DCT

1:18-cv-09960

RSA Protective Tech LLC v. Port Authority Of New York New Jersey

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-09960, S.D.N.Y., 01/27/2020
  • Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Defendants are organized under New York law, maintain regular and established places of business in the district, and committed the alleged acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendants' design, manufacture, sale, and use of various shallow mount security bollards infringe a patent related to anti-ram systems with shallow foundations.
  • Technical Context: The technology concerns anti-ram security bollards designed for installation in shallow excavations, a key capability for protecting infrastructure in dense urban environments where deep foundations are often precluded by underground utilities.
  • Key Procedural History: This Third Amended Complaint was filed before the patent-in-suit, U.S. Patent No. 8,215,865, underwent two ex parte reexaminations. A second reexamination certificate, issued November 17, 2022, cancelled independent claim 1, one of the three independent claims asserted in the complaint. The reexamination confirmed the patentability of the other two asserted independent claims (16 and 33) and amended several asserted dependent claims. The cancellation of an asserted independent claim presents a significant procedural issue for the litigation.

Case Timeline

Date Event
2004-07-26 '865 Patent Priority Date
2010-07-01 '865 Patent Application Publication Date
2012-07-10 '865 Patent Issue Date
2013 AECOM allegedly received notice of '865 Patent
2013 Skanska allegedly installed Guardiar/Secure USA bollards
2014 Skanska allegedly installed Thornton Tomasetti/Weidlinger bollards
2015 Port Authority allegedly began using Guardiar/Secure USA bollards
2018 AECOM allegedly installed Nasatka bollards
2020-01-27 Third Amended Complaint Filing Date

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

U.S. Patent No. 8,215,865 - "Anti-Ram System and Method of Installation"

  • Issued: July 10, 2012

The Invention Explained

  • Problem Addressed: The patent's background describes the difficulty of installing conventional anti-ram bollards, which require deep excavations (e.g., four to six feet), in developed urban areas where underground utilities like gas, water, and electrical lines make such digging impractical, costly, and disruptive (’865 Patent, col. 1:53-65, col. 2:1-10).
  • The Patented Solution: The invention provides a bollard system using a shallow mounting base or pad that requires minimal excavation (as little as 3-14 inches deep) (’865 Patent, col. 2:42-43). This base, typically a steel grillage filled with concrete, is designed to have considerable mass and a wide footprint. Upon impact, forces are transmitted from the bollard to the shallow base, which resists rotation and distributes the load efficiently into the surrounding soil over a large area, rather than concentrating it deep underground (’865 Patent, Abstract; col. 2:30-47). Figure 3 illustrates a framework of intersecting structural members (24, 26, 28) forming the base for multiple bollards (14) (’865 Patent, Fig. 3).
  • Technical Importance: The shallow-mount design allows for the deployment of high-security, anti-ram barriers in dense urban locations where conventional deep-foundation systems would be infeasible, thereby broadening the options for protecting critical infrastructure (’865 Patent, col. 2:11-25).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 16, and 33. The complaint also asserts numerous dependent claims.
  • Independent Claim 1 (Cancelled post-filing): Essential elements include at least one bollard, a base with opposed ends and intersecting/tied structural members, the bollard secured to and extending from the base, configuration for a shallow excavation, and a structure that resists rotation by retaining supporting media.
  • Independent Claim 16: The essential elements are largely identical to claim 1, but require "a plurality of bollards" instead of "at least one bollard."
  • Independent Claim 33: This claim is similar to claim 16 but adds a specific structural limitation:
    • "at least one of the plurality of members that extend parallel to the ends of the base extending between a structural member to which a first bollard is secured and a structural member to which a second bollard adjacent to the first bollard is secured"

III. The Accused Instrumentality

Product Identification

The complaint accuses a range of "shallow mount bollards" designed, manufactured, sold, or used by the defendants, including: Thornton Tomasetti/Weidlinger Shallow Mount Bollards, Guardiar/Secure USA Shallow Mount Bollards (including the SideWALK® series), Nasatka Shallow Mount Bollards, AECOM Shallow Mount Bollards, and Ameristar Shallow Mount Bollards (including the Ultra Shallow Mounts series) (Compl. ¶29, 34, 39, 43, 47, 89).

Functionality and Market Context

The accused instrumentalities are anti-ram security barriers installed at high-profile locations controlled or managed by the Defendants, such as the World Trade Center, JFK Airport, LaGuardia Airport, and Hudson Yards (Compl. ¶7, 10, 13, 72). The complaint alleges these products consist of vertical bollards anchored into a shallow foundation, which is described as a structure of intersecting steel members (e.g., channels, plates, rebar) and reinforced concrete (Compl. ¶55, 86, 117). The complaint includes a photograph of the Guardiar/Secure USA product under construction, showing multiple bollards set within a grid of rebar prior to a concrete pour (Compl. ¶34, p. 9). This photograph illustrates the alleged use of intersecting structural members to form the foundation. The complaint alleges these foundations are installed in shallow excavations and are designed to resist rotation upon impact (Compl. ¶58-59, 179).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,215,865 Infringement Allegations

