DCT
5:23-cv-00264
Umd Automated Systems v. MK Metal Products Enterprises Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: UMD Automated Systems, Inc. (Ohio)
- Defendant: MK Metal Products Enterprises, Inc. (Ohio)
- Plaintiff’s Counsel: Emerson, Thomson & Bennett, LLC
- Case Identification: 5:23-cv-00264, N.D. Ohio, 02/09/2023
- Venue Allegations: Venue is alleged as proper in the Northern District of Ohio on the basis that the Defendant's principal place of business is located within the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s industrial conveyor systems infringe two patents related to methods for sorting packages and for mounting components onto a conveyor frame.
- Technical Context: The technology relates to automated conveyor systems used in industrial settings, such as manufacturing plants, for handling and sorting products like vehicle tires.
- Key Procedural History: The complaint alleges that Plaintiff sent Defendant multiple notice letters regarding the patents-in-suit. Notices concerning both patents were allegedly sent on June 8, 2016, and July 19, 2017, followed by a cease-and-desist letter regarding the '129 Patent on August 5, 2022. The complaint states that infringement was discovered after a Plaintiff's employee photographed an accused conveyor system at a mutual customer's facility.
Case Timeline
| Date | Event |
|---|---|
| 2008-06-23 | Priority Date for '606 Patent and '129 Patent |
| 2008-11-24 | Alleged Assignment Date of '606 Patent to UMD |
| 2012-01-31 | '606 Patent Issue Date |
| 2015-06-09 | '129 Patent Issue Date |
| 2016-06-08 | First alleged notice letter sent to Defendant |
| 2017-07-19 | Second alleged notice letter sent to Defendant |
| 2022-08-05 | Alleged cease-and-desist letter sent to Defendant |
| 2022-10-03 | Assignment Date of '129 Patent to UMD |
| 2023-02-09 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,051,129: Mechanism for Improved Handling of Conveyor Packages (issued June 9, 2015)
The Invention Explained
- Problem Addressed: The patent addresses the need for reliable and versatile automated conveyor systems that can transfer products, such as vehicle tires, from a primary conveyor path to a secondary or destination path (Compl. ¶9; ’129 Patent, col. 1:24-32).
- The Patented Solution: The invention is a sorting system comprising two key mechanisms: a "stager" and a "diverter." The stager first urges a product into a specific lateral position on the moving conveyor belt. Once positioned, the separate diverter mechanism, which includes a piston-actuated paddle, pivots to push the product off the primary conveyor and into a designated discharge path leading to a side conveyor (’129 Patent, Abstract; col. 2:1-19).
- Technical Importance: This two-step process of staging and then diverting allows for more precise and controlled sorting of items on a conveyor line, which is critical for automated routing in manufacturing and logistics environments (’129 Patent, col. 1:28-32).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶17).
- Claim 1 requires:
- A frame system supporting a transverse roller conveyor belt.
- A "stager" for urging a product into a chosen lateral position on the conveyor, comprising one or more actuatable staging paddles.
- A "diverter" for changing the product's direction of travel, which itself comprises (i) a diverter piston assembly, (ii) a diverter pivot arm, and (iii) a diverter paddle.
- The complaint reserves the right to assert additional claims (Compl. ¶16).
U.S. Patent No. 8,104,606: Tire Conveyor Assembly and Components Thereof (issued January 31, 2012)
The Invention Explained
- Problem Addressed: The patent identifies a need for conveyor frame systems that allow for easy assembly, modification, and attachment of various components, such as guides, rollers, and diverters, while ensuring longevity and minimizing noise and vibration (’606 Patent, col. 1:33-40).
- The Patented Solution: The invention is an improved mounting system for conveyor components. It features side frames with a horizontally extending upper flange that contains a series of elongated slots. Components are attached using brackets that also have elongated slots. These bracket slots are configured to "overlay" the flange slots, and this engagement facilitates the easy and flexible "locating and relocating" of components along the conveyor's length (’606 Patent, Abstract; col. 10:16-19).
