DCT

1:17-cv-00147

Uni Systems LLC v. United States Tennis Association Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-00147, E.D.N.Y., 01/11/2017
  • Venue Allegations: Venue is alleged to be proper based on the domicile of several defendants in New York and because the construction and operation of the accused retractable roof, constituting a substantial part of the events giving rise to the claims, occurred within the district.
  • Core Dispute: Plaintiff alleges that Defendants' design, construction, and operation of the retractable roof for the Arthur Ashe Stadium infringes two patents related to large-scale retractable roof structural designs and movement mechanisms.
  • Technical Context: The technology concerns mechanization systems for kinetic architecture, specifically the structural engineering and transport mechanisms required for large, retractable roofs on major sports stadiums.
  • Key Procedural History: The complaint alleges a complex business history where Plaintiff previously worked with Defendant Hunt Construction on a stadium roof in Arizona. Plaintiff alleges that Defendant Hardesty & Hanover subsequently took over maintenance on that roof under false pretenses to misappropriate Plaintiff's trade secrets, which were then allegedly used in the infringing Arthur Ashe Stadium project. Plaintiff also alleges it sent notice letters to Defendants regarding the infringement in May 2016, prior to filing the lawsuit.

Case Timeline

Date Event
2001-01-23 Priority Date for U.S. Patent No. 6,789,360
2003-08-12 Agreement for Arizona Cardinals Stadium roof project
2004-01-14 Uni-Systems subcontracted for Arizona Cardinals roof
2004-09-14 U.S. Patent No. 6,789,360 ("Retention Mechanism patent") Issues
2005-03-09 Priority Date for U.S. Patent No. 7,594,360
2006-05-03 Uni-Systems begins maintenance agreement for Cardinals roof
2009 Uni-Systems' maintenance agreement for Cardinals roof terminated
2009-09-29 U.S. Patent No. 7,594,360 ("Lateral Release patent") Issues
2010 Hardesty & Hanover ends its maintenance of Cardinals roof
2011 USTA announces plan to construct Ashe Retractable Roof
2011-11 Uni-Systems renews maintenance agreement for Cardinals roof
2012 Uni-Systems delivers initial design proposal for Ashe roof
2015-Summer Uni-Systems reviews mechanical drawings for Ashe Retractable Roof
2016-05-24 Pre-suit notice letter sent to Defendants
2016-08 Ashe Retractable Roof becomes operational for U.S. Open
2017-01-11 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,789,360 - "Retractable Roof System for Stadium" (the "Retention Mechanism patent")

  • Patent Identification: U.S. Patent No. 6,789,360, "Retractable Roof System for Stadium," issued September 14, 2004 (Compl. ¶14).

The Invention Explained

  • Problem Addressed: The patent's background describes conventional retractable roof designs for stadiums as being undesirably heavy and bulky, which can interfere with spectator views from some seats (Retention Mechanism patent, col. 1:41-65).
  • The Patented Solution: The invention proposes a lighter, less obtrusive roof assembly using a "major truss" that is structurally configured as a "tied arch." This design features a curved convex upper portion and a tensioned lower portion positioned to handle most gravity-induced stress as tension, rather than compression or bending. This allows for the elimination of many diagonal structural elements, reducing weight and visual obstruction (Retention Mechanism patent, col. 4:39-50). A movable roof panel travels along a guide track mounted on this tied-arch truss.
  • Technical Importance: This tied-arch approach offered a method to create massive, long-spanning support structures for retractable roofs that were lighter and more efficient than traditional truss designs (Compl. ¶16).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶55).
  • Essential elements of claim 1 include:
    • At least one "major truss" spanning at least 200 feet, configured as a "tied arch" with a "curved convex upper portion" and a "tensioned lower portion" beneath it to assume stress as tension.
    • At least one "roof member" secured to the truss.
    • A "curved, convex guide track" secured to the upper portion of the truss, over which the roof member is arranged to move.
    • A "retention mechanism" with a "retention element" for engaging a "downwardly facing surface" of the guide track to prevent the roof member from lifting upward.
  • The complaint alleges infringement of "one or more claims," which may imply the future assertion of dependent claims (Compl. ¶60).

U.S. Patent No. 7,594,360 - "Lateral Release Mechanism for Movable Roof Panels" (the "Lateral Release patent")

  • Patent Identification: U.S. Patent No. 7,594,360, "Lateral Release Mechanism for Movable Roof Panels," issued September 29, 2009 (Compl. ¶17).

