Golden Rule Fasteners Inc v. NeverLeak Co LP

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Golden Rule Fasteners Inc. (Alabama)
  • Defendant: The NeverLeak Company, LP (Mississippi)
  • Plaintiff’s Counsel: Rozier Hardt McDonough, PLLC; Heninger Garrison Davis, LLC
• Case Identification: 3:17-cv-00249, N.D. Miss., 10/25/2023
• Venue Allegations: Plaintiff alleges venue is proper because Defendant is a Mississippi-based partnership with established and regular places of business in the district, where it has allegedly committed acts of patent infringement.
• Core Dispute: Plaintiff alleges that Defendant’s "Master Flash" brand of roof flashing products infringes two patents related to pipe flashing apparatuses designed to be installed around a pipe rather than over it.
• Technical Context: The technology concerns flexible, wraparound roof flashings used to create weatherproof seals for pipes, vents, and other protrusions on sloped, shingled roofs, a common component in the residential and commercial construction industry.
• Key Procedural History: Both asserted patents have undergone ex parte reexamination proceedings initiated in 2019. For U.S. Patent No. 8,141,303, the reexamination resulted in the cancellation of original Claim 1 and the addition of new Claim 3, which is now asserted. For U.S. Patent No. 8,464,475, claims were cancelled and amended, with the asserted Claim 8 being an amended version. This procedural history will likely focus the dispute on the scope and meaning of the language added or amended during reexamination.

Case Timeline

Date	Event
2009-10-23	Priority Date for '303 and '475 Patents
2012-03-27	U.S. Patent No. 8,141,303 Issues
2012-12-21	'475 Patent Application Filed
2013-06-18	U.S. Patent No. 8,464,475 Issues
2019-02-04	Reexamination Requested for '303 Patent
2019-02-04	Reexamination Requested for '475 Patent
2021-09-07	Reexamination Certificate Issues for '475 Patent
2023-09-18	Reexamination Certificate Issues for '303 Patent
2023-10-25	First Amended Complaint Filed

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

U.S. Patent No. 8,141,303 - "Pipe Flashing Apparatus And Method" (Issued Mar. 27, 2012)

The Invention Explained

• Problem Addressed: The patent addresses the difficulty of installing a conventional roof flashing over a pipe that has obstructions, such as wires or a weatherhead, which prevent sliding a flashing down from the top ('303 Patent, col. 3:1-12). It also aims to create a durable, weatherproof seal on sloped, shingled roofs ('303 Patent, col. 2:1-6).
• The Patented Solution: The invention is an elastomeric, one-piece roof flashing featuring a longitudinal opening that allows it to be wrapped around a pipe in situ. This opening is then sealed together using coupling members like metal clips ('303 Patent, col. 2:52-65). The flashing consists of a cone-shaped collar with pre-formed "tear lines" to accommodate various pipe diameters, a base, and a large, rectangular "foot" designed to be layered with roof shingles to prevent water intrusion ('303 Patent, Abstract; Fig. 6).
• Technical Importance: This design offers a method for retrofitting or installing a flashing in situations where traditional "over-the-top" installation is impossible, increasing its versatility for roofers.

Key Claims at a Glance

• The complaint asserts independent Claim 3, which was added during reexamination (Compl. ¶31).
• Claim 3, which incorporates the subject matter of cancelled Claim 1, requires:
  • A roof flashing comprising a collar, a base, and a foot.
  • A longitudinal opening extending from the collar's apex to the foot's edge, allowing the flashing to be spread apart and placed around a pipe.
  • Opening members that are pressed together and secured by coupling members to seal the opening.
  • A base with a "first height" at the longitudinal opening and a "second height" on the opposite side, where the first height is greater than the second, a feature designed for pitched roofs.

U.S. Patent No. 8,464,475 - "Pipe Flashing Apparatus And Method" (Issued Jun. 18, 2013)

The Invention Explained

• Problem Addressed: As a continuation of the application leading to the '303 Patent, the '475 Patent addresses the same problem of creating a versatile, wraparound flashing for obstructed pipes on shingled roofs ('475 Patent, col. 1:20-28).
• The Patented Solution: The solution is materially the same as in the parent patent: a single-piece flashing with a divisible longitudinal seam for wrapping around a pipe ('475 Patent, Abstract). The key inventive concepts, including the multi-part body (collar, base, foot) and sealable opening, are retained. This patent further refines the claims around the structure, including explicit mention of reinforcement material within the foot ('475 Patent, col. 2:55-58).
• Technical Importance: The invention provides an improved flashing that combines wraparound convenience with structural features, like reinforcement, intended to enhance durability and integration with roofing systems.

Key Claims at a Glance

• The complaint asserts independent Claim 8, which was amended during reexamination (Compl. ¶48).
• Amended Claim 8 requires:
  • A roof flashing comprising a collar, a base, and a foot.
  • A longitudinal opening with first, second, and third sections traversing the collar, base, and foot, respectively.
  • The opening allows the flashing to be installed around a pipe not capable of receiving a flashing over its top.
  • The foot is "associated with a reinforcement material."
  • The base has a differential height profile ("first height is greater than the second height"), similar to Claim 3 of the '303 Patent.

III. The Accused Instrumentality

Product Identification

• The accused products are roof flashings sold under the Aztec "Master Flash" brand, specifically the "Electrical Mast Connection Master Flash" and "Master Flash Retrofit®" products (Compl. ¶17).

