DCT
2:18-cv-04332
Fero Corp v. Hohmann & Barnard Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: FERO Corp. (Alberta, Canada)
- Defendant: Hohmann & Barnard, Inc. (Delaware)
- Plaintiff’s Counsel: Mayer Brown LLP
- Case Identification: 2:18-cv-04332, E.D.N.Y., 07/31/2018
- Venue Allegations: Venue is alleged to be proper based on Defendant's regular and established place of business in the district, as well as the commission of infringing acts within the district.
- Core Dispute: Plaintiff alleges that Defendant’s shelf angle bracket support systems infringe two patents related to support assemblies for external masonry building veneers.
- Technical Context: The technology concerns specialized brackets used in modern construction to support the weight of non-load-bearing exterior facades, such as brick or stone, while improving thermal efficiency and simplifying installation.
- Key Procedural History: The complaint alleges that Defendant’s President viewed and discussed Plaintiff’s patented technology, including a pending patent application, at a trade show prior to Defendant launching its own competing product. The complaint also notes that Plaintiff informed Defendant of its infringement by letter prior to filing the lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2014-12-01 | Priority Date for ’004 and ’585 Patents |
| 2016-02-02 | H&B President allegedly visits FERO's trade show exhibit |
| 2016-04-19 | U.S. Patent No. 9,316,004 Issues |
| 2016-09-20 | U.S. Patent No. 9,447,585 Issues |
| 2018-07-31 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,316,004 - “Support Bracket Assembly and Method” (Issued Apr. 19, 2016)
The Invention Explained
- Problem Addressed: The patent describes traditional methods of securing masonry veneers to buildings, such as welding, as increasing installation time and cost, decreasing flexibility, and reducing the building's thermal performance and energy efficiency (Compl. ¶13; ’004 Patent, col. 1:16-30).
- The Patented Solution: The invention is a two-part support assembly. A first member (a mounting bracket) is secured to the building's load-bearing structure, and a second member (a shelf angle) engages with the first member to support the external veneer. The key is the engagement mechanism, which uses a protrusion on the first member fitting into a corresponding accommodation on the second, allowing for adjustability and efficient load transfer while minimizing thermal bridging between the exterior and interior structures (’004 Patent, Abstract; col. 2:31-47).
- Technical Importance: This approach is designed to simplify on-site installation, provide adjustability to account for construction tolerances, and enhance a building's thermal integrity (Compl. ¶8).
Key Claims at a Glance
- The complaint asserts direct infringement of claims 1, 2, 3, 4, 5, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, and 20, with claim 14 presented as an exemplary claim (Compl. ¶¶28-29).
- Independent Claim 14 requires:
- An external facing support assembly comprising a first member and a second member.
- The first member has a mounting fitting to secure the assembly to a load-bearing wall structure.
- The first member has a seat located distant from the mounting fitting.
- The seat has a protrusion, a shear load receiving interface, and a moment couple reaction interface.
- The second member has an external facing carrier and a seat engagement.
- The seat engagement has an accommodation to admit the protrusion, a shear load transmission interface, and a moment couple transmission interface.
- The second member is a shelf angle with a flange and a web.
- The complaint reserves the right to assert infringement of other claims, including dependent claims (Compl. ¶42).
U.S. Patent No. 9,447,585 - “Support Bracket Apparatus” (Issued Sep. 20, 2016)
The Invention Explained
- Problem Addressed: Similar to the ’004 Patent, this invention addresses the need for improved masonry support systems that are flexible and thermally efficient (Compl. ¶13; ’585 Patent, col. 1:12-29).
- The Patented Solution: This patent details a support assembly where the mounting point on the bracket is vertically offset from the seat that holds the veneer. The first member has a vertically oriented "leg" with the mounting fitting at a first height and the seat at a lower, second height. This "hanging" design allows the veneer load to be supported at a location that is not in direct horizontal alignment with the structural anchor point ('585 Patent, col. 2:56-63; Fig. 6a).
- Technical Importance: The offset configuration provides significant design and construction flexibility, enabling shelf angles to be positioned at intermediate points on a wall, such as between floors, without requiring a structural hardpoint at that exact elevation ('585 Patent, col. 13:4-10).
Key Claims at a Glance
- The complaint asserts direct infringement of claims 1, 2, 3, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15 and 16, with claim 1 presented as an exemplary claim (Compl. ¶¶48-49).
- Independent Claim 1 requires:
- An external facing support assembly with a first and second member.
- The first member has a portion with a mounting fitting at a first height.
- The first member has a leg standing away from the portion with the mounting fitting, the leg having a height greater than its length.
