DCT
1:24-pl-35001
Golden Rule Fasteners Inc v. RP Lumber Co Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Golden Rule Fasteners, Inc. (Alabama)
- Defendant: R.P. Lumber Co, Inc. (Illinois)
- Plaintiff’s Counsel: Wexler Wallace LLP; Heninger Garrison Davis, LLC
- Case Identification: 1:24-pl-35001, N.D. Ill., 01/30/2020
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because Defendant is an Illinois corporation, maintains physical stores in the district, and conducts regular business in the state, with the cause of action arising from these contacts.
- Core Dispute: Plaintiff alleges that Defendant’s roof flashing products infringe a patent related to flashings that can be installed around a pipe rather than over its top.
- Technical Context: The technology concerns roof flashing, a component used in construction to create a weatherproof seal around pipes or other objects protruding from a roof.
- Key Procedural History: The complaint asserts claims 5 and 6 of the patent-in-suit. However, a footnote in the complaint discloses that other claims of the patent were subject to a "post-grant examination at the USPTO." An included re-examination certificate, issued after the complaint was filed, indicates that originally asserted claims 1-7 were cancelled and claim 8 was amended and confirmed as patentable. This post-filing change in the patent's claims presents a significant issue for the continuation of the case as pleaded.
Case Timeline
| Date | Event |
|---|---|
| 2009-10-23 | ’475 Patent Priority Date |
| 2013-06-18 | ’475 Patent Issue Date |
| 2020-01-30 | Complaint Filing Date |
| 2021-09-07 | ’475 Patent Re-examination Certificate Issued |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,464,475 - Pipe Flashing Apparatus and Method, issued June 18, 2013
The Invention Explained
- Problem Addressed: Conventional roof flashings are typically installed by sliding them down over the top of a pipe. This method is impossible for pipes that have obstructions, such as an electrical mast with extending wires or a weatherhead, which prevents a unitary flashing from passing over it (’475 Patent, col. 3:12-23).
- The Patented Solution: The invention is a flexible roof flashing with a "longitudinal opening" that extends its full length, from the apex of its cone-shaped collar down through its flat base, or "foot" (’475 Patent, col. 2:63-65). This opening allows the flashing to be wrapped around the side of a pipe instead of being slid over the top. Once wrapped, the opening is sealed using fasteners (e.g., clips) to create a weatherproof barrier (’475 Patent, col. 3:4-10; Fig. 5).
- Technical Importance: This design provides a method for creating a waterproof seal around pipes in common construction scenarios where traditional installation methods are not feasible (’475 Patent, col. 3:12-23).
Key Claims at a Glance
- The complaint asserts independent claim 5 (now cancelled) and dependent claim 6 (now cancelled) (Compl. ¶18).
- Following a post-grant re-examination that concluded after the complaint was filed, claims 1-7 were cancelled. Claim 8 was amended and is now the sole independent claim of the ’475 Patent (’475 Patent C1, col. 1:13-17).
- The essential elements of the currently-valid amended independent claim 8 include:
- A roof flashing comprising a collar, a base, and a foot.
- A longitudinal opening extending from the collar apex to the foot edge, which allows the flashing to be installed around a pipe.
- The foot is "associated with a reinforcement material."
- The base has a "first height" at the opening and a "second height" on the opposite side.
- A new limitation requires that the "first height is greater than the second height."
- The complaint notes that Plaintiff may assert additional claims after the post-grant examination is complete (Compl. ¶18, fn. 1).
III. The Accused Instrumentality
Product Identification
- The "Electrical Mast Connection Master Flash (EMC)" (Compl. ¶6).
Functionality and Market Context
- The complaint alleges the Accused Product is a roof flashing designed to "form a weather-proof seal about pipes of different diameters where installation of the flashing over the top of the pipe is not possible" (Compl. ¶18).
- It is described as being made of EPDM, an elastomeric material, and having a foot associated with a reinforced material like metal (Compl. ¶18). The complaint also references a visual from Exhibit B showing that the product has markings for "easy to see pipe diameters" to guide on-site installation (Compl. ¶18).
- The product is sold at Defendant’s retail locations and advertised to customers for installing roof flashing (Compl. ¶¶16, 18).