- Technical Importance: This slotted, overlaying design provides a modular framework, allowing operators to easily install, adjust, or reconfigure conveyor components without needing to perform custom drilling or welding on the main frame (’606 Patent, col. 2:58-60).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶39).
- Claim 1 requires an improvement in a conveyor assembly, the improvement being a "component mount" which comprises:
- A pair of side frames with a "horizontally extending upper flange" that carries a "series of elongated slots."
- Brackets that also carry a "series of elongated slots."
- The bracket slots are "configured to overlay" the flange slots for attaching components.
- This "overlaying engagement" of the slots facilitates the "locating and relocating" of components along the conveyor's length.
- The complaint reserves the right to assert additional claims (Compl. ¶38).
III. The Accused Instrumentality
- Product Identification: The accused products are identified as the "MK Metal Conveyor" and "MK Metal Assembly," which appear to refer to the same conveyor system (Compl. ¶¶15, 37).
- Functionality and Market Context:
- Based on the complaint's allegations and visual evidence, the accused product is an industrial conveyor system used for sorting packages (Compl. ¶18, p. 5). The complaint alleges the system includes a frame with slotted flanges and a side-mounted, actuated paddle mechanism for diverting products (Compl. ¶¶18, 40). An annotated photograph in the complaint shows the accused conveyor's side frame, which has a green upstanding member and a bent upper flange containing elongated slots (Compl. p. 14). Another image shows an orange bracket with slots used to attach a paddle assembly to the side frame (Compl. p. 15). The complaint alleges the product was sold to a mutual customer of both Plaintiff and Defendant (Compl. ¶¶21, 43).
IV. Analysis of Infringement Allegations
'129 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (b) a stager for urging a product being carried on said primary conveyor into a chosen lateral position on the transverse roller conveyor comprising one or more actuatable staging paddles... | The complaint identifies a "stager [6]" comprising "actuatable staging paddles [7] fitted with rollers [8]" for urging a product into a chosen lateral position. | ¶18, p. 6 | col. 2:1-6 |
| (c) a diverter for changing a direction of travel of a product...said affixed to said first side frame and comprising: | The complaint identifies a "diverter [9]" for changing the direction of travel of a product. | ¶18, p. 6 | col. 2:6-19 |
| (i) a diverter piston assembly affixed to said first side frame; | The accused conveyor is alleged to include a diverter piston assembly [10] affixed to the first side frame [3]. | ¶18, p. 7 | col. 10:4-10 |
| (ii) a diverter pivot arm pivotally affixed to said first side frame and pivotally connected to said diverter piston assembly; | The accused conveyor allegedly includes a diverter pivot arm [11] affixed to the frame and pivotally connected to the piston assembly [10]. | ¶18, p. 7 | col. 10:2-4 |
| (iii) a diverter paddle affixed to said pivot arm, said diverter piston assembly being actuatable to pivot said diverter pivot arm...causing said diverter paddle to pivot and contact a product...for diverting said product... | The accused conveyor allegedly includes a diverter paddle [13] affixed to the pivot arm [11] that is actuated by the piston assembly to divert a product. | ¶18, p. 8 | col. 10:1-4 |
- Identified Points of Contention:
- Scope Questions: Claim 1 recites both a "stager" and a "diverter" as separate limitations. The complaint's photographs and allegations appear to map both claimed components onto a single paddle mechanism on the accused device (Compl. p. 6-8). This raises the question of whether a single accused component can satisfy two distinct claim limitations, particularly when the patent specification appears to describe them as physically separate assemblies (e.g., stager 39 and diverter 42 in Fig. 1).
- Technical Questions: Claim 1(b) requires the staging paddle to be "fitted with rollers." The visual evidence provided for the alleged "stager" (Compl. p. 6) does not clearly show the presence of rollers on the paddle face. The court may require further evidence to determine if this feature is present in the accused product.
