a normal position, such as along a wall, to a position blocking the room's entrance (Compl. ¶27). | ¶27 | col. 7:46-51 |
- Identified Points of Contention:
- Scope Questions: The "means for releasably securing" limitation in Claim 1 is a means-plus-function element under 35 U.S.C. § 112(f). Its scope is limited to the corresponding structures disclosed in the patent specification and their equivalents. A central dispute may be whether the accused product's locking system is structurally equivalent to the hook-and-cable system (’170 Patent, Fig. 2; col. 6:5-21) or other systems described in the patent.
- Technical Questions: A key factual question is how the accused locking mechanism operates. The complaint alleges a "hook and plate attached to the wall" (Compl. ¶26), and the court will require evidence confirming the structure and function of the accused mechanism to compare it against the structures disclosed in the patent.
V. Key Claim Terms for Construction
The Term: "means for releasably securing the furniture piece..."
Context and Importance: As a means-plus-function term, its construction is governed by 35 U.S.C. § 112(f). The infringement analysis for this element will not be a simple comparison of words but a detailed comparison of the accused product's structure to the specific structures disclosed in the patent. Practitioners may focus on this term because the outcome of the structural equivalence analysis could be dispositive of the infringement claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification lists several examples of locking mechanisms, including "chains, cables, metal rods or bars, barricades, deadbolts, cremone bolts and other multipoint bolting systems" (’170 Patent, col. 3:32-35). This language may be used to argue that the patent discloses a broad class of securing structures, expanding the range of potential equivalents.
- Evidence for a Narrower Interpretation: The primary embodiment shows a specific structure: a reinforced plate and ring on the bookcase connected via a hook-and-cable to a corresponding plate and ring on the doorframe (’170 Patent, Fig. 2; col. 6:5-21). An argument could be made that this detailed disclosure defines the core invention and limits the scope of equivalents to structures that are very similar.
The Term: "substantially blocking"
Context and Importance: This term of degree appears in the preambles and bodies of both asserted independent claims. Its definition will determine how completely the accused bookcase must cover a doorway to infringe. Practitioners may focus on this term because if the accused product is found to leave a meaningful gap when deployed, it may fall outside the scope of the claims.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the goal as covering "all or substantially all the doorway" (’170 Patent, col. 2:42-44), which suggests that less than 100% coverage is contemplated and within the claim scope.
- Evidence for a Narrower Interpretation: The patent’s objective is to "restrict an intruder from entering the room" and ensure occupants are "securely locked into the room" (’170 Patent, col. 2:18-19, col. 3:13-14). This purpose could support an argument that "substantially" requires a blockage that is sufficient to physically prevent a person's passage, a potentially stricter standard.
VI. Other Allegations
- Indirect Infringement: The complaint asserts induced infringement (Count 2) and contributory infringement (Count 3) based on method claim 13 (Compl. ¶¶ 32-53). The allegations are premised on the sale of the ProtectED Rooms Bookcase to customers.
- The inducement claim is supported by allegations that Defendant provides instructions on its website and in videos that encourage and direct customers to use the bookcase in the infringing manner of moving it to block and secure a doorway (Compl. ¶¶ 14-15, 37-38).
- The contributory infringement claim alleges that the bookcase is a material part of the patented method, is especially designed for this infringing use, and has no substantial non-infringing use due to its combination of specialized features (armored panel, mobility, and locking mechanisms) (Compl. ¶44).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged pre-suit knowledge of the ’170 patent "at least as early as June 9, 2022" (Compl. ¶¶ 17, 30, 52). The pleading asserts that continued infringement after this date was knowing, intentional, and constituted "reckless disregard" for the plaintiff's patent rights (Compl. ¶30).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: can the means-plus-function claim for a "means for releasably securing" the furniture be construed to read on the specific locking mechanism used by the ProtectED Rooms Bookcase? The case will likely involve a detailed, fact-intensive analysis of whether the accused structure is the same as, or equivalent to, the hook-and-cable system and other alternatives disclosed in the patent.
- A second central question will be one of indirect infringement and intent: for the method claims, the plaintiff must prove not only that the defendant's customers perform the infringing steps, but that the defendant acted with the specific intent to encourage that infringement. The strength of the defendant’s marketing and instructional materials (Compl. ¶¶ 14, 15) as evidence of such intent will be a critical point of analysis.
- Finally, the allegation of willfulness will depend on evidence of when and how the defendant became aware of the ’170 patent. The factual record surrounding the alleged notice date of June 9, 2022, will be determinative for the plaintiff's ability to seek enhanced damages.