New Berry Inc v. Smith

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: New Berry, Inc., d/b/a Berry Metal Company (Delaware)
  • Defendant: Todd G. Smith (Pennsylvania); Allan J. MacRae (California); MacRae Technologies, Inc. (California)
  • Plaintiff’s Counsel: Clark Hill PLC
• Case Identification: 2:19-cv-00159, N.D. Ind., 05/02/2019
• Venue Allegations: Venue is based on Defendants allegedly transacting significant business in the district and because the ongoing infringement is alleged to be occurring at the U.S. Steel facility in Gary, Indiana.
• Core Dispute: Plaintiff alleges that cooling staves manufactured for a third party at Defendants' direction infringe two patents related to furnace stave design, and further alleges that Defendants misappropriated trade secrets and tortiously interfered with business relationships.
• Technical Context: The technology relates to cooling staves, which are critical components used to protect the structural walls of high-temperature metallurgical furnaces in the iron and steel industry.
• Key Procedural History: The complaint alleges that Defendant Smith, a former employee of Plaintiff Berry Metal Company (BMC), is the inventor or co-inventor of the asserted patents and was obligated to assign them to BMC. A separate lawsuit for trade secret misappropriation against Smith is noted as pending in the Western District of Pennsylvania. After this complaint was filed, both asserted patents underwent ex parte reexamination. While the asserted claims of the '076 patent were confirmed, the original claims of the '124 patent, including asserted independent claim 1, were cancelled and replaced with new claims, a development that may impact the viability of the infringement allegations against the '124 patent as currently pleaded.

Case Timeline

Date	Event
1996-07-28	Defendant Smith signs employment agreement with Plaintiff
2009-07-08	'076 Patent earliest priority date
2013-02-01	'124 Patent earliest priority date
2015-09-01	'076 Patent issue date
2017-11-16	Filing date of Defendants' '754 Patent
2017-Winter	U.S. Steel requests proposals for replacement cooling staves
2018-08-03	Plaintiff sends notice letter to Cecal regarding '124 Patent application
2019-03-05	'124 Patent issue date
2019-03	Plaintiff's employees observe accused staves at U.S. Steel facility
2019-05-02	Complaint filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,222,124 - "Stave With External Manifold"

• Issued: March 5, 2019

The Invention Explained

• Problem Addressed: The patent describes conventional cooling staves as difficult to install, requiring numerous access holes in the furnace shell for coolant piping, and being vulnerable to damage from thermal expansion and contraction at the individual pipe connections to the furnace shell (ʼ124 Patent, col. 1:26-34; col. 2:56-62).
• The Patented Solution: The invention proposes a cooling stave with an external manifold that houses the inlet and outlet ends of the internal cooling pipes. This design consolidates the connections into a single unit outside the furnace shell, which simplifies installation by reducing the number of required apertures and moves thermally sensitive connections to a more stable location ('124 Patent, Abstract; col. 3:56-65). The manifold is described as being integral with or disposed on the stave's outer housing and can use cast material to secure the pipe ends ('124 Patent, col. 13:30-35).
• Technical Importance: This approach is intended to improve the longevity and reliability of the furnace cooling system while streamlining furnace construction and maintenance ('124 Patent, col. 2:51-65).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 1 (Compl. ¶23, ¶55).
• The essential elements of independent claim 1 include:
  • A stave comprising an outer housing.
  • An inner pipe circuit with one or more pipes housed within the outer housing, each pipe having an inlet and outlet end.
  • A manifold with a manifold housing that is integral with or disposed on the outer housing.
  • Both the inlet and outlet ends of the pipes are housed by the same manifold.
  • The pipe ends are surrounded at least in part by cast material to help secure them to the manifold.
  • The manifold housing's perimeter wall extends away from the outer housing and the inner pipe circuit.
• The complaint’s general allegations of infringement of the "inventions claimed in the '124 Patent" suggest the potential assertion of other claims, including dependent claims (Compl. ¶60).

