DCT
1:22-cv-02175
Butech v. Braner USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Butech, Inc. d/b/a Butech Bliss (Ohio)
- Defendant: Braner USA, Inc. (Illinois)
- Plaintiff’s Counsel: Fitch, Even, Tabin & Flannery LLP
- Case Identification: 1:22-cv-02175, N.D. Ill., 04/26/2022
- Venue Allegations: Venue is alleged to be proper based on Defendant being incorporated in Illinois and maintaining a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s shimless scrap choppers, and the method of maintaining them, infringe a patent related to a shimless blade maintenance technology.
- Technical Context: The technology concerns industrial dual arbor scrap choppers, which are used to cut and process scrap metal trim in manufacturing facilities.
- Key Procedural History: The complaint alleges a prior business relationship where Defendant purchased Plaintiff’s patented choppers in 2018 and 2019. During these transactions, Plaintiff allegedly provided Defendant with detailed drawings and proposal documents that explicitly identified the patent-in-suit. The complaint also details pre-suit correspondence between the parties beginning in August 2021 regarding the alleged infringement.
Case Timeline
| Date | Event |
|---|---|
| 2004-10-25 | '271 Patent Priority Date |
| 2011-03-08 | '271 Patent Issue Date |
| 2018-01-16 | Plaintiff sells patented chopper to Defendant (first instance) |
| 2019-10-17 | Plaintiff sells patented chopper to Defendant (second instance) |
| 2021-07-01 | Plaintiff observes allegedly infringing chopper (approximate date) |
| 2021-08-18 | Plaintiff sends letter to Defendant alleging infringement |
| 2022-04-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,901,271 - Shimless Dual Arbor Scrap Chopper
- Patent Identification: U.S. Patent No. 7,901,271, Shimless Dual Arbor Scrap Chopper, issued March 8, 2011.
The Invention Explained
- Problem Addressed: The patent's background section describes that knife blades on industrial scrap choppers become dull and must be sharpened, which involves grinding material off the blade. In conventional systems, this change in blade dimension required the time-consuming installation of precisely sized "shims" to reposition the cutting edge correctly relative to the opposing blade and arbor ('271 Patent, col. 1:44-54).
- The Patented Solution: The invention is a method of maintaining chopper blades that eliminates the need for shims. It utilizes a specific blade mounting assembly where a "clamping block" secures the blade. After a blade is sharpened by grinding its face, it is reinstalled. The clamping block is simply moved laterally to compensate for the removed material, which repositions the newly sharpened cutting edge in the same location as the original edge, all "without the use of a shim" ('271 Patent, col. 5:8-16, col. 6:22-29).
- Technical Importance: This approach is designed to save significant maintenance and set-up time compared to conventional choppers that require shimming ('271 Patent, col. 5:14-16).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-3, 5, and 6 (Compl. ¶27).
- The essential elements of independent claim 1, a method claim, include:
- Providing a dual arbor chopper with a blade attached by a clamping block and fastener.
- Removing the fastener and clamping block to release a worn blade.
- Sharpening the blade by grinding at least its first face side to form a new active cutting edge.
- Attaching the blade with the fastener and clamping block, where the clamping block is positioned in a second position displaced from its first position by an amount equal to the material ground from the blade.
- Positioning the new, second active cutting edge in the same position as the first active cutting edge "without the use of a shim."
III. The Accused Instrumentality
Product Identification
- The "Infringing Shimless Chopper," a scrap chopper allegedly manufactured, sold, and installed by Defendant Braner (Compl. ¶¶21, 31).
Functionality and Market Context
- The complaint alleges the accused product is a shimless chopper that is "substantially identical" to the patented Butech choppers that Braner previously purchased (Compl. ¶22). The complaint further alleges that knife maintenance on the accused chopper would "necessarily include the steps" of claim 1 of the '271 Patent, including the use of a "BACK-UP PLATE" that is alleged to be the claimed "clamping block" (Compl. ¶¶24, 26). The complaint provides a cross-sectional diagram from the accused product's instruction manual, allegedly showing a "BACK-UP PLATE" that the plaintiff contends is the claimed "clamping block" (Compl. ¶23).
