DCT
3:21-cv-00014
Fortress Iron LP v. Digger Specialties Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fortress Iron L.P. (Texas)
- Defendant: Digger Specialties, Inc. (Indiana)
- Plaintiff’s Counsel: Foley & Lardner LLP
- Case Identification: 3:21-cv-00014, N.D. Ind., 06/30/2021
- Venue Allegations: Venue is alleged to be proper because Defendant resides in the district, maintains a regular and established place of business in the district, and has committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s original and revised "Westbury Verticable" aluminum railing products infringe two patents related to the design and construction of vertical cable rail barriers.
- Technical Context: The technology concerns prefabricated railing panels used in outdoor construction, which use vertical cables as infill barriers instead of traditional solid pickets or balusters.
- Key Procedural History: The complaint alleges that Plaintiff first accused Defendant's "Original" product of infringing the '707 Patent on January 2, 2018. Following this notice, Defendant allegedly discontinued the "Original" product and introduced a "Revised" product, which is now accused of infringing the later-issued '290 Patent.
Case Timeline
| Date | Event |
|---|---|
| 2014-04-14 | Priority Date for '290 and '707 Patents |
| 2015-03-31 | Defendant introduces Original Westbury Verticable railing |
| 2017-10-17 | U.S. Patent No. 9,790,707 Issues |
| 2018-01-02 | Plaintiff accuses Original product of infringing '707 Patent |
| 2018-06-15 | Defendant discontinues Original Westbury Verticable railing |
| 2018 | Defendant introduces Revised Westbury Verticable railing |
| 2021-01-05 | U.S. Patent No. 10,883,290 Issues |
| 2021-06-30 | Second Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,883,290 - "Vertical Cable Rail Barrier"
- Patent Identification: U.S. Patent No. 10,883,290, "Vertical Cable Rail Barrier," issued January 5, 2021.
The Invention Explained
- Problem Addressed: The patent describes conventional railing panels that are pre-assembled and installed between posts, but notes the challenge of creating such a system using flexible vertical cables which require tensioning. (’290 Patent, col. 1:21-44).
- The Patented Solution: The invention is a pre-assembled barrier panel with top and bottom rails, vertical support members, and a series of vertical cables. A key aspect of the solution is a tensioning system for the cables, comprising "adjustable end members" (such as nuts on a threaded fitting) located at the bottom of the cables, which are then concealed within the structure of the bottom rail to provide a clean aesthetic and protect the hardware. (’290 Patent, Abstract; col. 5:1-10).
- Technical Importance: This design allows for the aesthetic benefits of thin cable railings while retaining the installation efficiencies of a pre-fabricated panel system, with the added feature of a concealed and protected tension-adjustment mechanism. (’290 Patent, col. 1:45-54).
Key Claims at a Glance
- The complaint asserts independent Claim 1. (Compl. ¶16).
- The essential elements of Claim 1 include:
- A top rail with a web portion and leg portions, defining top through holes.
- A bottom rail with a web portion and leg portions, defining bottom through holes aligned with the top holes.
- A rigid support member extending between the rails.
- First and second vertical cables adjacent to the support member, each with a top and bottom swage fitting.
- The cables extending through the top and bottom holes.
- The bottom swage fittings are each coupled to an "adjustable end member."
- The bottom leg portions extend beyond and conceal the adjustable end members.
- Adjusting the adjustable end member adjusts tension in the cables.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,790,707 - "Vertical Cable Rail Barrier"
- Patent Identification: U.S. Patent No. 9,790,707, "Vertical Cable Rail Barrier," issued October 17, 2017.
The Invention Explained
- Problem Addressed: As the parent to the ’290 Patent, this patent addresses the same general problem of creating a pre-assembled vertical cable railing system. (’707 Patent, col. 1:12-36).
- The Patented Solution: This invention focuses on the structural composition of the rail members. It describes a rail constructed from an "inner U-shaped channel mounted within the outer U-shaped channel." This nested design provides reinforcement and creates a protected internal space for securing the ends of the vertical cables, facilitating a robust assembly. (’707 Patent, Abstract; col. 3:1-14).
- Technical Importance: The nested U-channel structure provides a strong yet potentially lightweight rail profile that simplifies the process of securing and aligning multiple vertical cables within a pre-assembled panel. (’707 Patent, col. 4:29-35).
