DCT
3:23-cv-00778
ArrMaz Products Inc v. Rieth-Riley Construction Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ArrMaz Products Inc. (Delaware)
- Defendant: Rieth-Riley Construction Co., Inc. (Indiana)
- Plaintiff’s Counsel: Ice Miller LLP; Baker & Hostetler LLP
- Case Identification: 3:23-cv-00778, N.D. Ind., 08/21/2023
- Venue Allegations: Venue is alleged to be proper as Defendant resides in the district, maintains a regular and established place of business there, and has committed the alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s methods for constructing asphalt road surfaces infringe two patents related to multi-layer, rut-resistant and crack-resistant paving technologies.
- Technical Context: The technology concerns specialized methods for applying asphalt coatings designed to enhance road longevity by improving resistance to common failure modes like rutting and cracking.
- Key Procedural History: The complaint alleges an extensive history of pre-suit communications, beginning in February 2022, during which Plaintiff notified Defendant of the asserted patents, identified specific allegedly infringing construction projects, and offered a license. Defendant allegedly rejected the license offer in a letter dated February 10, 2023, approximately one year after the initial notice.
Case Timeline
| Date | Event |
|---|---|
| 2008-04-28 | Earliest Priority Date for U.S. Patent No. 7,802,941 |
| 2009-08-13 | Earliest Priority Date for U.S. Patent No. 8,465,843 |
| 2010-09-28 | U.S. Patent No. 7,802,941 Issues |
| 2013-06-18 | U.S. Patent No. 8,465,843 Issues |
| 2022-01-12 | Letting Date for Allegedly Infringing Contracts |
| 2022-02-09 | Letting Date for Allegedly Infringing Contracts |
| 2022-02-XX | Plaintiff Notifies Defendant of Asserted Patents |
| 2023-02-10 | Defendant Formally Rejects Plaintiff's License Offer |
| 2023-08-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,802,941 - Rut resistant coating and method of applying rut resistant coating, Issued September 28, 2010
The Invention Explained
- Problem Addressed: The patent describes conventional road pavements as being susceptible to "rutting," which is the lateral movement of pavement material under high shear stresses from traffic, and "reflective cracking," where cracks from an underlying pavement layer propagate up into a new surface layer (’941 Patent, col. 1:15-26, 40-44). Prior art solutions, such as using thick pavement layers or specialized interlayers, were described as inefficient, costly, and slow to construct (’941 Patent, col. 2:4-29).
- The Patented Solution: The invention proposes a method for a two-part coating. First, a "binding material layer" is applied to an existing surface to act as a moisture barrier. This initial layer contains a relatively small fraction—less than 11%—of the total binding material used in the entire coating (’941 Patent, Abstract). Immediately thereafter, an "aggregate mixture layer" containing an asphalt solution is applied on top of the binding layer to provide the primary wear surface and structural support to resist rutting (’941 Patent, col. 3:10-21). A key aspect of the method is the rapid succession of these application steps (’941 Patent, Abstract).
- Technical Importance: This approach seeks to provide both crack and rut resistance in a single, efficient process, thereby extending the life of the road surface without the high costs and construction delays associated with older techniques (’941 Patent, col. 2:64-67).
Key Claims at a Glance
- The complaint asserts infringement of at least independent method Claim 1 (Compl. ¶33).
- Essential elements of independent Claim 1 include:
- applying a binding material layer of the rut resistant coating on the existing surface... the binding material layer containing less than about 11% of the total binding material of the rut resistant coating; and
- applying an aggregate mixture layer containing an asphalt solution on the binding material layer to provide a wear surface... wherein the aggregate mixture of the aggregate mixture layer is disposed on the binding material layer in a period of time less than about 30 seconds.
- The complaint reserves the right to assert additional claims, and the narrative allegations also appear to track elements of product Claim 13.
U.S. Patent No. 8,465,843 - Crack resistant coating and method of applying crack resistant coating, Issued June 18, 2013
The Invention Explained
- Problem Addressed: This patent, a divisional of the application that led to the ’941 Patent, also addresses pavement cracking and rutting. It notes that conventional design requires a trade-off: voidless mixtures resist cracking but not deformation (rutting), while mixtures with air voids resist rutting but are prone to cracking (’843 Patent, col. 7:6-14).
