DCT

2:15-cv-06277

Penn Engineering & Mfg Corp v. Pemco Hardware Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:15-cv-06277, E.D. Pa., 11/23/2015
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Pennsylvania, where its corporate headquarters is located.
  • Core Dispute: Plaintiff alleges that Defendants’ various industrial fastener products infringe five of its U.S. patents, and further alleges widespread trademark infringement, counterfeiting, and unfair competition based on Defendants' use of similar product names and marks.
  • Technical Context: The technology at issue involves mechanical clinch-type fasteners used to join sheet metal, printed circuit boards, and other components in manufacturing across diverse industries.
  • Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history concerning the patents-in-suit.

Case Timeline

Date Event
1996-10-22 ’501 Patent Priority Date
1998-09-22 ’501 Patent Issue Date
2001-04-20 ’321 Patent Priority Date
2002-02-26 ’D705 Patent Priority Date
2002-08-20 ’D705 Patent Issue Date
2004-10-21 ’381 Patent Priority Date
2007-05-08 ’321 Patent Issue Date
2008-05-20 ’381 Patent Issue Date
2009-10-23 ’899 Patent Priority Date
2012-10-30 ’899 Patent Issue Date
2015-11-23 Complaint Filing Date

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

U.S. Patent No. 7,374,381 - "Double Flush Clinch Stud"

The Invention Explained

  • Problem Addressed: The patent describes a need for a method to fasten two metal sheets face-to-face that avoids the aesthetic and material drawbacks of spot welding (e.g., weld scale) and the non-flush finish of conventional rivets (’381 Patent, col. 1:20-29).
  • The Patented Solution: The invention is a clinch stud with a unique shank featuring two adjacent clinching sections of different diameters. This configuration allows the stud to be pressed into two aligned sheets in a single operation, with each section clinching into its respective sheet. This design enables the fastener's head and endcap to sit "substantially flush" with the outer surfaces of both sheets, creating a smooth, strong joint (’381 Patent, Abstract; col. 2:5-20; Fig. 4).
  • Technical Importance: The design provides a double-flush attachment and, in certain configurations, can allow one sheet to pivot relative to the other, combining a secure joint with rotational freedom (’381 Patent, col. 4:1-5).

Key Claims at a Glance

  • The complaint asserts infringement of an assembly claimed in the patent, with Claim 1 being the sole independent claim defining such an assembly.
  • Independent Claim 1 requires, among other elements:
    • An assembly of a fastener joining two metal sheets in face-to-face contact.
    • The fastener having a head, two displacers of different diameters, two corresponding undercut grooves, and an endcap.
    • A first sheet having a hole where the sidewalls occupy the first undercut groove.
    • A second sheet having a smaller hole where the sidewalls occupy the second undercut groove.
    • The top surface of the fastener is "substantially flush" with the top surface of the first sheet, and the endcap is "substantially flush" with the bottom surface of the second sheet.

U.S. Patent No. 8,297,899 - "Clinch Pin Fastener"

The Invention Explained

  • Problem Addressed: Manufacturing conventional clinch fasteners traditionally requires a secondary operation (e.g., rolling) to create the undercut feature after the head is forged, which adds cost and complexity, particularly for very small pins (’899 Patent, col. 1:21-33).
  • The Patented Solution: The patent discloses a fastener and a method of making it that forms the undercut in a single cold-forging step. An axial compression force is applied to a pin blank, causing the shank to bulge outward at its midline. This bulging action simultaneously creates the necessary undercut between the bulge and the shoulder of the fastener, eliminating the need for a secondary operation (’899 Patent, Abstract; col. 2:7-14; Fig. 2).
  • Technical Importance: This manufacturing method simplifies production, reduces costs, and is especially advantageous for creating miniature clinch pins (e.g., 1.0 mm diameter) used in compact electronic devices, where precision is critical and multi-step manufacturing is inefficient (’899 Patent, col. 1:40-52).

Key Claims at a Glance

  • The complaint alleges infringement of Claim 1 of the patent (Compl. ¶87).
  • Independent Claim 1 requires, among other elements:
    • A unitary metal fastener with a top most head of the largest diameter.
    • A shoulder below the head with an annular bottom displacer surface.
    • A "barrel-shaped shank with... arcuate sides" located below the displacer surface.
    • An "undercut located at the juncture of said shank and said shoulder," which is bounded above by the displacer surface and below by a tapered arcuate surface on the shank.

U.S. Patent No. D461,705 - "Sheet Metal Cable Hook"

  • Technology Synopsis: This is a design patent protecting the ornamental appearance of a cable hook intended for attachment to sheet metal. The claimed design consists of a C-shaped hook portion extending from a base configured for clinching.
  • Asserted Claims: Claim 1 (Compl. ¶90).
  • Accused Features: The "Type TDO Self-Clinching Cable-Tie Hook" is accused of infringing the patent’s ornamental design, as allegedly shown in a side-by-side comparison (Compl. ¶¶ 80, 89, Ex. 27).