Key Claims at a Glance
- The complaint asserts independent Claim 1. (Compl. ¶39).
- The essential elements of Claim 1 include:
- An apparatus with a first rail member having first openings.
- A second rail member comprising an "outer U-shaped channel" and an "inner U-shaped channel mounted within the outer U-shaped channel."
- The inner and outer channels have aligned openings.
- At least one vertical support member extending between the rails.
- A plurality of vertical cables extending between the rails, with a first end secured in the first rail's openings and a second end secured within the aligned inner and outer openings of the second rail.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The complaint accuses two distinct generations of the Defendant's "Westbury Verticable aluminum railing" product line. (Compl. ¶¶15, 38).
Functionality and Market Context
- The accused products are described as pre-assembled barrier panels used for outdoor railings. (Compl. ¶¶17, 40). The complaint uses diagrams to illustrate that the products consist of a top rail, a bottom rail, vertical cables, and at least one rigid vertical support member, which are sold as a system. (Compl., Ex. A, p. 9; Ex. B, p. 18).
- The complaint alleges that Defendant is a "direct competitor of Fortress" in the market for outdoor construction building products. (Compl. ¶8).
IV. Analysis of Infringement Allegations
'290 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a top rail comprising a top web portion and a pair of top leg portions...the top web portion defining a plurality of top through holes... | The Revised Accused Product includes a top rail with the specified structure and through holes for cables. A cross-section diagram shows the web and leg portions. (Compl., Ex. A, p. 10). | ¶18-19 | col. 3:42-53 |
| a bottom rail comprising a bottom web portion and a pair of bottom leg portions...the bottom web portion defining a plurality of bottom through holes...aligned with the top through holes; | The Revised Accused Product includes a bottom rail with a corresponding structure and aligned holes. | ¶20-21 | col. 3:1-24 |
| a rigid support member vertically extending between the top rail and the bottom rail; | The product includes a "Baluster" that extends vertically between the top and bottom rails. A product diagram identifies this component. (Compl., Ex. A, p. 12). | ¶22 | col. 1:30-34 |
| a first vertical cable...a top end...attached to a hollow tubular shank of a first top swage fitting and a bottom end...attached to a hollow tubular shank of a first bottom swage fitting... | The product’s cables are allegedly attached to top and bottom swage fittings. A diagram shows these fittings. (Compl., Ex. A, p. 14). | ¶23-24 | col. 4:25-41 |
| wherein the first and second bottom swage fittings are each coupled to a respective adjustable end member, each one of the pair of bottom leg portions extending beyond and concealing the adjustable end members therebetween... | The product’s bottom swage fittings are allegedly coupled to an "adjustable end member" for tensioning, which is concealed inside the bottom rail. A cross-section illustrates this concealment. (Compl., Ex. A, p. 16). | ¶29 | col. 5:1-10 |
| wherein adjusting the adjustable end member adjusts a tension in the respective first and second vertical cables. | Adjusting this concealed end member allegedly tightens or loosens the vertical cables. | ¶30 | col. 5:8-10 |
- Identified Points of Contention:
- Scope Questions: A central dispute may be whether the component identified as the "adjustable end member" in the accused product (Compl., Ex. A, p. 16) meets the full scope of that term as defined by the patent.
- Technical Questions: The analysis will likely focus on the function and structure of the tensioning system. A question for the court is whether the bottom rail's leg portions perform the claimed function of "concealing" the adjustable end members, and whether the alleged "adjustable end member" itself functions as claimed.
