DCT
3:18-cv-03236
Permanent Post Systems LLC v. SWS Innovations LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Permanent Post Systems, LLC (Washington)
- Defendant: SWS Innovations, LLC (Illinois); WILDWOOD IVY, INC., d/b/a Strong Way Systems (Illinois)
- Plaintiff’s Counsel: HeplerBroom, LLC; Lee & Hayes, PLLC
- Case Identification: 3:18-cv-03236, C.D. Ill., 09/17/2018
- Venue Allegations: Venue is alleged to be proper in the Central District of Illinois because both defendants are Illinois companies that reside and maintain principal places of business within the district. The complaint also alleges that defendants make, use, sell, or import the accused products within the district and have a regular and established place of business there.
- Core Dispute: Plaintiff alleges that Defendants’ "Strong Way Column" foundation systems infringe patents related to adjustable structural support apparatuses for post-frame buildings and methods of their installation.
- Technical Context: The technology concerns foundation hardware for post-frame construction, designed to provide a durable, adjustable alternative to traditional methods like burying wooden posts, which can be prone to rot and difficult to set at a precise height.
- Key Procedural History: The complaint alleges that Plaintiff’s counsel provided Defendants with notice of the asserted patents and their alleged infringement on June 13, 2018, and sent a follow-up communication on August 22, 2018. This pre-suit notice forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2015-01-30 | Priority Date for ’052 and ’297 Patents |
| 2016-06-14 | ’052 Patent Issued |
| 2017-06-13 | ’297 Patent Issued |
| 2018-06-13 | Plaintiff provides pre-suit notice of infringement to Defendants |
| 2018-07-28 | Defendant Strong Way posts updated product schematic |
| 2018-08-22 | Plaintiff sends follow-up infringement notice |
| 2018-09-17 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,366,052 - Structural Support Apparatus and Method of Installation Thereof, issued June 14, 2016
The Invention Explained
- Problem Addressed: The patent’s background section describes the difficulties in traditional post-frame construction, where burying wooden posts can lead to rot and decay, and accurately setting the height of each post is a "time-consuming and difficult" process (’052 Patent, col. 1:19-39).
- The Patented Solution: The invention is a structural support apparatus designed to simplify construction and improve durability. It consists of a metal bracket with two vertical straps that hold a structural column. This bracket is anchored in the ground and features a height adjustment system, such as a threaded bar, that allows installers to precisely adjust the final height of the column without repeatedly removing the apparatus to add or remove material underneath it (’052 Patent, Abstract; col. 2:40-52).
- Technical Importance: This design allows for faster, more accurate on-site height adjustments and isolates the structural column (e.g., wood) from direct ground contact, thereby preventing rot and increasing the longevity of the building (’052 Patent, col. 1:19-22; col. 2:40-52).
Key Claims at a Glance
- The complaint asserts infringement of independent claim 8 (Compl. ¶18).
- The essential elements of independent claim 8 include:
- An apparatus with a pair of straps facing each other.
- One or more connection members, including a "support column rest" and a "base portion," that anchor the straps at a fixed distance to accommodate a structural column.
- A height adjustment system with at least one bar extending through the base portion and a "lift assist component" that engages the bar to make the apparatus's height adjustable.
- The straps include through-holes above the support column rest for attaching the structural column.
- The support column rest is spaced apart from the base portion, with the bar extending into that space.
- The complaint reserves the right to assert other claims (Compl. ¶18).
U.S. Patent No. 9,677,297 - Method of Installation of a Structural Support Apparatus, issued June 13, 2017
The Invention Explained
- Problem Addressed: As a divisional of the application leading to the ’052 Patent, this patent addresses the same problem of inefficient and laborious height adjustment for posts in building construction (’297 Patent, col. 1:15-49).
- The Patented Solution: This patent claims the method of installing a structural support apparatus. The claimed method comprises the steps of placing the support member (which has the structural features of the ’052 Patent’s apparatus) on a ground surface and then "adjusting a height of the support member by engaging the lift assist component with the bar" (’297 Patent, Abstract; col. 8:1-21).
