DCT
5:13-cv-02113
Robbins Co v. Herrenknecht Tunnelling Systems USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: The Robbins Company (Ohio)
- Defendant: Herrenknecht Tunnelling Systems USA, Inc. (Washington)
- Plaintiff’s Counsel: Frantz Ward LLP
- Case Identification: 5:13-cv-02113, N.D. Ohio, 09/24/2013
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has engaged in acts of infringement in the Northern District of Ohio.
- Core Dispute: Plaintiff alleges that Defendant’s disc cutters for tunnel boring equipment infringe a patent related to compact roller cutter assemblies.
- Technical Context: The technology concerns the mechanical design of cutting tools used in hard rock tunnel boring machines, a field where durability and the ability to apply high-thrust forces are critical.
- Key Procedural History: The complaint alleges that Plaintiff obtained, disassembled, and analyzed one of Defendant's disc cutters prior to filing suit. It makes conclusory allegations of willful infringement but provides no specific factual basis for pre-suit knowledge, such as prior notice letters or litigation history.
Case Timeline
| Date | Event |
|---|---|
| 1995-06-29 | U.S. Patent No. 5,577,565 Priority Date |
| 1996-11-26 | U.S. Patent No. 5,577,565 Issued |
| 2013-08-06 | Plaintiff obtains an accused disc cutter sold by Defendant |
| 2013-09-24 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,577,565 - “Compact Roller Cutter,” issued November 26, 1996
The Invention Explained
- Problem Addressed: The patent addresses the difficulty of designing effective, high-thrust cutting tools for small-diameter (0.5 to 2 meters) hard rock tunneling machines. Prior designs for small tunnels often used cutters mounted on cantilever shafts, which limited the applicable force, or used multi-row cutters, which resulted in a slower cutting action by breaking rock into smaller pieces. (’565 Patent, col. 1:47-60).
- The Patented Solution: The invention is a compact, single-disc roller cutter assembly where the cutter wheel is supported by a fixed shaft at both ends, rather than on a cantilever. This shaft is mounted between two support plates held within a rectangular saddle, allowing for higher thrust loads. (’565 Patent, col. 2:2-17). A key feature is that the tapered roller bearings run directly on an inner surface of the cutter disc itself, which is hardened to act as the bearing's outer race, eliminating the need for a separate component and allowing for a more compact and robust design. (’565 Patent, col. 2:35-41; Fig. 3).
- Technical Importance: This design enabled the use of more powerful and efficient single-disc cutters in small-diameter boring machines, which previously had to rely on less forceful or slower cutting mechanisms. (’565 Patent, col. 1:55-60).
Key Claims at a Glance
- The complaint does not identify specific asserted claims. The analysis below focuses on the first independent claim, Claim 1.
- Independent Claim 1 requires:
- A saddle defining a recess with mounting surfaces.
- First and second support plates with positioning faces to engage the saddle’s mounting surfaces.
- A shaft extending between the support plates, with an enlarged head at one end and a threaded portion at the other.
- A nut to engage the threaded portion of the shaft.
- A pair of tapered roller bearings with cone members on the shaft.
- A unitary annular cutter wheel with an outer cutting edge and an inner race surface journalled directly on the tapered rollers.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "disc cutters" sold by Herrenknecht, including a specific disc cutter sold to American Augers, Inc. (Compl. ¶¶ 7-9).
Functionality and Market Context
The complaint alleges that Defendant competes with Plaintiff in the market for tunnel boring equipment. (Compl. ¶2). It states that Plaintiff "disassembled and analyzed the disc cutter" sold by Defendant to determine infringement. (Compl. ¶8). The complaint does not, however, provide any specific details about the technical construction, operation, or features of the accused disc cutters. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges infringement but does not provide a claim chart or any detailed mapping of accused product features to claim elements. The following table summarizes the allegations for Claim 1 based on the complaint's general assertion of infringement.
