DCT
4:20-cv-03127
Automated Layout Tech LLC v. Precision Steel Systems LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Automated Layout Technology, LLC (New Hampshire)
- Defendant: Precision Steel Systems, LLC (Nebraska) and Nicholas Donner (Nebraska)
- Plaintiff’s Counsel: Hilgers Graben PLLC; Lando & Anastasi, LLP
- Case Identification: 4:20-cv-03127, D. Neb., 06/23/2022
- Venue Allegations: Venue is alleged to be proper in the District of Nebraska because the 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 for fabricating metal railings infringes a patent covering an automated device for drawing fabrication layouts.
- Technical Context: The technology automates the manual, time-consuming, and error-prone process of laying out designs for metal railings, aiming to increase speed and accuracy in the structural steel fabrication industry.
- Key Procedural History: The patent-in-suit has undergone two ex parte reexaminations where all claims survived, with independent claim 1 being amended. A third reexamination concerning other claims was allegedly pending at the time of filing. This extensive USPTO review may factor into the patent's presumption of validity, and the amendments to the asserted claim will be central to claim construction.
Case Timeline
| Date | Event |
|---|---|
| 2017-09-05 | '588 Patent Priority Date |
| 2018-03-18 | Plaintiff's Trademark Application Priority Date |
| 2018-04-11 | Defendant Donner allegedly approaches Plaintiff at trade show |
| 2018-07-18 | Defendant Donner allegedly ends communication with Plaintiff |
| 2019-12-26 | Defendant's domain name <PrecisionSteelSystems.com> registered |
| 2020-03-02 | Defendant Precision Steel Systems, LLC incorporated |
| 2020-03-03 | '588 Patent Issued |
| 2020-08-04 | Alleged first use of Plaintiff's trademarks in Defendant's website meta-tags |
| 2020-08-11 | Plaintiff sends cease and desist letter to Defendant |
| 2022-06-23 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 10,576,588, "Fabrication Layout Device and Method," issued March 3, 2020.
- The Invention Explained:
- Problem Addressed: The patent's background describes the traditional fabrication of metal railings as a labor-intensive process involving manual layout of designs on a work surface using tools like markers, tape measures, and squares, which is time-consuming and prone to human error (Compl. ¶8; '588 Patent, col. 1:12-25).
- The Patented Solution: The invention is a large fabrication device comprising a table with a flat work surface upon which a gantry system moves. An ink dispenser is mounted on the gantry and moves in a second, different direction. A controller directs the coordinated movements of the gantry and ink dispenser to automatically draw a full-scale pattern of a railing assembly directly onto the work surface, providing a precise guide for fabricators to position and weld the railing components ('588 Patent, Abstract, col. 4:10-23).
- Technical Importance: This automated approach is intended to reduce the layout time for complex railings from hours to minutes, thereby increasing throughput and minimizing costly fabrication errors (Compl. ¶¶9-10).
- Key Claims at a Glance:
- The complaint asserts infringement of at least independent claim 1, as amended by reexamination (Compl. ¶45).
- The essential elements of asserted independent claim 1 are:
- A device for railing fabrication.
- 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, configured to move along the beam in a second direction and dispense ink directly onto the work surface.
- A second motor to move the ink dispenser along the beam.
- One or more adjustors to ensure the guide rails extend linearly.
- A controller with stored electronic files defining a railing pattern, programmed to operate the ink dispenser to draw the pattern on the work surface.
- The complaint notes that other claims survived reexamination, and the infringement count alleges infringement of "at least claim 1," reserving the right to assert other claims (Compl. ¶¶16, 63).
III. The Accused Instrumentality
- Product Identification: The PLS-624, identified as the "Accused Product" (Compl. ¶35).
- Functionality and Market Context:
- The complaint describes the Accused Product as a "fully-automated CNC marking machine" and "the premier railing and miscellaneous metals layout system on the market" (Compl. ¶¶10, 35). The complaint includes a photograph of the PLS-624, which depicts a large table with an overhead gantry system and a head for marking or dispensing (Compl. p. 8).
- The functionality, as depicted and described, involves a gantry-based system for marking layouts on a large, flat table, which is the core functionality of the patented device (Compl. ¶¶47-62).
- The complaint alleges the Accused Product is a "copy-cat" and "knock-off" of Plaintiff's Lightning Rail® product, developed after Defendant Donner expressed interest in and received information about Plaintiff's machine (Compl. p. 2, ¶29).