U.S. Patent No. 9,121,076 - "Stave and Brick Constructions Having Refractory Wear Monitors and in Process Thermocouples"

• Issued: September 1, 2015

The Invention Explained

• Problem Addressed: The patent identifies weaknesses in prior art methods for securing refractory bricks to cooling staves, noting that common dovetail designs have thin neck portions that are susceptible to cracking. The patent also addresses the general difficulty of monitoring the condition and wear of the furnace lining ('076 Patent, col. 2:41-48).
• The Patented Solution: The invention discloses a mechanical interlock system where a refractory brick is inserted into a channel on the stave and then rotated to lock it into place. This rotational lock is designed to be more robust than prior art linear insertion methods like dovetails ('076 Patent, Abstract). The invention also integrates "one or more wear monitors" and/or thermocouples, which are placed through or adjacent to the stave or bricks to provide data on the refractory's condition ('076 Patent, col. 4:1-10).
• Technical Importance: This technology aims to create a more durable furnace lining by improving how bricks are secured, while simultaneously enabling real-time monitoring of refractory wear to prevent catastrophic failures and optimize maintenance schedules ('076 Patent, col. 3:45-51).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 1 (Compl. ¶27, ¶57).
• The essential elements of independent claim 1 include:
  • A stave/brick construction comprising a stave with ribs and channels.
  • A plurality of bricks, where each brick is insertable into a channel and, upon rotation, becomes "locked against removal... via linear movement without first being rotated."
  • One or more wear monitors disposed through or adjacent to the stave and/or one or more of the bricks.
• The complaint's broad language suggests other claims may be asserted (Compl. ¶62).

III. The Accused Instrumentality

Product Identification

• The "Infringing Staves" are identified as cooling staves manufactured by the Brazilian company Cecal Industria e Comercio Ltda. and sold to United States Steel Corporation for its Gary Works facility (Compl. ¶47).

Functionality and Market Context

• The accused products are described as cooling staves that incorporate "center manifold technology" (Compl. ¶47, ¶61). Specifically, the complaint alleges they have a "conspicuous manifold feature having cooling pipes" (Compl. ¶56).
• The staves are also alleged to be "specifically designed to accommodate a BMC wear monitor" and to possess a "channel or orifice therethrough that was installed specifically to receive and accommodate wear monitors manufactured by BMC" (Compl. ¶58, ¶63).
• The complaint alleges the staves were manufactured by Cecal with direct assistance and inducement from the Defendants, imported into the U.S., and sold to USS, displacing Plaintiff from a potential sale (Compl. ¶47-¶48, ¶52-¶53).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’124 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a stave comprising: an outer housing;	The accused products are cooling staves for metal-making furnaces.	¶47, ¶61	col. 13:12-13
an inner pipe circuit comprising one or more individual pipes, wherein the one or more individual pipes are housed within the outer housing...	The accused staves are alleged to comprise a "manifold feature having cooling pipes that are used in the stave."	¶56	col. 13:14-19
a manifold comprising a manifold housing, wherein the manifold is integral with or disposed on or in the outer housing...	The accused staves are alleged to comprise "center manifold technology" and a "conspicuous manifold feature."	¶56, ¶61	col. 13:21-25
wherein both of the inlet end and the outlet end of each of the one or more individual pipes are disposed in or housed by the same manifold...	The complaint alleges the staves comprise "center manifold technology," which implies the pipe ends are housed within the manifold.	¶61	col. 13:26-29
...surrounded at least in part by cast material provided within the opening of the manifold housing to help secure the inlet end and the outlet end...	The complaint does not provide sufficient detail for analysis of this element.		col. 13:30-35
wherein the height of the perimeter wall of the manifold housing extends away from the outer housing and the inner pipe circuit.	The complaint does not provide sufficient detail for analysis of this element.		col. 13:36-39

