DCT
4:19-cv-00042
Nissei ASB Co v. R&D Tool & Engineering Co
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nissei ASB Co. (Georgia) and Nissei ASB Machine, Co., Ltd. (Japan)
- Defendant: R&D Tool & Engineering Co. (Missouri)
- Plaintiff’s Counsel: Armstrong Teasdale LLP; Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Law Office of Roger Taylor, LLC
- Case Identification: 4:19-cv-00042, W.D. Mo., 08/06/2019
- Venue Allegations: Venue is alleged to be proper as the Defendant is a Missouri corporation that resides and maintains its principal place of business in the Western District of Missouri.
- Core Dispute: Plaintiff alleges that Defendant’s molds, designed for use in Plaintiff's blow molding machines, infringe three patents related to the mechanical structure of blow mold units and neck mold assemblies.
- Technical Context: The technology relates to industrial machinery for injection blow molding, a high-volume manufacturing process used to create hollow plastic objects such as bottles and jars.
- Key Procedural History: The complaint alleges a prior business relationship in which Plaintiff granted Defendant a one-time license to manufacture a single mold unit. Plaintiff alleges Defendant subsequently used technical information obtained during an unauthorized audit of Plaintiff's machine to produce and sell additional, unlicensed molds, forming the basis for allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2009-09-11 | ’614 Patent Priority Date |
| 2010-01-29 | ’466 and ’602 Patents Priority Date |
| 2012-05-11 | Third-party customer (PPI) places order with Plaintiff |
| 2012-06-20 | Plaintiff’s ASB-150DPW machine delivered to PPI facility |
| 2012-06-26 | Defendant allegedly conducts unauthorized machine and mold audit at PPI facility |
| 2012-07-02 | Plaintiff and Defendant execute Confidentiality Agreement for one-time license |
| 2013-02-22 | Plaintiff and Defendant execute Royalty Agreement for one-time license |
| 2013-03-08 | Defendant makes royalty payment to Plaintiff for one-time license |
| 2013-12-17 | U.S. Patent 8,608,466 Issues |
| 2013-12-24 | U.S. Patent 8,613,614 Issues |
| 2015-04-07 | U.S. Patent 8,998,602 Issues |
| 2019-08-06 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,608,466 - "Blow Mold Unit and Blow Molding Apparatus Using the Same"
- Patent Identification: U.S. Patent 8,608,466, "Blow Mold Unit and Blow Molding Apparatus Using the Same," issued December 17, 2013 (Compl. ¶40; ’466 Patent, cover page).
The Invention Explained
- Problem Addressed: The patent’s background describes the difficulty and inefficiency of handling and exchanging blow molds that incorporate a "raised-bottom mold" component. In prior systems, the main blow cavity molds and the raised-bottom mold were handled as separate components, complicating the attachment and removal process on a blow molding apparatus ('466 Patent, col. 1:46-63).
- The Patented Solution: The invention proposes an integrated "blow mold unit" where the main cavity molds (first and second blow cavity split molds) and the raised-bottom molds are combined into a single, manageable assembly. This is achieved through a specific arrangement of securing plates, including a "third securing plate" that holds the raised-bottom molds and is disposed between the plates holding the main cavity molds, allowing the entire unit to be handled integrally ('466 Patent, Abstract; col. 2:31-48).
- Technical Importance: This integrated unit design simplifies mold exchange procedures on manufacturing lines, which can reduce machine downtime and improve operational workability ('466 Patent, col. 1:61-63).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶42).
- The essential elements of Claim 1 include:
- A blow mold unit comprising: a blow mold with a first blow cavity split mold, a second blow cavity split mold, and a plurality of raised-bottom molds;
- A first securing member for the first blow cavity split mold;
- A second securing member for the second blow cavity split mold;
- A plurality of first pressure-receiving members disposed on either side of the split molds;
- A third securing member disposed between the first and second securing members, with the raised-bottom molds secured on one side;
- A plurality of shafts suspended from the opposite side of the third securing member; and
- A plurality of second pressure-receiving members secured below the third securing member.
- The complaint alleges infringement of "at least one claim" of the patent (Compl. ¶86).
U.S. Patent No. 8,998,602 - "Blow Mold Unit and Blow Molding Apparatus Using the Same"
- Patent Identification: U.S. Patent 8,998,602, "Blow Mold Unit and Blow Molding Apparatus Using the Same," issued April 7, 2015 (Compl. ¶43).
The Invention Explained
- Problem Addressed: The patent, which is a continuation of the application that led to the ’466 Patent, addresses the same general problem of efficiently installing and removing an integrated blow mold unit from the base of a blow molding apparatus (’602 Patent, col. 1:22-65).