'606 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| said side frames formed from an upstanding member having a horizontally extending upper flange carrying a series of elongated slots along the length of said...upper flange | The accused side frame [12] is alleged to be an upstanding member with a bent upper flange [4] that possesses elongated slots [5]. | ¶40, p. 14-15 | col. 10:4-9 |
| brackets each having at least one component mounting surface carrying a series of elongated slots configured to overlay said horizontally extending upper flange elongate slots | The accused bracket [6] is alleged to have mounting slots [7] that are configured to "overlay" the side frame slots [5]. | ¶40, p. 15-17 | col. 10:10-15 |
| said overlaying engagement of said bracket and flange slots facilitating locating and relocating components along the length of said conveying assembly | The complaint alleges the accused bracket assembly can be "unbolted and shifted along the length of the side frames." | ¶40, p. 18 | col. 10:16-19 |
- Identified Points of Contention:
- Scope Questions: A potential issue may arise from the claim language "side frames formed from an upstanding member having a horizontally extending upper flange." The defendant could argue that its flange is not "formed from" the upstanding member (i.e., bent from a single piece of metal) but is instead a separate component attached by other means, such as welding.
- Technical Questions: The complaint's photograph shows a bracket bolted to a frame flange, with slots on both components (Compl. p. 15). A key factual question for the court will be whether this configuration creates the "overlaying engagement" that "facilitat[es] locating and relocating" as claimed, or if there is a functional distinction between the accused product's bolted connection and the patented mounting system.
V. Key Claim Terms for Construction
For the '129 Patent:
- The Term: "stager"
- Context and Importance: This term's construction is critical because Claim 1 requires a "stager" as a separate element from the "diverter." If "stager" is narrowly defined as a physically separate, preparatory mechanism, the plaintiff may face challenges in proving infringement if the accused product uses only a single paddle assembly.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself provides a functional definition: "for urging a product...into a chosen lateral position" (’129 Patent, col. 11:47-49). Plaintiff may argue that any structure performing this function meets the definition, regardless of its integration with a diverter.
- Evidence for a Narrower Interpretation: The patent specification describes the stager (39) and diverter (42) as distinct, sequentially encountered components along the conveyor path (’129 Patent, Fig. 1; col. 6:24-36). This may support an interpretation that the "stager" must be a separate apparatus from the "diverter."
For the '606 Patent:
- The Term: "overlaying engagement"
- Context and Importance: This term describes the core mechanism of the claimed invention. Its interpretation will determine whether the accused product's method of bolting a slotted bracket to a slotted frame constitutes infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The abstract states that the bracket slots are "configured to overlay" the flange slots for attaching components (’606 Patent, Abstract). This could be interpreted broadly to mean any configuration where one slot is placed over another to receive a fastener.
- Evidence for a Narrower Interpretation: The claim requires that the "overlaying engagement" facilitates "locating and relocating components" (’606 Patent, col. 10:17-19). This functional language may support a narrower construction requiring a specific type of interaction that makes adjustment and relocation easier than a simple bolted connection.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for both patents. It asserts that the Defendant, with knowledge of the patents, sold the accused conveyors with the intent that its customers would use them in an infringing manner (Compl. ¶¶28, 49).
- Willful Infringement: The complaint alleges willful infringement of both patents based on Defendant's alleged pre-suit knowledge. The basis for this knowledge is a series of notice letters allegedly sent in June 2016, July 2017, and August 2022, and Defendant's subsequent and continued alleged infringement (Compl. ¶¶19-24, 41-45).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the '129 Patent will be one of elemental presence: does the accused conveyor's single paddle mechanism embody two distinct, claimed components—a "stager" for lateral positioning and a "diverter" for redirection—or does it perform only a single function that fails to meet all limitations of the asserted claim?
- A core question for the '606 Patent will be one of definitional scope: does the term "overlaying engagement," as used in the patent to describe a system that facilitates relocation, read on the accused product's method of bolting a slotted bracket to a slotted frame flange?
- Given the multiple alleged pre-suit notice letters dating back several years before the suit was filed, a key question for damages will be one of willfulness: if infringement is found, did the Defendant's continued sales after being repeatedly notified of the patents rise to the level of objective recklessness that would justify an award of enhanced damages?