DCT

1:23-cv-00943

Vanocur Refractories LLC v. Fosbel Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00943, W.D.N.Y., 09/08/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Western District of New York because Defendant conducts substantial business in the district, including contracting to supply and market infringing goods, and knew its conduct would have negative consequences in New York.
  • Core Dispute: Plaintiff alleges that Defendant’s refractory blocks and corbel systems for coke ovens infringe a patent related to modular coke oven design and repair.
  • Technical Context: The technology relates to the construction and repair of coke oven corbels—structural components that support the oven walls and contain passages for gas and air—using large, pre-cast modular blocks instead of traditional small bricks.
  • Key Procedural History: The complaint alleges this action follows a prior, voluntarily dismissed lawsuit against Defendant and others, as well as a pre-suit petition that resulted in a sworn declaration from a third-party manufacturer. This declaration allegedly confirms that the accused products were manufactured at Defendant's direction, a key fact underpinning the current complaint.

Case Timeline

Date Event
2009-05-12 ’853 Patent Priority Date (Filing Date)
2012-09-18 ’853 Patent Issue Date
2015-10-02 Defendant allegedly became aware of Plaintiff's patented technology
2016-09-21 Alleged infringing blocks manufactured by third party at Defendant's direction
2017-05-02 Alleged infringing blocks manufactured by third party at Defendant's direction
2018-10-24 Alleged infringing blocks manufactured by third party at Defendant's direction
2021-01-21 Plaintiff allegedly alerted Defendant (via a customer) of infringement
2021-10-27 Conversation allegedly confirmed Defendant's knowledge of the patent
2022-04-01 Plaintiff initiated prior lawsuit against Defendant and others (approx. date)
2023-05-22 Third-party manufacturer (Upstate) executed sworn declaration
2023-09-08 Complaint Filing Date

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

U.S. Patent No. 8,266,853 - "CORBEL REPAIRS OF COKE OVENS," issued September 18, 2012

The Invention Explained

  • Problem Addressed: The patent’s background explains that traditional coke oven corbels, constructed from thousands of individual silica bricks, are labor-intensive to build and repair. The numerous joints between bricks create many potential failure points for gas leaks, which reduce oven efficiency and increase operating costs over time (’853 Patent, col. 1:56-2:6).
  • The Patented Solution: The invention addresses this problem by replacing the many small bricks with "large size cast monolithic" modules (’853 Patent, col. 2:35-37). These large, pre-cast blocks are designed with internal apertures that align when the blocks are stacked in tiers, creating the necessary passageways for gas and air. This modular design aims to reduce installation time, labor costs, and the number of joints, thereby minimizing leak points and extending the corbel's operational life (’853 Patent, Abstract; col. 4:35-54).
  • Technical Importance: The use of large, dimensionally stable modules offered a method for repairing or constructing high-temperature coke oven corbels that was faster and potentially more durable and cost-effective than traditional bricklaying techniques (’853 Patent, col. 2:38-45).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 and dependent Claim 10, among others (Compl. ¶¶49, 138, 148).
  • Independent Claim 1 recites:
    • A corbel comprising:
    • a first tier having first blocks, each with a substantially horizontal aperture and a substantially vertical aperture, with the blocks arranged to align the horizontal apertures into a first horizontal passageway;
    • a second tier of second blocks disposed above the first tier, each second block having a substantially vertical aperture that aligns with the vertical aperture of the first blocks to form a second passageway;
    • a third passageway extending diagonally from the top of one of the second blocks to a side of at least one of the first and second blocks; and
    • a gas source for providing gas to the first passageway.
  • The complaint reserves the right to assert additional claims of the ’853 Patent (Compl. ¶25).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are refractory blocks and the corbels assembled from them, allegedly manufactured by Upstate Refractory Services, Inc. at the direction of Fosbel (Compl. ¶¶78-79, 102).

Functionality and Market Context

The complaint alleges that the accused products are large, pre-cast refractory blocks designed for constructing coke oven corbels (Compl. ¶¶78, 107). These blocks are alleged to contain internal apertures which, when the blocks are stacked, form passageways for gas and air, mirroring the function of Plaintiff's patented "Big BLOCK Solution" (Compl. ¶¶1, 108-109). An annotated photograph in the complaint, labeled "Infringing Photo 2.b," depicts blocks alleged to be the "first blocks" of a "first tier," showing both horizontal and vertical apertures (Compl. p. 36). The complaint states these accused blocks were manufactured for specific coke oven projects, including for Stelco Inc. in Canada, and were supplied from the United States (Compl. ¶¶89, 102, 139).

