DCT
2:20-cv-10953
Uni Systems LLC v. Rossetti Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uni-Systems, LLC (Minnesota)
- Defendant: United States Tennis Association National Tennis Center Incorporated (New York), et al.
- Plaintiff’s Counsel: Norton Rose Fulbright US LLP
- Case Identification: 1:17-cv-00147, E.D.N.Y., 04/17/20
- Venue Allegations: Venue is based on certain defendants residing in the district, a substantial part of the events giving rise to the claims occurring in the district, and defendants maintaining a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendants’ retractable roof systems for the Arthur Ashe Stadium and Louis Armstrong Stadium infringe two patents related to large-scale retractable roof structural design and mechanization.
- Technical Context: The technology concerns kinetic architecture for major sports venues, a specialized engineering field focused on designing and implementing massive, movable structures like retractable roofs.
- Key Procedural History: The complaint, a First Amended Complaint, alleges that Plaintiff provided Defendants with notice of the asserted patents and infringement allegations via letters beginning in May 2016, prior to the completion of the accused stadium roofs. The complaint also details an extensive business history between the parties involving prior projects and alleges misappropriation of trade secrets, which provides context for the patent infringement claims, particularly willfulness.
Case Timeline
| Date | Event |
|---|---|
| 2001-01-23 | Priority Date for U.S. Patent No. 6,789,360 |
| 2004-09-14 | Issue Date for U.S. Patent No. 6,789,360 |
| 2005-03-09 | Priority Date for U.S. Patent No. 7,594,360 |
| 2009-09-29 | Issue Date for U.S. Patent No. 7,594,360 |
| 2011 | USTA plans for Ashe Retractable Roof announced |
| 2016-05-24 | Plaintiff sends pre-suit notice letter regarding infringement |
| 2016-08 | Ashe Retractable Roof becomes operational |
| 2016-07/08 | Plaintiff provides notice regarding Armstrong Roof design |
| 2017-07-06 | Plaintiff provides infringement claim charts for Armstrong Roof |
| 2018 | Armstrong Retractable Roof becomes operational |
| 2020-04-17 | First Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,789,360 (the "Retention Mechanism Patent") - "Retractable Roof System for Stadium," issued September 14, 2004.
The Invention Explained
- Problem Addressed: The patent’s background section identifies a need for retractable stadium roofs that are lighter, less bulky, and less likely to obstruct spectator views than conventional designs, which often use heavy truss structures that interfere with sightlines from upper seating areas (Retention Mechanism Patent, col. 1:44-65; Compl. ¶16).
- The Patented Solution: The invention uses a "tied arch" as the primary structural support. This design features a curved, convex upper chord and a tensioned lower chord that is positioned to bear the majority of gravity-induced stress, allowing for a lighter and more open truss structure with fewer obstructive diagonal elements ('360 Patent, col. 4:39-50; Abstract). Movable roof panels travel along a guide track mounted to the top of this tied-arch truss, with a specific retention mechanism to hold the panels on the track against uplift forces like wind ('360 Patent, col. 7:3-21).
- Technical Importance: This tied-arch design provided a method to create very long structural spans suitable for stadiums while minimizing structural weight and visual obstruction (Compl. ¶16).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-4 (Compl. ¶¶87-88).
- Independent Claim 1 requires, in brief:
- A "major truss" configured as a "tied arch" with a "curved convex upper portion" and a "tensioned lower portion."
- A "roof member" secured to the truss.
- A "curved, convex guide track" secured to the upper portion of the truss, over which the roof member moves.
- A "retention mechanism" to prevent the roof member from lifting off the guide track by engaging a "downwardly facing surface" of the track.
U.S. Patent No. 7,594,360 (the "Lateral Release Patent") - "Lateral Release Mechanism for Movable Roof Panels," issued September 29, 2009.
The Invention Explained
- Problem Addressed: The patent describes the difficulty of building and maintaining two perfectly parallel tracks for a large retractable roof over a long span. Variations from construction, thermal expansion, and external forces can cause the tracks to become non-parallel, leading to binding, racking, and high stress on the system ('360 Patent, col. 2:5-16).
- The Patented Solution: The invention discloses a transport mechanism for the roof panel that incorporates a "lateral release system." This system, preferably using a "linear slide bearing," is interposed between the roof panel and its wheels. It maintains the panel's primary orientation but permits a limited amount of side-to-side movement relative to the track, accommodating misalignments without transmitting damaging side loads into the structure ('360 Patent, Abstract; col. 3:41-46).