- The leg has a seat defined in its second margin, located distant from the mounting fitting.
- The seat has a shear load receiving interface and a moment couple reaction interface.
- The seat has a height less than half the leg's height and is located in a lower portion of the leg, such that the entire seat is lower than the mounting fitting.
- The second member has an external facing carrier and a seat engagement portion with corresponding load transmission interfaces.
- The complaint reserves the right to assert infringement of other claims, including dependent claims (Compl. ¶63).
III. The Accused Instrumentality
Product Identification
- Defendant H&B’s "shelf angle support bracket systems," referred to in the complaint as the "Infringing Systems" (Compl. ¶23).
Functionality and Market Context
- The complaint alleges the accused products are two-part systems used to support external masonry veneers on buildings (Compl. ¶¶23, 24). The complaint includes an annotated photograph of an accused system from a trade show, which depicts a bracket (first member) engaging with a shelf angle (second member) through an interlocking mechanism. (Compl. ¶30). A second photograph shows an accused system installed at a construction site in Brooklyn, New York, illustrating its use in practice (Compl. ¶50). The complaint alleges that H&B began marketing and selling these systems after its president was exposed to Plaintiff's technology and patent application at a 2016 trade show (Compl. ¶¶20-23). The products are allegedly sold to contractors for installation throughout the United States (Compl. ¶25).
IV. Analysis of Infringement Allegations
’004 Patent Infringement Allegations
The complaint provides an annotated photograph of H&B's accused product from a trade show to illustrate its infringement theory (Compl. ¶30).
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An external facing support assembly, said assembly comprising: a first member and a second member, said second member being engageable with said first member for support thereby | The accused system is an external facing support assembly and includes a first member (bracket) and a second member (shelf angle) that are engageable. | ¶31-33 | col. 2:31-34 |
| said first member having a mounting fitting by which to secure said assembly to a load-bearing wall structure | The accused first member has a mounting fitting to secure the assembly to a load-bearing wall. | ¶34 | col. 7:28-31 |
| said first member having a seat located distant from said mounting fitting, as installed said seat being spaced away from the load bearing wall structure | The accused first member has a seat that is located distant from the mounting fitting and is spaced away from the wall structure when installed. | ¶35 | col. 7:31-38 |
| said seat having a protrusion, a shear load receiving interface, and a moment couple reaction interface | The accused system's seat allegedly includes a protrusion and interfaces for receiving shear load and reacting to a moment couple. | ¶36 | col. 2:38-41 |
| said second member having an external facing carrier and a seat engagement, said carrier being connected to said seat engagement | The accused second member has an external facing carrier (the horizontal part of the shelf angle) connected to a seat engagement (the vertical part). | ¶37 | col. 2:41-43 |
| said seat engagement having an accommodation defining a lodgement into which to admit said protrusion on installation; a shear load transmission interface that, in use, engages said shear load receiving interface; and a moment couple transmission interface that, in use, engages said moment couple reaction interface | The accused seat engagement allegedly has an accommodation for the protrusion and interfaces that transmit shear load and a moment couple. The annotated photograph at ¶30 points to this interlocking feature, labeling it "Seat and seat engagement." | ¶38-40 | col. 2:43-47 |
Identified Points of Contention
- Scope Questions: A primary dispute may arise over the meaning of "moment couple reaction interface" and "moment couple transmission interface." The question will be whether the alleged physical contact and support in the accused product perform the specific force-resisting function described and claimed in the patent, or if the interaction is functionally different.
- Technical Questions: What evidence, beyond the annotated photograph, does the complaint provide that the accused product's engagement mechanism creates a "moment couple" as opposed to merely providing vertical shear support? The precise mechanical interaction between the accused components will be a central technical question.
