DCT
4:22-cv-00307
TB Holding Co LLC v. J&S Siding
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: TB Holding Company LLC (Colorado)
- Defendant: J&S Siding (Idaho)
- Plaintiff’s Counsel: Holland & Hart LLP; Practus, LLP
- Case Identification: 1:22-cv-00307, D. Idaho, 06/25/2024
- Venue Allegations: Venue is alleged to be proper in the District of Idaho because the Defendant is an Idaho liability company with a principal place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant's metal simulated log siding panels, and the apparatus used to manufacture them, infringe two utility patents and one design patent directed to creating siding with a more realistic, "hewn" appearance.
- Technical Context: The technology relates to manufacturing methods and designs for metal siding panels used in building construction, specifically aiming to simulate the non-uniform appearance of hand-hewn wooden logs.
- Key Procedural History: The complaint alleges a prior business relationship wherein Plaintiff sold siding components to Defendant around 2009. It further alleges that around 2015, Defendant procured "pirated" copies of these components to manufacture infringing products. Plaintiff claims to have sent letters to Defendant in 2018 providing notice of the '604 and '529 patents and also alleges that components sold in 2009 were marked with the 'D602 design patent number.
Case Timeline
| Date | Event |
|---|---|
| 2008-12-05 | Priority Date for '604, '529, and D'602 Patents |
| 2009-10-20 | U.S. Design Patent D602,612 Issued |
| 2009-01-01 | (Approx.) Plaintiff sells components to Defendant |
| 2015-01-01 | (Approx.) Defendant allegedly procures "pirated" copies of components |
| 2016-03-15 | U.S. Patent 9,283,604 Issued |
| 2017-08-15 | U.S. Patent 9,732,529 Issued |
| 2018-01-01 | (Approx.) Plaintiff sends notice letters for '604 and '529 Patents |
| 2022-06-03 | Date of Google search showing advertisement for Defendant's panels |
| 2024-06-25 | Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent 9,283,604 - "Metal Simulated Log Siding Panel with Hew Lines and Method of Making and Using Same"
- Patent Identification: U.S. Patent 9,283,604, "Metal Simulated Log Siding Panel with Hew Lines and Method of Making and Using Same," issued March 15, 2016.
- The Invention Explained:
- Problem Addressed: The patent's background describes prior art metal simulated log siding as appearing artificial due to its "uniform cylindrical shape" and "monotony," which embossing with a wood-grain texture fails to overcome ('604 Patent, col. 2:6-18).
- The Patented Solution: The invention is an apparatus (and an attachment for an existing apparatus) that creates a more realistic log appearance by forming permanent, non-uniform bends into the metal panel. This is achieved by passing a pre-formed panel between rotating circular disks and associated elastomeric rollers; the disks compress the metal into the softer rollers, inducing bends that "simulate a hew line" and break up the panel's uniform curvature ('604 Patent, Abstract; col. 4:26-47).
- Technical Importance: The invention provided a method for mass-producing metal siding that better replicates the irregular, non-uniform aesthetic of hand-hewn logs, a key differentiator in the building materials market ('604 Patent, col. 2:36-44).
- Key Claims at a Glance:
- The complaint asserts independent claims 1 (a "log forming attachment") and 14 (an "apparatus for creating" the panel) (Compl. ¶¶26, 74).
- Independent Claim 1 recites the core elements:
- A log forming attachment for connection to a conventional seamless siding forming machine.
- A plurality of circular disks to contact one side of a panel configuration.
- A plurality of circular elastomeric rollers to contact the other side.
- An association and positioning of each disk with a roller to receive the panel.
- A relative separation that causes the panel to be compressed into the roller by the disk.
- This compression induces a permanent bend that "simulates a hew line."
- Independent Claim 14 recites a full apparatus including the seamless siding machine itself, followed by the same disk and roller limitations as Claim 1. The complaint reserves the right to assert other claims (Compl. ¶¶15-16).
U.S. Patent 9,732,529 - "Simulated Log Siding Panel with Hew Lines"
- Patent Identification: U.S. Patent 9,732,529, "Simulated Log Siding Panel with Hew Lines," issued August 15, 2017.
- The Invention Explained:
- Problem Addressed: As with the '604 patent, the technology aims to solve the problem of prior art simulated log siding appearing unrealistic and artificial due to its repetitive, uniform shape ('529 Patent, col. 2:10-20).
- The Patented Solution: This patent claims the panel itself. The panel has an intermediate portion with a plurality of "longitudinally extending and transversely spaced permanent bends" that simulate hew lines. Critically, the transverse position of these bends varies relative to the panel's margins and relative to one another, creating the desired non-uniform appearance ('529 Patent, Abstract; col. 2:50-55).
- Technical Importance: The patent protects the final product—a siding panel with a more authentic, non-uniform appearance that better mimics natural wood logs, thereby enhancing the aesthetic value of buildings using such siding ('529 Patent, col. 1:5-11).