- The Patented Solution: The invention focuses on a specific mechanism for securing the integrated mold unit to the apparatus base. It claims a unit comprising "two securing blocks" that attach to the base. Each block contains a roller and a "roller driving member" that can move the roller downward from a retracted position into a position where it is in "rolling contact with the base." This allows a heavy mold unit to be rolled into position and then locked down, facilitating easier installation and removal (’602 Patent, Abstract; col. 5:10-27).
- Technical Importance: This mechanism provides a practical means for maneuvering and securing the large, heavy mold units, thereby improving the attachment and removal workability central to the technology's value proposition (’602 Patent, col. 5:53-57).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶45).
- The essential elements of Claim 1 include:
- A blow mold unit comprising: a blow mold with a first and second blow cavity split mold; and
- Two securing blocks secured on the base;
- Each securing block including a roller that comes in rolling contact with the base; and
- A roller driving member that moves the roller from an upward, non-contact position to a downward position of rolling contact with the base.
- The complaint alleges infringement of "at least one claim" of the patent (Compl. ¶99).
U.S. Patent No. 8,613,614 - "Blow Molding Apparatus"
- Patent Identification: U.S. Patent 8,613,614, "Blow Molding Apparatus," issued December 24, 2013 (Compl. ¶46).
- Technology Synopsis: This patent addresses the technical challenge of maintaining structural rigidity and alignment in a neck mold assembly that holds multiple rows of preforms. The patented solution is a supporting mechanism that incorporates "at least one reinforcement shaft" running along the rows of holding plates to provide stability and prevent misalignment during the molding process ('614 Patent, Abstract; col. 1:20-30).
- Asserted Claims: Independent claims 1 and 6 are asserted (Compl. ¶48).
- Accused Features: The accused molds are alleged to include a neck mold assembly with two rows of holding plates and a supporting mechanism that includes a reinforcement shaft, securing sections, guide shafts, and biasing members (Compl. ¶113).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "molds for the ASB-150DPW machine" manufactured, used, and sold by Defendant R&D Tool & Engineering Co. (Compl. ¶¶86, 99, 112).
Functionality and Market Context
The accused products are mold units specifically designed as components for Plaintiff's ASB-150DPW injection blow molding machines (Compl. ¶94). The complaint alleges these molds are not staple articles of commerce and have no substantial non-infringing uses outside of Plaintiff's machines (Compl. ¶¶94, 107, 120). It further alleges, upon information and belief, that Plaintiff and Defendant are the only manufacturers and sellers of molds for the ASB-150DPW machine (Compl. ¶¶37, 77). The complaint refers to photographs of an accused mold in an exhibit that is not attached to the filed complaint (Compl. ¶¶88, 101, 114).
IV. Analysis of Infringement Allegations
’466 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a blow mold that includes a first blow cavity split mold, a second blow cavity split mold, and a plurality of raised-bottom molds... | a first cavity of the mold, a second cavity of the mold, and a plurality of raised-bottom molds, which can be closed to form the shape of a bottle with a raised-bottom | ¶87(a) | col. 2:33-41 |
| a first securing member on which the first blow cavity split mold is secured; | a first plate securing the first cavity of the mold | ¶87(b) | col. 2:42-44 |
| a second securing member on which the second blow cavity split mold is secured; | a second plate securing the second cavity of the mold | ¶87(c) | col. 2:45-47 |
| a plurality of first pressure-receiving members... | a plurality of members, including two sets of conical members that receive the pressure when the mold is closed | ¶87(d) | col. 2:48-53 |
| a third securing member that is disposed between the first securing member and the second securing member, the plurality of raised-bottom molds being secured on a first side of the third securing member; | a third plate supporting the raised-bottom molds located between the first and second plates | ¶87(e) | col. 2:54-57 |
| a plurality of shafts that are suspended from a second side of the third securing member... a lower end of each of the plurality of shafts being a free end; | a plurality of shafts hanging from the bottom of the third plate with the lower end of the shafts being free | ¶87(f) | col. 2:58-61 |
| a plurality of second pressure-receiving members that are secured on the first securing member and the second securing member at a position below the third securing member. | a plurality of sets of members attached to the first and second plates securing the first and second cavities of the mold and located below the third plate | ¶87(g) | col. 2:62-65 |
’602 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a blow mold that includes a first blow cavity split mold, a second blow cavity split mold... | a first cavity of the mold, a second cavity of the mold, and a plurality of raised-bottom molds, which can be closed to form the shape of a bottle with a raised-bottom | ¶100(a) | col. 5:10-15 |
| two securing blocks that are secured on the base, | two securing blocks at the bottom of the mold | ¶100(b) | col. 5:16-17 |
| each of the two securing blocks including a roller that comes in rolling contact with the base... | the securing blocks include wheels | ¶100(c) | col. 5:18-20 |
| ...and a roller driving member that moves the roller downward from an upward position at which the roller does not come in rolling contact with the base to a downward position at which the roller comes in rolling contact with the base. | a mechanism that raises and lowers the wheels to allow the mold to roll on the wheels | ¶100(c) | col. 5:20-24 |
- Identified Points of Contention:
- Scope Questions: The complaint's infringement allegations for the ’466 Patent describe structural components with functional language (e.g., "a first plate securing the first cavity") (Compl. ¶87(b)). The analysis may turn on whether the accused structures correspond to the patent's more specific claim terms (e.g., "a first securing member"), raising the question of whether the terms should be construed broadly or if Plaintiff will need to argue for equivalence.
