DCT
1:23-cv-03323
Silicon Holding BV v. Brand Industrial Services Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SILICON Holding B.V. (Netherlands)
- Defendant: Brand Industrial Services, Inc. (Delaware); BrandSafway, LLC (Delaware); Industrial Specialists, LLC (Delaware)
- Plaintiff’s Counsel: Shumaker, Loop & Kendrick, LLP
- Case Identification: 1:23-cv-03323, N.D. Ga., 07/27/2023
- Venue Allegations: Venue is alleged to be proper based on Defendants' global headquarters, principal offices, registration to do business, and commission of infringing acts within the Northern District of Georgia.
- Core Dispute: Plaintiff alleges that Defendants’ refractory anchoring systems, associated ferrules, and welding services infringe three utility patents and one design patent related to anchoring assemblies used for industrial linings.
- Technical Context: The technology concerns specialized refractory anchors and ferrules for attaching heat-resistant concrete or ceramic linings to the interior of industrial vessels, a process essential to the petrochemical, cement, and steel industries.
- Key Procedural History: The complaint alleges that in March 2019, Defendants sought a non-exclusive license to the '314 Patent, which Plaintiff did not grant. It further alleges that Defendants continued to monitor Plaintiff’s patent portfolio, making them aware of the subsequently issued patents-in-suit. The asserted patents are all part of the same patent family.
Case Timeline
| Date | Event |
|---|---|
| 2014-08-13 | Earliest Priority Date for '314, '712, '007, and D'009 Patents |
| 2019-01-29 | U.S. Patent No. 10,190,314 Issued |
| 2019-03-27 | Defendants allegedly sought license for '314 Patent |
| 2021-03-30 | U.S. Patent No. 10,961,712 Issued |
| 2021-10-XX | Plaintiff allegedly purchased accused products from Defendants |
| 2022-03-29 | U.S. Design Patent No. D947,009 Issued |
| 2022-08-30 | U.S. Patent No. 11,428,007 Issued |
| 2023-07-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,190,314 - "An Anchoring Assembly For Anchoring A Liner Of A Cured Lining Material, A Ferrule Suitable For Use With The Anchoring Assembly, An Anchoring Mounting Assembly Further Comprising A Ferrule Holder And The Use Of The Anchoring Assembly"
(Issued January 29, 2019; Compl. ¶17)
The Invention Explained
- Problem Addressed: The patent identifies prior art methods for installing refractory anchors—such as welding a pin and separately screwing on a finned nut—as being time-consuming (Compl. ¶22; ’314 Patent, col. 2:15-24).
- The Patented Solution: The invention is a unified anchoring assembly where a plurality of anchor fins are already connected to an elongated mounting pin before installation. A key component is a ferrule at the welding end of the pin, which features a "radially outwardly extending place holder part." This part is designed to be gripped by a welding tool's ferrule holder, which allows the entire assembly to be positioned and stud-welded to a metal surface in a single, faster operation while also containing welding residue (Compl. ¶¶ 23, 25; ’314 Patent, col. 4:1-17, Fig. 2).
- Technical Importance: This approach seeks to streamline the large-scale installation of refractory anchors by creating a single, integrated unit that is more suitable for rapid, semi-automated welding processes compared to multi-step, manual methods (Compl. ¶23; ’314 Patent, col. 2:55-61).
Key Claims at a Glance
- The complaint asserts at least Independent Claim 1 (Compl. ¶¶ 25, 111, 118).
- Essential elements of Independent Claim 1 include:
- An anchoring assembly comprising an elongated mounting pin and a ferrule at a first end of the pin.
- The assembly further comprises a plurality of spaced anchor fins connected to the pin at a second end.
- The ferrule has an enclosed or partially enclosed cylindrical shape to contain mounting residue.
- The ferrule comprises a radially outwardly extending "place holder part" with a protrusion.
- The place holder part is "removably received within a ferrule holder" during the welding process.