IV. Analysis of Infringement Allegations

’853 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a first tier having first blocks, each of the first blocks comprising a first, substantially horizontal aperture... and a second, substantially vertical aperture... arranged on a substantially planar surface to align the respective first apertures to define a first, substantially horizontal passageway; The accused products allegedly include a "first tier (12) having first blocks (20)" with a horizontal aperture (28) and a vertical aperture (30) that align to form a passageway. An annotated photograph depicts these features. ¶113; p. 36 col. 6:25-30
a second tier having second blocks, each of the second blocks comprising a third, substantially vertical aperture... the second blocks being disposed above the first tier of blocks to align the third aperture... with the second aperture of the first blocks to form a second passageway; The accused products allegedly include a "second tier (14) having second blocks (60)" with a vertical aperture (68) that aligns with the apertures of the blocks below to form a passageway. An annotated photograph illustrates this configuration. ¶109; p. 33 col. 7:1-15
a third passageway extending diagonally from the top of the one of the second blocks to a side of at least one of the first and second blocks; The accused blocks allegedly feature a diagonal passageway, which an annotated photograph identifies as a large, angled cutaway on the side of a "second block." ¶107; p. 33 col. 7:5-10
a gas source for providing gas to the first passageway. The complaint alleges the accused blocks are for use in coke oven corbels and that the horizontal passageways are "connected to a gas source," which is an inherent part of a functional coke oven. ¶113 col. 7:48-49
  • Identified Points of Contention:
    • Scope Questions: The complaint's visual evidence, such as "Infringing Photo 1.b," shows the "third passageway" as a large, open-sided notch or angled cutout on the block (Compl. p. 33). The infringement analysis may raise the question of whether such an open feature meets the definition of a "passageway" as used in the patent, which also describes "apertures" formed "through" the blocks ('853 Patent, col. 7:6-7).
    • Technical Questions: Claim 1 recites a "corbel comprising" a combination of block tiers and a "gas source." The complaint focuses on the manufacture and supply of the blocks. A question for the court will be what evidence demonstrates infringement of the complete apparatus claim, which requires the presence of a gas source, particularly when the core allegations involve supplying unassembled components for assembly abroad.

V. Key Claim Terms for Construction

  • The Term: "passageway"

    • Context and Importance: This term appears multiple times in Claim 1 and is central to the dispute. Practitioners may focus on this term because the defendant may argue that a "passageway" requires a fully enclosed channel or bore, whereas some of the accused features depicted in the complaint's photographs appear to be open-sided notches or cutouts (Compl. p. 33).
    • Intrinsic Evidence for a Broader Interpretation: The patent specification uses terms like "apertures," "orifices," and "passageways" in its description. The specification explicitly mentions that "angled notches" can be used to create a "diagonal passageway," which suggests that a "passageway" is not strictly limited to a fully enclosed structure ('853 Patent, col. 6:35-40).
    • Intrinsic Evidence for a Narrower Interpretation: The patent’s figures and description frequently refer to "apertures" that run "through" the blocks, such as "horizontal apertures (72)" and "vertical apertures (74)," which could support an interpretation that a "passageway" is an internal, enclosed channel ('853 Patent, col. 6:26-30).

  • The Term: "corbel"

    • Context and Importance: Claim 1 is directed to a "corbel comprising" several elements, including the block tiers and a gas source. Practitioners may focus on this term because the primary accused activities are the manufacture and supply of the block components, not necessarily the final, fully assembled and operational oven. The legal question is whether supplying the unassembled blocks can constitute infringement of the claim to the complete "corbel."
    • Intrinsic Evidence for a Broader Interpretation: The patent is titled "CORBEL REPAIRS OF COKE OVENS," and the invention is presented as a modular system for that purpose. Plaintiff alleges the accused blocks have "no non-infringing use" other than to create the patented corbel (Compl. ¶126). A party could argue that a set of components especially made for and constituting the novel core of the invention is sufficient to be considered the claimed "corbel" for infringement purposes.
    • Intrinsic Evidence for a Narrower Interpretation: The plain language of Claim 1 recites an apparatus that comprises the combination of the block tiers and a gas source. A party could argue that until the components are physically assembled and connected to a gas source, the claimed "corbel" does not yet exist, and thus supplying only the unassembled blocks cannot constitute direct infringement of the apparatus claim.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges infringement under 35 U.S.C. § 271(f), which governs liability for exporting components of a patented invention for assembly abroad. It alleges Fosbel "actively induce[d]" infringement by directing Upstate, a U.S. company, to manufacture and supply a "substantial portion" of the patented corbel's components from the U.S. for combination in Canada (Compl. ¶¶139, 142). It further alleges that these components were "especially made or especially adapted for use in the invention" and not suitable for substantial non-infringing use (Compl. ¶143).
  • Willful Infringement: The complaint alleges that Fosbel's infringement was willful. It claims Fosbel had knowledge of the patent as early as 2015 and later misrepresented to a customer that the patent had expired (Compl. ¶¶3, 18). The complaint also cites a direct warning sent to the customer in January 2021 and the filing of a prior lawsuit in April 2022 as events establishing knowledge, after which Fosbel allegedly continued its infringing conduct (Compl. ¶¶20, 95).

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

  • A central issue will be one of extraterritorial application under § 271(f): The case appears to heavily depend on whether Fosbel's alleged acts—directing a U.S. manufacturer to produce patented components and arranging for their shipment from the U.S. for assembly in Canada—meet the legal requirements for "suppl[ying] or caus[ing] to be supplied" under the statute.
  • A second key question will be one of claim scope: Can the term "passageway," as used in the patent, be construed to read on the open-sided, angled cutouts depicted in the complaint’s photographic evidence of the accused blocks? The resolution of this construction issue may be dispositive for infringement.
  • A third key question will be one of proving intent for willfulness: The complaint details a narrative of alleged long-standing knowledge and deliberate copying. A critical factual dispute will likely be what evidence demonstrates that Fosbel acted with the "conscious disregard" required for a finding of willful infringement, which could expose it to enhanced damages.