- Technical Questions: For the ’602 Patent, the complaint alleges a "mechanism that raises and lowers the wheels" (Compl. ¶100(c)). A central technical question will be whether this mechanism performs the specific function recited in Claim 1: moving a roller "downward from an upward position...to a downward position" to achieve rolling contact. The complaint does not provide evidence detailing the specific operation of the accused mechanism.
V. Key Claim Terms for Construction
The Term: "securing member" (’466 Patent, Claim 1)
- Context and Importance: This term is recited three times in Claim 1 and is fundamental to the patent's integrated unit structure. Its construction will determine the scope of structures that can be considered part of the claimed integral unit. Practitioners may focus on this term because the complaint refers to the corresponding accused parts as "plates" (Compl. ¶87(b), (c), (e)), suggesting a potential dispute over whether the term is limited to the plate-like embodiments shown in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim uses the general term "member," which could be argued to encompass any structure that performs the securing function, not just a plate.
- Evidence for a Narrower Interpretation: The detailed description consistently refers to these components as "securing plates" (e.g., '466 Patent, col. 2:42, 45, 54). The figures, such as Figure 23, depict these members (310, 312, 330) as plates. An accused infringer may argue that the claims, when read in light of the specification, should be limited to plate-like structures.
The Term: "roller driving member" (’602 Patent, Claim 1)
- Context and Importance: This term defines the active component that enables the claimed functionality of engaging and disengaging the roller for installation. The complaint's allegation of a "mechanism that raises and lowers the wheels" (Compl. ¶100(c)) is functionally ambiguous. The construction of "roller driving member" will be critical to determining whether the accused mechanism, whatever its actual operation, falls within the scope of the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is functional. Plaintiff may argue it should be construed to cover any mechanism that drives the roller from a non-contact to a contact position, regardless of the specific mechanical action (e.g., pushing, pulling, rotating).
- Evidence for a Narrower Interpretation: The specification of the parent ’466 Patent, which is part of the intrinsic record, discloses a specific embodiment of a driving member that uses a rotating bolt (397) to move the roller downward (’466 Patent, col. 20:20-34; Fig. 29). An accused infringer may argue the term should be limited to this disclosed structure and its equivalents.
VI. Other Allegations
- Indirect Infringement: The complaint pleads inducement and contributory infringement in the alternative for all three patents. The allegations are based on Defendant having knowledge of the patents and knowing the molds are specifically designed to operate as a material component in an infringing manner in Plaintiff's machines, with no substantial non-infringing use (Compl. ¶¶91-94, 104-107, 117-120). Inducement is further supported by allegations that Defendant provides instructions or assistance for installation and operation (Compl. ¶¶92, 105, 118).
- Willful Infringement: Willfulness is alleged for all three patents. The basis for willfulness is Defendant's alleged "direct knowledge" of the patents, having been "informed by ASB of its continued infringement," and acting despite the prior "Contractual Agreements to manufacture 'only one' mold" (Compl. ¶¶95, 108, 121).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural correspondence: Does the accused mold's configuration embody the specific, multi-part structural arrangement of "securing members," "pressure-receiving members," and suspended "shafts" required by the asserted claims of the ’466 patent, or does the complaint’s functional description signal a potential mismatch that will require adjudication under the doctrine of equivalents?
- A key evidentiary question will be one of operational mechanics: For the ’602 patent, what evidence will show that the accused "mechanism that raises and lowers the wheels" performs the specific function of a "roller driving member that moves the roller downward" from a non-contact to a contact position, as recited in Claim 1?
- A central theme of the case will be the interplay between patent and contract law: How will the factual history of the one-time license and the alleged unauthorized acquisition of technical information, which underlie the contract and trade secret claims, influence the judicial determination of knowledge and intent for the willful patent infringement allegations?