DCT
1:20-cv-00328
Ira Svendsgaard Associates Inc v. Allfasteners USA LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ira Svendsgaard and Associates, Inc. (California)
- Defendant: Allfasteners USA, LLC (Ohio)
- Plaintiff’s Counsel: Dinn, Hochman & Potter, LLC
- Case Identification: 1:20-cv-00328, N.D. Ohio, 02/14/2020
- Venue Allegations: Venue is alleged to be proper in the Northern District of Ohio because the Defendant is a resident of the district, maintaining its principal place of business there, and the alleged acts of infringement occurred in or were directed from the district.
- Core Dispute: Plaintiff alleges that Defendant’s "NexGen2" line of bolts and installation tools infringes a patent covering a method for installing blind threaded fasteners.
- Technical Context: The technology concerns high-strength "blind hole structural fasteners," which are critical for construction applications like cell phone and wind turbine towers where installers only have access to one side of a steel structure.
- Key Procedural History: The complaint alleges a prior business relationship where Defendant was an authorized reseller of Plaintiff's products, which was terminated in May 2015. Plaintiff also alleges it provided Defendant with express notice of infringement on April 23, 2019, and that Defendant had non-public communications with the U.S. Patent Office regarding the patent-in-suit in 2014 and 2015.
Case Timeline
| Date | Event |
|---|---|
| 2006-07-17 | ’709 Patent Priority Date |
| 2008-05-20 | ’709 Patent Issue Date |
| 2014-2015 | Defendant's alleged communications with USPTO regarding '709 Patent |
| 2015-05 | Plaintiff terminates Defendant's reseller status for ONESIDE products |
| 2018 | Defendant allegedly represents its NexGen2 product as "new" and "unique" |
| 2019-04-23 | Plaintiff allegedly provides Defendant express notice of infringement |
| 2020-02-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,373,709 - "Method of Installing a Blind Threaded Fastener"
- Patent Identification: U.S. Patent No. 7,373,709, “Method of Installing a Blind Threaded Fastener,” issued May 20, 2008.
The Invention Explained
- Problem Addressed: The patent background describes a need for reliable threaded fasteners that can be installed from only one side of a hole, particularly in structural steel applications where the far side is inaccessible. It notes that prior "blind bolts" suffered from inconsistent failure loads and were expensive to manufacture ('709 Patent, col. 1:8-24).
- The Patented Solution: The invention is a multi-step method for installing a fastener assembly. The method uses a specialized tool to engage a bolt and pass it completely through a workpiece hole. The tool then supports and passes a separate, collapsible "washer-like collar" through the same hole. On the blind side, the tool facilitates the assembly of the bolt and unfolded collar to form a large fastener head, preventing pull-through. A nut is then tightened on the accessible side to tension the fastener ('709 Patent, Abstract; col. 6:16-55).
- Technical Importance: The patented method aims to overcome the difficulties of prior systems, providing a more reliable way to install high-strength fasteners in blind applications and enabling the use of a larger-diameter collar than might otherwise fit through the installation hole ('709 Patent, col. 1:40-47).
Key Claims at a Glance
- The complaint asserts independent claims 1, 19, and 20 (Compl. ¶31).
- The essential method steps of independent claim 1 include:
- Engaging a tool with a "tool engagement portion" on a bolt.
- Passing the bolt head-first through a hole to the far side.
- Supporting the bolt on the far side with the tool.
- Passing a separate, "collapsed" collar through the hole while supporting it with the tool.
- Assembling the bolt and collar on the far side to form an enlarged head.
- Engaging and rotating a nut on the near side to tighten the fastener.
- Detaching the tool from the fastener.
- A "wherein" clause requires that the tool and bolt are prevented from separating by a "moveable member."
- The complaint reserves the right to assert dependent claims 2-11, 13-18, and 20 ('709 Patent, col. 10:51-11:43; Compl. ¶31).
III. The Accused Instrumentality
- Product Identification: Defendant’s "NexGen2" bolts and tools (Compl. ¶22).
- Functionality and Market Context: The complaint alleges the NexGen2 products are "infringing imitations" of Plaintiff's own "ONESIDE" product line and are "substantially and functionally equivalent" (Compl. ¶22, ¶28). The accused products are described as incorporating a "metallic or non-metallic positioning spring and sleeve" (Compl. ¶23). Plaintiff alleges that the design of the NexGen2 products "indisputably limits such products to a single and distinct use, which is to practice the method of the '709 Patent," and that they have "no other use of any kind whatsoever" (Compl. ¶25). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart. The infringement theory is based on the allegation that using the Defendant's NexGen2 products necessarily constitutes performance of the patented method.