’076 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a stave/brick construction, comprising: a stave having a plurality of ribs and a plurality of channels...	The accused products are cooling staves alleged to be covered by the claims of the '076 Patent.	¶57, ¶63	col. 21:13-16
a plurality of bricks wherein each brick is insertable into one of the plurality of channels... upon rotation of the brick... locked against removal... without first being rotated; and	The complaint alleges infringement of claim 1 but does not provide specific facts about the brick insertion or locking mechanism.	¶57	col. 21:17-26
one or more wear monitors, wherein each wear monitor is disposed through or adjacent to the stave and/or one or more of the bricks.	The accused staves are alleged to have a "channel or orifice therethrough that was installed specifically to receive and accommodate wear monitors manufactured by BMC."	¶58, ¶63	col. 21:27-30

• Identified Points of Contention:
  • Scope Questions: A primary issue for the '124 Patent will be whether the accused "center manifold technology" meets all structural limitations of the asserted claim, such as the use of "cast material" to secure pipe ends, a detail on which the complaint is silent.
  • Technical Questions: For the '076 Patent, a key factual question is whether the accused staves employ the specific "insert and rotate" locking mechanism for refractory bricks as required by the claim. The complaint makes a conclusory allegation of infringement but does not describe the specific locking mechanism of the accused staves.

V. Key Claim Terms for Construction

• Term: "manifold" ('124 Patent, Claim 1)

  • Context and Importance: This term is the central feature of the '124 Patent. The infringement case depends entirely on whether the accused "manifold feature" falls within the proper construction of this term.
  • Intrinsic Evidence for a Broader Interpretation: The specification provides a broad definition, stating the manifold is "integral with or disposed on or in the housing" and serves to house the pipe ends, without limiting it to a particular shape or material in the high-level description ('124 Patent, col. 3:63-65).
  • Intrinsic Evidence for a Narrower Interpretation: Practitioners may argue for a narrower scope based on the preferred embodiments, which describe a manifold made from carbon steel plates welded together, into which copper is cast to secure the pipes ('124 Patent, col. 12:31-42). A defendant could argue the term is limited to this more specific composite structure.

• Term: "locked against removal... via linear movement without first being rotated" ('076 Patent, Claim 1)

  • Context and Importance: This phrase captures the functional essence of the patented brick-locking mechanism. Plaintiff must prove the accused staves operate in this specific manner.
  • Intrinsic Evidence for a Broader Interpretation: A plaintiff would likely argue that the claim language is functional and covers any structure that achieves the result of preventing linear removal until after a rotational action, regardless of the precise geometry.
  • Intrinsic Evidence for a Narrower Interpretation: A defendant may argue that the term is implicitly limited by the patent's disclosure, which teaches a specific geometry of a brick nose engaging with channel surfaces upon rotation ('076 Patent, col. 8:5-24, Figs. 6-7). The argument would be that the term requires a structure analogous to the one disclosed, not merely one that achieves a similar outcome.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both inducement and contributory infringement against all defendants for both patents. The allegations are based on Defendants' purported knowledge and intent, stemming from Defendant Smith's status as the inventor of the patents and his collaboration with the other defendants to have the accused staves made by Cecal and sold to USS (Compl. ¶64-72).
• Willful Infringement: Willfulness is alleged based on Defendants' knowledge of the patents, which is primarily inferred from Defendant Smith's role as inventor and his past employment with BMC (Compl. ¶73-75, ¶77). The complaint also cites a notice letter sent to the manufacturer, Cecal, regarding the pending application for the '124 Patent (Compl. ¶76).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of viability and amendment: given that the asserted independent claim of the '124 Patent was cancelled during a subsequent reexamination, a threshold question is whether the plaintiff can amend its complaint to assert the newly issued claims and, if so, whether its infringement theory remains viable under the potentially narrower scope of those new claims.
• A key evidentiary question will be one of functional operation: does the accused stave's brick-fastening system operate via the specific "insert and rotate" locking mechanism required by Claim 1 of the '076 Patent, or does it use a different, non-infringing technology? The complaint's lack of factual detail on this point suggests it will be a central area of dispute.
• A critical legal and factual question will concern imputed knowledge: to what extent can Defendant Smith's direct knowledge of the patents, as their inventor and a former employee of the plaintiff, be legally imputed to the other defendants to establish the specific intent required for induced, contributory, and willful infringement?