- The Patented Solution: The invention claims a multi-layer coating and a method that creates a "bi-layered system" within a single application process. The system is designed to have a "substantially voidless" bottom portion, where a fluid binding material migrates up from the surface to fill air voids in the aggregate, creating a flexible layer that resists cracking (’843 Patent, col. 7:22-34). The upper portion retains sufficient air voids to provide a stable structure that resists rutting (’843 Patent, col. 7:25-30). The invention describes a process of applying multiple, successive layers of binding material and aggregate mixtures very quickly—within fifteen seconds of each other—to achieve this structure (’843 Patent, Claim 1).
- Technical Importance: The technology aims to create an integrated pavement layer that combines the crack-resistance of a flexible interlayer with the stability of a rut-resistant riding surface, two properties that were historically difficult to achieve simultaneously in a single, efficient process (’843 Patent, col. 7:34-39).
Key Claims at a Glance
- The complaint asserts infringement of at least independent product Claim 1 (Compl. ¶43).
- Essential elements of independent Claim 1 include:
- a first binding material layer disposed on the surface;
- a first aggregate mixture layer... disposed on the first binding material layer within fifteen seconds of the first binding material layer being disposed on the surface;
- a second binding material layer disposed on the first aggregate mixture layer; and
- a second aggregate mixture layer... disposed on the second binding material layer within fifteen seconds of the second binding material layer being disposed on the first aggregate mixture layer.
- The complaint reserves the right to assert additional claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the asphalt-paving services, methods, and resulting products provided by Rieth-Riley, particularly in connection with publicly awarded construction projects for the Indiana Department of Transportation, including contract numbers R-40582-A, R-42909-B, R-42043-A, and R-42236-A (Compl. ¶¶17, 32, 42).
Functionality and Market Context
- The complaint alleges that Rieth-Riley performs multi-step paving processes that create rut-resistant and crack-resistant road surfaces (Compl. ¶¶33, 43). These services are allegedly performed for state governments and place Rieth-Riley in the same market as Plaintiff and its licensees (Compl. ¶¶12, 14, 17). Rieth-Riley is described as a major "road builder, paving contractor, and commercial contractor" in the Midwest (Compl. ¶16).
IV. Analysis of Infringement Allegations
’941 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| applying a binding material layer of the rut resistant coating on the existing surface to promote bonding of the rut resistant coating to the existing surface, the binding material layer containing less than about 11% of the total binding material of the rut resistant coating | Defendant applies a binding material layer of a rut resistant coating that contains less than about 11% of the total binding material of the coating. | ¶33b | col. 7:8-12 |
| applying an aggregate mixture layer containing an asphalt solution on the binding material layer to provide a wear surface to the rut resistant coating to resist rutting, wherein the aggregate mixture... is disposed on the binding material layer in a period of time less than about 30 seconds | Defendant applies an aggregate mixture layer on top of the binding material layer in a period of less than about 30 seconds to provide a wear surface and resist rutting. | ¶33c | col. 7:13-19 |
’843 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first binding material layer disposed on the surface to provide a substantially impermeable moisture barrier to the surface | Defendant’s coating includes a first binding material layer on the surface that provides a moisture barrier. | ¶43b | col. 17:9-11 |
| a first aggregate mixture layer disposed on the first binding material layer... disposed on the first binding material layer within fifteen seconds of the first binding material layer being disposed on the surface | Defendant’s coating includes a first aggregate mixture layer placed on the first binding layer within fifteen seconds of the binding layer's application. | ¶43c | col. 17:12-18 |
| a second binding material layer disposed on the first aggregate mixture layer... further providing another substantially impermeable moisture barrier to the surface | Defendant’s coating includes a second binding material layer placed on the first aggregate layer, providing another moisture barrier. | ¶43d | col. 17:21-25 |
| a second aggregate mixture layer disposed on the second binding material layer... disposed on the second binding material layer within fifteen seconds of the second binding material layer being disposed... | Defendant’s coating includes a second aggregate mixture layer placed on the second binding layer within fifteen seconds of the second binding layer's application, providing a wear surface. | ¶43e | col. 17:26-34 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint's allegations regarding the specific timing of application steps ("less than about 30 seconds" or "within fifteen seconds") and material compositions ("less than about 11% of the total binding material") are made "on information and belief" (Compl. ¶¶33, 43). A central dispute will likely involve factual evidence developed during discovery to prove what Rieth-Riley's on-site construction processes actually entail.
