DCT
4:20-cv-03127
Automated Layout Tech LLC v. Precision Steel Systems LLC
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Automated Layout Technology, LLC (New Hampshire)
- Defendant: Precision Steel Systems, LLC (Nebraska); Donner Steel Works, Inc. (Nebraska); Nicholas Donner (Nebraska)
- Plaintiff’s Counsel: Hilgers Graben PLLC; Lando & Anastasi, LLP
- Case Identification: 4:20-cv-03127, D. Neb., 12/21/2022
- Venue Allegations: Venue is alleged to be proper in the District of Nebraska because Defendants reside in the district, maintain a regular and established place of business there, and have committed the alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendants’ CNC marking machine, the PLS-624, infringes two patents related to automated fabrication layout devices for metalworking projects.
- Technical Context: The technology involves automated CNC machines that print full-scale fabrication layouts directly onto large metal work surfaces, a process designed to replace time-consuming and error-prone manual layout methods in the structural steel industry.
- Key Procedural History: The complaint notes that the earlier of the two asserted patents, U.S. Patent No. 10,576,588, successfully underwent three separate reexaminations at the USPTO, a fact that may be presented to reinforce its presumption of validity. The complaint also distinguishes between an original "First Accused Product" and a "Second Accused Product," which is an alleged redesign developed after the lawsuit was initiated.
Case Timeline
| Date | Event |
|---|---|
| 2017-09-05 | Priority Date for ’588 and ’826 Patents |
| 2018-04-11 | Defendant Nicholas Donner allegedly first encounters Plaintiff's product at a trade show |
| 2019-12-26 | Domain name PrecisionSteelSystems.com registered |
| 2020-03-02 | Defendant Precision Steel Systems, LLC incorporated |
| 2020-03-03 | U.S. Patent No. 10,576,588 ('588 Patent) Issues |
| 2020-08-11 | Plaintiff sends Defendants a cease and desist letter regarding the '588 Patent |
| 2022-05-13 | Defendants allegedly inform Plaintiff of a redesign of the PLS-624 |
| 2022-08-30 | U.S. Patent No. 11,426,826 ('826 Patent) Issues |
| 2022-12-21 | Third Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,576,588, "Fabrication Layout Device and Method," issued March 3, 2020
The Invention Explained
- Problem Addressed: The patent identifies the traditional fabrication of metal railings as a labor-intensive, time-consuming, and error-prone process that relies on manual layout using tools like markers, tape measures, and chalk (Compl. ¶10; ’588 Patent, col. 1:12-28).
- The Patented Solution: The invention is a large-scale, automated CNC device that solves this problem by printing a full-scale pattern of a railing assembly directly onto a continuous steel work surface. It features a gantry system with a beam that moves in a first direction (e.g., Y-axis) and an ink dispenser that moves along the beam in a second direction (e.g., X-axis), allowing it to deposit a precise layout pattern from a digital file onto the work surface (’588 Patent, Abstract; col. 4:8-17). This printed pattern then serves as an exact guide for fabricators to position and weld the physical railing components (’588 Patent, col. 13:40-54).
- Technical Importance: This automated approach is designed to reduce layout time from several hours to a matter of minutes while dramatically improving the accuracy and efficiency of fabricating complex metal structures (Compl. ¶¶11-12).
Key Claims at a Glance
- The complaint asserts independent claim 1, as amended during reexamination (Compl. ¶60).
- Essential elements of independent claim 1 include:
- A table with a base and a steel work surface for supporting railing components.
- One or more guide rails along the table's sides.
- A beam located above the work surface, fixed to beam supports that movably engage the guide rails.
- A first motor to move the beam in a first direction.
- An ink dispenser attached to the beam, movable along the beam in a second direction, to dispense ink directly onto the steel work surface.
- A second motor to move the ink dispenser along the beam.
- One or more adjustors configured to adjust the position of the guide rails to ensure they extend linearly.
- A controller with stored electronic files that operates the motors to dispense ink in the pattern of the railing assembly.
- The complaint also alleges infringement of dependent claims 4-21 and reexamined claims 23-25, reserving the right to assert them (Compl. ¶80).
U.S. Patent No. 11,426,826, "Fabrication Layout Device and Method," issued August 30, 2022
The Invention Explained
- Problem Addressed: The patent addresses the same inefficiencies and potential for error inherent in the manual layout of metal railings as its parent, the ’588 Patent (’826 Patent, col. 1:23-36).
- The Patented Solution: As a continuation of the '588 Patent, the ’826 Patent describes a similar automated "railing fabrication workstation." A key distinction in the asserted claim is the use of the broader term "marking device" instead of "ink dispenser." This device is described as being configured to move into "contact" with the metal work surface to "mark" it with an assembly pattern, guided by a controller and motors (’826 Patent, Abstract; col. 15:10-24). The claimed solution again focuses on creating a precise, computer-generated physical template on the work surface to guide fabrication (’826 Patent, col. 4:20-39).
- Technical Importance: This patent continues the technical theme of automating and improving the accuracy of fabrication layout, potentially with claim language intended to cover a wider range of marking technologies beyond just ink dispensing.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶85).