'707 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an apparatus, comprising: a first rail member including a plurality of first openings... | The Original Accused Product is an apparatus including a top rail member with openings for the vertical cables to pass through. | ¶40-41 | col. 4:1-3 |
| a second rail member, comprising: an outer U-shaped channel...and an inner U-shaped channel... | The product's bottom rail allegedly comprises two nested U-shaped channels. A detailed cross-section diagram labels these components. (Compl., Ex. B, p. 20). | ¶43-44 | col. 3:1-4 |
| the inner U-shaped channel mounted within the outer U-shaped channel with open ends of the inner and outer U-shaped channels facing each other... | The inner channel is shown mounted inside the outer channel, with their open sides facing each other to create an internal cavity. | ¶45 | col. 3:5-14 |
| at least one vertical support member mounted to and extending between the first rail member and second rail member; | The product includes a vertical support member (baluster) between the top and bottom rails. | ¶46 | col. 1:20-24 |
| a plurality of vertical cables...a first end of each vertical cable is secured within one of the first openings and a second end...is secured within opposite aligned inner and outer openings of the second rail member. | The cables extend from the top rail into the nested channel of the bottom rail, where their ends are secured. Diagrams show this attachment. (Compl., Ex. B, p. 22-23). | ¶47 | col. 4:12-21 |
- Identified Points of Contention:
- Scope Questions: The dispute may turn on the construction of "mounted within." The parties may contest whether the connection between the alleged "inner" and "outer" channels in the accused product constitutes being "mounted within" as understood in the patent, or if it is a different, non-infringing arrangement.
- Technical Questions: An evidentiary question may be how the two U-shaped channel components of the accused product are joined (e.g., welded, press-fit, or otherwise attached) and whether that method of attachment aligns with the patent's teachings for being "mounted within."
V. Key Claim Terms for Construction
For the '290 Patent
- The Term: "adjustable end member"
- Context and Importance: This term is critical because it defines the tensioning mechanism that is a core feature of Claim 1. The infringement analysis for the Revised Accused Product will depend on whether its tensioning component, a nut-like element, falls within the scope of this term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is functional and not inherently limited to a specific structure. The specification describes a "threaded swage fitting" with a nut as one embodiment, but the independent claim uses the more general term "adjustable end member". (cf. ’290 Patent, col. 4:43-58 and Claim 1).
- Evidence for a Narrower Interpretation: Dependent claim 8 specifies that "each adjustable end member is a female threaded member." A defendant may argue this suggests the independent claim should not be read so broadly as to automatically encompass all possible adjustment mechanisms, or that the specific embodiment shown is the only one contemplated. (’290 Patent, col. 7:60-61).
For the '707 Patent
- The Term: "mounted within"
- Context and Importance: This phrase defines the spatial and structural relationship between the inner and outer U-shaped channels, which is the central feature of Claim 1 of the '707 Patent. Infringement by the Original Accused Product hinges on whether its two rail components are arranged in a way that satisfies this "mounted within" limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the inner channel is "fitting within" the outer channel, and that they are "fixedly attached to each other (for example, by welding)." This "for example" language suggests welding is just one possible method, potentially allowing for other forms of attachment to qualify as "mounted within." (’707 Patent, col. 3:5-9).
- Evidence for a Narrower Interpretation: The figures consistently show the inner channel nested completely inside the cavity of the outer channel. A defendant could argue that "mounted within" requires this specific nested configuration and a permanent attachment like welding, rather than a looser or different form of assembly. (’707 Patent, FIG. 3).
VI. Other Allegations
- Indirect Infringement: The complaint focuses on direct infringement under 35 U.S.C. § 271(a) and does not plead separate counts for indirect or induced infringement. (Compl. ¶¶31, 48).
- Willful Infringement: The complaint alleges willful infringement for both patents, but on different grounds.
- For the '290 Patent, willfulness is alleged based on knowledge of the patent "at least since Digger has been provided the original Complaint in this action," a post-suit knowledge theory. (Compl. ¶33).
- For the '707 Patent, willfulness is alleged based on pre-suit knowledge dating back to "at least since January 2, 2018," when Plaintiff allegedly first notified Defendant of its infringement. (Compl. ¶50).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim scope and technical operation: For the '290 Patent, does the accused tensioning hardware in the "Revised" product function as an "adjustable end member" that is "concealed" by the rail legs in the specific manner required by Claim 1?
- A related question for the '707 Patent concerns structural definition: Is the two-part rail of the "Original" product constructed with an "inner U-shaped channel mounted within the outer U-shaped channel," or can the defendant demonstrate a meaningful technical distinction in the components' structure or their method of attachment?
- A key question for damages will be the impact of notice and redesign: How will the separate timelines of alleged knowledge—pre-suit notice for the '707 patent and the "Original" product, versus post-suit notice for the '290 patent and the "Revised" product—affect the analysis of willfulness and the calculation of potential damages for each asserted patent?