- Technical Importance: The system offers a compact and mechanically simple solution to the problem of track misalignment, which is a critical issue in the reliability and longevity of large-scale kinetic structures (Compl. ¶19).
Key Claims at a Glance
- The complaint asserts independent claim 1 and multiple dependent claims (Compl. ¶¶89-90, 104-105).
- Independent Claim 1 requires, in brief:
- First and second "transport mechanisms" for a large overhead structural member, where each mechanism has a "single trolley rail" and "a plurality of rail follower wheels" that ride on it.
- A "lateral release system" for each transport mechanism, which permits limited movement of the structural member in a "nonparallel" direction to the track.
- The lateral release system is specified as "comprising a linear slide bearing."
III. The Accused Instrumentality
Product Identification
- The retractable roof systems installed at the Arthur Ashe Stadium and the Louis Armstrong Stadium, located at the USTA National Tennis Center in Flushing, New York (Compl. ¶¶3, 4).
Functionality and Market Context
- The accused instrumentalities are the complete, operational retractable roofs over two premier tennis stadiums. The complaint alleges that the Ashe Retractable Roof was completed in August 2016 and the Armstrong Retractable Roof was operational for the 2018 U.S. Open (Compl. ¶¶84, 154). The complaint notes the high public profile of the Ashe roof, which was praised by media during the U.S. Open tournament, underscoring its commercial significance (Compl. ¶84). The design of the Armstrong roof is alleged to be "essentially the same" as the Ashe roof design (Compl. ¶99).
IV. Analysis of Infringement Allegations
Retention Mechanism Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least one major truss ... structurally configured as a tied arch having a curved convex upper portion and a tensioned lower portion... | The Ashe Stadium roof includes a major truss spanning the structure, which is depicted in drawings as a tied arch with a curved convex upper portion and a tensioned lower portion. | ¶87, p. 28 | col. 4:39-50 |
| at least one roof member that is secured to said major truss | The roof includes at least one movable roof panel that is secured to and moves along the major truss. | ¶87, p. 29 | col. 5:19-24 |
| a curved, convex guide track that is secured to said curved, convex upper portion of said major truss, and wherein said roof member is... arranged to be moved over said guide track | A "175 LB CRANE RAIL" functions as a curved, convex guide track and is attached to the upper portion of the truss, with bogies moving along it to transport the roof panels. | ¶87, p. 29-30 | col. 5:12-19 |
| a retention mechanism for preventing said roof member from being lifted upwardly... [comprising] at least one retention element for engaging a downwardly facing surface of said guide track... | The bogie assembly includes an "uplift guard" that is positioned to engage a downwardly facing surface of the rail to prevent upward vertical movement of the roof panels. This is shown in a detailed drawing of the bogie. | ¶87, p. 31 | col. 7:3-21 |
Lateral Release Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [a] first and second transport mechanisms... comprising a single trolley rail... and a plurality of rail follower wheels... adapted to ride on said single trolley rail | The roof system utilizes transport mechanisms in the form of bogies that travel along a single rail on each side of the roof structure. Drawings show these bogies are equipped with multiple follower wheels that ride on the rail. | ¶89, p. 32-33 | col. 4:50-65 |
| [b] a lateral release system... permitting a limited amount of movement... in a direction that is nonparallel to said predetermined path... said lateral release system comprising a linear slide bearing. | An "equalizer assembly" within the bogie functions as the lateral release system. A section view drawing illustrates a pin and bushing that permit the bushing to slide along the pin on an axis perpendicular to the rail, enabling lateral movement. | ¶89, p. 34-35 | col. 5:1-21 |
- Identified Points of Contention:
- Scope Questions: The complaint's allegations raise questions about the scope of key claim terms. For the Retention Mechanism Patent, a central question is whether the accused, apparently static "uplift guard" (Compl. ¶87, p. 31) meets the definition of the claimed "retention mechanism," which is disclosed in the patent as an active, spring-biased wheel assembly (Retention Mechanism Patent, Fig. 9). For the Lateral Release Patent, a similar question arises as to whether the accused pin-and-bushing "equalizer assembly" (Compl. ¶89, p. 34) falls within the scope of a "lateral release system comprising a linear slide bearing," which is disclosed in the patent as a specific cylindrical shaft-and-collar assembly (Lateral Release Patent, Fig. 4).