- Technical Importance: By claiming the installation method, the patent provides a means of enforcement against the act of using the apparatus in an infringing way, which complements the apparatus claims of the parent ’052 Patent (’297 Patent, Fig. 12).
Key Claims at a Glance
- The complaint asserts infringement of independent claim 1 (Compl. ¶31).
- The essential elements of independent claim 1 include:
- A method comprising placing a specific type of support member on a ground surface.
- The support member itself must include a pair of straps, connection members (including a support column rest and base portion), and a height adjustment system (including a bar and lift assist component).
- The method concludes with the step of adjusting the support member's height by engaging the lift assist component with the bar.
- The complaint reserves the right to assert other claims (Compl. ¶31).
III. The Accused Instrumentality
- Product Identification: The "Strong Way Column" foundation system (Compl. ¶18).
- Functionality and Market Context: The Strong Way Column is a foundation system for post-frame buildings, alleged to comprise a steel bracket with a height adjustment mechanism (Compl. ¶¶18, 21). The complaint alleges that Defendants manufacture, use, and sell these products to builders and installers (Compl. ¶26). An annotated diagram from the accused product's engineering report shows a steel bracket with two vertical straps, cross members, and a rebar cage for embedding in concrete (Compl. ¶20, p. 6). A separate diagram from the product's installation manual details the height adjustment mechanism, which features a "Threaded Rod" and a nut (Compl. ¶21, p. 8).
IV. Analysis of Infringement Allegations
’052 Patent Infringement Allegations
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a pair of straps facing each other | The Accused Product is an apparatus comprising a pair of straps facing each other. | ¶20 | col. 8:8 |
| one or more connection members disposed between the straps and anchoring the straps at a fixed distance from each other to accommodate a structural support column therebetween...including a support column rest and a base portion | The Accused Product has connection members, including a support column rest and a base portion, that anchor the straps to accommodate a structural column. | ¶20 | col. 8:10-15 |
| a height adjustment system including at least one bar disposed so as to extend through the base portion into a space between the straps...and a lift assist component that engages with the bar... | The Accused Product’s "height adjustment system" includes a "Threaded Rod" (the bar) and a "threaded surface shaped around the rod" (the lift assist component) that allows for height adjustment. | ¶¶21-23 | col. 8:16-27 |
| the pair of straps include through holes extending through respective upper ends thereof at a position above the support column rest and on an end opposite the base portion | The straps of the Accused Product include "Pre-Designed fastener holes" located above the support column rest for connecting a column. The annotated detail image shows these holes (Compl. ¶24, p. 10). | ¶24 | col. 8:28-32 |
| the support column rest is spaced apart from the base portion by the space between the straps into which the at least one bar extends | In the Accused Product, the support column rest is positioned above the base portion, creating a space into which the "Threaded Rod" extends. An annotated diagram illustrates this spatial relationship (Compl. ¶25, p. 10). | ¶25 | col. 8:33-36 |
’297 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of installing a support member, comprising: placing the support member on a ground surface... | Defendants' installation manuals and promotional videos allegedly show users placing the "Strong Way Column" on a ground surface within an excavated hole. The complaint provides photographs from an installation manual showing the product being placed in the ground (Compl. ¶32, p. 13). | ¶32 | col. 8:3-4 |
| the support member including a pair of straps facing each other, one or more connection members...including a support column rest and a base portion, and a height adjustment system including at least one bar...and a lift assist component... | The complaint alleges the Accused Product includes the recited structural features, cross-referencing the same evidence used for the ’052 Patent analysis. This includes the pair of straps, support column rest, base portion, and a height adjustment system with a "Threaded Rod" (bar) and engaging component. | ¶¶33-36 | col. 7:16-33 |
| adjusting a height of the support member by engaging the lift assist component with the bar. | The complaint alleges that users adjust the height of the Strong Way Column by engaging the lift assist component with the bar. It cites a YouTube video where Defendants' president demonstrates turning the "Threaded Rod" with an impact gun to "go up and down," thereby adjusting the column's height vertically. | ¶¶37, 23 | col. 8:19-21 |
- Identified Points of Contention:
- Scope Questions: A central question may be the precise scope of the term "lift assist component." The complaint identifies the "threaded surface" of the rod as this component (Compl. ¶22), while product diagrams show a "15/16" Nut on Threaded Rod" (Compl. p. 8). The court may need to determine whether the claim covers a rod/nut combination, and if so, whether the "component" is the nut, the rod's surface, or the combination.