- Essential elements of independent claim 1 include:
- A table with a base and a metal work surface for supporting railing components.
- One or more guide rails along the base.
- A beam above the work surface, coupled to beam supports that movably engage the guide rails.
- A "marking device" attached to and movable along the beam, configured to "move into contact with the metal work surface and mark" it with an assembly pattern.
- One or more motors to move the marking device.
- A controller with computer-executable code that causes the motors to move the marking device into contact with the work surface to mark the pattern.
- The complaint also alleges infringement of independent claims 10 and 15 (Compl. ¶96).
III. The Accused Instrumentality
Product Identification
- The accused products are the "PLS-624" CNC marking machines (Compl. ¶46). The complaint distinguishes between the original "First Accused Product" and a "Second Accused Product," which is an alleged redesign (Compl. ¶58).
Functionality and Market Context
- The PLS-624 is marketed as a "premier railing and miscellaneous metals layout system" (Compl. ¶46). Based on allegations and visual evidence, it is a large-format CNC machine comprising a flatbed table, a gantry system with a beam, and a head that moves in two axes to mark patterns onto a workpiece (Compl. ¶¶62-77, 88-93). A photograph provided in the complaint shows the "original version of the PLS-624," which appears to be a large gantry-style CNC machine with a control panel (Compl. ¶47). The complaint alleges that the PLS-624 was developed as a "copy-cat product" after Defendant Nicholas Donner gathered information about Plaintiff's "Lightning Rail®" product (Compl. ¶34).
IV. Analysis of Infringement Allegations
'588 Patent Infringement Allegations
The complaint alleges that the "First Accused Product" infringes at least claim 1 of the ’588 Patent (Compl. ¶¶59, 61). The complaint provides annotated photographs to support its allegations for many elements. For instance, a photograph identifies the alleged "steel work surface" and "base" of the accused device (Compl. ¶62).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a table including a base and a steel work surface secured to the base, the work surface being configured to support a plurality of railing components for fabrication of a railing assembly having a length of at least 3 feet | The First Accused Product is a device for railing fabrication with a table that includes a base and steel work surface for supporting railing components. | ¶62 | col. 6:10-24 |
| one or more guide rails extending along one or more sides of the table | The product has one or more guide rails along the sides of the table, as shown in an annotated photograph. | ¶64 | col. 7:31-34 |
| a beam located above the steel work surface, the beam extending between and fixed to beam supports each having a lower end movably engaging the one or more the guide rails | The product has a beam located above the work surface that is fixed to beam supports, which in turn movably engage the guide rails. | ¶66 | col. 8:47-59 |
| an ink dispenser attached to the beam and configured to move along the beam in a second direction... the ink dispenser further configured to dispense ink directly onto the steel work surface of the table | The product has an ink dispenser attached to the beam that moves along it and is configured to dispense ink onto the work surface. | ¶70 | col. 5:1-10 |
| one or more adjustors attached to the table, each adjustor configured to adjust a position of each of the one or more guide rails so that each of the one or more guide rails extends linearly along the steel work surface | The product allegedly has adjustors located "behind the guard rail, or behind the metal plate covering the ends of the guide rails" to adjust the guide rails. | ¶74 | col. 7:62-col. 8:4 |
| a controller configured to operate the first and second motors... the controller including one or more stored electronic files defining a pattern... to dispense ink onto the steel work surface... in the pattern of the railing assembly | The product has a controller, contained within a digital display, that operates the motors to move the beam and ink dispenser according to stored electronic files defining a pattern. | ¶¶75, 77 | col. 10:26-44 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over the "one or more adjustors" limitation. The complaint's evidence is a photograph pointing to a general area "behind the guard rail" (Compl. ¶74, p. 19). The defense may argue that the structures present in that location do not meet the claim's functional requirement to "adjust a position of each of the one or more guide rails" so they "extend linearly," raising a question of claim construction and factual infringement.
- Technical Questions: The complaint alleges Defendants did not dispute meeting most claim elements in a pre-suit communication (Compl. ¶¶63, 65, 67, etc.). If true, this suggests the core technical dispute will focus narrowly on the few contested elements, such as the "adjustors." The question for the court will be whether the evidence shows the accused product's components perform the specific function required by the claim, or if they are merely standard machine components without the claimed adjustability.