Functionality and Market Context

• The complaint alleges the accused products are elastomeric (made of EPDM) roof flashings designed to form a weatherproof seal around pipes (Compl. ¶32, ¶49).
• Crucially, they are alleged to possess a "longitudinal opening that allows the flashing to be spread apart and placed about a pipe," after which "opening members are pressed together and secured by coupling members that seal the longitudinal opening" (Compl. ¶32, ¶49). The complaint supports these allegations by referencing Defendant's product webpages and installation instructions (Compl. ¶17, ¶19, Ex. G-J). This image from Defendant's website, as referenced in the complaint, shows installation instructions for a retrofit flashing product (Compl. ¶19, Ex. I).
• The complaint alleges these products are sold through Defendant's website and at retailer locations in the district and throughout the United States (Compl. ¶32, ¶49).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,141,303 Infringement Allegations

Claim Element (from Independent Claim 3, incorporating cancelled Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A roof flashing for forming a weather-proof seal about pipes...comprising: a collar...a base...and a foot	Defendant advertises and sells roof flashing products for creating weatherproof seals.	¶32	col. 3:52-54
a longitudinal opening defined by opening members that extend from the apex of the collar to an edge of the foot	The accused products possess a longitudinal opening allowing the flashing to be spread apart and placed about a pipe.	¶32	col. 4:58-62
whereupon the opening members are pressed together and secured by coupling members that seal the longitudinal opening	The flashing's opening members are pressed together and secured by coupling members to seal the opening.	¶32	col. 4:62-65
wherein the base has a first height...at a first point...and...a second height...at a second point...wherein the first height is greater than the second height	The complaint does not provide sufficient detail for analysis of this element.	N/A	'303 C1 Patent, col. 2:19-28

U.S. Patent No. 8,464,475 Infringement Allegations

Claim Element (from Amended Independent Claim 8)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A roof flashing comprising: a collar...a base...a foot...and a longitudinal opening	Defendant sells roof flashing products with a collar, base, and foot structure.	¶49	'475 C1 Patent, col. 1:22-30
the longitudinal opening...increases to enable the roof flashing to be installable around a pipe which is not capable of receiving the roof flashing over a top thereof	The accused products possess a longitudinal opening that allows the flashing to be spread apart and placed about a pipe.	¶49	'475 C1 Patent, col. 2:3-8
wherein the foot is associated with a reinforcement material	The complaint does not provide sufficient detail for analysis of this element.	N/A	'475 C1 Patent, col. 2:8-9
wherein the base has a first height...greater than the second height	The complaint does not provide sufficient detail for analysis of this element.	N/A	'475 C1 Patent, col. 2:9-14

Identified Points of Contention

• Evidentiary Questions: The complaint's infringement allegations are general and do not appear to explicitly map the accused products to key limitations added or amended during reexamination. A central question will be whether discovery reveals evidence that the accused products practice the "differential base height" limitation of '303 Claim 3 and '475 Claim 8, and the "reinforcement material" limitation of '475 Claim 8.
• Scope Questions: The complaint alleges infringement of '303 Claim 3, which is drafted in the reexamination certificate as a dependent claim whose parent, Claim 1, was cancelled. This raises the question of whether Claim 3 is definite and how its scope should be determined by the court.

V. Key Claim Terms for Construction

For the '303 Patent

• The Term: "the base has a first height...[which] is greater than the second height"
• Context and Importance: This limitation was added during reexamination and appears central to the patentability of new Claim 3. Infringement will depend on whether the accused products, designed for pitched roofs, inherently possess this specific geometric profile. Practitioners may focus on this term because the complaint lacks specific factual allegations to support its presence in the accused products.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself does not specify a particular ratio or degree of difference in height, which may support a construction covering any non-uniform base height intended to accommodate a roof pitch.
  • Evidence for a Narrower Interpretation: The reexamination file history (not provided, but which will be critical) may contain arguments or amendments that limit the scope of this term to a specific structure that distinguishes it from the prior art. The figures in the '303 patent do not explicitly depict this height differential.

For the '475 Patent

• The Term: "reinforcement material"
• Context and Importance: This term is a key limitation of asserted Claim 8. The infringement analysis will turn on what qualifies as "reinforcement material" and whether the accused products contain it. The complaint makes no mention of this feature.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue the term should be given its plain and ordinary meaning, covering any component that strengthens the foot, including merely thickening the elastomeric material in certain areas.
  • Evidence for a Narrower Interpretation: The specification describes a specific embodiment where the reinforcement is "a thin sheet of metal, molded within the elastomeric material" ('475 Patent, col. 2:55-58). A party may argue this description limits the term to a distinct, embedded material, rather than an integral feature of the elastomeric molding.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement based on Defendant providing installation instructions that allegedly guide customers to use the accused products in an infringing manner (Compl. ¶33, ¶50). It also alleges contributory infringement, stating the products have special features designed for infringement with no substantial non-infringing uses (Compl. ¶34, ¶51).
• Willful Infringement: Willfulness is alleged based on Defendant's knowledge of the patents since at least the service of the original complaint in this action. The complaint further alleges, on information and belief, that Defendant has a "policy or practice of not reviewing the patents of others," constituting willful blindness (Compl. ¶37, ¶54).

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

• A core issue will be one of evidentiary proof: Can the Plaintiff develop factual support during discovery for critical claim limitations added during reexamination—specifically, the "differential base height" and "reinforcement material"—which are not addressed in the complaint's narrative infringement allegations?
• A foundational issue will be one of claim validity: How will the court treat '303 Claim 3, which was added in reexamination as a dependent claim on a cancelled parent claim? This may raise threshold questions of indefiniteness under 35 U.S.C. § 112 that must be resolved before infringement can be assessed.
• Ultimately, the case may turn on a question of technical mismatch: Do the accused "Master Flash" products, which compete in the same market, achieve a similar result using a technically distinct design that avoids the specific structural limitations added to the patent claims during reexamination to overcome prior art?