Complaint

Complaint Analysis

Prosecution History analysis

Examiner Search analysis

Invalidity Framework analysis

## I. Executive Summary and Procedural Information

*   **Parties & Counsel:**
    *   **Plaintiff:** [Shapes Unlimited, Inc.](https://ai-lab.exparte.com/party/shapes-unlimited-inc) (Ohio)
    *   **Defendant:** [SWi, LLC](https://ai-lab.exparte.com/party/swi-llc) (Wyoming)
    *   **Plaintiff’s Counsel:** [Dinsmore & Shohl LLP](https://ai-lab.exparte.com/law-firm/2107)
*   **Case Identification:** [4:25-cv-00754](https://ai-lab.exparte.com/case/dct/ohnd/4:25-cv-00754), N.D. Ohio, 04/14/2025
*   **Venue Allegations:** Plaintiff alleges venue is proper because Defendant SWi purposefully directs activities at Ohio residents, including transacting business, offering licenses under the patent-in-suit, contracting to supply goods, and sending a cease-and-desist letter into the district.
*   **Core Dispute:** Plaintiff, a manufacturer of fencing components, seeks a declaratory judgment that it does not infringe Defendant’s patent covering a "no-dig" fence installation method and that the patent is invalid, following Defendant’s infringement accusations against Plaintiff and its customers.
*   **Technical Context:** The technology concerns methods for installing fences without digging holes and pouring concrete, instead using metal beams driven into the ground over which hollow fence posts are placed.
*   **Key Procedural History:** The complaint alleges that Defendant SWi has engaged in a "pattern of bad-faith patent assertion." This includes suing one of Plaintiff's customers (a suit later dismissed without prejudice), sending demand letters to another customer, and demanding that Plaintiff take a license after Plaintiff provided Defendant with prior art that allegedly invalidates the patent.

### Case Timeline

| **Date** | **Event** |
| :--- | :--- |
| 2011-11-05 | Alleged earliest date of public availability for the "EMS Assembly" prior art |
| 2016-04-21 | Alleged earliest date of prior art sales by Plaintiff Shapes |
| 2016-12-05 | "CSW Videos" demonstrating "no-dig" installation allegedly posted to YouTube |
| 2018-03-27 | Priority date of U.S. Patent No. [10,954,687](https://ai-lab.exparte.com/patent/10954687) |
| 2021-03-23 | U.S. Patent No. 10,954,687 issues |
| 2022-09-16 | '687 Patent assigned to Defendant SWi, LLC |
| 2024-01-26 | SWi sues Plaintiff's customer, A to Z Quality Fencing, LLC |
| 2024-07-09 | SWi dismisses its suit against A to Z Quality Fencing, LLC |
| 2024-11-27 | SWi allegedly contacts Plaintiff's customer, Good Shepherd, alleging infringement |
| 2024-12-09 | Plaintiff sends letter to SWi identifying allegedly invalidating prior art |
| 2024-12-22 | SWi responds to Plaintiff, asserting liability and demanding a license |
| 2025-01-13 | Plaintiff sends rebuttal letter to SWi |
| 2025-01-15 | SWi sends Plaintiff a draft non-exclusive license agreement |
| 2025-02-04 | Plaintiff informs SWi that the proposed license is unacceptable |
| 2025-02-28 | SWi's President allegedly confronts Plaintiff's personnel at a trade show |
| 2025-04-14 | Complaint for Declaratory Judgment filed |

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

### U.S. Patent No. 10,954,687 - *"Fence Installation Method"*

*   **Patent Identification:** U.S. Patent No. 10,954,687, *"Fence Installation Method"*, issued March 23, 2021.

#### The Invention Explained
*   **Problem Addressed:** The patent's background describes conventional fence installation—digging holes, pouring concrete, and leveling posts—as "tedious and time-consuming," particularly in difficult ground conditions, and notes it can be inefficient and create a mess ('687 Patent, col. 1:16-31).
*   **The Patented Solution:** The invention is a method that avoids digging holes. It involves driving support beams (such as I-beams) into the ground, sliding hollow, tubular posts over the beams, and then installing horizontal rails between the posts ('687 Patent, Abstract). A key aspect of the method involves inserting one end of a horizontal rail into a first post, inserting the other end into a second, elevated post, and then sliding the second post down along its beam to secure the rail ('687 Patent, col. 2:21-41; Fig. 5).
*   **Technical Importance:** The described method purports to offer a more efficient, less labor-intensive, and cleaner alternative to traditional concrete-based fence installation ('687 Patent, col. 3:17-19).