The Invention Explained

  • Problem Addressed: The patent addresses the difficulty of maintaining perfect parallel alignment of the tracks for a large retractable roof due to factors like construction variance, thermal expansion, and wind loads. These misalignments can cause high stress and binding in the transport mechanism (Lateral Release patent, col. 2:5-20).
  • The Patented Solution: The invention is a system for a large structural member that uses a "lateral release system," comprising a "linear slide bearing," interposed between the roof's transport wheels and the roof structure itself. This bearing allows for a limited amount of movement in a direction non-parallel to the tracks (e.g., sideways), accommodating misalignments without transmitting high side loads to the drive system. This enables the use of a simpler "single trolley rail" design (Lateral Release patent, col. 3:7-14; Abstract).
  • Technical Importance: This mechanism provides a compact and mechanically simple solution to manage the inevitable misalignments in massive moving structures, enhancing reliability and reducing structural stress (Compl. ¶19).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶56).
  • Essential elements of claim 1 include:
    • A transport mechanism comprising a "single trolley rail" and a "plurality of rail follower wheels" on the overhead structural member.
    • A "lateral release system" for each transport mechanism, interposed between the wheels and the structural member.
    • The lateral release system maintains orientation while permitting limited movement in a "nonparallel" direction.
    • The system transmits a "very small side load" to the single trolley rail.
    • The lateral release system comprises a "linear slide bearing."
  • The complaint alleges infringement of "one or more claims," which may imply the future assertion of dependent claims (Compl. ¶74).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are the design for, and the fully constructed and operational, retractable roof system at the Arthur Ashe Stadium in Flushing, New York (the "Ashe Retractable Roof") (Compl. ¶42, ¶60).

Functionality and Market Context

  • The Ashe Retractable Roof is a large-scale mechanization system that allows two roof panels to move over the stadium's opening (Compl. ¶55-56). It is supported by large trusses and uses transport mechanisms, or bogies, that travel along rails (Compl. ¶55-56). The complaint alleges the roof was designed and built by a consortium of defendants, is owned and operated by the USTA, and was put into service for the high-profile U.S. Open Tennis Tournament in August 2016, where it was widely praised (Compl. ¶52, ¶61-66).

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 spanning a distance...at least 200 feet, said major truss being structurally configured as a tied arch having a curved convex upper portion and a tensioned lower portion... The complaint alleges the Ashe roof includes a major truss spanning the stadium, configured as a tied arch with a curved convex upper portion and a tensioned lower portion. This is illustrated in an elevation drawing of the roof structure. (Compl. p. 16) ¶55 col. 4:20-44
at least one roof member that is secured to said major truss; The accused system includes a retractable roof panel that is secured to and moves along the major truss. ¶55 col. 2:23-24
a curved, convex guide track that is secured to said curved, convex upper portion of said major truss, and wherein said roof member is constructed and arranged to be moved over said guide track; and The accused roof allegedly has a curved, convex guide rail attached to the upper part of the truss, which the roof panels travel along via bogies. A close-up view of the elevation drawing is provided as evidence. (Compl. p. 17) ¶55 col. 4:51-54
a retention mechanism for preventing said roof member from being lifted upwardly...wherein said retention mechanism comprises at least one retention element for engaging a downwardly facing surface of said guide track... The complaint identifies an "uplift guard" on the accused bogie assembly that allegedly engages a downwardly facing surface of the guide rail to prevent the roof panels from lifting. A detailed diagram of the bogie assembly is provided. (Compl. p. 19) ¶55 col. 5:2-12

Lateral Release patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
[a] first and second transport mechanisms, each of which...comprising a single trolley rail...and a plurality of rail follower wheels... The accused roof allegedly uses transport mechanisms (bogies) with multiple follower wheels that travel along a single rail attached to the underlying truss. A detailed drawing illustrates the bogie assembly and follower wheels. (Compl. p. 21) ¶56 col. 3:62-65
[b] a lateral release system for each of said transport mechanism...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. The complaint alleges that the equalizer assembly in the accused bogie includes a "linear slide bearing" in the form of a bushing that can slide along a pin on an axis perpendicular to the rail, which permits lateral movement of the roof panels. An annotated section view of the assembly illustrates this alleged functionality. (Compl. p. 22) ¶56 col. 3:12-14

Identified Points of Contention

  • Scope Questions: A central question for the Retention Mechanism patent will be whether the accused "uplift guard," a seemingly static component, meets the definition of the claimed "retention mechanism," which the patent specification illustrates with a more complex, biased wheel assembly. For the Lateral Release patent, a dispute may arise over whether the term "linear slide bearing" can be construed to read on the accused "bushing and pin" assembly.
  • Technical Questions: For the Retention Mechanism patent, a technical question is whether the accused truss is, in fact, "structurally configured as a tied arch" that assumes stress primarily "as tension," as required by the claim. This will likely involve competing expert analyses of the structural engineering. For the Lateral Release patent, the question is whether the accused bushing assembly actually performs the function of a "linear slide bearing" by transmitting a "very small side load," a quantitative feature that may be subject to technical dispute.