U.S. Patent No. 10,961,712 - "An Anchoring Assembly For Anchoring A Liner Of A Cured Lining Material, A Ferrule Suitable For Use With The Anchoring Assembly, An Anchoring Mounting Assembly Further Comprising A Ferrule Holder And The Use Of The Anchoring Assembly"
(Issued March 30, 2021; Compl. ¶28)
The Invention Explained
- Problem Addressed: As with its parent '314 Patent, this patent addresses the time-consuming nature of prior art anchor installation. It specifically focuses on the challenges of containing welding residue and stabilizing the anchor assembly during the stud welding process (Compl. ¶¶ 34-35; ’712 Patent, col. 2:6-16).
- The Patented Solution: The invention is a ferrule with a specific geometry designed to improve the welding process. It consists of an "annulus" (ring) that fits around the mounting pin and an "arm" that extends radially outward. This arm serves as a "place holder part" and features a "raised rim" that a "female holder" (part of the welding tool) can engage to stabilize and secure the entire assembly during welding (Compl. ¶40; ’712 Patent, col. 4:36-47). The complaint includes photographs of welding residue that such a ferrule is designed to contain (Compl. ¶38).
- Technical Importance: This ferrule design provides a defined, stable mechanical interface between the consumable ferrule and the welding equipment, which can enhance alignment and the quality of the weld in high-speed applications (Compl. ¶37; ’712 Patent, col. 4:18-27).
Key Claims at a Glance
- The complaint asserts at least Independent Claim 1 (Compl. ¶¶ 40, 112, 145).
- Essential elements of Independent Claim 1 include:
- A ferrule comprising an "annulus" and an "arm" connected to the annulus's outer diameter.
- The arm has a "raised rim" on its upper surface.
- A "female holder" can "removably engage" the rim for holding the arm.
- The annulus is configured to enclose a portion of the mounting pin to contain welding residue.
- The arm is configured as a "place holder part" arranged to "removably receive a ferrule holder part" that stabilizes and secures the ferrule during welding.
U.S. Patent No. 11,428,007 - "Anchoring Assembly For Anchoring A Liner Of A Cured Lining Material..."
(Issued August 30, 2022; Compl. ¶43)
- Technology Synopsis: As a continuation of the '712 Patent, this patent also discloses a specially configured ferrule for use in stud welding refractory anchors (Compl. ¶¶ 44, 48). The ferrule is designed to manage unwanted molten metal residue from the welding process and includes an annulus to fit around the mounting pin and an arm with a raised rim for engagement with a ferrule holder (Compl. ¶¶ 49, 51).
- Asserted Claims: At least Independent Claim 1 is asserted (Compl. ¶¶ 51, 113, 172).
- Accused Features: The "Accused Ferrule" is alleged to infringe, either alone or when used with the Accused Refractory Anchors and Accused Welding Services (Compl. ¶172).
U.S. Design Patent No. D947,009 - "Ferrule"
(Issued March 29, 2022; Compl. ¶53)
- Technology Synopsis: This patent claims the ornamental design for a ferrule. The claimed design consists of a ring-shaped body with an integral, offset arm or tab that has a specific profile and surface configuration (Compl. ¶¶ 58-59).
- Asserted Claims: The single claim for the ornamental design for a ferrule "as shown and described" (Compl. ¶58).
- Accused Features: The "Accused Ferrules" are alleged to be an infringement of the patented design (Compl. ¶¶ 114, 200). A photograph of the Accused Ferrule is provided in the complaint (Compl. ¶94).
III. The Accused Instrumentality
Product Identification
- The complaint collectively refers to the "Accused Product," which comprises three categories of instrumentalities: (1) the "Accused Welding Service," identified as BrandTech™ Precision Welding; (2) the "Accused Refractory Anchors," including product lines such as Quik-X™, K-Bar, and Quik-X Pro™; and (3) the "Accused Ferrule" (Compl. ¶¶ 1, 82, 87, 94).