#### Key Claims at a Glance
*   The complaint seeks a declaratory judgment of invalidity and non-infringement of the '687 Patent generally, without specifying claims (Compl. ¶¶ 55, 60). The patent contains three independent method claims: 1, 10, and 20.
*   **Independent Claim 1** recites a method with the following essential steps:
    *   Advancing a first and second beam into the ground to attain a substantially vertical orientation.
    *   Sliding a first tube over the first beam and placing a second tube over the second beam.
    *   Inserting a first end of a rail through a hole in the first tube.
    *   Tilting the rail so its second end is higher than its first end, with the second tube in an elevated position.
    *   Inserting the second end of the rail through a hole in the second tube.
    *   Sliding the second tube down on the second beam.
    *   Securing the first and second tubes at fixed elevations.

## III. The Accused Instrumentality

### Product Identification
The "Accused Products" are "I-beam-style fence post stiffeners supplied by Shapes" (Compl. ¶33). The complaint seeks a judgment of non-infringement for the "manufacture and sale" of these products, which are allegedly used by customers in fence installation methods accused by SWi (Compl. ¶¶ 4, 60).

### Functionality and Market Context
The complaint describes the functionality of the Accused Products by way of analogy to prior art systems. These I-beam stiffeners are driven into the ground to provide reinforcement for hollow fence posts that are slid over them, enabling a "no-dig" fence installation (Compl. ¶14). The complaint alleges that this method, and the components for it, have been well-known and commercially available from multiple suppliers for many years prior to the patent's filing date (Compl. ¶¶ 15, 17, 19). For instance, the complaint references a diagram of the "EMS Assembly," sold since at least 2011, which shows an I-beam stiffener, a hollow PVC post, and rails (Compl. ¶19).

## IV. Analysis of Infringement Allegations

The complaint does not contain an affirmative claim chart alleging infringement. Instead, it seeks a declaratory judgment of non-infringement in response to SWi's accusations (Compl. ¶¶ 35, 37). The following table summarizes how the use of Plaintiff's "Accused Products," as described in the complaint, could be alleged by SWi to meet the elements of a representative claim.

### '687 Patent Infringement Allegations

| **Claim Element (from Independent Claim 1)** | **Alleged Infringing Functionality** | **Complaint Citation** | **Patent Citation** |
|:-----------------------------------------------|:-----------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------|:----------------------|:-------------------|
| advancing a first beam into a ground surface so the first beam attains a substantially vertical orientation... | A user drives one of Shapes' I-beam stiffeners into the ground with a sledgehammer or post pounder. | ¶14 | col. 4:11-14 |
| sliding a first tube over the first beam... | A user slides a hollow, tube-like fence post over the driven stiffener. | ¶14 | col. 7:1-4 |
| inserting a first rail end of a first rail through the first hole defined by the first tube... | A user inserts one end of a horizontal fence rail into an opening in a first fence post. | ¶15 | col. 8:1-4 |
| tilting the first rail so that the second rail end is farther from the ground surface than the first rail end, with the second tube in an elevated position... | A user lifts a second post slightly off the ground to align its opening with the other end of the rail. The complaint provides a screenshot from an instructional video showing a user lifting a post for this purpose. | ¶15 | col. 8:16-20 |
| inserting the second rail end of the first rail through the second hole defined by the second tube; | While the second post is elevated, the user inserts the second end of the rail into the opening in that post. | ¶15 | col. 8:34-36 |
| sliding the second tube on the second beam toward the ground surface... | The user slides the second post down along its stiffener to engage and secure the rail. | ¶15 | col. 9:8-14 |