U.S. Patent No. 5,810,501 - "Perpendicular Edge Fastener"

  • Technology Synopsis: The patent discloses a fastener that joins two panels at a right angle. It aims to solve the problem of achieving a smooth, flush outer corner, which prior art fasteners could not do (’501 Patent, col. 1:20-48). The solution is an extruded fastener with clinch grooves parallel to the axis of the perpendicular receiving channel, allowing it to be installed at the very edge of a sheet metal panel (’501 Patent, Abstract).
  • Asserted Claims: Claim 1 (Compl. ¶92).
  • Accused Features: The "Type RAA – Aluminum Self-Tapping Right Angle Fastener" is accused of infringement, with the complaint referencing a visual comparison to the patented invention (Compl. ¶¶ 80, 91, Ex. 28).

U.S. Patent No. 7,213,321 - "Method of Attaching a Captive Panel Fastener to a Circuit Board"

  • Technology Synopsis: This patent addresses the problem of soldering a hybrid panel fastener (one with a plastic cap) to a printed circuit board (PCB) without the soldering heat damaging the plastic component (’321 Patent, col. 1:30-41). The invention is a two-step assembly method: the metal retainer is first soldered to the PCB, and after it cools, the separate screw assembly with its plastic cap is snapped onto the now-attached retainer, thus protecting it from thermal damage (’321 Patent, Abstract).
  • Asserted Claims: Claim 1 (Compl. ¶94).
  • Accused Features: The "REELFAST® SMT Panel Fastener" is accused of infringing the patented method. The complaint alleges Defendants' website shows the product is "patented" and uses Plaintiff's "REELFAST" trademark to advertise it (Compl. ¶¶ 93-94, Ex. 29).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are several lines of industrial fasteners sold by Defendants, including: "Type SF and Type SFP SpotFast Fasteners," "Type T microPEM TackPin Fasteners," "Type TDO Self-Clinching Cable-Tie Hook," "Type RAA Aluminum Self-Tapping Right Angle Fastener," and the "Reelfast SMT Fastener" (Compl. ¶80).

Functionality and Market Context

The complaint alleges these products are fasteners for joining metal sheets and other components, directly competing with Plaintiff’s products (Compl. ¶76). They are advertised and sold through Defendants' websites (Compl. ¶¶ 69, 78). The complaint repeatedly characterizes the accused products as "knock offs" of PennEngineering's patented products (Compl. ¶¶ 83, 86, 89, 91, 93). A visual provided in the complaint shows Defendants' advertising for their "REELFAST® SMT Panel Fastener," which is accused of infringing the ’321 Patent (Compl. Ex. 29).

IV. Analysis of Infringement Allegations

’381 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An assembly, comprising: a fastener joining two metal sheets in face-to-face contacting relationship... Defendants' Type SF and SFP fasteners are advertised for and shown connecting two metal sheets. The complaint alleges these fasteners are "especially made or especially adapted for use in an assembly claimed in the ‘381 Patent." ¶¶84-85, 294, Ex. 25 col. 3:10-44
a shank having a preformed head... a first undercut groove... a second displacer... a second undercut groove... and the endcap... The structure of the accused fastener is alleged to be a "knock off" of the patented stud, incorporating the claimed structural features. A side-by-side visual comparison is provided to support this allegation. ¶¶83-84, Ex. 25 col. 2:5-20
a first planar sheet having a first hole therein including sidewalls which occupy substantially all of said first undercut groove... and a second planar sheet... having a second hole therein... which occupy substantially all of said second undercut groove... Defendants allegedly induce customers to create this assembly by providing instructions and advertising that show the fasteners being used to connect two metal sheets, which would necessarily involve the sheet material flowing into the undercut grooves. ¶¶85, 294, Ex. 25 col. 3:30-44
said top surface of said fastener is substantially flush with a top surface of said first sheet and an endface of said endcap of said fastener is substantially flush with a bottom surface of said second sheet. The complaint alleges the accused product is a "knock off" of PennEngineering’s "double flush clinch stud," implying the resulting assembly achieves the claimed flush characteristic. ¶83 col. 2:1-4