IV. Analysis of Infringement Allegations
'271 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a dual arbor chopper comprising...a clamping block... | Defendant allegedly markets, sells, and installs the "Infringing Shimless Chopper," which includes an element labeled a "BACK-UP PLATE" that is alleged to be the claimed "clamping block." | ¶¶21, 24, 32 | col. 2:11-34 |
| removing the fastener and the clamping block from each arbor to release the blade when said first active cutting edge of the blade is worn; | The complaint alleges that routine maintenance on the accused chopper "would necessarily include the steps of removing the knife...via fasteners and 'the BACK-UP PLATE' (i.e., clamping block)". | ¶26 | col. 2:48-51 |
| sharpening each blade by grinding at least the first face side of the blade to form a second active cutting edge; | The complaint alleges that maintenance on the accused chopper would necessarily include "sharpening the knife". | ¶26 | col. 5:5-7 |
| attaching the blade to the arbor with the fastener and the clamping block such that the clamping block is positioned in a second position displaced from the first position... | The complaint alleges that reattaching the blade after sharpening on the accused chopper would necessarily involve repositioning the "BACK-UP PLATE" (clamping block) to compensate for the removed material. | ¶26 | col. 5:8-16 |
| said second active cutting edge is positioned in a second cutting edge position which is the same as said first cutting edge position without the use of a shim. | The complaint identifies the accused product as a "shimless chopper" and alleges that its maintenance is performed without shims, achieving the result of the patented method. This is contrasted with Defendant's pre-suit claim that the chopper did use shims. | ¶¶21, 42 | col. 6:26-29 |
Identified Points of Contention
- Technical Questions: A primary factual dispute will be whether the accused chopper's "BACK-UP PLATE" (Compl. ¶24) performs the specific function of the claimed "clamping block" by moving laterally to compensate for blade sharpening. Another key factual question, directly raised by the pre-suit communications, is whether the accused product actually uses shims in its maintenance process, as Defendant allegedly claimed (Compl. ¶42).
- Scope Questions: The dispute raises the question of whether the term "clamping block" reads on the accused "BACK-UP PLATE." The definition of "shim" will also be central, particularly how the court distinguishes between a prohibited "shim" and a "master shim," which the patent specification explicitly states is not a "shim" for the purposes of the invention ('271 Patent, col. 5:37-41).
V. Key Claim Terms for Construction
The Term: "clamping block"
- Context and Importance: Plaintiff’s infringement theory hinges on equating the accused product's "BACK-UP PLATE" with the patent's "clamping block" (Compl. ¶24). Defendant will likely argue the two are structurally or functionally distinct. Practitioners may focus on this term because its construction will determine if the accused device contains a required element of the asserted claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent Summary describes the block functionally as "moveable toward and away from the first planar register surface to compensate for different blade widths" ('271 Patent, col. 2:5-8). This functional description could support a construction not limited to a specific structure.
- Evidence for a Narrower Interpretation: The detailed description shows a specific embodiment of the clamping block (element 18 in Fig. 9). A defendant could argue the term should be limited to the structure disclosed in that embodiment or equivalents thereof.
The Term: "without the use of a shim"
- Context and Importance: This negative limitation is at the heart of the invention and the dispute. Defendant allegedly claimed its product does use shims (Compl. ¶42), making the definition of "shim" dispositive for infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (of what constitutes a prohibited "shim"): The patent provides a specific definition: "a shim is a thickness of material used to compensate for the loss of material of a knife blade in the sharpening process" ('271 Patent, col. 5:41-43). Plaintiff will likely argue that any separate piece of material serving this function is a prohibited "shim."
- Evidence for a Narrower Interpretation (of what constitutes a prohibited "shim"): The patent explicitly carves out an exception: "The master shim is considered to be part of the register surface of the arbor, and is not a shim within the context of the '271 patent" ('271 Patent, col. 5:37-41). Defendant may argue that any compensating material it uses is analogous to a "master shim" and therefore outside the claim's prohibition.
VI. Other Allegations
Indirect Infringement
- The complaint alleges active inducement, asserting Defendant provides customers with instruction manuals and training that direct them to perform the patented maintenance method (Compl. ¶¶ 29, 31). It also alleges contributory infringement, stating the accused choppers are especially made for the infringing use and have no substantial non-infringing use (Compl. ¶¶ 33, 53).
Willful Infringement
- The willfulness allegation is based on alleged pre-suit knowledge of the '271 Patent. The complaint states that in 2018 and 2019, Plaintiff sold Defendant its own patented choppers and provided drawings and proposal documents that explicitly listed U.S. Patent No. 7,901,271 (Compl. ¶¶ 18, 48). Knowledge is also alleged based on a letter sent by Plaintiff to Defendant in August 2021 (Compl. ¶34).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of factual operation: does the accused Braner chopper’s "BACK-UP PLATE" function as the claimed "clamping block" by laterally compensating for blade sharpening, and is the maintenance performed, in practice, "without the use of a shim"? This sets up a direct conflict between the complaint’s allegations and the defendant’s reported pre-suit statements.
- The case may also turn on a question of definitional interpretation: given the patent’s explicit exclusion of a "master shim," can the defendant successfully argue that any compensating material in its product falls outside the patent’s specific definition of a prohibited "shim"?
- Finally, a key question for willfulness and enhanced damages will be one of pre-suit knowledge: can the plaintiff establish that the defendant knew of the '271 patent and its relevance as early as 2018 based on the patent markings on commercial drawings exchanged between the parties during their prior business dealings?