- Key Claims at a Glance:
- The complaint asserts independent claim 1 (Compl. ¶128).
- Independent Claim 1 recites the core elements:
- An elongated metal simulated log siding panel.
- An intermediate portion simulating a natural log with hew lines.
- A plurality of permanent bends in the intermediate portion simulating the hew lines.
- The transverse position of the bends varies relative to the margins of the intermediate portion.
- The transverse position of the bends varies relative to one another.
- Offset wall portions extending rearwardly to project the intermediate portion forward.
U.S. Design Patent D602,612 - "Metal Simulated Log Siding Panel"
- Patent Identification: U.S. Design Patent D602,612, "Metal Simulated Log Siding Panel," issued October 20, 2009.
- Technology Synopsis: The patent claims the ornamental design for a metal simulated log siding panel. The design's appearance is characterized by a curved face with multiple, non-uniform horizontal indentations ("hew lines") that break up the continuous curve, combined with an overall wood grain texture, to create the visual impression of a hewn log ('D602 Patent, FIG. 1; Compl. ¶158).
- Asserted Claims: The patent contains a single claim for "The ornamental design for an metal simulated log siding panel, as shown and described" (Compl. ¶158).
- Accused Features: The "Defendant Panels" manufactured and sold by Defendant are alleged to embody a design that is substantially the same as the one claimed in the patent, making them infringing (Compl. ¶¶176-177).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are a "second pirated attachment" and "second pirated apparatus" allegedly used by Defendant to manufacture siding, and the resulting "elongated metal simulated log siding panels" (the "Defendant Panels") that are sold to the public (Compl. ¶¶18, 124).
Functionality and Market Context
The complaint alleges that Defendant's accused apparatus is a copy of components originally provided by Plaintiff, which are attached to a conventional siding machine to produce the accused panels (Compl. ¶¶17, 20). The complaint includes several annotated photographs of a "Representative Exemplar" machine, illustrating the arrangement of disks and rollers alleged to form the hew lines (Compl. ¶31, p. 7). The resulting Defendant Panels are sold in Idaho and were allegedly advertised on Google (Compl. ¶¶124, 127). A photograph of the "Defendant Panel" installed on a building shows an elongated siding panel with a curved profile and multiple horizontal indentations intended to simulate hew lines (Compl. ¶126, p. 29).
IV. Analysis of Infringement Allegations
'604 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a log forming attachment for connection to a conventional seamless siding forming machine to create an elongated metal simulated log siding panel from a different panel configuration... | The complaint alleges Defendant's "second pirated attachment" connects to a siding machine to create simulated log siding panels. | ¶37, 42 | col. 4:26-38 |
| a plurality of circular disks located to contact one side of the panel configuration... | The pirated attachment allegedly includes a plurality of circular disks, which differ from an exemplar in contour and diameter. | ¶47 | col. 4:32-35 |
| a plurality of circular elastomeric rollers located to contact the other side of the panel configuration... | The pirated attachment allegedly includes a plurality of circular elastomeric rollers to contact the side of the panel opposite the disks. | ¶51 | col. 4:35-38 |
| each circular disk is associated with an elastomeric roller; | The complaint alleges that in the pirated attachment, each of its circular disks is associated with an elastomeric roller. | ¶54 | col. 4:39-44 |
| each disk and associated elastomeric roller having a relative separation between them which causes the delivered panel configuration to be compressed... | The pirated attachment's disks and rollers allegedly have a relative separation that causes a delivered panel to be compressed. | ¶63 | col. 4:42-45 |
| the compression of the panel configuration into the elastomeric roller induces a permanent bend... defined by the circular disk; and | In the pirated attachment, this compression allegedly induces a permanent bend in the panel configuration. | ¶69 | col. 4:45-47 |
| each induced permanent bend simulates a hew line in the simulated log siding panel. | Each bend created by the pirated attachment allegedly simulates a hew line in the resulting log panel. | ¶73 | col. 5:45-47 |
'529 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an elongated metal simulated log siding panel, comprising: | The "Defendant Panel" is identified as an elongated metal simulated log siding panel. | ¶131 | col. 2:46-51 |
| an intermediate portion of the panel that extends longitudinally... and simulates a natural construction log having hew lines; | The accused panel allegedly has an intermediate portion that extends longitudinally and simulates a log with hew lines. | ¶132 | col. 1:4-7 |
| a plurality of longitudinally extending and transversely spaced permanent bends in the intermediate portion which simulate the hew lines... | The accused panel is alleged to include a plurality of permanent bends that simulate hew lines. | ¶133 | col. 2:52-54 |
| the transverse position of the hew line-simulating bends varies relative to margins of the intermediate portion along the length of the panel; | The complaint alleges, with reference to a photo, that the transverse position of the bends on the accused panel varies relative to its margins. | ¶134 | col. 2:54-56 |
| the transverse position of the hew line-simulating bends varies relative to one another along the length of the intermediate portion of the panel; and | It is alleged that the bends on the accused panel vary in position relative to one another along the panel's length. | ¶135 | col. 2:59-62 |
| offset wall portions extending rearwardly from opposite margins...to project the intermediate portion forward and give relief... | The complaint alleges the accused panel has offset wall portions that are "hidden behind the margins" but which give relief to the intermediate portion. |
Identified Points of Contention
- Scope & Factual Questions ('604 Patent): The infringement allegations for the apparatus/method claims rely heavily on comparing the "pirated attachment" to a "Representative Exemplar" (Compl. ¶¶35, 40). The complaint concedes the accused device may have disks with "different contours" and "different diameters" (Compl. ¶35). This raises a central factual question: what is the precise structure and operation of the accused machine? The case will turn on evidence demonstrating whether this machine, with its acknowledged differences, meets every limitation of the asserted claims.