’899 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A unitary metal fastener comprising: a top most head, said head being the largest diameter of the fastener; The accused "Type T™ microPEM® TackPin™ Fastener" is alleged to be a "blatant ‘knock off’" of the patented fastener and is shown in a visual comparison to have a head of the largest diameter. ¶¶86-87, Ex. 26 col. 2:50-51
a shoulder extending axially downward from... said head... including an annular bottom displacer surface... The structure of the accused fastener is alleged to satisfy this element, as shown in the side-by-side comparison provided in Exhibit 26. ¶87, Ex. 26 col. 2:51-54
a barrel-shaped shank with a longitudinal cross-section having arcuate sides, located immediately below said displacer surface; The accused fastener is alleged to have the claimed shank geometry. ¶87, Ex. 26 col. 2:54-57
and an undercut located at the juncture of said shank and said shoulder, said undercut being bounded above by said displacer surface and below by an outwardly divergent tapered arcuate surface... The complaint alleges that the structure of the accused product satisfies "each of the elements of claim 1," which includes the specifically defined undercut formed at the juncture of the shank and shoulder. ¶87, Ex. 26 col. 2:57-62

Identified Points of Contention

  • Scope Questions: For the ’381 Patent, the claim is to an "assembly." The complaint focuses on contributory and induced infringement theories. A central question will be whether the accused fasteners are a "material part" of the invention, are "especially made" for an infringing use, and are not a "staple article of commerce," as required for contributory infringement.
  • Technical Questions: The complaint’s infringement theory for both patents rests heavily on allegations of "knock-offs" supported by visual exhibits. This raises the question of whether the accused products meet the specific geometric and functional limitations of the claims—such as the "barrel-shaped shank with... arcuate sides" of the ’899 Patent or the "substantially flush" result of the ’381 Patent assembly—or if there are subtle but material technical differences.

V. Key Claim Terms for Construction

For the ’381 Patent

  • The Term: "substantially flush"
  • Context and Importance: This term is critical as it defines the key outcome and advantage of the claimed assembly. The patent distinguishes itself from prior art rivets that are not flush. The degree of "flushness" required will be a central point of dispute, as it dictates the standard for infringement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The use of "substantially" suggests the patentee did not intend to require perfect mathematical co-planarity, allowing for minor, commercially acceptable deviations. The specification does not provide a numerical tolerance.
    • Evidence for a Narrower Interpretation: The objective stated in the background is to provide a "flush finish" to solve a problem with non-flush rivets (’381 Patent, col. 1:24-26). Figure 4 depicts a perfectly flush alignment, which a party could argue illustrates the intended meaning.

For the ’899 Patent

  • The Term: "undercut located at the juncture of said shank and said shoulder"
  • Context and Importance: The location and method of forming the undercut are the core of the ’899 invention, which eliminates a secondary manufacturing step. Practitioners may focus on this term because its construction could import a process limitation into the product claim.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue "juncture" refers to the general area where the shank meets the shoulder, without regard to how the undercut is formed.
    • Evidence for a Narrower Interpretation: The specification repeatedly describes the undercut as being created simultaneously with the shank's bulge during a single forging operation (’899 Patent, col. 1:40-44, col. 2:7-14). This could support an interpretation where the term "undercut located at the juncture" is limited to a feature that results from this specific manufacturing method, as opposed to a conventionally rolled or machined undercut.

VI. Other Allegations

Indirect Infringement

The complaint explicitly alleges induced and contributory infringement of the ’381 Patent. It alleges Defendants induce infringement by "instructing customers how to fasten two metal sheets" (Compl. ¶294) and contributorily infringe by selling the Type SF fastener, which is alleged to be "especially made or especially adapted" for the claimed assembly and not a "staple article or commodity of commerce" (Compl. ¶¶296-298).

Willful Infringement

Willfulness is alleged for all asserted patents (Compl. ¶¶ 299, 304, 309, 314, 319). The allegations are based on the assertion that the infringement is "deliberate" and the products are "blatant ‘knock offs’" (Compl. ¶¶ 86, 89, 91). The complaint further alleges that Defendants use Plaintiff’s own trademarks (e.g., "microPEM®") to advertise the accused products, which may be used as evidence of copying and knowledge of Plaintiff’s intellectual property (Compl. ¶88).

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

  • A key evidentiary question will be one of technical specificity: can Plaintiff support its "knock-off" theory with detailed, element-by-element evidence showing that the accused products meet the precise geometric and functional limitations of the asserted claims, or will Defendants demonstrate material differences in structure or operation?
  • A central issue for the ’899 patent will be one of claim scope: does the phrase "undercut located at the juncture," when interpreted in light of the specification's focus on a single-step forging process, limit the claim to fasteners manufactured by that specific method? The answer will determine whether the accused product infringes, depending on how it is made.
  • Given the parallel allegations of patent and trademark infringement, a significant question will be one of willfulness: to what extent can evidence of alleged trademark copying and the use of Plaintiff's product marks be leveraged to establish the "knowledge of the patent and of his infringement" required for a finding of willful patent infringement and the potential for enhanced damages?