’565 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a saddle defining a recess having mounting surfaces thereon | The complaint alleges the accused disc cutter includes a saddle as claimed. | ¶¶ 8, 9 | col. 6:1-3 |
| first and second support plates each having positioning faces engageable with said mounting surfaces to position said support plates | The complaint alleges the accused disc cutter includes support plates as claimed. | ¶¶ 8, 9 | col. 6:3-6 |
| a shaft having an enlarged head at one end and a threaded portion at the other end... said shaft extending between said support plates | The complaint alleges the accused disc cutter includes a shaft as claimed. | ¶¶ 8, 9 | col. 6:6-10 |
| a nut adapted to engage the threaded portion of said shaft | The complaint alleges the accused disc cutter includes a nut as claimed. | ¶¶ 8, 9 | col. 6:10-11 |
| a pair of tapered roller bearings having cone members on said shaft | The complaint alleges the accused disc cutter includes tapered roller bearings as claimed. | ¶¶ 8, 9 | col. 6:11-13 |
| a unitary annular cutter wheel having an outer cutting edge and an inner race surface journalled directly on said tapered rollers | The complaint alleges the accused disc cutter includes a unitary cutter wheel as claimed. | ¶¶ 8, 9 | col. 6:13-15 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint's allegations are conclusory. A central issue will be whether discovery reveals that the accused disc cutters actually contain each element of the asserted claims. The complaint’s assertion that it "disassembled and analyzed" the product suggests it possesses such evidence, but none is presented in the pleading itself. (Compl. ¶8).
- Technical Questions: A key technical question will be whether the accused cutter wheel has an "inner race surface journalled directly on said tapered rollers," as required by Claim 1. This limitation suggests a design without a separate outer race for the bearings. The court may need to determine if the accused products practice this specific, unconventional bearing arrangement or if they use a more traditional design with a separate outer race component, which may not infringe.
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail for a full analysis of potential claim construction disputes. However, based on the patent's technology, the following terms may be central to the case.
The Term: "a unitary annular cutter wheel having... an inner race surface journalled directly on said tapered rollers"
Context and Importance: This limitation appears to be a primary point of novelty, distinguishing the invention from designs that use a separate, press-fit outer bearing race inside the cutter wheel. The question of infringement may turn on whether the accused product's cutter wheel is "unitary" in this way and whether its bearings are "journalled directly" on the wheel's inner surface.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the claim itself could be argued to encompass any single-piece cutter wheel where the rollers make contact with an inner surface, regardless of specific heat treatments or material properties.
- Evidence for a Narrower Interpretation: The specification states the bearings "roll directly on surfaces formed on the cutting disc itself, which may be made of a suitable steel and heat treated to provide a surface essentially the same as a normal outer race." (’565 Patent, col. 2:35-39). A defendant may argue this description limits the claim to cutter wheels specifically manufactured and treated to function as an integrated outer race.
The Term: "saddle"
Context and Importance: The structure of the saddle and its interaction with the support plates define the compact and high-thrust capabilities of the assembly. Practitioners may focus on this term because its scope could determine whether different mounting structures fall within the claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 requires only a "saddle defining a recess having mounting surfaces." This language does not specify a particular shape for the surfaces.
- Evidence for a Narrower Interpretation: The detailed description repeatedly describes the saddle as having "V-shaped surfaces" that mate with the support plates. (’565 Patent, col. 3:24-27). An accused infringer may argue that the term "saddle" should be limited to the V-shaped embodiment disclosed as the preferred one.
VI. Other Allegations
- Indirect Infringement: The complaint makes a conclusory allegation of "active inducement, and/or contributory infringement" but provides no supporting facts, such as the existence of instructional materials or the sale of components lacking substantial non-infringing uses. (Compl. ¶9).
- Willful Infringement: The complaint alleges that "Herrenknecht is aware of the '565 Patent, and its infringement is willful, deliberate and in disregard of Robbins' patent rights." (Compl. ¶12). It does not allege any facts to support this claim of awareness, such as prior communications or litigation between the parties.
VII. Analyst’s Conclusion: Key Questions for the Case
- Evidentiary Sufficiency: The complaint lacks specific factual allegations detailing how the accused product infringes. A primary issue will be whether Plaintiff can produce evidence, presumably from its pre-suit analysis, to show that the accused Herrenknecht disc cutters meet every limitation of an asserted claim.
- Definitional Scope: The case may turn on claim construction, particularly the meaning of "a unitary annular cutter wheel... journalled directly on said tapered rollers." The resolution of whether this requires a single piece of hardened steel without any separate bearing race component will be critical to the infringement analysis.
- Basis for Willfulness: The complaint’s allegation of willfulness is unsupported by any factual predicate establishing Defendant’s pre-suit knowledge of the patent. A key question for discovery will be whether Plaintiff can uncover evidence of such knowledge to support its claim for enhanced damages.