V. Key Claim Terms for Construction

Term: "tied arch" (Retention Mechanism patent, Claim 1)

  • Context and Importance: This term defines the core structural innovation of the patent. The outcome of the infringement analysis for the primary structural claim depends on whether the accused Ashe roof truss falls within its scope.
  • Evidence for a Broader Interpretation: The patent claims a truss "structurally configured as a tied arch having a curved convex upper portion and a tensioned lower portion" (Retention Mechanism patent, col. 10:11-15). This could be argued to encompass any arch-like structure with a tension member, which the accused structure is alleged to be.
  • Evidence for a Narrower Interpretation: The specification describes the preferred embodiment as having a "generally lenticular in shape," where the lower chord is also convex and generally symmetrical to the upper chord (Retention Mechanism patent, col. 4:56-60). A party could argue that this "lenticular" feature is a defining characteristic of the invention, not merely a preference, thereby narrowing the scope of "tied arch" to exclude trusses that lack this specific geometry.

Term: "linear slide bearing" (Lateral Release patent, Claim 1)

  • Context and Importance: This is the dispositive term for infringement of the Lateral Release patent. The case hinges on whether the accused bushing-and-pin mechanism is properly classified as a "linear slide bearing." Practitioners may focus on this term because the complaint's allegation equates a simple mechanical arrangement with a specific, potentially more complex, engineering component.
  • Evidence for a Broader Interpretation: The patent states that the lateral release system "is preferably embodied as a linear slide bearing" and its purpose is to "permit limited movement" in a non-parallel direction (Lateral Release patent, col. 4:40-42). This could support an argument that any component achieving this function through linear sliding qualifies.
  • Evidence for a Narrower Interpretation: The claim itself uses the specific term "linear slide bearing," not a purely functional description. The specification discusses bearing sleeves "fabricated from a fiberglass epoxy composite with a polytetrafluoroethylene (PTFE) fabric inner liner" and available commercially under the trade name DURALON (Lateral Release patent, col. 5:15-20). This could support an argument that the term implies specific material (e.g., low-friction PTFE) or structural characteristics not present in the accused simple bushing and pin.

VI. Other Allegations

Indirect Infringement

  • The complaint does not contain a separate count for indirect infringement, but the prayer for relief seeks an injunction against it (Compl. ¶118a). The factual allegations suggest a basis for such claims, asserting that multiple defendants (designers, engineers, suppliers) offered for sale, sold, and supplied designs and components for the Ashe Retractable Roof, which were then assembled and used by other defendants (Compl. ¶62-66, ¶76-80).

Willful Infringement

  • The complaint alleges willful infringement based on pre-suit knowledge. It states that notice letters identifying the patents-in-suit were sent to defendants on or about May 24, 2016, but that defendants continued to use the infringing roof and solicit bids for another, similar project (Compl. ¶69, ¶83). The willfulness claim is further supported by extensive allegations of a conspiracy to misappropriate Plaintiff's trade secrets to develop the accused roof design (Compl. ¶30-41).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of claim construction: can the term "linear slide bearing," which may imply specific engineering characteristics, be construed broadly enough to cover the accused "bushing and pin" assembly? Similarly, what are the definitive structural and functional requirements of a "tied arch" as claimed in the Retention Mechanism patent, and does the accused truss meet them?
  • A central factual dispute will concern technical operation: what evidence will establish that the accused roof's support structure functions as a "tied arch" by assuming stress "as tension"? Furthermore, what quantum of force constitutes the "very small side load" transmitted by the accused lateral release system, and is it consistent with the claim language of the Lateral Release patent?
  • Finally, a key question for damages will be willfulness: can the plaintiff prove that the defendants' alleged infringement was egregious, particularly given the detailed backstory of alleged trade secret misappropriation and the asserted continuation of infringing acts after receiving direct notice of the patents?