- Technical Questions: A key technical question is one of operational correspondence. Does the accused "uplift guard" function merely as a passive stop, or does it actively bias the roof member downward as described for the patented embodiment? Likewise, does the accused "equalizer assembly" provide controlled, low-friction linear movement in the same manner as the specialized PTFE-lined bearing described in the Lateral Release Patent's specification?
V. Key Claim Terms for Construction
Term: "retention mechanism" (Retention Mechanism Patent, Claim 1)
- Context and Importance: The infringement allegation for this element rests on an "uplift guard" shown in a design drawing (Compl. ¶87, p. 31). The patent, however, discloses a more complex, spring-loaded wheel assembly as the preferred embodiment for the "retention mechanism" (Retention Mechanism Patent, Fig. 9). The construction of this term will determine whether a simple, passive structural element can literally infringe a claim whose main embodiment appears to be an active mechanical assembly.
- Evidence for a Broader Interpretation: The claim language is functional, requiring a mechanism "for preventing said roof member from being lifted upwardly" ('360 Patent, col. 10:22-24). This functional language may support an interpretation that covers any structure performing that role.
- Evidence for a Narrower Interpretation: The specification describes the retention assembly's purpose as "continuously bias[ing] each of the carrier assemblies 64 downwardly toward the supporting rail 52 so as to maintain sufficient traction" ('360 Patent, col. 7:4-8). This suggests an active biasing function, which may serve to narrow the term's scope to exclude passive guards that do not provide a continuous downward force.
Term: "linear slide bearing" (Lateral Release Patent, Claim 1)
- Context and Importance: This term is the core of the asserted solution to track misalignment. The complaint identifies a pin-and-bushing arrangement as the infringing "linear slide bearing" (Compl. ¶89, p. 34). Practitioners may focus on this term because its construction will decide whether a common mechanical component (a pin in a bushing) is encompassed by a claim in a patent that describes a more specialized embodiment.
- Evidence for a Broader Interpretation: The term "linear slide bearing" has a generally understood meaning in mechanical engineering that is not limited to a single configuration and could plausibly include a pin-in-bushing arrangement. The claim requires the system to comprise a linear slide bearing, which could be read to not limit the entire system to that single component.
- Evidence for a Narrower Interpretation: The specification provides a single, detailed embodiment of the "linear bearing assembly," describing a "cylindrical guide shaft 46," a "guide shaft collar 48," and specific "PTFE fabric inner liner" sleeves ('360 Patent, col. 5:1-21). A party might argue that the claim term should be interpreted in light of this specific disclosure, potentially limiting it to a shaft-and-sleeve type configuration.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that all defendants induced infringement by specifically intending to encourage infringement by others. This is based on their respective roles as designers, builders, suppliers, and owners who collectively contributed to the making and using of the accused roofs, allegedly with knowledge of the patents (e.g., Compl. ¶¶111, 113, 115, 134, 136).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the patents and infringement. The complaint alleges that Uni-Systems sent a notice letter to key defendants on May 24, 2016, and that despite this notice and subsequent communications, the defendants proceeded to construct and use the accused roofs (Compl. ¶¶127, 150, 168).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "retention mechanism," disclosed in the patent as an active, spring-biased wheel assembly, be construed to cover the accused static "uplift guard"? Similarly, can the term "linear slide bearing," disclosed as a specialized shaft-and-collar system, be construed to cover the accused, more conventional pin-and-bushing "equalizer assembly"? The outcome of these claim construction disputes may be dispositive for literal infringement.
- A key evidentiary question will be one of technical and functional equivalence: If the accused components are found not to infringe literally, do they operate in substantially the same way as the patented inventions? The dispute may turn on whether a passive guard is equivalent to an active biasing mechanism for retention, and whether a simple bushing is equivalent to a specialized low-friction bearing for enabling lateral release.
- A third central question relates to willfulness: The complaint alleges that defendants had actual notice of the patents and infringement allegations as early as May 2016 but proceeded with construction and operation of the accused roofs. The court will have to determine whether this conduct, if proven, rises to the level of willful infringement, which would expose the defendants to potential enhanced damages.