DCT
1:23-cv-07351
Hanover Prest Paving Co v. Si Pedestal Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hanover Prest-Paving Co. t/a Hanover Architectural Products (Pennsylvania)
- Defendant: SI Pedestal, Corp. (New York)
- Plaintiff’s Counsel: Barley Snyder
- Case Identification: 1:23-cv-07351, E.D.N.Y., 10/02/2023
- Venue Allegations: Venue is asserted based on the Defendant's residence in New York and because a substantial part of the events giving rise to the claims allegedly occurred in the Eastern District of New York.
- Core Dispute: Plaintiff alleges that Defendant’s stackable paver pedestal assembly infringes a patent related to a stackable pedestal system for constructing elevated decks.
- Technical Context: The technology concerns modular, stackable pedestals used in construction to support pavers or tiles, creating a level, traffic-bearing surface over an uneven or sloped underlying structure like a roof.
- Key Procedural History: The patent-in-suit, U.S. Patent No. 7,386,955, underwent an ex parte reexamination, resulting in certificate U.S. 7,386,955 C1. The reexamination confirmed the patentability of asserted claims 1, 8, and 9, but cancelled asserted claim 10. The complaint also alleges Plaintiff provided Defendant with notice of the patent and alleged infringement beginning in June 2023.
Case Timeline
| Date | Event |
|---|---|
| 2006-11-13 | U.S. Patent No. 7,386,955 Priority Date |
| 2008-06-17 | U.S. Patent No. 7,386,955 Issue Date |
| 2022-12-30 | U.S. Patent No. 7,386,955 C1 Reexamination Certificate Issued |
| 2023-06-01 | Alleged first notice of infringement sent to Defendant |
| 2023-10-02 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,386,955 (as affected by Reexamination Certificate 7,386,955 C1) - “Stackable Pedestal for Supporting Decking Elements,” issued June 17, 2008
The Invention Explained
- Problem Addressed: The patent describes a problem with prior art adjustable-height pedestal systems. When thin plates or "shims" are added on top of a pedestal to make fine height adjustments, they effectively reduce the height of the pedestal's upstanding walls that are meant to hold paving tiles in place, a potentially allowing the tiles to be "easily jostled out of proper position and alignment" (’955 Patent, col. 1:55-57).
- The Patented Solution: The invention proposes a stackable pedestal design where the upstanding positioning elements ("abutments") on a lower pedestal have a height that is greater than or equal to the thickness of the pedestal body itself (’955 Patent, col. 2:11-15). The pedestal body also contains apertures offset from the abutments. This configuration allows the tall abutments of a lower pedestal to pass completely through the body of an identical, stacked upper pedestal, ensuring that a robust positioning structure remains engaged with the decking elements regardless of how many pedestals are stacked (’955 Patent, col. 2:15-20).
- Technical Importance: This design allows for the creation of stable, elevated decks with significant height variation using standardized, interlocking components, overcoming a key stability limitation of prior art systems when fine height adjustments were needed (’955 Patent, col. 5:26-34).
Key Claims at a Glance
- The complaint asserts independent claims 1, 8, 9, and 10 (Compl. ¶28). However, the reexamination certificate for the ’955 Patent cancelled claim 10 (’955 C1 Patent, col. 1:16). The patentability of claims 1, 8, and 9 was confirmed.
- Independent Claim 1:
- A pedestal assembly comprising a first base and a separate companion base, each with a substantially identical predetermined thickness.
- Each base has abutments projecting upwardly to a height that is greater than or equal to the base's thickness.
- The first base has apertures offset from its abutments, which are sized to receive the abutments of the companion base when they are matingly engaged.
- Independent Claim 8:
- A stackable pedestal assembly with at least a pair of substantially-identical pedestal bodies.
- Each body has upstanding abutment surfaces projecting a distance greater than the body's predetermined thickness.
- Each body has through apertures arranged to receive the abutment surfaces of another body.
- When stacked, the abutment surfaces of a lower body project above the topside surface of an upper body.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "stackable paver pedestal assembly known as Model H" (Compl. ¶12).
Functionality and Market Context
- The complaint alleges that the "Model H" is an "Infringing Product" that allows paving pedestals to be stacked (Compl. ¶9, ¶12). The complaint provides minimal technical detail regarding the specific structure or operation of the Model H product, instead alleging in a conclusory manner that it practices the patented invention (Compl. ¶15, ¶17, ¶19, ¶21).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges infringement by quoting the independent claims and asserting that the accused product "includes each and every element" of those claims. It does not provide an element-by-element breakdown or claim chart exhibit. The following summary is based on the complaint's structure.