’585 Patent Infringement Allegations
The complaint provides an annotated photograph of an H&B system installed at a construction site to illustrate its infringement theory for this patent (Compl. ¶50).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| said first member having a portion having, a mounting fitting by which to secure said assembly to a load-bearing wall structure; said mounting fitting being located at a first height | The accused first member allegedly has a mounting fitting located at a first height to secure it to a wall. The photograph at ¶50 shows the mounting fitting bolted to the structure. | ¶54-55 | col. 15:28-33 |
| said first member having a leg standing away from said portion having said mounting fitting... said leg having a length and a height, said height being greater than said length | The accused first member allegedly has a leg that stands away from the mounting portion, with a height greater than its length, consistent with the patent's "hanging" bracket design. | ¶56-57 | col. 15:34-39 |
| said second margin of said leg of said first member having a seat defined therein, said seat being located distant from said mounting fitting; said seat...having a shear load receiving interface, and a moment couple reaction interface | The accused first member's leg allegedly has a seat with shear load and moment couple reaction interfaces. The photograph at ¶50 identifies the "Seat and seat engagement" area. | ¶58-59 | col. 15:40-45 |
| said seat having a height less than half of said height of said leg, and said seat being located in a lower portion of said leg such that, as installed, all of said seat is lower than said mounting fitting | The complaint alleges the accused seat meets the specific dimensional and positional requirements relative to the leg and mounting fitting, namely that it is small relative to the leg's height and located entirely below the mounting fitting. | ¶60 | col. 15:46-50 |
| said second member having an external facing carrier and a seat engagement portion... said seat engagement portion... having a shear load transmission interface... and a moment couple transmission interface | The accused second member allegedly has a carrier and seat engagement portion with the required interfaces to engage the first member's seat. The photograph at ¶50 shows the "External facing carrier" (the horizontal portion of the shelf angle) which appears to be supported by the "Seat and seat engagement" feature. | ¶61-62 | col. 15:51-60 |
Identified Points of Contention
- Scope Questions: Infringement of this patent will turn on highly specific dimensional and positional limitations, such as "height being greater than said length" and "all of said seat is lower than said mounting fitting." The definitions of "height" and "length" in the context of the irregularly shaped bracket will be a key point of claim construction.
- Technical Questions: Does the accused H&B bracket, as manufactured and sold, consistently meet these strict geometric ratios? The analysis will require precise measurement and comparison of the accused product against the claim language, raising questions of how to measure the "height" and "length" of the specified "leg."
V. Key Claim Terms for Construction
’004 Patent
- The Term: "moment couple reaction interface"
- Context and Importance: This term defines a specific engineering function for how the assembly resists rotational forces, which is central to the patent's purported improvement over the prior art. Whether the simple contact points in the accused product perform this specific function, as opposed to a more general support function, will be critical to the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the function more generally as "a moment-couple reaction inhibiting motion in the rotational degree of freedom" ('004 Patent, col. 8:5-8). Plaintiff may argue this covers any structure that achieves this result.
- Evidence for a Narrower Interpretation: The patent illustrates this interface with a specific structure: an "overhanging member, or finger (104)" that works in concert with a "lower reaction member (102)" ('004 Patent, col. 7:40-52). Defendant may argue the term is limited to an assembly containing this specific two-part structural arrangement.
’585 Patent
- The Term: "said leg having a length and a height, said height being greater than said length"
- Context and Importance: This relative dimensional limitation is the core of what distinguishes the "hanging" bracket of the ’585 Patent. The entire infringement case for this patent may depend on how "height" and "length" are defined and measured on the accused product.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide explicit textual definitions for "length" and "height," so a plain and ordinary meaning might be argued, based on the general orientation shown in the figures.
- Evidence for a Narrower Interpretation: Practitioners may focus on Figure 6a, which illustrates an embodiment where the vertical dimension of the leg (H172) is substantially greater than its horizontal dimension or depth (174RUN) ('585 Patent, Fig. 6a). A defendant could argue that the terms must be interpreted in light of this clear graphical disclosure, requiring a significant vertical-to-horizontal aspect ratio.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that H&B induces infringement by instructing and encouraging its customers to use and install the accused systems in an infringing manner (Compl. ¶¶44, 65).
- Willful Infringement: The complaint alleges that H&B had pre-suit knowledge of the patents and its infringement. The basis for this allegation is a specific meeting on or about February 2, 2016, where H&B’s President allegedly viewed FERO’s product and discussed its patents and the then-pending application for the ’004 Patent (Compl. ¶¶20-21, 43, 64). The complaint further alleges knowledge via a pre-filing notice letter (Compl. ¶26).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the functional term "moment couple reaction interface" be construed broadly to read on the accused product's physical engagement, or is it limited to the specific "overhanging finger" embodiment shown in the '004 Patent?
- A second critical issue will be one of dimensional comparison: does the accused H&B bracket satisfy the specific geometric requirements of the '585 Patent, particularly that the bracket "leg" has a "height... greater than said length" and that the "seat is lower than said mounting fitting"? The resolution will depend heavily on the court's construction of these relational terms.
- A key factual question for willfulness and damages will be the nature of pre-suit knowledge: what evidence will emerge regarding the 2016 trade show conversation, and did that interaction, along with the subsequent notice letter, provide H&B with knowledge of the specific patents and the likelihood of infringement sufficient to support a finding of willfulness?