DCT
1:20-cv-00692
Golden Rule Fasteners Inc v. R
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Golden Rule Fasteners, Inc. (Alabama)
- Defendant: R.P. Lumber Co., Inc. (Illinois)
- Plaintiff’s Counsel: Wexler Wallace LLP; Heninger Garrison Davis, LLC
- Case Identification: 1:20-cv-00692, N.D. Ill., 01/30/2020
- Venue Allegations: Venue is based on Defendant being an Illinois corporation that resides in the Northern District of Illinois and maintains multiple physical retail stores within the district.
- Core Dispute: Plaintiff alleges that Defendant’s roof flashing products infringe a patent related to a flashing apparatus that can be installed around an obstructed pipe rather than over its top.
- Technical Context: The technology concerns specialized roof flashings, a component used in construction to create a weatherproof seal where pipes or vents protrude through a roof.
- Key Procedural History: The complaint notes that other claims of the patent-in-suit, as well as claims from two related patents, are subject to post-grant examination at the USPTO and are not being asserted at this time. An accompanying reexamination certificate for the patent-in-suit, U.S. Patent No. 8,464,475, indicates that the asserted claims (Claims 5 and 6) were subsequently canceled during this proceeding.
Case Timeline
| Date | Event |
|---|---|
| 2009-10-23 | ’475 Patent Priority Date |
| 2013-06-18 | ’475 Patent Issue Date |
| 2019-02-04 | Reexamination of ’475 Patent Requested |
| 2020-01-30 | Complaint Filing Date |
| 2021-09-07 | ’475 Patent Reexamination Certificate Issued (Claims 1-7 Canceled) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,464,475 - "PIPE FLASHING APPARATUS AND METHOD," issued June 18, 2013
The Invention Explained
- Problem Addressed: The patent addresses the difficulty of installing conventional roof flashings, which must be slid down over the top of a pipe. This method is not possible for pipes that have obstructions, such as an electrical mast with a weatherhead and protruding wires ('475 Patent, col. 3:11-23).
- The Patented Solution: The invention is a roof flashing with a "longitudinal opening" that extends its entire length, from the apex of its cone-shaped collar down to the edge of its flat base, or "foot" ('475 Patent, col. 2:64-67). This split design allows the flashing to be wrapped around the side of an obstructed pipe and then sealed along the opening, typically with clips, creating a weatherproof barrier without needing to clear the top of the pipe ('475 Patent, col. 3:1-10; Fig. 1).
- Technical Importance: This design provides a method for weatherproofing obstructed roof penetrations, a common challenge in residential and commercial construction, particularly for electrical service entrances.
Key Claims at a Glance
- The complaint asserts independent Claim 5 and dependent Claim 6 (Compl. ¶18). However, the Ex Parte Reexamination Certificate (US 8,464,475 C1) indicates that original Claims 1-7, including those asserted, were canceled. The complaint was filed while the reexamination was pending.
- The asserted (but now canceled) independent claim depends on canceled Claim 1. The key elements of canceled Claim 1 are:
- A roof flashing comprising a collar, a base, and a foot.
- A longitudinal opening extending from the apex of the collar to an edge of the foot.
- The opening having edges that can be pulled apart to increase the opening's width.
- This feature enables the flashing "to be installable around a pipe which is not capable of receiving the roof flashing over a top thereof."
- Canceled Claim 5 adds the limitation that "at least one of the collar, the base, and the foot includes a reinforcement material."
- The complaint reserves the right to assert additional claims upon completion of the post-grant examination (Compl. ¶18, fn. 1).
III. The Accused Instrumentality
Product Identification
The accused product is the "Electrical Mast Connection Master Flash (EMC)" (Compl. ¶6).
Functionality and Market Context
The complaint alleges the EMC is a roof flashing product designed to "form a weather-proof seal about pipes of different diameters where installation of the flashing over the top of the pipe is not possible" (Compl. ¶18). The product is allegedly made of an elastomeric material (EPDM) and includes a "foot associated with a reinforced material, such as metal" (Compl. ¶18). The complaint alleges these products are sold at Defendant's retail locations (Compl. ¶18).