Claim Element (from Independent Claim 16) Alleged Infringing Functionality Complaint Citation Patent Citation
a plurality of bollards; and The accused installations, such as at the Hudson Yards site, utilize a plurality of bollards lined up in a row. A rendering of the site is provided as evidence. ¶72 col. 9:16-17
a base comprising opposed ends and a plurality of structural members which intersect and are tied together, The Thornton Tomasetti/Weidlinger bollards allegedly have a base with opposed ends and a plurality of structural members, including reinforced concrete footing, steel channels, and steel plates, which intersect and are tied together. ¶54-55 col. 9:18-21
for each bollard of the bollard structure at least one first structural member extending from a first of the opposed ends of the base to a second of the opposed ends of the base in a first direction intersecting with the opposed ends, and at least one structural member extending to intersect with the at least one first structural member; The channel member within the accused base allegedly extends from one opposed end to the other, and steel plates allegedly intersect with these channel members. ¶56 col. 9:21-26
each of the plurality of bollards being secured to at least one of the at least one first structural member and the at least one structural member of the base...and extending upwardly from the base so as to transmit forces...to the base; The bollards are allegedly secured to the channel members and plate in the base and extend upwardly to transmit impact forces to that base. A provided cross-section diagram shows the bollard secured within the base structure. ¶57, ¶54 col. 9:27-33
wherein the base is configured to be mounted in a shallow excavation with the plurality of bollards extending above grade of the excavation; and The accused products are described as "shallow foundation" bollards, and specification drawings allegedly indicate they are mounted in a shallow excavation with the bollard extending above grade. ¶58 col. 9:34-36
wherein the at least one first structural member or the at least one structural member or both are configured or tied together to retain within the base supporting media introduced into the base...such that the rotation is resisted of a bollard...from an impact... The channel members and steel plate are allegedly configured to retain supporting media (e.g., concrete) and are tied together to resist rotation from an impact. ¶59 col. 9:37-43

Identified Points of Contention

  • Scope Questions: The complaint frequently uses the phrase "or the equivalent thereof" when describing how accused products meet claim limitations (e.g., Compl. ¶55, 59). This suggests a potential dispute over whether the specific connections and components in the accused products (e.g., steel channels embedded in concrete) are structurally and functionally the same as the claimed "intersecting and...tied together" members.
  • Technical Questions: Claim 33 requires members that "extend parallel to the ends of the base" to connect adjacent bollards. A central technical question will be what factual evidence supports this specific geometric arrangement in the various accused products, which use different combinations of rebar, plates, and channels in their foundations.

V. Key Claim Terms for Construction

Term for Construction: "shallow excavation"

  • Context and Importance: This term is at the heart of the invention's purported advance over the prior art. Its construction will determine the threshold for infringement, as the accused products are all marketed as "shallow mount." The independent claims do not provide a numerical depth, making its definition critical.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification contrasts the invention with prior art requiring "deep excavations, several feet or more" (’865 Patent, col. 1:56-57). This may support an argument that "shallow" should be broadly construed as anything substantially less than several feet.
    • Evidence for a Narrower Interpretation: The specification repeatedly provides a specific range, noting the pad is "(5" to 14" in depth)" (’865 Patent, col. 2:42-43). Dependent claim 4 explicitly recites a height of "3 inches to 14 inches" (’865 Patent, col. 9:49-50). Parties may argue these specific disclosures should inform or limit the scope of "shallow" in the independent claims.

Term for Construction: "tied together"

  • Context and Importance: This term describes the required relationship between the "plurality of structural members" in the base. How the accused components (e.g., rebar, steel channels, plates) are connected, and whether that connection constitutes being "tied together," will be a focal point of the infringement analysis.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent describes the base as a "grillage" made of "structural tubes...tied together" and also shows rebar cages, suggesting "tied together" could encompass any method that creates a rigid, unified framework, including welding or being cast monolithically in concrete (’865 Patent, col. 3:45-46; Fig. 4).
    • Evidence for a Narrower Interpretation: A party may argue that the term implies a distinct physical connection, such as with rebar tie-wires, and does not cover members that are merely welded or held in place by surrounding concrete. The complaint's consistent use of the qualifier "or the equivalent thereof" when alleging this limitation may indicate an anticipation of such a narrow construction argument (Compl. ¶55).

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement against Thornton Tomasetti, Skanska, and AECOM. The factual basis for knowledge is Plaintiff's alleged provision of notice of the '865 patent during bidding processes for projects at the World Trade Center, airports, and other sites (Compl. ¶27, 203, 205). The basis for intent is the allegation that these defendants proceeded to design (Thornton Tomasetti), select, and direct the installation of the accused bollards despite this knowledge (Compl. ¶202, 204, 206). For example, Thornton Tomasetti is alleged to have induced infringement by providing "detailed drawings and directions on how to assemble, install, and use" the accused products (Compl. ¶223).

Willful Infringement

The willfulness allegations are based on the same pre-suit knowledge claims. The complaint alleges that Defendants' infringement "has been, and continues to be, deliberate, willful, and knowing" because they continued their allegedly infringing activities after receiving actual notice of the '865 patent (Compl. ¶216, 223, 227).

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

  • A primary issue will be one of procedural consequence: given that independent claim 1 was cancelled during reexamination after the complaint was filed, the court must first determine the viability of the action as it relates to the amended and surviving claims (16 and 33), and what, if any, intervening rights may shield Defendants from liability for activities preceding the reexamination certificate's issuance.
  • The case will also turn on a question of definitional scope: can the term "tied together," used to describe the foundation's structural members, be construed to encompass components that are welded or monolithically cast in concrete, as depicted in the accused product diagrams, or does it require a more specific form of physical binding?
  • A central evidentiary question will be one of structural correspondence: does the factual evidence concerning the construction of the various accused foundations demonstrate the specific geometric arrangement of intersecting and parallel structural members required by the asserted claims, particularly the complex relational structure recited in claim 33?