- Technical & Evidentiary Questions ('529 Patent): For the product patent, a key issue will be whether the bends on the "Defendant Panel" meet the claimed requirements of varying "relative to margins" and "relative to one another." This will require a direct factual comparison of the accused product to the claim language. Additionally, the allegation that the claimed "offset wall portions" are "hidden behind the margins" (Compl. ¶135) suggests their existence and structure may not be immediately apparent, creating a potential evidentiary hurdle for the plaintiff.
V. Key Claim Terms for Construction
Term: "simulates a hew line" ('604 Patent, Claim 1; '529 Patent, Claim 1)
- Context and Importance: This term defines the functional and aesthetic outcome of the claimed invention. Its interpretation is critical because it is not a purely structural limitation. Practitioners may focus on this term because its inherent subjectivity creates a likely area of dispute over whether the indentations on the accused product achieve the required simulation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes "hew lines" as the "marks, edges or corners" that result from stripping bark with a draw knife ('604 Patent, col. 5:39-44). This could support a reading that any permanent bend intended to break up the panel's visual uniformity meets the limitation.
- Evidence for a Narrower Interpretation: The patent repeatedly emphasizes achieving an "authentic and realistic appearance" and overcoming the "monotony" of prior art ('604 Patent, col. 2:10-12, 5:11-12). This language could support a narrower construction requiring a degree of irregularity and randomness that is visually comparable to an actual hand-hewn log, not just any series of indentations.
Term: "varies relative to margins" ('529 Patent, Claim 1)
- Context and Importance: This limitation, along with "varies relative to one another," quantifies the non-uniformity that is a core inventive concept. The infringement analysis will depend on whether the accused panel's bends exhibit this specific type of geometric variation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language does not require a specific degree or pattern of variation. A party could argue that any deviation from being perfectly parallel to the panel's top and bottom edges meets this limitation, supported by specification language about the "random-appearing nature" of the bends ('529 Patent, col. 5:50-52).
- Evidence for a Narrower Interpretation: The stated goal is to avoid the "repetitious identical cylindrical shapes" of prior art ('529 Patent, col. 2:17-20). A defendant could argue this requires a substantial and visually apparent variation, as depicted in the patent's figures (e.g., '529 Patent, FIG. 1), rather than minor, incidental, or regularly-patterned variations that might otherwise occur.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain specific allegations of induced or contributory infringement. The claims focus on direct infringement by Defendant for making, using, and selling the accused apparatus and panels.
- Willful Infringement: The complaint alleges willful infringement for all three patents. For the '604 and '529 patents, willfulness is based on Defendant's alleged continuation of infringing activity after receiving notice letters from Plaintiff in 2018 that enclosed copies of the patents (Compl. ¶¶113, 144). For the 'D602 patent, willfulness is alleged to date back to 2009, based on the claim that components Plaintiff provided to Defendant were marked with the design patent number (Compl. ¶179).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of evidence and fact-finding: For the '604 patent, the case will depend on evidence establishing the precise structure and function of the Defendant's "pirated" manufacturing apparatus. Given the complaint's reliance on a "Representative Exemplar" while acknowledging potential differences, the degree of similarity between the accused machine and the claims will be a central point of dispute.
- A second issue will be one of definitional scope: For the '529 and 'D602 patents, the outcome will likely turn on how broadly the court construes aesthetic and functional terms like "simulates a hew line" and the requirement that bends "vary" relative to the panel's margins. The key question is whether the specific indentations on the Defendant's panels fall within the scope of these terms and the claimed overall design.
- A final key question will address the defendant's state of mind: The complaint alleges a long history between the parties, including an initial business relationship, subsequent "pirating" of technology, and multiple instances of pre-suit notice. The court will need to examine this entire history to determine if any infringement was willful, which could expose the defendant to the risk of enhanced damages.