Functionality and Market Context
- The Accused Welding Service is described as a "computer-driven stud-welding technology" for attaching refractory anchors (Compl. ¶86). A screenshot from Defendants' website advertises this service (Compl. ¶82). The Accused Refractory Anchors, depicted in images from promotional materials, are used with this service and are also offered for separate sale (Compl. ¶¶ 87, 90). The Accused Ferrule, which Plaintiff allegedly purchased and photographed, is used in conjunction with the anchors and welding service to contain welding residue and is also sold as a standalone product (Compl. ¶¶ 93-95). The complaint alleges the parties are direct competitors and that Defendants market these products based on speed and efficiency, claiming the welding technology "uses 81% less labor" (Compl. ¶¶ 72, 82).
IV. Analysis of Infringement Allegations
'314 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An anchoring assembly comprising an elongated mounting pin and a ferrule provided at a first end of the elongated mounting pin, | The Accused Refractory Anchors have an elongated mounting pin and are sold for use with the Accused Ferrule, which is placed at the welding end of the pin. | ¶¶89, 93, 130 | col. 4:5-8 |
| the anchoring assembly further comprising a plurality of spaced anchor fins connected to the elongated mounting pin at a second end and extending radially outwardly relative to the elongated mounting pin, | The Accused Refractory Anchors are shown with at least two spaced anchor fins extending outwardly from the mounting pin. | ¶89 | col. 4:9-13 |
| wherein the ferrule has an enclosed or partially enclosed cylindrical shape that is configured to contain mounting residue within the ferrule during the welding process, | The Accused Ferrule is used during the Accused Welding Service to contain welding residue. | ¶93 | col. 7:27-30 |
| the ferrule comprising a radially outwardly extending place holder part having a protrusion arranged thereon that is removably received within a ferrule holder during the welding process... | The Accused Ferrule has a radially extending arm which is allegedly received by the welding gun (ferrule holder) used in the Accused Welding Service. | ¶¶86, 94 | col. 7:31-35 |
'712 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A ferrule... comprising: an annulus having an inner and outer diameter and an arm having a first end that is directly connected to the outer diameter of the annulus... | The Accused Ferrule, as depicted in a photograph, is comprised of a ring-like part (annulus) and an arm extending from its outer diameter. | ¶94 | col. 10:1-4 |
| the arm having a raised rim extending away from an upper surface of the arm to which a female holder can removably engage for holding the arm, | The arm of the Accused Ferrule has a raised feature allegedly for engagement by a welding gun ("female holder"). | ¶¶86, 94 | col. 10:30-33 |
| a first end of the annulus is configured to circumferentially engage and enclose or partially enclose a portion of the elongated mounted pin to contain and/or hold mounting residue... | The annulus of the Accused Ferrule is used to fit around the mounting pin of an Accused Refractory Anchor and contain welding residue. | ¶¶93, 94 | col. 4:18-21 |
| the arm is configured as a place holder part... arranged to removably receive a ferrule holder part... that stabilizes and secures the ferrule during a welding mounting process... | The arm on the Accused Ferrule is allegedly used to stabilize the assembly by engaging with the welding tool ("ferrule holder") during the Accused Welding Service. | ¶¶86, 94 | col. 4:36-47 |
- Identified Points of Contention:
- Scope Questions: A central question for the '314 Patent is whether the combination of the separately offered "Accused Refractory Anchors" and "Accused Ferrules" constitutes an "anchoring assembly" under the claim, or if the claim requires a single, pre-combined unit. The complaint's theory of joint enterprise and inducement directly addresses this potential issue (Compl. ¶¶ 109, 130).
- Technical Questions: A factual question for both patents will be whether the welding tool used in Defendants' "BrandTech™ Precision Welding" service functions as the claimed "ferrule holder" or "female holder." The analysis will focus on the specific mechanical interaction between the tool and the "arm" of the Accused Ferrule to determine if it is "removably received" ('314 Patent) or "removably engaged" ('712 Patent) in the manner required by the claims.