IV. Analysis of Infringement Allegations
'588 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A table including a base and a steel work surface...configured to support a plurality of railing components for fabrication of a railing assembly having a length of at least 3 feet | The Accused Product has a table with a base and steel work surface for fabricating railings. The complaint includes a photograph labeling the "base" and "steel work surface" of the Accused Product. | ¶47, p. 11 | col. 6:14-25 |
| one or more guide rails extending along one or more sides of the table | The Accused Product has guide rails along the sides of its table. An annotated photograph highlights the "guide rails" on the accused machine. | ¶49, p. 11 | col. 7:31-35 |
| 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 Accused Product has a beam located above the work surface that is movably engaged with the guide rails via beam supports. The complaint provides a photograph pointing to the "beam" and its movable engagement. | ¶51, p. 12 | col. 8:47-54 |
| a first motor operatively coupled to the beam and configured to move the beam in the first direction relative to the steel work surface | The Accused Product has at least one motor, allegedly housed within the beam supports, to move the beam. A photograph indicates the location of the "motor coupled to beam." | ¶53, p. 13 | col. 9:4-10 |
| 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 | The Accused Product has an "ink dispenser" attached to the beam that moves along it and dispenses ink onto the table. This is illustrated with a photograph highlighting the dispenser. | ¶55, p. 13 | col. 10:7-14 |
| a second motor operatively coupled to the ink dispenser and configured to move the ink dispenser along the beam in the second direction | The Accused Product has a second motor to move the ink dispenser along the beam, as shown in an annotated photo. | ¶57, p. 14 | col. 9:8-10 |
| 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 Accused Product allegedly has "adjustors" behind a guard rail or metal plate that are configured to linearly adjust the guide rails, as depicted in a close-up photograph. | ¶59, p. 15 | col. 8:5-14 |
| a controller...programmed to operate the ink dispenser according to the one or more stored electronic files to dispense ink onto the steel work surface of the table in the pattern of the railing assembly | The Accused Product includes a controller with a digital display, which is alleged to be programmed to operate the dispenser to create patterns from electronic files. The complaint includes a photo of the "Controller." | ¶¶60, 62, p. 15 | col. 10:30-52 |
Identified Points of Contention:
- Scope Questions: The complaint's allegations appear to map directly onto the claim elements, supported by annotated photographs. A recurring allegation is that Defendant PSS, in response to a cease and desist letter, "did not dispute" that the Accused Product met most of these limitations (Compl. ¶¶48, 50, 52, 54, 56, 58, 61). This suggests that the primary dispute may center on a few key limitations or their interpretation rather than the general presence of the components.
- Technical Questions: The allegation for the "adjustors" limitation points to components "behind the guard rail" (Compl. ¶59). A potential point of dispute is whether these components are in fact "adjustors" that perform the claimed function of ensuring the guide rails "extend linearly," or if they serve another purpose. The evidence for the "controller programmed to..." element will also be critical; the question may arise whether a general-purpose CNC controller executing a standard design file meets this limitation, or if more specific, embedded programming is required by the claim.
V. Key Claim Terms for Construction
The Term: "one or more adjustors...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"
- Context and Importance: This term is critical because it defines a specific functional requirement for maintaining the precision of the gantry system. The complaint's evidence for this element appears less direct than for others (Compl. ¶59). The infringement analysis may hinge on whether the accused components meet both the structural ("adjustors") and functional ("so that...extends linearly") aspects of this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that the specification describes the function broadly as ensuring the guide rail "is straight along its entire length" ('588 Patent, col. 8:3-4) and that any mechanism achieving this result should be covered.
- Evidence for a Narrower Interpretation: Defendant may point to the specific embodiment described, which consists of "steel plates welded to the base" with a threaded bolt for adjustment ('588 Patent, col. 8:5-9), arguing the term should be limited to such a structure or one that corrects for "flexing, bending, waviness, or distortion" (col. 8:1-3).
The Term: "a controller...programmed to operate the ink dispenser according to the one or more stored electronic files to dispense ink...in the pattern of the railing assembly"
- Context and Importance: This limitation defines the "intelligence" of the device. The word "programmed" was added during reexamination, making its interpretation vital. Practitioners may focus on this term because its construction could determine whether a general-purpose CNC controller infringes, or if the claim requires specialized software or firmware.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes a controller that operates via a GUI, allowing a user to select or import patterns from "a CAD software application" ('588 Patent, col. 10:30-43). Plaintiff will likely argue that configuring a controller to execute these specific files constitutes being "programmed" for the claimed purpose.
- Evidence for a Narrower Interpretation: Defendant may argue that "programmed" implies a specific set of embedded instructions for railing fabrication, distinct from the more general function of executing any imported G-code or vector file. The prosecution and reexamination history will be highly relevant to distinguishing "programmed to" from the broader "configured to."
VI. Other Allegations
- Indirect Infringement: The complaint does not plead separate counts for induced or contributory infringement, focusing instead on direct infringement by Defendants for making, using, and selling the Accused Product (Compl. ¶63).
- Willful Infringement: The complaint alleges that Defendants' infringement has been willful, intentional, and purposeful (Compl. ¶65). This allegation is based on both pre- and post-suit knowledge. Pre-suit knowledge is supported by allegations that Defendant Donner learned of Plaintiff's "patent pending" product at a trade show, obtained information about it, and then developed a "copy-cat" product (Compl. ¶¶25-29). Further, the complaint alleges a cease and desist letter was sent on August 11, 2020, explicitly notifying Defendants of the '588 patent (Compl. ¶43).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary and claim construction question will be one of functional and structural equivalence: does the component identified by the plaintiff behind the Accused Product's guard rail (Compl. ¶59) meet the claim requirement of an "adjustor" specifically configured to ensure the guide rails "extend linearly," or is there a fundamental mismatch in structure or technical operation?
- A central legal issue will be one of definitional scope: can the term "controller programmed to...," which was added during reexamination, be construed to cover a general-purpose CNC controller executing an imported design file, or does the claim require a more specialized software architecture specifically created for dispensing ink in railing patterns?
- Given the strong allegations of copying and prior notice, a critical question for damages will be one of culpability: does the evidence of Defendants' alleged pre-suit conduct, including interactions at a trade show and subsequent development of an allegedly similar product, rise to the level of egregious behavior required to support a finding of willful infringement?