DCT
1:23-cv-00801
Weber Knapp Co v. Phase 2 LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Weber Knapp Co (New York)
- Defendant: Phase 2 LLC d/b/a VISION GRILLWORKS (Missouri)
- Plaintiff’s Counsel: Rupp Pfalzgraf
- Case Identification: 1:23-cv-00801, W.D.N.Y., 08/08/2023
- Venue Allegations: Venue is alleged to be proper in the Western District of New York because the Defendant transacts business, sells, and/or offers to sell the accused products within the district, including through a commercial website accessible to residents.
- Core Dispute: Plaintiff alleges that Defendant’s ceramic grill counterbalance hinge assemblies infringe a patent related to an adjustable counterbalance mechanism.
- Technical Context: The technology concerns mechanical counterbalance assemblies designed to assist in lifting and closing heavy lids, such as those found on large ceramic smokers and grills.
- Key Procedural History: The complaint alleges Plaintiff sent three letters to Defendant between February and April 2023, informing Defendant of the patent-in-suit and inquiring about a potential license, to which Defendant allegedly did not reply. This history may form the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2017-04-13 | ’934 Patent Priority Date |
| 2021-10-12 | ’934 Patent Issue Date |
| 2022-11-28 | Plaintiff discovers accused products |
| 2022-12-14 | Plaintiff purchases an accused product |
| 2023-02-09 | Plaintiff sends first letter to Defendant regarding the patent |
| 2023-03-14 | Plaintiff sends second letter to Defendant |
| 2023-04-18 | Plaintiff's counsel sends third letter to Defendant |
| 2023-08-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,142,934 - “Counterbalance and Method of Making the Same,” issued October 12, 2021
The Invention Explained
- Problem Addressed: The patent’s background section describes challenges with conventional counterbalances for heavy lids, such as those on ceramic smokers. These challenges include the difficulty of assembling and installing devices that contain large, pre-loaded springs and safety concerns related to exposed moving parts that can create dangerous "pinch points" for users ('934 Patent, col. 1:36-53).
- The Patented Solution: The invention is a self-contained counterbalance assembly that uses a spring pack housed within a main body to assist with lifting a pivotable arm (the "pivot nose"). The assembly includes a "spring retainer" which, as described in the specification, can be used to adjust the force exerted by the internal energy storage device (e.g., a coil spring) on the pivot nose, allowing the torque to be modified ('934 Patent, Abstract; col. 8:48-52). This design seeks to simplify assembly and enhance safety by concealing moving parts ('934 Patent, col. 1:54-62).
- Technical Importance: The described solution offers a method to create a powerful, yet adjustable and safer, counterbalance mechanism that is easier to assemble and install compared to prior art designs requiring special tooling or complex procedures to manage high spring forces ('934 Patent, col. 1:54-62).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 20 (Compl. ¶28, ¶29).
- Independent Claim 1 recites the following essential elements:
- A counterbalance assembly, comprising:
- a housing including a first housing side wall and a second, oppositely disposed housing side wall;
- a pivot nose pivotably connected to the housing; and,
- a spring pack disposed within a volume formed by the housing, which includes:
- a first end engaged with the housing;
- a second end engaged with the pivot nose;
- an energy storage device between the first and second ends; and,
- a spring retainer operatively arranged between the second end and the energy storage device to adjust a force of the energy storage device on the pivot nose.
- Independent Claim 20 recites the following essential elements:
- A counterbalance assembly, comprising:
- a housing;
- a pivot nose pivotably connected to the housing; and,
- a spring pack disposed within a volume formed by the housing, which includes:
- a first end engaged with the housing;
- a second end engaged with the pivot nose;
- an energy storage device between the first and second ends; and,
- a spring retainer operatively arranged between the second end and the energy storage device to adjust a force of the energy storage device on the pivot nose.
- The complaint reserves the right to assert additional claims (Compl. ¶30).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are the counterbalance assemblies incorporated into Defendant’s “ELITE SERIES MODEL XR402 DELUXE CERAMIC KAMADO GRILL” and “THE ELITE SERIES MODEL XD702 MAXIS CERAMIC KAMADO GRILL” products (Compl. ¶30).
Functionality and Market Context
The complaint alleges these products are advertised with an “Easy-Lift KamadoMatic™ Hinge” (Compl. ¶22). Plaintiff purchased one of the accused grill models and presents photographs of its counterbalance assembly (Compl. ¶15-16). The complaint alleges this assembly contains a housing, a spring pack, a pivot nose, and a spring retainer, which together provide a counterbalance force to assist in opening the grill’s heavy lid (Compl. ¶28). The complaint provides an annotated photograph of the accused counterbalance assembly, labeling components with reference numbers from the ’934 Patent, such as the housing (52), pivot nose (54), spring pack (56), and spring retainer (190) (Compl. p. 8).