IV. Analysis of Infringement Allegations
The complaint's infringement theory is presented narratively rather than in a claim chart. The following table maps the complaint's allegations against the elements of canceled Claim 1, upon which asserted Claim 5 depends.
’475 Patent Infringement Allegations
| Claim Element (from Canceled Independent Claim 1 and Asserted Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a roof flashing comprising: a collar... a base... a foot... | The Accused Product is a "roof flashing product" with a "foot." | ¶18 | col. 4:51-56 |
| a longitudinal opening extending from the apex of the collar to an edge of the foot... to enable the roof flashing to be installable around a pipe which is not capable of receiving the roof flashing over a top thereof. | The Accused Product is for use "where installation of the flashing over the top of the pipe is not possible." | ¶18 | col. 5:6-10 |
| [at least one of the collar, the base, and the foot] includes a reinforcement material (from Claim 5) | "Defendant’s Accused Products have a foot associated with a reinforced material, such as metal." | ¶18 | col. 5:11-14 |
Identified Points of Contention
- Claim Viability: The most significant issue is that the complaint asserts claims that were subsequently canceled during reexamination. The viability of the lawsuit may depend on whether the Plaintiff is permitted to amend its complaint to assert the surviving, amended claims (e.g., amended Claim 8).
- Scope Questions: Should the case proceed on amended claims, a central question will be whether the Accused Product meets the new limitations added during reexamination. For example, amended Claim 8 adds limitations regarding a differential height in the base and the foot's configuration on a pitched roof ('475 Patent C1, col. 2:4-14), for which the current complaint provides no factual allegations.
- Technical Questions: The complaint is structurally sparse, alleging only a "foot." A potential dispute could arise over whether the EMC product's architecture actually contains the distinct "collar" and "base" structures as recited in the patent's claims.
V. Key Claim Terms for Construction
The Term
"installable around a pipe which is not capable of receiving the roof flashing over a top thereof"
Context and Importance
This phrase captures the core purpose of the invention and is the primary feature distinguishing it from conventional flashings. The infringement analysis for any asserted claim will likely depend on whether the accused product is designed and marketed for this specific installation scenario.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification provides examples such as "an electrical pipe that has wires that extend therefrom" or a pipe with "a hood or weatherhead" ('475 Patent, col. 3:14-20). A party could argue this language supports a broad reading covering any obstruction that prevents top-down installation.
- Evidence for a Narrower Interpretation: A party could argue that the term implies a design specifically optimized for such situations, rather than a general-purpose split flashing that could be used in any context. The consistent focus in the background on the problem of obstructed pipes could be used to argue for a narrower construction tied to solving that specific problem ('475 Patent, col. 1:21-36).
VI. Other Allegations
Indirect Infringement
The complaint alleges that Defendant induces infringement by providing "information brochures, promotional material, and contact information," as well as "design services to select, deploy and integrate" the products, which allegedly instruct customers on infringing uses (Compl. ¶19).
Willful Infringement
Willfulness is alleged based on knowledge of the patent "as early as the date of service of the Original Complaint" (Compl. ¶19). This allegation appears to be directed at potential post-filing conduct rather than pre-suit willfulness.
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue for the court will be one of procedural viability: Given that the complaint's asserted claims (5 and 6) were canceled during a reexamination that was pending at the time of filing, can the case proceed? This raises the question of whether Plaintiff will be required to amend its complaint to allege infringement of the surviving, amended claims.
- Assuming the case moves forward on amended claims, a central evidentiary question will be one of matching new limitations: Does the accused "Electrical Mast Connection Master Flash" product possess the specific structural and dimensional features added to the claims during reexamination (e.g., the differential base height recited in amended Claim 8), for which the current complaint provides no factual support?
- Finally, the case may turn on a question of definitional scope: Irrespective of which claims are asserted, a core issue will be whether the accused product's structure can be mapped to the patent’s "collar, base, and foot" architecture, or if there is a fundamental difference in its construction that places it outside the scope of the claims.