### Identified Points of Contention
*   **Validity Over Prior Art:** The central point of contention raised by the complaint is not whether the accused method meets the claim elements, but whether the claims are valid at all. The complaint alleges that the claimed method was well-known and in public use long before the patent's 2018 filing date, citing instructional videos from 2016 and product sales from as early as 2011 (Compl. ¶¶ 15, 19, 54). A key question for the court will be whether this prior art anticipates or renders obvious the claimed invention.
*   **Scope Questions:** A potential issue may arise over the scope of "without any other structure disposed between the first beam and the first tube" (a limitation from dependent claim 6). If SWi asserts dependent claims, the parties may dispute whether collars, shims, or other common fencing components constitute such an "other structure."

## V. Key Claim Terms for Construction

### "substantially vertical orientation"
*   **Context and Importance:** This term appears in all independent claims and is foundational to the setup of the fence. Its definition determines the degree of precision required when driving the beams into the ground. A narrow definition could make the claim harder to infringe, while a broad one might make it more vulnerable to invalidity challenges.
*   **Intrinsic Evidence for Interpretation:**
    *   **Evidence for a Narrower Interpretation:** The specification provides a specific, quantitative definition, stating "it is meant that the vertical axes VA of the beams optionally can be within about 0° to about 8°, inclusive, offset relative to a vertical and/or orthogonal axis" ('687 Patent, col. 4:5-10).
    *   **Evidence for a Broader Interpretation:** A party could argue that the use of "substantially" is a term of approximation intended to cover normal, functional installations that may not meet the precise 0-8 degree range but are still functionally vertical.

### "tilting the first rail"
*   **Context and Importance:** This is an active step at the core of the claimed installation process. The dispute may turn on whether the accused method performs this specific "tilting" action or achieves the same result (installing a rail between two fixed posts) through a different, non-infringing sequence of movements.
*   **Intrinsic Evidence for Interpretation:**
    *   **Evidence for a Narrower Interpretation:** The patent describes a specific sequence: inserting one end, tilting the rail to raise the other end, and then inserting the raised end while a post is elevated ('687 Patent, col. 2:21-34). Figure 5 visually depicts this angled orientation of the rail during installation ('687 Patent, Fig. 5).
    *   **Evidence for a Broader Interpretation:** The term could be argued to encompass any manipulation of the rail that changes its angle relative to the ground to facilitate insertion, not just the specific "one end in, then lift" sequence.

## VI. Other Allegations

### Indirect Infringement
The complaint is filed in response to SWi's accusations that Shapes is liable for contributory and induced infringement (Compl. ¶4). The alleged basis is Shapes' "unlawful sale and promotion of the Accused Products" (I-beam stiffeners) to customers who then use them to perform the allegedly infringing method (Compl. ¶37).

### Willful Infringement
While this declaratory judgment action does not contain an allegation of willfulness against Shapes, it preemptively addresses the issue. The complaint alleges that SWi has continued to assert the patent in "bad-faith" even after being made aware of allegedly invalidating prior art on December 9, 2024, which could be used to counter any future claim of willful infringement by arguing that any infringement was not objectively reckless (Compl. ¶¶ 36, 46).

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

*   A core issue will be one of **validity:** Is the '687 Patent's claimed method anticipated or rendered obvious by the prior art identified in the complaint, specifically the "EMS Assembly" products allegedly sold since 2011 and the "CSW Videos" from 2016, which appear to show the key steps of the claimed invention?
*   The case also presents a question of **enforcement conduct:** Did SWi's continued assertion of the '687 Patent against Shapes and its customers, particularly after being presented with detailed prior art arguments, constitute "bad-faith" conduct or tortious interference as alleged in the complaint?
*   Finally, a key evidentiary question will be one of **public accessibility and use:** Can Shapes prove that the cited prior art products and videos were sufficiently public and enabled one of ordinary skill to practice the claimed invention before the patent's critical date of March 27, 2018?

'Bad-faith' threats alleged as fence maker seeks to invalidate a 'no-dig' installation patent, citing prior art for the key `tilting the first rail` method.

4:25-cv-00754

Shapes Unltd Inc v. SWI LLC