'826 Patent Infringement Allegations
The complaint alleges that the "Second Accused Product (Redesign)" infringes at least claim 1 of the ’826 Patent (Compl. ¶¶84, 87). A photograph provided with the complaint shows the alleged "marking device" on the redesigned product (Compl. ¶91).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A railing fabrication workstation comprising: a table having a base and a metal work surface on the base... configured to support a plurality of components... | The accused product is a railing fabrication workstation with a table, base, and metal work surface. | ¶88 | col. 4:8-12 |
| one or more guide rails extending along one or more sides of the base | The product has guide rails extending along the sides of the base. | ¶89 | col. 7:31-34 |
| a beam located above the metal work surface, the beam coupled to one or more beam supports each comprising a lower end portion movably engaging the one or more guide rails | The product has a beam coupled to beam supports that movably engage the guide rails. | ¶90 | col. 8:47-59 |
| a marking device attached to the beam and moveable along the beam, the marking device configured to move into contact with the metal work surface and mark the metal work surface with an assembly pattern... | The product has a "marking device" attached to the beam that is configured to contact and mark the metal work surface with a pattern. | ¶91 | col. 15:10-17 |
| a controller including computer executable code that, when executed... causes the one or more motors to move the marking device into contact with the metal work surface and mark the metal work surface... | The product has a controller with code that, when executed, causes the motors to move the marking device to contact and mark the work surface with the pattern. | ¶93 | col. 15:19-24 |
- Identified Points of Contention:
- Scope Questions: The dispute will likely focus on the scope of "marking device" and the meaning of "move into contact with... and mark." This language is broader than the "ink dispenser" in the ’588 Patent. A primary question will be whether the "Second Accused Product (Redesign)" employs a technology that still falls within this broader definition.
- Technical Questions: The complaint provides photographs of the alleged redesign with annotations from the Defendants highlighting changes (Compl. ¶57). However, the complaint does not explain the technical nature of these changes. A key factual question will be what the redesign entails. Does it still physically "contact" the work surface, or does it use a non-contact method? Does it "mark" the surface in the manner contemplated by the patent, or does it operate differently?
V. Key Claim Terms for Construction
The Term: "adjustor" (’588 Patent, Claim 1)
- Context and Importance: This term is present in the asserted claim of the ’588 Patent but absent from the asserted claim of the ’826 Patent, suggesting it was a potential avenue for a non-infringing design-around. The infringement case for the '588 Patent may depend heavily on whether the accused device is found to have this specific component.
- Intrinsic Evidence for a Broader Interpretation: The patent states, "The guide rails 124 are adjustable using a plurality of adjustors 140" (’588 Patent, col. 7:62-63). A party could argue this functional language supports a construction covering any structure that performs the function of adjusting the guide rails for linearity.
- Intrinsic Evidence for a Narrower Interpretation: The only embodiment described is a "steel plate... with a threaded hole to receive a fastener" that pushes against the guide rail to adjust it (’588 Patent, col. 8:5-14). A party may argue that the term should be limited to this disclosed structure or structures substantially similar to it.
The Term: "marking device configured to move into contact with the metal work surface and mark the metal work surface" (’826 Patent, Claim 1)
- Context and Importance: This term's construction is critical for determining infringement by the "Second Accused Product (Redesign)." The scope of "marking device," "contact," and "mark" will define whether the redesigned product, which may use a different marking technology, still infringes.
- Intrinsic Evidence for a Broader Interpretation: The patent specification is carried over from the '588 patent and broadly describes creating a "railing pattern" using "any group of markings" (’826 Patent, col. 4:29-32). Plaintiff may argue "marking device" should be construed broadly to include scribes, punches, or other tools beyond ink, and that "contact" can mean operational proximity, not just literal touching.
- Intrinsic Evidence for a Narrower Interpretation: The specification's primary and most detailed example is an "ink dispenser system" (’826 Patent, col. 4:51-52). A defendant could argue this context limits the scope of "marking device." They may also argue "contact" requires direct, physical touching, which would exclude non-contact markers like lasers or certain jet printers.
VI. Other Allegations
- Indirect Infringement: While not pleaded as a separate count, the complaint alleges Defendants make, use, sell, and offer for sale the accused products (Compl. ¶¶78, 94). These allegations, combined with the assertion that the product's sole purpose is to perform the patented method, could form the basis for claims of induced or contributory infringement.
- Willful Infringement: The complaint makes explicit allegations of willful infringement for both patents (Compl. ¶¶81, 97). The factual basis is extensive, including alleged pre-suit knowledge from direct interactions at a 2018 trade show (Compl. ¶¶30-33), receipt of an August 2020 cease and desist letter (Compl. ¶56), and allegations of intentional copying, such as commissioning "Reverse Engineering" and using Plaintiff's trademarks in website meta-tags to divert customers (Compl. ¶¶39, 53). The complaint further alleges that Defendants commissioned a redesign of the product after the lawsuit was filed "with reference to ALT's patents," which, if proven, would be strong evidence of willful post-suit infringement (Compl. ¶42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and design-around: Does the "First Accused Product" possess "adjustors" as that term is construed in the ’588 patent, or did Defendants successfully design around this specific limitation? Similarly, does the "Second Accused Product (Redesign)" still fall within the scope of the ’826 patent’s broader "marking device" and "contact" language?
- A central evidentiary question will be one of technical operation: What is the precise nature of the "redesign"? The court will need to weigh technical evidence showing how the redesigned product actually functions against the construed claim language to determine infringement.
- A key question for damages will be willfulness: Given the detailed allegations of pre-suit knowledge, intentional copying, and post-suit redesign efforts, the court will need to determine if Defendants' conduct was "willful, intentional, and purposeful," which could lead to enhanced damages and a finding that the case is "exceptional," thereby entitling the Plaintiff to attorneys' fees.