V. Key Claim Terms for Construction
The Term: "anchoring assembly" ('314 Patent, Claim 1)
Context and Importance: This term is critical because Defendants are alleged to sell the anchor and ferrule components separately, though for combined use (Compl. ¶¶ 90, 95). The construction of "assembly" will determine whether selling these components, which are then used together by a customer or by Defendants' own service, constitutes direct infringement of the apparatus claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the assembly's function at the moment of use, stating the ferrule is held by a holder "during mounting" ('314 Patent, col. 4:15-17). This may support an interpretation where the components form the "assembly" at the point of use, not necessarily at the point of sale.
- Evidence for a Narrower Interpretation: The claim preamble recites an "anchoring assembly comprising" the pin and the ferrule, and figures like Fig. 2 depict them as an integrated unit (11) ('314 Patent). This could support an argument that the term requires the components to be supplied or joined together as a single unit prior to the infringing act.
The Term: "ferrule holder" ('314 Patent) / "female holder" ('712 Patent)
Context and Importance: Infringement depends on the tool used in the "Accused Welding Service" meeting the definition of these terms (Compl. ¶86). The dispute will likely center on the specific nature of the mechanical interface between the accused welding gun and the Accused Ferrule.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patents describe the holder functionally as a device "arranged for holding the ferrule" ('314 Patent, col. 8:12) via its "place holder part." This functional language may support construing the term to cover any tool that performs this holding and stabilizing function, regardless of its specific form.
- Evidence for a Narrower Interpretation: The specification shows a specific embodiment of a "ferrule holder" (12) with a corresponding opening (33) to receive the ferrule's place holder part ('314 Patent, Fig. 3). The term "female holder" in the '712 Patent may further imply a specific receptive geometry. Defendants could argue their tool operates differently and does not "receive" or "engage" the ferrule in the specific manner disclosed.
VI. Other Allegations
- Indirect Infringement: The complaint pleads inducement and contributory infringement for all utility patents. The inducement allegations are based on Defendants' marketing, sales, and instructions that allegedly encourage customers to combine the Accused Anchors and Ferrules in an infringing manner (Compl. ¶¶ 130, 157, 184). The complaint also alleges a theory of intra-company inducement between the different defendant entities (Compl. ¶¶ 131-133). Contributory infringement is based on the allegation that the components are a material part of the invention, are especially adapted for infringing use, and lack substantial non-infringing uses when combined (Compl. ¶¶ 139, 166, 193).
- Willful Infringement: The complaint alleges willful infringement for all four patents-in-suit. The allegations are primarily based on pre-suit knowledge stemming from a March 2019 letter in which Defendants allegedly sought a license to the '314 Patent, and subsequent correspondence where Defendants allegedly stated they would be "monitoring" Plaintiff's patent activity (Compl. ¶¶ 75, 79, 120). This is alleged to establish knowledge of the entire patent family as each patent issued (Compl. ¶¶ 147, 174, 202).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central legal issue will be one of joint liability: can Plaintiff prove that the three separate defendant entities operate as a "single business enterprise" such that the actions of one (e.g., performing the welding service) can be combined with the actions of another (e.g., manufacturing the ferrule) to satisfy all limitations of the asserted claims? This will be critical to establishing direct infringement.
- A key question for claim construction will be the scope of the assembly: does the claimed "anchoring assembly" require the ferrule and finned pin to be a single, pre-combined unit at the time of sale, or can the claim be met when the components are sold separately but intended for immediate combination and use?
- A dispositive evidentiary question will be one of technical operation: does the welding tool used in Defendants' "Accused Welding Service" interact with the "Accused Ferrule" in a way that meets the specific "removably received" and "removably engage" limitations of the "ferrule holder" and "female holder" elements in the claims? The visual evidence of the accused ferrule's design will be a focal point of this analysis.