IV. Analysis of Infringement Allegations
’934 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A counterbalance assembly (50), comprising: | Each of the Models has a counterbalance assembly (hereinafter “CBA”) | ¶28 | col. 6:9-12 |
| a housing (52) including: a first housing side wall (60); and, a second housing side wall (62) oppositely disposed relative to the first housing side wall (60); | The CBA has a housing which includes a first side wall and a second side wall oppositely disposed relative to the first side wall. | ¶28 | col. 6:13-21 |
| a pivot nose (54) pivotably connected to the housing (52); and, | The housing includes a pivot nose pivotably connected to the housing. | ¶28 | col. 6:22-24 |
| a spring pack (56) disposed within a volume (86) formed by the housing, the spring pack including: | The CBA include a spring pack, where the spring pack is disposed within a volume of the housing. | ¶28 | col. 6:34-36 |
| a first end (88) engaged with the housing (52); | The spring pack includes a first end engaged with the housing. | ¶28 | col. 6:35-39 |
| a second end (90) engaged with the pivot nose (54); | The spring pack includes a second end engaged with the pivot nose. | ¶28 | col. 6:36-39 |
| an energy storage device (92) arranged between the first end (88) and the second end (90); and, | The spring pack includes an energy storage device arranged between the first end and the second end. | ¶28 | col. 6:37-39 |
| a spring retainer (190) operatively arranged between the second end (90) and the energy storage device (92) to adjust a force of the energy storage device (92) on the pivot nose (54). | The CBA includes a spring retainer...and the energy storage device is arranged to adjust a force of the energy storage device on the pivot nose. | ¶28 | col. 8:48-52 |
’934 Patent Infringement Allegations (Claim 20)
| Claim Element (from Independent Claim 20) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A counterbalance assembly (50), comprising: | Each of the Models has a counterbalance assembly (hereinafter “CBA”) | ¶29 | col. 6:9-12 |
| a housing (52): | The CBA has a housing. | ¶29 | col. 6:13-14 |
| a pivot nose (54) pivotably connected to the housing (52); and, | The housing includes a pivot nose pivotably connected to the housing. | ¶29 | col. 6:22-24 |
| a spring pack (56) disposed within a volume (86) formed by the housing (52), the spring pack including: | The CBA has a spring pack disposed within a volume formed by the housing. | ¶29 | col. 6:34-36 |
| a first end (88) engaged with the housing (52); | The spring pack includes a first end engaged with the housing. | ¶29 | col. 6:35-39 |
| a second end (90) engaged with the pivot nose (54); | The spring pack includes a second end engaged with the pivot nose. | ¶29 | col. 6:36-39 |
| an energy storage device (92) arranged between the first end (88) and the second end (90); and, | The spring pack includes an energy storage device between the first and second ends of the spring pack. | ¶29 | col. 6:37-39 |
| a spring retainer (190) operatively arranged between the second end (90) and the energy storage device (92) to adjust a force of the energy storage device on the pivot nose (54). | The CBA includes a spring retainer...and the energy storage device is arranged to adjust a force of the energy storage device on the pivot nose. | ¶29 | col. 8:48-52 |
Identified Points of Contention
- Technical Questions: The complaint alleges that the accused "spring retainer" is "arranged to adjust a force" (Compl. ¶28, ¶29). However, it does not provide evidence demonstrating how this adjustment is performed in the accused products. A central technical question will be whether the accused component is in fact adjustable, or if it is a static component that merely retains the spring in a fixed position.
- Scope Questions: The complaint asserts both Claim 1 and Claim 20. Claim 1 explicitly requires the housing to include "a first housing side wall" and "a second housing side wall," whereas Claim 20 recites only "a housing" (Compl. ¶28, ¶29; '934 Patent, col. 9:46-48, col. 12:11). While the accused product appears to meet the narrower limitation of Claim 1, the assertion of both claims raises the question of whether there are any meaningful differences in scope that might become relevant during litigation.
V. Key Claim Terms for Construction
- The Term: "spring retainer... operatively arranged... to adjust a force"
- Context and Importance: This functional language is central to both asserted independent claims and appears to capture a key novel aspect of the invention. The infringement analysis may hinge on whether the accused product's corresponding component is capable of performing this specific "adjusting" function. Practitioners may focus on this term because the defendant could argue its component is a fixed retainer, not an adjustable one, thereby seeking to avoid infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language "operatively arranged to" is functional and does not prescribe a specific structure for adjustment. The specification supports this by stating, "The torque provided by counterbalance assembly 50 may be adjusted by changing the position of spring retainer 190" ('934 Patent, col. 8:48-52), which describes the function without limiting it to a single mechanism.
- Evidence for a Narrower Interpretation: The primary embodiment shown for the spring retainer (190) appears to be a threaded component interacting with a rod, suggesting adjustment via rotation (see '934 Patent, Fig. 11). A party might argue that "to adjust" should be construed to require a specific mechanism for adjustment, like the one disclosed, rather than covering a component that is merely a static part of the assembly. The specification also notes that the retainer and associated parts are "used to retain [the] energy storage device...in a compressed position until after" the assembly is installed, which could be argued as its primary, non-adjustable purpose ('934 Patent, col. 8:52-56).
VI. Other Allegations
Indirect Infringement
The complaint does not provide sufficient detail for analysis of indirect infringement. While the prayer for relief mentions indirect infringement, the factual allegations do not articulate a basis for either induced or contributory infringement.
Willful Infringement
The complaint alleges that Defendant’s infringement is willful, deliberate, and in conscious disregard of Plaintiff’s rights (Compl. ¶31). This allegation is based on Plaintiff having provided Defendant with pre-suit notice of the ’934 Patent through a series of three letters sent between February and April 2023, to which Defendant allegedly did not respond (Compl. ¶18-21).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of functional operation: does the accused product's "spring retainer" component perform the specific function of "adjusting" the spring force as required by Claims 1 and 20, or does it serve only as a fixed retainer? The complaint's conclusory allegation on this point suggests that evidence of how the accused device actually operates will be critical.
- The case will likely involve a focused inquiry on willfulness: given the documented pre-suit notice letters and the alleged lack of response from the Defendant, a central question for the court will be whether any infringement, if found, was willful, which could expose the Defendant to enhanced damages under 35 U.S.C. § 284.