- Technical Questions: A key technical question may be whether the defendant's process, even if similar, achieves the specific functional outcomes claimed by the patents, such as creating a "substantially impermeable moisture barrier" or a "bi-layered system" with a "substantially voidless" bottom portion as described in the ’843 Patent (Compl. ¶43b; ’843 Patent, col. 7:25-34).
No probative visual evidence provided in complaint.
V. Key Claim Terms for Construction
The Term: "a period of time less than about 30 seconds" (’941 Patent, Claim 1)
- Context and Importance: This temporal limitation is a critical element distinguishing the claimed method from prior art paving techniques, where a tack coat might be left to cure for a significant time. Infringement of the method claim hinges on whether the accused process meets this rapid application requirement.
- Intrinsic Evidence for a Broader Interpretation: The specification explains that the time period should be specific enough "such that the binding material of the binding material layer does not run off (or flow from) the existing surface" (’941 Patent, col. 5:58-64). A party might argue this functional language supports an interpretation that is not strictly limited to a stopwatch reading of 30 seconds.
- Intrinsic Evidence for a Narrower Interpretation: The specification also discloses progressively narrower embodiments, including "less than about 20 seconds," "less than about 15 seconds," and "less than about 5 seconds" (’941 Patent, col. 6:1-8). The existence of these narrower, preferred timeframes may be used to argue against a broad reading of "about 30 seconds."
The Term: "substantially impermeable moisture barrier" (’843 Patent, Claim 1)
- Context and Importance: This term defines a key function of the claimed binding layers. The dispute will likely focus on the degree of impermeability required to meet this limitation and the evidence needed to prove it. Practitioners may focus on this term because its construction will determine the standard of proof for an essential function of the invention.
- Intrinsic Evidence for a Broader Interpretation: The specification describes the function as preventing "moisture (i.e. water) from entering the cracks present in the surface" (’843 Patent, col. 10:62-65). This purpose-driven language could support a functional definition based on performance under real-world conditions, rather than a specific laboratory metric.
- Intrinsic Evidence for a Narrower Interpretation: The term "substantially impermeable" implies a high degree of performance. A party could argue that this requires a specific, measurable level of water resistance that must be proven with technical evidence, and that a merely water-resistant layer does not suffice.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement allegations are based on claims that Rieth-Riley encourages its subcontractors and customers to use the infringing methods (Compl. ¶¶34, 44). The contributory infringement allegations are based on claims that Rieth-Riley provides a material part of the invention (the coating itself) knowing it is specially adapted for an infringing use (Compl. ¶¶35, 45).
- Willful Infringement: The complaint makes detailed allegations to support willfulness. It describes a year-long period of communication where Plaintiff allegedly provided Defendant with pre-suit notice of the patents, identified specific infringing projects, offered a license, and was ultimately rejected (Compl. ¶¶18-27). These facts are alleged to demonstrate that Defendant's infringement was and continues to be willful and deliberate, or at least reflects willful blindness (Compl. ¶¶36, 46).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: can the Plaintiff obtain evidence through discovery to demonstrate that the Defendant's on-site paving practices meet the specific, quantitative limitations of the asserted claims, particularly the rapid application timing (e.g., "within fifteen seconds") and the precise material compositions alleged?
- The case will also likely involve a question of claim scope and function: will the term "substantially impermeable moisture barrier" be construed to require a specific, measurable level of performance, and can the Plaintiff prove that the accused road surfaces meet that standard?
- Given the detailed allegations of pre-suit notice, a critical question for damages will be the Defendant's state of mind: did its decision to proceed with its paving methods after receiving notice and a license offer constitute willful infringement, or can it establish a good-faith basis for its belief of non-infringement or invalidity?