’955 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first base and a separate companion base each having a plurality of corner support portions and a topside and a bottom side defining a predetermined thickness...substantially identical... | The Model H product is alleged to comprise at least two separate, substantially identical bases with these features. | ¶14, ¶15 | col. 6:51-57 |
| each of said first base and said companion base having abutments projecting upwardly from said topside a predetermined height that is greater than or equal to said predetermined thickness... | The Model H product's bases are alleged to have abutments whose height is greater than or equal to the base's thickness. | ¶14, ¶15 | col. 6:58-63 |
| said first base having apertures extending transversely therethrough offset from said abutments for receiving said abutments of said companion base when said first base and companion base are matingly engaged. | The Model H product's bases are alleged to have apertures designed to receive the abutments from another base when stacked. | ¶14, ¶15 | col. 6:64-col. 7:1 |
’955 Patent Infringement Allegations (Claim 8)
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least a pair of separate substantially-identical pedestal bodies each having a topside with a surface portion and a bottom side; | The Model H product is alleged to be comprised of at least two separate, substantially identical pedestal bodies. | ¶16, ¶17 | col. 7:27-29 |
| ...each of said pedestal bodies having a first pair of upstanding abutment surfaces...and a second pair of abutment surfaces... | The Model H product is alleged to have at least two pairs of upstanding abutment surfaces on each body. | ¶16, ¶17 | col. 7:33-38 |
| said abutment surfaces...projecting above said topside a distance greater than said predetermined thickness; | The Model H product's abutment surfaces are alleged to have a height greater than the thickness of the pedestal body. | ¶16, ¶17 | col. 7:39-41 |
| each of said pedestal bodies having through apertures...for receiving said abutment surfaces of said other one of said pedestal bodies when...matingly engaged... | The Model H product's bodies are alleged to have apertures for receiving the abutment surfaces of another body when stacked. | ¶16, ¶17 | col. 7:46-51 |
| whereby when like pedestal bodies are stacked in mating engagement, the abutment surfaces of a lower one of the pedestal bodies projects above the topside...of an upper one... | When the Model H product's bodies are stacked, the abutments of the lower body are alleged to project above the top surface of the upper body. | ¶16, ¶17 | col. 7:52-56 |
- Identified Points of Contention:
- Technical Question: The central factual dispute will likely concern the specific dimensions of the accused Model H product. The complaint does not provide evidence that the product’s "abutments" actually have a height that is "greater than or equal to" the thickness of its body, or that they pass through corresponding apertures when stacked. This will be a key subject for discovery and expert analysis.
- Scope Question: The term "substantially identical" as applied to the pedestal bodies may become a point of contention. The analysis will question what degree of structural difference, if any, between two stacked components is permissible while still falling within the scope of this limitation.
V. Key Claim Terms for Construction
The Term: "abutments"
- Context and Importance: The structure, height, and interaction of the "abutments" form the basis of the patented invention. The definition of this term is critical to determining whether the accused product's paver-positioning features meet the claim limitations. Practitioners may focus on this term because its breadth will dictate whether only specific wall-like structures infringe, or if other types of projections could also be covered.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explicitly defines an abutment as potentially being "an upstanding wall, flange, post, or the like," which suggests the term is not limited to a single form (’955 Patent, col. 2:11-13).
- Evidence for a Narrower Interpretation: The patent’s figures and preferred embodiments consistently depict the abutments as continuous, solid walls that form quadrants on the pedestal’s surface (’955 Patent, Fig. 1, Fig. 3). A party could argue that the term should be construed more narrowly in light of these consistent depictions.
The Term: "height that is greater than or equal to said predetermined thickness"
- Context and Importance: This relative dimensional relationship is the core technical feature that enables the claimed stable stacking functionality. The infringement analysis for every asserted independent claim will turn on whether the accused product meets this precise mathematical and structural requirement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language is a straightforward mathematical comparison. The specification reinforces this by stating the abutment height is "greater than or equal to the predetermined thickness of the base, plate, or body" and provides a working example where the height and thickness are equal (’955 Patent, col. 2:13-15; col. 4:62-64).
- Evidence for a Narrower Interpretation: A defendant could argue for a strict interpretation, where any accused product whose abutment height is even marginally less than the body thickness does not infringe. The patent also describes this relationship as being preferable ("preferably of a height 'A' that is greater than or equal to the thickness 'T'"), which a party might attempt to use to argue it is not a mandatory feature for all embodiments, although this would be a difficult argument against explicit claim language (’955 Patent, col. 4:65-col. 5:1).
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It states that Plaintiff's counsel sent correspondence to Defendant beginning in "at least June 2023," which "specifically identified the Hanover Patent and the Infringing Product" (Compl. ¶22, ¶31). The complaint further alleges that Defendant "has nevertheless willfully refused to take any action to abate its continuing infringements" (Compl. ¶24).
VII. Analyst’s Conclusion: Key Questions for the Case
- Evidentiary Proof of Infringement: A primary issue will be factual and evidentiary: does the accused "Model H" product actually practice the core technical limitation of the ’955 Patent? The case will likely depend on evidence developed during discovery that proves or disproves whether the product's abutments have a height "greater than or equal to" the pedestal's thickness, enabling them to project through an upper stacked pedestal as claimed.
- Impact of Reexamination: A key strategic question is how the patent's successful ex parte reexamination will affect the litigation. Because asserted claims 1, 8, and 9 survived this validity challenge at the USPTO, the Defendant may face a higher burden in any attempt to invalidate these claims, potentially focusing the dispute more intensely on non-infringement arguments and claim construction.
- Complaint Sufficiency: A threshold procedural question may arise regarding the sufficiency of the complaint itself. Given the complaint's reliance on conclusory allegations without providing supporting factual detail or visual evidence for the accused product's structure, it raises the question of whether it meets modern pleading standards for patent infringement. The complaint's erroneous assertion of Claim 10, which was cancelled during reexamination, may also be a point of early contention.