- Technical Questions: Claim 8 of the ’052 Patent requires the bar to extend "through the base portion into a space between the straps." Claim 1 of the ’297 Patent more broadly requires the bar to be "disposed adjacent to at least one of the straps." The complaint provides evidence that the accused product meets the narrower "between the straps" limitation (Compl. ¶21, p. 8). A question for the court will be whether the evidence demonstrates that the accused "Threaded Rod" and its engagement with the nut function in the manner claimed by the patents.
V. Key Claim Terms for Construction
The Term: "lift assist component"
- Context and Importance: This term is at the core of the adjustable height feature. Its construction will be critical for determining infringement, as the specific mechanism of the Accused Product (a threaded rod and nut) must fall within its scope. Practitioners may focus on this term because the patent discloses multiple different embodiments for this function, while the complaint's allegation focuses on a specific interpretation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes multiple examples of a "lift assist component," including a threaded surface on the base plate itself (’052 Patent, col. 3:23-26), a compression sleeve (’052 Patent, col. 5:21-23), a set screw and collar (’052 Patent, col. 5:30-45), and hinged wedge members (’052 Patent, col. 5:49-64). This variety may support a broad functional interpretation of a component that "engages with the bar" to enable adjustment.
- Evidence for a Narrower Interpretation: Specific embodiments, such as Figure 2, explicitly show a "threaded nut 202" as a distinct element from the bar (’052 Patent, col. 4:4-7). A party could argue that when a nut is used, the nut itself is the "lift assist component," and the claims should be interpreted in light of these distinct disclosed parts.
The Term: "support column rest"
- Context and Importance: This term defines the structural element that directly bears the load of the building's column. Its identity and location relative to the base portion and height adjustment system are fundamental to the claimed apparatus.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification functionally describes this element as a "connection member" that connects the straps and is "spaced apart from the base portion" (’052 Patent, col. 7:27-30). Claim 8 itself defines it as one of the "one or more connection members" (’052 Patent, col. 8:10-15), which could support an interpretation covering any suitable connecting plate.
- Evidence for a Narrower Interpretation: The detailed description refers to a specific embodiment where the rest is a "capped tube" (126) (’052 Patent, col. 3:14-15, Fig. 1). A party might argue that this term should be limited to the specific structures disclosed for this purpose, rather than any horizontal member.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for both patents. It asserts that Defendants encourage third parties (e.g., installers, builders) to infringe by providing the Accused Products along with instruction manuals (Compl., Ex. 4) and marketing materials (e.g., Facebook posts and YouTube videos) that direct users to install and use the products in the claimed manner (Compl. ¶¶26-27, 38-39).
- Willful Infringement: The complaint alleges willful infringement based on Defendants’ knowledge of the patents. It claims this knowledge was established no later than June 13, 2018, via direct communication from Plaintiff's counsel (Compl. ¶15). The complaint alleges that Defendants' continued infringement after receiving notice was "willful, deliberate, and in disregard of Permanent Post's patent rights" (Compl. ¶¶29, 41).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the term "lift assist component", which the patent describes through multiple distinct embodiments, be construed to read on the accused product's specific threaded rod and nut mechanism as alleged in the complaint?
- A second key issue will concern willfulness: did Defendants' continued sale of the "Strong Way Column"—and particularly their decision to post an "updated schematic" of the product after receiving pre-suit notice of infringement—rise to the level of objective recklessness required to support a finding of willful infringement and potential enhanced damages?
- Finally, a central evidentiary question will be one of induced infringement: does the evidence, including installation manuals and promotional videos, demonstrate that Defendants possessed the specific intent to encourage their customers to perform each step of the patented installation method claimed in the ’297 Patent?