’709 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of installing a threaded fastener... comprising: (a) a bolt having... a tool engagement portion... and (b) a washer-like collar... | The complaint alleges Defendant makes, uses, and sells the "NexGen2" products, which are described as imitations of the patented fastener system and include a bolt, spring, and sleeve. | ¶22, ¶23, ¶30 | col. 10:24-34 |
| (a) engaging said tool engagement portion with a bolt engagement portion of a tool... | The use of the NexGen2 tool with the NexGen2 bolt is alleged to perform this step. | ¶25, ¶26(ii) | col. 10:35-37 |
| (b) passing said bolt completely through said hole head first... | The complaint alleges that the intended use of the NexGen2 product involves practicing the patented method, which includes this step. | ¶25, ¶26(ii) | col. 10:38-41 |
| (c) supporting said bolt on said far side of said hole by way of said tool... | The complaint alleges that the intended use of the NexGen2 product involves practicing the patented method, which includes this step. | ¶25, ¶26(ii) | col. 10:42-44 |
| (d) passing said collar completely through said hole while supporting said collar with said tool..., said collar being collapsed... | The complaint alleges that the intended use of the NexGen2 product involves practicing the patented method, which includes this step. The "sleeve" is the component accused of acting as the collar. | ¶23, ¶25, ¶30 | col. 10:45-50 |
| (e) causing said bolt and said collar to assemble to form said threaded fastener having a head larger than said hole... | The complaint alleges that the intended use of the NexGen2 product involves practicing the patented method, which includes this step. | ¶25, ¶26(ii) | col. 10:51-56 |
| (f) engaging a nut with said threaded tail portion on said near side and rotating said nut to tighten said fastener; | The complaint alleges that the intended use of the NexGen2 product involves practicing the patented method, which includes this step. | ¶25, ¶26(ii) | col. 10:57-59 |
| (g) detaching said tool from said fastener; | The complaint alleges that the intended use of the NexGen2 product involves practicing the patented method, which includes this step. | ¶25, ¶26(ii) | col. 10:60-61 |
| wherein... separation of said bolt engagement portion and said tool engagement portion is prevented by a moveable member... | The accused NexGen2 products are alleged to incorporate a "spring and sleeve" which performs the function of the "moveable member." | ¶23, ¶30 | col. 10:62-67 |
- Identified Points of Contention:
- Scope Questions: A central dispute may be whether the accused product's "spring and sleeve" (Compl. ¶23) meets the "moveable member" limitation of claim 1. The definition of this term and how it "prevents" separation between the tool and bolt will be critical. Additionally, it raises the question of whether the accused "sleeve" performs the function of the claimed "washer-like collar" that is "collapsed" during installation.
- Technical Questions: The complaint alleges infringement in a conclusory manner, asserting functional equivalence without detailing the specific operation of the accused NexGen2 products (Compl. ¶28). A key question for the court will be what evidence supports the allegation that the accused products actually perform each claimed step, such as the collapsing and subsequent unfolding of the collar/sleeve on the blind side of the workpiece.
V. Key Claim Terms for Construction
The Term: "moveable member"
- Context and Importance: This term appears in the "wherein" clause of independent claim 1 and defines the mechanism securing the bolt to the installation tool. The infringement case appears to depend on whether the Defendant's "spring and sleeve" arrangement (Compl. ¶23) falls within the scope of this term. Practitioners may focus on this term because the patent contrasts a "less preferred" spring-loaded mechanism with its preferred positive-locking embodiment.
- Intrinsic Evidence for a Broader Interpretation: The specification mentions, as an alternative, "less preferred versions of the invention may utilise a spring loaded mechanism for urging the stud into the recess" ('709 Patent, col. 9:48-51). This could support an interpretation that includes the accused spring-based systems.
- Intrinsic Evidence for a Narrower Interpretation: The patent emphasizes that the "positive fastening provided by the above described embodiment is preferred" and "does not depend upon any spring loading mechanism" ('709 Patent, col. 9:1-3, 51-53). An argument could be made that the invention is properly limited to the described positive, mechanical lock (a stud engaging a recess) rather than a mere spring-based detent.
The Term: "collar being collapsed"
- Context and Importance: This term in step (d) of claim 1 describes a key function of the installation method. The infringement analysis will question whether the accused "sleeve" (Compl. ¶23) is a "collar" and if its action of passing through the hole constitutes "being collapsed."
- Intrinsic Evidence for a Broader Interpretation: The term "collapsed" is not given an explicit definition, which may support a reading that covers any temporary reduction in profile, not just folding.
- Intrinsic Evidence for a Narrower Interpretation: The specification consistently illustrates the collar as two rigid "half-collars" joined by a flexible strap that functions as a pair of "hinges," allowing the collar to be "folded over" ('709 Patent, col. 4:58-62; col. 5:6-10; Fig. 6). This may support a narrower construction limited to a hinged, folding structure.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement by manufacturers and end-users of the NexGen2 products, asserting they are instructed to practice the patented method (Compl. ¶33, ¶34). It also pleads contributory infringement, alleging the NexGen2 products are not staple articles of commerce and have no substantial non-infringing use other than to practice the patented method (Compl. ¶25, ¶26(v)).
- Willful Infringement: Willfulness is alleged based on both pre- and post-suit knowledge. The complaint asserts pre-suit knowledge stemming from a prior, terminated reseller relationship and alleged non-public communications Defendant had with the USPTO about the ’709 patent in 2014-2015 (Compl. ¶23, ¶43). It further alleges that infringement continued after Plaintiff provided express notice on April 23, 2019 (Compl. ¶42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and technical equivalence: can the term "moveable member," which is described in the patent's preferred embodiment as a positive mechanical lock, be construed to cover the accused product's "spring and sleeve" mechanism (Compl. ¶23)? A related question is whether the accused "sleeve" functions as the claimed "collar being collapsed."
- A key evidentiary question will be one of operational proof: in the absence of detailed technical descriptions or visual aids in the complaint, what evidence will Plaintiff present to demonstrate that the use of the accused NexGen2 product performs every discrete step of the patented method, particularly the assembly of a multi-part fastener head on the blind side of a workpiece?
- The viability of the willfulness claim will likely depend on the nature and timing of Defendant’s knowledge: the court will need to examine the content of the alleged 2014-2015 USPTO communications and the information exchanged during the prior reseller relationship to determine if they establish clear, pre-suit knowledge of infringement, as opposed to mere knowledge of the patent's existence.