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart. The following table is a summary of the narrative allegations in the complaint, mapped to the elements of originally asserted claim 5, which has since been cancelled.
’475 Patent Infringement Allegations (based on cancelled Claim 5)
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A roof flashing of claim 1 | The Accused Product is a roof flashing product. | ¶18 | col. 4:46 |
| wherein at least one of the collar, the base, and the foot includes a reinforcement material. | Defendant's Accused Products have a foot associated with a reinforced material, such as metal. | ¶18 | col. 5:18-20 |
| [Implicitly alleged elements from Claim 1, on which Claim 5 depends] | |||
| a collar, the collar having a conical shape with an apex and a bottom edge; a base...; a foot...; and a longitudinal opening... | The Accused Product is alleged to be a roof flashing for use "where installation of the flashing over the top of the pipe is not possible," which suggests the presence of a longitudinal opening structure. | ¶18 | col. 4:47-59 |
| The roof flashing of claim 2 wherein the at least one of the collar, the base, and the foot is made of elastomeric material. [Claim 5 depends on Claim 1, which has a corresponding elastomeric material limitation in dependent Claim 2] | Defendant's Accused Product is made of ethylene propylene diene monomer (EPDM), which is an elastomeric material. | ¶18 | col. 5:11-13 |
- Identified Points of Contention:
- Viability of Asserted Claims: The most significant issue is that the claims asserted in the complaint (5 and 6) were cancelled during re-examination. This raises the question of whether Plaintiff has a viable claim as pleaded or must seek to amend its complaint to assert the substantively different amended claim 8.
- Scope Questions: Should the case proceed, a key question will be whether the Accused Product meets the new limitations of amended claim 8. Specifically, does the base of the Accused Product have a "first height" at the opening that is "greater than the second height" on the opposite side, as now required by the patent? The complaint provides no allegations regarding this specific dimensional relationship.
- Technical Questions: What is the specific structure and composition of the "reinforced material" in the Accused Product’s foot? The evidence for this will be critical to proving infringement of the "reinforcement material" limitation present in both the original and amended claims.
V. Key Claim Terms for Construction
- The Term: "reinforcement material" (appears in cancelled claim 5 and amended claim 8)
- Context and Importance: The presence of a "reinforcement material" is a required element of the asserted claims. The complaint alleges the accused EMC product has a "foot associated with a reinforced material, such as metal" (Compl. ¶18). The definition of this term will be critical to determining infringement, as its scope could include or exclude the material used in the Accused Product.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad, not limiting the material to metal or any particular structure. Practitioners may argue that any material added to the elastomeric foot for the purpose of adding rigidity or durability meets the limitation.
- Evidence for a Narrower Interpretation: The specification describes the reinforcement material as "a thin sheet of metal, molded within the elastomeric material forming the foot 101" (’475 Patent, col. 2:56-59). A party could argue this specific embodiment limits the claim term to embedded metal sheets, excluding other forms of reinforcement.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant encourages and instructs customers on how to use the Accused Product in an infringing manner through "information brochures, promotional material," and "design services to select, deploy and integrate" the flashing (Compl. ¶19).
- Willful Infringement: The complaint alleges knowledge of the ’475 Patent "as early as the date of service of the Original Complaint" (Compl. ¶19). This allegation appears to support a claim for post-filing willfulness only, as no facts suggesting pre-suit knowledge are pleaded.
VII. Analyst’s Conclusion: Key Questions for the Case
- Procedural Viability and Claim Amendment: The central threshold issue is procedural: given that the asserted claims 5 and 6 have been cancelled, can the Plaintiff’s case survive as pleaded? The court will have to address whether Plaintiff will be permitted to amend its complaint to assert the newly-confirmed amended claim 8, which contains different limitations than those originally alleged.
- Infringement of New Limitations: Assuming the case proceeds on amended claim 8, a key evidentiary question will be one of technical compliance: does the accused EMC flashing possess the specific geometric properties now required by the patent, particularly the limitation that the base has a "first height" at its opening that is demonstrably "greater than the second height" on the opposite side? The current complaint provides no facts to support this element.